13 October 2008

CDP Training: IP Law Foundation Course York, 31 Oct 2008

Our IP Foundation Course in Bradford on 2 Oct went very well. So well, in fact, that we have decided to run it again in York on 31 Oct 2008. This time we have slightly less space so if you want to come you had better apply early. 

Who should come
This half-day course is intended primarily for solicitors and counsel with general, commercial, civil or commercial litigation practices who do not regard themselves as IP specialists but who nevertheless find themselves advising start-ups and other small businesses on how best to protect their investment in brands, design, technology and the creative works. However, it should also be useful to practitioners who intend to specialize in IP and technology law but who have not yet done much IP or technology work. And even for experts it would be useful revision. In Bradford we had a very good mix ranging from a very experienced IP specialist to trainees. We have  aimed to make that course the best introduction to IP law on the market and priced at £25 + VAT we do not believe that anyone could offer better value except perhaps as a loss leader.   

What will the Course Cover?
Essentially everything that can conveniently be fitted into 3 hours allowing for breaks and discussion. The course will be divided into 3 sessions:
  • an overview on IP covering terminology, mine and  various other people's definitions of IP, legislative and judicial policy, the IP system (TRIPS, the treaties, WIPO and institutions), sources of law, legislation, national and regional IP offices and the courts;
  • obtaining intellectual property rights and exploiting them:contrasting IPR that arise automatically such as copyrights and design rights with registrable rights such as patents, trade marks and designs, the patent, trade mark and design registration processes, the cost of patenting and its advantages and disadvantages compared to trade secrets and design rights and the need for IP insurance, licensing and joint ventures and top tips for clients; and
  • enforcing IP rights: how IPR are infringed, the methods of enforcement, remedies, CPR Part 63, PD63 and the Patents Court Guide, threats actions, costs of litigation and methods of funding and alternatives to litigation such as the UDRP for domain names and advisory opinions on validity and infringement from the UK-IPO.
There will of course be tea and comfort breaks and time for questions and discussion.

What about Handouts?
This is where we score over the competition. We don't just give delegates copies of PowerPoint slides. Every delegate receives a 22 page resource pack containing the following materials:
  • a table showing how each type of intellectual asset (i.e. brands, design, inventions etc)  is protected in the UK and elsewhere;
  • extracts from relevant statutes and cases on subsistence and infringement of IP rights;
  • a table of UK, European and international institutions governing particular types of IP right;
  • a table showing relative costs of enforcement in the UK and other industrial countries
  • a discussion on the Protocol on Interpretation of Art 69 of the European Convention and the changes brought about by the insertion of a new art 2;
  • comparisons with the US doctrine of equivalents;
  • extracts from The Code of Practice for pre-action conduct in intellectual property dispute
  • s.74A and s.74B of the Patents Act 1977, and 
  • overview of the Uniform Domain Name Dispute Resolution Policy.
In addition there will be a 4 page glossary covering everything from the Berne Convention to the WTO Agreement and a lost of Internet addresses for the main treaties, directives, statutes, practice directions and other materials such as the Code of Practice to the Chancery and Patent Court guides..

To facilitate comprehension there will be plenty of questions for discussion such as
"If a client came to you with a domain name dispute, in what circumstances would you advise him not to use the UDRP or similar scheme"

"Would you always advise a start-up to apply for a patent and if so why?"

Who will present the Course?
I will. Many of you are aware already that I know my stuff because you have instructed me. Those of you who don't know me, 
  • take a look at my profile above 
  • look around my website, 
  • read my articles on the IP/IT Update blog and website, in print and elsewhere; 
  • look up my reported cases in the Fleet Street and other reports and on the Internet; and
  • my decisions as a domain name panellist on the WIPO website.
Gower Ashgate are about to publish my practical guide on enforcing IPR for small businesses and creative and innovative individuals.

How will this Course benefit you?
A half-day course will not make you into an IP expert but it will give you a really good start. It should be a lot easier to understand the text books, statutes and cases when you have to look up the law in a hurry. You should be able to appreciate correspondence from patent agents and solicitors on the other side a lot better. You will be able to instruct specialist counsel more effectively and make better use of their advice.   It will qualify you for slightly more advanced courses such as our introductions to patents, copyrights, trade mark and design registration which we shall present later in the year as well as advanced courses on licensing, IP litigation and other topics.   All of these courses function as building blocks for a qualification which we shall ask a university to accredit.

CPD Accreditation
I can award  2 1/2 hours CPD credits for solicitors and barristers.

The course will take place at then offices of Sachedina Solicitors
3 Westfield House
Millfield Lane
Upper Poppleton
YO26 6GA
Upper Poppleton is very easy to reach by road. It is close to the A58 and A1237 and there is abundant parking on site. We are very grateful to Jane Sachednia for lending us her boardroom for this course.

After we ran this course in Bradford on 2 October 2008 we got some really good unsolicited reviews.   "Thank you very much for the course yesterday" said one delegate, "a fairly broad and very informative overview of the issues surrounding IP, which is just what I was looking for!".   Another said "Thanks for the course yesterday, it was particularly informative and provided a good basis of information."   All our feedback was good.

How to Book
Space is limited to 12 including me so if you want to come you had better book soon.   You can apply for a place right now by filling out the electronic form below.   Alternatively, you can print out the form below and post it to together with your cheque for £29.38 payable to NIPC Ltd. for the attention of
Ms. Toni Wilson.
The Media Centre
7 Northumberland Street
Tel 0870 990 5081


IP Foundation Course
Sachednia Solicitors, Westfield House, Millfield Lane, Upper Poppleton, York, YO26 6GA 
2 Oct 2008, 14:00 - 17:00

Please reserve me a place on the above course. I enclose my cheque for £29.38 payable to NIPC Ltd.

Name of Delegate:.........................................................................................

Position: .......................................................

Firm/Company/Other Organization: ...........................................................

Postal Address: ..........................................................................



Postal Code .................................................... 

Country (if not UK) .........................................

Tel .......................................................................   

Fax  ......................................................................

Email ....................................................................    

Website ................................................................

Signed ..................................................................    

Date ...............................................

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Leeds Inventors' Club: How will the economic downturn affect inventors

Because of the exceptional events in the money and capital markets over the last few days Ged and Stef have decided to change our advertised talk.   We were going to get Barbara Greaves of YABA to talk about angel funding but everything that she will have said will now have to be revised.   Instead, I have been asked to speak and my topic will be "How will the Economic Downturn affect Private Inventors?"   

I have given a lot of thought to how the downturn will affect innovation as you will see from my latest post to my IP/IT Update blog. Demand generally will be weaker. Banks will be even less willing to fund new business ventures than they were before, at least in the short term. However, in the longer term they will probably find that some of the projects of the little chaps and lasses who consult me are a good deal safer than some of the hair brain products in which they have poured our deposits until quite recently. Finally, as the government has to stump up many billions of our axes to recapitalize the banks do not expect quite so much from Business Link, LEGI and even the lottery fund in future.

Because a lot of people will be in severe economic difficulties over the next few years expect some too-good-to-be-true advertising from invention promoters and other get-rich-quick Johnnies over the next few years.   These are to treated with the utmost caution.   

However, it is not all bad news. It is probably only the OECD countries which will slow down over the next few years.   Other countries such as Brazil, India, China and Russia (the so-called BRICs states) will continue to grow rapidly. Their exports may be hit badly by our downturn but they have enough internal demand to keep motoring. They may be very difficult to enter but they offer enormous opportunities for good poducts and services.   They will also become increasingly important as investors and research partners.

Finally, there will still be business to be done here. Even in the great depression many important new products were invented
  • the yo-yo in 1929
  • frozen food, the jet engine and sellotape in 1930
  • the electron microscope in 1931
  • the Polaroid and parking meter in 1932 (maybe the latter best forgotten)
  • FM radio and stereo recording in 1933
  • cats' eyes and Monopoly in 1934
  • nylon, canned beer and radar in 1935
  • voice recognition systems in 1936
  • photocopying  in 1937, and
  • ballpoint pens and instant coffee in 1938
    Source "20th century inventions About.com: inventors)
And there will be plenty of new products and services from the next 10 yeas to add to them.

So do come along (with your brickbats if you will though I would prefer flowers or chocs :-)) to Leeds Central Library at 18:00 on Wednesday 15 October to hear yours truly sound off.

12 October 2008

Welcome to IP North West

P Yorkshire is not alone. We now have a companion blog for IP news in Greater Manchester, Merseyside, Lancashire, Cheshire and Cumbria called IP North West. This will cover workshops and seminars, inventors' club meetings, clinics, decisions of judges sitting in Manchester and Liverpool on IP cases, news and gossip and all the sort of things that go on our side of the Pennines that are covered by IP Yorkshire.  In the theare they say that what Manchester does today the world does tomorrow.   Well in IP maybe it is what Yorkshire does today.   But never mind, as a native of Manchester albeit of Yorkshire parentage I can add that Lancastrians have never been backwards in coming forwards. Happen!

8 October 2008

Trade Marks and Passing Off: Tubzee Ltd v Safron Foods Ltd and Others

This was a trade mark and passing off case between two Halifax kulfi makers. 

The claimant company, Tubzee Ltd., had registered a number of signs as British and Community trade marks for kulfi including the following:
It complained that the defendant, Saffron Foods Ltd and its directors had infringed its registered trade marks marks by adopting packaging that included
Two members of the public said that they had been misled into purchasing Saffron's products by such get-up.

A claim was launched by Tubzee in November 2007 and came before Judge Behrens sitting in Leeds last week (Tubzee Ltd v Safron Foods Ltd and Others [2008] EWHC B15 (Ch) (7 Oct 2008)). The judge accepted the consumers' evidence and found that there had been trade mark infringement and passing off.   He also found that Saffron's directors were personally liable as joint tortfeasors though his reasoning on the point is very sketchy.

Now I have blogged this case even though there was not much law in it for two reasons. First, it was heard in Leeds and the more publicity that is given to IP cases tried in the North the better. Secondly, it was a case in which the successful party was represented not by solicitors but by patent attorneys, namely Franks & Co. of Sheffield. I might add that the claimant's counsel was once Kate Kennedy but one would have to be a St Andrean to understand the significance of that.

2 October 2008

Glossary of Intellectual Property Terms

Berne Convention

Berne Convention for the Protection of Literary and Artistic Works: international agreement establishing Berne Union and providing for copyright protection of artistic and literary works of contracting parties' nationals on a reciprocal basis.


The sign by which a product or service is recognized in the market 

Chancery County Court

The Central London County Court or a county court that si attached to a chancery district registry (e.g. Birmingham, Bristol, Caernarfon, Cardiff, Leeds, Liverpool, Manchester, Mold, Newcastle upon Tyne and Preston County Courts).

Community Design ("CD") 

A design that is protected under the Community Design Regulation. It may be a registered Community design or an unregistered Community design.

Community Design Regulation 

Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ EC No L 3 of 5.1.2002, p. 1). The legislation that provides for Community designs.

Community Trade Mark ("CTM")

A trade mark that is registered with OHIM under the provisions of the Community Trade Mark Regulation.

Community Trade Mark Regulation 

Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark. The legislation that establishes OHIM and provides for the registration of trade marks as Community trade marks.


A duty not to disclose or use secret technical, commercial or otherwise sensitive information that is entrusted to another ("the confidante") expressly in confidence (ie when the confidante signs a confidentiality or non-disclosure agreement) or in circumstances giving rise to an obligation of confidence (ie discussing an invention with a patent agent)..


Treaty or other international agreement between sovereign governments. Includes Berne, Paris and Rome Conventions, Washington Treaty, European Patent Convention, Patent Co-operation Treaty, Madrid Protocol and Hague Agreement.


Exclusive right to copy, issue copies to the public, lend, rent, perform, communicate to the public or adapt original artistic, dramatic, literary or musical works, broadcasts, films, sound recordings or typographical arrangements of published works. These are "economic rights". Some authors also have moral rights in respect of their works.

Creative Work 

Work of art or literature. Works of art include plastic arts such as collages, drawings, etchings, engravings, graphics, images on a computer, paintings, sculptures, media such as animations, films, sound recordings and videos, musical works such as a score and performing arts such as ballet, drama, singing and other musical performances. Works of literature include not just novels and poems but also compilations of data, mathematical tables, street directories, traders' catalogues and computer software.


The shape or configuration of an article or part of an article. The topic really breaks into functional designs and ornamental designs.

Design Right 

The right conferred by an unregistered design right. Not to be confused with unregistered Community designs or registered designs.

Designs Directive

Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs OJ L 289, 28.10.1998, p. 28–35: Council directive harmonizing national registered design law. Implemented in the UK by The Registered Designs Regulations 2001 which amended the Registered Designs Act 1949 of the member states.

Economic Rights 

Rights relating to the exploitation of a copyright or right in performance as opposed to a moral right. They include reproduction, publication, renting, lending, performing, communicating the public and adapting.

European Patent Convention ("EPC")

Agreement between over 30 European countries establishing the European Patent Office and providing for the grant of European patents that stand alongside national patents in each of the contracting states,

European patent 

Patent granted by the European Patent Office for one or more countries that are party to the European Patent Convention on behalf of the contracting government(s).

European Patent Office ("EPO") 

Intergovernmental agency established by the European Patent Convention to grant European patents on behalf of the governments( s) of one or more of the contracting parties to that Convention to take effect alongside national patents.

Functional Design 

The design of a mechanism, electrical circuit or other functional object. 

Hague Agreement

The Hague Agreement Concerning the International Deposit of Industrial Designs: international agreement to facilitate registered design protection by facilitating applications to multiple design registrations forma single filing. The EU is party to this agreement but the UK is not as yet..



Violation of an intellectual property right as in infringement of a patent, copyright or trade mark. It is, however, permissible to refer to a "breach of confidence".

Intellectual Asset 

Investment in brands, design, technology or creative work 

Intellectual Property ("IP")

Collective name for the bundle of rights that protect intellectual assets at law. They include patents, trade marks, copyrights, rights in performances, registered and unregistered designs.

Intellectual Property Right ("IPR") 

Legal protection of an intellectual asset: i.e. patent, trade mark, copyright, registered design, right to bring an action for passing off or breach of confidence

Madrid Protocol

Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks: international agreement to facilitate trade mark registration permitting applications to trade mark registries in several contracting countries form a single filing.

Moral Right 

Right to preserve the dignity and integrity if a copyright work or performance and the reputation of the author or performer such as the right to be identified, the right not to have work treated derogatively and right not to have other work attributed to the author.

OHIM (Office for Harmonization in the Internal market) 

European Community trade mark and designs registry established by the Community Trade Mark Regulation and the Community Design Regulation.

Ornamental Design 

The appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.

Paris Convention

Paris Convention for the Protection of Industrial Property: international agreement establishing the Paris Union and providing for the legal protection of the inventions, trade marks and designs of contracting parties on a reciprocal basis and the suppression of unfair competition.

Passing Off 

Common law action (occasionally called "palming off" in USA) and closely related to unfair competition whereby a trader whop uses a name, mark or get-up that is similar to that of an established trader can be liable for any damage that he or she causes by the use of that sign.

Patent Agent 

In the UK and most other countries, an interchangeable and less misleading term for patent attorney. In the USA, a professional who is not a lawyer who applies for patents other registered rights, advises on intellectual property and does most of the work of a patent attorney.

Patent Attorney 

In the USA, a lawyer specializing in patent and other intellectual property work. In the UK and some other countries a professional with some specialist legal knowledge who applies for patents and other registered IP rights, advises on the law, represents clients in the UK-IPO, EPO and OHIM and sometimes appears in the Patents and Patent County Courts, Chancery Division and Chancery County Courts. Patent agents have recently started to use the term "patent attorney" because they feared that they were perceived as somehow inferior to US patent lawyers.

Patent Co-operation Treaty ("PCT")

International agreement to facilitate patent applications permitting applications to patent offices in several contracting countries from a single filing.


A monopoly granted by a state of the manufacture, distribution, importation use of a new product, the use of a new product or the distribution, importation or use of products made form such process.

Patents County Court 

A county court designated by the Lord Chancellor for patents and designs litigation. The Central London County Court s the only county court that is so designated.

Patents Court 

Judges of the Chancery Division specializing in patents, registered and registered Community design and semiconductor topography litigation


A performance by an actor, dancer, singer, musician or other performing artiste.

Publication Right 

Right of a publisher of a previously unpublished work that is out of copyright at the time of publication to prevent copying, further publication, renting, lending or adapting the work. 

Registered Community Design

A new design having individual character which is registered with OHIM under the Community Design Regulation.

Registered Design 

A new design having individual character which is registered with the UK Intellectual Property Office under the Registered Designs Act 1949 as amended. Designs registered with OHIM under the Community Design Regulation are known as registered Community Designs.

Right in a Performance 

The right of an actor, dancer, musician, singer or other artiste not to have his or her performance broadcast, filmed or taped without his or her consent. Also, the right of a broadcaster, film or recording studio who has contracted with the performer to broadcast, film or tape the performance to object to anyone else's broadcasting, filming or taping the performance. These are economic rights. Performers now also have moral rights in relation to their performances.

Rome Convention 

Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations: international agreement providing for protection of broadcasts, live performances and films and tapes of such performances of nationals and residents of contracting states on a mutual basis.

Semiconductor Topography 

The design of the layout of a semiconductor chip which is protected in the UK as unregistered design rights by The Design Right (Semiconductor Topographies) Regulations 1989. See also The Washington Treaty.

Trade Mark 

A sign capable of being represented graphically, consisting of words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, that is capable of distinguishing the goods or services of one supplier from those of others. NB. "Trade mark" is spelt as two words in the UK and as one in the USA.

Trade Mark Agent 

In the UK and most other countries, an interchangeable and less misleading term for trade mark attorney. In the USA, a professional who is not a lawyer who applies for trade marks advises on intellectual property and does most of the work of a trade mark attorney.

Trade Mark Attorney 

In the USA, a lawyer specializing in trade mark work. In the UK and some other countries a professional with some specialist legal knowledge who applies for trade marks and designs, advises on the law, represents clients in the UK-IPO and OHIM and sometimes appears in the Chancery Division and Chancery County Courts. Trade mark agents have recently started to use the term "patent attorney" because they feared that they were perceived as somehow inferior to US trade mark lawyers.

Trade Marks Directive 

First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks: Council directive harmonizing the trade mark laws of the member states. Implemented in the UK by the Trade Marks Act 1949.

TRIPs (Agreement on Trade-Related Aspects of Intellectual Property Rights)

Annex 1C to the WTO Agreement. An agreement for WTO member states to provide minimum legal protection for intellectual assets, to comply with the Berne, Paris and Rome Conventions and the Washington Treaty and to provide civil remedies and criminal penalties for infringement.

UDRP (Uniform Domain Name Dispute Resolution Policy) 

Form of alternative dispute resolution for disputes over generic top level domain names (those ending in .com, .org, .net, .info et cetera) incorporated by reference into every contract for the registration of such a domain name.

UK Intellectual Property Office ("UK-IPO") 

New name for the Patent Office. Executive agency established to examine and grant patents, trade marks and registered designs for the UK under the Patents Act 1977, Trade Marks Act 1994 and the Registered Designs Act 1949.

Utility Models 

Short term protection for new inventions similar to a patent but usually granted on less rigorous examination available in most of Europe including Ireland where they are called "short term patents" but not yet in the UK. Also known as "innovation patents" in Australia. The UK protects many inventions that would qualify for utility model protection by design rights.

Unregistered Community design 

Automatic 3-year EU wide protection from copying of a design that could have been registered as a registered Community design or as a registered design in the UK.

Washington Treaty

Washington Treaty on Intellectual Property in Respect of Integrated Circuits: treaty providing for mutual protection of semiconductor circuit designs of residents and nationals of contracting parties. Not yet in force but implemented by several governments including HMG.


World Intellectual Property Organization: UN specialist agency for intellectual property, custodian of most of the IP Conventions and important domain name dispute resolution service provider. NB The initials are pronounced separately "W", "I", "P", "O" – never as "wipe-oh" as though it were a brand of window cleaner.

The World Trade Organization ("the WTO")

A multilateral international organization consisting of most of the world's developed and developing nations regulating trade and development.

WTO Agreement

Marrakesh Agreement establishing the World Trade Organization ("the WTO") and regulating trade between WTO members.