BONZO DOG and the last men standing principle

The group of trade mark cases on band names was recently added to by the decision of Oliver Morris in BONZO DOG DOO DAH BAND on 30 October 2019 (O-664-19).  There was also a High Court case relying on many of the same issues which was struck out on 8th April 2020 because the IPO decision created an issue estoppel - now the firmly established situation for cancellation actions at the IPO as opposed to opposition decisions.

After sifting through a mass of history from the 1960's Mr Morris held that the residual goodwill in 2005 would have been owned by "the last men standing" (para 105). There were renewed activities beginning in 2006 which had been promoted to some extent by Anglo, the entity that had registered the UK trademark 3129760 shown above in 2015. Where did the goodwill go? Was it new and separable as Anglo contended, or did it continue to accrue to the last men standing. The last men won out and the trade mark was invalidated on a passing off 5(4) ground as well as for bad faith.

Although the band claimed to be a "partnership", it was more akin to an unincorporated association of individuals with no contractual or other arrangements. This followed the finding in the ANIMALS case decided by Mr Hobbs  in September 2013. In this situation of a mere "alliance"the goodwill is left with the last man standing. This principal was elaborated in more depth by Mr Hobbs in CLUB SAIL back in 2010 quoting some of the original band cases (SAXON and THE SUPREMES)

Bonzo Dog Doo-Dah Band in Fenklup (Dutch TV), 7 June 1968. Probably Roger Ruskin Spear or Rodney ("Rhino") Slater This image is from the Beeld en Geluid Wiki

The Band chose not to be legally represented before the Registrar, though they were later in the High Court, after a crowdfunding exercise which billed it as a "criminal case". 

There seems to be something about the music industry that prevents musicians creating either a proper partnership or corporate structure. Although even with a corporate structure, it is still possible for departing band members to reconcile themselves to the fact that by leaving they abandon their interest in the goodwill along with their shareholding.

Maybe today's bands and their promoters are more inclined to take professional advice and register trademarks in an appropriate entity. The cost of doing so is very small compared to the agony of these protracted, evidence heavy and distressing disputes.

Going Forward with the Agile Solo ducks

Hi!

At a time when most of the IP community (apparently not in Sweden though) is in lockdown, it's interesting to see who is adapting best to the new world order. It seems to me that we solos have a big advantage over our larger competitors. Okay work has probably fallen off and you are busy keeping up with the admin and credit control. Nevertheless, organisations that depend on teamwork and the assistance of secretaries, filing clerks and other support staff, are definitely struggling to do the work at home thing. Whereas, for the last 15 years unsupported work at home is what I've been doing so no change there then. Of course, I can no longer go out to the gym or indeed anywhere else except the local Co-op.

I expect everybody has picked up on the freely available extensions of time that the UKIPO, EPO and EUIPO have offered. Just as a handy resource here are the links.
The UKIPO notice stalls time with effect from 24 March and is intending to review things on 17 April.  The EUIPO notice stalls time a little earlier 16 March and takes all the deadlines effectively to 4 May. Wouldn't it be wonderful if on the next review both our major trademark offices could keep themselves in synchronism?

The EPO notice is as you would expect from a patent organisation much more complex. It isn't helped that new EPO fees came into effect from 1 April 2020. The next Official Journal will contain this notice of 30th March 2020 concerning which fee schedule to use. If you're patent colleagues would be well advised to keep a careful eye on the official journal.

Although in the UK the Postal Service is still working, because many people have closed physical offices, there is clearly some issue with post being received. Some parts of the UK IPO still use post and it doesn't appear that they have worked out a solution yet for dealing with that. Therefore, trademarks which have earlier mark right cited on them may suffer some delay in advertisement. Hopefully that will be resolved soon.

No doubt you will have heard that zoom is becoming the videoconferencing tool of choice. Even if you subscribe, it's relatively inexpensive and both young and old who have Internet connected devices seem able to cope with the interface. It's a little troubling that they were sharing data with Facebook and there had been hacking issues (though all the meetings I've attended so far haven't been hacked except by attendees who decided to leave the radio on in the background) so may not be ideal for confidential meetings but it would seem pretty safe to use it for hangouts and even basic webinars. So if anybody is interested in sharing their wisdom to make a proposal below. This is a good opportunity to keep up with CPD and developments in case law. Please post your suggestions or contact me

The Soil Never Sleeps

The Soil Never Sleeps but sometimes a blog must slumber and I have decided to end this blog with a little tribute to a kind client. After all it is our clients to whom we sell our skill and knowledge that are the final arbiter of our work and whether it was worthwhile.

Some time ago my good friend, Jane Lambert of Counsel, an insatiable blogger to whose ongoing work I commend you, introduced to me a farmer in search of some trade mark advice. A certain amount of time and a great deal of endeavour later, he and his colleagues had established the PASTURE FOR LIFE movement. My role was modest, but we did manage to achieve the certification mark registration at the UK IPO
navigating the sometimes arcane requirements of the examination system. The certification mark is a central element of  any Association that wants to make a valid promise about the quality and origin of produce . The carefully drafted rules set an objective standard that is more than marketing hype.

I was delighted last April to receive two poems printed on card that now adorn my work-space. For not only is the Pasture for Life Association (PFLA) a certifying authority for the best meat you can buy but they also have a poet in residence. How cool is that? Food for the body and the mind. You can listen to the poem of the title here: But that was not all my generous client sent. Next came a whole book of poems and this I commend to you because they are so wonderfully evocative. It's a slim volume but it contains interleaved stories of visiting PASTURE FOR LIFE farms during four seasons of the year.
In Spring in Cornwall at Woodland Valley Farm, Ladock you will meet the Cavalry of Janet.
In Summer in Yorkshire you can rest against a wall at Hill Top Farm, Malham. 
This is a poem entitled 4 minutes 33 seconds and the typesetter has not told you where to spend them. It cries out to be read aloud, but meditatively, a word or phrase at a time. If you were a teacher this would be a great book for class work. It's accessible and many of the poems tell stories and all celebrate the beauty and productivity of the English countryside.
In Autumn at Romshed Farm in Kent you can watch (I know its a poem) Bella the pig farrowing and the chickens being fed.
To encourage you to run off and buy this elegant volume over on the author's website take a little Suppertime with Adam Horovitz:. It's not all the poem just a snack to tempt you:

You can't escape eating meat

on  a pasture farm, Felicity says, It's
almost as a natural as breathing.
She looks wistfully at her vegetables
while sister Jackie, determinedly thirteen,

balks and begs for sausages, will not
touch the chilli Chris has made.
He hasn't told them about the beans.
If they're good for feeding pigs,

they're quite good enough for us,
he'd said as he scooped them,
mischievous, from the sack
at lunchtime. His son,

home late from school,
sits and wolfs his plate of chilli down.
That was great, he says.
What meat did you use?

The book is published by Palewell Press and I am grateful for their permission and Adam's to reproduce the above extract which is, of course, a copyright work.

Trade Mark protection in the UK after Brexit

During November, position papers were coming thick and fast from IP organisations on Brexit. Mostly they are very

demanding and expect the UK's final deal to cover detailed issues on intellectual property. Such provisions will come, but they are unlikely to reach the priority these organisations expect. The EU IPO seem to think so too. They have also issued a paper (or at least the European Commission has done so on their behalf) which, to me, reads as a very strong message that it is brand owners responsibility to look after themselves.  Here are the papers:

• Chartered Institute of Trade Mark Attrorneys (UK body- CITMA) 20 pages
• INTA (International brand owners- US based) 9 pages
• Marques (brand owners - UK based) 9 pages
• European Commission  countersigned by the EU IPO (registrar) 2 pages 1 December 2017

All of these demands and comments were made before the phase 1 deal was reached on the night of Thursday 7/Friday 8 December 2017.

Our minister with responsibility for Intellectual Property  is Jo Johnson, brother of the greater Bo, was very pleased about the deal in respect of the Universities - his main responsibility  - as it seems UK academic institutions can continue to participate until 2020 in EU research projects to freely disseminate UK IP into Europe.

Good news 4 science: 1. UK participants in existing projects guaranteed EU funding. 2. Projects approved to continue, with uninterrupted EU funding. 3. UK based orgs & people can bid for H2020 funding, participate in & lead consortia, post-exit, in '19+'20https://t.co/veLAEabQOL

— Jo Johnson (@JoJohnsonUK) December 8, 2017

No reply yet as to whether UK representatives at EU IPO have the like freedom to continue as representatives while we pay to continue our support for our European neighbours.

There is a substantial amount of EU IPO business with UK legal firms that do not have European subsidiaries to take it on, that is available for transfer.  CITMA members have already commented on their clients being poached, but has anyone received a business proposition? Brexit will happen. It would be nice to know there are responsible representatives offering to provide an orderly transition for brand owners based outside the Euro27. If you are one such, do ask those making unsolicited approaches how they will work with your current representative and how they will reimburse them.

India and an Independent trademark system

Tomorrow 15th August, India will be celebrating 70 years of Independence from the United Kingdom. Have a great party.  

For rather less long (since 2013) India has been a party to the Madrid Protocol. Since national applications are subject to such prolonged delays and Madrid permits only 18 months for national offices to report refusals, designating India under the Madrid protocol has been a popular route.

From my perspective, it seems that India has notified refusals in respect of every (?) designation made. When a provisional refusal is notified by the International Bureau to the applicant, only a one month term for response is allowed. Apparently extensions can be obtained but they are discretionary and subject to fees or at least fees from your attorney.

Notifications received by WIPO from the Indian IPO seem to be added to the Madrid monitor and Romarin databases on receipt even though they have not been notified to the applicant formally. If you have a Madrid designation of India, I would strongly recommend you to keep an eye on the real-time status. You can download the refusal as issued by the Indian IPO using Romarin. I'm not sure why it's not possible to see it via the Madrid monitor interface but that seems to be the way it is.

India allocates its own serial number to the application. Using that or the international registration number, you can see what submissions have been made using the Indian IPO trademark search system. This is useful for checking what has been filed and confirming the details of any marks cited in your office action. It frequently seems to turn out that they are expired or are significantly different from the black-and-white representation included in the office action.

You will also need a power of attorney. Simple signatures are acceptable and if you scan the original in colour maybe you won't need to invest in sending the original by courier.

Representatives views seem to differ as to whether as an amendment to the specification to overcome a  citation can be filed with directly with the Indian patent office or must be filed centrally by WIPO using the Form MM6 and paying the associated fee. 

I have also been informed that:

Submissions in respect of IRs designating India have to be made electronically in the dedicated on-line portal of the Indian Trademark Office, after digitally signing documents. However, due to lack of stability of the Trademark Office's on-line system, and regular technical problems, multiple attempts may be required before a successful submission can be made

Since India is likely to be an increasingly important trading partner for the UK after Brexit, good luck in protecting your brands there. If any readers have further suggestions or tips, please comment

Amazon Brand Registry

This is a post intended to collect information from others so I would really like some constructive

Oversight by an Amazon kingfisher
By Kpts44 (Own work) [CC0], via Wikimedia Commons

feedback.

I expect that other trademark agents who have clients who are Amazon sellers have noticed that Amazon has introduced what they call a Brand Registry. There is some public information at that link but not really enough for the curious trademark agent like myself. I am not an Amazon seller so I cannot access further information that may be available to my Amazon sellers.

Some of my clients have already decided to register their brands. They supply certain information to Amazon and then Amazon sends an email to the agent. They can do this because the agent's email is stored on the USPTO register and also on the EUIPO register. The email contains a verification code which you are supposed to pass back to your client. It would also appear that Amazon sometimes call up the representative but I haven't had a call from Amazon myself.

If you have clients who let you know that they are intending to follow this procedure with a US trademark, it would be good practice to alert your US associate as they might, quite reasonably, treat the Amazon emails as spam.

Amazon seem to want word marks though I haven't received any feedback yet as to whether somewhat stylised marks qualify. Many brand owners  have registered stylised marks rather than marks in standard characters. Indeed, logotype forms are often considered to be the trademark by marketers and anyone who has not been advised of the difference by a trademark agent would normally register their logotype rather than a mark in standard characters.

I have even had a client come to me simply because they want to register their mark for the purpose of registering it with Amazon. When that is the case it's important for the agent to know what type of trademarks Amazon will accept. Fortunately for this client I had already spotted the Amazon affection for standard characters.

The next big question I have is what are Amazon going to do with this Brand Registry? Is a product offered by someone other than the Amazon seller under that trademark to be blocked? What about fair use of the trademark? Is it to be prevented or are we allowing trademark owners too much power. These questions are very open because only Amazon seems to know the answers. When a mark is registered on a national register like that of the UK IPO or the EUIPO or the USPTO, the rights and defences are outlined in published law. Amazon is not a state, although it seems to behave like one and certainly doesn't seem to be publishing its laws.

I hope we can see some answers soon.

INTA 2017 FC Barcelona v RCD Espanyol

The trademark profession will gather in Barcelona. The convention is in the Fira Gran Via or is it? There are two football teams in Barcelona and I suspect there may well be two INTA conventions, with the other one taking place in central or beach venues.

Many Solo practitioners will want to gain some insights into current practise so I expect to be found at least in the mornings in Hall 8. The programme is here  or you can access the App on the web or download it to your phone so you can map the location of the official events. The App has lots of useful detail about the sessions.

 Maybe I will see you at the EUIPO session on Sunday morning, which conflicts with our very own Sir Richard Arnold talking about jelly bears or why distinctiveness is not the same across Europe including Switzerland.

Meet the Bloggers is on the beach on Monday evening - look out for lucky people with ribbons and beg for one.

Monday lunchtime there is a tweet up but to find the right coffee shop you will need to follow #INTATweetup #INTA17 on your twitter feed.

Catch some law, some #Brexit strategies, some sunshine. See you there and thanks to all those good people who have organised this amazing event.

If you aren't spending all your time in the convention halls you might want to search out an Espanyol football shirt.

Website licensing misery

I'm really not clever enough to use my own photographs to illustrate my own website. Therefore, I turn to stock photography libraries which used to supply royalty free licenses which meant that businesses like mine, which refresh their website once every blue moon, don't have to worry about paying royalties just a one-off fee to the photographer for the right to put the photo on the website and leave it there for some unspecified period. However, when I visited Alamy, I was offered a five year licence for website use. Is this an impracticable new trend or have I just been out of the stock photography market for too long?

For the purposes of this blog, I usually go to Google image search and look for Images that are labelled for reuse. Some might argue this website is commercial (even though it is not written for any direct economic benefit, but is that the test) so I tend to look for unrestricted reuse so I'm afraid I can't show you the Tate's image of St Joseph at work (I'm writing this on his feast day) even though the original artwork is out of copyright. However, thanks to the generosity of a photographer in the Philippines and Wikimedia Commons you can enjoy this image of a church sign in the Philippines.

The photographer donated this to the public domain and I am grateful for his generosity. However I must remember not to speak to the German market. According to a recent newsletter I received from the German IP firm Meissner Bolte a reform of German copyright contract law became effective on 1 March 2017. This amends the German copyright act and appears to prevent my desired single payment for the use of a copyright work. I am not clear whether this simply prevents exclusive licences, which might be okay because I'm not looking for an exclusive licence. Section 40 a of the German copyright act now provides that a copyright owner can after 10 years exploit and otherwise dispose of work himself regardless of previous contracts.  I shall be seeking further clarification when I meet my German colleagues at #INTA17 in Barcelona.

Copyright law is seriously ripe for reform as voices more authoritative than mine (Sir Richard Arnold) have been saying for some time. You can listen to an excellent BBC Radio 4 programme on the topic here.  Unfortunately it's an enormous topic and the level of protection required for a website ready photograph, a doodle and a truly original painting by Sir John Everett Millais really isn't justifiably the same.

I think my website might be words only.  That's going to be really boring.

James Peel looks at the UK IPO fees review

by kenteegardin

Fellow Patent SOLO James Peel of J.P.Peel & Co Ltd has been taking a look at the recently published Consultation document from the UK -IPO as they seek to balance the books. Here is his summary:

The proposed changes are a balance between a desire to increase income whilst changing the behaviour of applicants to simplify the UK IPO workload, particularly by encouraging applicants to file “better quality” patent applications. As an example, they report that in one year, ten individuals filed 3000 patent applications of which 51 were examined and only three resulted in granted patents which were renewed for just a few years.

The UK IPO says that they break even on costs/income after a patent has been renewed for 15 years. The fee increases may be needed to pay the salaries of the new patent examiners as their numbers have more than doubled in the past six months. Pressure had been exerted by CIPA to sort out the backlogs which were making it hard for the UK IPO to meet their own deadlines. Some years ago, national patent offices in Europe appeared to be struggling to find a role for themselves with a drop off in filings because of the success of the EPO. The UK IPO marketed itself as providing a fast and low cost route to patent protection. This appears to have been successful but at a cost to their non-urgent work. It must be a sign of confidence in their strategy and offering that the UK IPO are putting their fees up.

Two approaches to the fee increases are proposed: the introduction of new fees and increases in prosecution fees or an increase in renewal fees but with lower new fees and lower increases in prosecution fees. The latter approach is unlikely to change applicants’ behaviour though, and an opportunity might be missed.

The new fees are a charge of £10 for each page over 35 pages to be included in the application fee and a fee of £30 for each claim above 15 claims to be included in the search fee. The UK IPO predicts that the introduction of a claims fee will increase their income per case by about £210 as the average case has 22 claims. This calculation assumes that the behaviour of applicants will not change. I wonder if they took the elimination of omnibus claims into account. Also, the fees for long specifications in other jurisdictions can largely be eliminated on most cases by careful choice of font size, margins and line spacing.

In percentage terms at least, the biggest change is to the application fee which in one proposal is being tripled from £20/£30 to £60/£90 with a 25% surcharge for late payment. It is this fee which is aimed at dissuading “frivolous” applications. Such an increase in upfront costs is balanced with smaller increases to the search and examination fees.

There are greater fee increases for paper based transactions and so I wonder if we are being guided towards online transactions.  (Wonder no longer, James, the UK is going digital). This may inadvertently favour lone applicants as online transactions are on a case by case basis: it is not possible to make batch payments online.

Following the unpredictable result of the dramatic increase in claims fees at the EPO in April 2008, it is good that the UK IPO are consulting about the changes. It is now up to us to respond.

We are invited to respond by email by 6 June 2017 (Note the precise 11:45pm deadline). The earliest date on which the new fees could come into force is 1 October 2017.

Preparing for the Unified/Unitary Patent

Subject to any rebellion in Germany it now appears that the Community Patent will emerge from its enormously long gestation period in 2018. It won't be called a Community Patent it will be a "European Patent with Unitary Effect" mostly now called a  Unitary Patent (UP). There is Unitary Patent Package of legislation which seems to be where UPP comes from. The Package includes the arrangements for the Unified Patent Court (UPC). Not even the name is consistent so what can we expect of our attitudes to it.

I have just registered for the CIPA webinars which promise to help us get practical. Book soon the first is on 27 April 2017.  These webinars are free to members as it is considered desirable/essential that everyone who claims to be a patent attorney should be fully up to speed.

AIPPI also have en event on 31 May 2017 and you can book here. There should be a webinar for that too.

The main immediate concerns are

• Choosing between an UP or a conventional EPO bundle when grant decisions are imminent after the package takes effect, and
• Opt out of the UPC jurisdiction for existing European Patents 

The first concerns me most and I have been pondering the factors we need to put into the mix.
Is your client is exploiting the patent? are there licences? what are the probabilities of a dispute arising? what are the probabilities of an opposition? will your client want to maintain long term? does it  envisage significant growth or being bought out?

For what I would call the ordinary SME using its own patents, only filing for true innovation, and having a fairly parsimonious attitude to renewal fees the teenage UP would probably be an unlikely survivor but it is an easy choice in the early years. The fee scale was established in 2015 so these figures are probably going to increase before you pay them.

The other big issue for UK clients is Brexit and whether the European market is available for new innovations is accessible. Its also possible the unitary region wont include the UK after Brexit  but UK owners of UP will still be able to own them.

My current thinking is that the UP is good for optimistic entrepreneurs who see a growth future, but for the more established business who knows its market probably not.

To keep up to date follow BristowsUPC and for the progress of the court see the official Unified Patent Court site. You could also stroll past the court building in Aldgate and dream of appearing there

Keeping the UK Trade Mark Register pristine

I am sure that many times you click the link to VIEW OWNERS OTHER MARKS and you don't always get what you expect. Strangely your trade mark seems to a lone wolf. Don't be misled? Many trade mark owners never bother to synchronise their portfolios.

Even though the UK -IPO do not charge a fee for the update of a name or address using a Form TM21A most representative's will charge for the update. Making this type of change is currently fairly time consuming for an owner or his representative. I have just spent 40 minutes from start to finish dealing with one simple change. If I had done the same thing at the EU IPO it would be all sorted in maybe 4 - or perhaps two times that because I did the change of representative on my UK case at the same time and that would have been a separate operation prior to the name change at EU IPO.

So because its really nice to View owners other marks and because its even nicer to offer owners a free service to make these simple updates - could we ask the smart masters of the website to consider whether the next form to migrate to being online could be the TM21.

It might need some added security as we don't want incorrect updates to be registered and being fee-free might allow some nefarious activity to take place. However I am sure that could be managed. I have no evidence that EU IPO have suffered unduly from false amendments.

With many trade mark owners reviewing their portfolios in readiness for #Brexit this would be a good time to make this available.

What do folk think ? would this improve the service to both the public and the trade mark owners.

ACID stands up for the UK profession

One of the greatest supporters of the UK creative sector is Dids Macdonald and the Anti Copying In Design Group ACID which she masterminds. I frequently suggest to my creative clients that they become members as they start their business journey. I notice on twitter that Dids was concerned that Brexit meant the loss to UK designers of Community Unregistered Design Right - not something that is much enforced. In the UK our own unregistered design right has a far longer duration but it obviously does not give you free rights beyond the English channel.

As I have previously discussed many design clients are generally unwilling to pay for even great value legal support.

Cath Kidston's registered Design DM/093635-12

The real loss to those UK based designers is the ability to register a Community Registered Design without legal representation. Post Brexit they will need to work with a representative. This can't be a local UK one unless some deal is done. Its hardly likely that a deal will be done to allow UK representative to act before the EU IPO. Its not going to be a high priority for the UK government in the negotiation due to the low value of existing business to the UK legal profession that will be lost.

However the UK government is committed to joining the Hague System. At present a UK designer can access Hague as an EU citizen because the EU is a contracting party. Not that many do as you can see from the Hague Express Database which reveals only 3 designs with GB addresses registered so far in 2017. However post the UK accession to Hague it will become a great deal more attractive. With a single application you can have a UK registered design and a Community Registered Design and if you wish ask for protection in any of the other territories which are Hague Contracting parties Switzerland Norway and Turkey are the useful European contracting parties. US and Japan are the most likely to be of economic value to British designers.

Therefore my free advice to British creatives is that registration via Hague is your best route to protection beyond these shores. Cath Kidston thinks registration may be useful but her highly creative company is choosing to register the type of textile fabric design that is the simplest to represent as shown above. The Cath Kidston business will also have copyright in that design but  no doubt appreciates that the proof of copying element of a copyright case can be onerous.

Planning for Brexit for our UK clients is something we should now be considering. Using Hague is just one proposal. In future posts I would like to consider what is the best advice for our UK clients to prepare their IP portfolios. It seems we can rely on CIPA and CITMA to do the best they can for our overseas clients.

CIPA consultation on CPD

CIPA Education Committee have produced a document which is fulsomely described as a Framework for Professional Development. They want our comments on it by 10 March 2017 so do jump to it - they clearly need help. I had hoped it was going to propose the end of the CPD hours culture in favour of results, but no.

The idea seems to be that they need to know what a qualified patent agent needs to learn in order to develop and maintain his professional competence. This will guide the educational provision.

Once one has got over the "Teach Speak Jargon", we find that they believe we need to have skills, knowledge, values and behaviours. I accept that skills and knowledge can be learned taught and developed, but I am not too sure about the last two. Once upon a time lawyers studied ethics which generally dealt with the practicalities of not acting for both sides in an argument and managing the clients funds but such practical issues don't seem to be within the scope of this framework. Least said about "behaviours" the better.

Let me turn to what I do understand. There are lists of skills and lists of knowledge.

At the end of the list on knowledge we have:

2(g) a member should have a sound understanding of the law and practice as it relates to designs, trade marks, copyright, licensing, due diligence, contract and competition law to enable them to identify the implications of such laws and practice for clients and to enable them to refer clients for further professional advice and guidance as relevant and appropriate

Frankly this narrow focus on patent practice is disappointing. Now that CITMA has its charter are we dropping our interest in the core intellectual property fields of trademarks, designs and copyright? I think we need to put Mr Ferrara right.

The list of skills is extremely flowery. Some are the basic drafting skills that are a prerequisite for qualification. Other so-called skills are frankly patronising : do you want to be trained in how to "be able to adapt style and approach to meet the needs of clients".  One skill that seems to be particularly important is managing the expectations of clients who expect their unadapted applications to be examined any time soon by the EPO or UK IPO.

This list does not provide any suitable structure for developing educational offerings.

When seeking education, focusing on knowledge always helps. The core of the CIPA offering needs to be keeping up to date with developments in IP law in our home jurisdictions. The suggestion that the same level of emphasis needs to be placed on ALL overseas jurisdictions is odd. Its all too easy for CIPA to succumb to visiting overseas' professionals desire to give "marketing" updates in the name of education. Education in the laws and practices of the main trading partners of this country is what we need. We need to direct our eager marketing volunteers into discussing practical issues that are likely to be relevant to our local clients.

Item 2(f) : approaches to competitor IP is not knowledge -its a skill.

The values and behaviours are the province of IPREG and codes of conduct.

An educational framework needs to be more skeletal and be a tool that those organising programmes and events can work with. This framework does not seem likely to help.

We need courses and support on:

• keeping up to date on IP law
• improving  skills of drafting and advocacy for preempting and responding to office actions
• developing litigation skills
• listening and receiving feedback from users of IP on what they need
• managing our own businesses - includes ethics

What do you think you need CIPA to provide for you?

IP Entrepreneurs: the practical checklist

CITMA magazine in February 2017 published an article under this title with contributions from a panel of  trade mark attorneys who have started out independently. If this has inspired you, here is a more practical checklist (in no particular order). We have covered quite a few of these issues before so its always worth a read of the archives particularly Sally's Moving Series from 2015

Legal Structure

Sole trader or incorporate a company. A company keeps your business life separate from your personal life but if you are going to be regulated don't do anything clever with the shares or you may find yourselves a one man ABS. Creating a company is ridiculously easy but maintaining requires  a little more effort. It may be worthwhile using a company secretarial service who can help with . I use Goodwille.

Accounts

The article emphasised the value of getting a good accountant you can work with long term. Bookeeping is vital from day one and it makes sense to decide whether you will outsource that - maybe to your compnay secretarial service - or do it yourself.  Software is readily available and it helps if your accountant can read your data. After many years using Sage I have converted to the Clearbooks online system that can cope with multicurrency accoutants and is very handy for my EU IPO and EPO deposit accounts.

Bank

Keeping business money separate from personal money is vital so you will need a bank account. Thats not as easy as it was. A bank with a good online banking interface is useful for avoiding excessive costs. I use Barclays. I've tried Lloyds which was quite helpful in providing a debit card which is useful for paying fees on websites. Business credit cards may not be that easy to get hold of on day one.

Funding

You do need some start up funding and not just to live on before you start paying your own salary. Starting softly as a tied consultant to a former employer can minimise the sums required. If you are using your own savings then recording your loans is vital so you can pay yourself back once bills get paid.

Regulation

If you want to benefit from advertising yourself as Chartered you will need to deal with IPREG and that means creating your terms of trade consistently with their requirements and creating some policies and procedures.

Insurance

Even without regulation some professional indemnity insurance is desirable. PAMIA is the goto service for most pure IP attorneys. Other insurers are available. Don't forget to put a limitation of liability into your terms of trade too.

Office

You need somewhere to work especially if you intend to employ other people. A solo practitioner can work at home with a laptop at least to begin with.

Record Keeping

For a trademark or patent attorney having some way of maintaining records is important. I use Marco a system that Filemot licenses to others at very reasonable cost. its based on Microsoft Access. Today folk seem to want web based services like WebTMS and others are available. Please comment if you have your own recommendations.

Clients

This can be an issue. If you are coming out of employment, restrictive covenants will stop you workign for you old clients, but only for a period. Business networks, contacts of all sorts and advertising will find business. If you look at the number of "agents" names appearing in the UK Trademarks Journal that include the word "trademark" you will appreciate just how much business is driven today by GoogleAds. However these are expensive clients to procure, very price sensitive and seldom provide repeat business. Working all possible work referrers is the best method. Let your satisfied clients know that you would love it if they mentioned you to their contacts. If you dont ask for referrals you won't get them. Some say you need a website or use social media.

Payroll

The whole object of workingis to generate income so you need to pay yourself and contribute to your pension (even if you dont want to -its the law). HMRC has a lot of helpful information and tools for new employers including free payroll software to calculate PAYE and NIC.

 

 

Patent prospects in an uncertain world

From our individual silos, it is often difficult to ascertain whether a downturn in patent  instructions is just affecting us or part of a larger decline affecting everybody. Clearly the source of your patent work will determine which factors are most influential on your practice.

There is only one firm of patent agents which is listed on the stock exchange and which therefore has an obligation to publicise its results and provide guidance on its profit expectations. This is Murgitroyd Group PLC, a business based in Scotland but with a substantial European and worldwide footprint. I have a small investment in this business. Today (30th  January 2017) they published their interim results. Last Tuesday, 24th January 2017, they issued a trading statement. As a result, their share price which had a 52 week high of 570p has suffered a rather substantial decline. At the time of writing I could buy a share at 382p. Given that their board still expects "to announce a modest increase in dividend at the interim stage" 5p on 23 March if you are on the register by 10 February, it's quite an impressive return at least for the moment.

So what do we learn from them about the reasons for the admitted dip in profits. They say that revenue has increased (benefiting from the sustained depreciation in the value of sterling -  otherwise it would have been broadly flat) but there is lower than anticipated revenue growth -that would be none then. This follows an acquisition and organic expansion so it does suggest that the attorneys are not working as hard as they did in the previous year or that they are charging less for their services.

Obviously they blame uncertainty, but is there evidence of the reasons for the underlying fall in demand? Murgitroyd can and does invest in business development and is probably better placed than most of us solo practitioners to try and grab a bigger share of the market. The chairman's statement says that they are taking measures to address the level of administrative expenses including the scale of investment in business development activities. Some of those business development activities will be denominated in dollar or euros so it's going to be a hard act to keep them down.

The chairman's statement doesn't make much of their unique position to retain EUIPO business. He does mention the Unified Patent Court, but purely in a factual way. We do not know whether he sees it as an opportunity or a threat. He is not prepared to big it up, so let's call it a threat shall we. All we get is that "the UPC will bring with it new challenges and opportunities" but the question is to whom.

Murgitroyd generate substantial revenue from North America (49%) so may be more vulnerable than you are to the tightening of the budgets of US mega filers.

Murgitroyd divide their revenues between their administrative work (34% of total revenue) and the attorney practice group.  They mention their November 2016 introduction of a new online annuities platform. This is for clients and there isn't much price comparison information to indicate whether this service is competitive with some of the horrendously profitable other commercial offerings.

These statements are made to investors most of whom are not patent attorneys and have little understanding of the patent business because they only have an opportunity to invest in one of them. Nevertheless, do read between the lines.

All comments are greatly appreciated and of course this is not investment advice.

Finding a Trade Mark (or even a Patent) Adviser

IPO IP Events

The UK IPO does an excellent job in promoting the benefits of intellectual rights to business. Its programme of events offers workshops round the country and also promotes some third party events for business, but professionals should keep an eye on it too. The consequence is that an increasing number of trade mark applicants are unrepresented. Some of these applicants are developing portfolios of significant size.

These go it alone business men sometimes save themselves some money on external advice but on other occasions, the exercise incurs expensive fees, takes up valuable management time that could be better spent and delivers inadequate protection. Recently I spotted a series of three separate trademark applications filed by a new business based in Bath. The first was plainly a pure description and has been withdrawn. The second, a simple logo, also withdrawn. The third an elaborate logo, now published. All marks included the geographical name so its clearly intended for a local business so a national monopoly might not be that helpful.  The other time a lack of representation may be a handicap is when an opposition comes in. The natural response of an unrepresented applicant can be to waste a lot of energy producing irrelevant evidence. A short session with an adviser is worthwhile when you need to assess an opposition threat.

How would this applicant have found a cost effective adviser? The first instinct would be to search the web and we know there are good trademark advisers in Bath and nearby Bristol as well as excellent solo members. Google delivers a reasonable result but does not distinguish between the unqualified advertisers and the regulated adviser.

Our business owner could have gone to the IPREG Find An Attorney site and found a very reliable result. He would not have discovered that opportunity in his Google results, but it is by far the best way to look for a local adviser.

You might expect the Chartered Institute of Trade Mark Agents to help you find a member. Not all registered trademark agents from the IPREG site are Chartered but all of those on the IPREG site are qualified and regulated.  There is a nice orange button marked Find an Expert on the site and that will lead you to a public search tool that delivers very unhelpful results on a map, so if that's what you get go search on IPREG.

Maybe its time CITMA went on a membership drive in order to help the unrepresented find helpful advice.

Say a good Farewell to EU IPO practice

There will be no gold clocks for retirees from EUIPO practice

All the UK practitioners (including myself) that cannot claim an Irish passport or buy a Cypriot or Maltese one, will shortly find their careers as EUIPO representatives ended as a result of Brexit. I undertstand that some continue to hope that our businesses will be saved but while that would be welcome, it isnt to be expected within the complexities of the negotiation that must deliver a departure to which we are unlikely to be able to attach conditions. Concessions may come later as they did for Swiss Norwegian and Icelandic representatives.

Nevertheless, there are a few years of dealing with the office to go and we should use them to show that a UK lawyer is always worth having on side especially a chartered trademark agent.

The EUIPO runs a system that is constantly evolving and evolved in quite a significant way in March 2016 with the introduction of the revised Regulation and Implementing regulation 2868/95

Just in case you had had not noticed European Union trade marks expire 10 years after the date of filing and must now be renewed prior to the expiry of the registration. (Article 47 (3)). You used to have until the end of the month. Not any more  and a day late means a 50% surcharge ouch.  I expect you knew that but I just thought I'd remind you.

Another little improvement I noticed is in Article 50 which came into effect on 23 March 2016. This provides that the validity of a surrender made after an application for revocation (non-use or genericide - see article 51 for the grounds of revocation)  is now conditional upon the final rejection or withdrawal of of that revocation. Before this change you could apply to surrender before the decision so that conversion could be made into the territories where you had use.  This option is no longer possible.  In the amended guidelines Part E which came into force in August 2016, it says that the other party in the cancellation proceedings will be notified. Indeed in today's webinar on the new guidelines the presentation says that the cancellation applicant will be invited to comment. However there may be subliminal surrenders prior to August where the cancellation proceedings are continuing unawares.

This amendment also means that getting in an application for revocation of a non-use is an even more powerful technique against an EU trademark, which may be in use only locally. Since use is exceptionally difficult to prove a cheap revocation is a mighty powerful weapon that makes everybody's EUTM extremely vulnerable. By contrast, hearing officers in the UK IPO are much more likely to believe your proof of use. They even assume that witness statement are true.

I made the case that EUTM were mis-sold back in 2015 . Now that we are faced with Brexit, it appears that many non-EU applicants are filing both EUTM and UK national marks simultaneously. If you're thinking of opposing a EUTM do check, you may have to file two oppositions, but the canny chartered trademark agents of the United Kingdom are already aware of that.

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.

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

ACCESS TO JUSTICE – WHO IS AFRAID OF COMPARISON WEBSITES ?

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” : https://www.legalchoices.org.uk/. The site is run by frontline regulators and includes a section on “Protecting Ideas” and (with a date of March 2015) a Quiz : https://www.legalchoices.org.uk/protecting-ideas/ 

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



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 !