Virtuoso Legal | Award-Winning Intellectual Property Law Firm.
Virtuoso Legal are a world-class Intellectual Property law firm. Our expert solicitors are experienced in all forms of intellectual property law. We have represented clients big and small, internationally and locally – for the past 10 years and we are renowned for our service.
“Liz, I think I can see a growth opportunity in Canada”
As businesses grow, so do the scale of challenges they face.
The rewards for overcoming these challenges – also grow exponentially.
It’s what makes business exciting, no matter how big or small you are.
One such exciting time in growth is when a business is set to establish an international foothold.
Taking a business to the global stage can feel like strapping it to a rocket.
Whether its: fresh markets and talent pools to tap into; or the consolidation of the business as a world-wide player. There’s lots of out there to get excited about.
But before the excitement. there are many key decisions to make sure that this rocket does what it’s supposed to do.
It’s important to get them all correct; as mistakes can be very costly (just ask Elon Musk!)
So, for businesses looking to make that move – what are the main things to consider before the big countdown?
1. Getting the details right
International expansion is all about the details.
Every single aspect of the move needs to be pored over to make sure that your launch is as successful as can be.
Things you should look closely at include:
Setting up an international entity For many businesses expanding overseas, it makes sense to set up an international entity to manage their business in that jurisdiction. This offers inherent advantages by: operating in fluency with domestic law, situating the associated risk in the international entity rather than the business at home – and many others.
Setting up your HR requirements Managing a comprehensive HR system is, itself, a challenging task. When a company begins to operate abroad a number of new considerations come into play. This includes things like: labour regulations, employee rights, benefits requirements and governmental stance.
How to deal with paying employees, accounting, tax and financial compliance As with the above, different jurisdictions have different laws in place relating to financial compliance. Something as simple as having a payroll of employees, can become incredibly more complicated when transposed to a new country when all things are considered.
In each case, you’ll need to be up to date with the latest know-how to make sure that you don’t experience any last minute technical issues.
2. Keeping your key players in the game
People are what truly make businesses tick.
As a result, it’s no surprise when a business is set to expand into new territories; they earmark some of their best people to guide the process.
Having your key players in the game can be the difference between a good move and a runaway success.
For individuals the culture shock that comes with moving to a new country can be difficult as it is – and it’s something that they have to contend with alongside ensuring business success.
Things you might need to consider include:
Making sure employees have accommodation and assistance with their move
Helping top employees to adapt to their new local culture
Finding schools for employees’ children who are along for the ride
There are many other such issues (some of which you might not pre-empt) that might impact your employees when a big move is in the offing.
It’s important to do everything you can to make sure that your key players are ready to make the jump!
3. IP can be a bridge
Intellectual property is perhaps at it’s most valuable when it comes to international expansion.
When a range of different things are all in flux behind the scenes (see above); intellectual property is perhaps what remains the most consistent.
Brands, inventions, creativity and designs – if well looked after – can present a familiar appearance in the fresh market enticing new customers and hires to jump aboard.
The key point here is that IP does need to be looked after in this process, and should be a serious consideration when a company enters into a new space.
Things to consider include:
Making sure that your trade marks are registered in the new jurisdiction (and that translated versions are too!)
Reviewing your business critical IP and creating the relevant structures to protect it in new territories (e.g trade secrets management)
Setting up the relevant licensing agreements for using IP held at home, in the international entity
And much more
The effort in doing so is worth it – as setting up a business abroad with an established trove of IP can seriously boost your growth.
How to Expand a Business Globally: Countdown
There are many things that come into play when a business expands beyond its original territory, and each of these challenges require both time, attention and know-how.
So for those companies dreaming of world-wide expansion and success – remember it’s important to keep your feet on the ground whilst you work it out.
Making Your International Expansion a Success
For those looking to take their business to the next level, Virtuoso Legal are delighted to announce an event in conjunction with Blueback Global and LSS Relocation taking place in London on the 14th of June.
The theme, of the event (if you haven’t already guessed) is Making Your International Expansion a Success and FREE tickets are available on Eventbrite using the link below.
Top experts from each company will cover, in more detail, the points made above – including our very own Philip Partington in relation to harnessing IP during a big move.
There will also be the opportunity to network with other businesses attending the event who are looking to go global.
For more information, and to reserve a FREE ticket, click the link below.
Isn’t incredible how time flies? With May’s arrival we’re 1/3 of the way through 2018 in the blink of an eye.
It also means that GDPR is at the door – and by the time you receive our next newsletter we will all be operating under a new data protection regime.
For IP and data protection geeks like us this is very exciting (but equally uninteresting, we understand, for those less so inclined!)
Looking back on April – it was a busy month, with a score of highlights. So without further ado – we’ll get started.
Virtuoso Legal is 11 Years Old!
One day, eleven years ago I founded Virtuoso Legal. I did this as a response to the lack of specialist service in larger law firms for IP.
We set out to do more than simply register peoples trade marks and ideas – which always seemed to be an afterthought in large commercial firms.
Instead we aimed to work closely with businesses to help them create, grow and protect what it was that made them truly unique. In doing so we’ve seen some incredible successes – some of whom will be reading this newsletter right now.
It’s been incredibly validating to how the firm has gone from strength to strength – and in the process how the industry at large is catching up in offering more tailored and personal service. (But we’ll still always look to be one step ahead!
Here’s to the next 11 years!
No Newsletter is Complete Without Mentioning GDPR
(And it might pop up a couple more times, I’m afraid!)
If you’ve not been made aware so far – new EU regulations come into effect on the 25th of May concerning the protection of personal data.
It’s called the GDPR and there are a number of things that businesses need to think about and do to be compliant. (We won’t bore you with the details here. as I’m sure you’re more than familiar now! Check out the blog below.)
If you would like to talk to one of our team about this click the button, drop Martin an email and we’ll do what we can to help.
Updates and Blogs from March
April had a few articles for your next coffee break…
(GDPR): What Do You Need to Do
Part 4: Contracts, Documentation and Accountability
In the fourth part of our GDPR mega-post Dr. Martin goes over the general guidance that has been offered in relation to contracts that need to be in place between businesses and partners – as well as documentation and accountability you should look to have in place.
This is really the “business end”, as it were, of GDPR. It’s important to get it right. We would be more than happy to help if you have any questions.
Talking International Trade, Brexit and more with the UK200
2018 is very much a year of change, (as you can probably tell by now)! No one is perhaps more challenged by these impending changes than exporters who will not only have to think about changes in IP because of Brexit – but also data protection when it comes to overseas partners!
Not to panic! Plenty to be done, but as my conversation with the guys at UK200 concludes – it’s all about getting hands dirty when it comes to your priorities.
Virtuoso’s World of IP Round Up April 2018World IP Day
Finally, there’s all of the IP news from around the web in our monthly World of IP Round Up! Lots of interesting tales here, from KitKats to Monkey Selfies (don’t ask!)
However, what was most significant for me this month was World IP Day, which this year was themed around supporting women in gaining access to innovation and creativity through IP.
Not only was it fantastic to see so many events and celebrations around IP; but doubly so focused on how it can genuinely secure and empower women. It really gave pause for thought (even if it was only for one day!)
One day, we will celebrate this everyday. It’s something the team at Virtuoso Legal will strive toward as we move into the future. Truly inspirational.
With World IP Day at the back end of the month, and a host of news over the past 30 days – April was another interesting month for IP aficionados around the globe.
With an eye on all the IP news from across the web, without further ado – here is April’s World of IP Round Up.
World of IP Round Up: The Big OnesWorld IP Day: A World-wide Celebration of Female Innovators
Thursday the 26th of April was World IP Day, which saw a range of celebrations showing how trade marks, designs, copyright and patents impact everyday life.
This year’s theme was “Powering Change: Women in Innovation and Creativity” – looking specifically how female excellence, creativity and IP have gone (and continue to go) hand-in-hand.
This included a host of events around the globe, and the landmark announcement that the UK has ratified the United Patent Court agreement. This agreement, should the UPC be finalized, will ensure that invention in the UK and Europe is supported and safeguarded for years to come. (And that more pressingly, the frustrating and time-expensive process of protecting inventions via the EPO becomes a thing of the past).
One of the most interesting areas in trade mark law concerns the protection of non-traditional types of signs.
Whether it’s the unique smell found in a store, or a colour synonymous with a brand like Cadbury’s distinctive purple hue – each have an interesting story to tell when it comes to enforcement.
Nestlé executives will have probably turned a similar shade of purple this month as Mondelez’s complaint concerning the four-fingered Kit-Kit shape mark was upheld by the European Court of Justice. The decision has, once and for all, undermined the trade mark (registered in 2006) which will now likely be declared invalid. Mondelez will be delighted with this result, which many see as the riposte to Nestlé’s previous attempt to invalidate Cadbury’s aforementioned colour mark.
No riding off into the sunset for this trade mark infringer…
There is trade mark infringement; and then there is trade mark infringement. In a quite remarkable ruling, Harley-Davidson won in its largest ever trade mark claim against Michigan based SunFrog.com. Sun Frog are a company that allow customers to print: on-demand t-shirts, mugs and other customisable items. With the ability to print custom items comes the capacity for massive copyright infringement. It would appear that Sun Frog were not forthcoming in limiting Harley Davidson’s damage as widespread infringement was found to be occurring even Sun Frog had opposed a preliminary injunction on grounds that they had stopped infringing. It would appear that this rebellious attitude to infringement comes at a great cost – as Sun Frog now face a permanent injunction against selling infringing designs and a bill for £19.2 million in damages for wilful counterfeiting.
Closure, finally(?): Naruto the Monkey, PETA, and The Photographer
Can a monkey own copyright in a image it has taken of itself? Surprisingly, as a consequence of PETA’s determination to assert Naruto the Monkey’s perceived rights, this is a question that has been causing consternation in legal circles for many years. Finally, however the question may have found its answer as a judgment made by the 9th U.S. Circuit Court of Appeals in San Francisco establishes a precedent in US law that: humans can hold copyright, and animals can’t. Of particular note was the Judge’s comment upon PETA’s attempt to dismiss the case – where the organization was criticised for appearing to abandon Naruto’s claims in favour of public image self-preservation. (Say that fast three times!) It remains to be seen whether PETA will appeal the ruling.
A registered trade mark (or indeed, set of registered trademarks) is the bedrock of each of the world’s biggest brands. Whether it’s a logo, slogan or other brand assets – these trade marks let people know what a brand promises.
In this ongoing series, our intellectual property specialists look at how some of the world’s most innovative businesses have built world-beating brands upon registered trade marks.
Brand Breakdown 001 Under Armour
In 1996 Under Armour Inc. was founded in Baltimore, Maryland, USA. Under Armour have since become known for producing sports apparel, as well as shoes, technology and associated services.
The company began when its founder Kevin Plank had become frustrated with the performance of cotton-based shirts as an American football player. This led to the invention of Under Armour’s first t-shirt using a new fabric that Plank engineered to make athletes more comfortable during exercise.
Specifically, the clothing was worn as a layer underneath athletic outerwear and was designed to help remove sweat from the body. Calling this product “Under Armour”, Plank avoided potential negative connotations associated with its utility – instead focusing on its positive aspect, positing the product as a unique protective layer under athletic clothing.
Under Armour’s offering has since expanded considerably – covering a range of outerwear more generally, and apparel and equipment for a range of different sports.
Since being founded, the brand has risen to a market capitalisation of around $7 billion as a publicly listed company.
The Trade Marks
The centrifuge of this brand in the UK consists of three registered trade marks. These are the word mark “UNDER ARMOUR” (mark UK00002537474 in class 18, 25 and 28), it’s logo (mark UK00002527477 in class 18, 25 and 28) and “HOVR” (mark UK00003261002 in class 25).
The first two marks protect Under Armour’s principal identity assets in; leather goods and sports bags (Class 18); the wider category of clothing, footwear and sporting apparel (Class 25); and sporting equipment and apparatuses (Class 28).
Registered mark “HOVR”, on the other hand, is only registered in Class 18, covering solely footwear. HOVR being a range of footwear produced by Under Armour that include a range of technology (e.g. air pockets in the sole to reduce impact, and Under Armour’s material technology).
Analysis: Messages, Meanings and Markets
When looking at a brand a distinction should be made between:
the products and services offered under a mark; and,
the broader meanings the brand promises customers for buying these products and services
Many successful brands in the past have refer to higher-order meanings to achieve this effect.
For example – Apple did not talk about the specifics of their computers, but instead encouraged its patrons to: “Think Different”, and celebrate the “Crazy Ones”. “Apple” as a brand and logo originally references Isaac Newton’s “Apple” that led him to the discovery of gravity. There is also a biblical inference there too.
You get the computer, but then you also become an Apple person – someone who shares the same creative and pioneering attitudes as those the brand proposes. In this way, what we buy says a lot about who we are: to others, and to ourselves.
As previously stated, “Under Armour” had initially simply described the utility of the marquee product – but now, as a trade mark, the name encompasses the entire brand offering.
This expanded offering has, furthermore, been supported by the growth of Under Armour’s patent library – critically examined by PatSnap, here – covering a range of cutting-edge innovations applied to their products.
When the meanings associated with Under Armour (aside from their products) are considered in this way, the registered trade mark can be viewed as an asset that is unique amongst its peers.
Crucially, where other brands had previously placed emphasis on increased athletic output; “Under Armour” stands apart – positioning its meanings were associated instead with increased resilience.
“Armour” does not help you go first or attack with more strength. Instead, it better protects you from damage – helping you resist harm. This meaning is then supported by the utility of the product.
This represented a whole new semantic territory for this section of the market. The rising popularity of personal health activities and combat sports where resilience is essential was the perfect environment for Under Armour to capitalize on this untapped meaning. As such, it is no surprise to see Under Armour gain ground in sporting areas where resilience and strength (both physically and psychologically) are key.
The “Under Armour” logo mark, as registered with the UKIPO
Under Armour’s logo similarly signifies the meaning outlined above. The logo can be perceived in three different ways – in order of abstraction:
two identical interlinked curves that form a “U” and an “A” – the initials of the brand
a “chain-link”, as seen in a suit of armour
(very abstractly) as a human figure with arms and legs in a “lifting”, or “celebratory” position
In each case, the mark figuratively supports the meanings described above, in tandem with the “UNDER ARMOUR” word mark.
Across (a), (b) and (c) – there is a visual sense of balance as well as inward pressure and strength. Furthermore, (b) has a denotative meaning of strength and fortitude by visually referencing chain-link armour. And, in its most abstract (and tenuous) sense in (c), the mark references weight-lifting, or a human figure in a celebratory pose – the consequence of the resilience the product provides.
Crucially, as with the word mark, these meanings are high-order enough to adapt to the progression of Under Armour from a company offering a singular specialist product to once that fortifies its patrons with cutting-edge products across the board.
From a quick review, it becomes clear that – in its two principle registered trade marks – Under Armour has ample bedrock for an innovative athletic apparel brand.
To achieve brand consistency – these core assets would then be followed-up (and not undermined) through a range of other touch-points. This might include things such as:
For the sake of brevity, these other touch points will not be analysed at this time – but will be explored in further entries to this series.
It tends to be that the world’s most successful brands employ a high degree of consistency across the entirety of their activities and spend a lot of resources doing so. Ultimately, the focus is on creating a brand that is so coherent that they are instantly recognised and trusted – on a world-wide basis.
The key to ensure this activity is successful; is that it is harmonious with the key brand assets – the trade marks. Furthermore, as these are predicated upon registered trade marks – the brand is then strongly protected by intellectual property rights.
In this case, Under Armour’s registered trade marks are a set of brand assets which are as resilient as the meanings they promise to their consumers.
 In the US the company has 109 trade mark records to their name, representing a range of live and dead marks in individual classifications.
 This flexibility may be reason why many brands now tend to avoid overly decorative logos – preferring more “generic” logos – as they are better capable to adapt to changes in the business. (For example, consider the old Google logo, and the new redesign. It would seem implausible for all of Google’s services to fall under its prior visual identity.)
Virtuoso Legal Newsletter, March 2018: Something for a Rainy Day
March was a busy month for Virtuoso Legal. (Although it must be said, busy months have somewhat become somewhat the norm around here!)
We hope that you’ve been able to enjoy a similar gathering of momentum this year. As always, if there’s anything we can do to help, let us know.
With that being said, here’s a quick run through of our main updates this month.
A Big Thank You!
I would just like to extend a massive thank you to everyone who came to our meet and greet last Monday at the new office.
Moving has been quite the odyssey; and now our new signs are up, Northside Business Park finally feels like home!
If you were unable to make it on Monday, and would be interested in catching up – don’t hesitate to get in touch. It would be great to touch base.
GDPR Reminder (Just Around the Corner)
With April well and truly here, the world has roughly a month and a half to prepare for GDPR. This involves gaining a solid understanding of the data that your business collects and uses – and making sure that everything you do is lawful under the new rules on the 25th of May.
If you need any assistance or guidance, give Martin an email, and he will let you know how we can help you.
Virtuoso Legal Secure Judgment for Zaap Restaurants
In March, Virtuoso Legal successfully secured judgment for Zaap restaurants in relation to a unique design right infringement.
Virtuoso Legal are delighted to work alongside innovative and unique businesses like Zaap to protect the big ideas that set them apart. We look forward to sharing more selected work highlights like this in the future.
Finally, March was a massive month for IP around the world. A couple of landmark judgments for adidas and Crocs (only one of which walk away with a spring in their step) – and the rumblings of a “trade war” between the US and China rooted in IP theft.
Lots of other updates, besides, highlight just how much IP really underpins the modern economy. Who knows what else will happen this year?
World of IP Round Up: March 2018 | The US and China Square Off Over IP
In the World of IP, a lot can happen in a month.
March was no exception, with the a couple of big clashes and a trade war seemingly averted over the course month.
Without further ado, here’s all the news from the World of IP.
World of IP Round Up: The Big Ones
The US and China Square off Over IP
The biggest story of the month was the continuation of tensions rising between the United States of America and China. In recent times, China have demonstrated an pro-active attitude toward IP and have been rapidly accelerating their progress in a number of key areas of innovation. In tandem with this sharp progress has been long-standing accusations of state-sponsored intellectual property theft via a number of means. Over the course of March, the United States (coinciding with a number of more assertive stances on trade) appeared to take the view that this unfair activity could be addressed by implementing strong tariffs against Chinese imports. At the end of the month it now appears that this potential trade war has been averted, with China offering a range of assurances to the wider community to redress the balance. Although, nothing is certain…
As Brexit Rumbles on, the UK’s position on IP draws attention and concern
It’s a bit of a worn drum to state that the one thing about Brexit that is certain, is nothing is certain. Nonetheless as the UK’s exit from the EU approaches, the material conditions for IP are becoming an ever more urgent concern for businesses. However, this month offered some reassuring overtures and results from the government who not only addressed IP directly in recent speeches, but also agreed strong protectons in principle moving forward. In particular, there is good news in relation to trade mark and design protections registered in the EU – which (it looks) will still offer coverage in the UK after Brexit.
Adidas walk away with incredible protection over their “three stripes” mark whereas Crocs’ registered design kicked to the curb
In less auspicious news – the world of shoes was rocked with two IP judgements. Firstly, adidas found themselves receiving a favourable judgment in relation to their iconic “three stripe” mark. Namely, in a case brought against a company who had applied two stripes to their shoes, adidas were found to be correct in their charge of trade mark infringement. As a result adidas might now be able to strongly pressure anyone who deigns to affix any number of stripes on their shoes!
During the same month, the protection around the equally iconic “Croc” has been been revoked, on account of it being in use prior to it being registered. What might this mean for Crocs? Will we see thousands of new legitimate imitators, or will Crocs release a new and innovative design? It remains to be seen.