Sally Cooper in Munich finding that Small is Beautiful

Munich ? December ? Trade Marks ?

From Heather Cowper

But surely Munich = EPO ?

And surely Munich / December = Christmas Markets ?

YES - but Munich in December in 2014 was logo host-City for INTA’s last Conference of the year : “When Trademarks Overlap with Other IP Rights”. The Conference took place in the nicely-named district of Arabellapark. As cold and dense fog were the order of the day, around 350 or so persons eschewed walks in the park – they sensibly stayed indoors and diligently followed proceedings. This is true. From 9.00am on Monday 8th to 6.00pm on Tuesday 9th the focus of interaction was the Conference Hall. A heavy first day worked through “Trademarks and Copyright Law” and “Trademarks and Designs” and a heavy second day worked through “Trademarks and Geographical Indications” and “Trademarks and Unfair Competition Law” and “Trademarks and The Right of Publicity”. For me, the glue that held these Sessions together was the format of a full-time academic beginning the Session and “perspective” Speakers following. There was surprisingly little repetition and a lot of learning and a lot of fun : well done to all Moderators ! Along the way I learned about the Skydisk of Nebra  decision from Germany and the Tripp Trapp chair decision from the CJEU  and Darjeeling Lingerie (a Decision in favour of the Indian GI for tea in Taiwan but a Decision against the Indian GI for tea in Israel) and was given a wake-up-call on what we all (as IP lawyers) owe to the Paris Convention (1883) and the Berne Convention (1886).

Mr Campinos Thanks to Mladen Vukmir

The Conference ended – appropriately - with Antonio Campinos (President of OHIM) looking forward to (amongst many other things) a reduction in fees for users of the Fast-Track Trade Mark Application procedure. And slotted into proceedings was a short (VIP Interview) Session on Trademarks and Patents : yes – we were in Munich after all ! And right at the beginning / present throughout was Jeremy Phillips. He introduced himself as the gypsy violinist – in attendance as Keynote Speaker trusting thereby to enhance the experience of those partaking of the (Conference) feast. He reported just about all of the Conference proceedings on the IPKat blog “in real time” (thereby – to the relief of this writer - making further reporting on content redundant). Indeed, I suspect Jeremy pressed the “post” button on his Address “Overlaid, Overlegislated and Overloaded: Trademarks in the Twenty-First Century” before his Address began (so quickly did it appear on Twitter #INTAMunich) !.

For me, there were two “take-aways”. The first was the pleasure of being at a Conference where trade marks were “a given” : the focus was firmly on the many other IP rights that work alongside trade marks (sometimes overlapping / sometimes not) and Speakers from across the world should be congratulated on underscoring the significant “education” task confronting INTA’s Related Rights Committee. The second is in my notes of the concluding remarks of OHIM’s President Antonio Campinos : that “the majority of businesses are small – not large”. Thank goodness someone said this!

Rule 11 and opening your Client Account

I was pondering (as you do) whether the profession was ready for ABS licensing and client accounts. Back in February we were all told Rule 11 meant we had to have our client accounts open and ready for 2015. See my post at the time.

I was pondering because I happened to notice  a few days ago, on the SRA Question of Ethics page, a note about the operation of client accounts and how evil it was to have the interest paid into the client account because the interest on a general account is office money (at least in SRA land it is - IPREG may have other ideas but I doubt it). In any event the interest on the overpaid sum of £35 that came from an Australian client and which would have been lost in exchange rate differences and banking fees if I had paid it back was going into my client account. Oh woe! Now don't worry that client account has always been IPREG regulated so I wasn't about to get hung drawn and quartered as promised by the helpful Ethics police at the SRA. Even so I got in touch with my Bank (Barclays fortunately not a Building Society) and they have made me honest by directing the interest to my office account. OK so if you have set up your client account in readiness you too might want to check where the interest will go.

Meanwhile the Bar Standards Board have started an escrow service BARCO regulated by the Financial Conduct Authority. If you use that they charge you 1% but it seems to be capped at £250 per transaction. Presumably you have to pay that out of your funds rather than the client's so I'm not thinking of using BARCO myself for that overpaid £35. If you charged the £250 to the client would that be "protecting client money" - the tenth SRA principle.?

Next I heard from ITMA via their Chief Executive's Bulletin today (4 December 2014):

Unfortunately the current banking practice only allows true client accounts to be opened by a profession included in Schedule 3 of the Money Laundering Regulations 2007 and currently the IP profession is not included in this schedule making it difficult for those bound by the new rules to comply. The new Rules are due to come into force on 1st January 2015 and we have written, together with CIPA, to IPReg to request they delay bringing into force the new rules until it is possible for our relevant members to fully comply. We will advise as soon as we have any further information on this matter.

Its very easy to blame "banking practice" and I would be interested if others have found difficulty with the mainstream banks. I didn't and all litigators have needed to have client accounts for a while.

I was surprised to hear that postponement of the rules was being requested on my behalf. The bar has managed to prepare itself and given that we nearly always deal with business clients we should be able to manage a client account or credit risk  by now. Moreover delaying the new regime would presumably knock back those who are ABS and want to offer more co-ordinated business and IP advice to their clients.

Anybody know more about this? Please comment

A visit to CIPA towers with Darts-IP

I had a chance to see where CIPA allow Neil Lampert, our media guru, to chill out in CIPA towers today during the coffee break in the free training seminar (complete with mini-croissants, Belgian chocolates and 2 CPD points) given by Darts IP. I have previously discussed the wonderful statistics you can generate using their carefully analysed data on trade mark decisions.  I am sorry but I managed to sneak out without being given an evaluation form so this is it. Obviously top marks for the quality, comfort and location of the venue (such a shame I don't get to go there more often). The catering  was pretty good too, but then you give me chocolate of such quality and I would say that.

Today they showed us just how finely you could tune your searches by combining options in the box on the left with the Points of Law, Trade Mark Comparison and Goods and Services options across the top. You can find all sorts of information on parties or previous decisions in oppositions involving marks like the pair in front of you. If only the courts were consistent, you could predict the result of your case without going to the trouble of fighting it.

The demonstration was preceded by a talk by Michael Edenborough QC master of European Court trade mark practice. He warned us that OHIM were even more experienced than he was and they could use that experience to defeat you. OHIM can be involved in most cases, but sometimes they are on your side as in the recent Rubik's cube decision of 25 November 2014 which is already in the Darts database (see above) . I highlighted his name because Lucas & Co a trademark firm of great repute had instructed him on that case for which Brian Lucas (CPA) developed the "black cage theory" that with some brilliant legal development by his QC and the fact that OHIM were on the trade mark proprietor's side succeeded in showing that this mark, unlike a LEGO brick, was a completely registrable trademark for so many reasons but mainly because all its functional parts are hidden and a black cage is inherently distinctive. (End of Boast).

The options for subscribers allow some amazing pattern matching. Your mark has three identical letters and a different fourth. You can find all the similar fact cases in any jurisdiction. This is just too smart. Knowing how OHIM and indeed any office does not like to be bound by its own mistakes I wonder how wise it might be to rely heavily on  an obscure precedent from an earlier opposition decision, especially if it is an isolated one. I now know how some adverse parties have found obscure cases to cite.

However even OHIM are trying to be consistent on their similarity of goods assessments and Dart's technicians have managed to do some really smart visualisation of how similar or dissimilar a good might be to other goods. Everybody who has a paying subscription really needs to beg to have the tool for statistics on product similarity added to their pack. Its the perfect way to craft a specification that could lead your mark to the register for a limited specification with much reduced risk of opposition.

If you are learning your craft, Darts detailed analysis of cases will allow you to become an expert in no time at all by finding the matching cases that have gone before you. If you have a subscription, use it. If not you need to grab Gary Cook.

Accounting the Cost

KPMG site

One of the major worries when setting up as a solo practitioner is how to deal with the financial side. Even if you are only borrowing from yourself (or perhaps especially then) you need to keep a careful record of all transactions. My strategy was to buy some accounts software and later recruit an accountant to do the end of year accounts and tax work. I asked for recommendations, visited several firms, sent enquiries to others. It was rather hit and miss. Small business is not that attractive. (It might be different if you are in a smaller local community than the heart of London and you can network with local providers). Since then accounts packages have moved into the cloud and pay by month Software as a Service has become a popular option that feeds our just in time culture. I was therefore intrigued when I received a cold call from Big Brand Accountants KPMG promoting their service which combines everything you need in the financial way from book keeping through VAT returns and payroll to the end of year accounts and tax - all bundled into one neat monthly fee and accessible from anywhere (provided the cloud is still in the sky). Prices start at £150 per month (this year but what about next?) and depend on how much of a burden you are predicted to be!

The accounting package at the heart of it is Xero - a brand I had not heard of before. You could try the Xero software for free to see if you like its approach - but it seems to be able to deal with € and $ as well as £.

The benefit of having an accountant on board when you start should be that things get set up properly. It ought to impress prospective clients too that you are well managed and regulated even if small.  That does seem to worry some transferring clients that have been used to the apparent re-assurance of big firm providers.

Xero Direct

I am not being paid to write this and I am not a user but it certainly looks an interesting and innovative approach to the problem. The idea of having an accountant that you can call with a VAT query without risking another bill seems to address exactly the problems that some small CIPA members were having as reported during Congress.

This type of product could also be beneficial to not so solo firms too. If anyone has has experience of cloud based book keeping or dipped a toe in the water please comment. What do you see as the risks and benefits of this approach?

Small and British: are you feeling busier ...?

More work -- at last

The latest H W Fisher survey of small and medium-sized law practices in the UK reflects the fact that the economy is picking up a bit, with firms in this sector experiencing a reported turnover some 4% higher than a year previously. However, this good fortune (assuming that increased turnover = increased profit) is not spread evenly: this because the turnover of the larger firms within the legal SME sector rose by around 10%. This wouldn't seem to leave much for the smaller firms. Interestingly, litigation is said to have dropped from 36% of the surveyed firms' work to around 26%. I doubt that this would be reflected in the IP sector, where the Intellectual Property Enterprise Court's recently-spawned Small Claims track has apparently been buzzing with activity.

The Professional Meeting

The Anti-Slavery Society Convention, 1840 by Benjamin Robert Haydon

Tomorrow (Bonfire night) there will be an Ordinary General Meeting of the Chartered Institute of Patent Agents Attorneys. The agenda is essentially a vote to allow the entry of new members. The meeting is scheduled directly after the council meeting in the hope that the necessary 10 fellows can be persuaded to stay on and tick the boxes to elect the hopeful new members. I suggested to our esteemed secretary Chief Executive that this was rather a parody of the idea of an ordinary general meeting. That was on twitter here.

The purpose of this blog is to explain what ordinary general meetings were when I first became a member and before  CIPA became a CPD points machine. Members of the profession gathered together to discuss matters of interest to the profession. This would generally be by a chaired debate with some prepared paper followed by discussion from the floor. In this way members of Council were able to learn the views of the profession. Topics on which policy needed to be formed could be debated. A certain amount of learning would take place especially if the papers were well prepared. The papers were published.

It was also important that these meetings were open to everybody. They did not require additional fees. They did not come with free beer, but members might adjourn to a local public hostelry. However now that element is all that remains and without the initial food for thought, we are just left swigging gin and discussing Christmas plans.

When voting for council members, it was always important to see how many OGM they had attended. Were they in touch with the membership?

Now it came to pass that firms of patent attorneys were less keen on their staff departing from the office to attend such early evening meetings. Gradually only unmarried partners would attend and as attendances fell off and the programme planners failed to plan programmes we have what we have now, an OGM that is simply for admitting new members.

Mr Davies would like to rewrite the Charter and bylaws so that he can admit new members without an OGM abolish OGM. Unfortunately, I don't think he understands the principle behind the original plan but he is reading my blog so kudos to him.

If we are to believe the essential truth behind other parodies of council meetings, we must begin to wonder how CIPA is a representative body.

Fortunately, there are other intellectual property organisations such as AIPPI UK that do have meetings that discuss IP policy and developments and no doubt the membership will defect to those.

The default reasons for membership belong mainly to the young who are aspiring to qualify - hence the decision to bring the informals inside the dying shell. The patent examination board and IPReg will continue but one has to doubt the viability of the body that founded them if it doesn't meet. There can be no body without its members and if there is no membership, then the officers have no authority (and no funds).

Is a Fax Machine Essential ?

It appears that my co-blogger is planning to move office and to that end she has been busy working out what needs to be done. I am hoping that she will share with us some of the useful information she gathers in this exciting process.

She asked OHIM whether it was still necessary for representatives to provide a valid fax number for communications. She reports that they said No.

Today I had rather late instructions to file an appeal. It should have been the simplest task to enrich OHIM with 800€ from my deposit account and say that the grounds would follow later. Barely 5 minutes work really. OHIM even provide a very detailed note of how it is supposed to work. Sadly that is not how it does work, due to the delights of the OHIM website.

I really mean it

Once upon a time if you logged into your dashboard and selected a mark, it would be opened in a new tab after asking that infuriating question about whether you wanted to be told that ever again. I have lost count of how many times I have said I don't want to see that message again. That's not the bug I am concerned with.

The bug is that having arrived  in my new tab the header says I am logged in but the record says I am not. The bug seems to be temperamental as its sometimes there and sometimes not. Maybe this is due to the time I have been logged in? To me it seems just to appear to annoy me when I am trying to achieve something.

Now having got to my record there is a button to appeal but it wants me to upload the form. I am a smart bunny, I know where OHIM have hidden the link to the forms at the very bottom of the home page. You can also find a link in that very detailed note. If you are reading this because you have work to do (and a typewriter) here is the link to the Appeal Form.

OK you have the form and you download it and fill it in in Acrobat Reader. Oh no of course you cannot save it, but you can print it and scan it. Now it would be easier just to fax it but I have not got a printer and a fax to hand at the moment. I do however have a full licensed copy of Adobe Acrobat  so that should be simples. I can fill the form and save it and then attach it to the e-communication. No. I fill it and save it but when I attach it, its blank except for my signature. No information on the deposit account I want to take the fees from, no indications of the appellant and the decision. All just blank. Why? It looks just fine on my PC. I try to print it using a pdf printer but the security defeats me again and generates an error message as if I was trying to print a picture of some currency rather than spend it.

All I am doing is a standard obvious action that OHIM should have tested many times. It is months after the website was launched. They tell me how to do it in their tutorial but it does not work that way unless you are prepared to use a typewriter or a fax machine or scanner.

So Sally I am sorry they misled you but I strongly recommend you get yourself a little USB fax modem from Maplin so you can send faxes from your PC. This is the one I have and its a bit of a bore to plug it in instead of the phone but it should work (I hope) or this appeal ain't going to be filed. Just as well I don't leave things to the last day but even so post wouldn't work either.

So come on OHIM its bad enough that I must appeal but at least take my money without quite so much pain. I may cry.