How do I protect my agency’s name, brand and intellectual property?

For many agencies, some of the most valuable things in the business aren’t physical assets.

They’re the agency’s name, brand, website, creative work, processes, software, templates and other intellectual property built up over time.

But creating something doesn’t always mean the agency owns every right connected with it.

If you’ve worked with employees, freelancers, developers or other agencies, or your contracts haven’t kept pace as the business has grown, it’s worth checking what you actually own and how it’s protected.

Here are the main areas I’d look at.

Start by identifying what intellectual property your agency actually has

Intellectual property, usually shortened to IP, covers different legal rights that can protect creations, branding, inventions and other assets.

For an agency, that might include:

·      your agency name and logo;

·      website content and design;

·      marketing materials;

·      photographs, videos and graphics;

·      software, code and internal tools;

·      templates and methodologies; and

·      creative work produced for clients.

Not everything on that list will be protected in the same way.

The first step is therefore understanding what you’ve created, what is valuable to the business and who created it.

That becomes particularly important if you’re thinking about bringing in an investor or eventually selling the agency. Someone investing in or buying the company is likely to want to understand whether it owns the IP it relies on.

Consider protecting your agency name and brand with a trade mark

Registering a company name at Companies House doesn’t, by itself, give you comprehensive protection over that name as a brand.

If your agency’s name, logo or another brand is commercially important, consider whether trade mark registration is appropriate.

A registered trade mark can give its owner rights to prevent certain unauthorised uses of the registered mark, or a confusingly similar mark, in relation to the goods and services covered by the registration.

Before applying, it’s sensible to check whether somebody else already owns or uses the same or a similar mark in a relevant area.

You also need to think carefully about what you want the registration to cover. Trade marks are registered for specified goods and services, so the application should reflect what the agency actually does and, where appropriate, where the business is realistically heading.

The important point is not to assume that owning the company name or domain name means you’ve automatically secured the brand.

Check who created your IP

This is one of the most important checks an agency can make.

Think about who created your website, logo, brand materials, software, templates and other valuable content.

Was it an employee? A freelance designer? An external developer? One of the founders before the company existed?

The answer matters because ownership of intellectual property depends on the type of right, the circumstances in which it was created and the contractual arrangements in place.

Freelancers and contractors are particularly worth checking.

Don’t assume that because the agency paid somebody to create something, it automatically owns all of the intellectual property in the finished work.

Review the relevant agreements and check whether the rights the agency needs have actually been transferred or licensed to it.

If the paperwork doesn’t reflect what everyone intended commercially, it is better to identify that while the relationship is good than when a buyer, investor or client starts asking questions.

Make sure your freelancer and contractor agreements deal with IP

Agencies often rely heavily on freelancers and specialist contractors.

That flexibility is commercially useful, but the contract should be clear about what happens to the work they create.

Depending on the arrangement, you may need provisions dealing with ownership or transfer of intellectual property, the agency’s ability to use and adapt the work, confidentiality and any materials the freelancer already owned before starting the project.

This becomes even more important where the freelancer is creating something that the agency will then provide to a client.

Your contract with the client might promise certain rights in the finished work. You need to make sure your agreement with the person actually creating it gives the agency the rights it needs to meet that promise.

Otherwise, you can end up with a gap between what you’ve agreed with your client and what the agency actually owns or can provide.

Check what your client contracts say about intellectual property

Not all intellectual property created by an agency will necessarily be something the agency wants to retain.

A client paying for a bespoke brand identity, website or campaign may expect particular rights in the final work.

Your client contracts should therefore make clear what happens to the intellectual property created during the project.

For example, there may need to be a distinction between bespoke work created specifically for the client and tools, templates, processes, software or materials the agency already owned and uses across multiple clients.

The right approach depends on the service you’re providing and the commercial deal.

What matters is that the contract reflects what both sides expect.

This is an area where a good master services agreement and statement of work can be particularly valuable. Instead of negotiating ownership from scratch on every project, you can establish the agency’s standard position and deal with project-specific variations where necessary.

Protect confidential information as well as formal IP rights

Not everything valuable to an agency will necessarily be protected through a registered intellectual property right.

Your pricing, business plans, client information, pitches, internal processes and commercial strategy may all have significant value.

Confidentiality provisions can therefore be important in employment contracts, freelancer agreements, client contracts and agreements with potential commercial partners.

If you’re sharing sensitive information before entering into a wider commercial relationship, you might also consider whether a confidentiality agreement is appropriate.

The practical side matters too.

Think about who has access to important information, where it’s stored and what happens to that access when an employee or freelancer leaves.

Legal protection works best alongside sensible internal processes.

Don’t forget about IP when somebody leaves

An employee, freelancer or founder leaving the agency can create practical IP issues.

Make sure company materials, documents and access credentials are returned or dealt with appropriately.

You should also understand what the relevant contract says about confidentiality and intellectual property after the relationship ends.

This is particularly important where somebody has been heavily involved in developing an internal tool, methodology or piece of software.

If ownership wasn’t properly documented when the work was created, their departure can make resolving the position more difficult.

Review your IP before investment or a sale

Intellectual property questions often become more visible when somebody outside the agency starts looking closely at the business.

An investor may want to know whether the company owns the technology or brand they’re investing in.

A buyer carrying out legal due diligence is likely to ask similar questions.

If a key asset was created by a freelancer several years ago and there is no clear written agreement dealing with ownership, that can become a transaction issue.

You don’t need to wait for an investment or sale to carry out that review.

Checking the position earlier gives you time to identify gaps and, where possible, deal with them before they become part of a negotiation.

What should an agency do to protect its brand and IP?

I’d start with five questions:

1.     What IP does the agency rely on? Identify your important brands, content, software, tools and creative assets.

2.     Who created it? Check whether it was created by founders, employees, freelancers or third parties.

3.     Does the agency have the rights it needs? Review the contracts rather than relying on assumptions.

4.     Does anything need registering? In particular, consider whether important names or brands should have trade mark protection.

5.     Do your client contracts match your position? Make sure you’re not promising clients rights that the agency doesn’t have.

You don’t necessarily need to register or document every idea, process or piece of work the agency has ever created.

Focus first on the assets that matter commercially.

If your agency depends on its brand, creative output, technology or internal tools, understanding who owns those assets and how they’re protected is an important part of protecting the value you’ve built.

This article is for general information purposes only and is not advice on your specific situation, and does not constitute legal advice.

Frequently asked questions

Does registering my company name protect my agency’s brand?

Not by itself. Registering a company name at Companies House and registering a trade mark are different things. If the name or brand is commercially important, consider whether separate trade mark protection is appropriate.

Does my agency automatically own work created by a freelancer?

Not necessarily. Ownership depends on the type of intellectual property, the circumstances and the agreement with the freelancer. Don’t assume that paying for the work automatically means the agency owns all rights in it.

Should my agency own all the intellectual property it creates for clients?

Not necessarily. The appropriate position depends on the project and what has been commercially agreed. Your contracts should make clear what the client will own or be permitted to use, and what existing tools, templates, processes or other IP the agency retains.