Owning it: why SMEs must invest in trade mark protection

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Understanding the business drivers SMEs face and addressing their concerns is fundamental to us as Intellectual Property (IP) professionals. And there are a number. Many companies simply just don’t know where to start – to many the world of IP is complicated and difficult to navigate when looking for the right source of advice. Another concern is that once the area, or areas, of IP has been identified, who is best placed to provide that strategic, commercially-based guidance? Next, the big question: cost. Concern over budget allocation to manage an IP portfolio and the possibility of dispute resolution is very real. But SMEs need to change this mind-set.

We would argue that by neglecting to invest in IP won’t make the actual reason why you should be investing in IP go away: your business competitors. It’s quite simple, in a competitive market a business can make itself stand out from the crowd by having a strong IP portfolio.

See it as an investment

When a SME first starts operating, it often finds that budgets are tight and time is even tighter. So sitting down and focussing on an IP project, when in all likelihood there is no immediate issue, is often the last thing a business owner wants to do. But IP is like insurance; you do not realise its value until you need to rely on it.

The first trick is to not see IP as a cost; instead, regard it as an investment.

A strong trade mark portfolio can be used as leverage for investment in the business. For most fixed assets, such as a factory, or equipment, the value of the asset is most likely to depreciate over time. For IP, its value can increase indefinitely. For this reason, investors look favourably on an IP portfolio.

Look at revenue opportunities

Having an IP portfolio in place can help in terms of the negotiation of licence opportunities.  The Star Wars franchise is a great example of this. In 2015, commentary noted that since the first movie came out in 1977, there has been $4 billion in box office revenue from the first seven movies, but licensing of the brand in the toy market has brought in about $12 billion in revenue.  Granted, this is an extreme example, but what it does show, is what a strong IP portfolio can help you achieve.  Take the Gymshark brand. Started by Ben Francis from his parents’ garage in 2012, today it is valued at £1 billion. Over an eight year period, Gymshark has become a global fitness apparel and accessories brand, which sells to 131 countries and enjoys a following of 65 million people on social media. What has helped this growth? A strong brand.

So how do I protect my IP?

Talk to us at the outset; tell us what your business wants to achieve and we will develop an IP framework that will protect it. There are different IP protection systems in place which can be used, some you have to pay for, for example, when registering trade marks, patents and designs; for others, the rights are automatically created such as copyright, unregistered design rights, and trade mark secrets. IP rights are not mutually exclusive; just because you seek one form of protection does not mean you should not consider others. SMEs should try to build a multi-faceted portfolio of rights, to give them robust commercial protection.

We pride ourselves on being part of your business; we do not see ourselves as an external provider of services. We work with our clients to understand their commercial needs, what are their concerns, what is their budget? We commit to always being there, as a sounding board, for you to run something past; responding quickly and intelligently with opinions based on a real understanding.

And what do I do when I have it?

Like we said, IP is like insurance, no one wants to use it, but they are relieved to have it in place when they need it.

Enforcing IP may seem daunting and an expense, but for a lot of businesses, IP is the cornerstone of their company. You will have worked incredibly hard to create this invention, product or brand; it rightfully belongs to your business. You should not be afraid to enforce your rights to protect that asset.

If you are legally in the right, then if someone is infringing your rights you should seek to take action, no matter how small your company is and no matter how big your opponent may be. A prime example of this is the case of Comic Enterprises, a SME operating a comedy club in Birmingham under the name GLEE, who took on 20th Century Fox and won. This was a real life ‘David and Goliath’ case as Comic Enterprises found that it was losing business after being accused of infringement by using the name GLEE. It had no choice but to take action.

Enforcing rights in your IP is not a decision to be taken lightly. The best approach is to proceed with caution; frivolous cease and desist letters can not only damage your case but also, can be a PR disaster. The recent examples of Apple and Hugo Boss trying to enforce their IP rights are good examples of where it can go wrong. But a sensible, pragmatic and helpful approach can go a long way to helping you resolve the matter.

And talk to us; we have experience in dealing with such issues and are well positioned to know the tone to take, the type of approach we should be looking to make, and how best to resolve the matter without becoming involved in expensive and unnecessary proceedings.

If you would like to discuss any aspects of this article in more detail, please contact the author, Lucy Walker, or your usual Barker Brettell attorney.