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.