18/06/2015

By Rebecca Day, Associate, Nabarro


You've had that eureka! moment and you're going to develop the next Tinder or WhatsApp. How then do you protect the fruits of your labour? Intellectual property laws in the UK do not protect ideas per se, but the embodiment of those ideas. There is also data privacy to consider. Thinking about these issues and taking some simple steps at an early stage can save you time and money and avoid problems down the line when you're ready to monetise that great idea.

With this in mind, we have compiled our list of ten intellectual property (IP) and data privacy considerations that can help you safeguard your valuable IP and start your business on the right footing.

1. Is anyone else out there using a similar (or, even worse the same) name as the one that you plan to use?

You should check what brands are in use before committing to your own and spending money on designers. Simple Internet searches and checking the relevant trade mark registers can help. You can also ask lawyers to conduct a full trade mark clearance search for the best possible assessment of related risks.

2. What's your brand and do you have a trade mark registration for it?

Once you're set on your brand and comfortable with any associated risks, you should secure a trade mark registration for it. Think about whether you should register a word, a graphic (e.g. your app icon/logo) or both depending on how you intend to use your brand.

3. What goods/services do you plan to offer now and (realistically) in the future and where do you plan to offer these goods/services?

Think about what you will offer to your customers now and what you would like to offer in the future and try to cover all of these in your trade mark application. Trade marks are territorial and you should also consider where you intend to offer your goods and services. For, example a UK trade mark will only provide trade mark protection in the UK, whereas a Community trade mark covers all EU Member States.

4. Who wrote the code and created the logos and content used in your app and have you got an assignment of the IP?

In most cases, if your designer is not an employee (see 5 below) but is a third party contractor, all IP created by the contractor will belong to that contractor — even if you have paid for the work to be done. Make sure you get a written assignment from the contractor.

5. Are any of the persons that you have engaged to write code, create designs and content for the app employees of your company?

If designers who create IP are employees of your company then you will be the owner of that IP if it was created in the course of those employees' employment. However, it is always good practice to include an express clause in the employment contract specifying that all IP created by employees in the course of their employment is owned by your company.

6. Are any photos used in the app and, if so, have you got an assignment of IP and a moral rights waiver from the photographer?

Make sure you have a written assignment of all copyright in photos that you commission a photographer to take. This assignment should include a waiver of the photographer's moral rights (which include the right to be identified as the photographer and rights relating to how those photos are treated e.g. adapted or altered).

Alternatively, if you intend to use stock photos from an online provider, make sure you get the appropriate licence.

7. Are there any domain names related to the app and are they registered in the name of the company?

Companies often engage web designers, marketing agencies and the like to register domain names and these are sometimes incorrectly not registered in the name of the company. Make sure all domain names used in your business are registered in the right name.

8. Has the app developer used any open source software in the creation of the app and what are the terms of use?

Many software designers use open source software when writing code. However, the use of some open source software can involve onerous terms, including that all IP created using that open source software automatically becomes open source itself. Discuss this with your coder and check the terms of the open source software used.

9. Have you implemented (or even thought about) a privacy policy for the app?

Your customers are legally entitled to know whether or not you will collect and use their personal information, what personal information you will collect, how you will collect it and what you will do with it. This needs to be set out in a written privacy policy which is made available to your customers before they download your app. There are additional safeguards for any information relating to children; sensitive information such as that relating to health; and any information that you transfer outside Europe.

10. Will the functions of the app involve your having to process or control personal information and, if so, have you registered your company with the Information Commissioner's Office (the "ICO")?

You need to register with the ICO (the UK's independent regulator of information rights and data privacy) if you will collect and use personal data. There is guidance on the ICO website that will help you decide if you need to register (see https://ico.org.uk/for-organisations/register/self-assessment/).