Use it AND Lose It: Trade Mark lessons from Cambridge University

A very respectable number of SOLO practitioners forgathered on Saturday in Cambridge for the CIPIL Annual Spring Conference which addressed the question "Use it  or Lose It" across the range of intellectual property rights from trade marks, through patents, to copyright and related rights. The event was expertly chaired by Mr Justice Richard Arnold who provided his own incisive commentary on the presentations.

You might think that it was obvious that governments grant monopolies to be used, but intellectual property law has become so convoluted that even this simple tenet can no longer be assumed and there was much to discuss.

This note only addresses the trade marks presentations and more specifically some issues that arose in the presentation by Appointed Person: Emma Himsworth QC . She addressed the issue of whether, when word marks are registered, use in a variant form is genuine use. Did the figurative fig leaf ( a term created by Mr Justice Arnold in his Starbucks decision of 2012 (it was noted that there is an appeal to the Supreme Court on that case to be heard on 25 March 2015 but it considers other aspects and the fig leaf remains firmly in its place in the firmament of IP case law) alter the distinctive character of the plain word.

In a straw poll of the audience we were prepared to accept that use of Catwalk (right) would be use of the word. But it was not. Geoffrey Hobbs' September 2013 decision is here. It was admitted that "the evidence was disastrous" was a major factor with no evidence of oral use or on invoices in any of the cases. Our chairman also felt that none of them had much distinctive character in their own right.


 The audience was in agreement that the sideways rabbit mark would not so easily be recognised as the word mark CB. That decision was made by Iain Purvis in June 2013.

Following down the catwalk was Amanda Michael's decision where HOME MAID was considered not used when represented in either of the forms shown.

As a result we were left with the conclusion that it was a case of Prove you are using it or lose it. Its simply not enough to use your mark, you must be able to show probative evidence of use preferably as registered with sufficient indications of the place, time and extent of use. Its got to be clear, precise and detailed and if the use is limited, you must dispel any doubt as to its genuineness with additional evidence. In a final gleeful addition, Ms Himsworth pointed out that brand owners opposing UK registrations must do all this concisely in accordance with the new practice note TPN 1/2015 which limits you to 300 pages without leave. 

When questioned on the practicality of this for well used marks which were being put to proof of use in face of obvious use, I was informed that such brand owners normally had more recent registrations on which to rely in their oppositions. So it appears that the Appointed People are at one with the registry in condoning the abusive use of refiled registrations to avoid proof of use challenges, and it is only the miserable SME who relies on registration and renewal that is to be mocked by this enforcement burden.

Dissipating Goodwill

There was also a master class by Hazel Carty of Manchester University on the concept of goodwill and whether it could be abandoned or dissipated more slowly. Hopefully once we have the views of the Supreme Court on Starbucks which our chair indicated was likely to review in some depth the Star Industrial case from 1976 (which discussed abandonment (by assignment)), it may be clearer whether it is ever safe to resurrect a zombie mark. Certainly the band cases and the Masylyukov v Diageo case concerning the registration by the appellant of the names of some closed whisky distilleries decided in 2010 by our chair suggest that its a risky option. However the point made Mr Justice Arnold made was that the goodwill was not dissipating in the Masylyukov case but was still being created (even if the whisky was no longer being distilled) as there was stock and it was being sold.

We were also treated to some perspectives from Australia by Robert Burrell who showed that there, an unused mark with dissipating goodwill could remain on the register.

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.

Bitcoins and the Regulation of Lawyers

Sample Bitcoin paper wallet

On Thursday both founders of this blog ( myself and Shireen Smith of Azrights) were to be found at the Covent Garden  premises of the Chartered Institute of IT attending a lecture given by another SOLO lawyer and chartered engineer, Dai Davis of Percy Crow Davis based in Leeds.

We heard a fascinating and though provoking lecture on the concept of money and particularly virtual currencies of which Bitcoin is but one notorious example. The audience's main interest was in IT security. Since Bitcoin is a currency that is entirely dependent on cryptography and the possession of a private key to establish ownership and valid transactions, the security of the methods of storing those private keys is of fundamental importance to those charged with managing the security of the IT systems that are used to contain Bitcoin wallets or run exchanges. The picture opposite is a paper method of storing both public key (in the yellow section) and the private key (under the green fold on the right) of an alleged Bitcoin.

But why are we as Intellectual Property Lawyers interested in the concept of a decentralized or virtual currency? Two reasons: Do we accept payment by such a means to show how tech savvy we are ? and how do we advise our entrepreneurial clients about the risks and rewards of doing so or even investing in Bitcoin mining enterprises.

You will be able to listen to the entire lecture (and maybe even see the backs of our heads ) when it is uploaded here. Dai shared with us some fascinating "facts". According to the FBI 95% of Bitcoin transactions are related to illegal trade in drugs or arms. 45% of the Bitcoin exchanges (banks) have gone bust. The mining of new Bitcoins is increasingly difficult and requires substantial amounts of computing power to find new private keys and register them as your new Bitcoins.  The mining scheme has been devised so that every 4 years it becomes even harder and one of those break points is coming this summer. The maximum number of possible private keys or Bitcoins is fixed so the value should always increase (this is a big difference between a cryptocurrency and real money where the central authorities can print it. Some might say it gives Bitcoin greater integrity but it also ensures that those who got into Bitcoins on the ground floor have an enormous ENORMOUS incentive to keep the system going and see their fortunes grow at the expense of the suckers, like us, who would need to buy pre-mined Bitcoins for value.)

I will not accept Bitcoins in settlement of invoices for the same reason I do not accept other forms of barter payments. Barter is legal but just like any other transaction VAT must be accounted for (VAT is the lifeblood of the European Union and, as Dai suggested, why Europe should take the lead in setting a legal framework for the use of cryptocurrency). HMRC suggest this procedure for accounting for VAT on a barter trade. The problem is not that much different from accepting payment in a foreign currency (though often those transactions especially in US$ are mostly with clients outside the scope of VAT). However an accountant can find trusted sources to verify the rates you have used for those transactions. Setting the value of your Bitcoin for both VAT and the payment of tax is difficult. It seems this is not an issue for most users as they (unlike you) prefer to avoid paying any tax. This is not an option for a regulated lawyer. There is also a high risk that a client offering you payment in Bitcoin is involved in money laundering. Its too high a risk for a patent or trademark agent to take.

What about paying in Bitcoins? As Dai explained currencies of whatever description depend for their vailability on a large enough group of people that trust them to make them an acceptable form of exchange. The Bitcoin community wants you to trust them. This site https://bitcoin.org/en/getting-started looks confidence inspiring doesn't it? Its run by a Foundation but then most of us reluctantly trust the Bank of England but now it seems that Bitcoin to succeed needs to create its own equivalent.

Am I being too harsh - do comment if you are a proud and honest user.