Intellectual Property (IP) Essentials for Small Businesses

We speak to business owners daily about their professional business service needs and one thing that often gets lost in the mix is their IP protection. Many consider it an issue for larger companies, designers, or inventors however, as experienced IP experts we know it can be one of the most valuable assets of any sized business. We also unfortunately know, how much of a headache it can be in cases of coping or unintentional infringement. In this article we’ll get you IP savvy in less than 5 minutes so you can make informed decisions about how best to protect your business.

1. What intellectual property does my small business have? 

Intellectual Property (IP) refers to many different creative outputs your business may have or use commercially. In includes but isn’t limited to imagery, logos, processes, symbols, designs, ideas, writing, names, website layouts etc. Every size and type of business will have some sort of IP which is valuable, how it is and what can be protected needs to be investigated.

2. What IP do I get automatic cover for and what do I need to apply for? 

To understand the value of your IP assets, we’ll look at what is covered automatically by UK law and what type of protection you’ll need to apply for:
Automatic protections – 
Copyright – This is automatically covered in UK law when the new piece of writing, photography, music, recording etc. is created. This doesn’t mean you won’t have to go to court if someone uses or copies your copyright.
Employee output – The creative output of your employees is also property of the company they work for if the work was created in company time or using company equipment. This should be stipulated in their employment contract however automatic protections in law come into play here. Please note this IP does still need to have protection applied for to stop others, outside the organisation, copying or using it.
Third-party designed logos – Do not assume this is a given, externally designed logos are not automatically your property. But all you have to do is be really clear when you engage a designer that you want it stated in the contract that the IP rights are signed over to you as part of the job.
Business Name Protection – ‘Passing off’ is a common law action that can be used to protect unregistered trade mark rights in the UK. For example, if you believe another business is copying your business’ name and customers may confuse the two businesses, you can legally ask the company to cease and desist. You will be responsible for the legal fees should the case go to court, and it could take some time to resolve. Alternatively, you can register your business name with Start.Biz for £99 (+VAT) per annum. As part of their Business Name Registration package from Start.Biz who will cover up to £10,000 of legal fees and deal with the administration of the case for you if a ‘Passing Off’ incident arises. Find out more here Business Name Registration.
Protections you will need to apply for – 
Trade marks (TM) – you can trade mark a name, word, logo, monogram, shape, letters, numerals, signature, or any combination of these.
Digital – this includes domain names and social platform handles. It is good to have your handle as close to the trading name as possible so people can find you easily online and know it’s you. Even if you aren’t planning or building a website just yet or putting content out on all social media platforms it’s wise to buy the domain name and set up the accounts on all major platforms. When you start to grow and want to develop your sales channels and marketing they’ll be ready waiting for you and not taken by someone else. Individuals and companies can buy/reserve domains and social media handles which they may offer to sell to you at a much higher price.
Registered design – A Registered Design protects the appearance, physical shape, configuration and the decoration of products whereas trade mark registration protects the names of your products or brands.
Patents – these are usually applied for by inventors or larger companies in the manufacturing or pharmaceutical industries. If you think your business may need a patent it is advised you seek professional advice from an expert.

3. How much is IP protection going to cost me? 

The costs of IP protection can vary dramatically so it’s good to shop around and understand all of your options:
DIY applications
It is possible to apply directly to the Intellectual Property Office (IPO) yourself in the UK. There are helpful guides on YouTube and their website, and if you have the time to work it out, this could be the cheapest way of seeking IP protection. However, it isn’t without its drawbacks. Your application may be challenged, contain mistakes, or be submitted incorrectly with little recourse. All of these will come with extra costs meaning it may not actually be as cost effective as you first thought.
Engage an IP lawyer
Their expertise and familiarity with the process will offer peace of mind however lawyers charges start from around £200-250 per hour so this is out of budget for many small businesses.
IP experts
There are companies that specialise in IP protection, that have qualified experts and will charge a lot less than a solicitor. They will also have packages aimed at smaller ventures including Business Name Registration which will help you if your business is a victim of ‘Passing Off’. Start.Biz offer a free, no obligation IP consultation where we advise what IP your business has and how best to protect it, get in touch today to find out more 0121 678 9000 or email info@start.biz

Registered Design FAQ’s

WHAT CAN BE A REGISTERED DESIGN? 

A registered design can be the particular look, shape, configuration or ornamentation of a product(s).

DO I NEED TO REGISTERED DESIGN? 

This depends on if you have something unique that you would like to protect. A registered design may become essential to your business in the future and save a lot of headaches down the road. If you are unsure regarding anything to do with registered designs our expert team with over 30 years’ brand protection experience are on hand to advise. Call us on 0800 069 9090 or drop us an email to mitch@start.biz to find out more.

ARE ALL REGISTERED DESIGNS REGISTERABLE? 

No, a registered design will not be accepted if it is not distinctive enough. We will advise in our report ways in which you can make your design more distinctive and help you with your application.

IS A REGISTERED DESIGN EFFECTIVE WORLDWIDE? 

No, a registered design is only effective in the country where the design is registered. However, there are several International Conventions that exist which assists clients who wish to register a design in more than one country with one single application which are more cost effective than obtaining separate national registrations.

HOW IMPORTANT ARE REGISTERED DESIGN CLEARANCE SEARCHES? 

Registered design novelty searches are particularly important as they are the first step to determining whether the design you wish to use, and register is available to do so. We strongly recommend that, to avoid any potential conflict between your proposed design and any existing confusingly similar designs, that you instruct us to carry out a comprehensive registered design search on your behalf.

CAN I AMEND MY REGISTERED DESIGN AFTER SUBMISSION? 

No, once an application has been submitted it cannot be altered except for the owner’s name and address. It is important your application is as accurate as possible.

HOW LONG DOES IT TAKE TO OBTAIN A DESIGN REGISTERED IN THE UK? 

The initial registration process takes around 2-3 months to complete.

HOW LONG DOES A DESIGN REGISTRATION LAST? 

A registered design is renewable every 5 years for a maximum registration period of 25 years.

HOW MUCH DOES A REGISTERED DESIGN COST? 

The application fee is dependent on the number of designs included in one application. For example, it is possible to file a multi-design application in the United Kingdom. A UK design application containing one design costs £300; a UK multi-design application containing up to 10 designs costs £550 and UK multi-design application containing up to 20 designs costs £750.

Trade Mark FAQs

WHAT CAN BE A TRADE MARK? 

A Trade Mark can consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging, sounds or smells.

DO I NEED A TRADE MARK? 

This depends on if you have something unique that you would like to protect. A trade mark may become essential to your business in the future and save a lot of headaches down the road. If you are unsure regarding anything to do with trade marks our expert team with over 35 years’ experience are on hand to advise, read more about our IP services here.

ARE ALL TRADE MARKS REGISTERABLE? 

No, a trade mark will not be accepted for registration if it is not distinctive enough. We will advise in our report ways in which you can make your trade mark more distinctive and help you with your application. However, in the case that a trade mark which is not distinctive may be accepted for registration if it can be shown that the trade mark had acquired a distinctive character because it had been in use for over 5 years. We are on hand to guide you through these requirements and make the process simple for you.

WHAT CLASS DOES TRADE MARK BELONG TO? 

It is important to find out the correct class for your trade mark when applying. A new application will have to be made if you apply using the incorrect class. Trade marks can have more than one class and each additional class applied for has a charge of £100 plus VAT. Feel free to contact us and our team will be able to advise which classes apply to your trade mark.

HOW LONG DOES A TRADE MARK REGISTRATION LAST? 

A trade mark registration is renewable every 10 years and therefore can last indefinitely if the registration is renewed.

IS A TRADE MARK REGISTRATION EFFECTIVE WORLDWIDE? 

No, a trade mark is only effective in the country where the trade mark is registered. However, there are several International Conventions that exist which assists clients who wish to register a trade mark in more than one country with one single application which are more cost effective than obtaining separate national registrations.

HOW IMPORTANT ARE TRADE MARK CLEARANCE SEARCHES? 

Trade mark clearance searches are particularly important as they are the first step to determining whether the trade mark you wish to use, and register is available to do so.
We strongly recommend that, to avoid any potential conflict between your proposed trade mark and any existing confusingly similar trade marks, that you instruct us to carry out a comprehensive trade mark search on your behalf.

CAN I AMEND MY TRADE MARK OR ADD FURTHER GOODS OR SERVICES TO THE TRADE MARK REGISTRATION? 

No, once a trade mark has been accepted for registration it cannot be altered except for the owner’s name and address, a fresh registration will need to be made for any amendments.

HOW LONG DOES IT TAKE TO OBTAIN A TRADE MARK REGISTRATION IN THE UK? 

The procedure for obtaining a trade mark registration in the United Kingdom usually takes approximately 6 months. Registration is effective from the date of application.

HOW DO I KNOW WHETHER MY PARTICULAR TRADE MARK IS ALREADY IN USE? 

Before an application is placed to register your proposed trade mark you must ensure your mark will not conflict with any existing trade mark. Furthermore, you should also ensure that there is no existing common law trade marks, or in other words, unregistered trade marks, limited companies, business names and any reference to your proposed trade mark on the Internet. Therefore, we offer two levels of trade mark searching:
Identical search -This search will act as an indication to whether your proposed trade mark is available or is registered by someone else. The fee is £80 + VAT.
Identical and availability search -This search should be conducted if it is your intention to obtain a trade mark registration. We will give comprehensive advice concerning the results of the searches, and advice if the mark can go forward for registration. The fee is £150.
Find out more about all of the National Business Register’s Trade Mark services here.

HOW MUCH DOES A TRADE MARK COST? 

Our basic search is £80 plus VAT and our search and acceptance report is £150 plus VAT, which will advise you if the trade mark you submit is likely to be accepted for registration.
Once it has been established your proposed trade mark is available for use, it can be applied for at the UK Trade mark Office. Our trade mark agents will follow through the entire process and obtain registration within 6 months, please note your trademark is valid from the day of application though. The cost to place an application on file to register a trademark in the UK is £375 plus VAT for one class, any additional classes are charged at £100 plus VAT each.

What is Registered Design?

All aspects of Intellectual Property are extremely important to the value, investment and reputation of a business, none more so than Registered Design protection. A Registered Design protects the appearance, physical shape, configuration and the decoration of products whereas trade mark registration protects the names of your products or brands.

Benefits of Registered Design 

A Registered Design gives you the right to prevent others from using it, it is an exclusive right and therefore the best form of protecting a design.
A Registered Design makes taking legal action against infringement and copying more straightforward which is more likely to result in a more cost effective and successful litigation action.
Once registered you can display your registration number of your design which will also act as a deterrent to potential copiers.

Criteria 

A design qualifies for registration if:
It is new. A design must be ‘new’ at the time of filing. Subsequently, if the design has been disclosed or made public (other than by the designer, see below exception) prior to filing or if the design is not materially different to another design that has already been made public then the validity of the Registered Design can be attacked which, if successful, would result in the cancellation of the Registered Design.
One important exception to the above is that if the prior disclosures of a design is made by its designer, or in consequence of a disclosure made by the designer, within 12 months before the filing date (or priority date, if applicable) of the application then this cannot render the Registered Design invalid by a third party. If the designer made the design public more than 12 months after the filing of the application then the Registered Design can be declared invalid.
However, such disclosures may prevent registering the design in foreign countries, especially outside the European Union, as many countries in the world do not allow such a grace period, or allow a shorter period.
The above provisions do not exclude disclosures made independently of the designer during this period, and therefore applications should be filed before the design is disclosed if possible.
However, even a design that meets the above criteria can be refused registration for the following reasons:
• It is offensive (for example feature graphic images or words)
• It is not your own intellectual property
• It makes use of protected emblems or flags (for example the Olympic rings or the Royal Crown)
• A design registration cannot protect features of a design which are solely dictated by the product’s technical function

Duration 

A Registered Design gives you the right to prevent others from using it for up to 25 years – you have to renew the Registered Design every 5 years.

Application process 

We specialise in all aspects of design registration from conducting initial searches on the Designs Register to assessing any potential infringement issues and novelty issues against earlier Registered Designs through to the registration of the design. We can also represent you and offer advice in relation to any invalidity claims filed against your Registered Design as well as conducting frequent ‘watching’ searches on the Designs Register so that we can file for invalidity of any design that is not materially different to your Registered Design.

Filing a design application 

We will require certain documents and information to enable us to prepare and file an application, we need drawings or photographs showing all features of the design.
We also need to know:
The full name, address and nationality of the applicant (which may be an individual or company); and
A description or general name of the article to which the design is to be applied (if this is not obvious);
Full details of any application from which you wish to claim priority.
We can also include a brief explanation of the design in the application, but this is not compulsory. If priority is claimed, then it is necessary to submit a certified copy of the priority application within three months of filing.

Deferment of registration 

A UK Registered Design is usually registered and published once it has passed the registration process. However, the registration and publication can be deferred for up to 12 months from the filing of the application.
This is achieved by not consenting to the publication of the design in filing, and then filing a subsequent consent at some point before 12 months from the filing date.
There is an additional fee for deferring the publication and subsequently the registration of the design.
There are often situations where immediate publication of the content of the design registration may not be desirable, such as when corresponding patent protection is being pursued in respect of the content, or where the content relates to an upcoming product that has yet to be formally publicly announced. A UK design application can be deferred for a maximum of 12 months.

Multi-Design applications 

It is possible to file applications covering more than one design, with no restriction on the designs which are grouped together. The advantage of filing such multiple applications is a reduced cost compared to single applications.
Each of the designs in the multiple application is a separate piece of property and therefore can be licensed and assigned separately.
At renewal, not all the designs have to be renewed. It is possible to claim different priorities for each design and to defer the registration and publication of only some of the designs.

Invalidity 

As explained above, an application for invalidity may be filed once the design is registered. An invalidity action may be filed on the basis of a lack of novelty, individual character, or that the proprietor is not entitled to the design. Additionally, the holder of an earlier trade mark or copyright may file a request for invalidity based on their earlier rights.

Registration abroad 

The filing of a United Kingdom design application generates a “priority date” which can be claimed to support corresponding design applications filed abroad within six months of the UK filing date.
It is also possible for a UK registered design application to claim priority from an overseas filing.
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What Should I get Legal Advice on as a Small Business Owner?

We’ve consulted our legal experts and complied the 5 areas of what the essentials are for business owners when it comes to legal compliance and safeguarding.  

There are other areas you may look into depending on your particular industry but this covers the fundamentals.

1. Intellectual Property (IP) protection 

Protecting your businesses intellectual property can come in many different forms and should be done as early as possible when setting up your venture. It’s also essential you check you’re not infringing on anyone else’s IP accidentally. Types of IP protection include:
Business name protection – when another business copies your name or has a similar name and / or branding to you, even if your company isn’t limited, this falls under common law and is called ‘Passing Off’. You can take action against the other business if you have prove they have caused you financial lose.
Limited Formations – by forming a limited company no one can form a limited company with the exact same name as you after you have registered. However they can register a company with a very similar name, still causing confusion with customers and therefore you can take out business name protection for your limited company to assist you in this case.
Trade marks – can be words, names, initials, logos, monograms, shapes or signatures, numerals and designs customers associate with your business.
Watching services – these are conducted once you have taken out a trade mark and contest any new trade mark applications that may infringe on your registered mark. Without a watching service your trade mark may become compromised and end up invalid.
Registered design – protects the appearance, physical shape, configuration and the decoration of products whereas trade mark registration protects the names of your products or brands.
National Business Register, as part of Start.biz, offers services that cover all of the above. We have more than 35 years experience protecting businesses and brands. Click on each service to apply or contact us today for advice.

2. HR 

Setting clear guidelines and rules between yourself and any employees from the out set will help keep you both on the same page. Please note the below is based on an employer/employee PAYE agreement, not when instructing freelancers, contracts, sub-contractors etc. We will cover those separately.
This process will not only manages expectations, on both sides, but can legally protect you in the future. You’re wording and ethos should be consistent throughout these documents alongside adhering to statutory employment law. You can find templates for most of these documents online, and some of them are free, we’ve liked to a few sites for you. Alternatively you can hire HR freelancers to help you set everything up or advise on a particular issue.
Job Description – this can be written for advertising the role you’re employing for but the internal one will be more detailed. When writing this to attract applicants you may keep it top line and add some extras about company ethos however the internal job description will go into a lot more depth about the role and not include things like the applicant must love dogs or make an amazing cup of tea!
Offer Letter – this should clearly state title of the role, company name, salary or pay, bonus scheme if applicable, basic holiday allowance, required start date and notice period. This should be sent as soon as the decision has been made to employee an individual.
Employment Contract – this should be drawn up and given to the employee whilst they are waiting to start with you or on their first day. It’s good practice to let them have a few days to read through it and discuss any questions. This is where you need to make sure you are compliant with the law so having a template and doing a little bit of research is good.
Disciplinaries / settlement agreements – these should be covered in the above but we wanted to mention them separately as they are important. Of course, you don’t want to think the worst and wouldn’t employ someone you thought you would have disagreements with but it happens. Having clear steps set up for bringing grievances and disciplinaries will make awkward situations easier to navigate. Also informing the employee and knowing the law when it comes to letting people go is essential.
Company handbook – this is where you can go into more detail about your policies and terms within the contract.
Template resources – 

3. Shareholder agreements comprising of Shareholders Agreements, Memorandum and Articles of Association 

This is clearly setting out what each partner can and can’t do. Again, like when employing someone, you wouldn’t go into business with someone that you envision having problems with but having clear guidelines make situations easier to navigate for everyone. There are many subjects that can be covered in these agreements, some examples are:
Perimeters of how you value shares.
Permissions on spends. For example, one shareholder can’t spend £15,000 of the businesses money without it being signed off with the other shareholders.
What happens when sell business, also what happens when one of you wants out.
On top of the headache of trying to negotiate when in a tense situation, if you don’t have a shareholders agreement it may cause problems when selling to someone else, they may even ask for one to be drawn up. If you go through formation agent, you’ll get standard memorandum and articles but a shareholders agreement is a bespoke piece that you can go more into detail.

4. Business Documents – Terms and Conditions (T&C’s), Privacy Policy, Partner Agreements 

All of the above have been focused on internal affairs of the business but now it’s time to think about your customers.
Terms and conditions – are obviously really important, especially if you are a sole trader providing service. We don’t recommend writing a get out of jail free clause for everything but be honest about the limitations of the service or product your providing. Keep it in plain language and reasonable; this will help with customer disagreements. A rule book of what you are providing so you and the customer are on the same page.
Privacy/cookie policy – it’s important if you store any customer information you have a privacy policy on your website. Standard templates are easy to download and need to be displayed where users can easily find them. They also need to include a clear way to contact you.
Partner agreements – if you want to set up networks, referrals, kick-backs, commercial arrangements you will need partner agreements. These are pretty straightforward and not everyone will ask for one however we advise drawing up a short agreement for both parties to sign so everyone is on the same page.

5. Buying and Selling Businesses 

If you’re not setting up your own business but rather buying one, you will have to cover the above but what about the legal element of the buying / selling process? Best practice includes:
Offer Letter – this is the ‘heads of terms’, it should include the top line details of the transaction and shows your serious intent to buy the business.
Due Diligence – this is when you get into the business to find the skeletons! Share holder agreements, current employment contracts, T&C’s, the money structure of the business will all be gone through.
SPA (Sale and Purchase Agreement) – this is the most detailed, legally binding document that is agreeing to the transaction, once this is signed the sale in final.

Business Name Protection

Why Register Your Business Name? 

Registering a business name is an important step when setting up your business. Choosing the perfect name can be daunting, so we are here to help you through the process. Our service is ideal for sole traders, partnerships and limited companies looking to check and protect their trading name.
Benefits of registering your business name –
Ensure your business name is unique, does not copy an existing business or entity, and meets all statutory legal requirements.
Protect one of your most important assets, your business name, from the malpractice of passing-off, in which competitors copy or use your business name.
Make the most of social media by protecting your online reputation and handles.
A guarantee that we will initiate and cover your legal fees, up to £10,000, if action needs to be taken.
Receive information on any relevant updates in legislation.
Become part of our business community and connect with likeminded business owners.
Access to resources and advice that will enable you to save time and money.
Here at Start.Biz (formly known as the National Business Register) we are passionate about supporting businesses and helping you realise your dream of being your own boss.

What are the Costs of Business Names Protection? 

Business Name Registration costs an annual membership fee of £99 (plus VAT) and includes initial name searches, a display certificate, protection against ‘Passing Off’, obtaining formal statutory permission if needed and expert advice from Start.Biz.
We understand that setting up your own business can seem over whelming at times, our expert team has nearly 40 years’ experience and are here to help you every step of the way. If you have any questions about our services, or just need a little advice at whatever stage of your business journey you are, please get in touch.

How we Protect Your Business Name 

We will protect your trading name against copying by another business, company or brand. This copying is called “passing off”; legal costs, court fees, solicitors and counsel fees are paid by us, for further information please refer to the T&C’s.

What is ‘Passing Off’? 

The law of passing off stands to protect a trader’s goodwill and business against copying, (Passing Off). In order for a passing off action to succeed, you will need to substantiate the following matters:
A misrepresentation made by another, with respect to the business name, in the course of that particular trade.
The misrepresentation is made to the principal customers or prospective customers.
The misrepresentation does cause damage to the principal business or goodwill of which the business name has developed.
Although these elements may be present in an incident that constitutes ‘Passing Off’ it is important that you make us aware as soon as possible so we can act quickly. This gives us the best chance of the claim being successful.

How to Make a ‘Passing Off’ Claim with Start.Biz (National Business Register) 

We appreciate each situation is unique and may require slightly different information depending on the nature of the claim. Our team will be here every step of the way to ensure you are fully informed and take the hassle out of the process so you can get on with the running of your business.
We will ask you to fill out a ‘Passing Off’ complaint form with as much information as possible, sent via email.
Now we get to work! If there is any missing information we require to proceed with your particular claim, a member of our team will be in touch to advise.
We will then issue a letter of notice to the alleged offending party stating that they are ‘Passing Off’ an established business name. This letter will also include useful information for them and next steps on how they should proceed going forward.
If, after this letter has been received, the other party are looking to contend the ‘Passing Off’ action, we will enter a dialogue with them and/or their solicitors. We will start to build a case demonstrating their infringement and work closely with them to resolve the issue at this stage.
Once the above options have been exhausted and it is evident that the ‘Passing Off’ action cannot be progressed without resorting to litigation, we will take your case to the external Legal Counsel.
Since 1984 we have successfully prevented thousands of organisations from copying a registered member’s business name. We can boast a highly professional qualified team who are specialists in their field. Our business exists to protect members’ trading names and for a small annual fee you have access to, and support from internal and external specialists who will endeavour to resolve your problem quickly and effectively.
For a free, no obligation Intellectual Property audit or to discuss your personal circumstances please call 0121 678 9000 or email info@start.biz