IP portfolio management
- Himanshu Dasare
- Updated: Fri, 25th Nov 2016
We manage a couture fashion label’s intellectual property portfolio.
First we audited our client’s existing IP rights, to ensure that their rights were in good order. We covered UK and international IP rights including:
- Ownership rights: both registered and unregistered;
- Expired IP rights;
- Signs of IP infringement;
- New revenue opportunities.
We proposed an IP strategy to support their short and long term business goals. This included protecting:
Being in the fashion industry, our client wanted their trade secrets safeguarded. We ensured the employment documentation provided protection. If designers designed new clothing, a line, or accessories including handbags, then IP ownership belonged to the label, even if the label didn’t subsequently manufacture the design.
If our client commissioned designers, then we ensured the contract expressly transferred IP rights to our client. We proposed additional agreements to ensure our client’s competitors could not produce similar designs.
We then recommended the label send us a clear record of their designs. We included these designs in their IP portfolio, so we could monitor infringements.
Our client’s brand is key to their consumer awareness. Hence our client’s trade marks should address current trends. We recommended our client continue to use their original trade mark, but also create sub-brands.
Sub-brands piggy-back on the main brand’s reputation, but build relationships with new audiences. Thus a sub-brand would enable our client to target consumers with different tastes or requirements compared to their traditional customers.
After discussing these proposals, we registered new sub-brands locally, regionally and internationally. We also registered new designs within the UK, EU or internationally, depending on which brand or sub-brand the designs fit.
Our client’s IP portfolio comprises trade marks, designs and patents. The new sub-brands and designs generated business growth. We proposed strategies for our client to create new revenue streams from their existing business, without giving away market share.
We suggested our client licence selected sub-brands and designs. Our client could exploit a known gap in the market, before their competitors. We ensured the licence terms were strict.
A licence permits other companies to sell your products. However, you still control your brand and how your partner sells the goods. Once our client signed a licence agreement, they provided support, in return for royalties.
Market monitoring & enforcement
Counterfeiters target our client’s brand because of their unique clothing and handbag designs, reputation, and premium pricing. We monitor the market for counterfeits.
We identified an infringer that was unfairly competing against our client. They were using a 3D printer to replicate handbags that were designed and sold by our client. The infringer sold the handbags on their website at a significantly reduced price. The only difference between the two handbags was the material used. Our client’s handbag was made using leather whereas the infringer used patent leather.
Once we identified the counterfeiters and the products, we commenced enforcement actions against the infringer. We first identified the intellectual property rights that were infringed.
In the case of our client’s handbags, the following IP rights were infringed:
Trade mark infringement
The 3D printed handbags had our clients trade mark on it. This made it look as though our client was associated with the products. Therefore we could bring an action for trade mark infringement and passing-off as the infringer had not obtained a licence to use our client’s trade mark.
Design right infringement
The 3D printed handbags looked similar to the ones produced by our client. They were printed in the same colours, they had the same designs and all the minute design details that our client’s handbags had. Due to the aesthetic similarity between the products we alleged design right infringement.
Solution before litigation
Before commencing litigation we sent the infringer a robust letter telling them that they were knowingly infringing our client’s intellectual property rights. We warned them that if they do not stop selling the handbags, we would file for an injunction and start proceedings in the Intellectual Property Enterprise Court (IPEC). We gave the infringer 14 days in which to dispose of the infringing handbags or reply to the letter.
The infringer replied to our letter immediately and asked for a meeting to try and settle the matter out of court as they did not want to incur costs associated with a court case. Further the publicity of a trial would be damaging to their businesses.
The infringer explained that the infringing handbags are one of their top sellers and therefore they wanted to find a way in which they could continue to sell the handbags.
We had to protect and maintain our client’s brand reputation. After consulting with our client we came to an agreement that our client would grant the infringer a licence for an initial period of a year to use their trade mark and designs. In return the infringer would give our client a portion of the revenue.
Our IP audits establish your business’ IP, and enables us to develop an appropriate IP strategy. Our IP Portfolio management service enables your business to create, monitor and protect your market position. If we identify a counterfeiter who is infringing your IP rights we will always proceed to take swift action. We will always find ways of settling the case before proceeding to engage in a court action. Settlement agreements find solutions that could benefit both parties. It builds new business relationships and new revenue streams.