© Webber Wentzel WESTERN CAPE FUNDING FAIR Monetising Inventions and Maximising Brands: An IP Toolkit for Businesses May 2016 Aalia Manie

ONCE UPON A TIME… 2

3 VW, BMW & Rolls-Royce – the sale that wasn't VMW buys manufacturing plant + rights to mascot & shape of radiator grille BMW acquires rights to use the Rolls-Royce name and logo VW could manufacture cars, but could not sell under brand BMW could sell cars under brand, but could not use mascot or distinctive grille

Makate = employee of Vodacom who invented 'Please Call Me' service Verbal Verbal contract with Vodacom re: remuneration. No formal / written contract (eg NDA or royalty agreement) Makate didn't hold a patent Eventually Makate won -- was able to prove verbal contract What if What if he hadn't received financial backing from Sterling to sue? What if IP rights What if he had protected his IP rights? 4 "Please Call Me" : Vodacom vs Makate

5 monopoly Hold a monopoly

6 Freedom to operate

7 assets and revenue Convert creations, ideas and brands into assets and revenue

8 advantage Competitive advantage

9 But, what is Intellectual Property ("IP")?

10 An apple (IP claim) a day … keeps the (competition) away? Apple design patent | Samsung phone

Key to monetising your brand identity and reputation An identifier used to distinguish goods and services from those of others in the same/similar field of trade Names, signs, marks, logos, slogans, straplines, packaging elements, etc Includes letters, numbers, shapes, symbols, sounds, smells, pictures, etc 11 Trade marks® Unregistered trade marks have less protection and are more difficult / costly to enforce.

12 Putting TM or ® next to your brand does not protect it Owning company name or domain owning trade mark Do availability & registrability searches – existence of prior rights? File under the correct name File in the correct class Be careful with your specification – not too broad or too narrow Remember – protection is limited to class/specification Renew every 10 years Brand Toolkit

distinctive Choose something distinctive o Coined / fanciful / newly created words o Ordinary word applied to new application (eg. 'Apple' for computers) generic Avoid generic words descriptive Avoid descriptive words Avoid adverse means or undesirable connotations Be cautious about places and geographical indications Must be more than mere description of nature, kind or quality of product/service 13 Some tips for picking a trade mark

Sell trade mark + goodwill Licensing Endorsement Sell/license for specific: o purposes / applications o territories Reseller / distribution – new markets Leverage as security for finance/loan Franchises – trade mark + business process model 14 Monetising & leveraging trade marks

Patents Protection for inventions  20 years making, using, sellingimporting Owner has right to exclude others from making, using, selling or importing that invention Key elements - must be: o novel o novel (new) and o inventive o inventive (not obvious) Exclusions: eg games, art, business methods, mathematical methods, computer programmes 'as such' (not part of a wider technical solution) Territorial: limited to countries designated. 15

Commercialising Patents 'Practise' yourself (eg manufacture and sell) Pivot from one application to another License others (passive income) Sale Sell/license for specific: o purposes / applications o territories 16

Designs Patterns, shapes, configurations, ornamentation Functional designs o features necessitated by function o new and not commonplace o 10 years Aesthetic designs o features appeal to and judged solely by the eye o no protection over purely functional features o new and original o 15 years 17 May also be monetised, sold and licensed!

Copyright 18 Music, films, books, art, photographs, architectural designs, computer programs Arises automatically  no registration Enforceable virtually worldwide Default position: author = owner, but some exceptions Must be properly documented (cf copyright register)

Trade secrets and know-how Trade secret: = secret device, recipe or technique Know-how (practical knowledge & skills): algorithms, operational processes, technical information, etc  provides a competitive edge or needed to operate effectively Best protected by contract Keep it a secret! 19

Common Myths If I pay for it, I own it I'm free to use anything on the internet If it doesn't have a notice, then it's not protected I can use source / creative commons material without risk I have protection worldwide I can legally copy 10% without infringement It's ok to use it, as long as I don't make money off it 20

Exchange Control Restrictions SARB consent needed for: o selling SA IP to foreign resident o licensing SA IP to foreign resident (if connected parties) o payment of royalties to foreign resident Consequence of not getting exchange control approval o fines o imprisonment 21

business plan Make IP part of your business plan 22 Know your business  know your IP assets Get proper contracts in place to protect your IP and trade secrets Do full searches before launching Get proper licences for business IP that you don't own Know in which country you want to operate and apply accordingly Get protections at the right time Be aware of deadlines and procedural timelines Know what your employees, suppliers and customers access

© Webber Wentzel 2016 QUESTIONS? Aalia Manie Senior Associate |