Thursday 31 January 2013

Risky Insurers?

Feather the nest to protect the vulnerable?
The Law Society has decided to warn solicitors that they need to check the financial strength of their insurers. Just because they are on the list of qualifying insurers, it doesn't mean that they have passed any financial stability tests.
They have produced a whole new guide to insurer insolvency which you can find here.

Just as with motor insurance, I anticipate that most solicitors regard insurance as an obligation that must be paid for. The idea of actually claiming on it is usually far from our minds. Indeed that's exactly what the insurers want as they exhort us to put in place risk reducing measures and raise the premiums of those with the temerity to claim.

One thing the Law Society press release is silent on is the benefit of inserting limitations of liability into terms of trade. Instead they publish further guidance on top-up and excess layer cover. I begin to wonder if they get commission from these spiralling insurance sales.

Surely the credibility of the *ratings* industry no longer exists in the realms of ordinary men after all those highly rated junk mortgage securities (Remember Northern Rock anyone?). Even so the SRA require that Insurers must now disclose whether or not they have a financial security rating and the provider of this rating. Here is their handy list. Only one firm, Travelers is prepared to deal direct and they even quote their minimum premium, £1,575 though that was last year.

For all the dire warnings, read the full press release.

Sunday 20 January 2013

Feeling depressed? Jealous? It's salary survey time again

The Fellows & Associates Salary Survey for 2013 is now up-and-running. All it needs is for sufficient quantities of good souls to give up a few precious minutes of their lives and engage in some harmless box-ticking.  As the rubric explains:
The survey is intended to provide transparency to the intellectual property market by collecting anonymous objective data that is then published without bias.

Last year’s survey benefitted from the active involvement of Solo IP [that's us!] and IPKat and the results were published in the CIPA Journal in April 2012.

With the success of the survey last year we’ve decided to bring it back again, bigger and better. This year’s survey takes into account your expectations and optimism for the future in IP to gain a more comprehensive review of the IP market. The survey allows a greater understanding of the sector and we are hoping to make it an annual affair to create a consolidated view of the sector across the years.

The survey is now available and will run until the 18th February 2013. Once completed, participants can request to receive an email copy of the results. Data is provided anonymously in order to protect the confidentiality of participants and allow for a more rigorous result.
You can find the survey, in all its glory, here.

Thursday 17 January 2013

Abuse in the World of Trade Marks

From Lakewoodrat on Flickr
I was intrigued to see that ITMA had announced a lecture in Manchester by the renowned London  IP QC Michael Edenborough on the intriguing subject of Abuse in Trade Mark Actions. Rather than risk a trip to the frozen North I cast a fly on the wall and this is what it reported.

Michael was his usual cheerful and exuberant self.
His preliminary messages were that
  • we are all practitioners (so let's find a route to what the client wants to achieve) and
  • let's appreciate that law is not always "black-letter-law" (clearly clear and right) : it can also be " grey-letter-law " (unclear) and even "white-letter-law" (assumed to be right but, in fact, untested).
Michael had chosen with care examples which built on these foundations :
1) He went back to 2003 and the decision in Omega to explain how inadequacy in a pleading (revocation proceedings : TMA 1994 section 46) resulted in TPN 1/2005 and the Registry's requirement for the applicant (in revocation proceedings based on non-use) to plead expressly the date from which revocation ought to take effect.
But the " rabbit out of the hat " (my expression and not Michael's) is the Sabatier case (No. 82 673 of 31st January 2007) being a Decision of the Registry not (apparently) to be found on the website at : it runs counter to TPN 1/2005 in allowing pleadings to claim " rolling " dates as dates from which revocation ought to take effect.
 If you have a case pleaded under section 46(1)(b) TMA 1994 and the Registry insists on TPN 1/2005 : do not be afraid to take up your sword and cry " Sabatier " !

2) Omega stayed in the news in the context of a further " go " at pushing back the date from which revocation ought to take effect. This time – the court says " should have been argued in previous (revocation) proceedings " and this new litigation is an " abuse of process ". We have " abuse " as a shield for the defendant (Ed: Omega cases are many: this is 2004 EWHC 2315 (CH) Rimer J)
3) In the context of challenges to a Decision of OHIM, always remember that you need a " point of law " to justify an appeal from (now) the General Court to (now) the Court of Justice. Otherwise, you'll find the Court of Justice providing a " Reasoned Order " as an end to proceedings.
Michael brought the mark PURE DIGITAL into his thinking on this issue. Surely (we all believe) the practitioner can only bring " evidence of use " to the table where that " evidence of use " relates to period prior to the date of Application ? But might this be "white-letter- law"(see above) ?
Why not argue that – at each stage – the relevant tribunal (OHIM's Examiner / OHIM's Board of Appeal / General Court / Court of Justice) MUST take account of the post-Application use
of (in the particular case) the mark PURE DIGITAL ?
Why not – in support of this – bring to the Court's attention Paragraph 2.61 of the Max Plank Institute's Report of 15th February 2011 ?

If your client's concern is (dare we say it ?) that the mark stays " live " in the records of OHIM for the maximum period of time and you have such an argument (on a point of law) that's going to achieve this (rather than attract a Reasoned Order on an earlier date) : surely you (again) have a sword you should take up on behalf of your client ?
4) Back to the UK and the case of Special Effects : bringing grounds used in opposition proceedings before a court of law in subsequent infringement proceedings in not a problem.
But – don't forget things may be otherwise in proceedings for invalidity.
The Spam / Spambuster case in 2005 went against the party taking a " second bite of the cherry " (again, my words and not Michael's) when the first attempt at claiming revocation had failed (and this was the case even though the " second bite " was on different grounds).
The Firecraft case in 2010 went against the defendant who wanted to say " passing off was established in opposition proceedings at the Registry " and " we want to argue against passing off now we're defending an action in the High Court ".
For the claimant, what had happened previously was (in these latter cases) a sword for their cause !

5) Threats (per TMA 1994) bring their own " abuse " concerns.
 In 2004 Reckitt Benkiser found an action defended and there arose, as part of the counterclaim, the issue of seeking to join solicitors to answer a " threats " allegation : joining solicitors as a party requires permission from the court and permission was refused as an abuse of process.
Without prejudice correspondence is, in this context and others, an area which needs careful consideration :
- some ten years ago, courts refused to consider " threats " issues when " the threat " appeared in without prejudice correspondence [ Unilever v Proctor & Gamble ]
- more recently (2011), a court isolated " the threat " from correspondence that was without prejudice – making " the threat " actionable (and suggestion was made obiter  that the rule on without prejudice correspondence (being a rule protecting disclosure adverse to interest) should not  provide a shield against the impact of the " threats"  provisions of the TMA 1994) [ Best Buy v Worldwide Sales ]

On the future of threats – review is part of The Law Commission's Eleventh Programme of Law Reform and a Report is scheduled for March 2014.

Clearly those Mancunians had a fortifying lunch and my fly deserves hearty congratulations

Friday 4 January 2013

Dare to Be Free

Its great to have some help when you start your business. However is it save to rely on free services like Google for your mail or file storage. When its free there is no comeback if its withdrawn or fails. I recently discovered that the Microsoft service I use (Windows Live Sync) for free to access my office PC when away is being withdrawn. This is disappointing when you discover it has failed just as you intend to leave the office and use it. While there was an alternative that allowed me to get away for Christmas, it does make you realise that you can't complain if you free gift is withdrawn. There is no support line to call. You have no contract. They have no obligations to you.
Of course this blog is hosted for free and you probably didn't get this post by email because that is no longer offered either. There is no picture because I cant upload from my hard disk. The power of the Free Men is more powereful than Copyright law.  

Essentially the free service is free to fail you. Lets hope our clients are learning this lesson too.

This may sound a rather dismal note for the start of  a New Year. However as the Chancellor has been saying we need to invest to grow so lets look a the best options for investing in creating a reliable infrastructure for our businesses. I'm interested in your recommendations