Progress on EU trade marks and design protection post Brexit

IP rights and BREXITJerry Walder recently attended the CITMA Spring Conference 2018 in London and listened to a number of very interesting presentations.

CITMA President Kate O’Rourke kicked off  the conference with a round up of the current Brexit position for EU trade marks and designs following the release of the draft EU withdrawal agreement.

The main points relating to intellectual property are:

  • EU Registered TMs and Designs will automatically be “cloned” to provide an equivalent UK right;
  • “Cloned” rights will keep the same filing and priority date as EU “parent” right;
  • For pending EU TM and Design applications (as at 31/12/2020) there will be a priority period of 9 months (ie to 30/09/2021) to file corresponding UK applications.

These are still draft proposals and CITMA and other intellectual property organisations have raised objections to various aspects.  They are continuing to lobby the negotiators on these points.

The draft proposals can be reviewed in full at

The provisions relating to intellectual property are contained primarily within Articles 50-57 (inclusive).

If you have any questions about the impact that these proposals would have on your current and future trade mark and design protection in the UK and EU, please contact us to discuss your options.

Sanderson & Co supports University of Essex with Intellectual Property training sessions

Since moving to our new offices in the Knowledge Gateway at the University of Essex, Sanderson & Co have been increasingly involved with helping students and spin-out businesses to learn about Intellectual Property protection.

Dr. Andrea Salin, recently put his university lecturing experience to good use when he gave a lecture on patents and commercialisation of research to a group of final year students in the School of Biological Sciences at the University of Essex on 24th November 2017.

Dr. Gareth Jones, lecturer in Biochemistry, said “I was very pleased when Dr. Salin accepted to be a guest lecturer on my module as students derive particular benefit from hearing about different issues in Biomolecular Sciences directly from experts in the field.  Dr. Salin gave an overview of different types of Intellectual Property and discussed engagingly what patents are, why and when they are needed by scientific business and their role in the commercialisation of scientific discoveries in particular.”

A few days later, Andrea put his skills to use again talking to a smaller group of post-graduate business start-ups as part of a series put on by the University of Essex Start-up Hub.  The group had a particular interest in the Intellectual Property aspects of software and computer driven technology applications.

There was some excellent feedback from the attendees who really appreciated Andrea’s knowledge of the subject and his enthusiasm for this increasingly important area of Intellectual Property protection.

“Andrea made a complex subject interesting and easy to understand, he even made it enjoyable. Andrea knew the answer to every question he was asked (even the odd and difficult ones asked by me) and he gave really useful advice. I would 100% recommend Sandersons & Co and more specifically recommend Andrea to anyone who had an Intellectual Property needs. Great overview session, just hope it can be longer next time.”
Hayley Jones – Enterprise Assistant

“Dr. Andrea Salin from Sanderson & Co. explained the complexities of the IP process, the regulations and different scenarios in a clear, concise and understandable manner. The presentation was clever and tailored specifically to our necessities. He provided real-life examples to illustrate whether a particular IP type is applicable to us, or not.   Dr. Salin walked us through the fundamentals of IP and build a comprehensive and open environment where  the attendees were able to formulate questions related to particular scenarios of their business. Subsequently, those questions were answered with a great balance among law regulations, business applications and particular project technicalities.   It was a pity the hard stop due external factors, I look forward to have the privilege of being invited to another session with Dr. Andrea Salin from Sanderson & Co. in the near future.”
Emmanuel Ferreyra Olivares – School of Computer Science and Electronic Engineering


Dr. Andrea Salin

Dr. Andrea Salin
tel: +44 1206 571187

10 Essential Tips for Getting IP Right

Does your business understand and manage its Intellectual Property effectively?  If not, you are not alone.  Many small businesses worry that it is too complex for them to handle themselves but too expensive to employ external experts.

However, by following some simple steps, you can avoid the most common IP pitfalls and protect your business.

  1. Understand and identify what IP your business holds.
    Your technical innovations, distinctive brands and designs, original authored materials, technical know-how and trade secrets are all your Intellectual Property.  Some arise automatically but some must be applied for.
  2. IP is not only for big companies.
    IP rights help ensure that the people who create ideas are rewarded for their efforts.   They help individuals and start-ups to compete with larger companies. They can be extremely valuable and are a crucial component in building your business.
  3. IP rights are key business assets.
    They can generate income through commercialisation and licensing and add value to your SME.  Investors need to know your IP is protected.
  4. Consider licensing your IP.
    If your IP would be useful to other businesses, you may be able to license its use to them. It is a low risk way of exploiting your IP and can provide small businesses with new opportunities for conducting business domestically or abroad.
  5. Make sure you know who owns the IP.
    Under UK law an employer owns the IP created by its employees working “in the course of their employment”. However, contractors and consultants usually own everything they create – even if you have commissioned it – unless they assign ownership to your company with a simple contract.
  6. Confidentiality is vital to start with.
    If you don’t keep your IP confidential you risk someone else discovering and benefiting from your innovation. Also, some forms of IP cannot be obtained if the idea has been made public before you apply to protect it.  Third parties may need to sign non-disclosure agreements at early stages.
  7. Think strategically.
    Align your business plan with your IP development.  Consider an invention capture process so that you identify and protect new IP at the appropriate times.
  8. Think about international protection.
    Most IP rights are territorial and give no protection outside that territory.  You need to balance the costs of broader international protection against the likely risks and benefits of operating in the countries where you make, buy, or sell your products.
  9. Stay vigilant.
    Regular searches of published IP rights will prevent you unknowingly infringing someone else’s IP. Infringement can result in substantial fines or injunctions for your company. Searches can also identify when somebody else is infringing your rights.
  10. Use your IP rights correctly.
    Your IP rights can be challenged and invalidated if you don’t look after them.  g. Trade marks must be used regularly and correctly.   Patented products should be marked appropriately.
James Sanderson - Patent & Trade Mark Attorney

James Sanderson – Senior Partner

“A proactive, well designed IP strategy can help drive the growth of your company and does not have to be expensive.

Much of the work involved can be managed internally but sound professional guidance will give you vital peace of mind.

It is much cheaper to get professional advice and quality IP protection ahead of time rather than having to try and sort out the mess after things have gone wrong.”


Grab it! – The Art of Invention Capture

Protect your innovationsOK… unless your invention is self-propelled or attached to something else that is, it’s unlikely that things are going to get that dramatic… but invention capture can still have a major impact on your business.

What is invention capture?

Invention capture is the process by which an organisation uses a structured approach to identify and collate the innovations generated by their staff.

The majority of patented inventions are for small improvements to existing technologies or processes.  With Intellectual Property increasingly being recognised as a vital part of business strategy, identifying and protecting innovations that may give a commercial advantage is essential.

The invention capture process is a collaboration between the inventors, managers and patent practitioners.  Larger organisations may have an in-house patent department who will facilitate the process.

For organisations without in-house patent practitioners, regular meetings with their patent attorneys can help them to identify new innovations which could be patentable.  The patent attorneys can then also work with the organisation’s management team to decide which of these patentable inventions should proceed to patent applications.

What is the process?

  1. Educate

The initial stage of the process will be to educate the inventors and their managers about what they should be aware of and be looking for while doing research and development.

  1. Brainstorm

The patent practitioner will organise and moderate a brainstorm session with the inventors and managers to talk about recent research and development work to identify new improvements and discoveries.  You may find that you identify a small development which may have enormous significance to the business.

  1. Document

The patent practitioner will create draft invention capture documents for each invention based on notes and discussions at the brainstorming session.  The invention capture document will contain details of the invention as well as indications of the level of importance the company.  Once the content of the invention capture document is agreed, the document is signed and dated.

The contents of the invention capture document can then form the basis of a patent application.  A patent application can be prosecuted straight away or the management team may decide to defer an application, or decide that they do not wish to proceed with a patent application.

As always, it is essential to ensure that the invention is not publicly disclosed prior to submitting a patent application as this would prevent the invention being patentable.

  1. Monitor

In addition to identifying the inventions generated by your own business it is advisable to stay informed about the patenting activities of your competitors and others in the fields of technology relevant to your business.  Your patent practitioner can set up alerts with the US Patent Office, WIPO or EUIPO which will flag up new patent applications which may be of interest to you.


If you would like to discuss setting up robust invention capture procedures please contact us for more information.


New member of the Sandersons team


Jerry Walder, James Sanderson & Dr Andrea Salin

Sanderson & Co. are delighted to welcome Dr. Andrea Salin as the latest member of our team.  Andrea will be working with us as a Technical Assistant and completing his training as a Chartered and European Patent Attorney.  Andrea has a background in Mechanical and Aerospace Engineering and has previously worked with a leading London firm.

His previous experience has seen him work with a range of clients in industry sectors such as oil and gas exploration drilling systems and tools, medicament dispensing devices, thermal insulation systems, power cutting tools, automotive, IT, aircraft and aerospace.

Senior Partner, James Sanderson, says, “Business owners are increasingly recognising the importance of protecting the Intellectual Property that is generated by their businesses.  Andrea will be a valuable addition to our team, and his expert engineering background will enable us to continue to provide a high-level of service for the ever-increasing amounts of patent work that Sanderson & Co. is handling.”

If you would like to discuss any aspect of managing your Intellectual Property portfolio please contact James Sanderson or Jerry Walder on 01206 571187.

A (very) rough guide to patenting your invention in the UK

What is a patent?

A patent is an exclusive right that is granted by a country’s patent office to work an invention in that country for a period of up to 20 years.

A UK patent can be obtained by filing an application directly at the UK patent office or by filing a European patent application.

What can be patented?

In the UK and Europe, an invention (either product or process) that is technical in nature can be patented.

Discoveries, scientific theories and mathematic methods are not considered to be inventions per se, but a practical application of these may be patentable.

Presented information, aesthetic creations, methods for performing mental acts, playing games or doing business, and computer programs, are also not considered to be inventions per se, but they may still have technical elements to them that may be patented.

Can I patent my product/process?

Products/processes can be patented if they are new and inventive.

To be new a product/process cannot have been publically described prior to the filing date of the patent application either by you or by anyone else.

To be inventive the product/process must have new features that would not have been obvious to use to someone in the relevant technical field of the invention.

How do I get patent rights?

Talk to us about your invention. We can advise on patentability, prepare and file a patent application, and prosecute the patent application through to grant.

Alternatively you may acquire or exclusively licence someone else’s patent. We can assist with due diligence in connection with this.

What is involved in the patent application process?

We can write a patent application and send it to you for approval. Once approved, the application can initially be filed at the UK patent office. On request, the UK patent office will search databases for existing documents that describe your invention. Then, on request, the UK patent office will examine your application to see if it meets the requirements for patentability. If the requirements are met, a patent will be granted for your invention.

How long does it take?

It typically takes around 3-4 years to obtain a direct UK patent.

Download a copy of our UK Patent Application Timeline


Click to download a copy of our UK Patent Application Timeline

What does it cost?

It depends on the complexity of the invention and the nature of any objections that may be raised by the patent office.  It typically costs £4000-£6000 + VAT to obtain a UK patent. Annual renewal fees of a few hundred pounds each are then payable after grant.

Want to find out more?

If you would like to discuss your options in more details please contact us.

Looking after your trade mark

Congratulations – you’ve registered your trade mark!

Protect your IP when you trade overseas

Your trade mark

  • Protects your company’s name or logo
  • Gives you exclusive legal ownership of your brand name
  • Stops others using your registered trade mark
  • Gives you a valuable asset
  • Protects your domain name from those acting in bad faith
  • Ensures you are not infringing the registered rights of anyone else.
  • Allows you to protect the growing reputation and goodwill of your business
  • Stops others holding you to ransom.

Now what?

Depending on which territory you have registered your trade mark in, you will have a number of years during which your trade mark will continue to protect your brand.   Its protection should continue for as long as you continue to pay the maintenance fees.

But… you need to make sure you are using it correctly to prevent it being challenged and potentially revoked.

Use it or lose it

You can’t just register your trade mark and then do nothing with it.  It must be used within a 5 year period, and use may not stop for any continuous 5 year period, or it will be vulnerable to revocation.

For example, Lacoste have recently lost their crocodile trade mark in New Zealand after it was challenged by Crocodile International for lack of use.

Use your trade mark correctly

You should always use the trade mark in the form in which it is registered and for the goods or services for which it is registered.  Incorrect use can leave a trade mark vulnerable to cancellation by a third party.

Make sure it stands out

It is important that you make it clear that that it is a trade mark.  Failure to notify the public that your sign is a registered trade mark may affect your ability to claim full damages in an infringement action.

To make is stand out you can use…

  • Quotation Marks: “Sanderson & Co” trade mark attorneys.
  • Capital Letters: SANDERSON & CO trade mark attorneys.
  • Different Typeface: SANDERSON & CO trade mark attorneys.
  • Bold Print: SANDERSON & CO trade mark attorneys.
  • Colour: SANDERSON & CO trade mark attorneys.
  • Footnote: Place an asterisk next to the mark and then place at the end of the publication *trade mark.
  • Symbols: ® (if registered) or ™ (if not registered).

Generally, it is not necessary to mark every occurrence of a trademark or service mark in an article, press release, advertisement or on a website, etc;  but identification of the mark should occur at least once in each piece, either the first time the mark is used or with the most prominent use of the mark.   When in doubt it’s better to over mark it!

™ or ® – what’s the difference?

  • ™ can be used if you are claiming something is a trade mark
  • ® should only be used if you have REGISTERED it as a trade mark
  • It is an offence to use ® if it is not registered

Avoid Genericide

The term genericide refers to the way in which careless and incorrect use of a trade mark can lead to it becoming a generic term for the product that it describes.  This causes it to lose distinctiveness and therefore no longer be registerable.  eg ASPIRIN, ESCALATOR, KLEENEX, BAND-AID, YO-YO, THERMOS and WINDSURFER

To avoid genericide always use your trade mark as an adjective rather than a noun or verb.

E.g.  LEGO toy blocks or OREO cookies

Top tips for using your trade mark correctly…

Use it or lose it

Make sure the trade mark stands out in any materials

Use as an adjective NOT a noun

Use it as it is registered and for the goods or services for which it is registered

Monitor and act immediately on any misuse of the mark

Regularly review the protection you have to ensure it remains relevant for your evolving business

Is it OK to hyperlink to copyright protected material?

copyright_symbolA recent court case before the European Courts of Justice (CJEU), has added clarification to the question of when you are allowed to hyperlink from your website to copyright protected material.

Posting hyperlinks to legally published copyright protected material is allowed, even without the copyright owners permission.   You are not, however, allowed to link to material that you know has been illegally posted.

GS Media BV v. Sanoma Media a.o. case (C-160-15)  is a dispute between Dutch shockblog GeenStijl and Sanoma, publisher of Playboy.   GeenStijl posted hyperlinks on its website to a website showing copyright protected photographs which had not previously been published, and had been posted on the website without permission from the copyright holder.

The court has ruled that parties with a profit motive would be expected to research whether or not the materials that it is linking to have been published legitimately.

If one of the parties does not have a profit motive, they would not be expected to have the resources to carry out the necessary research to find out if the material is posted legitimately, then it is acceptable to link to the material.

Click to view and download the Flow Chart below


Even if there is a profit motive, if it can be proved that there was enough evidence to believe that the material was legally posted, you are able to link to the material.

In essence, if you knowingly link to material that is published without the copyright owners permission, you are breaching their copyright, and you are expected to take reasonable efforts to establish whether or not the material has been legally published.

If you have any questions about this or any other intellectual property issue please contact us.


ITMA becomes CITMA after royal recognition

citma_logotypedescriptor1On 24th November 2016 The Institute of Trade Mark Attorneys (ITMA) became the Chartered Institute of Trade Mark Attorneys (CITMA), following the unveiling of its Royal Charter. 

The Royal Charter was awarded to CITMA by The Queen at a meeting of The Privy Council in recognition of its important role in representing the specialist work of trade mark attorneys in the UK.

The Charter recognises the role of trade mark attorneys as specialist legal experts in the field of trade mark and design law.

Chartered Trade Mark Attorneys provide advice and risk assessments regarding company names and all aspects of branding protection.  Their specialist knowledge can provide a commercial view and strategic advice to make sure that a company’s trade marks are registered correctly, and appropriately for maximum benefit.

If you have any questions about trade mark protection please contact Jerry Walder,

For more information about the role of CITMA visit

BREXIT – what happens to UK and EU Intellectual Property Rights…?

IP rights and BREXITWell in reality, it will be business as usual for at least the next 2 years.  During that period the Chartered Institute of Patent Attorneys (CIPA) and the Institute of Trade Mark Attorneys (ITMA) will work with the UK Government to negotiate for the best outcome for intellectual property rights holders.


  • The European patent system is independent of the EU, and so Brexit will have no effect on European patents or applications. The UK’s membership of the World International Property Organisation (WIPO) will also be unaffected.
  • UK patent attorneys will still be able to prosecute European patent applications for all UK and overseas clients.
  • European patent applicants will not lose any rights and patents already obtained via the European patent office are unaffected.
  • UK patent attorneys can still prosecute Patent Cooperation Treaty (PCT) patent applications – which provide protection in the applicant’s chosen countries – for all UK and overseas clients.
  • PCT patent applicants will not lose any rights.


Trade Marks & Registered EU Designs

  • NO IMMEDIATE CHANGES… There will be a negotiation period of at least two years before the UK leaves the EU – and that period will only start once the UK officially notifies the EU of its intention to leave, which may not happen straight away.
  • European Union Trade Marks (EUTMs) and Registered Community Designs (RCDs) will therefore still give protection in the UK until at least June 2018.
  • The Institute of Trade Mark Attorneys (ITMA), the UK’s Intellectual Property Office and the Minister for Intellectual Property will work to ensure the best possible outcome for owners of intellectual property rights and for practitioners in the UK.
  • They will also work to ensure the transition of all EU-based trade mark and design rights to UK-based protection to be simple and cost effective.

For further information, or to discuss the implications of Brexit on your UK and European Intellectual Property Rights, please contact James Sanderson or Jerry Walder on 01206 571187.