Make sure you protect your creativity through Intellectual Property Rights
30th September 2020 by Edwina Bones
It can be easy to let your guard down once a business relationship has developed. You’ve manoeuvred your way through the negotiation stage, signed the contracts and the partnership is going well; surely you can be a little more relaxed now? Sadly not! The Intellectual Property Enterprise Court has shown that, even if a contract identifies the owners of certain intellectual property rights, a subsequent agreement can transfer ownership without the parties even being aware.
In this particular case[1], the defendant was tasked with creating designs for an Italian scooter. The initial agreement clearly specified that the two registered Community designs would belong to the claimant. However, a supplemental agreement was held by the IPEC to vary this so that the parties owned these rights jointly, even though this was never explicitly stated. It was decided that both parties were allowed to continue to make the products in accordance with the design, meaning that the defendant could continue to manufacture these scooters even after the claimant had found a new supplier.
This is a useful reminder that supplementary and side agreements are just as important as the initial contracts between two businesses, and that careful drafting is key (which will come as no surprise to any lawyer). It is also important to state, clearly and unequivocally, who is to own the rights in any intellectual property that is created as part of any business venture.
After spending so much time, money and effort at the beginning of a joint venture it can be tempting to skip the formalities later down the line, but this could be costly (as the claimant in the above case found out). Take care when making new arrangements, preparing new contracts and generally when dealing with your intellectual property rights.
If you would like any further information on commercial contracts or intellectual property rights then please contact Edwina Bones (e.bones@laceyssolicitors.co.uk or 01202 205043).
[1] Scomadi Ltd and another v RA Engineering Co Ltd and others [2017] EWHC 2658 (IPEC), 27 October 2017
Edwina Bones
Senior Associate — Corporate and Commercial
Direct dial: 01202 377824
Edwina has returned to Laceys after working for Womble Bond Dickinson in Southampton and is a Senior Associate within our Corporate and Commercial team. Edwina specialises in commercial contracts, intellectual property and charity law and has experience in drafting, negotiating and advising on a variety of agreements. Since qualifying in 2011, she has advised a range of businesses in various sectors. This includes a secondment working in-house for a well-known multi-national retailer.
Edwina has been listed in the Legal 500 as having an “incredible knowledge and a drive to do things right’. She enjoys getting to know a client’s business in order that she can provide tailored, practical advice.
Outside of work Edwina enjoys practising yoga, walking her energetic Labrador in the beautiful Dorset countryside and generally keeping active as well as spending quality time with her family and friends.
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