Tuesday, 12 December 2017

Trade Mark protection in the UK after Brexit

During November, position papers were coming thick and fast from IP organisations on Brexit. Mostly they are very
demanding and expect the UK's final deal to cover detailed issues on intellectual property. Such provisions will come, but they are unlikely to reach the priority these organisations expect. The EU IPO seem to think so too. They have also issued a paper (or at least the European Commission has done so on their behalf) which, to me, reads as a very strong message that it is brand owners responsibility to look after themselves.  Here are the papers:



All of these demands and comments were made before the phase 1 deal was reached on the night of Thursday 7/Friday 8 December 2017.

Our minister with responsibility for Intellectual Property  is Jo Johnson, brother of the greater Bo, was very pleased about the deal in respect of the Universities - his main responsibility  - as it seems UK academic institutions can continue to participate until 2020 in EU research projects to freely disseminate UK IP into Europe.


No reply yet as to whether UK representatives at EU IPO have the like freedom to continue as representatives while we pay to continue our support for our European neighbours.

There is a substantial amount of EU IPO business with UK legal firms that do not have European subsidiaries to take it on, that is available for transfer.  CITMA members have already commented on their clients being poached, but has anyone received a business proposition? Brexit will happen. It would be nice to know there are responsible representatives offering to provide an orderly transition for brand owners based outside the Euro27. If you are one such, do ask those making unsolicited approaches how they will work with your current representative and how they will reimburse them.

Monday, 14 August 2017

India and an Independent trademark system

Tomorrow 15th August, India will be celebrating 70 years of Independence from the United Kingdom. Have a great party.  

For rather less long (since 2013) India has been a party to the Madrid Protocol. Since national applications are subject to such prolonged delays and Madrid permits only 18 months for national offices to report refusals, designating India under the Madrid protocol has been a popular route.

From my perspective, it seems that India has notified refusals in respect of every (?) designation made. When a provisional refusal is notified by the International Bureau to the applicant, only a one month term for response is allowed. Apparently extensions can be obtained but they are discretionary and subject to fees or at least fees from your attorney.

Notifications received by WIPO from the Indian IPO seem to be added to the Madrid monitor and Romarin databases on receipt even though they have not been notified to the applicant formally. If you have a Madrid designation of India, I would strongly recommend you to keep an eye on the real-time status. You can download the refusal as issued by the Indian IPO using Romarin. I'm not sure why it's not possible to see it via the Madrid monitor interface but that seems to be the way it is.

India allocates its own serial number to the application. Using that or the international registration number, you can see what submissions have been made using the Indian IPO trademark search system. This is useful for checking what has been filed and confirming the details of any marks cited in your office action. It frequently seems to turn out that they are expired or are significantly different from the black-and-white representation included in the office action.

You will also need a power of attorney. Simple signatures are acceptable and if you scan the original in colour maybe you won't need to invest in sending the original by courier.

Representatives views seem to differ as to whether as an amendment to the specification to overcome a  citation can be filed with directly with the Indian patent office or must be filed centrally by WIPO using the Form MM6 and paying the associated fee. 

I have also been informed that:

Submissions in respect of IRs designating India have to be made electronically in the dedicated on-line portal of the Indian Trademark Office, after digitally signing documents. However, due to lack of stability of the Trademark Office's on-line system, and regular technical problems, multiple attempts may be required before a successful submission can be made

Since India is likely to be an increasingly important trading partner for the UK after Brexit, good luck in protecting your brands there. If any readers have further suggestions or tips, please comment

Saturday, 15 July 2017

Amazon Brand Registry

This is a post intended to collect information from others so I would really like some constructive
Oversight by an Amazon kingfisher
By Kpts44 (Own work) [CC0], via Wikimedia Commons
feedback.

I expect that other trademark agents who have clients who are Amazon sellers have noticed that Amazon has introduced what they call a Brand Registry. There is some public information at that link but not really enough for the curious trademark agent like myself. I am not an Amazon seller so I cannot access further information that may be available to my Amazon sellers.

Some of my clients have already decided to register their brands. They supply certain information to Amazon and then Amazon sends an email to the agent. They can do this because the agent's email is stored on the USPTO register and also on the EUIPO register. The email contains a verification code which you are supposed to pass back to your client. It would also appear that Amazon sometimes call up the representative but I haven't had a call from Amazon myself.

If you have clients who let you know that they are intending to follow this procedure with a US trademark, it would be good practice to alert your US associate as they might, quite reasonably, treat the Amazon emails as spam.

Amazon seem to want word marks though I haven't received any feedback yet as to whether somewhat stylised marks qualify. Many brand owners  have registered stylised marks rather than marks in standard characters. Indeed, logotype forms are often considered to be the trademark by marketers and anyone who has not been advised of the difference by a trademark agent would normally register their logotype rather than a mark in standard characters.

I have even had a client come to me simply because they want to register their mark for the purpose of registering it with Amazon. When that is the case it's important for the agent to know what type of trademarks Amazon will accept. Fortunately for this client I had already spotted the Amazon affection for standard characters.

The next big question I have is what are Amazon going to do with this Brand Registry? Is a product offered by someone other than the Amazon seller under that trademark to be blocked? What about fair use of the trademark? Is it to be prevented or are we allowing trademark owners too much power. These questions are very open because only Amazon seems to know the answers. When a mark is registered on a national register like that of the UK IPO or the EUIPO or the USPTO, the rights and defences are outlined in published law. Amazon is not a state, although it seems to behave like one and certainly doesn't seem to be publishing its laws.

I hope we can see some answers soon.

Wednesday, 17 May 2017

INTA 2017 FC Barcelona v RCD Espanyol

The trademark profession will gather in Barcelona. The convention is in the Fira Gran Via or is it? There are two football teams in Barcelona and I suspect there may well be two INTA conventions, with the other one taking place in central or beach venues.

Many Solo practitioners will want to gain some insights into current practise so I expect to be found at least in the mornings in Hall 8. The programme is here  or you can access the App on the web or download it to your phone so you can map the location of the official events. The App has lots of useful detail about the sessions.

 Maybe I will see you at the EUIPO session on Sunday morning, which conflicts with our very own Sir Richard Arnold talking about jelly bears or why distinctiveness is not the same across Europe including Switzerland.

Meet the Bloggers is on the beach on Monday evening - look out for lucky people with ribbons and beg for one.

Monday lunchtime there is a tweet up but to find the right coffee shop you will need to follow #INTATweetup #INTA17 on your twitter feed.

Catch some law, some #Brexit strategies, some sunshine. See you there and thanks to all those good people who have organised this amazing event.

If you aren't spending all your time in the convention halls you might want to search out an Espanyol football shirt.

Monday, 1 May 2017

Website licensing misery

I'm really not clever enough to use my own photographs to illustrate my own website. Therefore, I turn to stock photography libraries which used to supply royalty free licenses which meant that businesses like mine, which refresh their website once every blue moon, don't have to worry about paying royalties just a one-off fee to the photographer for the right to put the photo on the website and leave it there for some unspecified period. However, when I visited Alamy, I was offered a five year licence for website use. Is this an impracticable new trend or have I just been out of the stock photography market for too long?

For the purposes of this blog, I usually go to Google image search and look for Images that are labelled for reuse. Some might argue this website is commercial (even though it is not written for any direct economic benefit, but is that the test) so I tend to look for unrestricted reuse so I'm afraid I can't show you the Tate's image of St Joseph at work (I'm writing this on his feast day) even though the original artwork is out of copyright. However, thanks to the generosity of a photographer in the Philippines and Wikimedia Commons you can enjoy this image of a church sign in the Philippines.

The photographer donated this to the public domain and I am grateful for his generosity. However I must remember not to speak to the German market. According to a recent newsletter I received from the German IP firm Meissner Bolte a reform of German copyright contract law became effective on 1 March 2017. This amends the German copyright act and appears to prevent my desired single payment for the use of a copyright work. I am not clear whether this simply prevents exclusive licences, which might be okay because I'm not looking for an exclusive licence. Section 40 a of the German copyright act now provides that a copyright owner can after 10 years exploit and otherwise dispose of work himself regardless of previous contracts.  I shall be seeking further clarification when I meet my German colleagues at #INTA17 in Barcelona.

Copyright law is seriously ripe for reform as voices more authoritative than mine (Sir Richard Arnold) have been saying for some time. You can listen to an excellent BBC Radio 4 programme on the topic here.  Unfortunately it's an enormous topic and the level of protection required for a website ready photograph, a doodle and a truly original painting by Sir John Everett Millais really isn't justifiably the same.

I think my website might be words only.  That's going to be really boring.

Friday, 14 April 2017

James Peel looks at the UK IPO fees review

by kenteegardin
Fellow Patent SOLO James Peel of J.P.Peel & Co Ltd has been taking a look at the recently published Consultation document from the UK -IPO as they seek to balance the books. Here is his summary:

The proposed changes are a balance between a desire to increase income whilst changing the behaviour of applicants to simplify the UK IPO workload, particularly by encouraging applicants to file “better quality” patent applications. As an example, they report that in one year, ten individuals filed 3000 patent applications of which 51 were examined and only three resulted in granted patents which were renewed for just a few years.

The UK IPO says that they break even on costs/income after a patent has been renewed for 15 years. The fee increases may be needed to pay the salaries of the new patent examiners as their numbers have more than doubled in the past six months. Pressure had been exerted by CIPA to sort out the backlogs which were making it hard for the UK IPO to meet their own deadlines. Some years ago, national patent offices in Europe appeared to be struggling to find a role for themselves with a drop off in filings because of the success of the EPO. The UK IPO marketed itself as providing a fast and low cost route to patent protection. This appears to have been successful but at a cost to their non-urgent work. It must be a sign of confidence in their strategy and offering that the UK IPO are putting their fees up.

Two approaches to the fee increases are proposed: the introduction of new fees and increases in prosecution fees or an increase in renewal fees but with lower new fees and lower increases in prosecution fees. The latter approach is unlikely to change applicants’ behaviour though, and an opportunity might be missed.

The new fees are a charge of £10 for each page over 35 pages to be included in the application fee and a fee of £30 for each claim above 15 claims to be included in the search fee. The UK IPO predicts that the introduction of a claims fee will increase their income per case by about £210 as the average case has 22 claims. This calculation assumes that the behaviour of applicants will not change. I wonder if they took the elimination of omnibus claims into account. Also, the fees for long specifications in other jurisdictions can largely be eliminated on most cases by careful choice of font size, margins and line spacing.

In percentage terms at least, the biggest change is to the application fee which in one proposal is being tripled from £20/£30 to £60/£90 with a 25% surcharge for late payment. It is this fee which is aimed at dissuading “frivolous” applications. Such an increase in upfront costs is balanced with smaller increases to the search and examination fees.

There are greater fee increases for paper based transactions and so I wonder if we are being guided towards online transactions.  (Wonder no longer, James, the UK is going digital). This may inadvertently favour lone applicants as online transactions are on a case by case basis: it is not possible to make batch payments online.

Following the unpredictable result of the dramatic increase in claims fees at the EPO in April 2008, it is good that the UK IPO are consulting about the changes. It is now up to us to respond.

We are invited to respond by email by 6 June 2017 (Note the precise 11:45pm deadline). The earliest date on which the new fees could come into force is 1 October 2017.

Saturday, 8 April 2017

Preparing for the Unified/Unitary Patent

Subject to any rebellion in Germany it now appears that the Community Patent will emerge from its enormously long gestation period in 2018. It won't be called a Community Patent it will be a "European Patent with Unitary Effect" mostly now called a  Unitary Patent (UP). There is Unitary Patent Package of legislation which seems to be where UPP comes from. The Package includes the arrangements for the Unified Patent Court (UPC). Not even the name is consistent so what can we expect of our attitudes to it.

I have just registered for the CIPA webinars which promise to help us get practical. Book soon the first is on 27 April 2017.  These webinars are free to members as it is considered desirable/essential that everyone who claims to be a patent attorney should be fully up to speed.

AIPPI also have en event on 31 May 2017 and you can book here. There should be a webinar for that too.

The main immediate concerns are
  • Choosing between an UP or a conventional EPO bundle when grant decisions are imminent after the package takes effect, and
  • Opt out of the UPC jurisdiction for existing European Patents 
The first concerns me most and I have been pondering the factors we need to put into the mix.
Is your client is exploiting the patent? are there licences? what are the probabilities of a dispute arising? what are the probabilities of an opposition? will your client want to maintain long term? does it  envisage significant growth or being bought out?

For what I would call the ordinary SME using its own patents, only filing for true innovation, and having a fairly parsimonious attitude to renewal fees the teenage UP would probably be an unlikely survivor but it is an easy choice in the early years. The fee scale was established in 2015 so these figures are probably going to increase before you pay them.

The other big issue for UK clients is Brexit and whether the European market is available for new innovations is accessible. Its also possible the unitary region wont include the UK after Brexit  but UK owners of UP will still be able to own them.

My current thinking is that the UP is good for optimistic entrepreneurs who see a growth future, but for the more established business who knows its market probably not.

To keep up to date follow BristowsUPC and for the progress of the court see the official Unified Patent Court site. You could also stroll past the court building in Aldgate and dream of appearing there