Tuesday, 12 January 2016

E- Filing at The Intellectual Property Enterprise Court and a plea for sensible fees

Electronic working with IPEC - wonderful I thought last November (Friday 13th) when I saw that a new Practice Direction had been issued to say that all Rolls Building Courts could be accessed electronically and not just by the fortunate few, such as myself, who have offices round the corner.

The scheme had been piloted through the Technology and Construction Court but I don't have friends who practise there. Wandering aimlessly round the Internet I discovered C-Track™ E-Filing, developed by Thomson Reuters Court Management Solutions. I wasn't at the time quite sure that was the thing but I registered anyway.  Fortunately now there is more information to help us on Judiciary.gov.uk website so start here. There is link to the Practice Direction and to the Home Page of CE-File which is the name for the new service. The Judiciary claim this puts them in the forefront of modern technology around the world - a bold claim indeed.

The CE-File home page contains a link to a USER GUIDE. If all else fails read the guide and wandering aimlessly in CE-File is not a rewarding experience, trust me, but the user guide is very straightforward. Unfortunately there doesn't seem to be a demo option so you can test drive without the stress of a live case. The system is available for Litigants in Person as well as Solicitors and Patent and Trademark Agents.

How are you going to pay the fees. Credit Card is an option here as is Fee Account with the Court Service. Now fees can be rather large and my business credit card doesn't go very high and a £10000 fee might be OK on your card but I don't have American Express so that won't do nicely.  Accordingly I explored the possibility of a Fee Account. Normally I pay fees with a debit card at the counter at the Rolls Building.

Here is the page on Justice for fee accounts. The link to the terms and conditions sends you here which provides an application form and a leaflet explaining the system but no ts & cs. I have emailed the designated address to ask for them since in this case I felt that I probably would Be considered to have read them when I tick the box to say that I had on the application form. As a consumer, of course, I blithely tick I have read terms and conditions boxes without doing so but in this case I'm acting in my professional capacity and I can't treat the court service the same way as I do Apple.

The application form for a fee account presented no particular difficulties and I hope that it will get more response than my request for such an account with the Foreign & Commonwealth Office. Fee accounts are available for a variety of types of organisations not just solicitors but as a patent or trademark agent you can say you are legal firm. If I ever see the terms and conditions I will let you know whether my application succeeds.

As a solo practitioner I nearly fell down at the requirement for a secondary contact. I've given them my next of kin. I'm not sure what he will do when he is contacted by her Majesty's Courts and Tribunal service.

The fee account service is a direct debiting system from your business account. Therefore, you can make sure there are sufficient assets to cover any ginormous fees. Even so, I had some doubts about what credit limit I should ask for. It's not very often I'm going to be issuing two claim forms a week, but even so, if you ask for a very large credit limit and have a fat finger moment you could make a serious dent/hole given with the level of fees that are now expected by the court service. It really is time that IPEC persuaded The Ministry of Justice that issuing a claim in IPEC should be subject to a reasonably circumscribed fee and that an appropriate proportion of any damages awarded should be paid back to the court. That way the court wouldn't suffer but the level of fees would not be a barrier to access of justice.

If you are a CE-File user please let us know your thoughts

Thursday, 31 December 2015

Happy New Year - Welcome the Year of EUIPO

The greeting from supporter of new entrepreneurs Goodwille
The one good thing about the turning of the year is that it or nearby dates are observed as a holiday by most lawyers wherever they are on the globe, so the emails have slowed and those that are observing today as a working day are catching up and going home early. Even some solo practitioners might allow themselves a seasonal break.

What will 2016 bring. For those of us dealing in trademark, its the demise of the Community Trademark and the Birth of the European Union Trademark. OAMI and OHIM will, as from 23 March 2016, no longer need explaining as the office will become the European Union Intellectual Property Office. The package of amendments to the CTMR is all agreed and published here on Christmas Eve. The day previously we had the new Updated Harmonisation Directive. At least this one is a continuous text and not a bundle of amendments. We will have to learn to refer to it as Directive 2015/2436. It has to be implemented by 14 January 2019 and the day after our old friend is repealed. For those of us in the United Kingdom we are not expecting major new legislation. The own name defence for companies has to go and no doubt the clever people in the IPO will find something to gold plate into an Statutory Instrument and ever after the judges will refer directly to the Directive.

The updated CTMR provides a more immediate offering to update clients. The fee changes on 23 March 2016 are so slight they are hardly worth gaming. We do get to see EU Certification Marks for the first time. It seems likely that most of the changes will benefit the internal operations of the office allowing it greater flexibility to change procedures and fees. Search reports seem to become entirely optional and if the later applicant declines the opportunity it seems the burden of those surveillance notices will also decline.

Do share your best ideas for encouraging more business from this event after you have toasted the New Year and created your new email database for 2016.

Monday, 7 December 2015

FCO not ready to recognise Enterprise

FCO's  Hanslope Park
I have been defeated by a lowly civil servant. All my efforts since 2008 defending the validity of the community trademark and then enforcing it are as nought (not quite only nought if the defendant stays away which is quite useful).

Orders made by the Intellectual Property Enterprise Court are not recognised by the Foreign &Commonwealth Office.

Why does that matter? If you want to provide a document to an overseas lawyer he wants to know it's authentic. The time-honoured way of doing this is by means of a chain of trust. The Hague convention establishes what is called an Apostille and this is attached to verify the authenticity of the seal or signature. The seal or signature is what verifies the document.

Application of the apostille in England and Wales is controlled by the Foreign & Commonwealth Office. It is a responsible duty and they should discharge it with care. They discharge it in a remote part of the country (see picture above - a bleak and desolate spot to work so it may explain their bitterness) where the nearest civilisation is Milton Keynes.  The government website describes exactly how TO GET A DOCUMENT LEGALISED . The process is described with admirable clarity here. High court documents are specifically mentioned amongst those that the Foreign & Commonwealth Office will apostille directly. I would have preferred to hand deliver and collect the documents myself. What is the point of living in the centre of London if you can't do that? There is a premium service provided by the FCO. It didn't respond to my request to register. It didn't even bother to laugh in my face. Nevertheless there are businesses that are registered with them and eventually I paid one of those to take my document in, but I get ahead of myself.

Of course I had tried the way recommended on the website. This requires making the payment in advance; and filling in by hand an awkward form (after printing it out) including copying (very carefully) the 16 digit payment number from the screen and  and posting it all off. That was a waste of time. In due course they took the money and then refunded it less the postal charges and sent the papers back by snail mail so a week later I am no better off. The letter of rejection mutters about solicitors signatures and makes no sense in relation to a sealed document. Its standard letter No 2.  I ring up the helpline. It has very limited hours and a premium rate number (midday to 4pm Monday to Friday) and when I get through a very nice man says yes they've made a mistake and will I send an email. I send them an email. I send it again several times but no response not even a laugh in my face. The email address does not do delivery notifications either.

This is where I resort to the type of firm that is able to go to the Foreign & Commonwealth Office and cross their palms with silver. They procure an explanation from the great and mighty (This is the lowly civil servant. I'm feeling frustrated so it's ironic ). This Explanation is that they don't recognise the seal. It has a date in it. Apparently seals with dates in them are not OFFICIAL and cannot be verified. All IPEC seals have dates. Now you do get stamps from the court which are just to say when a document was handed in. These are usually square and black.  Now the FCO is clearly saying that this document is not what it says it is. Nevertheless, if a solicitor signs it they'll happily apostille it so I can perpetrate something they think they know is a deceit.

The Foreign & Commonwealth Office do attach their apostille to a document prepared by a notary public that suggests Filemot had told "Mr Jones" that this was a copy of a document. The FCO apostille of course is only verifying that the notary public's signature is authentic. Even in foreign parts it seems likely that anyone in authority will be less than convinced by this triple hearsay. It  sounds suspicious to me especially when it is attached to a document which very plainly is not a  copy at all and isn't as described by the notary public.

This leaves me telling the client that he better go to one of those clever international law firms that know how to do these things, because having survived an Alicante torpedo and much else this order is never going to get personally served on anyone overseas. Of course in England a seal (even with a date in it) is authentic and the order so sealed can be served in person without more ado. The IPEC will even enforce them and charging orders and bench warrants for recalcitrant parties are all possibilities if they live in Milton Keynes or thereabouts.

So there we have it end of road in Hanslope. 

Recommendations welcome.

Thursday, 3 December 2015

A tribute to Jeremy Phillips by Peter Groves

On Wednesday 25th, I had the honour of speaking at Jeremy’s penultimate event before his retirement, the annual IP editors and publishers lunch. Jeremy, as I reminded him and explained to the audience, had impressed me with the careful consideration with which he evidently approached the issue of the invitation: it was after last year’s event but before we had left the building, and we had found ourselves standing side by side in circumstances which decorum prevents me from describing in greater detail, prior to setting out for our next engagements. “Would you like to give the keynote talk next year?” he asked me. I replied to the effect that I would be pleased to do so. “That’s one thing off my to-do list,” he said.

I told the audience that, in the same spirit, I had set aside a few minutes the previous day to prepare my talk. In truth I thought about it, off and on, for the entire year, although that probably didn’t show.

Being a publisher and editor as well as an author, I wondered which hat I should wear for the occasion. But being also a member of the Management Committee of the Society of Authors, I quickly decided to take the opportunity to address a roomful of publishers as a trade unionist. I put on my red tie.

This is not the talk I gave. That would be too boring. As I remarked to Andy from the 1709 Blog and Barbara the following afternoon, during the tea break of Jeremy’s final event, had I been giving the talk then it would have been rather different. Better. This describes the improved version.

More than 20 years ago, when I was teaching at London Guildhall University on the then-new Legal Practice Course, my intellectual property class found itself discussing oxymorons. I suspect I was responsible, having embarked on some digression or other. Someone wanted to understand what an oxymoron was. I think someone suggested “pretty ugly”. “Military intelligence”, another offered. “Scottish Amicable” said another, a trade union officer of whom I had expected better, so I swiftly closed down the discussion. Now every time I encounter the phrase “creative industries” that episode comes back to mind.

No industry creates anything. Individuals create. They may be employees, but of course that only affects the ownership of the rights in their creations. I know that the expression is being used loosely (although as lawyers we should resist laxity like that) but when all the authors, composers, artists, film directors and so on in the world are lumped together anonymously under a single heading, their work is devalued and they are demeaned. Just like when their work is referred to as “content”.

I don’t go the cinema very often, but a poster for a film called “Slavery Free” recently caught my eye. That’s also an oxymoron, I suppose, but it’s also axiomatic: of course slavery is free, that was always its unique selling proposition! And if by slavery you mean the condition of being forced to work for another for no or very low pay, there is a lot of it about in the legal publishing field.

Of course, legal authors are not required to work for nothing. They choose to do so, and often their firms encourage them to. Consequently few if any authors make a living out of writing legal books. Legal authors make their living by practising or teaching law, not by writing about it. There is not a class of professional legal authors.

This is my great-grandfather, Matthew Henry Groves. To the best of my knowledge he is not the
subject of a well-known (to Jeremy, anyway) song by Fairport Convention. He was a founding member of the Institute of Chartered Accountants of England and Wales. His son, my grandfather, was also a member of the Institute, and so was my father, and so is my brother. They all share the same facility with numbers. I don’t. I am more comfortable with words, so I became a solicitor.

Lawyers are professional wordsmiths, but not all are equal. Words and language are the tools of our trade. We are all, in a way, full-time authors, but some are more professional than others. Just because you’re a lawyer doesn’t mean you can write well. Jeremy explained the problem very well in his valedictory editorial in JIPLP: lawyers write well for themselves or their clients, but they often fail to write well for their readers.

A professional author will recognise a parallel construction, and be able to execute it correctly. They know what a splice comma is, and that it must be avoided. They understand that “however” is not a conjunction. They take care to avoid compound preposition, unless they need to write a minimum number of words. They might even have an idea about the subjunctive – but if not, so be it, although if I were you I would familiarise yourself with what someone like Fowler has to say on the subject.

A professional author will also be able to use the terms “verbal” and “oral” correctly, and knows that “a verbal contract ain’t worth the paper it’s written on” isn’t merely funny, it’s hilarious. He or she begins work on a document by using the search-and-replace function to change “shall” to “will”. And finally (enabling me to segue neatly into the next part of what I want to say) he or she appreciates that an acronym is a special type of abbreviation, not a synonym for it.

A professional author is more likely to produce material that is right first time. Every piece of work benefits from the attention of a good editor, of course, but how much better to receive material that needs only a light touch. Using professional authors, and treating them like professionals, will pay publishers dividends.

So how should professional legal authors be treated? My trade union has recently launched a campaign using the catchy acronym “CREATOR”. It concerns the terms on which writers are contracted to publishers.
  • C - clearer Contracts, including written contracts which set out the exact scope of the rights granted. 
  • R - fair Remuneration. Equitable and unwaivable remuneration for all forms of exploitation, to include bestseller clauses so that if a work does far better than expected the creator shares in its success, even if copyright was assigned. 
  • E - an obligation of Exploitation for each mode of exploitation, also known as the 'use it or lose it' Clause 
  • A - fair, understandable and proper Accounting clauses. 
  • T - Term. Reasonable and limited contract terms and regular reviews to take into account new forms of exploitation. 
  • O - Ownership. Authors, including illustrators and translators, should be appropriately credited for all uses of their work and moral rights should be unwaivable. 
  • R - All other clauses be subject to a general test of Reasonableness, including a list of defined clauses which are automatically deemed to be void and a general safeguarding provision that any contract provision which, contrary to the requirement of good faith, causes a significant imbalance in the parties' rights and obligations arising under the contract to the detriment of the author shall be regarded as unfair. One example would be indemnity clauses which put all the risk on the author. 

No author is ever completely satisfied with their publisher. But publishers must be aware of the value of what authors create for them, and recognise their contribution in an appropriate fashion. Without authors, of course, there would be nothing to publish – and as technology provides new ways for authors to get their material before readers, it is high time that legal publishers started to show that they appreciate what professional authors can do for them.

Thursday, 26 November 2015

Bye bye!

This is just a personal note from Jeremy, who is retiring tonight, to say “goodbye!” to his SOLO IP friends, colleagues and readers.  Working with Barbara and Co over the past several years has been an enjoyable and educational experience.

This blog needs and deserves more support than it has been getting. So, if you have some interesting content you’d like to share, or if you think you have what it takes to be a SOLO IP blogger, do please let Barbara know by emailing her on bec@filemot.com.

Monday, 9 November 2015

The Publications Problem and a German solution

A recent post on the JIPLP blog drawing attention to the economy of subscribing online to that excellent journal caused me to check out whether I could afford an online only subscription. It is certainly more economical, but at £612 per annum, which would presumably be the same if I was a large firm or just me, it doesn't cut the mustard with the financial controller.

However, there is an interesting line in the subscriptions panel which tells me that members of the German Association for the Protection of Intellectual Property (GRUR) are entitled to a print only (shame about that - on-line only would have been better) subscription for £154, which looks a great deal more attractive.
Table of Contents

Now you might have thought that GRUR was exclusively German. However, it seems to be a much more open organisation than that. Its bye laws or Statutes are positively exemplary (even in English) and its membership subscription at €120 very reasonable.

There doesn't seem to be a London chapter, but I'm thinking there probably should be one now that London and Aldgate Tower is to house part of the Unified Patent Court.  Now it may well be that I would be blackballed but given the saving I can get on my copy of JIPLP it looks like a worthwhile challenge for a solo cheapskate. 

I think there may be a flaw in this cunning plan, but what is it?

Wednesday, 28 October 2015

New Approach to Trademark Training

Do we need a new approach to continuing professional development for trademark professionals?
ITMA organises an excellent series of lectures. If you are a member and log in you can find recordings here.  There are certain perennial topics. These include last month's "Discussion of Recent OHIM cases'. UK decisions will get reviewed too as will European ones.

However, as the speaker pointed out applicant's argument at OHIM for equal treatment based on state of the register evidence always fail. There is no precedent system that applies either in OHIM  based only on their own decisions (even ones from their Boards of Appeal). The only things that counts as anything like English law precedent are guidance from the European Court of Justice. These days the first instance  decisions from the general court are so numerous as to be of little value as president in any subsequent argument. In short, we are wasting our time studying the individual Board decisions. What we need to study are the principles that can be derived from the decisions and these are neatly distilled in the guidelines published by OHIM. Therefore, wouldn't it be more sensible for us to be running CPD exercises based on how to apply the guidelines to our client's cases. In addition the Convergence programme is producing papers on common practice that will not just be reflected at OHIM but will percolate through to national offices leading to greater consistency if that is possible in a Europe where perceptions in different parts are as different as the languages they use, the food they eat and their various temperaments.

Once of the case discussed last week was sport on the money for the latest Convergence paper "Common Communication on the Common Practice of Distinctiveness – Figurative Marks containing descriptive/non-distinctive words" also available from the UK IPO here.

The case the speaker took was R2713/2014-2 for Yoga for - er yoga kit and classes etc
The decision is not final yet so there may be more to come.

Now it seems very common for Yoga studios to register YOGA plus figurative figleaf marks. Using a TMView search
The common practice is supposed to deal with situations where the figurative features lift the mark from being descriptive to being distinctive. The practice doesn't apply where other word elements are distinctive. So would my HEART and CURVESOME marks qualify to be considered under the the practice?

One of the important statements in the document is:
it should be noted that an applicant will not obtain exclusive rights on descriptive/non-distinctive words, when it is the figurative element that renders the mark distinctive as a whole. The scope of protection is limited to the overall composition of the mark. 
I wonder whether we are really making that clear to our clients when we suggest they adopt the figurative figleaf. Even so, the cluttered registers don't tell the searcher which element rendered the mark registrable. It isn't at all obvious that mattress and doughnut elements could be distinctive in certain parts of Europe and so would later generations know if HEART and CURVESOME are really the distinctive elements.

The document teaches us that figurative figleaf can work to give a combination distinction as a whole. It relies on BioID C-37/03. See - we are only going to take precedents from the ECJ to get at principles for the future. If you want to rely on typeface and font, it is going to have to be a fairly illegible mark. Looking at the examples in the document, none of my little pictures above is going to qualify on font.  Hey, but they are all coloured. The document is not encouraging. Even using multicoloured Google effects is not going to get you past the finishing post. The document goes on to consider punctuation marks and other symbols. These do not fare much better and we love yoga with its pipe signs is not going to be able to rely on those alone. In fact no distinctive examples are given in this category.

Most figurative figleaves are real graphic elements. The first thing we learn is that it has to be distinctive in itself and large enough to be seen as part of the mark as a whole. Surprisingly, they don't seem to have to hang together with the word elements to make it a whole. This tortoise going the other way seems to make the whole mark distinctive.  The Yoga marks come into what is going to be the most difficult category B.3 where the figurative element is a representation of or has a direct link with the goods and/or services.
The document suggests that C-265/00 Biomild, para. 39 and 40 are your best bet for defining the transitional ground, even though that is a case about a word mark.

The UK IPO was already agreed to implement the convergence practice recognising that it had a considerable influence in the drafting of the document and believes that it represents the standards our courts already apply. If you are going to argue a case before OHIM about the distinctiveness of a sign, best go straight to this document and use these principles rather than try and find precedents amongst the board of appeal series decisions that will be happily disregarded by the board when looking at your case.