• October 2018
    M T W T F S S
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How do intellectual property rights transfer from the UK to the USA?

Thanks for your question! Intellectual property rights (IP) are territorial. If you only registered your trademark with the United Kingdom’s trademark office, under most circumstances, your license will not prevent foreign businesses from violating your IP rights by exploiting, copying or otherwise using your protected mark without your prior permission. Here are some common examples of trademark infringement in the United Kingdom:

  • Employees may not sell copies of protected works in the workplace
  • Management may not authorize employees to use company servers and equipment to upload protected content
  • External visitors entering your premises are not permitted to sell counterfeit and pirated items

Both the United States and United Kingdom are signatories to The Paris Convention for the Protection of Industrial Property and the Madrid Protocol, which means that any UK citizen can apply for a trademark in the USA or file an international trademark application that will provide IP protection in several countries including the USA.

Under federal law, trademarks are not automatic and are generally only protected if registered in the USA. As in the UK, trademark ownership in America is established by whoever is the first to file a trademark petition – this is known as the ‘first to file’ rule. Therefore, if there is a dispute between you and another party over a trade mark, whoever filed their mark first with the country’s trademark office will own the trademark’s rights.

If you want to completely protect your trade mark in the USA, though, you should also register it through the United States Patent and Trademark Office. Registering allows you to:

· Publicly declare your ownership of the trade mark

· Bring any legal action to the Federal courts to prevent infringing material from being imported

Securing intellectual property rights abroad can provide your firm with several advantages. In the United Kingdom, for instance, the government and IP owners can pursue criminal and civil remedies to contain trademark infringement. Private parties can even initiate their own criminal prosecutions and investigations. UK law criminally prohibits counterfeiting, or the manufacture, importation, distribution, and sale of products which carry a trademark without the owner’s permission and piracy, or copying a trademarked work to provide direct or indirect benefits to a party. These crimes carry maximum fines of up to £50,000, and a custodial sentence of up to 10 years. IP suits can also undermine your reputation in the business community and damage consumer confidence in your product. Remember, that in the UK as in the US, the primary onus is on the IP holder to defend their trademark.

You should know that not every case that falls within these criminal provisions will be prosecuted by the government. Indeed, many trademark disputes between businesses are settled in civil lawsuits where harmed firms seek damages. If someone is using your intellectual property without your permission and the infringement is occurring within a country where your mark is protected, you should follow these steps (1) write to the other party and request that they cease and desist or reach an agreement with you (be careful, though, because you can be sued for making unjustified threats in the UK), (2) enter mediation, or (3) take legal action if you cannot resolve the dispute by other means. In the alternative, you can also report the infringement to the UK’s Trading Standards Office, which may or may not take further action.

In the United Kingdom, trademark infringement cases turn on, among other things, whether (1) the marks are similar, (2) the average consumer is unable to tell the original product from the copy-cat, and (3) whether the mark has acquired a reputation in the market. Generally, owners cannot recover damages from trademark infringement if the mark was never registered. Hope this helps!

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