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 It has to be implemented by 14 January 2019 and the day after our old friend is repealed.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.

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.

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.

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.

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?

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

oc:DE,FR,GB,EM,WO AND tm:yoga AND ty:Combined,Figurative AND nc:28,41 
delivers me 605 YOGA marks some of which do have a genuinely distinctive element. Nonetheless pose plus YOGA seems to have a certain appeal.

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.

Sally Cooper gets worried about Phishing with some thoughts on Client Money

Keep dialling there must be one lawyer left?

As patent and trademark agents we have become all too familiar with the misleading invoice scams our client's suffer, but now there is a much bigger threat, especially for those of us who hold client money or even have our own funds in the bank. It's called phishing and might involve:

•  receiving a telephone call supposedly from your bank telling you that your account has been compromised and you need a new one.
• or more innovatively an email that purports to come from a supplier, perhaps an overseas agent, telling you of their new bank account details.

The solicitors regulation authority reports that no fewer than 50 solicitors firms have lost money this way.  Here is a BBC news story about one of them. Karen was a solo practitioner.

Sally Cooper Has drawn my attention to some very helpful advice at the Manchester Law Society is recently sent out to their members. I suppose it's to advertise their cyber security and risk conference on the 5 November. It is open to nonmembers if you really want to get scared and be persuaded to move to a cloud operator. However awareness of the risksand a few simple precautions should provide an effective defence.

• Be extremely cautious about phone calls from your bank. If you choose to ring them back, do it on another totally unconnected line
• If you have staff,train them to be aware of potential threats including bogus emails and suspicious requests for information and forbid them to make transfers without your consent.
• Doublecheck any new bank account details supplied to you for payments
• Be even more careful about money in your client account

Meanwhile IPReg has provided us with some more information about managing our client accounts and keeping client money separate. They have now confirmed this can just be a separate business account but if you can open a trust account do. This is what they are telling our clients about keeping on top of costs. It introduces the idea that the client must give informed consent if you are actually going to spend his advance payment on providing the services for him.

For those of you charging fixed fees in advance, you need to read this carefully. While they are stressing that there is no compensation available to your clients, they are also imposing an almost impossible burden of getting this informed consent. They are also providing an expectation to make refunds if the work is not completed for any reason. They're not giving any examples of why work might not be completed.  A few examples would have gone a long way to illustrate their thinking.

For example, I've agreed a fixed fee for preparing and filing a patent application. If the client changes their mind or fails to respond to my first draft what level of refund are they expecting under this policy?

It's more straightforward if the fixed fee is for something that is completed quickly like filing a trademark application. However, I also offer some clients a soup to nuts fee for trademarks. Are they going to expect a refund if there is an opposition. The terms need to be quite clear  that its fixed provided that there are no absolute grounds objections or oppositions, and if there are, there are no refunds. Our terms and conditions are going to burgeon, and what if somebody intercepts your email requesting bank account details for that refund?  Fortunately, by not handling the enormous sums dealt with by property lawyers we are a less lucrative target.

Lawyers' skills and the internet revolution

I spotted "The intellectual property revolution" by fellow blogger and SOLO-ist Shireen Smith (Azrights) on the Internet Newsletter for Lawyers today, here. Apart from being one of the first people to consider the IP problems of the internet from a bottom-upwards perspective, looking at actual businesses and their concerns rather than starting with a raft of citations from Directives, statutes and appellate judicial decisions, Shireen is also someone who can ask an awkward question or two when seeking to clarify or debunk popular assumptions. Her opinions are always worth considering, even though I don't always agree with them.

In her article on the IP revolution Shireen has something to say about legal practice, something that solo and small practitioners may want to consider:

Another way in which the digital revolution has had tremendous impact on IP is that it has altered the skills and knowledge required to be an IP lawyer in the digital economy.

In the early days of the industrial revolution there were just patent agents as a profession. The separate profession of trade mark attorney emerged later.

Traditionally, these professions have been entrusted with IP registration work, while specialist IP solicitors and barristers handled copyright, or IP litigation work.

Nowadays solicitors tend to register IP rights too, while many patent and trade mark firms also provide litigation services. So, IP tends to be a fragmented area of practice, and increasingly the boundaries between the traditional professionals are breaking down [this breakdown of barriers is in part encouraged, and in part assumed, by some clients whose grasp of the divisions within the professions providing legal services is often slender and who prefer to deal with the devil they know rather than go through the uncertainties and occasionally the hassle of explaining what they do and what they are trying to achieve several times over].

Additionally, as IP is entwined with business, many IP services are offered not by the legal professions but by those with backgrounds in business or engineering or marketing. They offer IP valuation and commercialisation services outside the regulated sector [indeed, and while services such as trade mark or patent filing fall within clearly defined parameters, "IP valuation" and "commercialisation" are subject to no homogeneous definitions, rules or methodologies, which would make regulation difficult even if it could be imposed].

The widespread ownership of smartphones, and the trends in society towards a sharing economy, peer to peer lending, crowd-funding, use of big data, apps, and more, mean that the skills needed by an IP lawyer are quite different to what they traditionally used to be [the skills and disciplines of time management can be included here: it was so much easier to deliver complex work at a time when post was delivered just once a day and one could achieve isolation by moving out of earshot of one's desk phone].

What often falls between the cracks in the current climate is copyright advice, particularly in technology related areas like websites. If your IP lawyer does not understand the online dimension it can be difficult for them to offer effective advice around name choices [included in the copyright dimension are the persistent questions "how much is this course of action likely to cost me?" and "what am I likely to get out of it?", which regular exposure to copyright litigation and negotiation can help with, and for which the law books and cases are of little guidance].

Indeed the technological advancements that are transforming our lives mean that the web will be the only facet of many businesses. So the new breed of IP lawyers need to stay abreast of new developments, and emerging technologies in order to advise not just on the law, and legal documentation, but also on other aspects of doing business online.

Therefore, the right lawyer to advise a business in the digital world will be one with a good understanding of the web and technology.

What do readers of this weblog think? Do let us know!

Enterprise Court

His Honour Judge Hacon

Yesterday (7 October 2015) AIPPI organised a lecture given by the first and so far only Enterprise Judge, Judge Hacon  and I needed to write up a few notes, so here they are In case they are of use too. There were lots of other issues raised and stories related (including an in-depth history of the extremely enterprising litigation career of the now bankrupt patentee and fencing inventor, Mr Perry) but these were the points I wanted to recall.

Court Fees

 Since March court fees for money claims have gone up at a rate which is particularly punitive to IPEC clients and it is good to know that the judge is concerned about this and would welcome feedback. However, since, in the preceding 6 months to the end of September 2015 there have been 326 cases of which 220 are in the multitrack, it does not appear that the fee increase has had a devastating effect, though it would be interesting to know what values had been put on the new claim submitted after March.

The judge pointed out the extreme undesirability of saying that your damages were unquantifiable as this results in an automatic £10,000 fee. However, he saw no problem in quoting a relatively low value and then adjusting it when the actual value was more apparent. The increased fee would be payable at the time of adjustment and clearly making multiple adjustments was deprecated but the timing of the adjustment might well be problematic too. If a defendant has relied upon the value claimed, a late stage adjustment might be a shock. On the other hand if the defendant has deliberately suppressed the extent of his activities, he might not qualify for great deal of sympathy from the court.
The proposal to make no initial money claim was also mooted and it is in that context you might be leading the defendant up the garden path most, If you then seek an enquiry only after safely succeeding on liability.

Interim injunctions 

The judge was keen to stress that these are available in his court and that since he has both deputies and nominated High Court judges, a judge will always be found. The judge envisages that these will not be ex parte injunctions and that the parties will try themselves to agree an evidence timetable and speak to his clerk to fix a date for the substantive hearing.

Leeds

Would northern litigants please note that the judge is willing and indeed eager to sit in Leeds or other cities which have judge's lodgings with butlers and wine lists. Apparently the litigants whose case was to be heard in Leeds recently decided to settle their differences and the Judge's excursion to northern climes was cancelled.

Publication of small claims case summaries 

We have previously discussed on this blog the desirability of publishing more information about what goes on in the small claims track. Apparently a format for publishing case summaries possibly on the UK IPO website has been agreed but none has as yet emerged. Now that memory has been jogged, perhaps we will see progress.

Pro Bono

The judge encouraged us all to volunteer for the pro bono scheme which he indicated would require both case officers and lawyers willing to commit some pro bono hours. The idea was that the case officer would not provide legal advice but be someone who would be on the client's side and be responsible for finding advisers and possibly encouraging transfer to paid arrangements when appropriate. CIPA/ITMA members have already been encouraged to sign up but clearly the judge feels that law firms with allocations of agreed pro bono hours should be utilised too.

Enforcement

Failing to pay your IPEC costs order is considered  a serious omission by the judge and he is prepared to  grant applications for such a debtor to appear before him to discuss such a default. In one case, the debtor failed to appear and a bench warrant was issued. He was subsequently arrested by the police and brought to the court and the parties were able to agree a compromise and imprisonment proved to be unnecessary.

The 10th Anniversary Event 26 November 2015

I've been feeling sad lately. My co-blogger, inspiration and mentor, Jeremy Phillips is going to retire. So this solo blog is getting a little more solo every day.

I really hope that you will be able to join me at the best free farewell event that anyone ever organised.  The Journal of Intellectual Property Law and Practice was launched at an event in Staple Inn some 10 years ago. Jeremy sent me an invitation. I had just started Filemot and this was where I met Shireen Smith with whom I started this blog a little later.

As we all know, the IPkat and other blogs driven by Jeremy have kept the intellectual property community from the youngest patent trainee to the most senior barrister (and maybe even a judge or two) informed about issues, developments and matters relevant to their own work and careers. Almost all of it is freely given. Nowadays we call this the "sharing culture". Jeremy was practising the sharing economy way before it became a buzzword. Any farewell event that was just devoted to toasting Jeremy's retirement would be unbearable. However, this is a serious seminar with illustrious speakers sharing their own knowledge of current developments and issues from copyright to second medical use patents with some trademark stories en route. You are bound to benefit in real terms (as well is in those dreaded CPD points).

If you haven't already booked your place, you should do so now. Sadly it is in London and starts at 9:30, but it will certainly be worth the journey.

Today Jeremy is with another of my co-bloggers Michael Factor in Jerusalem at his PCT TeaParty.

Design Clients - the impossible market

Where they agreed

The UK Intellectual Property Office has just launched a consultation paper to determine whether the UK should join the Hague Agreement for the protection of industrial designs. Recently, the UK IPO has launched a twitter feed (@BeautifulIP) to promote design registration, mainly focusing on the low cost and benefits of registration.

It knows from the activities of organisations like ACID that design matters and is really important to UK designers, who just hate being copied or even emulated. What is more difficult to understand is why the registration systems are the most neglected part of the IP system. Even the grace period has not helped much. There is, of course, competition from Europe with the Community Design System and there is no doubt that their filing interface is a million times better than the UK one - which is still paper based. Nevertheless for a single design €350 is a lot more than £60.

A UK designer can already access the Hague System since the UK is part of the European Union, which is a member. Hague allows you to file online. It is operated by WIPO but unlike the PCT and Madrid systems for patents and trademarks, Hague goes all the way and gives you design protection, though you may still need to deal with national offices if they have additonal examination issues within 6 months. You can also file and manage your applications online. Now that you can use the system to protect your design in Europe, the USA and Japan, it has become a practical proposition for designers to use. Prior to May 2015 when the US and Japan joined, the scope of protection available beyond the EU had almost no overlap with the real market for exclusively designed products.

The biggest problem I have when dealing with clients that are interested in protecting their designs is explaining to them the nature of the representations they are going to need. These images are the essence of what is protected and a simple snapshot, a glossy picture from your catalogue, or even a clip from your production drawings isn't likely to help the judge if you want to enforce the design registration. The judge can't and won't go behind your scrappy image (even if it was taken at phenomenal cost by an art photographer)  and look at your preparatory work. This was why things went badly for the Trunki designer. Even the Supreme Court may not be able to help him. Look out for the hearing of PMS International Limited (Respondent) v Magmatic Limited 

Design clients want great value for money. They want certainty. They don't want to engage in discussions about which aspects of their design are significant and whether colour, shading or particular elements of the shape are original or commonplace. They want to evolve and change their designs frequently. They are economical with both funds and time. They are creative and don't mix well with the pedantry of lawyers. Even those who have suffered plagiarism are reluctant to make upfront investments and they prefer the court of public opinion to IPEC. Design collections are typically numerous, frequently refreshed and many designs fall by the wayside before the one classic for which 25 years of protection would be of value is found.

The UK government wants to help and support these people. I applaud them. They may be able to go where the profession cannot. Designers have abandoned lawyers but they cannot abandon the law if they want to manage what they see as plagiarism. I hope that our leading designers like Tom Dixon will stand up and respond to the good Baroness in her efforts to get UK designers to go to the WIPO site and protect their designs both in the UK and possibly in other countries which belong to the system. He briefly flirted with the system in 2011. You can search here.

Certainly if we are going to exit Europe, it's going to be a good idea for the UK to join in its own right.  The consultation paper emphasises fee savings but fails to consider how designs need to be represented for effective protection, especially in the US, where refusals may be more likely.

Do you have any design clients left? If so it may be worth responding to this consultation before 10 November 2015. The UK government is doing its very best to assist the creative industries I hope they respond and encourage the UK to sign up.

EPLC not so epic, it seems

Grandfathering provisions
aid those already practising

Practising patent law? Planning to litigate in the new but not yet operational Unified Patent Court? If so, this may be for you.  Today the Unified Patent Court website has posted the following information:

Draft proposal for rules on the European Patent Litigation Certificate and other appropriate qualifications 

At its meeting on 3 September 2015 the Preparatory Committee agreed the draft proposal for the Rules on the European Patent Litigation Certificate and other appropriate qualifications. The Explanatory memorandum and a copy of the Draft Rules are available.

The Explanatory memorandum is nine pages long, while the 22 draft rules take up just eight pages.  There's good news for grandfathers, in that some existing qualifications will be recognised, and those who have had a hand in three pieces of patent litigation over the past five years too.

The draft Rules make no reference to solo practitioners or to the size or resources of practices.

the Ethics of Patents on Life : a taster

Murray Edwards College where we discussed #patentsonlife

Those of you who follow my twitter feed will know that #patentsonlife figured a lot from 4-5 September. This was a true multi-disciplinary conference that I blogged about before the event here.
It was an extremely stimulating conference and brought together many streams of academic interest within a manageably sized gathering. There was good representation from the patent professions from a High Court Judge to several patent agents; the Churches Religions (mostly from the Catholic church which being an undemocratic global organisation is able to speak with a single voice); Bioethicists and Scientists from Academia; and even Syngenta's IP counsel to represent the commercial world, though we had no policy makers or representatives from the patent offices (they need not have been afraid). The list of speakers can be seen here and they all stayed for at least one full day and participated in the discussion unlike many a traditional IP conference.

I am hoping that Michael Factor who presented a Mosaic viewpoint on property in ideas will also blog his impressions of the event.

Each delegate came from his own world but went away with a better understanding of the viewpoint of others. Those of us who understood that patents are time-limited and relate to inventions strove to help others discern  the distinction between discovery and invention. While there are some who feel the patent system is iniquitous, it is clear that there are distinctions to be drawn between the morality of research, the validity of patents relating to aspects of outcomes of that research and the manner in which any patents are exploited to the benefit or detriment of society. In turn,  we gained a better understanding of how  catholic social doctrine can justify the capitalist concept of property ownership. Big academic ideas like social mortgages and the public trust doctrine were also explored. The capacity of patent examiners to make moral judgements or even apply the Biotech Directive was considered. We learned how the search for funding may perhaps create a tendency to make big promises or attempt to exploit the patent system for financial gain.

There is much to be done by those digesting the contributions to this conference and a publciation should emerge. Nevertheless I hope that when silos of interest discuss ethics they will remember that social doctrine is something that affects and needs to be influenced by the whole of society and cannot be dictated by any single sector - however learned the  IP specialists.

UCL is also organising their own micro panel event here.

Mis-Sold Community Trade Marks

Following the judgement of Mr Justice Hacon in The Sofa Workshop Ltd v Sofaworks Ltd [2015] EWHC 1773 on 29 June 2015, there have been a flurry of case notes from the great and the good of the UK trade mark profession drawing attention to the fact that community trademark registrations maybe inappropriate for many clients who don't maintain a presence on the European Union market, but something rather smaller and more local. These case reports include ones from  Cleveland, Marks & Clerk, Dehns, Mewburn Ellis and others.

Those links will take you to the articles which describe the background to the case and the decision.  Essentially, since the mark had been used and promoted only on the UK market for sofas, it was held not to have been used in the manner required by the European Court of Justice when it decided C 149/11 Leno merken, the ONEL reference from Benelux. This was in December 2012, so why the long hiatus before we realised what this all meant.

But wait, the opposition divisions of OHIM and national patent offices have been trying to apply Leno merken all this time. Opposition decisions, though, do not create precedents and are frequently not studied in any detail by academics or the trademark profession.

Leno merken was a clever academic decision that said (unhelpfully, if politically correctly) that we were to  ignore the territorial borders in the European Union. This rather detracted from the important point that it was the use in accordance with its essential function and for the purpose of maintaining or creating market share within the European Community for the goods or services covered by it we had to look at. In particular we should  a"take into account the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and the scale of the use as well as its frequency and regularity".

The European market for anything is typically bigger for most goods and services like sofas, but it is often quite difficult for a trade mark agent to provide evidence of the European market for their goods. The CJEU did recognise that some markets could be restricted to a single member state (paragraph 50) but in this world we need to know more about the economic features of a market and (perhaps) provide evidence about it. Help!

On 20 May 2014 in a first instance case 000008263  - the Cancellation Division considered the board game market and made this damning assessment:

The remaining invoices which are dated within the relevant period only show sales to customers in Germany which is a relatively small part of the European Union. In territorial terms and in view of the unitary character of the CTM, the appropriate approach is not that of political boundaries but of markets. As the Court indicated in 'Leno Merken', it is impossible to determine a priori and in the abstract what territorial scope should be applied in order to determine whether the use of the mark is genuine or not (para. 55). All the relevant facts and circumstances must be taken into account, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and scale of the use as well as its frequency and regularity (para. 58)....     these 15 invoices are only billed to customers in Germany and as such invoices for three years for a low amount in one country are not sufficient to prove genuine use of the earlier mark.

Nevertheless on 27 February 2015, paying lip service   to Leno the Fifth Board of Appeal decided in RAPIDO  a case concerning goods and services related to lotteries, said:

The evidence submitted in the present case essentially covers France, which considering its geographical size and population density constitutes a substantial part of the European Union. The evidence, therefore, shows that the contested CTM was used in the territory of the European Union

One might have thought that the characteristics of the lottery market in a world of EUROMILLIONS  were such that a presence on it required a little more to sustain a Community Mark as opposed to a French national mark, but no.

The principle of  use relative to the market has brought in a de minimis standard by the back door (not a rule, you understand, a relative standard that takes into account all the circumstances).  This even applies in judging genuine use of national registrations. See Case C-141/13 Reber WALZERTRAUM from 17 July 2014. The case is in German but you can refer to the IPKAT report here.

Nike has added a interesting dimension in its heroic fight to register JUMPMAN in Europe. Its CTM succumbed in  Case T‑233/10 to an opposition based on earlier Spanish registration and was duly converted to national marks, at least in the UK and Benelux, and the same opponent raised an opposition based on an earlier community trade mark for JUMP which was subject to proof of use.

The shopping in Varna

In the UK in October 2014 Oliver Morris assessed the evidence and found it wanting to show genuine use on the market for shoes in the European Union. He applied Leno Merken  with the same aggressive verve as Mr Justice Hacon did later, and also considered Reber. The decision in O/451/14 is here. It was appealed to the Appointed Person and the hearing was on 21 July 2015. Rouse, who acted for the opponent at first instance, have provided an interim report here. The real decision is awaited.

Meanwhile, in Benelux, on a parallel case, where we must assume the evidence was pretty similar, the Benelux IPO decided exactly the same way on 12 August 2015. 

In both cases the decisions stopped at the proof of use stage and did not consider what would have happened if they had been wrong. I suppose there was no need with Case T‑233/10 lurking in the background.

Now did these two independent tribunals stretch Leno Merken for the benefit of a big brand owner or are their decisions correct. They deny genuine but small use in a shop in Varna, Bulgaria as an  insufficient presence on the European Union footwear market, which Mr Morris held was manifestly huge. He was supplied with a Euromonitor report, but he said its hugeness was self-evident. This leaves us a little in the dark as to when evidence may be required and when not. The Benelux decision does not refer to any evidence about the European footwear market.

OHIM's cancellation division on 30 June 2015 in the case of CECCONI'S had to consider the EU market for celebrity restaurants. The Decision in C000008943 held that one location in Mayfair was enough to sustain a CTM for "restaurant and bar services" but they revoked it for the broader category of "Services for providing food and drink; catering services.". In this case the characteristics of this esoteric market and a nice continuous stream of TRIPADVISOR reviews across the relevant period and from other Europeans,saved the validity of this CTM.

It would be interesting to have input on other cases if you have suffered any surprises.

Although consistency may not always be there in a Europe, which doesn't believe in precedent, it does seem that the selling spiel we were all encouraged to give that the CTM was validated by use in a single country is now wrong. OHIM has become extremely wealthy on the back of a misrepresentation.

Indeed if your client is a lifestyle business with a local footprint and no intentions to expand, the right advice may be to leave even the UK Trade Mark register alone. After all most fights start when a big brand notices and opposes a  startup. Of course, that leaves the lifestyle business relying on a section 11(3)  or Art 111 defence if someone else later registers the same or  a similar mark in the UK or OHIM respectively.

For other clients we now need to make a more careful choice before opting for the hitherto bargain CTM. In some cases it might be wise to surrender and convert a vulnerable CTM. What say you?