BONZO DOG and the last men standing principle

The group of trade mark cases on band names was recently added to by the decision of Oliver Morris in BONZO DOG DOO DAH BAND on 30 October 2019 (O-664-19).  There was also a High Court case relying on many of the same issues which was struck out on 8th April 2020 because the IPO decision created an issue estoppel - now the firmly established situation for cancellation actions at the IPO as opposed to opposition decisions.

After sifting through a mass of history from the 1960's Mr Morris held that the residual goodwill in 2005 would have been owned by "the last men standing" (para 105). There were renewed activities beginning in 2006 which had been promoted to some extent by Anglo, the entity that had registered the UK trademark 3129760 shown above in 2015. Where did the goodwill go? Was it new and separable as Anglo contended, or did it continue to accrue to the last men standing. The last men won out and the trade mark was invalidated on a passing off 5(4) ground as well as for bad faith.

Although the band claimed to be a "partnership", it was more akin to an unincorporated association of individuals with no contractual or other arrangements. This followed the finding in the ANIMALS case decided by Mr Hobbs  in September 2013. In this situation of a mere "alliance"the goodwill is left with the last man standing. This principal was elaborated in more depth by Mr Hobbs in CLUB SAIL back in 2010 quoting some of the original band cases (SAXON and THE SUPREMES)

Bonzo Dog Doo-Dah Band in Fenklup (Dutch TV), 7 June 1968. Probably Roger Ruskin Spear or Rodney ("Rhino") Slater This image is from the Beeld en Geluid Wiki

The Band chose not to be legally represented before the Registrar, though they were later in the High Court, after a crowdfunding exercise which billed it as a "criminal case". 

There seems to be something about the music industry that prevents musicians creating either a proper partnership or corporate structure. Although even with a corporate structure, it is still possible for departing band members to reconcile themselves to the fact that by leaving they abandon their interest in the goodwill along with their shareholding.

Maybe today's bands and their promoters are more inclined to take professional advice and register trademarks in an appropriate entity. The cost of doing so is very small compared to the agony of these protracted, evidence heavy and distressing disputes.

Going Forward with the Agile Solo ducks

Hi!

At a time when most of the IP community (apparently not in Sweden though) is in lockdown, it's interesting to see who is adapting best to the new world order. It seems to me that we solos have a big advantage over our larger competitors. Okay work has probably fallen off and you are busy keeping up with the admin and credit control. Nevertheless, organisations that depend on teamwork and the assistance of secretaries, filing clerks and other support staff, are definitely struggling to do the work at home thing. Whereas, for the last 15 years unsupported work at home is what I've been doing so no change there then. Of course, I can no longer go out to the gym or indeed anywhere else except the local Co-op.

I expect everybody has picked up on the freely available extensions of time that the UKIPO, EPO and EUIPO have offered. Just as a handy resource here are the links.
The UKIPO notice stalls time with effect from 24 March and is intending to review things on 17 April.  The EUIPO notice stalls time a little earlier 16 March and takes all the deadlines effectively to 4 May. Wouldn't it be wonderful if on the next review both our major trademark offices could keep themselves in synchronism?

The EPO notice is as you would expect from a patent organisation much more complex. It isn't helped that new EPO fees came into effect from 1 April 2020. The next Official Journal will contain this notice of 30th March 2020 concerning which fee schedule to use. If you're patent colleagues would be well advised to keep a careful eye on the official journal.

Although in the UK the Postal Service is still working, because many people have closed physical offices, there is clearly some issue with post being received. Some parts of the UK IPO still use post and it doesn't appear that they have worked out a solution yet for dealing with that. Therefore, trademarks which have earlier mark right cited on them may suffer some delay in advertisement. Hopefully that will be resolved soon.

No doubt you will have heard that zoom is becoming the videoconferencing tool of choice. Even if you subscribe, it's relatively inexpensive and both young and old who have Internet connected devices seem able to cope with the interface. It's a little troubling that they were sharing data with Facebook and there had been hacking issues (though all the meetings I've attended so far haven't been hacked except by attendees who decided to leave the radio on in the background) so may not be ideal for confidential meetings but it would seem pretty safe to use it for hangouts and even basic webinars. So if anybody is interested in sharing their wisdom to make a proposal below. This is a good opportunity to keep up with CPD and developments in case law. Please post your suggestions or contact me

The Soil Never Sleeps

The Soil Never Sleeps but sometimes a blog must slumber and I have decided to end this blog with a little tribute to a kind client. After all it is our clients to whom we sell our skill and knowledge that are the final arbiter of our work and whether it was worthwhile.

Some time ago my good friend, Jane Lambert of Counsel, an insatiable blogger to whose ongoing work I commend you, introduced to me a farmer in search of some trade mark advice. A certain amount of time and a great deal of endeavour later, he and his colleagues had established the PASTURE FOR LIFE movement. My role was modest, but we did manage to achieve the certification mark registration at the UK IPO
navigating the sometimes arcane requirements of the examination system. The certification mark is a central element of  any Association that wants to make a valid promise about the quality and origin of produce . The carefully drafted rules set an objective standard that is more than marketing hype.

I was delighted last April to receive two poems printed on card that now adorn my work-space. For not only is the Pasture for Life Association (PFLA) a certifying authority for the best meat you can buy but they also have a poet in residence. How cool is that? Food for the body and the mind. You can listen to the poem of the title here: But that was not all my generous client sent. Next came a whole book of poems and this I commend to you because they are so wonderfully evocative. It's a slim volume but it contains interleaved stories of visiting PASTURE FOR LIFE farms during four seasons of the year.
In Spring in Cornwall at Woodland Valley Farm, Ladock you will meet the Cavalry of Janet.
In Summer in Yorkshire you can rest against a wall at Hill Top Farm, Malham. 
This is a poem entitled 4 minutes 33 seconds and the typesetter has not told you where to spend them. It cries out to be read aloud, but meditatively, a word or phrase at a time. If you were a teacher this would be a great book for class work. It's accessible and many of the poems tell stories and all celebrate the beauty and productivity of the English countryside.
In Autumn at Romshed Farm in Kent you can watch (I know its a poem) Bella the pig farrowing and the chickens being fed.
To encourage you to run off and buy this elegant volume over on the author's website take a little Suppertime with Adam Horovitz:. It's not all the poem just a snack to tempt you:

You can't escape eating meat

on  a pasture farm, Felicity says, It's
almost as a natural as breathing.
She looks wistfully at her vegetables
while sister Jackie, determinedly thirteen,

balks and begs for sausages, will not
touch the chilli Chris has made.
He hasn't told them about the beans.
If they're good for feeding pigs,

they're quite good enough for us,
he'd said as he scooped them,
mischievous, from the sack
at lunchtime. His son,

home late from school,
sits and wolfs his plate of chilli down.
That was great, he says.
What meat did you use?

The book is published by Palewell Press and I am grateful for their permission and Adam's to reproduce the above extract which is, of course, a copyright work.

Trade Mark protection in the UK after Brexit

During November, position papers were coming thick and fast from IP organisations on Brexit. Mostly they are very

demanding and expect the UK's final deal to cover detailed issues on intellectual property. Such provisions will come, but they are unlikely to reach the priority these organisations expect. The EU IPO seem to think so too. They have also issued a paper (or at least the European Commission has done so on their behalf) which, to me, reads as a very strong message that it is brand owners responsibility to look after themselves.  Here are the papers:

• Chartered Institute of Trade Mark Attrorneys (UK body- CITMA) 20 pages
• INTA (International brand owners- US based) 9 pages
• Marques (brand owners - UK based) 9 pages
• European Commission  countersigned by the EU IPO (registrar) 2 pages 1 December 2017

All of these demands and comments were made before the phase 1 deal was reached on the night of Thursday 7/Friday 8 December 2017.

Our minister with responsibility for Intellectual Property  is Jo Johnson, brother of the greater Bo, was very pleased about the deal in respect of the Universities - his main responsibility  - as it seems UK academic institutions can continue to participate until 2020 in EU research projects to freely disseminate UK IP into Europe.

Good news 4 science: 1. UK participants in existing projects guaranteed EU funding. 2. Projects approved to continue, with uninterrupted EU funding. 3. UK based orgs & people can bid for H2020 funding, participate in & lead consortia, post-exit, in '19+'20https://t.co/veLAEabQOL

— Jo Johnson (@JoJohnsonUK) December 8, 2017

No reply yet as to whether UK representatives at EU IPO have the like freedom to continue as representatives while we pay to continue our support for our European neighbours.

There is a substantial amount of EU IPO business with UK legal firms that do not have European subsidiaries to take it on, that is available for transfer.  CITMA members have already commented on their clients being poached, but has anyone received a business proposition? Brexit will happen. It would be nice to know there are responsible representatives offering to provide an orderly transition for brand owners based outside the Euro27. If you are one such, do ask those making unsolicited approaches how they will work with your current representative and how they will reimburse them.

India and an Independent trademark system

Tomorrow 15th August, India will be celebrating 70 years of Independence from the United Kingdom. Have a great party.  

For rather less long (since 2013) India has been a party to the Madrid Protocol. Since national applications are subject to such prolonged delays and Madrid permits only 18 months for national offices to report refusals, designating India under the Madrid protocol has been a popular route.

From my perspective, it seems that India has notified refusals in respect of every (?) designation made. When a provisional refusal is notified by the International Bureau to the applicant, only a one month term for response is allowed. Apparently extensions can be obtained but they are discretionary and subject to fees or at least fees from your attorney.

Notifications received by WIPO from the Indian IPO seem to be added to the Madrid monitor and Romarin databases on receipt even though they have not been notified to the applicant formally. If you have a Madrid designation of India, I would strongly recommend you to keep an eye on the real-time status. You can download the refusal as issued by the Indian IPO using Romarin. I'm not sure why it's not possible to see it via the Madrid monitor interface but that seems to be the way it is.

India allocates its own serial number to the application. Using that or the international registration number, you can see what submissions have been made using the Indian IPO trademark search system. This is useful for checking what has been filed and confirming the details of any marks cited in your office action. It frequently seems to turn out that they are expired or are significantly different from the black-and-white representation included in the office action.

You will also need a power of attorney. Simple signatures are acceptable and if you scan the original in colour maybe you won't need to invest in sending the original by courier.

Representatives views seem to differ as to whether as an amendment to the specification to overcome a  citation can be filed with directly with the Indian patent office or must be filed centrally by WIPO using the Form MM6 and paying the associated fee. 

I have also been informed that:

Submissions in respect of IRs designating India have to be made electronically in the dedicated on-line portal of the Indian Trademark Office, after digitally signing documents. However, due to lack of stability of the Trademark Office's on-line system, and regular technical problems, multiple attempts may be required before a successful submission can be made

Since India is likely to be an increasingly important trading partner for the UK after Brexit, good luck in protecting your brands there. If any readers have further suggestions or tips, please comment

Amazon Brand Registry

This is a post intended to collect information from others so I would really like some constructive

Oversight by an Amazon kingfisher
By Kpts44 (Own work) [CC0], via Wikimedia Commons

feedback.

I expect that other trademark agents who have clients who are Amazon sellers have noticed that Amazon has introduced what they call a Brand Registry. There is some public information at that link but not really enough for the curious trademark agent like myself. I am not an Amazon seller so I cannot access further information that may be available to my Amazon sellers.

Some of my clients have already decided to register their brands. They supply certain information to Amazon and then Amazon sends an email to the agent. They can do this because the agent's email is stored on the USPTO register and also on the EUIPO register. The email contains a verification code which you are supposed to pass back to your client. It would also appear that Amazon sometimes call up the representative but I haven't had a call from Amazon myself.

If you have clients who let you know that they are intending to follow this procedure with a US trademark, it would be good practice to alert your US associate as they might, quite reasonably, treat the Amazon emails as spam.

Amazon seem to want word marks though I haven't received any feedback yet as to whether somewhat stylised marks qualify. Many brand owners  have registered stylised marks rather than marks in standard characters. Indeed, logotype forms are often considered to be the trademark by marketers and anyone who has not been advised of the difference by a trademark agent would normally register their logotype rather than a mark in standard characters.

I have even had a client come to me simply because they want to register their mark for the purpose of registering it with Amazon. When that is the case it's important for the agent to know what type of trademarks Amazon will accept. Fortunately for this client I had already spotted the Amazon affection for standard characters.

The next big question I have is what are Amazon going to do with this Brand Registry? Is a product offered by someone other than the Amazon seller under that trademark to be blocked? What about fair use of the trademark? Is it to be prevented or are we allowing trademark owners too much power. These questions are very open because only Amazon seems to know the answers. When a mark is registered on a national register like that of the UK IPO or the EUIPO or the USPTO, the rights and defences are outlined in published law. Amazon is not a state, although it seems to behave like one and certainly doesn't seem to be publishing its laws.

I hope we can see some answers soon.

INTA 2017 FC Barcelona v RCD Espanyol

The trademark profession will gather in Barcelona. The convention is in the Fira Gran Via or is it? There are two football teams in Barcelona and I suspect there may well be two INTA conventions, with the other one taking place in central or beach venues.

Many Solo practitioners will want to gain some insights into current practise so I expect to be found at least in the mornings in Hall 8. The programme is here  or you can access the App on the web or download it to your phone so you can map the location of the official events. The App has lots of useful detail about the sessions.

 Maybe I will see you at the EUIPO session on Sunday morning, which conflicts with our very own Sir Richard Arnold talking about jelly bears or why distinctiveness is not the same across Europe including Switzerland.

Meet the Bloggers is on the beach on Monday evening - look out for lucky people with ribbons and beg for one.

Monday lunchtime there is a tweet up but to find the right coffee shop you will need to follow #INTATweetup #INTA17 on your twitter feed.

Catch some law, some #Brexit strategies, some sunshine. See you there and thanks to all those good people who have organised this amazing event.

If you aren't spending all your time in the convention halls you might want to search out an Espanyol football shirt.