Unlocking the Power of Electronic Signature Lawfulness in the UK for Intellectual Property Assignments

How to eSign a document: electronic signature lawfulness for Assignment of intellectual property in United Kingdom

um and also director of the Kentucky intellectual property Alliance and will be hosting us today uh the Kentucky intellectual property Alliance or kippa is a program of the Kentucky commercialization Ventures initiative and kstc the mission of kippa is to Foster an effective ecosystem and Marketplace to facilitate through creation protection and advancement of intellectual property in Kentucky by serving as a connecting Organization for Statewide companies organizations and innovators so if you're not already a member or interested in learning more about kippa you can find more information along with the form to join for free on kyipa.org I did want to give a big thanks to all of our Board of advisors that are on with us today um so they've they've been crucial in in the formation of kippa and then also providing guidance um since then so big thanks to them um I will get us started with just a few Zoom items first uh today's webinar is being recorded uh we'll be emailing out a link for the recording to attendees and our members second we do have captions available those can be turned on or off at the bottom of your Zoom window uh we'll also have the transcript of the webinar available after we wrap up if it's needed you can just shoot me an email if you'd like a copy of that and then lastly as we are hosting in the webinar format all participants are currently muted so you can place any questions or comments in the chat or q a area or you can raise your hand if you'd like to be unmuted at the end of the webinar and those are all just down at the bottom of your Zoom window um for any questions we will address those at the end of the presentation and if we don't get time to address everything we'll connect with you afterwards so today we are excited to welcome ashwa anim and Julia Saladin of hgf uh Oshawa is a trademark director for hgf she provides advice to a wide range of customers including businesses in fashion accessories food retailers financial service providers and a whole other wide range of companies and then Julia's a German Attorney at Law at hgf who carries out German and international prosecution and litigation IP work she advises on all aspects uh relating to German and international trademark design and competition law from developing IP strategies to conducting trademark searches and handing handling sorry different National internet National trademark portfolios so thank you to both of them for joining today and I will hand it over to you all now Thank You Caroline and I'm just gonna check whether that your lungs can see in my screen yes perfect okay so um hello everyone um as you can see from our pictures and from uh I'm Andrea and uh New Year and thank you for having us uh everyone and we just wanted to say a few more lines in addition to what Caroline's already said uh we're from hcf uh a pan-european firm uh we have 22 offices across six European countries and we provide advice in relation to all aspects of intellectual property and I'll just hand over to Juvia to say a few words too so for me I'm from the hdf Munich office and as Caroline already mentioned um I'm doing mainly uh trademark law trademark prosecution litigation as regards German trademark law and uh EU trademark law and today since our focus is ueu and UK trade model first of all we want to give you a bit of an overview what we will talk about today and uh please the stage is yours now for giving our table off today's webinar still so uh for today's webinar I just thought we'd go over a bridge over the orchestructure uh we're going to have a short discussion about what is IP we're going to focus on trademarks because um that's our specific area of expertise even though we do do other things and the firm offers various IP um opportunities and advice uh we're going to look at the considerations to keep in mind before seeking protection uh discuss the registration process itself and other things to have in mind once you have your registration certificate and finally we'll wrap up by discussing the differences between the EU UK and U.S trademark systems and in this regard first of all we have to have a look on what what IP rights do we have so first uh trademark law trademark rights with our signs to protect Brands we have copyright we which is the protection for created works like movies photographs databases uh uh films we have design rights stereo design rights are rights which protect the visual appearance of a product and in contrast to that we have patent rights patent rights related to technical inventions for example either for a specific machine or the procedure which is used in that and machine in this machine and last but not least we have Trade Secrets which concerns uh that information should be kept confidential which you probably all know and the conclusion of ndas and since our focus is trademark law today so we will first have now a look what is the function the nature and the benefits about a trademark law third a trademark is a badge of origin it's used to distinguish goods and services provided by one and undertaking from those of another and what can be a trademark it can be a word a logo shape color sound packaging and a few other things and a trademark registration gives protection in relation to the goods and services that are contained within that application or registration what's a protection a trademark registration gives is that it has it provides the owner with an exclusive rights but with limitations so a trademark registration can be used to stop a third party using a market similar identical to the registered Mark and covering similar or identical goods and services that are protected within that registration and in certain circumstances where you're able to also show reputation in relation to your trademark you can use the trademark registration that you have to stop third parties from using identical or similar marks but in relation to wholly dissimilar goods and services and I thought that it would be a good point for us to um contrast registered rights with unregistered rights and how we have protection for that in the UK in the EU and also in Germany as we have the benefit of us expertise here so in the UK you can have uh protection for unregistered rights under the law of passing off and it's actionable and you know people do enforce their rights here it's just it can be quite expensive and onerous because an owner has to show that they have good will in a sign and show that there has been a much representation by a third party of another sign that causes confusion in the mind of a consumer in relation when they comprehend that matter sign and that that's misrepresentation has caused or is it likely to cause damage to the Good Will of the original owner and I think uh there are in other types of unfair competition in the U.S but also I thought it'd be good for us to look at what goes on in the EU and Germany so over to you Leo so in the EU as you may already heard from the conditions who are needing for passing off in the UK with the EU I think it gets even more difficult because in the EU we do not have like a supranational system for unregistered rights in the EU so it depends all if each EU member state recognize such unregistered rights and for example in Germany we have four unregistered rice recognition for a so-called company names company names is a name how you designate your company and if this company name is used in the course of trade in Germany then you have a protection as a company name right and this company name right as an anger is good right can be used as the basis for one and opposition against the German trademark application but as well second and this is the interesting thing to be the basis against foreign opposition against a EU application so in this regard it's bear in mind Andreas of rights exist in Europe as well but you need to check in each restriction of the EU member states if they recognize such rights or not um we were going out to the benefits where audio will tell you as well what's what's the difference between unregistered right and then registered right and which sometimes have benefits to have as well a trademark which as a registered right so with trademark registrations usually we recommend that you carry out some pre-registration checks and these checks are important because they help identify any identical or similar earlier rights that may pose an obstacle to your use of M registration of your proposed Mark even before the registration process begins and even if any issues haven't been highlighted then securing an early registration before launch itself exposes potential conflicts that you you need to be aware of or are helpful to be aware of aware of before launch and although having a registration does not prove to be like an exclusive absolute right it is a good indicator that there is a low risk of Ip related litigation in relation to your brand and finally once the registration process is complete like any other registered IP right this trademark gives the owner an asset that adds value and credibility to the business you know it's an attractive Prospect especially when you're selling the undertaking or seeking investment or collateral so I hear you say right and you've convinced me I want to register my trademark what do I need to do what are the steps I need to consider before I I go forward with my application so the first question which you obviously have to be considered what is the proposed Mark so what sign are you using for selling your product is it like a name or is it a logo if it's a logo you put on the programs do you have the copyright for that logo because if you don't have then your trademark could be objected on the basis that you don't have the copyright for the logo used the other point what Azure already mentioned before is um like for what goods and services do you want protection as a trademark and there's regard one thing is to consider what are your current goods and services you want to offer under the trademark but also do you have any expansion of your business activity in the next three years for example if you're doing now just download or recorded software but you want to go in the next series it's really likely that you want to provide software as a service as then is this should be also be bear in mind when filing now a trademark application because once a trademark has been filed afterwards you cannot amend the list of goods and services which are covered by the trade of my location as such you would have to need to file a further application and this would mean even or more costs again so rather think now what is your your business activity at the moment as well as in the next years the next question would would be um where is your business to activity like in a terrible way are you only providing offering your goods and services for example in the US or are you are you already on the new market or the UK Market for a trademark procession in our appointment normally first or the core area would be that you get receive a trademark protection in the country where your business is really active um and what adua already mentioned before the next question is is the ma free Mark free to use in this regard like clearance searches are recommended if there are any prior identical or similar trademarks covering identical or similar goods and services because the worst thing what could happen is that you start with your business um you you put up some reputation for your goods and services and after three years a competitor or another third party come and say look um we have this prior trademark you have to change your name and this this is something which should be avoided for your business as well as for avoiding any damages claim and the like which could be asserted if a third party invokes prior trademark rights other trade other consideration in this regard for making a trademark searches when is the launch date of course what is the budget and with having all answered these questions what is the mark what is goods and services in which territory you're active we are coming now and more to like a formal part of our webinar today is um how is the registration process so normally in the UK and in yet you you submit an application with the respective trademark offices where there is the where you indicate the name of the Mark or the logo the goods and services you submit the application to their respective trademark offices and then it will be examined by the trademark X minor where there are two points where will the xmi the application is first if the goods and services you have indicated in the trademark application are sufficiently clear because normally and or not normally in the EU and in the in the EU the trademark office they accept broader terms in contrast to the USPTO where it has to be really specific as regards to commercial use of the term so in in our audio restriction we are we are a bit more flexible I would say um the second coin which will be examined by the uh trademark X and minor is is the trademark sufficiently distinctive in order to be a to be registered as a trademark as well here there are differences uh from from the last years we experienced that sometimes the USPTO is Grants more uh trademarks as the UK IPO or the aoip or the European trademark offices because the European trading office sometimes say oh this is pretty clear even if it's not a English grammatically correct word but the consumer will understand what does it mean and that's as such will not have a sufficiently distribute character so these are the two objection what could be like the clear the goods and services are not clear all the Mark is not sufficiently distinctive where you would probably maybe get an objection by the office if the objection is overcome then you come to the next stage which will be that the trademark will be published for opposition purposes um in the EU the opposition period is three months while in the UK we have a two-month opposition period but it can be extended by a one further month in the UK and after everything is done now opposition has been filed by a third party we are coming out to the final stage what will be that the trademark will get into the registration process and you will receive a lovely um trademark a certificate actually it's not that's uh fancy because you will not receive a hard copy like you will receive in the US you really are just a electronic file but then you have the certificate as if you had showing that you're the owner of this respective trademark um now we have a bit of you know the registration process but in this regard a job will now mention some specific additional points to that the state is yours now hello um so you know we're aware that you can register rights all over the world uh in various countries including the US uh the UK the EU Germany but also uh one of the ways we can do this instead of just filing directly at these National Registries or EU or the EU registry is to use the international registration system some of you may already be aware of it but for those who aren't the international registration system is the bundle of Rights managed by an international protocol that allows for a centralized management of trademarks in over 80 percent of the country's worldwide it's managed by the world intellectual property in uh office in Geneva and it allows you to seek protection in many countries by basing an international registration application on a home application or registration so for this uh presentation let's say that we're basing it on a U.S um application or registration so once you have that base application of registration you can then file an international registration application then select the countries on which you wish to seek protection so long as each of them are members of the international protocol and the EU even though it's a supernational organization is also a member of that protocol so you can select that as a territory to protect and one advantage of this is It's usually cheaper to do there's been filing directly uh through a National Registry you know as much as we'd like to get work from in relation to UK applications and uh German or EU applications the international registration does have its Advantage because it means that you're centralizing everything however if there are issues with a designation which is what we call the various rights that you've selected in these territories then if for example there's a problem in the UK or Germany then you'd instruct us to deal with it because you need to construct a local associate to deal with any issues that's come up so that's one of the pluses having that centralized um uh kind of bundle of rights to manage one of the minuses is that for the first five years of the international registration's life it's tied to that base U.S rights so if for any reason something happened to the U.S right it was refused it was opposed and it was canceled then the whole International registration bundle would collapse however there is always something that can be done to rescue that bundle because you can convert those rights those various designations into National rights so at least you're not losing that earlier filing data that you filed the application in which is really helpful uh so that's the international registration system which again we're still able to assist with with if there any issues along the way for those uh relevant European designations um another soil topic uh or no the only small topic uh I should say is brexit um uh we're still reeling from the divorce but you know these things happen in life so uh in relation to the international registration system there are some designations that had protection in the EU as a whole and that was before the UK left the EU however since brexit these EU rights which uh uh are protected on an international registration have been hived off into EU rights and comparable UK rights and some of these UK designations that have been hired off still have the addresses of the original uh firms that file these applications so if we're talking over us it'll be a U.S address for service now the recommendation is that uh you have a U.S a UK address for service instead of a foreign address for service uh because the UK registry has changed the way it notifies um owners of certain actions in relation to the UK designations so when the UK designation is canceled or rectified the UK registry will only notify the holder or the foreign representative by post and give them one month to file a UK address for service and confirm an intention to defend but things run a lot smoother if you already have a UK address for service a UK representative so the recommendation is that you update your records and make sure that for any rights in the UK you make sure you have a UK representative and also notwithstanding the international registrations that had protection in the EU all EU rights are also hived off to EU rights and UK comparable rights so there's also a law that will require that from the 1st of January 2024 all UK rights that were hired off from the original EU registrations or pending EU applications that were re-registered or have to have a UK representative so that's kind of getting our house in order ahead of the first January deadline so that's just something to bear in mind if you have any International registration rights that have protection in the UK already and one final point I wanted to mention in relation to the registration process was the priority system and that's basically a six month buffer buffer that allows you to kind of stagger applications so there's a convention that allows you six months after the filing of a first application anywhere in the world to then file subsequent applications within the six months and backed your rights to the first the date of the first filing so for example if we filed an application a trademark application in the US today 20th September and it was the first filing of the mark we'd have until the 28th of March if our subsequent applications in the UK in the EU and anywhere else that is part of this convention but also claim priority back to the 25th oh sorry 28th September U.S filing dates and that's helpful to some businesses you know for example if they want to launch but see how a brand goes so maybe they're launch in the US and then they wait about three months to see whether um it's successful outside of the US then they can file subsequent applications and also it happens when their budget restrictions so that you kind of stagger them and see uh and spread the cost of the filing program as well so that's really helpful and so now you have your registered trademark you kind of go what do I do with it and is it great it's just trademark I am the owner of this trademark what do I do so first of all what you have to bear in mind is that you have to renew your trademark every 10 years but you can renew it indefinitely so there is in contrast to pattern no no time limit as long as you pay the renewal fees the other decisive point in this regards to mention is the use of the trademark and then in this regard it is like the Bear in mind use it or lose it but um there is a so-called five-year grace period of non-use from the day or from the date of the registration on the mark and within this pie a five-year time period you don't have to use your trademark in order to invoke trademark rights against a third party or to file an opposition but this uh grace period of non-news is some kind of yeah tricky because after this five years you really have to use your trademark for invoking rights against third parties otherwise I I after this five years a third party could already file one day after the spark your periods ended uh revocation actually based on non-use against your trademark and indeed then in this case you have to provide proofs of a right preserving use of your trademark exactly in that period grace period of non-use where you thought oh I don't have to use the trademark now I can wait but this is a bit it's a bit tricky because then in this case you really have to show even in that time the pride preserving use so as regards to write preserving use it is always helpful to keep advertising material invoices um in other documents like photos of the products in a folder so that in case a third-party files any action against your trademark that you are prepared already and another point is of when you have the rickets the trademark of course you have the benefit of enforce it against third parties and which are uh younger than your own trademark application for doing so of course you need to be aware which are the trademarks filed after your own trademark and the aui oh no they provide no notifications about um EU trademark applications but the Au IPO does not provide notices as regards like app trademark application in AU member states as such it's always good to set up a watching monitoring service in place so you could see what other maybe as well competitors what trademarks they are fighting and then to be as well aware of the opposition period when you have to file or until which time you can file a trade a position two period I get the opposition against this trademark and in this regard if you have a lot have noticed the opposition period or the opposing or position period has passed there's always the possibility to file as well a cancellation action but this cancellation the costs are a bit higher and um as that is always good to start with the opposition and then maybe many cases could be also settled because some some trademark owners if they are probably weren't aware that there are any prior trademark so setting up a watch service is good sometimes if you have products which are highly to be counterfeited products like the fashion industry or jewelry then it's also possible to um set up Customs applications for Action um in this regard I experience or already heard from a UK colleagues that the German Customs are supposed to be very good in the Munich Airport so this is the thing to consider after having a registered trademark which is subject to kind of counterfeit products and as well another thing if you're not using your trademark but maybe a distributor is losing your trading it's about licensing or assigning rights um so there you have several things to think about when you never ever registered trademark and as the last point we want to highlight now some differences between EU and UK and U.S trademark law points yes so we thought we've spoken for about half an hour um what can you distill the presentation into what other points that we'd like to you to kind of take home um and then we thought you know what better than a table or two um so we thought we'd look at the UK EU and USA uh jurisdictions and kind of point out some of the differences or unique uh uh points that are relevant to each one so in the U.S there are various filing bases you know for example you have an intent to use a trademark or basing your application and actual use whereas in the EU and the UK that doesn't exist you just follow the application so sometimes we send instructions and we get questions back and we just have to think about these things whereas with us we're just getting instructions from you and we've all the application and as Eula mentioned already in the EU and the UK there are broader terms that are acceptable in the US I think it's the everyday commercial meaning I think that's the term that's used in examination report so we have to be a bit more specific uh when we're dealing with us lists of goods and services and in relation to Declarations of intent use in the EU you don't have to declare that you intend to use a trademark when you're filing an application however if you file an application with no intent to use it and for example some of us call defensive applications these eventual registrations can be canceled on the basis of bad faith because you're trying to stop other people from obtaining those rights in the UK you do tick a box on the application to confirm that you have a declaration of intern to use but you can also apply to register sorry cancel registrations on the basis of bad faith in the US as you all know um Declarations of intent to use are applicable and can be part of a filing basis you know if you haven't used the mark already in the US and with the advertisement period in the EU no if so but it's three months in the UK as Julia mentioned before it's two months and then if you have an interest in possibly opposing an application then you can apply to extend it to three months but once it's extended only the party that has expended it has a right to your own option to file an opposition within that three-month period so if you don't apply for an extension at the end of the two-month period Then you kind of lost your chance to object to that until it goes to registration and then you can think about applying to cancel the resulting registration and again in the US it's one month but it can be extended up to three months and in relation to evidence of use before registration in the EU and in the UK it's not applicable whereas in the U.S if an application is filed on an intent to use basis after it's um passed the advertisement stage before it's formally accepted for registration we'd have to submit evidence abuse and a declaration so that's not something that we have to consider in the EU and the UK and as we discussed previously you can rely on unregistered rights in each of these jurisdictions however you can only in relation to the EU you can only rely on the unregistered rights within each member stage so you can select a member states or a number of member states to upon which the unregistered rights you have in those particular member states to object to an EU trademark application or registration and oh excuse me I got too excited there and in relation to post registration Declarations of use in the EU and the UK it's not applicable whereas in the US it is and we have to submit these every few years so that's something to keep in mind as well and it's the same in relation to the Declaration of in-contestability I know it's not a definite in the US but it's an option whereas in the EU in the UK it's not applicable at all and that that actually brings us to the end of our presentation uh but we'll open the fields with questions now and if uh there are any later questions please feel free to connect them up on LinkedIn I think we've got at the end of these slides we've got our LinkedIn uh contacts so if you want to connect with us for those please feel free to do so but I'll pass back to Caroline so that we can deal with any questions that come in and I'll stop sharing thank you all so much uh great a lot of great points in there um let me see yeah so if anyone has any questions again you can put those in the Q a or the chat area um I'm not seeing any right now but while we while we give everyone a few minutes to think on that I will add for for those in Kentucky if you're not already familiar Kentucky does have the step grant program um and as part of that if you are doing export internationally from the US you can actually get some of your International trademark application fees reimbursed and I will put a link to their website in the chat that's always a good resource if you're looking to do international business oh and Mary is on and actually just put more info in there so everyone can see that there as far as as what's applicable through that program so it's a really great for those looking into doing exporting too the UK and EU if you're on and interested in more of that okay so either we were really really interesting and clearly I personally thought there were a lot of really great points so and I like I liked the closing with the tables I always appreciate a table and I think I think it was good too just because for those that are on um they are you know if they're familiar with the trademark system we're going to be more familiar with the US one so it's good to see that comparison uh okay any last last questions okay well we can stick around for a few more minutes um and if you all have any questions again you can also email me oh okay so Paul did say clear and excellent no questions needed so so again thank you all for the presentation uh we definitely appreciate your time and thanks again to everyone for joining hope you enjoy the rest of your week and the weekend hopefully this weather clears up so thanks everybody thank you so much thank you