trade mark

In the previous issue of the Newsletter, Jordan Furlong highlighted how artificial intelligence and expert systems are being deployed in law firms, and will transform the legal industry. One implication of this is that law firms will be “marketing themselves as enterprises whose value and identities are independent of their lawyers”.

If you’re minded to follow Jordan’s advice and focus your marketing efforts on building your law firm brand rather than the brand of individual star lawyers within the firm, then you’ve probably got ambitions for your law business. It makes sense, therefore, to find out about protecting your intellectual property.

Every law firm or barrister’s chamber will have intellectual property to protect, although the actions to take will be different depending on the business, the intellectual property involved, and the aspirations for the business.

What is IP?

Intellectual property is the collective name for the rights that protect creativity, imagination and ideas. It’s very wide ranging and the rules are often complex.

Trade marks identify products or services, and as such, contain the value of your brand. Your name is how clients identify your law firm or chambers and distinguish you from others. An important aspect of trade marks, like any other IP right, is to check that you’re not infringing on any third party’s intellectual property rights in using your name, however long you’ve been using it. If the coast is clear, then take steps to secure exclusive rights over that name. If consumers were confused, such as would occur if competitors used similar names, a trade mark will help you to put a stop to it.

Copyright is another essential intellectual property right. Every business uses copyright works because every business is likely to have assets that are protected by copyright, such as a logo, website, brochures, photographs, packaging, software, and more.

Design protection, which is often overlooked, is another type of IP right to consider. It can be a powerful tool for protecting distinctive packaging, the shape of certain products, or even, a logo.

Patents give you a monopoly over certain innovations. Even law firms may occasionally need to know about them. For example, suppose you’ve invented a new way to solve a problem that no one else has managed to solve, such as an effective way of binding documents together, you’ll want to find out whether what you’ve innovated is capable of being protected as a patent.

Why IP is relevant to your business

IP is relevant to every business, not just if it has a potential patent or trade mark to register. When I say “protecting” intellectual property, I mean much more than registration of a right. Protecting IP involves first identifying the issues, doing due diligence to establish that you are not infringing on third parties’ rights, considering some key contracts, and then, depending on your business strategy and goals, taking appropriate steps to register rights or implement new agreements.

Think of an IP lawyer as the equivalent of a property lawyer when you’re developing, buying, renting or otherwise dealing in physical property. That people don’t currently take IP advice before they adopt IP or commission works that create new IP, is probably down to the fact that we are still living in the early days of the digital economy. There is less awareness of what IP law is all about, and entails.

If your firm or chambers has a name, a logo, a website, a database of contacts and more then these are all intangible assets which you might consider protecting.

Say you have selected your ideal name for your law firm, and had a logo developed with an attractive design, how would you feel if you were to find out after spending time and resources promoting the name, that it couldn’t be exclusive to you because the name is incapable of functioning as a trade mark? This is what happened to Tesco’s Clubcard. The name it chose for its loyalty program has proved impossible to protect. The upshot when a name is not capable of being protected as a word mark, is that the money spent on promoting the brand, in this case Clubcard, is effectively wasted. Other businesses can also call their loyalty programs Clubcard. If this was you, wouldn’t you prefer to know about it in advance, so you could make a better choice? The objective of names is to help you stand out. To increase the value of the brand, you need a distinctive name.

Or, say you find that the name infringes on a third party’s rights, and you could lose everything overnight if a trade mark owner were to put a stop to your continued use of the name? This is what happened to Scrabulous whose business on Facebook went up in a puff of smoke. Did you know that if you don’t take the right actions in relation to your logo, you could find yourself on the wrong end of a dispute as happened to Innocent who at one point lost the right to use their iconic logo. Would you have the resources to appeal such a decision as they did?

As for patents, in the case of Anywayup cup it was a baby cup with an innovative lid that didn’t spill that was protected, while for C-Pen it was a pen that scans the text of a document directly to your computer. These businesses needed advice about whether they could patent their inventions, and whether the scope of protection would be strong enough to prevent competitors getting around them. For certain businesses, such as product-based ones like the Anywayup cup example, a strong patent is essential. It gives you a legal monopoly to stop others producing a similar product. Without it, such a business would be wide open to damaging competition from well-resourced manufacturers. In the absence of a patent, once manufacturers noticed your product’s success they could use their greater financial muscle to drive you out of business, freely copying and undercutting you.

Every situation is different and these are just some examples of what can happen when IP issues are not taken account of at an early stage.

Common IP mistakes

A common mistake is to pick a name, and proceed to register a trade mark without first doing proper due diligence. Trade marks can be cancelled if someone else has better rights to the name. This happened to Microsoft who had registered Skydrive as a trade mark only to have its use of the name successfully challenged. Rebranding to Onedrive cost millions. Not every business has the resources of Microsoft to shoulder the costs that a rebrand invariably involves.

The worst reason I’ve heard for ignoring IP protection is lack of resources to litigate to defend the IP. The fact is, a business is much more likely to get into a dispute by not registering its rights than by doing so. Owning registered IP rights can be a very useful bargaining tool if you find yourself threatened by a competitor.

How to protect your IP

IP presents both risks and opportunities. Taking advice, and making strategic decisions about IP should be the uppermost consideration before implementing ideas. It’s important to make good choices of IP.

Branding agencies are often not knowledgeable about intellectual property law. So, if you’re rebranding or branding your new law tech product business, be sure to consult an IP lawyer before finalising your choice of name, and certainly before commissioning websites or any technology.

Taking appropriate steps to protect your law firm helps you increase its value. It could also create income streams, such as if your intangible asset, like an expert system, is licensed to others to use in exchange for royalties. If you’re looking to raise finance for such a venture, then investors will want to know you’ve taken account of IP issues as it plays an important role in protecting market share. The effort you put into building your brand is protected through various IP rights which combine to prevent competitors from freely copying your ideas.

Conclusion

By taking IP into account at a very early stage you make better choices, and create IP which is potentially more valuable. Your choices must work from a marketing, and design perspective for sure. However, it’s most important that they take account of IP law. What’s the point of getting your website or logo designed, only to find when you come to protect it, that you should have first taken IP advice on the contract, or done more due diligence on a name?

Whether it’s your own law firm that needs IP advice, or a client of yours, it’s always best to start by getting appropriate legal advice first. As with almost any area of life considering the legal dimension first is the best way to avoid having to undo ill-considered decisions later, and to build value in the digital economy.

Shireen Smith is an intellectual property lawyer focused on trade marks. She has authored two books: Legally Branded, and Intellectual Property Revolution which aim to raise awareness of intellectual property and internet law. She founded Azrights Solicitors in 2005, with the aim of making IP easy to access. Email shireen@azrights.com. Twitter @ShireenSmith or @Azrights.

Image cc by Blondinrikard Fröberg on Flickr.

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