THE BRITISH LIBRARY

Innovation and enterprise blog

20 September 2019

Follow JRPass' Director through the Innovating for Growth programme: Maximising Your Intellectual Property 1:1 Part 2

Each quarter, we pick 18 high-growth businesses to take part in our Innovating for Growth: Scale-ups programme, where businesses receive £10,000 worth of tailored and bespoke business support and advice. Not only do businesses gain three months of guidance, they also receive automatic membership to our Growth Club and their own Relationship Manager.

This quarter, we’re following Haroun, Director of JRPass, a train travel company for those exploring Japan by rail. Haroun will talk us through each session as he progresses through the programme to get the successes and challenges of what it’s like to run a growing businesses. You can see Haroun's previous posts about marketing, brandingintellectual propertyfinancial managementproduct innovationmarketing strategybranding and research and developing a growth strategy on our blog. In his latest diary entry, Haroun has his second session on intellectual property with Briffa...

In the previous session we chatted about IP and Data Protection issues in general (you can see what I got out of the session in my previous blog on IP) and since then I have ensured that our agreements with third-parties and employee contracts reflect the IP and data considerations that were raised. This week we concentrated fully on trademark registration as we have been trading a while across many territories and it is something we have dipped our toe into, but only in the UK.

Kagoshima-Chuo station
Photo courtesy of JRPass

For the UK we covered the steps needed to successfully pass an UKIPO examiner and which classes we should be considering (you can see more guidance on trade marks on the .Gov website). We then talked about international trademarks as the market for JRPass is worldwide, with customers across the US, EU and Asia, so this is a logical step for us. The requirements vary widely according to national authority and some may be prohibitive cost-wise so you need to pick and choose carefully. The most cost-effective way of seeking protection in a number of territories (more than one or two) is to go through the World Intellectual Property Office or WIPO, which offers international trade mark protection. To do so you need an existing trade mark application in any one jurisdiction (EU or UK for example) to use as a ‘base filing’, you then pay a fixed fee to WIPO to access their system, and you can then choose to ‘designate’ any of the WIPO signatory states. Your base filing will then effectively be duplicated in these territories. 

The adviser told me that going through WIPO allows you to save considerable fees if you are filing in a large number of territories, as it is often cheaper than applying directly to the relevant IPO, and instructing local counsel. A WIPO mark can be filed here in the UK, which means that you do not have only have to deal with offices for each individual territory. If you only need one or two foreign registrations then it may be best to apply directly. Most IP firms work with foreign filing agents who can act as representatives in that case.

Not related to the session, but still talking about logos... I have been using the design marketplace 99designs recently and had a good experience, so would recommend giving it a go if anyone is in the market for new branding. Also, as I write this, it is the eve of the Rugby World Cup with Japan vs Russia kicking off the opening game! It is already an incredibly busy time for us in the office. Hoping it will be a great tournament for all. To find out more about how JRPass can help with travel during the World Cup, you can visit our website for more information.

 

Visit our website for more information about Innovating for Growth and how to register your interest for the next application round.