Canal + not UK law yet

In February 2014 OHIM Board of Appeal issued a decision R1260/2013-2 confirming that proof of use can be requested in a trade mark opposition where the earlier right relied upon is a re-filing of the same sign for the same goods and territory that completed its registration procedure 5 years before the opposed mark was advertised. This gave effect to the sanctions provided by the Harmonisation directive to prevent unused marks being used to oppose later registrations.

Unfortunately in the UKIPO this is not the case. In an interlocutory decision issued today by Mr Bryant, a request for proof of use of a mark registered in various manifestations for 20 years but as yet unused was refused.

Coincidentally ECTA is holding a workshop on this very issue in Alicante this evening. I want to know whether OHIM is happy with the fog in the channel between UK and European Union practice.

What do you think?

Food for thought

Here are some thoughts from Michael Factor (of IP Factor fame) on the niceties of professional hospitality:

Food for thought

Israel is a patent generator. Most patent applications that are drafted in Israel are filed in the US, and a large number are filed in Europe as well. Many US and some European patent firms make regular pilgrimages to Israel, often sending at least one Jewish partner. They visit the larger firms, but are aware that a very large percentage of new applications are actually generated by the smaller firms and sole practitioners. A couple of associate firms, one US and one European, have invited the smaller firms to breakfast in Tel Aviv. On the menu is the PPH and other recent developments.  Unfortunately, the firms decided to choose a restaurant that serves both dairy and meat dishes, including veal in a cream sauce, which cause problems for those with Kosher dietary requirements. 

The hosts are themselves Jewish. They may be Kosher observant to some extent and may possibly only order from the extensive range of vegan and vegetarian dishes that the restaurant offers.  However, about 50% of Israel IP practitioners would not wish to eat in such a place and many would be uncomfortable even to be seen there. 

I think hosting a meeting in an informal setting such as a restaurant is a great idea. However, one has to be aware of the cultural and dietary tendencies of the target audience. If one hosts an event in India, it would be simply bad taste to serve meat. Muslims will eat meat in accordance with their Halal requirements, but many Hindus and Buddhists are strictly vegetarian. 

In England, Church of England practitioners -- and those out of practice -- may have few religious restrictions, but many English people are squeamish about foreign food.  A French firm might consider whether it is best to avoid hosting a marketing event which serves snails and frogs' legs since, while they are regarded by some as a great treat, they may turn the stomach of many others. Horse burgers should probably be avoided as well. The Korean diet includes a much wider range of meats than are generally eaten in the West. Alcohol is another sensitive issue. In some cultures its absence is seen as a serious omission. Elsewhere its presence or its consumption, particularly in quantity, can give rise to offence. 

That's not to say that a low salt, low fat, alcohol free vegan reception is likely to draw the crowds. One can't please all of the people all of the time but, when planning a marketing event, it is worth thinking things through, trying to be inclusive and to avoid offending.  

The new ITMA website

Home Page

The Institute of Trade Mark Attorneys - august organisation that represents some of the UK's regulated and registered trade mark agents has revamped its website making extensive use of a  CENTRIC customer relationship management (CRM) system. I assume that because all the messages I get from it and various tab titles use that trade mark. I cannot find out much about it. There are references to CENTRIC CRM as being an open source product and it was the former name of Concursive, but relying as one does on the UK IPO you find that the CENTRIC word mark stands as an opposed application in the name of BNP Paribas. Its a similar scenario on the OHIM register. Why am I interested in the underlying database? Well that's likely to be responsible for some of its strange behaviours.

At first sight the design looks nice and clear. The Home Page is a little crowded with plenty of information left below the fold, but then I don't envy anyone trying to organise a home page any more. Members can log in. Its in the top blue bar on the left. If you are a member you have been sent a user name (Joe.bloggs format)  and your password set to your membership number. You can change that when you find the place to edit your profile. Once you log in there are exciting green bar messages that tell you false information, such as that you have not paid fees or the like. The profile itself allows a certain amount of editing. I have managed to show you a picture and change my title to Solicitor Advocate just for fun. I may change it again to something else next week. After all I have apparently only been a member for 3 weeks. I tried to give myself some skills but it was too smart for that. The nice thing about the profile (if anyone other than me was looking at it) is that it contains my twitter feed, which on the day I made the screen shot was quite relevant. You can enlarge the picture in this post by clicking on it.

So who will see this profile. An important aspect of any website like this is to allow the potential client to find an adviser. so I logged out. The link to do that doesn't work so I had to restart the browser to masquerade as a member of the public.  I clicked on the prominent purple find an expert box. it shows me a lot of text and suggests I try the Public Search Tool . I then click that.  I decided I would look for an expert in Windermere. Readers of this blog may be aware of a prominent trade mark expert who has moved to that neck of the woods. I get a really nice enlargeable map showing where in the UK Windermere is, but there are no experts there. The map shows Leeds too but that is barren of experts apparently. I zoom the map for fun a few times and decide to look in London. Ah much better.

There are lots of little pins and a long list of firms below the fold that I almost miss. I can click on a pin and see who lives in that office. The map is too clever and zooms around and ceases to be fun. The list, if you can escape the maw of the map, shows a list of members and you can sort by the various headings. At the side of each name in the List their is a link to view their profile. I chose one at random from my London search and discovered he had an address in Weybridge.  I could not work out the criteria for display. If I limit the search to "member" I could find myself but the Filemot pin was almost as shy as the Sally Cooper one so neither of us will getting much business from our ITMA membership as a a result of this website any time soon.

The database aspects feel to me like a work in progress. By contrast the information is presented clearly and its easy to find out how difficult it is to qualify as an agent and that I could expect to earn more than £40k when qualified. The Events come displayed in another whizzy database tool - an interactive calendar.

Professional bodies now need and are expected to have quality websites, both well designed and functional.  It is commendable that ITMA want to improve their offer. The design is nice but it wasn't that bad before, but so far I am not impressed by the database tools. You can hear how well the salesman sold them, but the finished product is incomplete. Maybe like our beloved OHIM site it will be an improving work in progess. Lets hope

Email address discrimination

Although I have worked with large law firms and organisations since 1994, I have been a sole trader since that time. Like many sole traders, I do my best to maximise my income by using my hours productively (eg working, rather than chasing unpaid invoices and trying to complete income tax forms unaided) and by minimising my outgoings.  This being so, I decided at an early stage to use an off-the-peg email address bore the name of my original internet service provider.  Though I have passed through the hands of several different ISPs since then, my email address has remained constant. There can't be so many of us now with email addresses ending in "@btinternet.com", so it's even becoming quite distinctive.

I recently spotted an invitation to sign up for a free webinar on an intellectual property topic of some interest to me. However, there was a little message at the bottom of the promotional material to the effect that the organisers only accepted registrations undertaken with professional email addresses (i.e. no registrations from people using Yahoo, Gmail and similar private accounts).

I would have guessed that there are quite a few sole and small practitioners in the field of intellectual property who, like me, are using web-based email services and may would be wondering whether this is an unreasonable ground of discrimination. Comments, anyone?

Tell Me Your Invention! When clients are reticent to reveal all ...

Via occasional guest IPKat-blogger Sean Gilday (Page Hargrave) comes the following piece, drawn from his own personal experience in what we unkindly call the Real World. Readers may have experienced the same phenomenon, or a variation of it. This is what Sean writes:

Tell Me Your Invention!

Although we’re only just over one month into 2015, I have already twice encountered a problem that rarely seemed to arise during 2014. I’m not sure what to put this down to. Perhaps it’s a consequence of inventors in general becoming more aware of intellectual property? Or maybe it’s simply a blip? The problem I’m referring to is a reticence on behalf of some inventors to tell me what their invention is.

The recent glut of potential clientele with this issue is concerning. Do I not sound trustworthy over the phone? Does my headshot on the firm's website make me look a little shifty? I must admit, it’s starting to give me a complex ...

The first time this came up I was slightly at a loss, and it’s quite a reasonable stance to take if you think about it: horror stories abound where inventors have shot themselves in the foot and prematurely disclosed their invention to a friend down the pub or carelessly left a document on a train (this isn’t just some imagined contrivance for P2 exams!). Therefore, if it’s prudent to keep the invention secret, why does that exclude me? I thought it might be a good idea simply to enumerate the reasons in blog-post form, so that in future I might simply direct potential clients here to put their minds at ease.

First and foremost, s.2(4) of the Patents Act states that disclosures resulting from a breach of confidence, occurring in the six months before filing of a patent application, shall be disregarded for the consideration of novelty. This applies to anyone to whom the invention is disclosed by the inventor provided there is a duty of confidence imposed. I would think it to be fairly inarguable that contacting a patent attorney at work with a view to filing an application imposes a duty of confidence on that attorney. If you’re still concerned about any ambiguity here, I’d recommend that you simply include a footer on all correspondence that states that the information therein is indeed to be treated as confidential.

Secondly, s.280 of the Copyright, Designs and Patents Act states that any communication pertaining to the protection of any invention is privileged from disclosure, and to be treated as if the attorney (or firm) were acting as the client’s solicitor. This point is usually not persuasive to those people who are merely making initial contact for an enquiry, and who may not go on to be an actual client, but I still feel that it is worth listing here.

Thirdly, if an attorney is a member of Chartered Institute of Patent Attorneys (and this information can usually be found on a firm’s website), they have agreed to abide by its Charter and Bye-Laws. CIPA maintains disciplinary powers over any members not maintaining a professional practice.

Fourthly, since 2010, the patent attorney profession has been regulated by IPReg. This has its own Code of Conduct which can be viewed online. Rule 5 of the Code of Conduct relates to integrity, and states that a regulated person must “put clients’ interests foremost and keep clients’ affairs confidential”. Rule 8 relates to confidentiality, and states that a regulated person must “keep the affairs of clients and former clients confidential”.

And finally, there is the matter of practicality. If you do not trust a person sufficiently to keep your invention secret, it follows that you clearly do not trust them enough to draft an application on your behalf, and so the process is stymied. Even if drafting were somehow to proceed in this case, the holding back of information relating to the invention (for example, improvements and modifications) due to a lack of trust is highly likely to be detrimental to the application.

As a closing point, some prospective clients have suggested that they bring with them a non-disclosure agreement (NDA). While I’ve always said that I’d be happy to sign one (after reading it thoroughly of course), effective NDAs must be properly written and correctly set out the information not to be disclosed, and this can be tricky to do depending on the nature of the invention. Still, even a properly drafted NDA would probably give me some concerns over the matter of trust in that attorney-client relationship, and is a slight case of overkill given the points outlined above.

So, to any future inventor that I may have directed to this post: I hope that this puts your mind somewhat at ease.

Readers might like to add their own comments, whether in relation to the UK or from further afield.