Tuesday 27 May 2014

Replacing the Barrister's Clerk

A new directory business called MyBarrister to help clients find barristers to give them direct access advise has sold shares on Crowdcube valuing the baby business at close to £4million.  The trademark was registered by Ronald DeKoven the CEO back in 2012 as an ordinary as opposed to a collective mark and the investors are not getting equity in that asset.

According to their press release:

The funds will be used specifically to expand the business, by growing the number of registered barristers and funding an increased marketing spend to deliver more potential clients direct to these barristers.

The target is to have 1,000 barristers signed up to myBarrister in the next 12 months.

myBarrister was launched in June 2013 to take advantage of regulatory changes that allow barristers to accept instructions directly from businesses and individuals, rather than exclusively through a solicitor. More than 100 barristers have already signed up to myBarrister, including a number of leading QCs. (The Duck quacks that there are only 2 from 5RB under the Intellectual Property section)

The myBarrister team consists of Ronald DeKoven as CEO (senior New York lawyer, English barrister, entrepreneur in the technology space), Bruce Webster, Director of Branding and Marketing, and Plamena Metodieva, Director of Operations. mybarrister has also partnered with Hewetson Shah, The Bar Council’s exclusive Service Partner for Legal Search and Recruitment, to further grow the established direct-access platform.

Now that we are all used to Internet directories for everything, it is not surprising that traditional clerking is under threat.

Will it be a resource for trademark agents to find counsel for opposition hearings? well not yet but I suspect the main market is the innocent consumer the regulator is there to protect. Small business too does have problems getting access to the right advice.

At present the copy on the MyBarrister website sells the bar as faster and better value than solicitors, which is a bit distasteful. As with any site the barristers are paying to have their profile on there. A barrister of 7+ Years' Call will pay an annual fee of : £1,200.00 + VAT = £1,440.00 which looks pretty fair if it delivers good quality leads on a regular basis but its clearly early days yet. The reason that this was an investable opportunity must be that the promoters expect to have a large regular barrister base  signed up to deliver a regular income. At the moment all the site does is advertise. Will that be enough? Time will tell.

Meanwhile if you need Intellectual Property advise try a solo practitioner

Tuesday 20 May 2014


Overtaken by events, this blogger has just rediscovered a media release dating back to 7 May from the Law Society for England and Wales which reads, in relevant part:
Over-regulation is bad for the profession and the public

The Law Society has welcomed today's announcement by the Solicitors Regulation Authority (SRA) that it is launching an initiative [details of which are available here] to reduce the burden of regulation on solicitor firms. This is an area of serious concern for solicitors, particularly for those within small firms, with many reporting that the cost of compliance is harmful to their business.

Responding to the SRA announcement today Law Society Chief Executive said the Law Society is keen to work with the SRA and with members to examine how regulatory burdens might be reduced whilst maintaining standards and serving the public interest.
“All firms, and small firms in particular, have had to weather very turbulent conditions in recent years. Easing the regulatory costs will help firms to focus on better servicing their clients. We all want regulation that is effective, proportionate and affordable. Clients should have confidence that high standards are paramount but if matters do go wrong they can be assured of quick and fair redress.  
It is critical that the SRA avoids unintended consequences and that changes to the professional indemnity insurance (PII) rules help to restore much needed stability to the PII market. The SRA's decision not to go ahead with its proposal for minimum financial ratings for insurers underlines the importance for any debates that will take place around proposals to be underpinned by careful research so that the consequences of changes which may seem attractive on paper are fully thought through and are proportionate in their impact. The Law Society will actively engage in that debate.” ...
All very interesting, but it does seem to this blogger that there's an awful lot of regulation going on.  He wonders whether there is any data to show that solicitors -- particularly those who practise IP -- are being better regulated now than in 2007 when the SRA was hived off from the Law Society: if so, what are the criteria by which any change is measured? And how does the SRA's performance measure up to that of the Intellectual Property Regulation Board (IPReg)?  Does anyone know?

Friday 16 May 2014

Reflections on #INTA14

The UK Embassy in Hong Kong,  @ITMA invitees saw inside
Sally Cooper has safely returned back to the UK so it's time for her to draft a thank you note


Thank you for taking the Annual Meeting to Asia for the first time in the history of INTA and, particularly, for holding the Meeting in Hong Kong.

[ The central location of the Convention Centre, the ready availability of free wifi and the excellence of the transport system made it possible for all to meet and greet centrally or remotely as appropriate to the business in hand ].

They say you always remember your “first INTA”.

[ Though, in my case, this may well have been a “ first USTA” as it was the Meeting in Seattle in the early 1990s, and the name-transition from United States Trademark Association to International Trademark Association took place in 1993 ].

 I mention this because I’ve come back to the UK feeling I’ve experienced another “first INTA”. For example, I will not easily forget :

(a) the spectacular Grand Hall of the Convention Centre at the Opening Ceremony
(b) a Reception at the British Consulate-General hosted by the Institute of Trade Mark Attorneys
(c) a (less formal) Reception at the Royal Hong Kong Yacht Club to “Meet The Bloggers”
(d) a final Session on the topic : “Local Script Marks: What Do Yours Say About You?”  - the Duck is impressed that one session gets a note - well done
(e) my several visits to the Exhibition Hall (learning new things on each visit), and
 (f) all the new faces and new names and new business cards (many carrying a message appropriate to a visit to Hong Kong in the Chinese Year of the Horse).

[ This is my personal list. Others will have theirs (and theirs will probably include visiting Disneyland for the Grand Finale) ].

Of course, you could not control the weather.
 [ I rather enjoyed the night-time light-shows happening beyond the window of my hotel room on the 35th Floor ].

But Hong Kong is an extraordinary city washed by the South China Seas and weather is only one of its many extremes. The energy of the Hong Kong people and their ability to “do business” anywhere and everywhere provided a wonderful backdrop to a Conference devoted to marks “used in trade” and (for me) made a significant contribution to the success of INTA 2014.

 [ Can I mention the men with INTA badges seen heading for the Menswear Department of M&S in Central – presumably to “do some shopping” viz : buy socks and shirts whilst their own dried off in the air-conditioning of hotel rooms ? ]

I wish you well for San Diego in 2015.
[ Though I’m delaying a decision on whether I’ll be able to join you – it’s going to take me a while to follow through on INTA 2014 ].

Yours etc.

Being a solo practitioner, Sally is fortunate that she doesn't have to write a report for business development about how many new clients she signed up or what prospects she has of bringing in new Asian work. I expect many will find it difficult to know what to do with those business cards, once they have been dried, scanned and entered into the database. Let us know what you are doing with yours

Tuesday 13 May 2014

ASP - so many meanings but in Hong Kong there is a flock of Associate Solo Practitioners

Sally Cooper, our elite knitting Solo IP practitioner from relatively sunny Manchester reports from a very damp Hong Kong #INTA14 conference that:

In Hong Kong this week there will be Application Service Providers and there may also be (Members of the) Association of Surfing Professionals (where “surfing” involves waves rather than the web). However, there is also a lesser-known collective of ASPs – Associate Sole Practitioners.

Registered at the INTA Annual Meeting (as of Monday 11th May) are 192 such individuals. At the risk of being ejected from INTA (the notice on misuse of information accompanying the “Attendee Directory” is very scary) I think I can mention that these ASP delegates represent 59 countries.

As might be expected – given INTA’s roots still being firmly planted in that part of the earth that is the United States – some 45 ASPs hail from the United States as against 40 ASPs travelling to Hong Kong from the twenty-eight countries of the European Union. There are two further countries in the “more then 10” category being Canada and India. If we create a “more than 5 but less than 10” category, this includes (in no particular order) the United Kingdom, Australia, Germany, France and China. Which leaves 51 countries for which “less than 5” brave souls to fly their national flag (metaphorically speaking) (and for many of these 51 countries there is a single ASP here in Hong Kong).

Well done to the 8 ASPs from the United Kingdom – we know who you are !

Wednesday 7 May 2014

Learn to litigate -- but not just yet

Once you've mastered these skills, you can
conjure up a patent attorney litigation course too
As British readers are all too well aware, the Intellectual Property Regulation Board (IPReg) is the regulatory body for patent and trade mark attorneys. This blogger has just been reminded that IPReg has in its wisdom introduced a new litigation requirement for recently qualified patent attorneys. The effect of this new requirement is that patent attorneys who were entered on the register after 31 December 2012 must now pass a IPReg-accredited basic litigation skills course either before they qualify or within three years from the end of the calendar year when they are first entered on to the register (see CPD requirements for litigators here).  Those already on the register by 31 December 2012 are deemed to have been granted the appropriate certificate and presumably have no need for any such requirements.

Two courses have been suggested by IPReg (here). One is a course at Nottingham Trent University, accredited by IPReg; the other is a possible course run by the Chartered Institute of Patent Attorneys (CIPA). Since the CIPA course has not yet been submitted for accreditation, it is not currently available. Although the Nottingham course has been accredited by IPReg, it is understood that the course will not be available before early 2015 at best -- and even then it will still subject to validation by the University (it's good to know that academic institutions are concerned about quality control when it comes to running courses under their auspices -- and brand name). 

The fact that the new regulations have been introduced without there being any course currently available to satisfy the new litigation requirements is bound to be a cause of some frustration and gnashing of teeth among newly qualified patent attorneys who, having passed all their professional exams, now face a new requirement which they are not able to fulfil.

Meanwhile, this is presumably cheery news for those whose names were inscribed on the register on or before 31 December 2012, and who will face that little bit less competition for now ...

Tuesday 6 May 2014

Sally knits her way to #INTA14

There are memories of graduating to “joined up writing”. First, you learned each of the letters of the English alphabet - all twenty-six of them. Then, at a magical moment, you moved on to “joined up writing” which meant you were allowed (with the help of pen and ink) to join letters together.

I sometimes wonder whether the (long-remembered) joy of being able to join together letters in a string (a “word”) and then being able to join together words in a string (a “sentence”) is the foundation for wanting to link things.

So I create a (spurious) link between the following found recently in the blogosphere :

1) That people recall words in BIG LETTERS (and even in Big Letters) more easily than words in big letters : See The Telegraph Article describing this Spanish research

2) That sometimes we want to understand the reason someone says no as in this blogger's distressing story of having their App rejected.

3) That there people who find time to crochet cats, obviously there are

The spurious link (as you’ve guessed) is INTA simply because :

a) I’m going to find in Hong Kong some BIG BRANDS and some Big Brands and some big brands and – even when their names are not presented in US-English or UK-English – I’m going to hope I understand the stories they want to tell
b) I like the idea posted in comment on (2) that “When you get angry and feel like no one will listen to you, you can always make something” : it kind of justifies the reason for blogging
c) I reach for my (plastic) knitting needles and a ball of purple cotton and pack these – hoping there’ll be time on flights to knit something resembling a kat [ sic ].

If not they have guerrilla crochet on the Hong Kong streets

Monday 5 May 2014

Reserved Instrument Ignorance : Deeds of Assignment

If a trademark attorney does not get himself involved in litigation, then the only purpose for him to be regulated by IPReg is in order to undertake reserved instrument activities. This means preparations of deeds for the transfer of property.
ITMA Review May 2014

You will know that you don't need a deed to transfer a trademark but quite frequently one is prepared. This is normally because there is no consideration for the assignment. In my opinion, an assignment a UK trademark or a community trademark is not necessarily a contract provided it satisfies the statutory provisions. There are others who disagree notably the writer of the latest ITMA article on the subject who believes that an assignment must be a contract. See Page 15 of the May 14 ITMA Review.

Anyway if you want to prepare a deed of assignment, it would be good if you had it executed properly. She an interesting case here Briggs v Gleeds  where a whole load of pension deeds were considered to be void for improper execution by individuals. The case was highlighted by Nabarro in an April alert here.

The rules are simple and to be found in the Law of Property (Miscellaneous Provisions) Act 1989
"An instrument is validly executed as a deed by an individual if, and only if—
(a) it is signed—

(i) by him in the presence of a witness who attests the signature; or

(ii) at his direction and in his presence and the presence of two witnesses who each attest the

signature …."

Since I write (for free) the chapter on Assignments in the ludicrously expensive Trade Mark Handbook I made a note of the case for the next update but really did not think it was likely that a registered trade mark agent would be making such a simple mistake, so I was rather surprised that the very next Deed I looked at was simply signed by the individual assignor. It had been prepared very recently by an IPReg regulated agent from a well known firm so I expect he had read my Chapter and decided to submit it to OHIM anyway for recordal because it did satisfy the provisions of the CTMR which just require a signature from each party.

So what do you think? The deed is void so the assignment did not happen. So what is the status of the ownership of the CTM - shall I ask for rectification of the register?

Should you be reading this with a guilty conscience, there is likely the option of re-executing the void deed and resolving the problem that way. I am sure that's what your insurer would want.

Friday 2 May 2014

Unqualified praise: when being 816th just isn't good enough

I am one of a large number of people -- 815, to be precise -- who will by now have received a letter from the Market Manager of Who's Who Legal (WWL). This letter opens with the following text:
"I am pleased to inform you that you have been identified by our independent research with clients and peers as being amongst 815 of the world's leading trademark lawyers".
It then appears that, on payment of an appropriately extortionate sum of £1,395, I can have my biography (sic) of up to 265 words published in the WWL directory. After 40 years in intellectual property, that works out as around six and a half words per year. If I'm feeling rich, for £2,100 I can extend this biography to between 265 and 530 words. The top of the range entry, for £2,500, will get me between 530 and 750 words.  I'll have to say goodbye to the copyright, though, since WWL require an assignment of all present and future rights, not to mention a waiver of all moral rights.

I don't suppose that many of the sole or small practitioners who read this weblog will be rushing to spend this sort of cash. They may be wondering if all the time spent qualifying for their professions and honing their skills was worth it. After all, 815 directory entries at even the bottom rate of £1,395 looks pretty much like more than £1.1 million -- more than most readers earn.

The fear factor must impel entrants to reach for their cheque books. According to the invitation, "Absence from a legal directory hinders up to 51.4% of clients from hiring a law firm".  Goodness, how do they ever manage to find one then?  Surely nothing as random as personal recommendations, an attractive website or a decent pair of legs (male or female nowadays).

This blogger would be curious to know what readers of this weblog think of directory entries.  Would they go for them if they could? Do they seriously use them as reference points, either by themselves or when combined with other resources?  How many directories would they pay to be advertised in?  How do they feel about assigning their content?

You may be wondering why this blogger is so cynical about this invitation.  It's because he isn't a qualified lawyer, trade mark attorney or indeed anything else -- and has never even come close to practising. He wonders therefore how effective WWL's independent research might be.