An Exporters guide to IP - Intellectual Property

"The overriding thing for all of this is your IP strategy. The mere fact that it is new and exciting and can be registered doesn't mean that it should be. I had a client who'd spent well into six figures on registering a worldwide patent but had no money to spend on his business."

Which brings us back to the question: ‘To protect or not to protect?’ It’s all about finding out which IP assets you can’t afford to lose and striking a balance.

Strategy First

* At a recent World IP Day event Dr Harvey Dillon, director of the National Acoustics Laboratory (NAL), mentioned that his organisation held patents but that the patents only covered a tenth of their overall IP. This meant that the NAL could show they possessed valuable IP assets without revealing all the secrets that would allow others to copy their methods.

* Be aware of your prototypes, especially if your product can be easily reverse engineered. If your prototypes are too close to the eventual product, you could be giving away all your secrets. "Put out a prototype that's not quite right so what people see, and therefore try to copy, is not the actual thing," suggests Tal Williams, partner at Australian Business Lawyers. "Counterfeiters are out for quick money so they're not going to do a whole new factory design if they find out they got it wrong, they'll dump you and go somewhere else. The more you can frustrate easy cash going to them, the better.”

* Trade shows can be a tricky area because you want to show off your products as much as possible but you don't want competitors picking up your ideas. Identify how much you will disclose to interested parties and keep an eye on what your competitors might be gaining.

CASE STUDY: Smoothly does it

Now with over 200 stores in 11 countries, the Boost Juice franchise is fulfilling their ambition to be one of the world’s most loved brands.

As you would expect from a franchise, protecting the Boost trademark is their top priority. “Global trademark strategy is at the heart of our global expansion and is the core intellectual property for a franchisee licence,” says Amy Roy, legal counsel for Boost Juice. “A registered trademark gives you the right to own your brand in a new territory and to market for prospective business partners. Most importantly, a registered trademark reserves our rights to our name and protects our brand by preventing infringers. Without taking this step, our rights to brand protection would be limited to common law rights, a less commercial protection measure in our competitive corporate world.”

In addition to the brand, there is plenty of IP that Boost has recognised as valuable to their success. Roy says their IP covers everything from copyright material to trade secrets as well as their systems and procedures for the preparation and sale of their products.

Another aspect to their strategy is thinking of the future. Although the brand has only entered a handful of countries so far, they’ve registered the trademarks in more than 50 in anticipation of further expansion. Roy explains that they incorporate an individual IP plan in the early stages of every commercial deal. “Boost Juice has established strong relationships with trademark attorneys worldwide who know our brand and vision and are always a step ahead of the game to ensure we identify our intellectual property rights and capture their protection. Every jurisdiction is different and requires a different strategic approach.”

As for defending the brand, she sounds a warning note. “We are a very friendly and innovative brand, but any threat of dilution will see us show our strength. The process of initiating infringement actions in many jurisdictions is a slow and tedious one, however Boost is generally victorious in the end.”