Intellectual Property Services for US Businesses in the UK

Some of the most important types of intellectual property (IP) protection are territorial in nature, which means that they only apply in the market in which they are registered. Trade marks and patents are two of the most valuable mechanisms to protect IP, but you must register them for protection every time you move into a new country or market.

Failing to register IP assets leaves them at risk of infringement. This can have serious consequences for a business; by allowing competitors the opportunity to imitate elements of your brand, you risk financial losses and damage to your reputation, and it can be extremely difficult to defend unregistered assets in court or to fight back against infringement.

For US businesses moving to the UK, there is thankfully a strong synergy between intellectual property regulations and processes. This can make protecting your assets before you enter the market a relatively simple process. On the other hand, this can also lead businesses to assume they can manage their intangible intellectual property assets themselves - without expert knowledge of the UK’s IP laws, this can put businesses at risk.

This is why it is best to work with a British law firm when registering your intellectual property in the UK. JMW Solicitors is one of the leading intellectual property firms in the UK, and we have worked with many US businesses to secure their assets. Our understanding of intellectual property matters in the UK market is unparalleled, and we offer a thorough range of services - from registering and defending assets through to managing your IP portfolio and strategising to deliver the maximum financial return.

To get in touch with JMW, call us on 0345 872 6666, or fill in our online enquiry form and let us know when to call you back - please remember to specify your timezone

What IP challenges could US businesses encounter in the UK?

For businesses moving into the UK market from the US, it may seem that there are no significant challenges to register and protect intellectual property. There is no language barrier to contend with, and you can register for trade marks or patents online, using a service that is available anywhere in the world.

The UK has never appeared on the priority watch list of the US Trade Representative’s (USTR) Special 301 Report (although the European Union appeared on the list from 1991-2007, during which time the UK was a member). The USTR’s watch list identifies countries whose intellectual property laws may cause problems for US businesses, and the UK’s absence from the list indicates that there have never been any significant intellectual property-based barriers to trade between the US and the UK.

However, with all this in mind, there are still challenges that may arise, and there are very good reasons why businesses should consider using a UK-based legal firm to manage their intellectual property on their behalf.

Trade mark categories

Trade mark categories are different in the UK, so there is a risk that you could apply in the wrong categories, or miss a key registration that leaves your intellectual property exposed to infringement.

Without thorough knowledge of the trade mark categories that apply in the UK, you cannot minimise the risk of registering assets incorrectly. The team at JMW will work to understand your organisation, its objectives and any ambitions for its intellectual property, to ensure that the assets are successfully registered and protected in the way that will best enable you to commercialise them.

Passing off laws

When an unregistered IP asset is infringed, trade mark owners may be able to use the UK’s “passing off” laws to protect their property. This means that a business can rely on consumer recognition and its reputation to protect its assets. However, when moving into a foreign market, this type of recognition may not exist.

Many US brands are easily identified by consumers in the UK, but this is never a guarantee when a company first enters the market, no matter its reputation elsewhere. Passing off laws are already much more difficult to defend than a registered asset, and if a UK-based business copies your brand elements, it may be much more difficult to demonstrate your legal ownership without registered trade marks. This is just one reason that it is so important to register any IP assets.

Infringement

Another consequence of a business moving into a country in which it is not especially well-known is the possibility of inadvertent infringement. If a much smaller business than yours has the same name, and already owns a trade mark in the UK, you risk infringing on the owner’s rights by trading in the UK market, even if your business is better-known and has a strong reputation.

It is vitally important to access searching and clearing services before you attempt to register your assets. If you try to register an asset that is too similar to an existing trade mark, it may be rejected outright - or, it could lead to a contentious dispute that can only be resolved in court. If the other business has intentionally copied your brand elements and registered these for protection in the UK before you entered the market, you should seek legal advice at once, and do not risk trading without registering your IP assets.

Negotiating

If a trade mark you want to register is already owned by someone else, you may be able to purchase it. Because of the size and reputation of the US market, British trade mark owners may assume that any US businesses moving into the UK are much larger than they really are. As a result, they will try to negotiate the highest price they can to sell an asset they own, and may price you out.

A UK IP specialist will be best-placed to recognise these market factors and understand how to approach this process in order to get the best possible deal. This can also help to avoid expensive court proceedings in the event that your intellectual property assets are found to infringe upon the existing registration.

Failing to monitor

Once you have registered a trade mark, you must continue to monitor it so as to avoid infringement and keep your asset secure. However, it is impractical to monitor for infringement in many different jurisdictions at once. Our JMWatch service is a perfect solution - our experience in providing monitoring services means you can be certain that your valuable IP is safe from infringement, whether that means unintentional overlaps or purposeful copying by competitors.

How JMW Can Help

At JMW Solicitors, our intellectual property experts have represented businesses from around the world to register, monitor and protect their intangible assets in the UK. Our firm is considered one of the foremost intellectual property law practices in the UK, and we are proud of our successes in supporting US businesses.

We provide services including:

• Searching and clearing
• Registering assets
• Advising on IP strategy
• Legal representation through disputes, oppositions, revocations, invalidity proceedings and more
• Monitoring for infringement and responding to defend assets
• Licensing, franchising, IP sales and other commercialisation

We work with businesses of all sizes and tailor our approach to suit your specific needs, so you can always be sure to enjoy the maximum value of your IP, and gain peace of mind that your assets are secure.