It is not enough to think of a sassy name for your business anymore, you need to be able to register a suitable domain or you won’t be found. No longer, do you need to get your name and phone number in the Yellow Pages (remember those inches wide tomes that lived under the only fixed landline, in the house?) and wait for enquires, you need a pithy and well-appointed website with a “contact me” link.
But the great marketing reach of the world wide web isn’t always your friend. Putting your ideas and products into cyberspace can risk giving away your intellectual property without you even noticing.
This is of particular concern to product designers, who come up with thoughtful, carefully fashioned products to sell these online to reach a wide audience. But the publication of images of designs offers unscrupulous competitors the opportunity to copy the designs. This can leave the designer not only feeling cheated, but potentially under-cut on price when the competitor has not had the attendant costs of creative brainstorming and pain-staking refinements to develop the product.
However, a person who found themselves in this position does have options.
As a matter of law, designers’ intellectual property is protected from bad faith copying infringement in both the UK and in the EU, upon a publication trigger event such as launching products onto the internet. In the UK, a qualifying design is protected as a design right for the lesser of ten years from the product being available for sale or fifteen years from the finalisation of the design document. Within the European Union the design is protected for three years from the point of publication within the European Union (which includes the UK). Truly artistic crafts of a one-off or severely limited nature are protected under copyright laws for much longer periods.
If you are lucky, your design could go “viral” and becomes truly iconic, a repeat seller on a significant scale and represents a highly valuable asset. Designs like this can be expressly protected as registered designs. There is a cost attached to this process, but the advantages are that the designs can be protected for a longer period (up to twenty five years) and even accidental copying can be stopped. The designs can be registered in the UK or EU-wide.
Brexit will not change any of these rights in the short term. UK based rights will be unaffected and the Government has committed to creating equivalent rights for EU registered marks.
So what do you do if you discover that your designs have been copied? After the initial shock, it is worth consulting a solicitor to understand the options, before sending angry letters. There are sanctions for making groundless threats.
First consider whether the alleged infringer is actually a competitor at all. Is it possible to benefit from the situation, and create a licence for the other website to use your design for a share of the profits? Licences are commercial agreements that recognise your intellectual property and allow other parties to make use of the design for a period of time, usually for a fee and other stipulations, such as giving the designer credit. This could be much more beneficial for you, leveraging the intellectual property in a wider or previously unconsidered market, without having to deal with (pesky) customers and (unreliable) suppliers?
As to domain names, it really is important to consider this early in the business start up process. Domain names are important in order to get found easily on the web but care must be taken not to be breaching trade marks or “passing off” – both are considered forms of cybersquatting in the www-age.
Trade marks are names and marks that have been specifically registered with a registration authority. Trade marks can be logos, names, shapes and even jingles or sound phrases (think da-da-da-dah! for Intel inside) that an owner wishes to protect from unfair use, such as counterfeiting or giving a false impression of association with a more famous product or service. The use doesn’t need to be done maliciously. Even unintentional trade mark infringement is illegal and can lead to problems.
In order to avoid accidentally breaching a trade mark, business owners should prepare a short list of possible names and search through the trade mark register looking for marks that are the same or similar to those on the short list and avoid them. Don’t fear – this is not a trip to a musty archive to get lost in ancient volumes - thanks to the internet, the register is available from anywhere, online, managed by the Intellectual Property Office. [can insert web reference here, if it makes sense https://www.gov.uk/search-for-trademark]
Not “passing off,” is trickier to achieve because it means establishing whether the shortlist could be confused with unregistered marks which have been afforded protection by their use. The unregistered nature means there is no definitive database one can turn to, but again the internet is helpful – it is possible to “Google” the short list and check whether any products or services match and again avoid anything confusing to potential customers. For a salutary lesson consider the Sussex man, who has recently had his Instagram account– Sussexroyal – removed. In his case, it was a perfectly legitimate choice of name (being a Brighton based Reading FC supporter) but considered cybersquatting on the territory of HRHs Duke and Duchess of Sussex.
The internet offers both opportunities and potential pitfalls for start-up business, but with care these can be navigated to advantage.