Information

For most businesses, Intellectual Property (IP) rights are increasingly their most valuable asset. Like all assets, they must be managed, protected and monetised, to maximise value in the short and long term. This can be a complex task and expensive task. Our comprehensive IP experience means we can support clients through the IP lifecycle from advising on protecting IP, merits and options for registration, selling, franchising and licensing IP rights through to IP dispute resolution. Our Strategic, Advisory and Compliance services ensure clients are supported with as much or little support as they need. That means everything from advice on how to protect a brand and registering a first trademark, through to advising on product designs, tooling and manufacture.

Because of our experience in Strategic, Advisory and Compliance advice in the Media, Creative & Digital; Technology and IP sectors, clients come to us for our legal and industry knowledge. We use this know how to be creative about structuring deals to license, franchise and exploit IP. Whether it’s a complex technology transfer licence agreement, a licence of a children’s animation series to a broadcaster, or the licence of merchandise rights to a prolific brand, we think creatively about revenue models, guarantees, risk and licence terms and negotiate to ensure you achieve your desired goal within a reasonable legal budget. 

Our industry know how and our extensive experience in this area mean we’re often appointed to provide due diligence on a product or business before investment or sale, providing advice on how to protect various strands of IP (such as registered designs, trademarks and patents together with unregistered rights) within a product or business. 

Our Wraparound Services ensure our clients get the international IP advice they require, from tax implications of transferring IP between business owners and companies, copyright infringement which covers multiple territories or licensing IP in from creatives and vloggers from multiple territories.

Increasingly in a digital world a brand is vital to distinguish your business to customers and users, and encapsulates your reputation. We are acutely aware of this valuable asset in all aspects of our work, whether it’s the licensing agreements we prepare and negotiate or the subcontracts we prepare for the suppliers, freelancers and consultants that you may use within your business. We have our eye firmly on how to protect your brand. We also protect in the traditional ways, by advising on trademark clearance, registration through to enforcement to defend the brand.

Our work in this area includes acquisition and due-diligence of trademark portfolios, domain name acquisition, trademark searches, strategy and registration. On the dispute side, we can advise on cease and desist letters, groundless threats, revocation actions and enforcement strategies.

Often the key to maximising the return from your IP is ensuring there is a clear strategy to exploit and that you have all the tools and rights to deliver on that strategy. 

We work as part of your team to ensure we understand your commercial priorities and goals. Managing any risks, we use our industry know how to help you create and negotiate the commercial terms required to reach your goals. This may be licensing a brand or character for a third party to create merchandise products, or franchising or white labelling a product or platform to enable a third party to re-brand and exploit. We have advised on and worked with some of the most prestigious brands.

Manufacturing relationships are crucial to the successful exploitation of certain licensed product, which is why we are focused on ensuring manufacturing suppliers are contracted on appropriate terms. We support to ensure any tooling is treated appropriately and back up and fall over relationships are in place to protect supply chain continuity. We also advise frequently on IP protection for bespoke product designs, tooling and moulding for products.

Our industry know how and IP experience means we can offer a holistic view of IP portfolios. We provide a Wraparound Service where portfolios involve international rights, ensuring the audit sponsor has all round continuity of advice about the value and risk of its portfolio. We also provide commercial due diligence on IP related agreements, to guide investors, senior executives and board members on areas of risk, strength of terms and offer guidance on areas of improvement.

Highlights

  • Working with the US licensee of brands such as Star Wars, Star Trek, Dr Who, Harry Potter and advising on all aspects of IP protection for the design, manufacture and distribution of branded goods

  • Advising the Atkins estate on its sale of IP rights in original artwork to Oxford Press for the popular 'Very Short Introductions' series

  • Advising Houndworthy, online purveyor of quality dog goods

  • Advising on brand protection and securing ICON films trademark

  • Working with Sinclair Designs on various product launches and advice about brand protection

  • Advising Wallbarn on registered design right protection for its new green roof tray, securing trademarks for its new M-Tray brand in the EU and UK, plus advice on manufacturing contracts with tooling suppliers and factories;

  • Advising on trademark dispute regarding “Hello Kitty” brand

  • Technology transfer agreements for semi conductor technology to multinational defence, security and aerospace company;

  • Intra-group IP licences between semiconductor businesses

  • Licenses in of IP technology for use in an intelligent processing unit

  • Licensing in of voice recognition technology for use in microphone devices

  • Advising and negotiating licence of UK events platform on a white label basis to digital platforms

  • Advising on the infringement of copyright and image rights in photographs used in an online and print marketing campaign resulting in a successful negotiated settlement;

  • Advising on registered design right and trademark infringement caused by third party manufacturer and successfully agreeing a prompt resolution;

  • Advising on settlement terms for a trademark infringement matter between suppliers

  • Working with an inventor of a calendar application to make a patent application in the UK and US

Key contracts / services

  • All form of IPR Assignments

  • All forms of IPR Licence Agreements

  • Brand Licence Agreements

  • Technology Licence Agreements

  • Franchise Agreements

  • Brand Licensing

  • Cease and Desist Letters

  • IPR Rights Clearance

  • Commissioning, Co-production and Publishing Agreements

  • All forms of Development Agreements

  • IPR Infringement and Dispute Resolution

  • Domain Name Acquisition

  • IPR Due Diligence

  • IPR Strategy

Case Studies

Character and Branded Merchandise – Licensing Agreements

Our longstanding client is a merchandise company, as well as a licensee of branded consumer products. We worked on the range of  licensing terms and operational contracts they need to maximise the licensed merchandising rights to brands, including Star Wars, Dr Who and Star Trek.

We are currently reviewing our client’s processes for design, manufacture (including in the Far East) and licensing to ensure compliance with the licensing obligations imposed by the brand owners and to help our client minimise risk across the manufacture and supply chain.

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Registered Designs, Trademarks and Brand Protection

Our client produces and sells specialist products for the construction industry. We were asked to devise an IP strategy for them, involving the identification of all intellectual property rights in their business and a plan for how they should be protected. We held a workshop with them, reviewing their range of products (which include an innovative live green roof system) and learning about their manufacturing processes.

After identifying what intellectual property they already had in their business (including registered designs, trademarks know-how, domain names and licensed rights), and how new intellectual property was likely to develop in the future, we set about creating a list of prioritised actions the client could work through (as and when it had the legal budget). Actions included applying for registered designs and trademarks, creating a template non-disclosure agreement and putting in place retrospective assignments of intellectual property from some of its manufacturers, both in the UK and China in respect of tooling and designs.

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Who to contact

Rebecca Steer

Rebecca Steer

rebecca.steer@steerandco.com
+44 (0)117 230 9700
+44 (0) 7887 627063

Steer & Co understands our business and is able to provide insightful advice that is tuned to our business needs

– Chambers and Partners 2015, ranked in Intellectual Property, South West – Leading Individual.

Steer & Co's advice is always succinct and precise, and shows a real appreciation of the balance we are trying to strike in our commercial relationship

– Chambers and Partners 2012, ranked in Intellectual Property, South West – Leading Individual.