Do you really matter?

The hardest message to
get across to a prospective
client ...?

No, this isn't an attempt to be rude or to undermine your confidence -- it's an allusion to a paper which was discussed yesterday in one of the International Trademark Association's Scholarship sessions, "Do Trademark Lawyers Matter?" (you can see the abstract here), in which the authors -- Deborah R. Gerhardt and Jon P. McClanahan -- sought to explain their findings, which were based on getting on for 30 years' worth of filing and grant data from the United States Patent and Trademark Office (a note on this session was published on the IPKat here).

At base, there are three factors that tend to influence the success of a US trade mark application. One lies beyond the control of the applicant, and that is whether the application is opposed or not. Unsurprisingly, unopposed applications fare far better than the other sort. The other two factors are however highly significant: statistical analysis of a vast quantity of data suggests that (i) trade mark applicants who are legally represented tend to fare better than those who do not, and that (ii) experience, in the long run, is as good a predictor of success as is being legally represented.

One challenge for any solo or small practitioner is to explain to an often ill-funded and undercapitalised client why, when trade mark registration is open to all and when trade mark registries are increasingly user-friendly, it may still be necessary to instruct a professionally qualified and, ideally, experienced, representative rather than take the do-it-yourself route.  This research by Gerhardt and McClanahan provides much material to strengthen the hand of the practitioner when selling his or her services.

Better than being a penguin? Solos flock to INTA

Fact: the coat of the adult penguin has
nowhere to store one's business cards

A recent tweet from Twitter diva and SOLO IP Blog founder Barbara Cookson reveals that next month's International Trademark Association (INTA) Meeting -- now seemingly rebranded #inta13 -- has already attracted 166 solo IP practitioner registrants. As well as offering wonderful opportunities for networking with people who aren't going to ask embarrassing questions about how big your litigation and dispute resolution team is, this poses challenges the most important of which is how the 166 (the number may have risen by now) are going to find one another.  In this context readers may wish to ponder on the following random observations:

* Many solo and small-firm practitioners look just like people who practise with large firms. Indeed, last year some of them may indeed have been practising with large firms and have not yet ditched last year's Armani suits and Louboutin heels in favour of the altogether humbler attire of the one-man/woman band. 

* There is no equivalent of the Masonic handshake that enables those who work in small practitioners to identify one other.  Perhaps an app should be developed in time for #inta14 which will enable the hand-held mobile device of a soloist to give off a discreet buzz when another soloist is within a 10 metre radius. 

* Speed-dating has been kindly organised for small practitioners, gregarious folk and the merely curious to meet briefly, exchange cards, make eye contact and then terminate the relationship without any sense of awkwardness within the rules of engagement.  This facility has proved popular -- but is its popularity based more on the fact that it enables people to meet, or to save time? 

* Penguins have demonstrated to generations of wildlife photographers that they have a remarkable knack of finding each other in even the largest of crowds, notwithstanding the fact that they all look pretty much the same. This may be something to do with the fact that their survival depends on it. It would be good to know if IP solo practitioners fare as well in Dallas this year.  

If you do, or don't, have success in locating your own kind, do write to us at SOLO IP and let us know your experiences.  You may not have found them interesting or valuable, but there's a good chance that you'll strike a chord or two with our readership.

Likelihood of Confucius? How about merging with a Chinese mega-firm

A recent report in The Lawyer relates the story of a small Israeli commercial and high-tech law firm, Eyal Khayat, Zolty, Neiger & Co. -- a three-partner practice which has suddenly acquired the ability to cast a giant shadow through its merger with Chinese giant Yingke. The Beijing-based firm has offices in more than twenty cities on its home turf and another 16 outside China. Altogether it employs more than 2,000 lawyers.  Yingke now has an office in Israel too, in Hertzlia Pituach, within easy reach of so much of the country's high-tech industry.

This blogger was initially fascinated about the 12-month negotiation period which culminated in the merger. After all, a whole year might seem a long time for what has been described as a "brand merger without full financial integration". What lay at the heart of discussions? Was it the decision as to whether the firm should function in Chinese or in Hebrew? Or the struggle to convey the right message through the trilingual logo with its somewhat allusive symbol?  No matter, the deal was struck.

It then occurred to this blogger that many a small IP practice might want to consider emulating Eyal Khayat, Zolty, Neiger & Co. by finding a massive Chinese firm with which to partner. In the olden days, IP work generally went in one direction, but now China is filing patents, designs, utility models and trade marks outside its home jurisdiction quicker than you can say "Confucius!" and the prospect of having a small foothold in a small non-Chinese country (and that's pretty well everywhere) might be well sold to an amenable Chinese giant.  No more worries about where the next instruction is coming from, either ....

Consultation Marathon

Since the announcement of the Fast Trade mark Opposition consultation from the UK IPO discussed below, we have the Patent side of the Office starting a consultation on even faster patent prosecution. It must be because they were coming up to today's blessedly peaceful and sunny Virgin London Marathon.

London 21 April 2013

The Law Commission also finally publishing their consultation on groundless threats.  This last weighs in at 174 pages so most of us will simply have to rely on the executive summary. I like the prospect that legal advisers will be exempt. The idea we might get an unfair competition tort is interesting too. Possibly not an idea to hide in something as abstruse as a groundless threats consultation though.
Weighing in with a threat of a threats action is often a rather unethical practice. The last letter I received gave me a short time to respond so I did not as it was mostly groundless as we were discussing a service mark.
The super-fast patent paper is reasonably short and hopefully CIPA will be on to it. By the way, this is not for the small inventor or SME - a marathon fee of £3500-£4000 is proposed but you don't have to give reasons for paying it. There do not seem to be many situations where the normal expedited prosecution is inadequate, but if this procedure becomes available there does not seem much incentive for the IPO to do it for free when they could have a fat fee and a few extra home comforts in Newport.

Fast Track UK Trademark Oppositions

My 40 UK Oppositions OUT

The UK IPO are running a fast consultation on revising (again) the UK trademark opposition procedure.

I did a little survey of my files. If you can't measure it in UK IP policy, it doesn't exist so we must provide evidence even if its only a measured anecdotal sample. So this is what I can say about UK oppositions over the last several years. I have dealt roughly with twice as many outgoing ones as incoming ones 40:19 and the number I have let go to a decision by the UK IPO is tiny at 5 and only one of those went to an appeal. In OHIM the ratio was 65:49

The parties involved are not all SMEs by any means but a reasonable proportion are and whatever the size of the client it generally makes sense in the UK to settle because going the whole way is costly, slow and not that much fun.

My 19 UK Oppositions IN

How does your experience compare?

This doesn't tell us much about the trademark owners who didn't do anything so its always good to review.

Some Registry ideas are

• Lower fee
• Proof of Use with TM7
• Relative Grounds only
• TM8 retained
• Separate arguments stage in writing
• No hearing
• An Appeal Fee to keep appeals down

OHIM can be made to produce fast cheap decisions using a file it and leave it approach using only CTM grounds. My strategy as an applicant is one observation only and you can even forego that with a reasonable prospect of success in some cases.

There is one little diamond lurking in this consultation that I hope will survive and that's the Appeal Fee. £800 would be about right. 

My first reaction is that the fast track opposition won't work and just makes life more complicated, but is it worth getting together to have a discussion about it?

Are Injunctions Obligatory in UK Patent Infringement Actions?

The title of this post was one of the many questions posed to those of us who spent our Saturday morning in a Cambridge basement a the CIPIL conference entitled 'What's new in IP Remedies' chaired by Mr Justice Richard Arnold. There were many papers but this is the point I wish to do my homework on. Despite belonging to TRIPS the US has lived happily for six years since the patent world was surprised by the eBay MercExchange decision which destroyed the presumption that a patent holder is entitled to an injunction as of right following a successful finding of infringement. Instead, as explained in the presentation by Prof Tomas Gomez-Arostegui of Lewis and Clark School of Law in Portland Oregon, there is no longer a presumption of irreparable harm and the inadequacy of legal (as opposed to equitable) remedies. The balance of hardships and public interest now have to be considered. The prospective pecuniary relief which is provided instead looks hazardously like a compulsory license as our Chairman noted.

Prof Posner and his cat

We also received a very thoughtful and enjoyable people from Prof Paul Heald of the University of Illinois in which he expounded a theory that an injunction was a form of punitive damages. He also offered us the interesting insight that the addition of a cat will send the right sort of message to make even the most austere professor palatable. He set out his thesis in understandable economic terms and made his own theory very palatable without any need for feline assistance. If you are a "patent assertion entity" (the new style for an NPE if you think troll is pejorative) it is easy to understand that the grant of an injunction allows a higher price to be coerced (he did use that word honest) from a defendant who is subject to high switching costs. The difficulty arises with the patentee who is not prepared to licence and would rather put his competitor out of business. Society may find this acceptable if he is a counterfeiter, but what if he is also an innovator.

The question of whether final injunctive relief is a guaranteed remedy was addressed but not answered in the presentation by Joel Smith and Christopher Sharp of Herbert Smith Freehills. Presumably they wish to continue arguing both ways depending on the client.

So what do we need to look at in the UK if we want to follow the US route. The consensus seems to be that you start with Lord Cairn's Act and the Shelfer exception, progress to a detailed study of Article 3 and 12 of the Enforcement Directive (2004/48/EC) which was implemented in the UK by a Statutory Instrument that doesn't think it changed the law but might have. Then  ensure your argument can be reconciled with TRIPS which says that  The judicial authorities shall have the authority to order a party to desist from an infringement.

The Enforcement Directive offers the best opportunities:  Article 3(2) is the general obligation that provides Those measures, procedures and remedies shall also be effective, proportionate and dissuasive and shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse. Article 12 allows Member States to provide alternative measures if the defendant acted unintentionally and without negligence, [and/or?] if execution of the measures in question would cause him/her disproportionate harm and if pecuniary compensation to the injured party appears reasonably satisfactory.

If there is to be any following of EBay here, then you need a case where a final injunction is going to be DISPROPORTIONATE and an "innocent" infringer. Our existing compulsory licensing provision preclude a final injunction and must already fall within Article 12, but can other suitable cases that may not fit into those strait jackets? It seems to me that they can. In the discussion later on reference was made to property cases where damages had been awarded in lieu of an injunction notably the Wrotham Park Estate Company Limited v Parkside Homes Limited (1974) case.

UK Trademark Searching

As part of their systems upgrade, that was revealed on 11 February, the UK IPO provided a new trade mark search interface .  It is still listed as find by word or image but there are some important developments that make it a whole lot more useful than the previous version. The biggest, and most significant for unrepresented trademark applicants as well as agents seeking to do economical clearance searches, is that there is a new option to search for 'similar' marks. This is now the default and you may be surprised to find that you get pages of hits when you were expecting just a few from an identical word mark search. You can revert to Exact word or Begins with if you are looking for something specific. However the new option ensures you don't miss the vowel changes. There is no information about the particular fuzzy algorithm they are using but it survived my tests, so I am impressed.

You do hit the buffers, though, if your search wants to deliver more than a 1000 hits.

I did a search for FORTY TWO and got 7 hits but 42 gave me 979 but then that's the meaning of life isn't it?

Another change is that instead of offering you spaces for several words that you could AND or OR together, you can type in a bunch of words and choose to have the search for all of them or any of them.

The search will retrieve you any mark protected in the UK and community trademarks and Madrid registrations are displayed in a new format. There is no link direct to CTM online or Romarin, which is frustrating especially when your CTM hit comes up with a status of OPPOSED very tantalising that.

Have fun