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 !

Taking Madrid to the USA

Okay, we're talking trademark registrations here and Madrid protocol applications administered by the World Intellectual Property Organization (WIPO). The trouble with this excellent system for applicants is that when you designate the US you invite trouble and for this reason MARQUES held a seminar recently in London to try and show the way out of this problem.

Sally Cooper went along and this is her tale of her Pilgrim's progress

As someone with roots in the North-West of England, I naturally read the letters MGS as Manchester Grammar School. As someone engaged in helping businesses with registration of trade marks, I need to amend my thinking and read the letters MGS as Madrid Goods and Services Manager (being a tool provided by the International Bureau on its website at www.wipo.int). During the course of a very interesting afternoon, André Ntamack (being Head of the Quality and Training Section of the Madrid Registry at WIPO) provided the statistics that : (1) During the period from January 2015 to February 2016, some 60.37% of Madrid Applications from Applicants in the UK contained Irregularities of one kind or another.

(2) During the period from January 2015 to September 2016, the breakdown of users of the MGS showed 560,922 sessions in total but only 3,616 of these originating in the UK : 0.06%

André’s hypothesis is that more use of MGS by people based in the UK will reduce the number of Irregularities – both generally and with regard to Applications designating the US.

A key feature of MGS according to Andre’s presentation was its ability to check Acceptance / Rejection of a particular term for goods or services in a designated Contracting Party : his slide showed functionality as follows :

This looked exciting – particularly as Karen Strzyz of the Office of Policy and External Affairs at USPTO had included in her (extensive) list of “where things go wrong when the US is a designated Contracting Party” the fact that (for example) USPTO does not accept terms in brackets. So this morning, on looking at the functionalities of MGS – assisted by its Tutorial - I was disappointed to find that being able to check Acceptance / Rejection of a particular term for goods or services in a designated Contracting Party (aka dCP) will be with us “soon”. [Editors note : you do now get an answer but an awufl lot of terms seem to be answered dCP Status unknown]

Both MARQUES and USPTO must be congratulated for taking on the challenge of bringing this Seminar to London. I ended the afternoon feeling I’d sat through the first round of a boxing match where there were four parties in the ring, namely, the International Bureau, the USPTO, the UK Attorneys and the UK Holders.

Gavin Stanton of Pennington Manches put forward the excellent case for preferring a UK Application to an EU Application as the basic Application for an International Registration and may well have expected (as I did) there would be more discussion on drafting of specifications. [Editors note : a basic Registration is always preferable  to an Application any day, but the UK IPO do allow you to supply the form by email whereas you still have to fax or post it to EU IPO. I may have just been very unlucky but the EUIPO did make a bit of a howler losing a country for me, whereas I always know that I can speak to someone in Newport if something has gone wrong]

But André for the International Bureau and Karen for the USPTO combined to deliver the message that a successful outcome (for all International Registrations designating the US) depends on understanding both the ways of the Bureau and the ways of the Office. The ways of the USPTO include (i) having some 500+ examining attorneys with something like 80% working from home and (ii) an initial refusal rate that’s 84% for local (TEAS) Applications (whereas the figure for Applications filed through the Bureau is 97%) and (iii) all examining attorneys being trained both to deal with Applications filed through the Bureau and to back up refusals with the same quantity and quality of evidence as applies to local (TEAS) Applications.

The US has been a party to the Madrid Protocol for 13 years (since November 2003) and maybe it’s not been appropriate for a Seminar of this kind to take place until the USPTO has had the chance to run through a full cycle of Applications and (for example) see how many Applications getting onto the US Register via the Madrid Protocol cope (or don’t cope) with the “Declaration of Use” requirements (at 5th/6th anniversary of US Registration and at 9th/10th anniversary). I think the Seminar probably holds a record for the number of times those presenting extended the invitations “Let me know more about that” and “Please get in touch”. There’s definitely a need for dialogue and this blog does my bit : I look forward to the International Bureau reporting on the uptake of upcoming functionalities on MGS !

  [Editors note : the TMClass  from EU IPO offers similar functionality but is not quite as smart about reminding us to eliminate the brackets. My top tip when filling in the MM2 is to take advantage of the possibility of drafting a US specific specification which is narrower and definitively within the US guidelines as well as something you are certain of having early use for. It's also a jolly good idea to have a friendly solo practitioner stateside who can efficiently deal with classification edits. With some specifications of goods they are inevitable, and negotiation is nearly always necessary. I'm thinking of a recent encounter with a specification for filters]

Sally is surprised by European wisdom on her beauty care regime

Our Sally Cooper is a right fashionable lady and she's always up there at the cosmetics counter studying what product is in vogue today to make sure she is right up there with the celebrities with the very latest beauty care. You can imagine, therefore, that she was somewhat horrified to find that at the European judcial bench the view is very different. Here is her blog:

Sometimes when you are reading – a few words give pause for thought. This morning it was an observation of the General Court that “fashion is not concerned with beauty care products”. These words can be found at the end of paragraph 24 of the Decision in Trinity Haircare AG v European Union Intellectual Property Office (EUIPO) [Case T 453/15 : 15th September 2016]: admirably reported by MARQUES. It’s an invalidity action where (for much of the case) the Applicant for invalidity appears to be trying to push “ vogue ” towards being generic for (any and all) goods in Class 3 e.g. to have “ … those cosmetics are vogue … “ sit alongside phrases like “ …… it hoovers up dust … “ and “ I’d like to xerox that page … “ and “ … pass me the sellotape … “.

 I used the excellent search engine of BAILII to check that I’d not missed the word “generic “ in the Decision. The fact I hadn’t isn’t too surprising given that argument centred on Article 7(1)(b) (“not distinctive”) and Article 7(1)(c) (“descriptive” and “other characteristics”) rather than Article 7(1)(c) (“customary in current language or in bona fide and established practices of the trade”).

But “fashion is not concerned with beauty care products” ? Reading a little more of paragraph 24 provided the Court’s explanation : “EUIPO … is entitled to state that beauty care products are not fashion products, given that consumers buy them for their ‘result’, that is to say, the fact that the product moisturises well, deodorises well or has a pleasant scent ……… EUIPO rightly notes that the notion of fashion is connected with the permanent change linked to every season and every year. That is not the case with the goods at issue, in respect of which change is rarely linked to the change of season or year but to innovation, that is to say, the appearance of a new product in a position to satisfy the consumers’ unmet needs”.

I was hoping to find that “fashion is not concerned with beauty products” was a weak translation : but the Decision is only available in one other language – French – where the text is “la mode ne concerne pas les produits de soins et de beauté”.

I thought I might find a Tribunal of three male judges – but it’s two male and one female.

I was wondering whether I could simply delete “fashion is not concerned with beauty products” from the end of paragraph 24 but that doesn’t do away with the preceding explanation which (surely) is WRONG ? Try typing “cosmetics for winter” into a search engine : even VOGUE advertises cosmetics linked to season !

A few words gave pause for thought – I wish they hadn’t !

Dutch firm, Trinity Haircare sells very fashionable hair colouring products as VDT vogue de TRINITY. I think Sally may use the pink.

Trade Mark Bully - Claim Form shock - IP Pro Bono Scheme

Well maybe only as far as IPEC

It's a well-known myth that legal advice is unaffordable.

It's also  generally assumed that lawyers won't help you for free in any commercial matter.

This is now wrong with the launch of a new service today 17 October 2016 to provide free assistance to those who can't afford it in the UK intellectual property scene.

This post is not for the intellectual property professionals, it's for those people who need help but believe they can't afford it and are tempted to do nothing when they receive aggressive letters from lawyers about some issue of a name, unauthorised use of a photograph or design or, worse still, something that mentions the evil patent word.

The IP pro bono scheme was launched today by Sean Dennehey, Acting

Sean Dennehey

Chief Executive of the Intellectual Property Office. The service will not be provided by the IPO, who grant trademarks designs and patents and also provide mediation services and also operate a rather sterling phone helpline. The service providers will be fully qualified members of the Chartered Institute of Patent Attorneys, (who are providing the administration - good guys) the Chartered Institute of Trademark Attorneys or the Intellectual Property Lawyers Association

If you need help the first thing is to go to the new website http://www.ipprobono.org.uk/  download an application form and outline your problem. If you don't have access to a computer or scanning facitlites get to one of the PATLIB libraries for help.

It's never a great thing to be litigant in person, if you can get some professional assistance. For matters relating to intellectual property, particularly claims that are made in the Intellectual Property Enterprise Court any one of the above organisations can help you find paid advice. This scheme is for those who find themselves threatened or abused but don't have the resources to cope.


While the Daily Mail and others have highlighted the problems of County Court Judgements for debt, a default judgement in a trademark infringement matter can also result in a charging order on your house that means you can't sell it or other similar civil remedies. There are people in this position because they couldn't or did't get help. The purpose of this scheme is so that it doesn't happen again. Even when you find you are in the wrong, there are ways to minimise the pain and most IP owners would prefer those solutions rather than silence.

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!