Monday 28 November 2016

Immunity from threats actions for regulated lawyers survives an unexpected attack

The Intellectual Property (Unjustified Threats) Bill has been making its way through the stages in the House of Lords and has finally been published again in the form in which it has been reported back to the House for its third reading before it goes to the Commons.

This is a bill that deals with unjustified threats of infringement in respect of registered rights and design right. It tries to create a balance between what the owner of the rights can say and those that may be affected by unjustified threats. It also allows immunity to professional advisers who are acting on instructions. This is probably the most important bit.

It only covers patents, registered designs, design right and all forms of registered trademarks. If you own copyright you can continue making unjustified threats without reference to this new law when it is finally enacted. This is perhaps because there was no previous law on unjustified threats of copyright infringment to be amended to bring them all into harmony. In the 2014 report the Law Commission said "We have not been asked to look at threats of copyright infringement, which raise different (and highly contentious) issues." 

This page, provided on the UK Parliament website, links to the various stages and documents relating to this Bill (but not the oral evidence I tweeted about).  The Law Commission also has a useful page showing the historical background and consultations that led to the Bill

I was rather surprised when I read the debate on report that there was resistance to indemnifying the professional representatives from a somewhat unexpected quarter - a former patent attorney, Sharon Bowles (as she was when on he register, before becoming a Baroness) . She tabled an amendment that would have required the instructions to be "specific". You can read the discussion in full here. Essentially, like Robin Jacob's evidence, the amendment was meant to probe the risk that some professional advisers might be wayward and that those from overseas who are still exempted if regulated, might not be disciplined by their regulators for taking an aggressive common cause with their client. While there are exceptional cases, the serial copyright infringement threatener (2009-2102), Andrew Crossley for example, it would be unfortunate to lose the protection that is so much needed by the vast majority. Only once have I and my then firm been personally threatened with an unjustified threats action. It did indeed turn out to be fatal to the client relationship even though it was not pursued. Accordingly, I was personally pleased that the amendment was withdrawn after a spirited defence of the underlying principle by the current Baroness who is  Minister of IP. She also took the opportunity to clarify that the indemnified professional advisers include those in employment.

Saturday 26 November 2016

Buying Time for Christmas: a guide for UK Trademark Opponents and Applicants

This is the season when many trademark agents look at their docket and realise that some of those imminent deadlines (and maybe even ones early in the New year) can't possibly be met now that their clients have run off to enjoy the Thanksgiving holiday without providing the material that is needed for their evidence in a UK opposition.

If you read The  Manual of Trade Marks Practice  - the bible of practice published by the UK IPO -  Paragraph 4.9.1 of the Tribunal Section chapter at page 438, you will obtain the impression that extensions are not readily available:
"The timetable is to be adhered to. It provides more than enough time, in the vast majority of cases, for facts or submissions pertinent to the pleaded grounds to be gathered and presented to the Tribunal. Parties should not regard this timetable as a ‘starter for ten’, to be varied at a later date. The Tribunal will, in exceptional cases, consider requests to extend the time allowance. Such requests will need to be fully supported with explanations as to not only what has been done to date but, more particularly, what is left to do and how long it will take to produce the evidence. The Tribunal will also need to be satisfied that the extra time is warranted in the context of the pleaded grounds and what is necessary to determine the case efficiently and fairly."
Therefore a trade mark applicant might reasonably expect things to move along. For the new business applicant this can be necessary, especially if there are investors concerned about a shadowy or real threat of infringement proceedings following on from a successful opposition.

If you read the cases published on extensions you will find this hard line endorsed.

But wait. This is not the full picture.The decisions on extensions that are published are the ones where a refusal of the extension decided the whole case. If the extension is allowed the reasons don't get published. This is an omission that could be rectified if interim hearing decisions were published.

In ZILLION O-193-16 Ann Corbett refused a retrospective extension of time. It was a cancellation action, rather than an opposition and it would have been possible for the case to be re-started. Nevertheless, Ms Corbett held
"Despite the fact that evidence has now been received, and notwithstanding that this may lead to the commencement of another action between the same parties covering essentially the same subject matter (a matter on which the applicant may wish to consider seeking professional advice), I was not persuaded, in the circumstances of this case as set out above, that the requested extension of time should be granted. The request was therefore refused."
Note that these were litigants in person and you, my friend, are more likely to be a professional and know that you regularly get extensions with the flimsiest excuses if the evidence is in by the time of the hearing and there are other grounds so that the case will not close. If you have  a decent reason and can show reasonable efforts you are even likely to get the extension in response to a request without a hearing.

If the UK Registry provides an indication that the extension will be allowed there is absolutely no point in the other party objecting. It will be futile and will simply increase their costs and costs exposure. Never do it. Hearings arise when the UK Hearing Officer is minded not to allow the extension. When the requesting party would prefer the initial indication be maintained they will likely put some effort into preparing for the hearing. The first thing to do is ask your counterpart if they plan to have evidence submitted in time. If they do, back off and forget it. Of course they may deceive you, which is unprofessional, or simply not answer.

If you fail to have the evidence ready for the hearing life can be harder as even a professional representative found in ALOHA  where on 27 April 2016 Heather Harrison refused an extension to an opponent without completed evidence, with this level of reluctance:
Whilst I am satisfied that the reasons in support of the original extension request were sufficient to justify the length of time granted, nothing has been provided to persuade me that the opponent has taken any steps to finalise its evidence in the intervening period. Whether the parties continue to negotiate is clearly a matter of uncertainty. In making my decision, I have kept in mind that an apparent lack of diligence by a party does not mean that an extension cannot be granted. I have also considered Ms Hobbs’s request that I impose a further, final deadline and I have some sympathy for her position. However, in the absence of any information about the current state of the opponent’s evidence, let alone an assurance that it is near completion and will be filed imminently, it would not, in my view, be appropriate to allow the opponent further time
Once again this decision only came to be published because it led to closure of the opposition file.

You should copy the other side and the Manual suggests in bright green letters
"Failure to Copy to the Other Side or to Provide Detailed Reasons Will Result in Refusal of the Extension."
This is also not true, but why risk it.

There are also alternatives to an extension. If there are negotiations or you could initiate some, you might be able to persuade the other side to agree a stay. That has the bonus of not requiring a fee, but you do need consent and you still need to support it with convincing reasons for the request. Turn to page 439 and section 4.9.2 of  The  Manual of Trade Marks Practice  .

So if you need to buy time, remember:
  • your reasons
  • your fee (yes sometimes lazy opponents try to avoid the fee - a retrospective request also costs more)
  • that you do need to have the evidence complete before any hearing
  • it would be helpful to have some non-evidential grounds and a reasonable prospect of being able to start over

Friday 25 November 2016


Sally Cooper has been out and about again and and has concluded that affordable legal services are paramount and transparency is key. Price is not everything, though, when it comes to intellectual property. There are plenty of transparent offers to register trademarks for a fixed fee - some are even provided by regulated professionals. However, I cannot afford to compete on price alone for those clients who do not value experience and expertise. Price is a factor and I agree that it should be transparent, but it is not the only factor that the client should bear in mind and we need to be transparent about those too. Here is Sally's report:

"Access to justice-  who is afraid of comparison website" is the title of a gathering last evening [24th November] organised by The Manchester Law Society. This brought together the Legal Services Board (Chairman Sir Michael Pitt and Chief Executive Neil Buckley), the Legal Ombudsman (the Chief Legal Ombudsman Kathryn Stone), the Legal Services Consumer Panel (Chair Elisabeth Davis) and the Competition and Markets Authority (Sharon Horwitz). The aim of the evening was to provide an update on price transparency, the role of comparison websites and other online tools in improving access to affordable legal services. Yes – lawyers are moving towards a world where “digital comparison tools” operate in a “sustainable comparison tools sector” !

To the lawyers who might want to say “legal services are different” and “it’ll never happen”, Kathryn Stone pointed out that there was a time when Marks & Spencer didn’t have a Christmas advert on TV. Indeed, a show of hands at the end of the evening saw just about everyone in the room was in favour of “transparency through comparison” in the legal sector.

 So what about IP lawyers ? The words “intellectual property” were not used during the evening but IP is part of the overall picture. In 2015 the Legal Services Board published “The legal needs of small businesses” :  Tables included in this report include “Intellectual Property” under the “Problems” faced by small businesses and and “Patent / trade mark attorney / agent” under “Business Support Services” used by small businesses.

Also there’s the Legal Choices website which is “here to help you with decisions about legal issues and lawyers” : The site is run by frontline regulators and includes a section on “Protecting Ideas” and (with a date of March 2015) a Quiz : 

  And for those who say “it can’t be done” the business of offers visitors to its site the opportunity to “Compare costs for solicitors” in conveyancing :

I came away from the evening with eyes opened to the force of arguments in favour of there being “digital comparison tools” in the legal sector. Those giving presentations are moving on from “whether this should happen ?” to the questions of “how ?” and “when ?”. Affordable legal services is the objective and transparency is key – be ready !