Top IP tips for start-ups and scale-ups

Businesses need to know that they can trade using their carefully chosen name; that they have the rights they need to use intellectual property rights owned by others; and that they are best placed to protect their brand and goodwill in the future.

Below our IP and commercial team have set out their top ten tips for start-up and scale-up businesses.

1. Do your searches

Check the Companies House register and undertake domain name and registered trade mark searches – is your chosen name available? Be aware that if you have secured a relevant company name that is not enough. Trade marks are crucially important.

2. Google your business name/straplines

Is there anyone out there using the same or similar? Are they in the same space? Any chance of an argument?

3. Don’t try and trade off anyone else’s brand or goodwill

Not even if it is funny – you’ll just end up with lawyers’ letters.

4. Obtain your domain names

Check the usual and consider non-geographic domains as well as the obvious country code domains (such as .co.uk and .com). Make sure your domains are registered in the name of your company, not the name of your IT consultant (a very common error). Similarly, make sure the rights in your website design and content belong to you (see point 9 below).

5. Register your trade marks

In addition to your brand name(s) consider whether you should register trade marks in your logo(s) and slogan(s). Think about the territories you want to protect and the classes of goods and services you want your registrations to cover.

6. Consider whether there may be registerable rights in your products

If you have an invention which might be protectable as a patent – get advice fast and don’t go blabbing about it or publishing details online. Once an invention is disclosed it is not patentable. Similarly, investigate at an early stage whether your designs should be registered.

7. Remember ideas in themselves are not usually protected by IP rights

However, if what you are discussing is confidential use an non-disclosure agreement (NDA). Always consider using NDAs when speaking to business partners and investors.

8. Know who owns what and make sure it is the company

Make sure the founders (all of them, including you), employees and freelancers all enter employment or consultancy agreements that contain comprehensive IP clauses (see point 10 below). Don’t forget IP which was created by the founders before the contracts were in place or even before the company was formed. Get all the relevant people to sign assignments of IP.

9. Are you using anyone else’s IP or software?

Make sure that you know how you can use it - does it cover what you need it to, both now and in the future (to save having to re-negotiate)? Can you use it for commercial purposes? Do you have exclusive rights? Is there a royalty? Is it clear how the royalty is calculated and paid? You need clear, written terms that are signed by all parties (see point 10 below).

10. Fully complete documents

By this we mean when you have agreed a document with someone, get it signed (properly and by all parties) and dated. Keep all signed originals in a folder and scan in copies and keep a running IP contracts file. Your lawyers, accountants and investors will want to see these and having them all easily available electronically will save you much stress and hassle.

Some of these things may seem boring or unnecessary but:

• you will end up needing to do these things when there is due diligence as part of an investment round or sale
• investors will either expect these to have been done/be in place or will be pleasantly surprised when you are able to show them copies of all of the relevant paperwork
• it is best to get people to sign relevant documents as you go along. Otherwise your risk your former shareholders or employees being unavailable at the crucial time, or may find that you are no longer speaking other than through an intermediary, just when you need their agreement and autograph on a key document
• it helps to flush out any ownership or availability issues at an early stage
• it may be that you’ve traded for years without receiving an infringement claim, but if your rights are not properly cleared and protected, you might receive a claim out of the blue, or find that you cannot stop others from ripping you off.