Ask the Legal Expert

Q: My company engaged a consultant to develop our company website. Other than a simple purchase order, there was no formal contract. Who owns the intellectual property (IP) rights arising from the consultant’?

A: In the absence of any express agreement between you and the consultant dealing with the ownership of IP, then the default position is that the consultant will own the IP rights that arise from his or her work, despite the fact you have paid for such work. What you almost certainly would have, however, is an implied licence to use such works. If at this point you wish to own the IP created, there would need to be a formal written assignment of that IP (in this case copyright) to your company. It may be your consultant is willing to do that. They may however choose not to, particularly if they intend to use any elements of the content created in websites for other clients in the future. Hence, when engaging any consultant, where ownership of IP is important to you, it is crucial to spell out and agree who owns the resulting IP rights right from the start.

Q: For many years, my business has used a trading name, however we have never registered it as a trade mark. We have recently discovered that a new competitor is trading under a very similar name in our area. Is there anything we can do?

A: You may be able to rely on the law of passing-off to potentially prevent your competitor from operating under a similar name. This would be the case if you are able to show that you satisfy the following three criteria: (1) that you have goodwill in your trading name, (2) that the use by your competitor amounts to a misrepresentation, leaving customers confused or deceived as to whether the competitor’s products or services are actually yours, and (3) that you have or are likely to suffer damage to your business.

Given that you have been trading for many years, you almost certainly would have the requisite goodwill to bring an action. The key issue will be whether there is such a similarity between the goods and/or services being sold by you and the other business as to cause confusion to customers.

Passing off claims are however expensive to bring. It may not be too late to actually seek to register a trade mark for your trade name, if your competitor has not already done so. If your name meets the criteria for registration, then seeking registration as soon as possible would be recommended.

Q: I have recently developed a device that I believe to be ground-breaking and would like to eventually commercialise, but I have not yet applied for patent protection. Is my invention protected in any way in the meantime?

A: Depending on the nature of your device, there may be some unregistered design right protection for the outward look and feel of your invention. However, unless and until you file for patent protection (if it is available), the only other way to protect your invention is by keeping the details of the invention confidential. Indeed, failure to keep the invention confidential prior to filing any patent application may well result in your ability to seek a patent being lost.

Hence, until you apply for patent protection, it is absolutely crucial that information in relation to the development and manufacture of your invention is not placed in the public domain and that confidentiality is maintained. This is best achieved through putting in place confidentiality agreements with any collaborators, investors or other third parties with whom you are sharing information relating to the invention. You certainly shouldn’t discuss, test or display your invention in public, or post any videos regarding the invention on any public site, until any relevant patent application is made.


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