Jessica Whittick is an intellectual property (IP) solicitor in the Litigation & Employment team at Tozers. She advises on all aspects of IP including registration, assignment, licensing and enforcement, including defending infringement claims.
Can you tell us a little bit about your professional experience?
I qualified as a solicitor in 2023 after training with Tozers.
Upon graduating from the University of Exeter with Masters’ degrees in European Law and Maritime & Commercial Law I worked as an Intellectual Property Analyst for an international brand protection firm. In this role I was instructed by big brands to perform due diligence – to search for trade marks and investigate how they were being used across the world. I also worked in anti-counterfeiting which involved going undercover to identify the supply chain of fake goods! I worked for a variety of brands in the beauty, clothing, electronics and food industry.
My understanding of the complexities of managing trade marks for big brands helps me understand how they think, navigate the intricacies of IP law and secure the best results for my clients. My unique experience has also provided me with strong open source intelligence skills which I use when identifying and protecting valuable intellectual property assets.
What drove you to specialise in IP law?
The law rewards and protects creative people by giving them IP rights – exclusive rights that they can use to generate income. I enjoy helping people protect those rights and working in litigation means that my role is fast paced and solutions driven. With the AI revolution and its impact on IP rights, it’s an exciting time to be in this sector.
What sort of clients do Tozers act for?
We act for a diverse range of clients including sole traders, start ups, charities and market leaders.
How can you capitalise from IP rights?
IP can help optimise value from your trading activities and protecting it demonstrates that you take your rights seriously. For example, investing in trade marks and protecting your copyright is attractive to investors as they will expect that their investment will be suitably protected. Ensuring your IP is protected can therefore help your business to secure finance on more favourable terms.
IP rights can also be sold, assigned, franchised or commercially contracted and this can be a great opportunity for many clients, including charities. You can commercialise them and raise income by licensing the IP to a third party. You can also license IP to another business to trade in territories where you do not operate, expanding your outreach. For innovative businesses, licensing IP can create a new revenue stream without the company having to divert from its own chosen focus.
Any common pitfalls to avoid?
· Misunderstanding copyright ownership. I frequently act for clients in disputes about copyright ownership and licensing. Unless there is an agreement to the contrary (outside of the course of employment), the first owner of copyright in works is the author. Problems often arise when working with freelancers, friends or business partners. We can review and identify copyright ownership and draft copyright assignments where required.
· Registering weak trade marks. Just because a trade mark is registered does not mean that it can be enforced and used against infringers. Descriptive marks directly describe the product, service or brand and, contrary to popular belief, are weak marks. There is a huge benefit to receiving advice about trade mark strength to secure strong branding and safeguard your trading activities. Our expert team can advise on the hierarchy of trade marks and consider vulnerabilities in your branding.
· Failing to spot potential trade mark conflicts. Clients often approach me when they have applied to register a trade mark but a third party opposes the application because they say their earlier rights are being infringed. Failure to carry out effective due diligence and searches can lead to significant costs. It’s not worth the risk and given that trade mark application fees are non-refundable, you should instruct a solicitor to ensure you get your application right. We can perform searches and offer a proactive service by contacting the registered owners of marks who might raise potential objections.
What do you think is the biggest misconception about IP litigation?
I think the biggest misconception is that if you receive notice of a claim/potential IP claim you have no other option than to accept the other party’s demands or you’ll end up in court. This is simply not the case and there are procedural steps the court would normally expect parties to take before commencing proceedings.
Instructing a solicitor can help open up a constructive dialogue with the other party to try and settle without recourse to court proceedings and a large portion of my practice involves creative problem solving and working with clients to find solutions that safeguard their interests and assets and avoid the risk of present future litigation.
What’s your favourite area of IP?
Trade marks! Registering, enforcing and defending all involve lots of interesting conversations with clients, allowing me to step into their shoes and understand their industry.
Do you have a career highlight?
Last year I was instructed by a client who was trading and had built up an Instagram following of over 100,000. They were accused of infringement by a social media giant, resulting in the suspension of their account and an opposition to their trade mark application. I helped my client agree a mechanism to settle the dispute, allowing them to rebrand and ensure no costs liability. The client was happy with the settlement, especially as it required the other party’s participation in the reinstatement of the account. I registered their new branding as trade marks after performing thorough due diligence checks and the applications sailed through the registration process with no oppositions.
How can Tozers help with IP?
Our expert team is on hand to help you identify and protect your rights.
A unique feature of Tozers Litigation & Employment team is that you can promptly discuss your legal problem with a lawyer in a no-obligation phone call. If you would like to protect you IP rights, or you think your rights are being infringed, call us today.
