IP Audit

Businesses have come to realize the importance of intellectual property (IP) to give them an edge over competitors and even ensure survival in a downturn. The government understands that IP plats a key role in building the economy and provide a range of grants and tax incentives for businesses to invest in developing, acquiring and registering IP both locally and abroad.

 

All companies own IP but some are not aware of the various IP issues that may arise in conductingbusiness today. We have developed a simple self-audit kit to help.

 

If you have any questions on the audit, or require our assistance in identifying your company's IP, how to establish rights in your IP ( or how note to lose the rights you possess ) or wish to generate additional revenue streams from your IP, please call our office to set up a meeting with one of our lawyers.

 

1. Trademarks

Many companies have numerous trademarks but all businesses would have at least one trademark which may be the same as your business name. Toyota Corporation uses their TOYOTA house mark as well as many sub-marks like ALTIS, VIOS, CAMRY, PICNIC etc. A trademark can be a symbol like Apple Corporation's applelogo2 or a slogan like Nike's "JUST DO IT", colours like the green and yellow that identifies BP petrol stations, a jingle like the short tune that Hisamitsu used, or shape of a product or packaging like the Toblerone chocolate or the Nescafe bottle. You should list all the possible trademarks of your company and ask the following questions:

 

toblerone

  1. Have we secured trademark registrations for all of them ?
  2. Do the registrations cover all the goods and services we offer or likely to offer in the near future?
  3. Do we have adequate trademark registrations in all the countries where we trade or where our goods or services may be distributed?
  4. Are our trademarks being used by our staff, advertising and marketing personnel or agents, distributors or licensees correctly? For example, marks should always be accompanied by the correct marking ( ® where registered or ™ if not yet), and should be used in ways that may lead to the mark becoming the name of the product/service - OTIS lost exclusive rights to the use of "ESCALATOR" because of this.

 

Similar questions should be asked in relation to other forms of IP described below.

 

2.Domain Names

As more businesses go on-line, it is increasingly important for you to register your company name and trademarks as domain names.

 

3.Copyright

You should enjoy copyright in all your advertising and promotional material. There is no need for registration but is advisable to assert copyright as for example: " © Ravindran Associates 2013". You should also be careful not to infringe another's copyright.

 

4. Designs

You may in appropriate cases register the design of the shape of your products or product packaging or pattern of your fabric and this should be done before you release your product into the market.

 

5. Patents

Where you have invented a new product or devised a new process for marking a known product, you would want to secure a patent. This is to secure a statutory right to make, use, import or sell the invention in the countries where the invention has been patented.

 

6. Confidential Information

Such information should be clearly marked as “confidential” so that those receiving the information understand that they are under a duty to keep it confidential.  Many technical processes or know-how are not patented but are instead protected under the law of confidential information.  Matters like price and customer lists are also protected in the same way. Sometimes, the term used is “trade secrets”.

 

7. Non-Disclosure Agreement (NDA)

It is sometimes unavoidable to disclose confidential information to third parties e.g. suppliers, investors, licensees or sub-contractors. In such circumstances, it is advisable to put in place a NDA which the third party should sign before you disclose the information.

 

8. Employment Contract

Matters such as ownership of IP created in the course of employment, confidential information and, inappropriate cases, restrictive covenants should be addressed in employment contracts.

 

9. Licenes/Franchise/Distribution Agreements

There may be opportunities to generate additional revenue streams through licensing especially where you have IP that you are not using. To extend your market reach, you may appoint distributors for certain range of goods or services or for certain countries. You can have an exponential growth in business through franchising. It is important that you have in place agreements setting out clearly what your distributors, licensees or franchisees should do, can do or cannot do, and what you are entitled to receive from them. All such activities must not be allowed to challenge or jeopardise your rights in your valuable IP.

 

10. IP Portfolio Management

Registrations of trademarks, patents or the like will be valid only for a stated period and will lapse if not renewed at the appropriate time. Some countries have other requirements like filing of Affidavits of Use within certain periods. The activities of others ought to be watched in case another party tries to secure IP rights inconsistent with yours, or there is infringement of your IP rights. A company should put in place a system to properly manage its IP including establishing a proper record-keeping and dairying system, laying down directions on proper use of the company’s IP, making arrangements for watch services and market surveillances and scheduling IP audits to be conducted periodically. It helps to have an experience IP practitioner on hand to guide and advise or even to conduct training sessions for your staff to be better equipped to exploit and protect the value of your company’s IP.

 

RAVINDRAN ASSOCIATES March 2013

 

© Ravindran Associates 2013