IPO Trademark Advice

[user352910]

Hi All,

First post here so be gentle

I am looking for advice on where I may stand in a certain situation, I am currently not very happy in my place of work, the way it's run just doesn't suit me, I have always wanted to work for myself and I have a very good opportunity to do this.

I have started preparing to leave and me being me once I put things up I find it hard to put them down I wanted to secure a decent brand name for my new venture, i registered this new name with the IPO, I haven't done anything with it yet and don't intend to until I leave but I have a copyright and inventions clause in my work contract, of course the TM was registered whilst working for this company so when I do come to leave and start working on the brand would they be able to swipe it off me?

Me being me thought that if I do it in my own time they can't touch it but even out of my contracted hours it seems from what i've read they would have a claim to it.. my fear is that I would establish it and then they find out it was registered whilst I was working for them and claim it back, stupidly I should have done it in my partners name but hindsight is a wonderful thing isn't it.

Should I cut my losses and withdraw it and register it again once I leave?

Does anyone have any advice on where I stand, please?

Thank you.

 

[Gyumri]

of course the TM was registered whilst working for this company

The clause wouldn't apply if you worked on the trademark or invention at home but it is surely designed to stop employees doing private things during working hours while working for the company.

There can't be any restriction on what you design or do while not at work provided you're not working for competitors etc in your spare time.

A lot may depend on what you have agreed in your employment contract which will guide you in what you can do.

 

[kulture]

As for all such questions, details matter. If your new venture has nothing to do with your current employer then they will have a hard time trying to take it from you and the above post perfectly correct. If however it’s closely related to your employment then you may need to look closer at the wording of your contract and perhaps get legal advice.

 

[user352910]

As for all such questions, details matter. If your new venture has nothing to do with your current employer then they will have a hard time trying to take it from you and the above post perfectly correct. If however it’s closely related to your employment then you may need to look closer at the wording of your contract and perhaps get legal advice.

Hi Kulture,

Yes it relates directly with what I currently do, I forgot to mention this massively important detail.

24. Inventions and Copyright

24.1 Any and all inventions, discoveries and ideas relating in any way to the
business or affairs of the Company which are made or discovered wholly or
partly by your during the course of your employment shall belong exclusively to
the Company and must be promptly and fully disclosed to the Company.
Hereafter these are referred to as Intellectual Property Rights.

24.2 For clarity, the above refers to:

24.2.1 All inventions of which you are the sole or joint inventor;

24.2.2 All literary and artistic works in which copyright subsists by virtue of
the Copyright Designs and Patents Act 1988 (CDPA) or any legislation
replacing or amending that Act;

24.2.3 All computer programs in which copy right subsists by virtue of the
CDPA;

24.2.4 All designs (whether registered or not) which are capable of
protection under the Registered Designs Act 1949 or the CDPA

24.2.5 All trademarks (whether registered or not) which are capable of
protection under the Trade Marks Act 1994 or any legislation replacing or
amending that Act.

24.3 Intellectual Property Rights may consist of or subsist in, without limitation, data,
designs, databases drawing, models, computer programme (in whatever form of
storage) instruction books and other information including compilations of the
above in whatever form such information may be produced.

24.4 In accepting this document, you agree to waive all your present and future
moral rights which arise under the CDPA and all similar rights in other
jurisdictions relating to any copyright which forms part of the Intellectual
Property Rights and you agree not to support, maintain nor permit any claim for
infringement of moral rights in such copyright works.

24.5 In accepting this document, you acknowledge that, except as provided by law,
no further remuneration or compensation other than that provided for in this
agreement is or may become due to you in respect of your compliance with this
clause. This clause is without prejudice to your rights under the Patents Act
1977.

9

24.6 In accepting this document, you will at the request and expense of the
Company, do all things and sign all documents deemed by the Company to be
necessary and appropriate;

24.6.1 To confirm or vest in the Company all rights, interest and title in and
to the Intellectual Property Rights and any moral rights referred to above;

24.6.2 To procure for the Company any available design, copyright,
patent, trademark or other protection for the Intellectual Property rights and
the intellectual property referred to above in the UK and in other such
territories as the Company may in its absolute discretion from time to time
direct whether arising under the Registered Designs Act 1849, the Patents Act
1977, the Trade Marks Act 1994, the CDPA or any other such territory as the
Company determines; and

24.6.3 To assign to the Company the right to apply for design, copyright,
patent, trade mark or other protection for the Works and the intellectual
property convention and to claim for such application whatever priority right
may be lawful.


On reflection, reading the above again does make it seem more clear I wont be able to do anything with it, even if I was to transfer the ownership to someone else, will i?

 

[user352910]

The clause wouldn't apply if you worked on the trademark or invention at home but it is surely designed to stop employees doing private things during working hours while working for the company.

There can't be any restriction on what you design or do while not at work provided you're not working for competitors etc in your spare time.

A lot may depend on what you have agreed in your employment contract which will guide you in what you can do.

Thank you for the reply, really appreciate, I included the clause in my work contract in the reply to Kulture.

 

[Gyumri]

""during the course of your employment"

that seems to be the key phrase which is somewhat ambiguous. Does it mean you are not able to claim the right to any design even if you came up with the idea in your spare time outside working hours?

Is sitting at home in the evening designing things in your own time relating to your employer's business an activity spent "during the course of your employment?"

 

[user352910]

Now that is a very interesting point, one could argue my contracted hours are my “course of employment” it’s still very touch and go. I hate that someone can claim to own something even when done in my own time. ?

Thanks for the response also!

 

[kulture]

See an employment law solicitor. You need an accurate assesment on both what the contract actually says and case law judgements on whether the scope extends into your particular situation.

 

[Deleted member 352941]

It sounds like you have a great opportunity to start your own venture and have taken some important steps to protect your brand name.

Regarding the copyright and inventions clause in your work contract, it's important to review it carefully and consult with a legal professional to fully understand your rights and obligations. The clause may limit your ability to use any intellectual property created while working for the company, even if it's done on your own time.

One thing to consider is that even if you withdraw the name now, there's a possibility that the company could still claim ownership of it if they find out it was registered while you were working for them.

It's a difficult situation and ultimately it's up to you to weigh the risks and benefits of continuing to pursue the brand name while you're still employed vs. starting fresh after you've left the company. It's also a good idea to have a conversation with your supervisor or HR department about your plans and see if there's any way to come to an agreement that works for both parties.

I hope this advice helps, and I wish you all the best with your new venture.