The SOLICITOR brand

When I arrived in York I was pleased to be very rapidly introduced by an entrepreneur to a solicitor who organised the local sole practitioner's group. I even found they had several Intellectual Property members who were old friends. The group encompasses a wide range of specialistations but most were solo rather than sole solicitors managing an army of unqualified staff that have given the SOLE name a dubious reputation to some.

The first meeting I attended in late September was at the offices of Roche Legal. Rachel specialises in family law, probate and court of protection issues. Young, energetic, caring and careful would be my description. She also has a nice line in corporate branding. When I get a car I must remember to splash my logo on it. More seriously a branded car is quite helpful to identify yourself when visiting an elderly or cautious client.

The discussion turned to the relaxation or simplification of the SRA Handbook. The Law Society and this group were vehemently against these proposals. The image here shows the results of the Law Society survey. You can find full details here.  There was a strong confirmation bias in the way the Law Society carried out this survey. I suspect that many solicitors, particularly those of us practising in more esoteric areas like patents and trade marks with strong independent professional bodies, who felt that the recommendations made sense, simply didn't respond because it was pretty obvious that the Law Society were unlikely to listen to evidence that did not corroborate their very strong distaste for these simplifications.

The problem, for example, of saying that solicitors should not work in unregulated firms is that they do and have done for years. Will allowing them to say they are solicitors rather than solicitor (non-practising) make any difference to the consumer.

The real problem is that the SOLICITOR brand is no longer a  mark of quality. It has been brought into disrepute by the media and even the judiciary as well as some solicitors themselves because of overcharging or just being expensive. This is quite separate from damage done to the brand by those who provide poor services or run off with your inheritance. There was support at our meeting in York for a two-tier profession with the elite being able to use some postnominals (that's letters after your name) or other protected title that would mark them out as the good guys who were trained and accepted detailed regulation. Could we promote ourselves for example by that grand title SOLICITOR OF THE SUPREME COURT - which sadly was removed from us back in 2009 when the House of Lords became the Supreme Court and we became solicitors of the senior courts of England and Wales - so much less grand. As organizations like QUALITY solicitors have found, it's quite difficult to both maintain and get across the difference in a credible way and make a profit.

The Law Society, to give it its due, is doing its best to promote the SOLICITOR brand with a campaign that launched on 3 October 2106. See the #useasolictor hastag on twitter. Tweets about useasolicitor

For those of us in intellectual property we already have a reasonable quality mark in our CPA or MITMA postnominals. With the imminent launch of CITMA we should be able to give the public a strong branded message that the best legal advice on trade mark issues comes from a Chartered trademark agent, some of whom are also solicitors too! 

New Approach to Trademark Training

Do we need a new approach to continuing professional development for trademark professionals?
ITMA organises an excellent series of lectures. If you are a member and log in you can find recordings here.  There are certain perennial topics. These include last month's "Discussion of Recent OHIM cases'. UK decisions will get reviewed too as will European ones.

However, as the speaker pointed out applicant's argument at OHIM for equal treatment based on state of the register evidence always fail. There is no precedent system that applies either in OHIM  based only on their own decisions (even ones from their Boards of Appeal). The only things that counts as anything like English law precedent are guidance from the European Court of Justice. These days the first instance  decisions from the general court are so numerous as to be of little value as president in any subsequent argument. In short, we are wasting our time studying the individual Board decisions. What we need to study are the principles that can be derived from the decisions and these are neatly distilled in the guidelines published by OHIM. Therefore, wouldn't it be more sensible for us to be running CPD exercises based on how to apply the guidelines to our client's cases. In addition the Convergence programme is producing papers on common practice that will not just be reflected at OHIM but will percolate through to national offices leading to greater consistency if that is possible in a Europe where perceptions in different parts are as different as the languages they use, the food they eat and their various temperaments.

Once of the case discussed last week was sport on the money for the latest Convergence paper "Common Communication on the Common Practice of Distinctiveness – Figurative Marks containing descriptive/non-distinctive words" also available from the UK IPO here.

The case the speaker took was R2713/2014-2 for Yoga for - er yoga kit and classes etc
The decision is not final yet so there may be more to come.



Now it seems very common for Yoga studios to register YOGA plus figurative figleaf marks. Using a TMView search

oc:DE,FR,GB,EM,WO AND tm:yoga AND ty:Combined,Figurative AND nc:28,41 
delivers me 605 YOGA marks some of which do have a genuinely distinctive element. Nonetheless pose plus YOGA seems to have a certain appeal.

The common practice is supposed to deal with situations where the figurative features lift the mark from being descriptive to being distinctive. The practice doesn't apply where other word elements are distinctive. So would my HEART and CURVESOME marks qualify to be considered under the the practice?

One of the important statements in the document is:

it should be noted that an applicant will not obtain exclusive rights on descriptive/non-distinctive words, when it is the figurative element that renders the mark distinctive as a whole. The scope of protection is limited to the overall composition of the mark. 

I wonder whether we are really making that clear to our clients when we suggest they adopt the figurative figleaf. Even so, the cluttered registers don't tell the searcher which element rendered the mark registrable. It isn't at all obvious that mattress and doughnut elements could be distinctive in certain parts of Europe and so would later generations know if HEART and CURVESOME are really the distinctive elements.

The document teaches us that figurative figleaf can work to give a combination distinction as a whole. It relies on BioID C-37/03. See - we are only going to take precedents from the ECJ to get at principles for the future. If you want to rely on typeface and font, it is going to have to be a fairly illegible mark. Looking at the examples in the document, none of my little pictures above is going to qualify on font.  Hey, but they are all coloured. The document is not encouraging. Even using multicoloured Google effects is not going to get you past the finishing post. The document goes on to consider punctuation marks and other symbols. These do not fare much better and we love yoga with its pipe signs is not going to be able to rely on those alone. In fact no distinctive examples are given in this category.

Most figurative figleaves are real graphic elements. The first thing we learn is that it has to be distinctive in itself and large enough to be seen as part of the mark as a whole. Surprisingly, they don't seem to have to hang together with the word elements to make it a whole. This tortoise going the other way seems to make the whole mark distinctive.  The Yoga marks come into what is going to be the most difficult category B.3 where the figurative element is a representation of or has a direct link with the goods and/or services.
The document suggests that C-265/00 Biomild, para. 39 and 40 are your best bet for defining the transitional ground, even though that is a case about a word mark.

The UK IPO was already agreed to implement the convergence practice recognising that it had a considerable influence in the drafting of the document and believes that it represents the standards our courts already apply. If you are going to argue a case before OHIM about the distinctiveness of a sign, best go straight to this document and use these principles rather than try and find precedents amongst the board of appeal series decisions that will be happily disregarded by the board when looking at your case.

IPEC Small Claims

The Walke Talkie from somewhere else

The UK Institute of Trade Mark Attorneys ITMA held its Annual Reception for members of the Bar yesterday. It was hosted in the offices of DWF in the Walkie-Talkie - that wonderful building on 20 Fenchurch Street which has a garden in the sky. We weren't in the garden, but we did get to enjoy the stunning views of the river, through glass so no photographs you have to instruct DWF.

The event was favoured by the attendance of at least two of the District Judges who "man" the small claims track of IPEC. The guide for that court gives lots of information  and most of the profession are clear that it works pretty well for photographers who find that their work has been  misappropriated. In those cases we know (I think) that damages around the £400 - £500 mark are likely to be awarded. I was not alone in commenting that the lack of any published judgements or even less formal information on how trade mark matters were dealt with gave rise to some difficulties in advising clients  whether to choose, transfer or remain there.  While many judgments are ex tempore and don't lend themselves to reporting, there are some reserved judgments that have not made it  into the public gaze because a policy decision has been made that they should not be published on BAILII. This is unfortunate because it keeps us in the dark.

One of my concerns is that with a £10,000 limit on damages  and with no intention of conducting the same type of inquiry that is conducted in the multi-track or High Court, it might be easy to assume that damages reach that limit and order it automatically. Nice for claimants, but less than satisfactory for impecunious defendants,  for whom that sum  may be unattainable.

It seems that many judgements in the small claims track are by default, which in itself is unsatisfactory and suggests that defendants are not finding access to affordable advice.  Even if you have infringed intellectual property, it is still worthwhile admitting or defending and attending to ensure that your case is dealt with fairly. So far ITMA has not been successful in setting up a pro bono scheme and intellectual property defendants are not finding much assistance elsewhere. Often the difficulty is that it's not a case of not being able to afford legal advice, it's not being able to find legal advice that is affordable.

It was great to meet the small claims track judges and hear a little about how they operate. This in itself gives me much more confidence than I had before. With the multi-track so busy, it is good to know that there is capacity on the small claims track for things to come on early. They even promise to read their emails, even if due to the universal lack of support staff that seems to handicap our  increasingly expensive court system,  its less likely that the phones will be answered.  Some difficulties seem to arise when claims are issued, which is in the Rolls Building, as it is necessary to get a small claims track number for the case to go straight to their administration.

Hopefully some  small claims track trademark decisions might find the light of day somewhere. These are public documents.  It seems odd that we should have to consider freedom of information requests in order to find out how justice is delivered. This information should be readily available to those who need recourse to intellectual property justice.  Maybe this is something that the IPO can help us with. After all, every trade mark opposition  decision is published, even though they are also non-precedental.

The new ITMA website

Home Page

The Institute of Trade Mark Attorneys - august organisation that represents some of the UK's regulated and registered trade mark agents has revamped its website making extensive use of a  CENTRIC customer relationship management (CRM) system. I assume that because all the messages I get from it and various tab titles use that trade mark. I cannot find out much about it. There are references to CENTRIC CRM as being an open source product and it was the former name of Concursive, but relying as one does on the UK IPO you find that the CENTRIC word mark stands as an opposed application in the name of BNP Paribas. Its a similar scenario on the OHIM register. Why am I interested in the underlying database? Well that's likely to be responsible for some of its strange behaviours.

At first sight the design looks nice and clear. The Home Page is a little crowded with plenty of information left below the fold, but then I don't envy anyone trying to organise a home page any more. Members can log in. Its in the top blue bar on the left. If you are a member you have been sent a user name (Joe.bloggs format)  and your password set to your membership number. You can change that when you find the place to edit your profile. Once you log in there are exciting green bar messages that tell you false information, such as that you have not paid fees or the like. The profile itself allows a certain amount of editing. I have managed to show you a picture and change my title to Solicitor Advocate just for fun. I may change it again to something else next week. After all I have apparently only been a member for 3 weeks. I tried to give myself some skills but it was too smart for that. The nice thing about the profile (if anyone other than me was looking at it) is that it contains my twitter feed, which on the day I made the screen shot was quite relevant. You can enlarge the picture in this post by clicking on it.

So who will see this profile. An important aspect of any website like this is to allow the potential client to find an adviser. so I logged out. The link to do that doesn't work so I had to restart the browser to masquerade as a member of the public.  I clicked on the prominent purple find an expert box. it shows me a lot of text and suggests I try the Public Search Tool . I then click that.  I decided I would look for an expert in Windermere. Readers of this blog may be aware of a prominent trade mark expert who has moved to that neck of the woods. I get a really nice enlargeable map showing where in the UK Windermere is, but there are no experts there. The map shows Leeds too but that is barren of experts apparently. I zoom the map for fun a few times and decide to look in London. Ah much better.

There are lots of little pins and a long list of firms below the fold that I almost miss. I can click on a pin and see who lives in that office. The map is too clever and zooms around and ceases to be fun. The list, if you can escape the maw of the map, shows a list of members and you can sort by the various headings. At the side of each name in the List their is a link to view their profile. I chose one at random from my London search and discovered he had an address in Weybridge.  I could not work out the criteria for display. If I limit the search to "member" I could find myself but the Filemot pin was almost as shy as the Sally Cooper one so neither of us will getting much business from our ITMA membership as a a result of this website any time soon.

The database aspects feel to me like a work in progress. By contrast the information is presented clearly and its easy to find out how difficult it is to qualify as an agent and that I could expect to earn more than £40k when qualified. The Events come displayed in another whizzy database tool - an interactive calendar.

Professional bodies now need and are expected to have quality websites, both well designed and functional.  It is commendable that ITMA want to improve their offer. The design is nice but it wasn't that bad before, but so far I am not impressed by the database tools. You can hear how well the salesman sold them, but the finished product is incomplete. Maybe like our beloved OHIM site it will be an improving work in progess. Lets hope

Guardians of the Orb : Know your Certification Marks

Sally Cooper keeping us up to date, warm and well loved on the delightful ITMA lecture programme

GUARDIANS OF THE [HARRIS TWEED] ORB is the title of a talk given last evening (12 September 2013) by Colin Hulme of Burness Paull in Edinburgh – though an alternative title could well be HARRIS TWEED – A WELL-LOVED BRAND. Not wanting to spoil things for those planning to attend this talk in Leeds next Monday - still time to book, this note is limited to information that is stored away for future use (e.g. Quiz nights).

•  The Harris Tweed Certification Trade Mark is the oldest British certification trade mark still in use  
• A heroine in the history of Harris Tweed is the Countess of Dunmore who, in the 1800s, was passionate about clothing made from this tweed produced in the islands of the Outer Hebrides
•  The Harris Tweed Act 1993 established the Harris Tweed Authority (taking over from the Harris Tweed Association)
•  Part of the definition of Harris Tweed set out in the Act is that it’s “a tweed which has been handwoven by the islanders at their homes”
• 1996 was a high point in the history of Harris Tweed when 7.6 million yards were spun (think of all those jackets !)
•  Japan is currently the largest market for Harris Tweed

Colin talked further about the (legal) protections in place for Harris Tweed, not only in the United Kingdom but in other countries of the world. But what’s most important to Harris Tweed are the protections it gains from (brand) popularity and mystique. The Authority finds its best policemen are its loyal customers, and also finds that sometimes it’s appropriate to draw back from circumstances where legal action might be threatened (or taken) to protect the brand. This writer found herself recalling seminars in past times on the branding attached to successful films (say, STAR WARS) and pondering whether the time has come for “well-loved brand” to be a stand-alone term in the legal lexicon ?

A visit to London from Alicante: OHIM British Day Postcard

Westminster Abbey on 5 June 2013 with commonwealth flags

The flags were still flying outside Westminster Abbey in honour of the 60th anniversary of the Coronation as members of the UK profession gathered to meet OHIM and UK officials  at 1 Victoria Street ( the well-appointed BIS Westminster Conference center)   nearby to share the hospitality of OHIM at OHIM British Day. We were honoured by the presence of President, António Campinos as well as the exuberant Inge Buffalo and Dimitros Botos. On the UK side John Alty as Comptroller was there with Sean Dennehey who is now responsible for both patent and trade mark operations within the UK office. It seems that a visit with the Minister may have been responsible for the delayed start and late arrival of the leaders.

Now that the UK IPO and OHIM are using the same IT engine (in the UK its called TM10)  for managing their trade mark databases, can we expect even greater convergence? 
OHIM continues to emphasise timeliness as the core of its Quality metric and there is no doubt that, in some areas, it is impressive with designs being registered within a matter of hours. I did take the opportunity to express concern that the Board of Appeals and subsequent appeals were often not timely at all and where this resulted in enforcement delays as with cancellation actions, that was not the quality brand owners needed. However that was perhaps the only *meanness* (their word) shown to the OHIM delegation at least in the public morning session. I cannot say whether the private afternoon session with ITMA and other representatives of the interests was more contentious.

It seems there will be a new OHIM website going live at the end of the year. Its services will be piloted with the biggest users - so not you and me. I spoke to two representatives of said biggest users over the lavish refreshments and learned that despite the volume of business they do with OHIM they do not yet use MyPage. Maybe they need to take some consultancy from solos like us on how to be efficient in a paperless way.

We heard about the tools being created under the Co-operation Fund  programme under the auspices of the European Trademarks and Design Network (ETDN) .That link will take you to their new page and the interesting tools they are working on. Some like the similarity tool you can play with and there are plans to integrate them with the mainstream in due course. Classification and its convergence has attracted a lot of post IP TRANSLATOR interest, not all of it now hostile. There seems to be a new recognition that clarity of specifications without the wild land grabs made possible by class headings in three classes is desirable. Nevertheless the imperatives of translation have led to an assessment that only 11 sub parts of the WIPO class headings are in fact insufficiently clear leaving 186 phrases you can use following a report made in May 2013. Meanwhile, if you need real IP translating the translate button in Euroclass now renamed TMClass as it is not limited to Europe, works miracles of high quality translation of specification terms useful for your global portfolio.

The Observatory also had its own presentation and is set to become an important policy setter. Its principle immediate objective is to complete research on mapping the landscape of IP enforcement  and that means understanding citizens' perceptions of it and they do mean copyright as well as patents and trade marks. The US has reported that 27.7% of jobs are IP related and 34.8% of US GDP is IP related. We should soon have comparable figures for Europe and they are not expected to be uniform across the region. Once we know, expect to see IP campaigns coming to a cinema screen near you. The IP toolkit will give you an idea of the messages you are likely to hear.

OHIM intend to *Keep Walking* towards a more efficient future and we hope to be by their side in this journey which we all hope will benefit European jobs and economies.

Abuse in the World of Trade Marks



From Lakewoodrat on Flickr

I was intrigued to see that ITMA had announced a lecture in Manchester by the renowned London  IP QC Michael Edenborough on the intriguing subject of Abuse in Trade Mark Actions. Rather than risk a trip to the frozen North I cast a fly on the wall and this is what it reported.

Michael was his usual cheerful and exuberant self.
His preliminary messages were that

• we are all practitioners (so let's find a route to what the client wants to achieve) and
• let's appreciate that law is not always "black-letter-law" (clearly clear and right) : it can also be " grey-letter-law " (unclear) and even "white-letter-law" (assumed to be right but, in fact, untested).

Michael had chosen with care examples which built on these foundations :
 

1) He went back to 2003 and the decision in Omega to explain how inadequacy in a pleading (revocation proceedings : TMA 1994 section 46) resulted in TPN 1/2005 and the Registry's requirement for the applicant (in revocation proceedings based on non-use) to plead expressly the date from which revocation ought to take effect.
But the " rabbit out of the hat " (my expression and not Michael's) is the Sabatier case (No. 82 673 of 31st January 2007) being a Decision of the Registry not (apparently) to be found on the website at www.ipo.gov.uk : it runs counter to TPN 1/2005 in allowing pleadings to claim " rolling " dates as dates from which revocation ought to take effect.

 If you have a case pleaded under section 46(1)(b) TMA 1994 and the Registry insists on TPN 1/2005 : do not be afraid to take up your sword and cry " Sabatier " !

2) Omega stayed in the news in the context of a further " go " at pushing back the date from which revocation ought to take effect. This time – the court says " should have been argued in previous (revocation) proceedings " and this new litigation is an " abuse of process ". We have " abuse " as a shield for the defendant (Ed: Omega cases are many: this is 2004 EWHC 2315 (CH) Rimer J)
 

3) In the context of challenges to a Decision of OHIM, always remember that you need a " point of law " to justify an appeal from (now) the General Court to (now) the Court of Justice. Otherwise, you'll find the Court of Justice providing a " Reasoned Order " as an end to proceedings.

  
Michael brought the mark PURE DIGITAL into his thinking on this issue. Surely (we all believe) the practitioner can only bring " evidence of use " to the table where that " evidence of use " relates to period prior to the date of Application ? But might this be "white-letter- law"(see above) ?

Why not argue that – at each stage – the relevant tribunal (OHIM's Examiner / OHIM's Board of Appeal / General Court / Court of Justice) MUST take account of the post-Application use

of (in the particular case) the mark PURE DIGITAL ?

Why not – in support of this – bring to the Court's attention Paragraph 2.61 of the Max Plank Institute's Report of 15th February 2011 ?

If your client's concern is (dare we say it ?) that the mark stays " live " in the records of OHIM for the maximum period of time and you have such an argument (on a point of law) that's going to achieve this (rather than attract a Reasoned Order on an earlier date) : surely you (again) have a sword you should take up on behalf of your client ?
 

4) Back to the UK and the case of Special Effects : bringing grounds used in opposition proceedings before a court of law in subsequent infringement proceedings in not a problem.

But – don't forget things may be otherwise in proceedings for invalidity.

The Spam / Spambuster case in 2005 went against the party taking a " second bite of the cherry " (again, my words and not Michael's) when the first attempt at claiming revocation had failed (and this was the case even though the " second bite " was on different grounds).

The Firecraft case in 2010 went against the defendant who wanted to say " passing off was established in opposition proceedings at the Registry " and " we want to argue against passing off now we're defending an action in the High Court ".

For the claimant, what had happened previously was (in these latter cases) a sword for their cause !

5) Threats (per TMA 1994) bring their own " abuse " concerns.

 In 2004 Reckitt Benkiser found an action defended and there arose, as part of the counterclaim, the issue of seeking to join solicitors to answer a " threats " allegation : joining solicitors as a party requires permission from the court and permission was refused as an abuse of process.

Without prejudice correspondence is, in this context and others, an area which needs careful consideration :

- some ten years ago, courts refused to consider " threats " issues when " the threat " appeared in without prejudice correspondence [ Unilever v Proctor & Gamble ]

- more recently (2011), a court isolated " the threat " from correspondence that was without prejudice – making " the threat " actionable (and suggestion was made obiter  that the rule on without prejudice correspondence (being a rule protecting disclosure adverse to interest) should not  provide a shield against the impact of the " threats"  provisions of the TMA 1994) [ Best Buy v Worldwide Sales ]

On the future of threats – review is part of The Law Commission's Eleventh Programme of Law Reform and a Report is scheduled for March 2014.

Clearly those Mancunians had a fortifying lunch and my fly deserves hearty congratulations

  

 

INTA lets down its Paying Members

I know that many SOLO members find INTA membership at US$850 well beyond their means. In fact one of us regularly attends annual meetings at the non-member rate because that makes better economic sense and the other member benefits are insufficient for a SOLO - unless you are lucky enough to be a Professor when you can join for a mere $75.

I was delighted, therefore, that INTA was organising a Roundtable in London. Something to justify that huge spend to my virtual financial controller. I got an email on Tuesday and replied on Wednesday. So slothful, I admit it. It turns out this event on the protection of well-known marks is limited to 20 and despite my suggestion there are no plans to move to a larger venue.

I absolutely applaud the desire for delegate participation, but limiting delegates to 20 when there are no less than FOUR high quality presenters seems unrealistic. I suspect the email I received was sent at least to the 273 member organisations in London, possibly to the much greater membership in the United Kingdom

According to a recent mailing I got from ITMA the UK IPO say the skills of trade mark agents in the UK have been overtaken. Come on INTA do your bit to help. The picture to the right is Richard Heath of Unilever who is this year's President of INTA. I hope some of the Unilever attornies managed to get a place at the roundtable as they have many well-known brands to protect.