A growing number of UK schools are engaging in projects to establish schools overseas. Typically, the UK school will contribute its name, reputation and expertise to a project and will receive revenue in return. It will also benefit from cultural, sporting and reputational advantages.
We have advised UK independent schools on international licensing projects of this type in Abu Dhabi, Dubai, central Asia, China, South Korea, Thailand and elsewhere.
It is vital to protect your name and crest in relevant jurisdictions by registering them as trade marks. Before filing trade mark applications, you probably have no right to stop an infringer establishing a school using your name overseas.
It can help discussions to agree a brief Memorandum of Understanding with a potential project partner at an early stage. It is very important to make clear which parts of it are non-binding (usually most of it) and which parts of it are binding (such as provisions imposing confidentiality obligations and restricting the use of trade marks).
If early discussions go well it can then be useful to agree Heads of Terms, setting out in more detail, and in ordinary language, the commercial terms of the proposed project. Again, this document should be largely non-binding. Sometimes, Heads of Terms are contained within the Memorandum of Understanding.
Heads of Terms allow the lawyers subsequently to prepare a draft binding agreement. For example, a Heads of Terms document might mention the need for financial transparency, and the binding agreement would then go into considerable detail about financial reporting, audit rights and the appointment of auditors, etc.
The binding agreement itself will be a much more detailed document. A lot can happen in the life of an international licensing project, and the agreement needs to set out a clear framework for the successful functioning of the new school. It is a good idea to stipulate that the UK school's policies and procedures will apply in the overseas school (subject to updating and to limited local variations).
Protecting Your Name and Crest
Trade mark rights are territorial. Trade mark registrations can only be enforced in the territory in which they are registered. Unregistered trade mark rights, which are built up through use, are only enforceable in the territory in which the unregistered trade mark has been used. Your school name may have been used in the UK for centuries and built up a strong reputation during that time, but these unregistered trade mark rights would be useless against a third party using an identical name in, say, China, or the Middle East.
If you are considering an overseas franchising project, registering your name and crest as trade marks in the relevant territory is essential at an early stage.
Unlike the UK, many international territories do not recognise unregistered trade mark rights acquired through use, and in these territories the party that first applies to register a trade mark is its legal owner.
Protecting the school's trade marks at an early stage will enable the school to control the use made of its trade marks in the particular territory, and to ensure that the school retains control over the use of its valuable reputation.
It is prudent to conduct trade mark searches before filing a trade mark application in a new territory, to identify any risks associated with using or registering your trade mark in that territory.
We frequently advise schools on international trade mark issues and routinely conduct searches and file international trade mark applications.
We use our extensive knowledge of trade mark law, and our network of trusted international agents, to secure the most cost-effective route to obtaining international trade mark protection for our clients.
The Bribery Act came into force in 2011. It created new criminal offences, including the failure to prevent bribery. If one of your project partners bribes a foreign official, that could constitute an offence by you, even if you were unaware of it happening and did not sanction it.
In order to minimise risks when operating internationally, it is crucial to make clear that bribery is absolutely prohibited. Importantly, the Bribery Act requires not only that you have proper policies and procedures, but that you train your employees and enforce those policies and procedures. We can provide policies, procedures, contracts and training that will help avoid you being unwittingly drawn within the scope of the Bribery Act.
The agreement with project partners may well place obligations on those project partners to comply with local law. The agreement may well also state that it is to be subject to English law. Nevertheless, it is important to obtain independent advice on the impact of the local regulatory regime on the operation of the proposed school and on the effect of local laws on the proposed agreement.
We have a network of law firms across the world from whom we can arrange advice on international education projects. This includes firms in the Far East and the Middle East with whom we have worked on this type of project.
Collaborations do not always work out as hoped, and we have experience of helping educational institutions extricate themselves from projects where another party has not fulfilled its obligations. This typically requires local legal advice, which we can arrange. It is also helpful if the contract governing the project has been drafted in a manner that allows for an orderly termination. We appreciate that, whatever the contract says, educational institutions typically feel an overriding sense of responsibility to the students involved.
Finding the right project partner(s) is crucial. A good project partner will have:
Very often, a project partner will have a particular connection with the school - as an alumnus or a parent for example. Such people have the advantage of already understanding what makes your school special. Partners can also get together at relevant conferences or via connections with Governors, parents or overseas agents. UK Trade & Investment (UKTI) offers an Overseas Market Introduction Service (OMIS) which can help with market information and contacts in overseas territories.
Once it appears that you have found the right partner, it is vital to gain as much information about them as possible, in order to be confident that it is the sort of party with which you wish to engage in a long term and public commercial relationship. Googling is a good start, but is not enough in itself. Typically, it will be worth engaging a third party to conduct financial checks, and UKTI or the local embassy or consulate should be able to advise on the most appropriate checks in the relevant jurisdiction.
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