Sally prepares her #INTA14 Schedule and finds the best is last (no not Disneyland)

INTA programme

Sally tells me:

I have never been to INTA’s Annual Meeting as part of a team. I’ve either had a badge naming me as Legal Counsel to a (UK) company or (after that) a badge naming me as a solo practitioner. These circumstances mean I’ve always had the leisure to peruse the Programme and – not being associated with any Committee or cause (save, of course, the cause of the bloggers the rubber duck says I hope you will be able to say hello at the Meet the Bloggers session at the Royal HK Yacht Club on Monday 12 May 8pm) – I’ve always had the leisure also to take ad hoc decisions on Sessions I might want to attend.

When faced with a lot of (electronic) paperwork, it’s my habit to skip to the end. This is partly to find reassurance (that there is an end) and partly because it’s often where interesting material can be found.

I’m delighted to find that INTA 2014 in Hong Kong is no exception. The final Session (Wednesday 14th May) is aptly named “By the Bottle or by the Glass : How Local Cultures and Habits Drive Trademark Decisions in the Alcoholic Beverage World”. I will try to be there – I really will !

However, this Session overlaps with “Local Script Marks : What Do Yours Say About You ?” which sounds like the sort of Session that will add to knowledge acquired not so long ago in the fair City of Leeds [ see my : blogpost on Chinese Trade Mark Law : offices of Walker Morris in Leeds ]. If Room IW20 and Room CW21 are not far apart – maybe I can dip into both ?

The previous day (Tuesday 13th May) brings the joy of “Seminar on Bad-Faith Filings” : this is “Open to All” but even today (so close to the event) we do not see Speakers identified. How can this be ?  (the duck might mention the wisdom of Solomon on the topic from the Board of Appeal)

A first morning Session (Monday 12th May) concerns “Beginner Level” time spent on “Doing Business In China” : as I’m aiming to spend three nights in Macau before collecting my badge for the Annual Meeting – this sounds (again) like the sort of Session that could add to knowledge previously acquired. And it’s that (long-planned) visit to the Pousada De Coloane in Macau that means I will miss being present at “To Tweet or Not Tweet : Keeping Students Engaged and Off Social Media During Class”. May many attend (Sunday 11th May) and may others be found blogging - During Class !

I’ve heard others attending the Annual Meeting (at times over the last twenty years and more) saying “I don’t get to the Sessions – what are they like ?”. Pity you – go along and find out !

The Secret World of CTMR Article 82

As an OHIM professional representative, you will be familiar with the rather handy piece of the CTMR which provides for a get out of jail card (not free, but €400) in case you have overlooked some but not all time limits and spot the problem within two months. Its called Continuation of Proceedings (and sometimes Further Processing)  and unlike the fancier titled "Restitutio in Integrum" of Article 81 requires no confessions to be made or excuses given.

Its use was explained by a Communication of the President 6/05 in September 2005 soon after it became available as Article 78a in July 2005. The Manual Part A Section 1 has been updated with the right references since.  The strange thing about this provision is that OHIM have determined to keep its availability secret.  No hint is ever dropped that this might be a good idea. In many ways this is fair enough but I have recently encountered a situation where for the second time, this secrecy has made me look like a scammer. Let me explain.

OHIM will accept an application from an applicant who is required to be represented and they will take and keep their fee. However the first thing such an applicant gets is a notification that they must appoint a representative within two months. When OHIM introduced this practice in 2010 I posted an offer to help out anyone in this difficult position. As a result a (very very) small number of intrepid cash strapped applicants come my way from outside Europe. I usually act promptly so all is well, but if it takes them a while to find me or it took a while for the communication to reach them, I may be late. Now having put my name on the register and checked the communications I may discover I am late. Usually the suppliant does not send me the fax they have from OHIM. When I find out, I tell the  applicant that it is going to need a fee of €400 to get the application back on the road. Sometimes I may just mention a few other problems with the specification or representation that may make it more desirable to file again.

Coincidentally the sum I mention is probably a similar sum to what he may have been quoted by less generous representatives in his earlier attempts to get a representative on the cheap. Ah ha he thinks just another money maker. He can check the register online and he sees the application now has a representative and is happily shown as pending. All must be well. I have nothing from OHIM to say they are unhappy. That's the secret bit. They simply wait two months and a bit and click it over to refused. They are €900 to the good for one fax. This is a great way of funding the Observatory.

Now you can't blame the applicant for thinking I am a rip-off merchant. He has maybe already had some directory offers  and even OHIM warn you about unsolicited invoices. I have nothing to send to the applicant to justify my position and show that the source is official. Since I am not being paid, I do not have much of an incentive to do anything more than explain the position to the hapless applicant and leave him to decide how to proceed.

Is this fair, what do you think? With so many out of Europe applicants and their representatives attending #INTA14 in Hong Kong, perhaps some of them may raise this issue and why they need representation once they have filed.

Frankly I think OHIM were right in 2010 when they opined that CTMR Art 92(1) in permitting the filing of the application without a representative,  meant that a representative was only needed if there was something for that representative to do.





 

Licensing as a Solo Occupation

While acting for small start up businesses it can be tempting to believe that the grown up law from the European Commission designed to control cartels and patent pools operated by telecoms company has nothing to do with us. It does. I refer to the revised Technology Transfer Block Exemption and Guidelines Regulation 316/2014 fondly known as the TTBER.

The law applies to settlement agreements as well as more obvious technology transfer licences. But there does have to be some technology transfer involved so pure trade mark settlements gain nothing from this exemption though design deals do.

When: These rules come into effect on 1 May 2014 but from next May they also apply to all your old agreements too.

Who: Life gets harsh when you have more than 20 or 30% of the relevant market between you depending on whether the parties compete or not.

Why: The TTBER is and always was supposed to "promote consumer welfare and an efficient allocation of resources" The evil the Commission have always perceived above any other is the prevention, restriction or distortion of competition. While the UK government is looking for growth and investment, Europe remains committed to its barriers which can only be overcome by justifying that the terms of your agreement are indispensable for promoting technical and economic progress while allowing consumer's a fair share. Nevertheless the Commission has noticed the changing environment and the disaster of standards essential patents and the litigation they create. So mostly this is updating.

What has changed: The point that struck me was that termination for challenge clauses in non-exclusive licenses are no longer automatically OK (you can still terminate if its an exclusive licence).
Settlement agreements get a lot of attention. The Commission is concerned that we will conspire to keep invalid patents in existence or be prepared to pay for delay.

For more guidance I suggest you coat tail on the emissions of the larger law firms.  The note that Meissner Bolte produced is here. Bird & Bird have a brief note here   and no doubt we will be seeing more calls to arms from those lawyers eager to do audits of old deals for your clients.

Colouring In Trademarks

Its not so long since Sally was blogging about the difficulties of deciding whether or not to colour in her trademark applications after the Specsavers decision which rather led us all to believe that gray scale gave you all the benefits of a reputation garnered by use in green. Nevertheless OHIM has now produced a common communication which has set us all aflutter . It turned up just before Easter/Passover on April 15th and has already been commented on by the IPKat. Now its fairly un-contentious on priority and identity but genuine use is the one that we need to address because there is no point in having something on the register that the client cannot defend. The paper does not deal with infringement because the registration offices don't have that problem and arguably Specsavers says all we need to know on that.

As far as the genuine use of a black and white or grayscale mark is concerned - the actual use has to show

• A change only in colour does not alter the distinctive character of the trade mark, as long as the following requirements are met: a) the word/figurative elements coincide and are the main distinctive elements; b) the contrast of shades is respected; c) colour or combination of colours does not possess distinctive character in itself and; d) colour is not one of the main contributors to the overall distinctiveness of the mark.



a CTM as registered

A trade mark as used

C and D are where life gets exciting especially when you consider the accepted practice that a sign is not one sign but many overlaid one upon another so this SPECSAVERS mark was the word on the figurative shape of the overlapping ovals with added green which was the only element not claimed as a trademark in its own right. So are we OK on the use of this black on white community trademark No  001358589 shown ? as a result of use in green. At this point it seems to me that the community was thinking more about a registration in green being used in pink or a shade alteration. C and D seem to be referring to the mark as registered. If we look at it that way there is no problem in confirming genuine use. However if the shape mark had been registered in a different shade we would have a problem as the sign is so simple that colouring it in on the register immediately suggests that the colour has some distinctive character in itself or at least is one of the main contributors. Therefore it seems to me that NOTHING has changed and the idea of registering in black and white is sound especially if colour is incidental.

However if you are going to register in colour or even grayscale then better get your colours right and replace the registrations if they change. Still it has always been good advice to register your trade mark as it is used and then there are no problems in proving genuine use. However trade mark agents find it irresistible to be able to oppose rather more than the identical mark as used on the basis that it is identical to the partial signs they have registered.

Does The OHIM Board of Appeal have a Backlog?

All courts and tribunals have a period between the closure of the case (whether it be the end of the trial or the closure of a file of written submissions as at the OHIM Board of Appeals) and the date of the decision. In the case of the OHIM Boards of Appeal the published service standard is 8 months. As you can see from the results which were updated on 1 April 2014 with the 2013 4th quarter outcome, the inter partes Appeal  results rose from a dismal 58% in the third quarter to 80%. For ex-parte decisions they hit 96%.

A Backlog of paperless files can be denied

This would seem to suggest that any backlog has been dealt with, or does it?

These are figures for cases where decisions have been issued within 8 months - not exactly a short time compared with the UK IPO or Courts. Therefore a stunning result can be achieved by taking the recent cases and issuing quick decisions. There are a lot of simple decisions to be taken too, where the Appeal is ill-founded for want of grounds or some such. These decisions are commonly caused by an Appeal being filed to achieve a settlement, but they still generate quick and easy decisions to keep down the averages.

My perception is that there is a backlog is based on one observation of a decision awaited since the file was closed on 31 July 2012. The timeliness standards had given me the impression I was not alone, but apparently I am.

The President of the Boards Of Appeal who attended the Mediation event in London on 31 March 2014 told me there was no problem. The existence of a backlog was denied again by Christoph BARTOS,  member of the Board during the OHIM webinar on 9 April 2014 on Decisions of the Trimester.

ESearch reports that there are 884 appeals pending - these are the Opposition and Absolute Grounds Appeals. 280 filed in 2014, 503 are 2013 appeals but it also confirms that 60 of those appeals have 2012 Appeal Numbers but some of those are already with the CFI and some could be suspended so they are not all part of the non-existent backlog. There are 33 2011 Appeals pending and 7 from 2010 leaving only 1 earlier Appeal except there were 3 in 2009 so something does not add up. Ah, there can be more than one appeal number on a file. 

So what about Cancellations which don't get given an Appeal pending status but a Registration Cancellation pending status. There are 87 with 2014 Appeal Numbers, 239 from 2013, 117  from 2012,  96 from 2011, 37 from 2010, 20 from 2009,  23 from 2008, 14 from 2007.

Now this is perhaps not a backlog, because we cannot expect OHIM to take responsibility for the European Court and its delays or the desire of parties to suspend their cases. Nonetheless I suspect there might be a case to answer on Cancellations. These inter-partes issues are often more challenging legally but also more important commercially. Can you help me establish if there is a problem in the Cancellation corner?

The Enforced Covenant

Despite the oft repeated myth of recruitment consultants that restrictive covenants are seldom enforced or are unenforceable, the reported cases tend to tell a different story. Another such case emerged from the Chancery Division in March - often they are in Queen's Bench.K3 stood behind him and was prepared to undertake to the court that

David Donaldson QC the judge

It concerned Mr Huggett, a sales manager in the software for the fresh produce industry.  He does not get a good press for credibility in the report, but tellingly his new employer was prepare to undertake that

(1) until 2 January 2015 it will not permit or encourage the Defendant to act in breach of the Clause 20 covenants against solicitation and dealing and disclosure or use of confidential information (2) it will pay to Prophet any award of damages or costs ordered by the court arising out of this matters, if not previously satisfied by Mr Huggett.

It was to no avail, the former employer Prophet got its injunction to enforce the broader Clause 19 covenant preventing Mr Huggett working in a competing business for one year, despite considering the hardship  involved and the possibility that damages could be an alternative remedy under the Shelfer principles, that are now increasingly discussed post Enforcement Directive in relation to IP matters and which have recently been considered by the Supreme Court in Coventry v Lawrence another nuisance case. In this case the discretion was not exercised.

The covenant was interpreted generously. As drafted, a proviso said it would only operate to prevent the employee being involved in a business selling the Prophet products, which indeed he would not. As enforced it prohibited Mr Hugget from being involved in the provision of business process computer software designed for the fresh produce industry. The judge would have been happier with adding or similar to the original wording but Mr H's counsel does not seem to have been able to disagree with the Prophet amendment.

The court was persuaded that this covenant was reasonably necessary to protect trade secrets or confidential information. Technically a business  cannot be prevented from competition by an ex-employee.  Note that partners (not paying NICs) are not employees but owners and don't have that protection. To most of us the effect of this covenant was a non-compete clause. The trade secrets were just details of a producer on the market for such software. Nevertheless it was held reasonable. The fact that Mr Huggett had downloaded a large quantity of Prophet data did not help the credibility of his arguments that the databases were of little significance. The judge concluded that the risk was real, not fanciful, but that it did not greatly exceed the low threshold. Even so Mr Huggett cannot now work for a year to protect these nebulous secrets.

No doubt he wishes he could have mediated a compromise rather than encountering the black and white result of a court judgement. 

A matter of reference

As a person who has taught many students, worked in many places, met many people and, perhaps most critically, remained alive for a fair length of time, I have written far more references than many.  I'm always happy to write in support of friends, former students and colleagues, people with whom I've shared research projects and conference platforms and, increasingly, people whose work I have edited or followed online.

There are a few downsides to writing references, inevitably. These include but are not limited to the following:

• people who apply for positions for which they have no aptitude and, frankly, no hope at all, but who apply because "they might as well" -- or because "someone has to get the job so it might be them". No, life doesn't work that way. It seems to be quite a common occurrence that, where there is no suitable candidate, most people nowadays don't award the advertised job to the most suitable failure. But HR are quite happy to ask me for a reference because "they might as well" ...
• People who don't ask me before giving my name as a referee. Sometimes I have already committed to writing a glowing reference for a candidate who is in my opinion really worth appointing, and I don't have much fulsome praise left for the next one to come along.  I can't really write with conviction something like "If for some inexplicable reason you don't like candidate A, candidate B is nearly as good".
• Reference templates that assume that you must have been the applicant's former employer. These are annoying since they require the provision of non-existent information like "how long was the applicant in your service?" and "for what reason did the applicant leave?"  Particularly where the applicant has been self-employed or has worked with rather than for the referee, this sort of template is unhelpful.
• Requests for references after the appointment has already been made.  It seems to me illogical and unjustifiable to ask me for a reference for a candidate, as someone did this morning, a full five weeks after that person was interviewed, weighed, measured and offered a post -- which was accepted.  On being asked for a post-appointment reference on one occasion in the past, I asked why and received the answer "We want it for our records".  I then asked "And what do you propose to do with your records, when it comes to references received after you've chosen your candidate?" but received no answer. 

Can readers of this blog shed any light on this mysterious practice?