Monday, 17 October 2016

Trade Mark Bully - Claim Form shock - IP Pro Bono Scheme

Well maybe only as far as IPEC
It's a well-known myth that legal advice is unaffordable.

It's also  generally assumed that lawyers won't help you for free in any commercial matter.

This is now wrong with the launch of a new service today 17 October 2016 to provide free assistance to those who can't afford it in the UK intellectual property scene.

This post is not for the intellectual property professionals, it's for those people who need help but believe they can't afford it and are tempted to do nothing when they receive aggressive letters from lawyers about some issue of a name, unauthorised use of a photograph or design or, worse still, something that mentions the evil patent word.

The IP pro bono scheme was launched today by Sean Dennehey, Acting
Sean Dennehey
Chief Executive of the Intellectual Property Office. The service will not be provided by the IPO, who grant trademarks designs and patents and also provide mediation services and also operate a rather sterling phone helpline. The service providers will be fully qualified members of the Chartered Institute of Patent Attorneys, (who are providing the administration - good guys) the Chartered Institute of Trademark Attorneys or the Intellectual Property Lawyers Association

If you need help the first thing is to go to the new website  download an application form and outline your problem. If you don't have access to a computer or scanning facitlites get to one of the PATLIB libraries for help.

It's never a great thing to be litigant in person, if you can get some professional assistance. For matters relating to intellectual property, particularly claims that are made in the Intellectual Property Enterprise Court any one of the above organisations can help you find paid advice. This scheme is for those who find themselves threatened or abused but don't have the resources to cope.

While the Daily Mail and others have highlighted the problems of County Court Judgements for debt, a default judgement in a trademark infringement matter can also result in a charging order on your house that means you can't sell it or other similar civil remedies. There are people in this position because they couldn't or did't get help. The purpose of this scheme is so that it doesn't happen again. Even when you find you are in the wrong, there are ways to minimise the pain and most IP owners would prefer those solutions rather than silence.

Sunday, 16 October 2016


When I arrived in York I was pleased to be very rapidly introduced by an entrepreneur to a solicitor who organised the local sole practitioner's group. I even found they had several Intellectual Property members who were old friends. The group encompasses a wide range of specialistations but most were solo rather than sole solicitors managing an army of unqualified staff that have given the SOLE name a dubious reputation to some.

The first meeting I attended in late September was at the offices of Roche Legal. Rachel specialises in family law, probate and court of protection issues. Young, energetic, caring and careful would be my description. She also has a nice line in corporate branding. When I get a car I must remember to splash my logo on it. More seriously a branded car is quite helpful to identify yourself when visiting an elderly or cautious client.

The discussion turned to the relaxation or simplification of the SRA Handbook. The Law Society and this group were vehemently against these proposals. The image here shows the results of the Law Society survey. You can find full details here.  There was a strong confirmation bias in the way the Law Society carried out this survey. I suspect that many solicitors, particularly those of us practising in more esoteric areas like patents and trade marks with strong independent professional bodies, who felt that the recommendations made sense, simply didn't respond because it was pretty obvious that the Law Society were unlikely to listen to evidence that did not corroborate their very strong distaste for these simplifications.

The problem, for example, of saying that solicitors should not work in unregulated firms is that they do and have done for years. Will allowing them to say they are solicitors rather than solicitor (non-practising) make any difference to the consumer.

The real problem is that the SOLICITOR brand is no longer a  mark of quality. It has been brought into disrepute by the media and even the judiciary as well as some solicitors themselves because of overcharging or just being expensive. This is quite separate from damage done to the brand by those who provide poor services or run off with your inheritance. There was support at our meeting in York for a two-tier profession with the elite being able to use some postnominals (that's letters after your name) or other protected title that would mark them out as the good guys who were trained and accepted detailed regulation. Could we promote ourselves for example by that grand title SOLICITOR OF THE SUPREME COURT - which sadly was removed from us back in 2009 when the House of Lords became the Supreme Court and we became solicitors of the senior courts of England and Wales - so much less grand. As organizations like QUALITY solicitors have found, it's quite difficult to both maintain and get across the difference in a credible way and make a profit.

The Law Society, to give it its due, is doing its best to promote the SOLICITOR brand with a campaign that launched on 3 October 2106. See the #useasolictor hastag on twitter.

For those of us in intellectual property we already have a reasonable quality mark in our CPA or MITMA postnominals. With the imminent launch of CITMA we should be able to give the public a strong branded message that the best legal advice on trade mark issues comes from a Chartered trademark agent, some of whom are also solicitors too! 

Sunday, 25 September 2016

Why you should withdraw your European Patent Application

Patent applicants and their agents should very seriously consider their portfolios of pending European patent applications. Why?

  • You will get the whole of the examination fee back if examination has not started. This deal was improved on 1 July 2016 and is part of the EPO drive for greater efficiency as described here. This is set out in Art 11 of the Fees Rules if you don't believe me.
  •  You will get the whole search fee back if there is no supplementary search. Art 9 of the Fees Rules
  • The prospect of the Unitary Patent (UP) is fading after the #Brexit vote by the United Kingdom is receding fast. The continental Europeans would like the UK to ratify the Agreement fast so that it can become effective. However to do so before negotiations are complete would potentially put UK businesses who hold patents at a disadvantage when they were being enforced. Its possible that as part of the negotiations some new Treaty might be arranged that allowed the UK and possibly other significant non EU countries that are part of the EPO system to participate. Do read the opinion from Counsel which was sought by IP Federation, the Chartered Institute of Patent Attorneys and the Intellectual Property Lawyers Association rather than the spin that certain parties have put on it. Without the Unitary Patent the less rich patent holder tends to proceed on grant only with a few London Agreement territories. A rapidly granted UP held out tantalisingly the prospect of maintaining patent protection in 25 territories for a reasonable period until the renewal fees climb massively after year 10 to encourage lapse of any patents that are unexploited by that age. 
If you don't want to withdraw patent applications on which hefty renewal fees are being paid for nothing then you should consider making a PACE request when paying the next fee. You need the form 1005 and since I just spent an age looking for it, I have written this blog to hold the link to its location. I am sorry if they have since moved it.

Of course if you move the application along you will need to be able to respond to the examination report and pay the grant fees. It is worth giving applicants an idea of what that might cost having looked at the state of the claims in the application as it stands.

As  a further incentive to tactical withdrawal sometimes the EPO is going  to give you advance notice that the examination is about to start. A sensible move because it must frustrate examiners that cases are abandoned when they have done work, which could have been avoided.

Saturday, 3 September 2016

Co-Working or the Rucksack Office

The Essentials of Office life
The image is of my Northern Powerhouse office. You will appreciate the choice of brand THE NORTH FACE to represent that my travelling office has gone North - mostly it only gets as far as York, which can be reached from my London office in 2 hours preferably by the very comfortable services of the Grand Central Railway

When starting as a solo most of us think about working from home. However there are other choices. You can choose a managed office that provides services. My London office is like that. The staff are brilliant. They are there to receive your clients and answer your calls. If you need a proper professional office then I heartily recommend LEO. (Please note that I am not being paid to advertise any of the businesses I mention here. )

The next alternative is a shared work space and these are now popping up all over - some private - some chains - some sponsored by other companies with a spot of space to spare. I attended a meeting in the WEWORK space in Moorgate recently. This is an American concept business and it rejoices in making a buzz. Noise seems to be positively encouraged. Some people may find this invigorating, but it makes discussions and presentations really hard even in an allegedly private space. Probably not for a lawyer intending to do real work, but maybe good for finding potential clients. Being American they are open about their pricing structures too, which is useful when budgeting your start up costs. This particular business has not penetrated beyond London yet.

For a lawyer to survive at a hot desk you are certainly going to need a pair of noise-cancelling head phones. Wireless ones would be best if you are liable to forget that you have them on when going for a coffee or a comfort break. If you want to look an Apple geek and on trend then I suppose it must be BEATS but that wouldn't really be my style.

Even if you work from home meeting facilities are something you may need. The office providers generally do meeting rooms for hire. The other possibility is your professional body. The IET has Savoy Place which couldn't be in a better location the right side of Waterloo Bridge and their meeting rooms are free to members - deal! The Law Society has a library but meeting rooms seem to have become a separate commercial operation. I remember once being interviewed there many years ago. It was not  a pleasant experience.

So what is the consensus for a successful solo live - the full managed office or working on your bed at home with a laptop ?

Tuesday, 12 July 2016

Costs in Trade Mark Oppositions

Did you happen to notice that while we were enjoying the Orlando sunshine at INTA2016 the UK IPO put out a new tribunal practice note 2/2016 relating to scale costs in oppositions. Here it is in case you missed it. It's not very exciting. In fact it's almost depressing.

The general principle in the UK is that the winner is reimbursed his costs by the loser. It sounds as if the winner should therefore not be out of pocket. This is not the case. It is sometimes difficult for clients to understand that. In the case of UK trademark opposition proceedings the registry uses a nominal scale of costs which bears no relation whatsoever to the costs that you might be charged by even the most economical of professional advisers.

So costs don't put the winner back in the position he would have been had he not had to fight the contest. What are they for then? I think the philosophy is that they're supposed to act as a deterrent to bringing oppositions. I am ready to be corrected on this if you have any better justification for this irritating procedure. As the practice note explains, they are also available to deal proportionately with unreasonable behaviour. What is unreasonable is a very subjective thing and hearing officers have quite diverging views on the behaviour of some parties. It really depends on the lens that you are looking at it through. If you are facing a bad faith claim it is always unreasonable. If you are making one it is totally reasonable.

Trademark owners now must bring oppositions if they want to stop conflicting marks getting on the register. Although they can do this as litigants in person, it isn't ideal for them or their adversary or the office. Therefore, in the interests of efficient opposition procedure we need to reduce complexity and encourage competent professional participation.

If you commenced your opposition after 1 July the new scale applies to you. This is going to be fun on consolidated cross oppositions. But not such fun because the difference between the two scales is minuscule. In fact the scales are pretty minuscule and strangely remain focused on the largest amount of costs being reserved for the hearing not its preparation. Personally I think it might be a good idea if we either had fixed costs (like the silly scale used by EU IPO were all representation is deemed to cost €300 or €550 in the case of appeal even if the winning party didn't participate)  or none at all.

Fast Track costs are still capped at £500 and even I cannot offer a client that low a fee for the most streamlined no-negotiation opposition. This may be acting as a deterrent to the use of fast-track oppositions. The other major deterrent to the fast-track opposition is the upfront requirement to demonstrate use which makes them much more expensive than ordinary oppositions if your earlier rights have any seniority.

With Brexit about to happen we no longer have to follow harmonisation rules. Many are useful but the inundation of earlier rights that community trademarks became prevented the UK from giving trademark owners a reasonable degree of protection. We can rethink this now.

Thursday, 23 June 2016

Voting Day

We have European weather from France today. This will probably result in an even lower turnout in the referendum in the south-east though I understand the weather is better further away from the continent.

In the hopefully unlikely event that you hear tomorrow morning that the vote has gone the wrong way (leave), the message is definitely KEEP CALM AND CARRY ON. Although the UK will apply to leave the European Union there will be a prolonged negotiation period and then we will fall out ignominiously after 2 years. Maybe even by then some other countries will have made choices too.

As regards the effect of European Union trade marks in the UK after that, this will fall to be decided under UK law. I think it is probable that either they will be granted automatic protection as UK national marks or there will be a transitional period within which they can be converted. Many UK businesses have only European Union trade marks (although generally I have always encouraged my clients to have solid protection at home first before looking overseas, though the low cost of European Union trademarks has meant that some businesses do not follow that advice and prefer 28 for the price of one) and therefore there is very little likelihood that the UK government will decide that European Union trademarks are no longer effective.

It's never a bad idea for any clients in doubt to have a UK trademark but that's an extra level of security for brands that feel they don't want any uncertainty about their protection in the UK.

As you will be aware, proving use of European Union trademarks has become more hazardous of late. However, I did have a recent decision from the EUIPO which explicitly said they weren't following the UK community trademark court in deciding that even significant use on the UK market without any export trade is not sufficient to maintain an EU trademark. That will be a relief to many but it is only a first instance decision and there is some way to go before we have complete clarity about exactly how much local use will keep an EU trademark alive.

My prediction is that the turnout will be below 40% and that the remain vote will be over 60% of the votes cast but only just. Tomorrow you can rate me as a pollster!

Today 23 June 2016 is also the Feast of St Etheldreda - an event being marked this afternoon in Ely Place with a Strawberry Fayre, catered by the Bleeding Heart. In truly British fashion, in case of rain, you can drink your Pimms and eat strawberries in the Crypt of the church

God Bless England and may she continue to sail within Europe! 

Monday, 30 May 2016

The UK Series Trademark Lives

The series trademark was challenged in a dispute over the GLEE trademark which I discussed here.  Now the Court of Appeal has decided on 25 May 2016 that they are not only valid but also how they should be understood.
Lord Justice Kitchin
The principal Judgement was given by David Kitchin And not unsurprisingly agreed with the UK IPO view on the scope and interpretation of series trademarks. They do not contravene EU law. They are not misleading and being an administrative device to our allow multiple trademark registrations to be secured under one number, there was no need to trouble the European court of justice.

In the original decision by Roger Wyand QC the scope of the series registration was discussed. One of the marks had a colour claim, but being an old registration it wasn't shown in colour. The other, presumably the one on the right was supposed to be in greyscale.

However, the judge interpreted the registrations as if they were one basing himself on the opinion of Mr Arnold QC as he then was in Sony Ericsson (o/138/06) (25 May 2006) that a series was "a number of different manifestations of what is in essence the same trade mark" and therefore any differences must be so insignificant that they go unnoticed by the average consumer. That is they satisfy the LTJ Diffusion v Sadas case.  It is also stated in that judgement (Paragraph 65) that 'monochrome trademarks, all colours'. This we now know is not strictly correct after the adoption of the common communication of April 2014. However, the judge also concluded that he did not see the colour combination as being a part of the distinctiveness of the registered trade mark.

The reason I am writing about this decision is that Lord Justice Kitchin thinks that Arnold J was wrong 10 years ago to impose such a high standard of identity on series marks.  He did not like this approach because it meant that you had to distil from the series some kind of "supervenient" mark with which all the marks in the series are identical. This is far too difficult and certainly doesn't satisfy the test that the graphical representation must be self-contained, clear, precise and readily accessible and intelligible. The easy way out is simply to say that the series of  marks is a bundle of different marks registered under the same reference number. They must satisfy the requirements of the act (Section 41) but they need not be Sadas identical. This is what the Court of Appeal decided.

Accordingly, I am delighted that the very pragmatic and helpful series mark provisions of the UK Act survive and that they no longer need to be examined with the severity imposed upon them by Richard Arnold 10 years ago.