A matter of record?

Today's the day that the Court of Appeal for England and Wales opened its doors to the television cameras (on which see here, here and here). This blogger doesn't expect the workings of the court to make great viewing, well recalling his previous visit when he watched a man in a wig reading in a monotone to a panel of three elderly gentlemen who appeared to be taking it in turns to keep their eyes open.  Certainly there will be less scope for action replays and snickometers than there might be for a snooze button.

When you come to think of it, most of what we do these days is monitored or recorded one way or another. CCTV footage captures our every public move; every time we deploy a security pass, an Oyster card, Starbucks Loyalty card or whatever, we leave a little electronic footprint as a hostage for all eternity. Even when we phone our banks, utilities, retailers or medical service suppliers, how often are we now welcomed with a message that "This call may be recorded for training purposes/customer care/quality assurance ..."

But how many of us have the foresight to record a first interview with a prospective client?  This may not be such a bad idea, and it's nothing to do with entertainment value.  After all, while subsequent communications may be recorded as emails, attachments, text messages or voicemail, that first encounter may be evidenced by nothing more reliable, or objectively verifiable, than the lawyer's hand-written scrawl or a notes hastily typed up in real time on a tablet.  Yet misconceptions and misapprehensions acquired by a client at the outset can persist through time and space, leaving a sense of bitterness or betrayal that is quite unfounded.  Perhaps we need more recording, not less ,,,

If you're reading this, you're probably at work

Just checking the latest bon mot from Filemot ...

Taking a quick look at the data furnished by SOLO IP's web counter, I noticed that around 51% of visits to this blog take place between the traditional normal office hours of 9.00 am to 5.00 pm.  This compares with figures of just 42% for IP Finance, 45% for Art & Artifice, 47% for the IPKat, 48% for the copyright-flavoured 1709 Blog and 49% for the PatLit patent litigation blog.  Of the blogs I checked, only the recondite SPC Blog, with a score of 53% of site visits during normal office hours, scores more highly.

How does one explain this?  After all, one might have thought that solo practitioners and those in small practices would have more flexible habits.  Is it that SOLO IP readers have incorporated the act of checking the blog's content as part of of their daily work routine -- or is it that a visit to this blog represents some sort of work avoidance ritual? Or (perish the thought!) do our readers just have more time on their hands and therefore have less need to read the blog out of hours?

Time for a New Word - a Cel(ebrity) Mark

A UK Mark but what is its FUNCTION

This time Sally Cooper has been getting into sport and wondering if some signs (if signs they be) have function as trademarks:

Listening to radio commentary on the Chelsea v Manchester City match yesterday (which Chelsea won 2-1) a commentator made passing comment to something about a player : "it could become his trademark".

I thought immediately of Andre Agassi. Why ? Because it’s some twenty years since I first heard a lecturer pose the question “ what does the general public think of as a trademark ? “ and answering that question with “ Andre Agassi’s trademark cycling shorts “. Checking back this morning, the BBC reports “ In 1991 …… Agassi dazzled an expectant crowd by striding onto Centre Court dressed in pristine white from head to toe, including trademark cycling shorts “.

Checking further this morning (and avoiding articles written by lawyers) other "clothing as trademark" examples include :

•  Michael Jackson wearing One White Glove – goes back to Jackson as a 1980s pop icon wearing a red jacket and a single white glove
• Madonna and her Pointy Bra - designed by Jean Paul Gaultier for her Blond Ambition tour (and sold at auction for £14,100)
• Bjork's Swan Dress - worn at the 2001 Academy Awards.

There is now much learning about "the functions of the trade mark" whether the essential function (indicating the origin of the product or service) or one of the other functions (guaranteeing the quality of that product or service or of communication, investment or advertising). See for example Paragraph 39 in Interflora C-323/09  I’ve yet to come across a "fashion function".

Call me a dinosaur, but "trade"for me has connotations of things-being-bought-and-sold and I’ve never been comfortable with "trademark" being used for (unrewarded) displays of dress of this type. Is it too late to wrench the word “trademark" back from the brink and suggest to football commentators et al that they might want to use another term – like Cel-Mark (being, of course, shorthand for “ Celebrity Mark “) ? Answers in the Comment box, please !

Let there be Grace for Inventors

This post is about the desirability of a grace period in the patent system. A grace period "forgives" an inventor
who has made a disclosure within the grace period before filing his patent application, by excluding from the "prior art" that disclosure and ones derived from it.

There is a grace period in effect for registered design protection at both UK and Community level and in the USA. 

I belong to the British Group of AIPPI.  It is an excellent organisation. It is part of an International organisation. Each year every national group is invited to provide answers to the same questions of interest in Intellectual Property Law. Then all of the papers are considered in a closed caucus at an International meeting and Resolutions are forthcoming. Don't bother going to the expensive International meetings because you can't get into the closed caucus so its all rather frustrating, but they do publish the Resolutions of the "important" people who are allowed in.

This year one of the questions, Question 233 concerned Grace Periods for patents. I and another SOLO James Peel were  part of the group. Initially the group was very much in favour of maintaining the legal certainty that the existing UK system provides. However I managed to make some points that remained in the final UK report, in particular the submissions says

There is some suggestion that SMEs would find an economic benefit from a wider grace period. This is primarily said to be due to the grace period providing a review period between disclosing the invention and filing a patent which may allow the SME to seek investors and/or assess the likely commercial success of the patented product before incurring the professional fees associated with filing a patent. It may also avoid the risk of SMEs making decisions about patent filings before carrying out effective market research and testing in order to ascertain whether the patent would be of value to them.

In any event, over in Helsinki the Resolution was passed in favour of an Internationally harmonised one year grace period without a requirement to make a declaration that the inventor is relying on the grace period.

How, though, are we to convince Vince Cable to put some political force behind the idea? The Unitary Patent Regulation does not provide for a grace period and implementing that and its associated Tribunal against the majority will of the professions, is absorbing all the patent related enthusiasm of the government. Still it would be nice if the grace period were not forgotten. Who else supports it?

The Grass may not be Greener

One of the worst things about being a solo practitioner is that there is no one to help when you are  under the weather or need a holiday. However, judging by today's report about Nestlé's trademark lawyer, Joanne Ling who qualifies as  TIMES  Lawyer of the Week for her role in suppressing the colour purple as a sign (discussed here), things are not always better when you work in a large organisations for large clients. This is what she says about her worst day as a lawyer - in case you do not subscribe to The Times

Solo support from Boots

What was your worst day as a lawyer?

The day I went to work with flu because I had an evidence deadline. I fainted on the train and had to be carried off, which was embarrassing. Nonetheless I was at my desk by 8.30am, without a voice and feeling dreadful. The client signed the evidence at 5.30pm and I left the office after 6pm.

 So maybe we should all be rushing off to get our flu jabs so as not to let our clients down. It might not be a bad idea to plan ahead so that the deadlines are not quite so deadly. If you don't have an expensive docketing system you can always afford a Marco trial to see how knowing the deadlines can help you manage the load. Managing the client may be another matter. Ringing another Solo in times of need has been known to work too.

I am hoping some big firm employers will step up and explain how they support their staff in times of stress too. Surely you can't all suffer like this?

The Fantastic Mr Fox

If you liked the film,
you'll love the patents ...

The following, penned by our colleague Michael Factor and with a response from Steve Fox, should be of considerable interest to those readers of this blog whose expertise lies in patents. Michael writes:

Steve Fox is a sole practitioner in the US. He has an interesting business method. He is prepared to file a US provisional application for clients as a free service (see http://www.foxpatent.com/).

As I am not licensed in the US, I don't file provisional applications directly. I don't help clients fill out the forms but can refer them to an associate. However, most associates take $250 or more for filing a provisional application. Steve's offer to do it for free therefore represents good value for money.

So is Steve Fox merely a bright-eyed, bushy-tailed member of the genus vulpes, or is he a competent practitioner?

Well, US 8,521,592 is a patent he drafted and prosecuted for a business method invention. The claimed invention is almost pure software, but it still issued. It seems that Steve is competent at drafting and prosecuting this type of invention in the US, which is not easy. "

Steve comments:

"I have been a patent attorney for over 24 years. My Reg. No. is 33,237. Unfortunately, there are not many people below that number left. I am attempting to offer this service for several reasons:

(1) Any inventor can file his/her own patent application if he/she knows how to use the USPTO system -- which is not difficult for anyone reasonably competent with a computer. As part of my Representation Agreement, the client agrees that I will file the application without any review, especially, as to whether or not the specification would enable claims filed in a subsequent non-provisional utility patent application. Now that the US is a first to file system, it is even more critical to file a provisional application that completely discloses the invention as it will be claimed.

(2) After receiving an explanation as to what US law requires, I believe most inventors will wish me to review and revise the provisional application for a reasonable fee, depending upon the complexity of the invention;

(3) When the time comes to file a non-provisional application, I hope that some clients will have me handle the work; and

(4) I need work. Sole practitioners are losing so much work to companies like Legal Zoom. I do not feel my approach is a bait and switch. Actually, it is my way of doing a pro bono service if the inventor wishes with full knowledge of the consequences, and at the same time, attracting work at a reasonable price. Do you feel this is a bait and switch, unethical or stupid?"

Is this a shameless bait-and-switch exercise, a sensible way of cultivating a professional relationship with a client, or anything else? Do let us know what you think!

Webinars: welcome not warm enough?

"At last, the webinar
has finished ...!"

Following a survey of his clients and contacts, IP transactions guru Mark Anderson (Anderson Law LLP) has posted a note on the responses he received to his various promptings regarding the use of webinars for legal training (see "Is webinar legal training viable? The results are in…", on IP Draughts here). he concluded that, while there was some interest, it was not expressed with a degree of warmth and conviction that would tempt him to organise it himself.

Within solo and small IP practices, the need to collect points or hours for continuing professional development purposes can be a continuing worry.  Commercial conferences and seminars can be expensive in terms of registration fees and time spent away from one's practice. Even when they are reasonably priced and not too inconvenient, by the time they come round they may clash with urgent and deadline-facing client work that cannot be dropped. Many practitioners leave it till late in the year to clock up their entitlements, which can also induce extra stress.

Webinars would appear to address most of these issues pretty well. Why, then, are they not more popular? Is it because those who work in relative isolation from their colleagues really appreciate the chance to meet them socially at training events? Or is it that they spend quite enough time facing a computer monitor as it is, and need to get away from it from time to time?

Freelancing, résumé writing and the Kiss of Death

Via the Media + Bloggers Twitter feed at @ps_bloggers (how did this end up in my Twitter account? I'm sure I don't follow it ...) came this link to "The pros and cons of freelancing" by Kevin Allen, on PR Daily. Apart from the misleading, if not downright heretical, suggestion that the word "freelance" is some sort of rebrand for "unemployed" rather than "self-employed", this piece also carries one of those tantalising infographics that contains all sorts of information except what you actually want to know, and which are designed to convince you that the world is contiguous with the borders of the United States of America.

While still on PR Daily, I next discovered this piece entitled "10 words and phrases that shouldn’t be on your résumé" by Amber Carucci. According to Amber one should never write, among other things, "References available upon request", "Dynamic / energetic / motivated / enthusiastic" or "Microsoft Office". I have always favoured "References available upon request" as a preferable alternative to the listing of names and addresses of people whose identities may be of no real interest to me; "Dynamic / energetic / motivated / enthusiastic" is a medley of cliches which an applicant for any position is entitled to assume to apply unless specifically disclaimed, and the third is rightly derided since, in the twenty-first century, it is about as meaningful as a statement that the author of the résumé knows how to read and write. A surprise omission from the list of ten no-nos is however the word "paralegal", which appears to be the kiss of death for most applications which require professional skill or responsibility.

Can readers add any favourite "no-nos" or "kiss of death" words to the list?

Is this a Sign?

As I walked the dog the day after the Court of Appeal had dashed the hopes of Cadbury's by rejecting its attempt to register the colour purple, I saw this discarded wrapper by the side of the path. The photo was taken with a camera phone. It deals with blues and purples badly. It is a genuine wrapper and yes, dear reader, I picked it up and attempted to  lodge it in the correct recycling bin.
I doubt that this failure will result in Cadbury or their new brand family in the mother ship, Mondelez abandoning the shade, though maybe this application is doomed if the Supreme Court are not interested in its rescue.
In my office drawer there are several purple wrapped chocolates that I purchased last year, at random from a supermarket, in order to try and explain to a lay client what the trademark registration:

“The colour purple (Pantone 2685C), as shown on the form of
application, applied to the whole visible surface, or being the
predominant colour applied to the whole visible surface, of the
packaging of the goods.”

might mean and whether these products were in or outside the scope of protection.

One is a marginally different shade, another was small and had another illustration that led to a debate about predominately. They kept us happily amused over a glass or two of wine and perhaps one client has decided that colour alone is too brave for their business.

Sir John Mummery felt that both Allan James of the IPO and Judge Birss had erred, was in failing to see the description as part of the sign. In his view: "There is wrapped up in the verbal description of the mark an unknown number of signs". The pun was probably intended but the emphasis is added. The description was also the root of the problem for Sir Timothy Lloyd, and Lord Justice Lewison agreed with both.

At first blush it might seem that the mark might fare better without a description. After all, when I file a word mark, I do not describe how or where I am going to use it. The product is my canvas. I might cover it predominantly with the mark in big letters or choose to use it small. No one has said (up to now) that that was not a sign.

Perhaps the problem with colour is that we avid consumers don't see it as a sign, unless we have been educated by use to recognise it as such. Everyone was agreed that as a matter of fact that colour meant Cadbury's chocolate and was an indication of origin. However if we give them an exclusive right to use a shade or anything similar confectionery wrapping even without any intention to pass off becomes fraught with difficulty.   But if the evidence is accepted, and that finding of fact was not challenged by Nestlé, it seems that Pantone 2685C is off limits. Fact.

The Court also said: "Speculation by this court about the future direction of trade mark law at this stage of development would not help anyone".Such a shame as the Commission has suggested that the Directive should be amended to clarify that a sign does not have to be represented graphically and can be a "colour as such". If we have good passing off/unfair competition rights, it might be better policy for colours as such to stay off the register.

It seems to me that the decision feels right, but that the Supreme Court might need to wonder about the reasoning. The decision was paired with the Mattel/Zynga case before the same panel with a more problematic concept mark : the Scrabble tile, which had been accepted as registrable by the IPO but had not survived the court challenge below. It suffered from its description covering too many signs.

If you need to describe your sign, your problems have begun. Leave drafting descriptions to patent agents is what I say

The price of IP advice: is it ever right?

This blogger recently received one of those annoying emails entitled "Three Mistakes That Publishers Make". Mistake number three, the only one mentioned, runs like this:

"MISTAKE #3 Lowering Subscription Rates". 

Presumably MISTAKE #2 is Raising Subscription Rates and MISTAKE #1 is to leave them as they are.

This blogger is reminded of the legal practice of his father, this being a two-partner firm that operated with bargain-basement fee policy.  When the firm was eventually persuaded, against its better judgment, to hike its charge-out rates, it paradoxically prospered. Clients appeared to place a greater value on legal advice for which they paid higher sums, notwithstanding the intensive level of inter-firm competition.

SOLO IP is happy to hear from readers as to what their experiences of pricing their services have been.  Do let us know!

Is a Registered Trade Mark a Defence?

Always good to have a shield. C info

Sally Cooper reminds us that here in the United Kingdom, we have a provision of the Trade Marks Act 1994 (section 11(1)) which says :

 "A registered trade mark is not infringed by the use of another registered trade mark in relation to goods or services for which the latter is registered (but see section 47(6) (effect of declaration of invalidity of registration)"

This contrasts sharply with the the position of a Community Trade Mark in the UK. The ruling of the Court of Justice in the European Union which, in C-561/11 of 21st February 2013 [Fédération Cynologique Internationale v Federación Canina Internacional de Perros de Pura Raza] which says :

"Article 9(1) of the [ Community Trade Mark ] Regulation must be interpreted as meaning that the exclusive right of the proprietor of a Community trade mark to prohibit all third parties from using, in the course of trade, signs identical with or similar to its trade mark extends to a third-party proprietor of a later registered Community trade mark, without the need for that latter mark to have been declared invalid beforehand".

Now we have Marques reporting on 27th September 2013 a decision from the Spanish Supreme Court delivered on 24 July 2013 (Editorial Prensa Canarias, S.A. v. Radio Pública de Canarias S.A.) declaring that no infringement of trade mark rights will be established against a defendant that is using a (later) valid trade mark registration. The UK and Spain singing in harmony – who else ?

Barbara Cookson adds: Such an attitude  in Spain keeps the opposition practise in the national office vibrant. Hopefully the Fast Track Opposition procedure in the UK with a reduced £100 fee and the new Form TM7F introduced today will save some trademark claimants the trouble of having to invalidate infringing trade marks on the national register.

It seems to me to be good advice for anyone concerned about possible infringement to file their UK trade mark to establish a first line of defence. Even though the CTM at only three times the cost, covers so much more territorial, it cannot provide a shield. However if the brand bully has a CTM the UK mark is no defence either.