Exporting and Intellectual Property (Part 2)

There is currently a lot of talk in the UK about exports, particularly as a route to growth for our manufacturing base. In Part 1, we discussed the new intellectual property (IP) environment you will encounter when entering a new market abroad. You also need to think about how best to extend your UK IP protection into the new market. Not everything can be “exported” in this way. Typically, your patents will be difficult to export if you haven’t already done so. There are likely to be greater possibilities with trade marks and other aspects of branding. Creating some IP in the foreign market will enable you to control competition. This might include protection against your local distributors or other agents deciding to go it alone, after you have helped them to open up the market. Early action to protect your IP, particularly your trade marks, can avoid some unpleasant surprises further down the line. In some countries, there is a prevalent practice for locals to register trade marks of foreign companies, before they enter the market, and then hold the trade mark as a hostage by insisting that the foreign company buys the trade mark registration back from the local “entrepreneur”. China has been notorious for this in recent years but is now aiming to put a stop to the practice. However, that still leaves the possibility of local distributors, agents etc. “helping out” (innocently or otherwise) by registering trade marks in their own name. If the distributor parts company with you, there can be great difficulty and substantial expense involved in getting the trade marks back, if they were registered in the name of your former distributor. Indeed, you might lose your position completely in some countries. Some care is therefore required to ensure you have appropriate ownership arrangements and registrations in place. Note also that when entering a new market with branding which hasn’t previously been used in that country, it is likely to be difficult to stop others copying the brand if you haven’t protected it by a registration. Law and practice varies from country to country, of course, but it is safe to make the general assumption that rights don’t spill over from one country to another, except in exceptional circumstances. We’ll explore other aspects of exporting and IP in later postings.

In the meantime, if you wish to discuss your export plans with an IP expert in more detail, please contact your normal Swindell & Pearson Ltd attorney or [email protected]. We want intellectual property to work for you, not against you.