A community discussion group for sole IP practitioners, wherever they are in the world and whether in private practice or in-house - whether in their own businesses or working for others - as well as new small firms on a growth curve.
The UK IPO are running a fast consultation on revising (again) the UK trademark opposition procedure.
I did a little survey of my files. If you can't measure it in UK IP policy, it doesn't exist so we must provide evidence even if its only a measured anecdotal sample. So this is what I can say about UK oppositions over the last several years. I have dealt roughly with twice as many outgoing ones as incoming ones 40:19 and the number I have let go to a decision by the UK IPO is tiny at 5 and only one of those went to an appeal. In OHIM the ratio was 65:49
The parties involved are not all SMEs by any means but a reasonable proportion are and whatever the size of the client it generally makes sense in the UK to settle because going the whole way is costly, slow and not that much fun.
My 19 UK Oppositions IN
How does your experience compare?
This doesn't tell us much about the trademark owners who didn't do anything so its always good to review.
Some Registry ideas are
Lower fee
Proof of Use with TM7
Relative Grounds only
TM8 retained
Separate arguments stage in writing
No hearing
An Appeal Fee to keep appeals down
OHIM can be made to produce fast cheap decisions using a file it and leave it approach using only CTM grounds. My strategy as an applicant is one observation only and you can even forego that with a reasonable prospect of success in some cases.
There is one little diamond lurking in this consultation that I hope will survive and that's the Appeal Fee. £800 would be about right.
My first reaction is that the fast track opposition won't work and just makes life more complicated, but is it worth getting together to have a discussion about it?
The title of this post was one of the many questions posed to those of us who spent our Saturday morning in a Cambridge basement a the CIPIL conference entitled 'What's new in IP Remedies' chaired by Mr Justice Richard Arnold. There were many papers but this is the point I wish to do my homework on. Despite belonging to TRIPS the US has lived happily for six years since the patent world was surprised by the eBay MercExchange decision which destroyed the presumption that a patent holder is entitled to an injunction as of right following a successful finding of infringement. Instead, as explained in the presentation by Prof Tomas Gomez-Arostegui of Lewis and Clark School of Law in Portland Oregon, there is no longer a presumption of irreparable harm and the inadequacy of legal (as opposed to equitable) remedies. The balance of hardships and public interest now have to be considered. The prospective pecuniary relief which is provided instead looks hazardously like a compulsory license as our Chairman noted.
Prof Posner and his cat
We also received a very thoughtful and enjoyable people from Prof Paul Heald of the University of Illinois in which he expounded a theory that an injunction was a form of punitive damages. He also offered us the interesting insight that the addition of a cat will send the right sort of message to make even the most austere professor palatable. He set out his thesis in understandable economic terms and made his own theory very palatable without any need for feline assistance. If you are a "patent assertion entity" (the new style for an NPE if you think troll is pejorative) it is easy to understand that the grant of an injunction allows a higher price to be coerced (he did use that word honest) from a defendant who is subject to high switching costs. The difficulty arises with the patentee who is not prepared to licence and would rather put his competitor out of business. Society may find this acceptable if he is a counterfeiter, but what if he is also an innovator.
The question of whether final injunctive relief is a guaranteed remedy was addressed but not answered in the presentation by Joel Smith and Christopher Sharp of Herbert Smith Freehills. Presumably they wish to continue arguing both ways depending on the client.
So what do we need to look at in the UK if we want to follow the US route. The consensus seems to be that you start with Lord Cairn's Act and the Shelfer exception, progress to a detailed study of Article 3 and 12 of the Enforcement Directive (2004/48/EC) which was implemented in the UK by a Statutory Instrument that doesn't think it changed the law but might have.Then ensure your argument can be reconciled with TRIPSwhich says that The judicial authorities shall have the authority to order a party to desist from an infringement.
The Enforcement Directive offers the best opportunities: Article 3(2) is the general obligation that provides Those measures, procedures and remedies shall also be effective, proportionate and dissuasive and shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse. Article 12 allows Member States to provide alternative measures if the defendant acted unintentionally and without negligence, [and/or?] if execution of the measures in question would cause him/her disproportionate harm and if pecuniary compensation to the injured party appears reasonably satisfactory.
If there is to be any following of EBay here, then you need a case where a final injunction is going to be DISPROPORTIONATE and an "innocent" infringer. Our existing compulsory licensing provision preclude a final injunction and must already fall within Article 12, but can other suitable cases that may not fit into those strait jackets? It seems to me that they can. In the discussion later on reference was made to property cases where damages had been awarded in lieu of an injunction notably the Wrotham Park Estate Company Limited v Parkside Homes Limited (1974) case.
As part of their systems upgrade, that was revealed on 11 February, the UK IPO provided a new trade mark search interface . It is still listed as find by word or image but there are some important developments that make it a whole lot more useful than the previous version. The biggest, and most significant for unrepresented trademark applicants as well as agents seeking to do economical clearance searches, is that there is a new option to search for 'similar' marks. This is now the default and you may be surprised to find that you get pages of hits when you were expecting just a few from an identical word mark search. You can revert to Exact word or Begins with if you are looking for something specific. However the new option ensures you don't miss the vowel changes. There is no information about the particular fuzzy algorithm they are using but it survived my tests, so I am impressed.
You do hit the buffers, though, if your search wants to deliver more than a 1000 hits.
I did a search for FORTY TWO and got 7 hits but 42 gave me 979 but then that's the meaning of life isn't it?
Another change is that instead of offering you spaces for several words that you could AND or OR together, you can type in a bunch of words and choose to have the search for all of them or any of them.
The search will retrieve you any mark protected in the UK and community trademarks and Madrid registrations are displayed in a new format. There is no link direct to CTM online or Romarin, which is frustrating especially when your CTM hit comes up with a status of OPPOSED very tantalising that.
The Law Society has decided to warn solicitors that they need to check the financial strength of their insurers. Just because they are on the list of qualifying insurers, it doesn't mean that they have passed any financial stability tests.
They have produced a whole new guide to insurer insolvency which you can find here.
Just as with motor insurance, I anticipate that most solicitors regard insurance as an obligation that must be paid for. The idea of actually claiming on it is usually far from our minds. Indeed that's exactly what the insurers want as they exhort us to put in place risk reducing measures and raise the premiums of those with the temerity to claim.
One thing the Law Society press release is silent on is the benefit of inserting limitations of liability into terms of trade. Instead they publish further guidance on top-up and excess layer cover. I begin to wonder if they get commission from these spiralling insurance sales.
Surely the credibility of the *ratings* industry no longer exists in the realms of ordinary men after all those highly rated junk mortgage securities (Remember Northern Rock anyone?). Even so the SRA require that Insurers must now disclose whether or not they have a financial security rating and the provider of this rating. Here is their handy list. Only one firm, Travelers is prepared to deal direct and they even quote their minimum premium, £1,575 though that was last year.
For all the dire warnings, read the full press release.
The Fellows & Associates Salary Survey for 2013 is now up-and-running. All it needs is for sufficient quantities of good souls to give up a few precious minutes of their lives and engage in some harmless box-ticking. As the rubric explains:
The survey is intended to provide transparency to the intellectual property market by collecting anonymous objective data that is then published without bias.
Last year’s survey benefitted from the active involvement of Solo IP [that's us!] and IPKat and the results were published in the CIPA Journal in April 2012.
With the success of the survey last year we’ve decided to bring it back again, bigger and better. This year’s survey takes into account your expectations and optimism for the future in IP to gain a more comprehensive review of the IP market. The survey allows a greater understanding of the sector and we are hoping to make it an annual affair to create a consolidated view of the sector across the years.
The survey is now available and will run until the 18th February 2013. Once completed, participants can request to receive an email copy of the results. Data is provided anonymously in order to protect the confidentiality of participants and allow for a more rigorous result.
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
Its great to have some help when you start your business. However is it save to rely on free services like Google for your mail or file storage. When its free there is no comeback if its withdrawn or fails. I recently discovered that the Microsoft service I use (Windows Live Sync) for free to access my office PC when away is being withdrawn. This is disappointing when you discover it has failed just as you intend to leave the office and use it. While there was an alternative that allowed me to get away for Christmas, it does make you realise that you can't complain if you free gift is withdrawn. There is no support line to call. You have no contract. They have no obligations to you.
Of course this blog is hosted for free and you probably didn't get this post by email because that is no longer offered either. There is no picture because I cant upload from my hard disk. The power of the Free Men is more powereful than Copyright law.
Essentially the free service is free to fail you. Lets hope our clients are learning this lesson too.
This may sound a rather dismal note for the start of a New Year. However as the Chancellor has been saying we need to invest to grow so lets look a the best options for investing in creating a reliable infrastructure for our businesses. I'm interested in your recommendations
