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Consider the nature of the IP right From a lender’s standpoint, use this checklist to pinpoint key points when taking IP as security and the steps to implement it... Identify the IP right and applicable law; patents, trade marks, registered designs and copyright can be mortgaged or charged... Select security: a legal mortgage (assignment plus redemption and exclusive licence‑back) offers stronger control than a fixed charge; for charges, restrict disposals and hold an executed undated assignment in escrow (verify foreign recognition)... Confirm ownership, term, existing security, licences and third‑party interests; demand warranties and title evidence, especially for unregistered rights... Assess validity and maintenance: search prior rights, check renewals and genuine use, monitor infringement, review litigation; obtain professional opinions where needed... Value the right and routes on default (licensing or sale); add complementary assets if required... Cover associated rights and materials: unregistered marks/goodwill (only with the business), unregistered designs, database right, know‑how/confidential information, domain names, and software/source code with escrow... Register...
Original news Canary Wharf Group Ltd v Comptroller General of Patents, Designs and Trade Marks [2015] EWHC 1588 (Ch) What is this case about? This matter concerns an appeal brought by Canary Wharf Group (CWG), a London-based property company, against a ruling of the UK Intellectual Property Office (IPO) that rejected the registration of CWG’s application to register the word mark CANARY WHARF, lodged in March 2013. The specification spanned printed matter (class 16) and services connected with real estate, building construction and design, car parking, landscape design and security (classes 36, 37, 39, 42, 44 and 45). By Decision O-423-14, the Hearing Officer refused the application on ‘absolute grounds’ under the Trade Marks Act 1994 (TMA 1994), namely: trade marks lacking distinctive character must not be registered (TMA 1994, s 3(1)(b)) trade marks consisting solely of signs or indications which may, in trade, designate the geographical origin or other characteristics of the goods or services shall not be registered (TMA 1994,...
In this issue: Trade marks/passing off Patents Copyright General IP Daily and weekly news alerts New and updated content Dates for your diary Trackers Useful information Trade marks/passing off Duties owed in fiduciary relationships and operation of section 10B of the Trade Marks Act 1994 (Quantum Advisory v Quantum Actuarial) Lord Justice Newey delivered a trade mark‑focused Court of Appeal decision arising from a complex series of disputes between Quantum Advisory Ltd (QuAd) and Quantum Actuarial LLP (QuAc), the pensions‑fund actuarial services provider to which QuAd, following a corporate reorganisation, had outsourced the running of its business under a Services Agreement. At first instance, His Honour Judge Keyser found that QuAc breached fiduciary obligations owed to QuAd by applying for three trade marks featuring the words ‘QUANTUM ADVISORY’ that properly belonged to QuAd, and he granted rectification of the register under section 10B of the Trade Marks Act 1994. He nonetheless considered that a...
Res Judicata provides post‑Brexit shelter for IP rights (Praesidiad & Guardiar v Zaun) Praesidiad Holding BVBA (formerly Betafence Holding BVBA) and another company v Zaun Ltd [2024] EWHC 1549 (Pat) What are the practical implications of this case? As the court observed at [62] of the judgment, an inferred disapplication of the statutory form of res judicata in Article 86(5) of Regulation (EC) 6/2002 is far from enough to infer that parliament intended to set aside the long‑standing principles of res judicata and abuse of process. In essence, the court would not permit a re‑run of issues already taken to a final determination at the EUIPO. Here, the dispute related to the validity of an RCD and its UK cloned right. Nevertheless, the same analysis may equally catch other rights duplicated onto UK registers following Brexit, for example EU trade marks mirrored on the UK register. The upshot is clear: parties should exercise caution before contesting the validity of UK cloned rights where they have already challenged the...
Copyright is a proprietary right that grants the owner the exclusive ability to perform, and to permit others to perform, particular acts in relation to the work. Under UK law, as contained in the Copyright, Designs and Patents Act 1988 (CDPA 1988), there is a closed list of categories eligible for protection, namely: original literary, dramatic, musical or artistic works sound recordings, films or broadcasts the typographical arrangement of published editions To qualify, a work falling within one of these categories must be fixed in some form. For example, writing down or electronically saving a song’s notes and lyrics creates a record that is protected, provided the work otherwise meets the CDPA 1988’s qualification requirements. For comprehensive guidance on those requirements and on subsistence generally, see Practice Notes: Copyright—protectable works and Copyright—subsistence and qualification. It is not necessary to register a work for copyright to arise. Court of Justice judgments This Practice Note includes references to Court of Justice judgments....
STOP PRESS ECCTA 2023 introduces identity verification for anyone submitting filings at Companies House. This is expected to become mandatory from November 2026. See: Registering Security at Companies House—changes under ECCTA 2023 for further details and timing. STOP PRESS On 16 March 2026, Companies House announced that on Friday 13 March it had been alerted to a security issue. A logged-in WebFiling user could, after following a specific sequence of actions, potentially view and amend certain elements of another company’s information without consent. Companies House has said that existing filed documents—such as accounts or confirmation statements—could not have been changed. There is, however, a risk that some personal data may have been accessed and that unauthorised submissions may have been made. Although information is currently limited, this could include, for example, a satisfaction of charge filing. Companies House has advised companies to review their registered particulars and filing history. Lenders may wish borrowers to confirm that these checks have been completed and that everything is in order....
Determining who holds intellectual property in the designs, drawings, specifications and similar materials created for a construction project is vital for all participants involved in the process. The copyright owner of the designs produced will wish to safeguard their rights, limit how and to what extent others may use them, and secure recourse and remedies where infringements occur. Conversely, parties that must reproduce or rely on the designs need to ensure they possess sufficient rights and permissions to permit such use. In the construction sphere, designs are commonly prepared by the architect, civil and M&E engineers, as well as by the contractor itself and its subcontractors. Consequently, clauses addressing copyright ownership are a standard fixture of professional appointments, building contracts and collateral warranties used on such projects. This Practice Note concentrates specifically on such provisions within a consultant’s appointment. Copyright in designs Copyright subsists automatically in any original artistic work; the author does not need to register their rights formally or apply for this protection. Under the Copyright,...
This Agreement is entered into on [ insert date ] Parties [ insert name ], a company incorporated in [ England and Wales ] with number [ insert company number ] and having its registered office at [ insert address ] (Licensor); and [ insert name ], a company incorporated in [ England and Wales ] with number [ insert company number ], whose registered office is at [ insert address ] (Licensee). Each of the Licensor and the Licensee is a party, and together the Licensor and the Licensee are the parties. BACKGROUND (A) The Licensor [ is the [ registered ] proprietor of OR is the applicant to register OR has the right to licence and/or sub-licence ] certain intellectual property rights. (B) The Licensee is [ insert background to licence/relevant transaction ]. (C) The Licensor has agreed to grant a licence of those intellectual property rights to the Licensee, and the Licensee has...
This Agreement is entered into on [ insert date ] Parties [ insert name ], a company incorporated in [ England and Wales ] with number [ insert company number ] and whose registered office is at [ insert address ] (Licensor) [ insert name ], a company incorporated in [ England and Wales ] under number [ insert company number ], with its registered office at [ insert address ] (Licensee) Each of the Licensor and the Licensee is a party and, together, the Licensor and the Licensee are the parties. BACKGROUND (A) The Licensor [ is the [ registered ] proprietor of OR is the applicant to register OR has the right to licence and/or sub-licence ] certain intellectual property rights. (B) The Licensee is [ insert background to licence/relevant transaction ]. (C) The Licensor has agreed to grant the Licensee a licence of these intellectual property rights and the Licensee has agreed to...