Wales Enterprise Day 2022: Intellectual Property Rights outside the UK

 

Jane Lambert

Wales Enterprise Day celebrates business expansion.  Last year's theme was start-ups becoming scale-ups.  This year's is about obtaining and enforcing intellectual property rights abroad.  Businesses that export, license, manufacture or market their goods and services abroad need to make sure that their brands, designs, technology and creativity are protected outside the United Kingdom and that they have the means to enforce such protection in foreign courts and tribunals.

I discussed those topics in Protecting Intellectual Assets Abroad on 6 Oct 2022 in IP after Brexit and in Protecting your Brands, Designs and Technology Abroad on 21 Oct 2022 in this publication. Essentially a business should seek legal protection for those assets in its markets and in the jurisdictions in which its actual or potential competitors are to be found.  That is where a lot of mistakes are made and money is wasted.   For instance, many SMEs arrange for their product to be manufactured in China or some other country for distribution in the UK without first obtaining industrial design, patent or trade mark protection in that country, They then wonder why lookalikes flood their export and sometimes even their home markets.

To help businesses to avoid those mistakes I shall chair a hybrid in-person and online seminar on Protecting your Brands, Designs, Technology and Creativity at the Menai Science Park (M-SParc) on 18 November 2022 between 12:15 and 14:00.   To protect those assets businesses need to put the following arrangements into place:

• Legal protection in the form of patents, copyrights, trade marks, registered designs and other intellectual property rights in each of their foreign markets and the countries where their competitors are to be found;
• Local teams of lawyers and patent and trade mark attorneys to enforce such protection; and
• Adequate funding for enforcing such protection.

M-SParc has gathered experts in each of those fields to speak on those topics.

The most important markets are the European Union, the United States and China.  Sean Thomas of Thomas Harrison IP will explain how to apply for patents whether directly or through the European Patent Convention or the Patent Cooperation Treaty.   He will discuss trade mark registration through the Madrid Protocol and design registrations through the Hague Agreement.  He will address such issues as how much a typical application will cost and how long it will take.  He has a lot of experience in registering and enforcing IP rights in China and the United States and will pass on some valuable tips.

When the UK was in the EU, the judgments of its courts could be enforced throughout the Union, EU trade marks and registered Community designs applied to the UK and they did to the other member states and London was to host one of the Central Divisions of the Unified Patent Court.  All that ended at 23:00 on 31 Dec 2020 when the implementation period provided by the EU withdrawal agreement expired.  Businesses in the UK that hold EU trade marks, registered Community designs or unitary patents have to bring proceedings in an EU member state.

Happily, a short ferry trip from Hollyhead lies an English-speaking common-law country that remains within the European Union,  Its courts can try EU trade mark, registered Community design and plant variety disputes.  Its counsel and solicitors can appear before the Unified Patent Court.  The Brussels Regulation continues to apply to the Irish Republic.

I have asked my friend and colleague James Bridgeman SC to speak on how the Irish legal profession can help UK businesses enforce their intellectual property rights.  James holds an appointment that is equivalent to King's Counsel in the United Kingdom.  He appeared in one of the leading cases on rights in performances before the Court of Justice of the European Union.  Before he was called to the Bar he practised as a trade mark attorney.   As a Past-President of the Chartered Institute of Arbitrators, he can suggest strategies in which the rights of British businesses can be enforced through international arbitration.

International IP litigation does not come cheap but, fortunately, it is possible to obtain insurance against such expenses.   M-SParc will welcome back Ian Wishart a director of Sybaris Special Risks whose company specializes in IP insurance. He has already spoken at M-SParc on litigation insurance for the UK.   On Friday he will discuss policies for the EU, USA, China and elsewhere,  In countries such as the USA where contingency fees are possible litigation funding is an alternative to IP insurance.   Sybaris talks to investors in litigation funding.  If there is time, Ian will say a few words about that market,

This will be a fascinating session.   Readers can register through this link.  Anyone wishing to discuss this topic can call me on 020 7404 5252 during office hours or send me a message through my contact page.