21 February 2021

What happens to European Union IP Rights after Brexit?


Although one of the long term objectives of Brexit is to reposition our trade with the wider world, British businesses of all sizes including many in Yorkshire and the Humber retain important operations in the 27 remaining member states and vice versa. Arts 54 to 61 of the agreement by which the UK withdrew from the European Union ("the withdrawal agreement") provide for the continued legal protection of those operations. On 19 Feb 2021, I was invited to discuss those provisions and their implementation to the Barnsley Business Village.

Many businesses applied for EU trade marks or registered Community designs rather than UK ones because they offered protection in 28 member states and not just one.  Those rights ceased to apply to the UK at 23:00 on 31 Dec 2020 when the transition or implementation period provided by art 126 of the withdrawal agreement expired but they remain in force in the 27 member states.  However, owners of EU trade marks should be aware that their registrations may be revoked under art 58 (1) (a) of the EU trade mark regulation "if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use."  

Art 54 (1) of the withdrawal agreement entitles the owner of an EU trade mark, registered Community design or Community plant variety to a comparable British trade mark, registered design or plant breeder's right without a fee or any fuss unless he or she opts out of that right. The Trade Marks Act  1994, Registered Designs Act 1949 and the Plant Varieties Act 1997 have been amended to provide for such rights.   Applicants for EU trade marks and registered Community designs which were not determined before 31 Dec 2020 have an additional period of 9 months to apply for a UK trade mark or registered design offering the same protection.

One very important change that occurred on 31 Dec 2020 is that courts in the United Kingdom are no longer EU trade mark or Community design courts.  Actions for infringement of EU trade marks, Community designs or Community plant varieties have to be brought in an EU member state such as the Republic of Ireland,  As one of my colleagues in chambers is a senior counsel of the Irish bar (the equivalent of a QC) who qualified as a trade mark attorney before reading for the Irish and English bars, my chambers can continue to represent British holders of EU trade marks and Community designs in the EU.    

i discussed these and other matters in my presentation to the Barnsley Business Village on 19 Feb 2021,  Earlier on Friday, I had been invited by Helen Wong to update my contribution to her book, Doing Business After Brexit A Practical Guide to the Legal Changeswhich she first published in 2017.   Articles and presentations that I have already written on the subject are as follows:
Anyone wishing to discuss this article or the topic generally may call me on 020 7494 5252 during normal business hours or send me a message through my contact form

10 February 2021

Launching The BradfordNetwork

Bradford City Hall
Author Curtis Malonowski Licence CC BY-SA 3.0 Source Wikipedia, Bradford
 












Jane Lambert

On 9 Feb 2021, I launched the BradfordNetwork with an online talk entitled What every Business in Bradford needs to know about Intellectual PropertyBecause of the public health emergency, the network used Webanywhere Ltd's conferencing platform eventanywhere.  I was introduced by Steve Ding who is Head of Global Talent at Webanywhere.  I have known Steve for many years. When I first made his acquaintance, he was Chief Executive of Bmedi@.

Bmedi@ was the forum for much of the creative sector in West Yorkshire and later West and South Yorkshire.  It had a very diverse membership ranging from brand consultants to web designers. It included some of the brightest, most enterprising and talented individuals I have ever met.   Bmedi@ offered a wide range of services but the high points for me were the Third Thursday meetings at the Bradford Business and Innovation Centre with speakers from business, government and the universities on everything from 3D printing to Web 2.0.   Later Bmedi@ held monthly breakfast meetings at Barnsley Business and Innovation Centres at Wilthorpe and Cudworth and at the Digital Media Centre in Barnsley town centre, 

Although Bradford is overshadowed to a certain extent by Leeds it has a lot going for it.  Its university offered one of the first computer science degree courses in the United Kingdom and its School of Management is one of the country's oldest business schools.  The National Science and Media Museum is linked to the Science Museum in London, the Museum of Science and Industry in Manchester and the National Railway Museum in York.  It has a very young population and many of its residents have come from outside the UK.  Some of them have founded businesses which have become household names around the world.

Third Thursday worked well because the discussions took place over wine, pizza and Bombay mix. Obviously, we could not do any of that online but the platform has a breakout facility called the "exhibition hall" which is the next best thing.  Each breakout space (called a "table") has space for up to 4 occupants.  I went to the nearest table and was joined by Steve Ding, Alison Orr of Inngot and Robin Cramp of the Screen Industry Growth Network.

In our brief conversation, Steve outlined his hopes for the network.  Bmedi@ disbanded in 2011. It is still missed by many of its members. With the economy in deep recession, the need for the services that Bmedi@ used to offer has never been greater. Though it will be necessary to hold online meetings for the next few weeks Steve hopes eventually to have live meetings in a lecture room with pizza, wine and Bombay mix. I am very happy to help make that happen.

Among the services that Bmedi@ offered were patent clinics in Bradford and Barnsley,   I have never stopped holding monthly clinics on the second Tuesday of every month at the Barnsley Business Village in Wilthorpe. I should be very happy to revive the Bradford clinic.  Having held its first meeting, the BradfrodNetwork needs to announce a second in the next few days. After that, a constitution should be adopted and a committee elected.

Anyone wishing to discuss this article should call me on 020 7404 5252 during office hours or send me a message through my contact form.

13 June 2020

Demand for my IP Clinic - Flash in the Pan or Straws in the Wind

By Steve Partridge, CC BY-SA 2.0,
https://commons.wikimedia.org/w/index.php?curid=9270036

















Jane Lambert

I have been holding monthly IP clinics in Yorkshire since 2004.  I have therefore experienced the economic downturn which resulted from the banking crisis, the slow recovery, and the 20.4% slump in GDP which the Office for National Statistics announced yesterday (see GDP monthly estimate, UK: April 2020, 12 June 2020 ONS).  I have found attendance at my monthly IP clinic in Barnsley to be a pretty good bellwether of the state of the economy.

This week for the first time in months I had three enquiries.   As I explained in Barnsley IP Clinic 14 April 2020 I have had to offer these clinics online.  That enables me to see clients at a mutually convenient rather than a two-hour session at the Business Village in Wilthorpe.  I also hold a similar clinic at the Menai Science Park in Anglesey which is now online (see Online Support for Businesses in Wales 13 April 2020 NIPC Wales).  However, until this week I had received only one enquiry and that came from North Wales),

What is encouraging about this week's enquiries is that they were all about new business ventures.  Obviously, I can't disclose who they were or anything about their businesses but they were interested in legal protection for their brands and technology. The conversations on branding led to trade marks and the discussion on protecting technology led to patents and alternatives to patents.  I also mentioned trade mark and patent searches and how to obtain them, clinics at the Sheffield and Leeds Business and IP Centres run by CIPA and others, and how and where to find a patent or trade mark attorney.

All three clients were enthusiastic and motivated.  They were aware that they were going into business at a very bad time but they had researched their markets and were sure that their businesses would grow as the economy revives. Now I may be wrong about this but I think they will succeed. I also think there are others like them from the Shetlands to the Scillies.  A flash in the pan?  Perhaps!  But I think they are straws in the wind.  I say that because something very similar happened in about 2011 and 2012. There were dips of inactivity now and then but as the economy picked up so dud attendances at my clinic.

Now for a tip.  At my clinics and inventors' clubs, I am often asked about T & C.  These are about managing risk which is why terms and conditions designed for one business may not necessarily suit another.  They are meant to dovetail with following best practice and public liability and other insurance. 

Just outside Wakefield, there stand the ruins of a medieval castle which was also about managing risk.  There was a moat to keep out wild animals, sturdy vagabonds, and other undesirables.  That was enough to deter most threats to the castle and its inhabitants.  To fight off besieging armies there was a curtain wall from which defenders could fire arrows and pour boiling all or molten lead on their attackers.  If the wall was breached, there was a keep with thick walls where the defenders made their last stand as Macbeth tried to do against Macduff.

Terms and conditions are the last line of defence.  Contract terms cannot be used to exclude certain types of liability.  The first line of defence is best practice.  That equates to the moat.   The second line is insurance. That is like the curtain wall.  Terms and conditions can sometimes be used to regulate risks that cannot be insured against and where best practice fails.   They should, therefore, be drafted with the needs of the business in mind with the insurance policy and manual if best practice to hand.

Anyone wishing to discuss this article or any of the topics mentioned in it should call my clerk on +44(0)7986 948267 or send me a message through my contact page while this emergency continues, I shall gladly respond by phone, Zoom or email.

12 April 2020

Barnsley IP Clinic 14 April 2020

By Badics - Own work, CC BY-SA 3.0, https://commons.wikimedia.org/w/index.php?curid=35492068

















Jane Lambert

On the second Tuesday of every month, I hold an intellectual property clinic at Barnsley Business and Innovation Centre at Wilthorpe between 16:00 and 18:00.  The next one is due to take place on Tuesday, 14 April 2020.  Obviously, I can't visit the Centre and neither can those who require advice but there is no reason why the clinic cannot be conducted by phone or video link.

As I said in IP Services during the Emergency 23 March 2020 NIPC Inventors Club, IP is now more important than ever:
"If we are ever to stop Covid-19 in its tracks it will be through the efforts of universities and biotech and pharmaceutical companies around the world whose research will have to be funded. Much of that funding will come from the private sector which will require legal protection for the revenue streams from which it will recoup such investment."
Very much the same is true of the design and development of medical devices, personal protection equipment, infection tracking and logistics software and all the other contributions that will be required to counter the menace.

Much of that work will be done by small businesses and in some cases individuals.   As I also said in the article, those businesses will need the best possible advice on patenting, licensing and technology transfer too and they will need them on affordable terms.  I cannot carry all the answers in my head but I can introduce you to attorneys, design consultants, specialist accountants and solicitors and others who can help take your project forward,   I described all the services that I offer in Barnsley Pro Bono IP Clinic 12 Nov 2019 7 Nov 2018,

So if you want to attend my online clinic please, complete the Initial Advice and Sihnposting form as soon as possible.

28 February 2020

TIPSY Dinner for Mr Justice Birss

Author General Tire Source Wikipedia General Tire 

























Jane Lambert

Mr Justice Birss was the guest of honour at  The Intellectual Property Society of Yorkshire ("TIPSY") dinner at the DoubleTree by Hilton hotel at Granary Wharf in Leeds on 27 Feb 2020.  Once again it was organized by Mr Andrew Clay, a solicitor specializing in intellectual property law in Harrogate. The meal with its choice of three dishes for each course was excellent. I chose soup, salmon and crumble together with white and red wine, mineral water and coffee.

After dinner, Dick Waddington pf Appleyard Leeds introduced our guest and invited him to speak on the Assessment of Damages for IP Infringements.   Disarmingly the judge acknowledged that he had not chosen the most riveting topic for an after-dinner speech.  Having said that, his talk was as interesting and entertaining as any on the subject. The only hissing he received was when he mentioned his Scottish birth and Lancastrian education.  He had contemplated (but then thought better of) appearing in his old school tie which included red roses in its design. However, he revealed a Yorkshire connection in that his mother had moved to Ilkley.

The speaker began with a reminder that intellectual property infringement was a tort and that an award of damages in tort was supposed to put the injured party in the position he or she would have been had the wrong not been committed. Easy to say but not always easy to apply.  There were two qualifications to that rule
  • An account of profits which is restitutionary or perhaps fiduciary in nature is available as an alternative to damages; and
  • Damages for the misuse of confidential information is a remedy for a breach of an equitable duty rather than compensation for a tort.
Mr Justiice Birss reminded his audience of the House of Lords' decision in General Tire and Rubber Company v Firestone Tyre and Rubber Company Ltd [1976] RPC 197, [1975] 1 WLR 819, [1975] 2 All ER 173, [1975] FSR 273 which considered different ways of assessing damages.  One way was to calculate the loss of sales.  Another was to compute the royalties that would be agreed by a willing licensor and a willing licensee bargaining at arms' length,  There were however difficulties with both approaches.  Litigants were very different from parties wanting to do business with each other and there are circumstances when a claimant would have incurred losses from sales of a non-infringing item even if there had been no infringement.

The judge discussed such cases as Wrotham Park v Parkside Homes  [1974] 1 WLR 798 and Attorney General v Blake [2001] Emp LR 329, [2000] EMLR 949, [2000] UKHL 45, [2001] 1 AC 268, [2000] 4 All ER 385, [2000] 3 WLR 625, [2001] IRLR 36, [2000] 2 All ER (Comm) 487, [2001] AC 268, [2001] IRLR 37 where the object was to impose a cost on the defendant for breaching a restrictive covenant or a duty of confidence rather than delivering compensation. He also considered  Morris-Garner & Anor v One Step (Support) Ltd. [2019] AC 649, [2018] WLR(D) 260, [2018] 3 All ER 659, [2018] 1 Lloyd's Rep 495, [2018] UKSC 20, [2018] 2 All ER (Comm) 769, [2018] IRLR 661, [2018] 2 WLR 1353.

Points that the judge mentioned briefly included alternative ways of computing FRAND royalties - extrapolation or comparables - the right of a successful claimant to request disclosure of a defendant's sales so that he can make an educated choice as to damages or an account of profits, assessing damages liberally and the innumeracy of many lawyers.  Only at the very end did the judge mention the Enforcement Directive and then only in passing.

Mr Justice Birss reminded the audience that small claims track IP cases could now be brought in Leeds and other major cities outside London and he urged his audience to use them.  If there was demand for IP litigation outside London the courts would arrange for multitrack cases to be heard there.  In the Q and A that followed, one questioner asked about punitive damages in IP, another mentioned a rumour that the UK planned to withdraw from the Unified Patent Court agreement while Mr Clay speculated on a claim for a battleship fitted with a tine whistle.  I raised my hand and gesticulated wildly but Dick Waddington did not see me.

It was a very good evening and I look forward to the next one which is likely to be in June with Michael Silverleaf QC as the guest speaker.   Anyone wishing to discuss this article or damages generally may call me on 020 7404 5252 or send me a message through my contact page.

7 November 2019

Barnsley Pro Bono IP Clinic 12 Nov 2019

Flowers from a happy client




















Jane Lambert

Not all my clients send me flowers after a free 30-minute consultation at the Business Village at Wilthorpe in Barnsley but several have done so in the past.  This photo of me holding an unexpected bouquet from a more than satisfied client was taken at the Business Village's reception desk.

On the second Tuesday of every month between 16:00 and 18:00, I hold up to 4 free consultations of 30 minutes each with entrepreneurs, inventors and other creative people who require advice or assistance on IP law.

Enquiries can be of any kind.  For instance, an inventor of a new product may want to know whether it is patentable. I can't give him or her a complete answer in 30 minutes but I can tell the inventor the basic principles of patent law, advise about searches, how and where to apply, the likely costs in the Intellectual Property Office and European Patent Office and applications under the Patent Cooperation Treaty, the advantages of instructing a patent attorney and how they can be found and free or cost-effective business services through the Business and IP Centres at Leeds and Sheffield.

Sometimes the client needs services from another professional such as a product design consultant or a specialist insurance broker.  I can help point him or her in the right direction,  I have been running this clinic for the last 12 years and I have built up an enormous list of contacts in Yorkshire and beyond over that time.

My next clinic will take place on 12 Nov 2019 and I have slots between 17:00 and 17:30 and between 17:30 and 18:00.  If you want to take advantage of one of those slots fill in my Barnsley IP Clinic form and send it off as soon as possible.  I will give you an appointment as soon as I hear from you.  Alternatively, you can call the Business Village on 01226 249590 and ask to speak to Megan Winslow. If we can't fit you in this month we can offer you an appointment at the December clinic.

The Business Village is about a mile and a half from the centre of Barnsley and on several bus routes.  It is not far from the M1 and has plenty of free parking in the Village itself or in neighbouring streets. If you want to discuss this article or my service generally call me 020 7404 5252 during office hours or send me a message through my contact form. 

3 October 2019

IP Training in Doncaster

Doncaster Minster
Author: Frees  Release of copyright CCC 1.0   Source Wikipedia Doncaster


















Jane Lambert

Yesterday I delivered a half-day workshop on intellectual property law to a prominent South Yorkshire law firm at its officers in Doncaster.  My audience consisted of contentious and non-contentious law practitioners in company/commercial, dispute resolution and employment. Their experience ranged from head of department to trainee.

The timetable and syllabus were as follows:

09:00 - 09:15   Registration and set-up

09:15 -10:00    Basic Concepts and Terminology: What is intellectual property? What is the difference between intellectual property and intellectual assets? What are intellectual assets? Registerable rights and non-registerable rights, Intellectual Property Office, EU Intellectual Property Office. European Patent Office. World Intellectual Property Organization, World Trade Organization. Intellectual Property List: Patents Court, Intellectual Property Enterprise Court, Small Claims Track, Chancery Division, County Court. Hearing officers. Remedies: injunctions, delivery up, account and inquiry, costs. Interim injunctions, search orders, freezing injunctions, blocking orders. Licensing: non-exclusive, exclusive, sole. Reports of Patent Cases, Fleet Street Reports.

10:00 - 10:45  How the Law Protects Brands: What is a brand? Law of Passing-off: Reckitt and Colman Products Ltd v Borden Inc.and Others [1990] 1 WLR 491, [1990] 1 All ER 873, [1990] UKHL 12, [1990] RPC 341. Trade mark registration: what is a trade mark? Trade Marks Act 1994, Directive (EU) 2015/2436, Regulation (EU) 2017/1001, Madrid Protocol, TRIPS, distinctiveness, specified goods and services, infringement, application process, opposition, revocation and invalidation Geographical Indications of Origin extended passing-off, certification and collective marks, EU legislation for foods and beverages, Other ways of protecting brands

10:45 - 11:00   Break

11:00 - 11:45  How the Law protects Designs Distinction between ornamental design and functional design Ornamental Design Registered Designs Act 1949,  Directive 98/71/EC Regulation 6/2002, novelty, individual character, registered Community designs, unregistered Community designs, infringement Functional Designs Part III Copyright Designs and Patents Act 1988, infringement Artistic copyright Surface decoration, artistic craftsmanship, Semiconductor topographies

11:45 - 12:30  How the Law protects Technology Common law obligation of confidence Trade Secrets Directive, Subsistence, Breach, Patents Patents Act 1977, European Patent Convention, Proposed Unitary Patent and Unified Patent Court, Patent Cooperation Treaty, Subsistence, Specification, Infringement, revocation, Computer software exception Plant Breeders' Rights

12:30 - 13:15   How the Law protects Creativity    Copyright, Part I of Copyright Designs and Patents Act 1988, Berne Convention, Subsistence, Restricted Rights, Exceptions, Infringement, Licensing    Performances Part II of 1988 Act 

Should any other firm in Yorkshire (or indeed elsewhere) desire such training, please call my clerk, David, on 020 7404 5252 and he will assist you further.