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It has been a very busy start to the year and once again issues of intellectual property, particularly for fashion designers have littered my “to do” list. The issues are on-going, and I can safely say that a major reason why the problems continue arise is because of the lack of awareness of IP rights and subsequently the lack of proactive measures to protect such rights. That said, I have listed a few IP protection tips IP owners, particularly fashion designers, should take notice when considering launching a new brand, product/design or new fashion line.
1. Learn about them
Before you can proceed with assessing your business and registering trademarks, it’s important to have basic understanding of intellectual property and the various asset categories: Trademarks, Designs, Patents, Copyright and Trade Secrets. IP is so closely “knitted” with the fashion industry, it is quintessential to have a basic understand of intellectual property. I will write a bit about each of the assets relevant to Papua New Guinea law in separate articles with more practical examples to give a better understanding of each of them.
2. Identify them
Assess your business to identify the intellectual property assets within it. Whether it is a product name, brand, slogan or business name, note down what you, your customers and competitors might consider valuable. Understandably, you may come across some grey areas and that’s ok – we’re happy to look into these issues and help you identify your IP and how to protect them.
3. Search them
Many entrepreneurs when coming up with a new business or product lines already have a potential name in mind. But even before you take the next step of registering them, it pays to do some searches on whether your proposed name is available for use and registration. If your proposed name is already in use by a direct competitor or by a third party in a related or unrelated market, you could face problems of infringement when launching. Should you proceed with the name despite the risks, it may cost you time and money you may not have foreseen and could potentially halt your business progress or plans. Conducting a search is a proactive step to protecting your IP.
We can help you conduct these searches in the relevant registries and in some cases the actual market in which you intend to do business.
4. Register Them
If you’ve identified your IP and conducted the relevant searches and have no issues in terms of their availability and use, the next step is to formally register them. Do note though that some of your rights may not be registrable in Papua New Guinea as the rights are automatic on creation – such as copyright. If you take a photo, that photo is automatically protected under PNG copyright laws and there is no need for any copyright registration (because there is none).
For any queries or concerns on the assets and rights, it’s best to seek professional advice.
5. Mark Them
Marking your IP with a circled “R”, “TM” or “C” is important because it tells the public that you own the trademark or the copyright. It gives them notice of the ownership of the right and indirectly suggests that any such unauthorized use of it is illegal. Wherever possible mark them. Some “infringers” always use the excuse of “I wasn’t aware it was protected“. If you take this proactive step of marking them, it’s hard for them to escape with this excuse.
6. Tell Them
Aside from marking the relevant product with an “R”, “TM” or “C”, it’s also important to tell the public of your ownership of these assets at every opportunity. Whether it be in brochures, catalogues, media releases or your website, tell the public you own the relevant intellectual property rights. Being active in the protection of your IP rights adds awareness of your ownership of the rights. It’s amazing how loyal customers can help you protect your brand. I was advising a fashion designer recently and it was amazing how the designer’s loyal customers were informing her of suspected counterfeits. It made it slightly easier for the designer to target the infringers because one of the difficulties in fighting counterfeits is identifying who is behind it, who sells them, who supplies them, who imports them and who manufactures them. There is often a chain of different parties in the process and more often than not, they will deny blame or liability and point to others in the chain.
7. Document them
In any agreement involving IP it should be documented in your favor as the owner of the intellectual property. Sounds fairly straight forward but in some cases, with no written agreement, it’s difficult to enforce your rights. For instance, employment contracts. Do you have anything in writing that expressly indicates to your employee that you own the IP (whether it be trademarks, designs, patents, copyright or trade secrets) and that such use is limited to use while in employment and not to be used outside of it? If you don’t document them and make your staff aware if it, it makes it hard for you to defend your rights should a former employee use those rights for his/her new business or for a competing business. The former employee will make money for him/herself or a competing business at the expense of your IP.
8. Store them
A client was recently asked by a competing company whom he suspected of infringing her intellectual property. The competing company asked proof of ownership of copyright. Our client had a little bit of trouble trying to locate the evidence. In the cases of copyrighted material or work, it’s important to record and store them safely because such rights have no formal registration process. The first draft of the drawings of the design and the amendments that follow should be timestamped and stored safely. These are important documents you need to keep and can help you prove ownership should a potential infringement arise.
9. Defend them
If a potential infringement arises, do something about it. Defend them, does not necessarily mean you have to take them to Court the moment you find out of the infringement. There are legal strategies and processes you can follow that are more effective and could save you a lot of time and money. A couple of years ago and as recently as late last year, a foreign company had inadvertently used a design for one of their product lines. The company thought the design was created by one of their former employees and they incorrectly presumed their ownership of it. The original creator located the design in the shops, contacted us and the matter was settled highly in favor of the client. Considering she had not yet started mass manufacturing of the product with the design, she was well compensated for the infringement and in the end did not institute any legal proceedings. It was a win/win situation as the company was able to sell the remaining lot under strict conditions. Defending your rights, does not need to be an “all out war”! Strategic steps to defending your rights can lead to monetary compensation as well as other viable business opportunities.
10. License them
In the case of our client above, the designer now licenses her rights. All documented and on terms the designer is happy with. Licensing your IP rights is a strategic way of not only monetizing from your IP but on terms and conditions that you are comfortable with whilst protecting your IP.
Seek professional advice. This is not an area that is easy to understand particularly in PNG where the law is still fairly untested. As you can see above, IP is more than protecting and defending. As we’ve seen, there are strategies that can help you monetize from it. Seeking professional legal advice from an IP specialist can help you protect and monetize from your intangible business assets.
By Vai IP Intellectual Property Lawyers Consultants
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