Cateys 2014 :: the Brand at Work

This week Filemot will be attending the Catey Awards - an event to honour those who work in the

Hospitality Industry.

Of late the Hospitality Industry has provided an increasing number of clients to the intellectual property world as the importance of branding to a once- local business activity has become apparent.

One of the biggest issues is "own name" ownership and none fell as hard as CIPRIANI. Thus was a very protracted dispute between the famous (so it was decided) Hotel Cipriani in Venice and the would be Cipriani London in Grosvenor Street that was not even  entitled to promote the line that it was "managed by Guiseppe Cipriani" even though it was true. This last fall came in a decision of 29 January 2013 that references the earlier history and explains why DOWNTOWN MAYFAIR is no more.

Today it is the chefs that do business under their own names and hopefully that will continue to mean the chef of  that name is behind the stove or at least has seen it.   Its good to see that amongst this year's nominees who trade on their name Sat Bains has his business logo registered in his own name.
Andrew Fairlie has at least not permitted anyone else to register his name.

While Cipriani's reputation arose from trade outside the UK, it is usually closer proximity that leads to problems. Even so The IVY in London managed to suppress competition in Glasgow. See the story from January 2013 here and Scotland may yet be another country.

Closer still the Bocabar  in Bristol  had a dispute with  its local neighbour Boca Bistro Café now re-christened Bica Bistro Café. They settled their dispute in October 2013  in passing off in the Intellectual Property Enterprise Court a rather more economical forum than the High Court in which Cipriani played and lost thousands if not millions to their lawyers. Even so this Bristol victor suffered criticism over the costs in a December 2013 decision since they had pursued the matter to trial after the name had been changed and the major issue left was costs. As a result the costs awarded were just £10,750 a rather modest sum relative to the actual costs incurred. History does not relate whether there was an enquiry as to damages. However in the final order Bocabar were required to provide supporting evidence for any enquiry "showing that the financial sums proposed to be recovered justify such a procedure." The moral of that tale is that brand owners should be happy to get a result and then lay off their lawyers fast.

The BOCA case also illustrates that it is not enough to register your trademark if its use is going to amount to passing off. The Cafe did have a trade mark registration which was declared invalid in the 2013 judgement but oddly still appears on the register. Nevertheless for all in the hospitality industry having any brand that will be significantly promoted registered is a very worthwhile investment as the costs of dealing with a problem using a registered trade mark are far less than the hurdles of proving a case in passing off and the cost of registering a trademark is modest.

Certainly the house of Filemot is anxious to keep its hospitality clients well away from the courts and costs awards. Awards such as the Cateys are much more welcome.

In the naming of restaurants originality and design is well-rewarded and its good to see that one of the Catey sponsors is  the Jersey design house The Idea Works

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Nobody is Friends with their Regulator

There is a disease known as consultation exhaustion. Yes we want to be consulted but no we don't want to spend our lives responding to consultations. Representative bodies like the Law Society and CIPA suffer greatly from it. I don't know the cure, but I can describe the symptoms.

Inbred Opposition (light touch?)

One particular symptom that worries me is Antagonism. The regulator proposes, and the regulated oppose. When the regulated are lawyers (for the purposes of this blog we are not talking about the European definition of lawyers but the English one which includes patent agents and registered trademark agents) they can readily dream up some grounds of opposition.

Take for example the opposition of the Law Society to the abolition of CPD  discussed here and now we have another bunch of oppositions  the Law Society has set out to the latest set of SRA consultations on what one would think was desirable deregulation.

The SRA suggested reducing minimum Professional indemnity insurance cover to £500,000. The Law Society opposes. IPReg does not have a minimum but except for litigators but suggests a £1 million. So patent agents have always had to think about what was an appropriate level of cover and I am sure that solicitors do too. As a solo practitioner, I have always included in my terms of trade a limitation of liability and I am afraid I hope to rely on it. Generally its to £1million and I haven't had any complaints. I received some terms from another firm today who were seeking to limit their liability to £5 million. So they can obviously afford bigger premiums than me. Perhaps they need them, the terms should have been sent to their client not me.  The Law Society is concerned that mortgage lenders will object to limitations of liability. Wouldn't it be better of the Law Society spent their time managing the expectations of such prospective clients than opposing the regulator.

For other matters your friendly Law Society opposes see here. In fact that doesn't seem anything that the SRA can do right, but there are a lot of closed consultations undergoing analysis.

In the current political environment, regulation is designed to protect consumers and business clients are expected to look after themselves. This has the desirable effect of meaning that for those of us who mainly deal with the business world, regulation can go back into the lightest touch box that we were used to.

Meanwhile, it would be nice if regulators and representative bodies could develop a slightly better relationship and just occasionally find some areas of agreement.

Computerising the Lord Chief Justice

Court 4 Royal Courts of Justice published by the Daily Star

On Thursday evening (19 June 2014) I attended a lecture in Court 4 of the Royal Courts of Justice - an impressive court that is the home of the lecturer, the Right Honourable the Lord Thomas of Cwmgiedd a modestly sized white haired Welsh man of considerable power and influence in the Judicial world.
The lecture was organised by the Solicitors Association of Higher Rights Advocates (SAHCA). Its members are those inferior beings who have higher rights of audience in our courts not being barristers. It was slightly surprising that the judge did not touch at all on our role in the grand scheme of things and much to the discomfort of an adjacent attendee practising criminal law, he did not go outside of the civil domain - despite the fact that the court room boasted a dock with lovely Gothic bars. To be fair only a small proportion of the audience were solicitor advocates as there were a lot of judges and legal journalists too so maybe there are better reports elsewhere.

In introducing the speaker, we were told that advocates in Swiss Cantonal courts cannot speak but only sit in the court and listen to the Judges debate the merits of the case based on the advocates' oral submissions. In Switzerland  it is considered necessary that such debate should be in public. I wish the  European Patent Office would take that on board. It would save a lot of wasted time in corridors and we might learn how to improve those submissions.

The judge addressed three issues: computerisation of the courts, disclosure and the cost of litigation.
He was delighted with the IT investment to be made and was disappointed by the lack of publicity given to such a large spend in the order of hundred (s) of millions by the Ministry of Justice (though you might think that their PR people wouldn't agree while the legal aid cuts are attracting so much attention) even so it was reported here and here and the press release is here. Rather ominously the judge associated this with simplification of the rules and getting rid of specialist rules - oops not good news for our beloved and surely essential Part 63. I fear the IT analysts may have thought that the rules were how they were going to computerise (his word) the process. I was worried. Could we start simple and just have a database of claims brought and documents filed. It would be a useful and rewarding start and such open justice could well of itself reduce the claims brought. In any event we hope that someone who is well computer and litigation literate will be overseeing the process and reviewing how the other side of the bench uses IT.

We were also told that disclosure and costs had been problems from the time the court was built. He highlighted a period when a litigant had to deposit a £5 fee if he wanted discovery, refundable only if it was found useful. With all the be-suited QCs in the room I did not hear any proposed solutions to the costs problems.

We then retired to the Painted Room for wine and canapés. The latter never made it and the Judiciary kept to themselves, though I observed  Joshua Rozenberg in deep conversation with our speaker so perhaps we will hear more in Law in Action at a later date.

Proof of Trademark Use or was the Community Trademark Mis-sold

Proof this Brand is in Use ?

One of the significant selling points when the Community Trademark was introduced was that use in one country was enough to sustain the registration and therefore it was a great investment for those businesses who might want to exploit the common market in future.   Now that the CTM system is mature and has more business than it can cope with, there is a different attitude emerging and agents need to be more cautious about advising clients in a smaller local businesses to use the CTM system if they do not seriously intend to export within the next few years. Even if they do a national registration is now, in my opinion, an essential back stop. Some would also advocate refreshing registrations every five years rather than renewing, though it seems to me that ploy is somewhat unethical and abusive, though I can't (yet) find a way to challenge its users who include (otherwise) reputable brands that like to keep a defensive barrier around their core activities.

There are two situations where your client  may be asked for Proof of Use (PoU).

• The first is if your client is opposing a later mark and you can of course avoid that. The new guidelines on how that PoU will be examined were updated on 2 June 2014.
• The second is if some third party seeks to revoke the registration and then you cannot avoid it which is governed by these 2014 Guidelines though they do refer back to those above.

The law is of course not at the whim of the OHIM examiners and there are two significant ECJ cases that should guide them: Ansul (MINIMAX - C-40/01)  and  Leno (ONEL - C-149/11).  both were references from national courts about the concept of genuine use. Ansul condemned token use but was generous about the genuineness of use only on spare parts. It simply told us to look at the evidence or more elaborately:

When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of the goods or services at issue, the characteristics of the market and the scale and frequency of use of the mark.

Onel deflty evaded the difficult question of whether one member state is enough by suggesting that boundaries could be ignored but that means the use you are looking at is being judged relative to a huge market and that is where our smaller clients are bound to suffer.

50      Whilst there is admittedly some justification for thinking that a Community trade mark should – because it enjoys more extensive territorial protection than a national trade mark – be used in a larger area than the territory of a single Member State in order for the use to be regarded as ‘genuine use’, it cannot be ruled out that, in certain circumstances, the market for the goods or services for which a Community trade mark has been registered is in fact restricted to the territory of a single Member State. In such a case, use of the Community trade mark on that territory might satisfy the conditions both for genuine use of a Community trade mark and for genuine use of a national trade mark.

The things we need to be careful of when preparing PoU for OHIM are these:

• statements even sworn by the client will not be believed

'As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence.

• the standard of proof is criminal - not just on the balance of probabilities

‘… it is not sufficient for genuine use of the mark to appear probable or credible; actual proof of that use must be given. '

• invoices all addressed to one country may be a weak point, though it tends to depend on the outcome the Opposition Division is playing for so all Greek invoices for jeans may be fine but all German one for a game were not.
• the article numbers on invoices must be proved to connect to the product with the mark on it
• sample invoices are not enough but less than 110 page please
• small and genuine is not enough for OHIM but it is in the UK -see this IPkat analysis of a recent case for how many bottles of vodka creates a share of the market
• if there are alterations in colour between use and registration you will now need to show that this does not alter the distinctive character
• Can the client afford the disruption and cost of the evidence gathering exercise

If you are weak in one area then you may survive by having the evidence considered as a whole. Nevertheless this is a good moment to re-appraise whether a CTM is good for all clients

The perils of medium-sized legal practice

From a Baker Tilly Tax & Accounting Ltd email circular comes this delicious list of 19 things to avoid -- in the unlikely event that you are working for one of the 200 or so medium-sized UK law practices that will somewhat alarmingly be one of the 50 to survive. It's fun to run through this list and see how many of them are as much a matter of concern to solo and small IP practices as they are to medium-sized ones, and how many are happily irrelevant.  Another reason why this list is a must-read is that many of the good folk whose jobs disappear when the 150 "failures" go under will become sole or small-scale practitioners in turn, providing us with more friends, competitors and blog readers ...

1.      Allowing too much working capital lock-up – work in progress not billed and debtors not collected in a timely fashion leads to increased working capital requirements. These requirements can be significantly reduced by active invoice management and regular credit control procedures;

2.      Loss of key work-winners without suitable replacements – in a very competitive market, client attrition leads to loss of turnover. For firms with a traditional high fixed cost base of property, people and insurance, reductions in turnover inevitably result in profit erosion;

3.      Ability to adapt and change cost base – if revenue continues to be under downward pressure, difficult decisions such as reducing staffing levels must be taken early. Prompt decisions help ensure that working capital is available to meet the often substantial costs of staff reduction programmes;

4.      Ability to adapt and change service offerings – a thorough review of the profitability and cash requirements of each service line should be undertaken. Management should understand the commercial rationale for persevering with loss-making departments. This rationale should be reviewed and challenged on a regular basis;

5.      Ability to adapt and change – delivery model - ability to innovate in the way services are delivered, moving from traditional models to more efficient process or project-driven, IT-enabled models;

6.      Ability to adapt and respond to opportunities – the ability to identify growth markets and utilise existing skills and people to service these opportunities as they develop, or ability to attract key new partners to develop new markets, is vital to long-term sustainable growth;

7.      Ineffective management team – a lack of defined leadership hampers the firm’s ability to create a defined strategic plan, to implement strategic plans and to develop growth and profitability;

8.      Lack of management information – a lack of regular, usable financial information, often evidenced by inappropriate WIP and debtor provisioning, can lead to poor financial decisions being taken;

9.      Difference between profits and cash – the lack of regular, usable financial information and the consequent failure to understand and highlight the difference between profit and cash can be very dangerous. Management teams driven by profit may not acknowledge future cash requirements and so may fail through unforeseen cash needs;

10.  Weak financial management – If the chief financial officer does not have the status or presence to command respect among equity partners, their sound financial advice and planning may be ignored in favour of alternative strategies which cannot be funded;

11.  Property transactions – responding to the short-term attractiveness of rent-free periods and rentalised fit-out costs of new property transactions without the detailed analysis of the profit and cash effects on the firm in subsequent years can lead to significant cash difficulties;

12.  Excessive drawings – allowing partners to continue to take drawings in excess of the profits earned or the cash available in the partnership will quickly lead to financial difficulties;

13.  Communication – limited levels of communication from the management team to all partners about strategy and financial results will lead to disinterested and demotivated partners not all pulling in the same direction. This may lead to counter-intuitive actions being undertaken by partners or partners becoming disillusioned and leaving unnecessarily;

14.  All profits drawn as remuneration – leaving little or no reserves within the partnership means the firm has no ability to ride out the consequences of unexpected rainy days;

15.  Merge in haste, repent at leisure – a poor choice of merger partners can turn a successful small firm into a large firm struggling for working capital and unable to pay the necessary restructuring costs leading to a downward spiral of performance;

16.  Merger not adequately controlled – without strong leadership and control of the merger process, a perfect strategic merger can lead to painful periods of firefighting to keep the larger firm afloat and lead to the loss of key work winners;

17.  Poor post-merger integration – firms often over-estimate the synergies achievable, and underestimate the time it will take, the complexity and ultimately the cost of integration;

18.  Poor communication with and management of outside stakeholders – failure to manage key stakeholders such as the firm’s bankers and the SRA can lead to key decisions being enforced by parties outside of the firm. This obviously may not be in the best interests of the firm. Maintaining strong relationships with outside stakeholders and presenting unified workable plans gives firms a greater chance to control their own destiny;

19.  High levels of debt - when interest rates eventually rise, firms with high levels of debt will see increased interest and finance charges. This erodes profits and limits cash available to be drawn as remuneration.

Dear President of the Chartered Institute of Patent Attorneys

Andrea Brewster CIPA VP and Catriona Hammer, President

After the excitement of the CIPA elections, it is time to learn what we can expect of the new Presidency.

Our new President works full time for a large  corporate  GE Healthcare  so the three priorities she highlights in her address (printed in the CIPA Journal for May which may eventually appear online here but is briefly noted now on her CIPA  profile) are influenced by that personal agenda. They are:

• Developing best practises in areas such as governance, compliance and diversity (the Duck says this is so not relevant to a Solo practitioner. I can't do diversity and I hardly need a policy to demonstrate that I don't take bribes. I do happily sign all the documents that say I won't buy coffee for anyone employed by a compliant client. These seem to be required by larger clients but I don't see that they do much for the profession.)
• Policy contributions on the UPC and Rules of Procedure (the Duck comments that elsewhere in the Journal  the Chief Executive reports criticism by Mr Justice Birss of the profession's apathy and subdued response to the Rules. When the rules of representation were being discussed I was unable to influence CIPA to back my proposal as they prefer to aim for the hopeless case of having all CIPA Fellows grandfathered in, so frankly for most CIPA Fellows the UPC is remote and a threat rather than an opportunity and I need to remain a Solicitor to participate)
• Education (the Duck says that would be good if it were focused on competence. I did ask my Institute to offer assistance in advocacy skills development but the proposal has been rejected in a silent way. CIPA have just announced a re-run course for September to encourage just 30 delegates to participate in a case study course at luxurious Missenden Abbey for over £1k: price to be announced on Monday. One thing that I learned on my Higher Rights course was that the case study is a tool and not the main focus. If you have a study that relates to your area of expertise, delegates retire to their comfort zone and spend time considering the specific facts of the study in the light of their expertise in the law of added subject matter or obviousness and fail to focus on the litigation skills. )

So what does the membership need from the Institute? Firstly it needs the Council to focus on representing rather than preaching. Ensuring competence is vital but so is ensuring that the Profession is delivering what the market needs. At the moment my perception is that the profession serves the needs of the large corporate fairly well (well that's the profitable bit) but we are leaving the access to IP awareness to the UK IPO - who are doing a sterling job.

To that end I would like to see tools developed to allow members to test their competence in core areas with a view to helping us work on competence. As a Solo practitioner it is difficult to know whether you are as up to speed on claim drafting or EPO rules of procedure, CPR as as you need to be. In my experience we all have to be very self-confident as our larger colleagues seeking work from our clients are all too willing to allege incompetence. Nevertheless keeping up to date with practice is vital. What we don't want is someone to tell us about individual cases. We can read. What we need is analysis and extraction of the relevant lessons that can be put into practice. If the Institute does Education well it would be worth it and the rest would follow. It should not be in third place.

Enough of my bitter wanderings. What do you want from your Institute.  Let them hear it, please

The INTA Experience

Michael Factor has finally returned from the International Trademark Association (INTA) Meeting in Hong Kong, gathered his thoughts and committed them to posterity. This is what he writes:

For those of you have never tried it, and for those of you that have, I share my thoughts on the INTA Experience. INTA is billed as a trade mark conference. I suspect that approximately 2% of participants go to a lecture or a table topic. Everyone else goes to visit a new city and to… well … it seems that what people do is to collect business cards. Not wanting to be different, I had some cards printed, and I swapped with other conference participants.

In the past I've tried to obtain a business card from a country for every letter of the alphabet, and the following year I went on to collect a PCT set that I have had framed.  I have shoeboxes of the bloody things from previous trips. My wife made me promise not to bring any more cards home unless I throw the old ones out. 

To try to make some sense of things, I have decided to make a spreadsheet list of emails. I can then send out spam mail to all my new friends. Typing up emails is a mind-numbing experience. If I delegated to a paralegal or secretary I'd lose my support staff, so I have been doing it myself. I used to think it really clever when Excel finished off an email address I was typing in, and then I realized that this was a duplicate.

When you need a nudge from the spreadsheet program that you are entering your own details again, or if you note a run of blank cards and don't bother to check if they were printed on the back by mistake, it is a good time to stop and take a break. Another sign of excess business card syndrome is when you marvel at how fortunate those attorneys are who have managed to find email addresses that remind you of who they are and where they work.

Since I give them the pens, iPad cleaners, squeezy balls and other swag, my kids want to know why I go to international conferences. I explain that I go to give away my business cards and to collect other peoples'. My eleven year old asked if I didn't have enough? I explained that they are called business cards and swapping them is called doing business. He didn't look convinced.

I note that the French practise out of cupboards (closets for American readers) and the Italians, like Michelangelo and his ilk, seem to have studios. The Chinese all have impossible to pronounce names, or improbable ones that they've chosen from themselves from a list. The Americans, like royalty and Popes, have cards proclaiming that they are Walter Smith the 3rd

One of my associates from Marks and Spencer Clerk asked me why solo practitioners and small firms go to INTA. The question warrants a more serious answer than the one I gave him. An employee or associate of a big firm gets his paycheck for partying and drinking beer for a few days and gets to travel. For the solo practitioner, the cost of attending is considerable. The flights, hotel, membership and conference registration may easily cost the same as a family holiday and some may not be able to afford both. The real cost of attending INTA includes a week off work, with presumably a corresponding drop in billing for that week. If one includes jetlag, tabulating business cards, and thanking colleagues from the developing world for their kind wishes and price-lists, it perhaps eats up two weeks of working time.

It may take months to see incoming work from new associates that compensates for this investment, and it may never happen.

I think that I go for the same reason that they participate in the National Lottery. Maybe I'll strike up a chance conversation with someone who is dissatisfied with another Israel associate and will transfer a hundred files to me. Maybe I'll bump into an in-house counsel who will transfer a Fortune 500 brand to us, and then pay us to go after the infringers.

Thankfully I can manage both INTA and a family holiday. I don't think I could persuade my wife that I need to take an exotic holiday from her and from the kids. More than anything, INTA is a holiday from ones family and regular workload, cunningly disguised as a business trip.

Over time, one may see incoming work from INTA. In the meantime, it is good to have a nice easy way to measure success, and I've never collected as many cards!

Abolishing CPD

The SRA Training for tomorrow WORDLE

The Solicitor's Regulation Authority (SRA) are proposing to abolish CPD. Strangely this has not met with universal delight. Having concluded that the burden of confirming CPD compliance and approving providers was an administrative burden too far, the SRA has been working on abolition. During March there were apparently) events and roadshow to publicise a consultation on the Options to replace CPD. On 21 May, they announced the results .

Despite the lack of support for the favoured Option 1 (only 9% preferred it) and overwhelming support for the status quo (with less knobs - Option 3) (50% or 35 respondents overall but 9 of 13 local law societies and 6 out of 9 of professional representative bodies including the Law Society).

It would seem that solicitors are in the habit of acquiring CPD points with "no real focus on the quality or appropriateness of the professional development that has been undertaken". Despite being professionals the SRA believes that we are box tickers, who have fallen victim to the whiles of the CPD providers including our own professional bodies who generate income by providing box ticking opportunities.

The idea is that the detailed CPD requirements are otiose, since the Code of Conduct already requires regulated entities and individuals to deliver competent legal services and train and supervise their staff.

Most significantly, for me, the Consultation recognises that competence arises from "informal learning through day to day work".  Certainly that is the main way that firms develop and spread competence within their organisations. Once you have gone SOLO though, does that work as well?. It does, but its not as easy as you don't really want to learn from mistakes, but we certainly still learn from experience (or at least I do.)

There is to be "Guidance" that will be of particular use to sole practitioners! We await that.

It seems to me that this new approach is to be welcomed. Do we want IPREG to follow suit?

One of the other options came from the gold plating pen of the micro-managers and suggested a obligation to write a formal reflective log at regular intervals. The image of a mirror finished piece of wood has been with me ever since.

What I would like to happen is that training providers would offer genuine and effective training and not simply hours. There are things I want to learn to do better but I know that sitting in the back of a lecture hall will not help. I envy the pupil barristers who get the opportunity to learn from older members of the bar, for example. Approval of providers has not made them effective. It will be interesting what effect abandoning these restrictions will have on the market.

Looking forward to your  thoughts.