Protecting IP rights by audit

Protecting IP rights by audit

Legal Notes

Peter Goldson

Wednesday, January 22, 2020

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Jamaican businesses have come a far way in the last 10 years or so in the appreciation of the importance and value of their intellectual property rights (IPRs) and the need to protect them. Less commendable, however, is their appreciation of the need for ongoing monitoring to safeguard the IPRs of the business and to ensure that their protection remains in step with changes in the business itself and with external threats.

It is for this reason that any business which is serious about the protection of intellectual property conducts periodic IPRs audits to ensure the maximisation of benefits from its intellectual property assets.

IPRs consist primarily of trademarks (or brands), copyright and patents. A domain name is not strictly an IPR but has enough connections to IPRs to warrant consideration in this discussion. When a business uses a mark or brand in the course of trade, it is entitled to prevent other rival traders from using the same or a similar mark in relation to the same or similar goods or services.

This entitlement is strengthened if the trademark is registered in relation to those goods or services for which it is used. Copyright is the right to deal with (ie copy, reproduce, license, etc) a created artistic, dramatic, literary or musical work and comes into existence as soon as the work is created.

While registration of copyright is not essential, it can strengthen protection by making it easier to prove one's ownership of copyright in the work. A patent is the exclusive right to utilise or license a scientific method, apparatus or invention and is granted upon registration.

A domain name when registered is akin to a contractual right to use the name for a website but that registration is open to challenge if it can be shown that it infringes the IPRs of some other person.

The value of an IPRs audit should be easily recognised when you consider, for example, that the registration of a trademark lasts for a finite period (10 years), the registration is in respect of specific goods and services and has jurisdictional limitations. As a result, a business owner should take care to ensure that the registration is renewed at the appropriate time, that additional registrations are filed if the goods and services covered by the mark expands or changes and if the business is trading or intends to trade in new fields abroad.

An audit will provide the owner with the information to decide what changes need to be made to provide optimal protection for the trademark portfolio of the business.

Very importantly, a trademark audit should identify if a third party is using the mark or brand without permission (thereby infringing the mark) and lead to advice as to the appropriate steps to be taken to stop the infringement. Notably, even when permission to use the mark has been granted, the audit would reveal if a written licence has been signed by the parties and registered with the Jamaica Intellectual Property Office (JIPO).

Without the registration of such a licence, the business owner might be at risk of losing his rights in the mark or brand. The audit can assist a business owner to ensure that the business is deriving the maximum value from the IPRs of the business.

Typically, an IPRs audit will examine the IPRs owned by the business and their recording and cataloguing; the ways in which the IPRs are used; the registrations which exist in relation to the IPRs and any limitations or conditions which attach to them; the specific entity in whose name the registration is made; any authorised use of the IPRs which ought to be reflected or registered; and whether licences or royalty agreements exist, have terms which are being observed and have been updated in light of changing circumstances.

Some of the common revelations that may be unearthed by a thorough IPRs audit conducted by an attorney are as follows:

• All marks, brands or copyright owned by a business and valuable to it are not registered;

• If registered, renewals (of trademarks or of domain names) have not been made in a timely manner;

• Copyrighted work has been assigned or licensed, but the written agreements are either non-existent or thin;

• A business does not recognise that it owns the copyright in work material which it has produced;

• Employee contracts do not clearly state whether copyright in work product is owned by the business or by the employee;

• The mark or brand as used in the business is not identical to the mark or brand which is registered;

• There is a difference between the goods and/or services covered by the registration and the goods and/services sold by the business;

• Registrations do not exist in all the countries in which the goods or services are sold;

• The trademark proprietor as registered is a different group entity from the entity which actually owns or uses the mark (It matters!);

• While permission to use the IPR has been granted to a third party, no written licence exists or is properly registered;

• trademark registrations have not been accompanied by domain name registrations, or vice versa;

• Rival traders or performing artistes have been using the IPRs owned by a business or individual without permission and need to be warned and stopped before the business or individual loses the IPRS;

• A process, invention, method or apparatus used in a business has been changed in such a way that it may be possible for a new patent to be registered;

• Assignment of patents have not been prepared and recorded as they should have been.

IPRs may be the most or one of the most valuable assets of a business and business owners should take steps to preserve and enhance this value. An IPRs audit is one of those steps.

Peter Goldson is a Partner at Myers, Fletcher & Gordon and Head of its Intellectual Property Department. He is the Chairman of JIPO and a former Chairman of the Jamaican Bar Association's Intellectual Property Sub-Committee. Peter may be contacted via peter.goldson@mfg.com.jm or www.myersfletcher.com. This article is for general information purposes only and does not constitute legal advice.


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