When it comes to protecting companies intellectual property (IP) rights, businesses often take two distinct approaches, says João Paulo Miranda, Head of IP at Garrigues
‘Those companies in which IP is fundamental to their business are inevitably aware of the need to protect, enforce and commercialise their assets. But issues often arise for the legion of small and mid-size companies, in which IP is not core, and where there can be a lack of awareness around the need to protect their own rights or when it comes to infringing others.’
Sophisticated operators in the audiovisual, communications, fashion and life sciences sectors may have armies of dedicated lawyers and professionals, but for the vast majority of businesses, IP issues very rarely make it onto the radar until it is often too late, he says.
Eighty per cent of companies that have used the European Trademark registration system over the last 10 years have only filed between one and five registration requests, he says, the other twenty per cent filed hundreds, if not thousands. Businesses may recognise, for example, that a company name or logo can be trademarked, but not other intangibles such as slogans, shapes, sounds or even colours”.
‘IP is a specialist area and it is not uncommon for the correct advice not to be given in time. Companies with IP at the heart of what they do go to great lengths to protect themselves, other companies barely recognise the need to do so.’
He gives the example of a furniture manufacturer that had replicated designs without considering they might be protected, but which had also failed to recognise the need to protect its own creations. Another had contracted a Chinese manufacturer to produce its own designs, but which subsequently emerged elsewhere across Europe without its knowledge.
‘We have to ask, have you protected your designs in those countries? The company may not be exporting its own products there but it can still prevent others from doing so. And even before entering into third party agreements, they should ensure that designs are also protected in the country of manufacture, and to foresee contractual penalties for any infringements.’