Rowena Price at Bread & Jam

Rowena Price recently presented at Bread & Jam, the UK’s first food founders’ conference dedicated to emerging and scaling food and drink brands, where she discussed how businesses could protect their brands and attract investment, whilst also addressing some of the common misconceptions surrounding intellectual property in the sector. Here are the key takeaways from Rowena’s talk.

Top 5 Don’ts

  1. Don’t assume your domain or company name gives you the right to use the name
    • These don’t give you freedom to operate – you can still be sued for infringing someone else’s earlier trade mark or for passing off
    • They also don’t enable you to stop others using the name (unlike a trade mark)
  1. Don’t assume your registered trade mark gives you the right to use the name
    • This gives you the right to stop others using – it doesn’t give you the right to use
    • NB similar marks can also be a problem – they don’t have to be identical
  1. Don’t forget to take assignment of copyright for any creative work you’ve instructed
    • The designers of your logos, packaging, adverts, websites etc will own the rights instead of you, unless you’ve got a contract in place
    • This can cause a real headache in due diligence or enforcement, when it turns out you don’t own your creative work
  1. Don’t think that once your name has been registered, your work is done
    • Review your brand protection regularly, to make sure it still supports your business plan (products, names, logos, markets change over time…)
    • Monitor what your competitors are selling and filing – innocent or not, you don’t want to lose sales through confusion or dilution
  1. Don’t be an ostrich
    • Due diligence during investment or exit will uncover the problems you wanted to hide and could devalue your business or derail the whole deal
    • Problems rarely go away and usually get worse over time, so deal with any issues early on and pick a brand with genuine growth potential

Top 5 Do’s

  1. Do run clearance searches before you commit to a name or new markets
    • Run initial screening checks yourself (look at databases of registered trade marks as well as on Google)
    • Get professional help to run more thorough checks if you can afford it
  1. Do file applications early, especially if you’re talking to third parties
    • You’re at your most vulnerable pre-sale, with only limited (or no) goodwill
    • Filing early establishes your rights and avoids ownership disputes
    • Remember the Far East with its heightened risk of squatters
  1. Do be pragmatic and focused when it comes to international brand protection
    • You can’t realistically file everywhere, so focus on key markets
    • An investor or buyer wants to see you understand and can manage risk, so have a clear brand protection strategy and be able to explain it
  1. Do beware of logos changing which could put your registrations at risk
    • A brand refresh may sound innocent but it could result in your logo registrations becoming unenforceable and cancellable for non-use
    • Good internal communications will help to avoid any nasty surprises
  1. Do think creatively when it comes to brand protection
    • Include IP clauses in employment contracts, distribution agreements etc
    • Include statements of ownership on websites, packaging etc
    • Make the most of using ® and TM and know what they mean

For more information, please contact Rowena Price.