New year, new IP problems and how to avoid them

5th February 2024

It would be unusual to have a new year resolution to infringe some another business’ intellectual property (“IP”), but every business needs to be mindful of the risk of doing so before implementing new plans for the year. It is perhaps even more important to monitor the activities of competitors at the start of the year, to ensure they respect the IP your business owns.

Here are our top tips for avoiding IP issues and enforcing your IP in the year ahead:

1. Don’t copy – think “I want to be original”

It’s a fairly obvious statement, but you will be surprised how many businesses each year fall into the trap of thinking that just because its is on the internet or in the public domain, it is free to use. Whilst Oscar Wilde may have thought “imitation is the sincerest form of flattery”, most businesses covet their USPs and will be offended by others mimicking them in attempt to achieve the same success.

Even those who use “royalty-free” websites for content ideas can still get caught out.  “Royalty-free” is not free from copyright protection; use will still require permission, a licence or compliance with terms of use, so don’t be tempted to download an image or copy and paste content from websites. Works can fall out of copyright protections – usually 70 years after the author’s death – but be careful rushing to recreate the likes of Mickey Mouse from ‘Steam Boat Willie”, the copyright protection for which expired on 1 January 2024, because there may well be other IP rights protecting the works.

All IP rights require originality, and are infringed when that originality is reproduced. The easiest way to avoid infringement of another businesses IP is to be original.  It is however, difficult to be purely original; we’re all influenced by what we have absorbed around us, but if you haven’t copied or reproduced something substantially, you shouldn’t run into trouble.

2. Cross-check – think “is my business free to use this IP?”

‘Freedom to use’ is a notoriously difficult issue to grapple with; just owning a trade mark or a design right is not the end of the story. The registration process does tend to highlight existing registered rights, but it is not exhaustive and there may be businesses out there with existing rights in, for example, the product or brand name your business wants to use. You may have already been granted a trade mark in that name, but registrations can be invalidated by someone with an earlier mark or pre-existing protectable rights. Alternatively, you may have found an image or tagline that you want to use to promote your business or product.

If you’re thinking “is it ok to use this?” then you need to:

Carry out searches of the internet using your brand, product name or tagline as the search term including:

  • Checking the web domain host websites for any similar sounding or spelled words to your chosen brand or product name
  • See if you get any hits when you put the name into the search bars of online marketplaces such as Amazon or eBay and social media platforms, for example Facebook or Instagram, as not everyone will have a website
  • Check Companies House for any similar sounding companies
  • Check the Intellectual Property Office databases for similarly registered names, products or applications for the same.

Drill down as far as you can with any results the above; don’t just pay attention to the first page of search results.

Should you identify another business with a similar product or brand name, check when they started using the name. If it was after you, then consider asking them to stop. If it was before you, consider whether you are at risk of them asking you to stop. In either case, agreeing a strategy with the help of an IP specialist would be an important next step.

3. Don’t ignore it – think “if I leave it, what is the worst that can happen?”

There is a temptation that if you discover another business which has applied for or registered a mark which is similar to your business’ registered trade mark, but they are small, it won’t be worth the hassle of doing something about it.

This could end up being a mistake. If that other business becomes a success over the years it will be too late to do something about it by then. As a result of a recent Court of Appeal decision, Industrial Cleaning Equipment (Southampton) Ltd v Intelligent Cleaning Equipment Holdings Co Ltd and another company [2023] EWCA Civ 1451, if that registration goes unchallenged for a period of five years, your business would lose the right to object to it. This is known as the statutory acquiescence defence.

Vigilance is key. Constant monitoring of the web, Companies House and the Intellectual Property Office registers is an ideal way to keep your eye out for potential risks to your business’ IP. Should applications be made for a similar product or brand name, design or patent, or replicas begin to appear online, you can take appropriate action to protect your IP.

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