Our focus is you

At DMH Stallard we provide specialist advice on the efficient ways to legally safeguard your intellectual property. Where necessary, we’ll defend your intellectual property with appropriate enforcement action.

Over the long term we work with businesses across the UK and internationally to identify opportunities and realise the inherent value in intellectual property. We can help to minimise threats to your intellectual property through audits and ongoing monitoring of your valued brands.

Your key questions answered

What are my intellectual property rights and how can I protect them?

Across the world, people assert their intellectual property rights in different ways, converting their brands and innovations into valuable assets. In the UK intellectual property rights can attach to the following:

  • Trade marks
  • Patents
  • Designs
  • Copyright
  • Databases
  • Confidential Information (including trade secrets)

Each of these categories of intellectual property have distinct features which your product must have to benefit from legal protection. So, for example:

  • A trade mark distinguishes the goods or services of one enterprise from those of other enterprises
  • A patent must in some way provide a new and novel way of doing something or offer a new solution to a problem
  • Registered designs must be new (that is, substantially different from anything else)
  • Copyright will attach to original artistic or literary work, together with other dramatic works, publications and broadcasts, etc.
  • Database rights serve to protect the investment you have made in developing and maintaining your databases.

Intellectual property protection is crucial if you want to avoid your innovations and developments being exploited by others at your expense. But it’s a complex area of law. Not every development is capable of protection, and often more than one intellectual property right will attach to a particular product or work. When it comes to advising you on how to protect your intellectual property rights it’s important to highlight that the way they are protected differs depending on the nature of the property you are seeking to safeguard. Some rights arise automatically on creation of the work – for example copyright, database rights and unregistered design rights. In other cases, including patents and registered trade marks or designs, you must proactively apply to register your right to obtain legal protection. If your creation is in the public domain before you have registered it, you could potentially lose any legal claim or right over it.

I’ve developed something with someone else. Who owns the rights?

Collaboration is common – in business, industry and the arts. And it’s not unusual for intellectual property to be owned jointly, or licensed exclusively as part of a collaboration. Precise ownership of the rights will depend on the circumstances in which the product or work was developed and what type of intellectual property right you are seeking to assert. For example, co-ownership of a registered design might arise in a different way to co-ownership of a trademark.

From a legal perspective, co-ownership of intellectual property should always be carefully managed. There are multiple ways disputes can arise. For example, what happens if one co-owner wants to sell the intellectual property rights? Do the co-owners separately own particular aspects of the work or product? We advise on disputes when they arise, and we help clients avoid disputes by drawing up comprehensive collaboration agreements where ownership of intellectual property rights is clearly defined.

I’ve paid for work to be carried out by a third party. Do I own the rights?

Many of our clients outsource creative and development projects to outside agencies and freelancers – development of web sites, advertising and marketing campaigns and software development are all examples of tasks commonly commissioned externally. Unlike work that’s carried out by employees, self-employed individuals or consultants will normally retain the intellectual property over work you’ve asked them to create – unless there’s an agreement to the contrary that gives the company paying for work ownership of the intellectual property rights. This is a complex area of law, and it’s a common area of dispute between companies and commissioners on the one hand and developers and creators on the other.

Dependent on the terms agreed between the parties, a commissioning company may only have a limited, implied right to use the intellectual property rights in the work solely for the purpose it was commissioned. We advise businesses on how they can assign intellectual property rights away from the freelancer to the business through bespoke consultancy, work for hire and other agreements.

An employee has created some works protected by intellectual property, but it was not part of their normal job. Who owns the work?

As an employer being able to assert ownership of the intellectual property rights attaching to work or products created by your employees is critical. And as an employer, you’re legally entitled to ownership of anything an employee makes in the normal course of their employment. The issue is not always clear-cut however, particular in an age of hybrid, remote and other forms of working.

When disputes arise between employee and employer over intellectual property ownership it’s usually because there is some doubt over whether the work was created in the course of employment. Take the example of software that’s developed by an employee at home, outside of their working hours. Is it created ‘in the course of employment’?

It’s an area of debate and each case will depend on its facts. However as an employer you can take steps to strengthen your position in the event of dispute. You can put very clear, precise intellectual property rights provisions in your employment contracts that nail down ownership of intellectual property rights as far as possible, including provision for assignment of rights to the employer in circumstances (where this doesn’t happen as a matter of law).

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Tim Ashdown
Meghan Spagnuolo

Recent work

Long-term commercial, IP, IT and data protection advice

We have worked with our client for over 16 years acting as an outsourced in-house legal function for all business and day to day legal matters, supporting on all commercial, employment issues and property matters. Our ongoing legal support helps to minimise risks across the business.

Intellectual Property

Advising digital costume design company on licensing and other rights

We act for a fast-growing digital design company that provides digital services to major film productions. Recent work for this client includes advising on Non-Fungible Token (NFT) Intellectual Property rights, preparation of standard terms and conditions to deal with data protection and intellectual property. We also advised on privacy notices, website terms and conditions, and data protection policies for the business. We worked closely with the company on the terms of a contract with a Hollywood film production.

Intellectual Property

Advising on all aspects of brand protection for a global drinks brand

We work with an emerging global spirit brand, with trade marks registered in numerous countries internationally. We are retained to support the brand in all aspects relating to protection and enforcement of intellectual property.

Intellectual Property

Luxury interior design company

We provided support so this company could expand its marketing through the use of influencers. We also advised the client with regards to its consultancy agreements with freelance design consultants, ensuring that all IPR in the freelance-supplied materials flowed to them.

Intellectual Property

Arts venue and concert hall

We have advised the client in relation to the collaboration agreement and IPR ownership. We have assisted it with negotiating improved terms for a new venture which allowed them to expand their offering.

Intellectual Property

Acting for the Executors of the Estate for a well known author

Providing advice to the Executors of the Estate in relation to the management of the author and artists’ intellectual property portfolio (including copyright, moral rights, trade marks, etc), managing existing contracts and royalty agreements with publishers, producers and merchandise arrangements, together with option agreements. Negotiating terms with a representation agency, liaising with charities relating to royalty income receipts and granting of permissions for use of works, and advising on practical steps relating to ownership of intellectual property rights and continued income to the Estate.

Intellectual Property

Protection of high profile fashion brand

We support a famous fashion brand internationally, preventing unlicensed sales and seizing counterfeits. The team also helps management and licensing of legitimate sale of genuine products for the benefit of the Havaianas consumer.

Royalty payments

Advising a charitable trust on intellectual property ownership and royalty payments, for the purposes of distribution of royalty income to nominated charities from the trust.

Intellectual property dispute

Supporting a pet food manufacturer in a dispute relating to the ownership of intellectual property rights in a trademark, slogan and web domains.

Asset protection – successfully protected the IP of our client so they could expand globally

Our client provides a turnkey franchise service for a range of international casual and fine dining restaurant brands. We defended our client against the misuse of their trademark and breaches of their franchise agreement overseas. The work of our specialist contentious intellectual property team enabled the client to regain control of their trademarks and continue their overseas expansion.

News and insights

Caterpillar wars: Colin vs Cuthbert

Robert Ganpatsingh discusses the M&S vs Aldi case that has hit the headlines recently, and explores the options available to businesses in the battle against copycat products.

Penalties for breaching environmental legislation

Insights

An overview of the environmental regulator’s approach to the enforcement and prosecution of environmental offences which outlines the potential penalties and other implications for a businesses who breaches environmental legislation

25/02/2015

Enforcing possession orders – how not to do it

Insights

We explain how not to enforce possession orders, as shown in London Borough of Southwark -v- AA [2014] EWHC 500 (QB)

29/09/2015