1 December 2013

Design Right and Registered Designs: Utopia Tableware v BBP Marketing

This was a claim for registered design and unregistered design right infringement in the new Intellectual Property Enterprise Court ("IPEC"). Both the claimant Utopia Tableware Ltd of Chesterfield and the first defendant BBP Marketing Ltd of Mirfield supplied glasses. At the start of the litigation Utopia applied for and won an interim injunction (see Utopia Tableware v BBP Marketing [2013] EWPCC 15 (21 Jan 2013)). However, the evidence on which it relied was found to have been concocted and Birss J referred the matter to the Attorney General under CPR 81.18 so that he could consider committal proceedings (see Utopia Tableware Ltd v BBP Marketing Ltd and Another [2013] EWPCC 28 (30 May 2013)). The action came on for trial before Mr Recorder Campbell on 24 Sept 2013 and he delivered judgment on 12 Nov 2013 (see Utopia Tableware Ltd v BBP Marketing Ltd and Another [2013] EWHC 3483 (IPEC) (12 Nov 2013)).

The Registered Design
Utopia had registered the following design with the Designs Registry under registration number 4021276 pursuant to the Registered Designs Act 1949:

The Design Right
The design document in which the design was recorded appears below.

Infringing Articles
The following photograph shows the glasses sold by each of the parties.  Utopia's appears to the left and BBP's to the right.

The Issues
The defendants admitted that they had copied the exterior dimensions of the claimant's design but not its interior measurements nor the wall thickness since their glasses were made out of polycarbonate rather than glass.  Having admitted copying of the exterior dimensions the defendants could hardly deny copying of the unregistered design or claim that their glass produced on an informed user a different overall impression from the registered design. Their defence was that the claimant's design was commonplace and lacked individual character.

Mr Recorder Campbell found for Utopia on both points.

As for the "commonplace defence" the judge directed himself at paragraph [58] to identify the relevant design field for the purposes of the Act.  He decided at [69] that it was beer glasses.  Comparing
"The shape of the profile of the outer surfaces of the Claimant's Vessel, that profile in particular including, above a waisted section, an elongated tulip shaped section which tapers inwardly as it approaches the rim of the Claimant's Vessel,"
to similarly shaped glasses distributed by Amstel, Carlsberg and Peroni to promote their beers he concluded that that feature was not commonplace though other features were. As design right can subsist in any aspect of the design of part of an article the Recorder found that that was enough for design right to subsist.

Relying on Judge Birss QC's decision in Samsung Electronics (UK) Ltd v Apple Inc [2012] EWHC 1882 (Pat) (9 July 2012) which I discussed in  Apple v Samsung - compare and contrast 28 Aug 2012 NIPC law the Recorder identified the "informed user" as a beer drinker, held that the designer of a waisted glass had limited design freedom and compared Utopia's glass to the Amstel, Carlsberg and Peroni glasses. Having regard to those factors he concluded that the design did have individual character and was therefore valid.

He therefore held that both Utopia's design  right and the registered had been infringed.

Despite the submissions of Sir Robin Jacob, the leading scholars on intellectual property law, the Intellectual Property Bar Association and many others the government seems hell bent on its proposal to criminalize registered design right infringement. Had that proposal been law it is possible that the executives of two well established and highly regarded local companies would have been prosecuted, This question whether the registered design had individual character was difficult enough for an experienced intellectual property practitioner to resolve. It is hard to imagine lay justices and juries attempting a similar careful analysis. In a case such as this where the claimant's witnesses had acted particularly badly a conviction would have been intolerable.

22 October 2013

Northern Ballet wins the Achievement in Marketing Category of the UK Theatre Awards

The performing arts are an important industry in the UK. According to the report Private Investment in Culture 2007/08 published by the Arts & Business section of Business in the Community culture was worth £7.7 billion to the UK economy in 2007.  It may reasonably be assumed to be worth somewhat more now. Northern Ballet is astute as to the value of the arts to business and hosted a breakfast meeting for businessmen and women on the 23 Sept 2013 which attracted patent attorney Debbie Slater from Urquhart-Dykes & Lord as well as me (see Jane Lambert "The Things I do for my Art: Northern Ballet's Breakfast Meeting" 23 Sept 2013 Terpsichore).

During Q & A at the meeting the company's chief executive officer Mark Skipper said that while there was once a time when patronage of the arts was an act of philanthropy it was now one of mutual self-interest.  The reason for that response is that performing arts companies are brands in their own right.  In the case of Northern Ballet this was recognized yesterday by their winning the marketing category at the 2013 UK Theatre awards (see the company's press release "Northern Ballet scoops national marketing award"  21 Oct 2013).  Northern Ballet was granted that award for the success of its communications campaign for Northern Ballet’s tour of The Great Gatsby.
"More than 50,000 people watched a performance of The Great Gatsby in 9 venues throughout the UK including a sell-out run at Sadler’s Wells Theatre. The campaign generated in excess of £1.2 million of ticket sales exceeding financial target by £150,000."
Incidentally, I saw that ballet when it opened in Leeds and reviewed it in "Life follows Art: the Great Gatsby" 8 March 2013 Terpsichore.

Our host at the breakfast meeting was Laraine Penson, Northern Ballet's Director of Communications.  She collected the award on behalf of her company at a luncheon at The Guildhall yesterday.  At the ceremony she said:
"The arts are full of creative communications professionals who are working very hard in a competitive market and difficult economy. I accept this award on behalf of the communications team at Northern Ballet. This award recognises the achievements of the whole company because if the production and performance didn’t meet the audiences expectations all our work would be for nothing.”
The press release notes that Northern Ballet has been shortlisted for the cultural category of the Welcome to Yorkshire "White Rose Awards". As everyone knows one can't wish an actor good luck. You say "Break a leg!" instead. But you can't really say that to a dancer.  My ballet teacher tells me that the balletic equivalent is "chookas" though others say "toi-toi".  Let's wish Northern Ballet both.  As I experienced recently, for only the second time in my lifetime, an institution from our region is capable of true artistic greatness (see "Realizing Another Dream" 15 Sept 2013).

Further Reading
David Wilson "Pythagoras and Pliés – Mathematical Beauty" 5 March 2011 Dave Tries Ballet
Jane Lambert "Cracking Nuts - Copyright in Choreography" 24 Nov 2011 IP Northwest
Jane Lambert "Ballet and Intellectual Property - my Excuse for reviewing 'Beauty and the Beast'" 31 Dec 2011 IP Yorkshire
Jane Lambert "Northern Ballet's Ondine" 14 Sept 2012 IP Yorkshire
Jane Lambert "From Bar to Barre" 20 March 2013 Terpsichore
Jane Lambert "Intellectual Property and Ballet" 20 April 2013 Terpsichore

14 October 2013

Business and IP Centre National Network

Leeds and Sheffield Central Libraries are part of The Business & IP Centre national network.  This is a collaboration between the British Library, the Intellectual Property Office and Birmingham, Leeds, Liverpool, Manchester. Newcastle and Sheffield PATLib or patent information centres. I blogged about the launch of the network in "Enterprise and Libraries: a New National Network of Business & IP Support" 8 March 2013 NIPC Inventors Club.

As I said in that article, the establishment of those centres is part of a two-prong strategy to replace the regional development agencies with local enterprise partnerships and local Business Link offices with libraries.  In its press release "Enterprising Libraries: ten library projects receive Arts Council funding to support the development of local businesses" 3 Oct 2013, the Arts Council explained that
"Enterprising Libraries supports local economic growth by turning libraries into spaces for the development of business ideas, providing coaching, advice, meeting spaces and IT support for local businesses and entrepreneurs."
Funding for the project is provided by the Arts Council, British Library and the Department for Communities and Local Government.

Sheffield has already appointed Roger Tipple as an innovator in residence and he addressed the Sheffield Inventors Group last week.  I mentioned one of the topics that he discussed in his talk in "Another Look at Crowd Funding" 13 Oct 2013 NIPC Inventors Club.  Maria Lampert of the British Library will give two talks on intellectual property on the 6 Nov between 09:30 and 11:30 and 12:30 and 14:30 respectively.

30 August 2013

Geographical Indications - "If it's outside Yorkshire it's not worth ..................!"

The first day of August is Yorkshire day. Originally it commemorated the battle of Minden 1759 at which the 51st Regiment of Foot distinguished itself but it is now a celebration of all things Yorkshire. My home town of Holmfirth celebrated the day with all sorts of events as you can see from the Holmfirth Yorkshire Day Facebook page. I think that there were more Yorkshire flags around town for Yorkshire day than there were union flags for the royal wedding or even HM's diamond jubilee.

And why not. Yorkshire is a grand place, isn't it.  In the words of the Yorkshire Airlines sketch "If it's outside Yorkshire it's not worth bloody visiting. And the same goes for food and drink, right.  So how can you make sure that what you eat and sup actually originate from God's own county.

Well art 22 (2) of TRIPS requires members of the World Trade Organization to "provide the legal means for interested parties to prevent:
(a) the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good;
(b) any use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention (1967)."

For the purposes of this article geographical indications are defined by art 22 (1) as "indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin."

Traditionally the UK has protected geographical indications by the registration of collective and certification marks under s.49 and s.50 of the Trade Marks Act 1994 and the law of passing off (see Bollinger v Costa Brava Wine Co Ltd [1960] Ch 262, Vine Products Ltd v Mackenzie & Co Ltd [1969] RPC 1, John Walker & Sons Ltd v Henry Ost & Co Ltd [1970] 1 WLR 917 and Taittinger v Allbev Ltd [1993] FSR 641). These are now reinforced by Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs (OJ 14.12.2012 L343/1).

This regulation provides three types of protection:
  • Protected designation of origin ("PDO") which covers agricultural products and foodstuffs that are produced, processed and prepared in a given geographical area using recognised know-how;

  • Protected geographical indication ("PGI") which covers agricultural products and foodstuffs closely linked to the geographical area where at least one of the stages of production, processing or preparation takes place in the area; and

  • Traditional speciality guaranteed ("TSG"} which highlights traditional character, either in the composition or means of production.

Art 13 (3) of the Regulation requires  member states to take appropriate administrative and judicial steps to prevent or stop the unlawful use of PDI and PGI that are produced or marketed in their territories. 

Applications for registration of a product are made to the competent authority of any of the member states which in the case of the UK means the Regional and Local Food Team, Food and Family Group at the Department for Environment, Food and Rural Affairs ("DEFRA"), Area 8E, 9 Millbank, Nobel House 
17 Smith Square, London SW1P 3JR. Tel: 020 7238 6623 Fax: 020 7238 5728. The application then proceeds according to the following schematic:

So what Yorkshire goodies have achieved protected status under any of those schemes? Not a lot as it happens.  Swaledale and Swaledale ewes cheese and Yorkshire forced rhubarb so far though an application has just been published for Wensleydale cheese.

Geographical indications will be one of the topics I will discuss in my seminar on Branding - Trade Marks, Passing off, Domain Names, Geographical Indications in London on 25 Sept for which there are still a very small number of places. If you want to discuss how to achieve PDO, PGI or TSG status for your local produce or indeed to object to someone else's application for such status contact my  my clerk Stephen on 01484 599090 or fill in my contact form.  You can also follow me on twitter, Facebook, G+, Linkedin and Xing.

30 July 2013

Forthcoming IP Related Events in Yorkshire

Yorkshire Puddings     Source  Wikipedia

The Intellectual Property Office has just updated its calendar of events.   The following are taking place in Yorkshire:
Here are some more that I just happen to know about:
Next, there are the regulars:
Finally, there are the patent clinics run by the Chartered Institute of Patent Agents at Leeds and Sheffield Central Libraries and my clinic between 10:00 and 12:00 on the second Tuesday of every month at Barnsley Business and Innovation Centre.

If you want to know about IP events elsewhere in the UK check out the IPO, CIPA and ITMA websites. If anybody wants a speaker from our chambers for an IP related event please contact my clerk Stephen on 01484 599090 or fill in my contact form.

10 July 2013

Practising the Dark Arts in Leeds and Sheffield - roll up to be enlightened

Leeds Inventors Group

A patent is granted for inventions that are new and involve an inventive step.   An invention may be new to you and to everyone else you know but if someone somewhere in the world dreamed it up before you, you don't get your patent. If by some chance you do get a patent and your invention turns out not to have been new you stand to lose your patent despite the fortune you may have paid in professional, official and renewal fees to get it. So searching should be important to every inventor.

Searching should also be important to anyone who may be accused of infringing the patent. If he or she finds that the invention has been anticipated or that it was obvious then the patent would be invalid. And if the patent is invalid there is nothing to infringe.

Searching for patents is a dark art practised by patent agents, librarians examiners and others at midnight on moonless nights in Armley cemetery with their familiar (an immortal cat called Ginger who is himself something of an inventor) after dancing anti-clockwise round a computer in a pentagon.

However, two of them have broken ranks.  Ged and Stef will share their secrets with you at a Patent Searching Workshop at 18:00 this evening at Leeds Central Library. There are still one or two places left so if you want to find out about this topic then now's your chance. You can register for the event through Eventbrite and I hope that at least some of my instructing solicitors will do just that.

Sheffield Inventors Group has already had its July meeting - a fascinating talk by Pat Ross of Creative Genie on identifying your USP. Another dark art perhaps.   You can find my write-up at "Identifying your USP - the Overlap between Design and Invention" 9 July 2013 Inventors Club

IP Litigation in Leeds - Past, Present and Future

Source Wikipedia 

Unlike Lancashire, Durham and Northumberland, Yorkshire did not have a palatinate court before the Courts Act 1971. Consequently no intellectual property or other chancery litigation could be conducted in Leeds until after the Durham and Lancaster Palatinates Courts had merged with the Chancery Division . After that merger, Judge Blackett-Ord and his deputies Judges Fitzhugh and O'Donoghue heard chancery business in Leeds as well as Liverpool, Manchester, Newcastle and Preston. Those judges did not spend all their time in the High Court. They also sat in the county courts and even in the Crown Court.

When Judge Blackett-Ord retired in 1987 the government of the day considered the abolition of the chancery jurisdiction in the North altogether.  Chancery practitioners in Leeds and Manchester under the leadership of my deputy head of chambers Peter Keenan and supported by James Allen and John Behrens (who were then the leading and indeed practically the only chancery practitioners in Leeds) produced alternative proposals to which I contributed the economics section. These were accepted by the Lord Chancellor who appointed Sir Richard Scott as Vice-Chancellor of the County Palatine of Lancaster. In that role Sir Richard sat on at least one interim applications (or motions) day and some of the more important trials in Leeds.

There had always been a number of building societies in West Yorkshire. The Building Societies Act 1986  allowed them to demutualize and become banks. As most of the other great cities of the North of England declined with the contraction of manufacturing Leeds found a new role as a financial centre. Those financial institutions and the businesses and professional practices that supported them required sophisticated legal advice on all aspects of commercial law locally. Local demand for commercial legal services catapulted firms like Booth & Co, Dibb Lupton, Hammond Suddards, Hepworth & Chadwick and Simpson Curtis into major international practices.

Several of those firms had excellent intellectual property and technology lawyers such as Richard Sutton and Simon Chalton at Dibb Luton and Dai Davis at Hepworth & Chadwick. They trained many other good IP lawyers in Leeds. While most of their work went to London some of it was remained in Leeds. As the only IP practitioner outside London at that time much of it came to me.

S.61 (1)  and paragraph 1 (i) of Schedule I to of the Senior Courts Act 1981 allocated intellectual property cases to the Chancery Division. S.6 (1) (a) of the Act established the Patents Court as part of the Chancery Division while s.62 (1) and assigned to it
"such proceedings relating to patents as are within the jurisdiction conferred on it by the Patents Act 1977, and such other proceedings relating to patents or other matters as may be prescribed."
S.287 (1) of the Copyright, Designs  and Patents Act 1988 enabled the Minister of Justice to
"designate any county court as a patents county court and confer on it jurisdiction (its “special jurisdiction”) to hear and determine such descriptions of proceedings—
(a) relating to patents or designs, or
(b) ancillary to, or arising out of the same subject matter as, proceedings relating to patents or designs,
as may be specified in the order."
Only the Edmonton and Central London County Courts have ever been designated as patents county courts and there has only been one county court for the whole of England and Wales at any one time.

CPR 63.2 (2) requires patents, registered and registered Community designs, semiconductor topography and plant varieties claims to be brought in the Patents Court and Patents County Courts. All other intellectual property cases must be brought in the Chancery Division (which of course sits in Leeds) and any county court where there is also a chancery district registry (which includes Leeds County Court) pursuant to CPR 63.13. 

Until 30 Sept 2010 the Patents County Court was almost as expensive as the Patents Court. In its report "The Enforcement of Patent Rights" of November 2003, IPAC (the Intellectual Property Advisory Committee) reported at page 50 that the average cost of an action in the Patents County Court was between £150,000 and £250,000. Where the claimant was in Yorkshire there were considerable cost savings in litigating in Leeds.

That advantage disappeared on 1 Oct 2010 with changes to CPR Parts 63 and 44 that expedited the procedure and limited the costs of litigation in the Patents County Court (see my article on the "New Patents County Court Rules" 31 Oct 2010 NIPC law). With the new small claims track for IP cases which was launched on 1 Oct 2012 there was even less incentive to litigate in Leeds (see Jane Lambert "The New Small IP Claims Jurisdiction" 5 March 2012).

However, this may change. The Patents County Court is now very busy with long waits for case management conferences and trial dates.   S.17 (1) of the Crime and Courts Act 2013 establishes a single County Court for England and Wales with national jurisdiction that can sit anywhere pursuant to Schedule 9. Paragraph 4 of the Patents Court Guide already provides that:
"If the parties so desire, for the purpose of saving time or costs, the Patents Court will sit out of London."
Paragraph 1.5 of the Patents County Court Guide contains a corresponding provision. There is no reason why the Minister of Justice should not appoint one or more circuit judges or recorders with experience of patents to hear IP cases in Leeds or indeed anywhere else in England or Wales for that matter. Similarly, there is no reason why a district judge should not be appointed to hear small IP claims in Leeds or other towns and cities.

Although I have now joined 4-5 Gray's Inn Square, I still live in Holmfirth, I can still be consulted at the Huddersfield Media Centre and I can still appear for you at short notice at the Leeds Combined Court Centre. Should you wish to discuss this post please  complete my contact form or by call me on 01484 599090 or 0113 320 3232..

8 June 2013

Advanced Manufacturing Research Centre's Factory 2050

Images: Bond Bryan from the AMRC website

The University of Sheffield Advanced Manufacturing Research Centre (AMRC) with Boeing describes itself as "a world-class centre for advanced machining and materials research for aerospace and other high-value manufacturing sectors." It claims to be "a partnership between industry and academia, which has become
a model for research centres worldwide.".

Membership of the AMRC is open to companies which wish to participate in its research programmes.  There are two tiers of membership:
  • Tier 1: for a subscription of £200,000 per year, Tier 1 members get a seat on the board and thus an opportunity to influence the direction of future research, to participate in, and obtain the results of all generic projects and an opportunity to specify any number of specific projects which are presented to the board for ranking and approval as funds become available; and
  • Tier 2: for a subscription of 30,000, Tier 2 members participate in, and obtain the results of all generic projects, have privileged access to the AMRC’s resources and capabilities and representation on the board by a single board member.
According to David Parkin of the Yorkshire Business Desk, the Centre has recently secured £43 million funding for a state-of-the-art research factory (7 June 2013). Known as "The AMRC Factory 2050", it is said to be "the UK’s first fully reconfigurable assembly and component manufacturing facility for collaborative research, capable of rapidly switching production between different high-value components and one-off parts." Rotherham Business News describes it as "the World's most flexible factory" (6 June 2013).

This new project should provide opportunities for businesses throughout South Yorkshire and beynod.  With a member living in Yorkshire we are well placed to advise those businesses on intellectual property, licensing, and joint ventures and to provide representation in negotiations (see "Supporting Yorkshire Business" 22 May 2013 4-5 IP & Tech blog). Those services include the monthly pro bono clinic at Barnsley BIC which you can access by clicking the contact form or by calling us on 01484 599090 or 0113 320 3232.

21 May 2013

What could be done with the Bradford Odeon

Bradford Odeon in 1937 Source Wikipedia

The Bradford Odeon is a magnificent building set between the Alhambra Theatre and The National Media Museum in one of England's handsomest cities. Like much of that great city the Odeon has seen better days. It closed in 2000 and by at least one account it is in a terrible state of repair (see Will Kilner "Former Odeon 'unsafe' says survey", Bradford Telegraph & Argus, 29 Sept 2008. There have been calls to pull it down - even though there is already a massive derelict area of the city centre where a shopping centre was supposed to be - and the building has been saved largely by the efforts of BORG (Bradford Odeon Rescue Group), its allies and supporters.

Recently the burghers of Bradford enjoyed two bits of good news. First their football team won an important match at Wembley (BBC Sport 18 May 2013). Secondly, the local authority has acquired the Odeon for £1 (Rachel Covill "Odeon set to transfer to the Council" The Business Desk 1 May 2013). The question that now arises is what should be done with that magnificent building.

Here is my suggestion offered tentatively by an outsider albeit a good friend and neighbour of the city of Bradford. How about turning the building into an arts centre to celebrate the cultural diversity of your great city?  There is a model for such a centre in Tottenham (another community with a rich cultural diversity and a football club) namely the Bernie Grant Arts Centre.  

I visited the Centre last Saturday with a friend from Bradford who was already in London  for the football. I was there for to see Ballet Black as I greatly prefer ballet to the spectacle of 22 men and a ref chasing a ball around a field - a tedious exercise if ever there was one. You can see my review of the performance in "Why Ballet Black is Special" Terpsichore 20 May 2013.

Ballet Black performed in a very comfortable auditorium - by which I mean there was plenty of leg room - but there was much more to the Centre than that. There was a restaurant called the Blooming Scent, serving jollof rice from West Africa, jerk chicken from Jamaica and chips from London, whose proprietor, Gina Moffatt, has been honoured by the Prince of Wales and an enterprise centre with plenty of interesting local businesses. 

Now that I am spending a lot of time in London I hope to get to know the Centre and offer it my support in the way that I have supported entrepreneurs in Yorkshire with clinics, clubs, newsletters and blogs like this. But I shall never forget where I have come from.   If ever the transformation of the Odeon building - or any other Bradford business - needs the sort of help and advice I can offer I and my colleagues will be there for it.  And I now have lots of great colleagues to help me.  

If anyone wants to discuss this article call me on 0113 320 3232 or 01484 599090 or fill in my contact form. You can also follow me on Facebook, Linkedin, twitter or Xing.

15 May 2013

Patent Box and R & D Credits: Dan Brookes's Slides

Tax Relief for Innovation: Patent Box and R & D Credits Regime by Dan Brookes of BDO 

I introduced the patent box and our guest speaker in "Leeds Inventors Group: Patent Box and R & D Credits" 4 May 2013. Here are his slides.

We had a good meeting on 8 May 2013 and although we were a little low on inventors we had rather more accountants and lawyers in the audience.  We were particularly pleased to welcome Ros Beattie of Company Solutions and Jordi Farré Gasol of Barcelona who is currently working with Schofield Sweeney of Leeds.  Ros knows more than most about start-ups having been chair of Bmedia. She is now contributing her experience to the Business Enterprise Fund.

In the questions and answers session after the talk, I asked "what happens to the tax if a patent is revoked? Must the tax be repaid?  This was a question that I had raised in similar presentations at Daresbury and Liverpool the previous month.  Dan did not know the answer off the top of his head but he promised to look it up.   This is his reply:
"Vince and I have spoken about the query you addressed with us at our respective events in Liverpool and Leeds. The attached link to HMRC manuals appears to infer that HMRC take the view that there will be no retrospective clawback of patent box benefits where it is clear that the company has claimed on a patent that has been granted by a qualifying patent office, even in the situation that down the line events take place which means that sales of product are no longer covered by the patent. In this scenario benefits are denied going forward but there is no retrospective clawback of relief.
I hope this is helpful."
It is indeed helpful and my thanks to Dan and Vince Walker of the Manchester office of BDO for their trouble.

A lot of useful information on the patent box and tax law relating to IP generally can be obtained from Intellectual Property Tax which is edited by Anne Fairpo of Atlas Tax Chambers.  Atlas merged with 4-5 Gray's Inn Square just about the time I joined the set.  Anne is also one of the contributing editors to IP Finance

If anyone wants to discuss this article or IP or tax generally you can call us in Leeds on 0113 320 3232, Huddersfield on 01484 599090 or London on 020 7404 5252.   You can also contact us through our message form.

4 May 2013

Leeds Inventors Group: Patent Box and R & D Credits

The patent box is a tax concession to encourage businesses to invest in research and development in the UK which came into force on 1 April 2013.  As  one of the few sets of chambers with expertise in tax as well as intellectual property we have been touring the country with our good friends in BDO and Jackson & Canter.

We have already held one workshop on the patent box in Liverpool on 29 April 2013 at which Vince Walker and I gave talks. You can download our presentations from "The Patent Box Workshop: Liverpool Inventors Club" IP North West on 3 May 213.   

There will be a similar workshop at Leeds Inventors Group which will take place at Leeds Central Library, Calverley Street, Leeds, LS1 3AB on 8 May at 18:00.   My presentation will be very much the same as at Liverpool but the the main speaker will be Dan Brookes tax director of BDO's office in Leeds whose face appears above.

If you want to discuss the patent box or any aspect of patent law call us on  0113 320 3232, 01484 599090 or 020 7404 5252 or send a message through our contact form. You can also follow me on Facebook, Linkedin, twitter or Xing.

13 April 2013

Envestors to operate YABA

On my Inventors Club website, I described a business angel as  
"a wealthy individual who wishes to invest in a new business. Typically, he or she may well have already built up and sold a business and will therefore have acquired skills, knowledge and experience that can be shared with the new business. According to the British Business Angels Association ("BBAA"), the industry association for business angels, a typical investment will be between £10,000 and £750,000 in return for which the investor will expect a proportionate share of a new company's capital and maybe a seat on its board. The investment may be made by the angel individually or as part of a syndicate of angels and other investors."
I added that most business angels belong to networks some of which are regional and I referred to the Yorkshire Association of Business Angels ("YABA") as an example.  I also wrote a little primer on angel investment in "On the Side of the Angels" on my former chambers website on the 8 July 2011,

"Additionally, as of 1 April 2013, Braveheart’s wholly-owned subsidiary Envestors Limited has acquired the rights to operate the Yorkshire Association of Business Angels (‘YABA’) from Yorkshire Association of Business Angels Limited and will combine this with the YABA secretariat, previously operated by VFM.
Scott Haughton, a director of Envestors, said: “YABA has been adapting its business model to develop its longer term sustainability. Envestors is ideally placed to power the growth and sophistication of YABA with increased deal flow and syndication opportunities for its members alongside Envestors’ extensive private investor network.”
So what does this mean in practice for local start-ups and entrepreneurs?   

Envestors describes itself as:
"an award-winning investor network dedicated to helping find quality investment opportunities for its network of 1000 private investors and 30 family offices. We specialise in raising from £300k – £1m in younger companies, and from £1m - £10m in more established companies. We work across most industry sectors with investee companies ranging in size from the smaller, earlier stage, through to the more mature. Investments usually qualify for EIS (Enterprise Investment Scheme). Aligned to our investors, we seek outstanding management teams capable of delivering their stated business objectives."
Its holding company, Braveheart Investment Group plc, was formed in 1997 and has been quoted on the alternative investment market since 2007. It manages around £120 million and offers equity, loan and mezzanine funding to SME as well as advice on corporate finance and investment readiness. 

The company from which Envestors took over the management of the YABA network was VFM.   Those letters appear to stand for Viking Fund Managers which is another Braveheart business. Yet another is Finance Yorkshire which offers seed corn funding, business loans and equity linked investments of between £100,000 and £2 million.

On its "latest deals" page YABA reports four transactions between 15 Feb 2012 and 26 Feb 2013. I shall follow this page with interest over the next 12 months and report back in 2014 as to the practical effect of the new tie up.

Incidentally, both business angels and entrepreneurs seeking angel investment require advice on company law, contracts, employment, tax and, of course, intellectual property.   I can help with IP and I have written a short article "What Business Angels and VCs need to know about IP" which can be downloaded from the JD Supra website.  Now that I am in 4-5 Gray's Inn Square I have colleagues who can help with all these other issues.   Should anyone require advice or representation on any aspect of angel investment or launching a new business, please call us on 0113 320 3232, 01484 599090 or 020 7404 5252 or fill in our contact form.  Our chambers are developing a strong presence in Yorkshire and the Humber and can see you in conference in Bradford or Huddersfield as well as London.

If you want to talk to me about this article, you can reach me through my contact form or call me on any of the above numbers.  You can also follow me on Facebook, Linkedin, twitter or Xing.

8 April 2013

New Chair for Leeds LEP

Roger Marsh, Senior Partner of the Leeds office of PricewaterhouseCoopers LLP ("PwC"), will take over the chair of Leeds City Region Local Enterprise Partnership from Neil McLean on 1 July 2013.

Born in 1953, educated at Stockton Church of England Grammar School and the University of Leeds, Marsh joined PwC in 1976. Specializing in business recovery and insolvency he managed T&D Industries, Sheffield Forgemasters, Carpets International, Dixon Motor Group, Shotton Power and Bradford Cathedral.

Between Jan 2007 and Aug 2009 Marsh served as Director-General of Strategic Finance and Operations at the Cabinet Office and was an executive member of the Cabinet Secretary's board.  According to his Linkedin profile, his overall role was "to improve the operational efficiency and efficacy of the agreed strategic objectives of the centre of Government."

Marsh became Senior Partner of the Leeds Office in 2011 and will retire from that post on 30 June 2013. His successor will be Arif Ahmad.

Further Information
"PwC announces change of leadership in Leeds," PwC 26 March 2013
"New Chair for Local Enterprise Partnership". Leeds City Region LEP, 26 March 2013

5 April 2013

Sheffield Inventors Group News

As the first Monday of this month fell on Easter Monday the April meeting of the Sheffield Inventors Group will take place on 8 April 2013 at 18:00 in the Jackson Room of Sheffield Central Library. The speaker will be Richard Hall of pd-m International Ltd.

Richard has spoken to the Group before and is well known as a product design and manufacturing consultant.  Samples of his company's work can be seen on the "Our Work" page of its website. Its clients range from private inventors, SMEs, manufacturers, universities and investors and its design portfolio covers medical, healthcare, consumer, industrial, lighting and nursery.equipment.

The title of Richard's talk is 'Production Development to Production - Avoiding the Pitfalls' which he promises to be a networking opportunity.

The other news from Sheffield is that the Group welcomes Susanne Knight as its new organizer. 

If you would like more information about the event or the group call or email Susanne on 0114 273 4727.

9 March 2013

Enforcing a Confidentialty Agreement in the Small Claims Track

Although business advisers, patent attorneys, solicitors and are very eager to tell you about confidentiality or non-disclosure agreements ("NDA") and, of course, to charge you for drawing one up, they are much less likely to tell you what happens if your confidante who could be your collaborator, investor, licensee or even your employee breaches the agreement.  The courts will grant injunctions to enforce obligations of confidence but these can take time to get and cost a lot of money.  The fact is that unless you can enforce it a confidentiality agreement it is not worth the paper it is typed on and the rogues are aware of that.

Until the new Patents County Court rules came into force on 1 Oct 2010 clients were advised that their own costs of applying to the Chancery interim applications judge for an interim injunction would be £15,000, that it could take months to obtain if the other side opposed the application, that they might not get their order and that they should b prepared to pay the other side's costs which could be at least as great as their own if they did not.   For most start-ups and small and medium enterprises this was intolerable and word got around that NDA and indeed intellectual property generally was about as useful as a chocolate fire guard.

I tried to solve the problem by inserting an arbitration clause into my non-disclosure agreements and by setting up an arbitration service with rules that enabled the arbitrator to grant interim injunctions that could be enforced with periodic payments like the continental astreinte.   Rule 2 (e) provided that unless the Parties agree expressly to the contrary:
"The Tribunal may compel compliance with any orders it may make under s,48 (5) of the Act by awarding periodic payments from a Party in breach to an injured Party from the date of such order until the date of compliance."
Do you know what? Not a single person made use of that service.   I don't know why.   Probably, it was because small business people rely on their solicitors and litigation solicitors, who are incredibly busy people if they are any good, tend to think in the short term and do what they did last time.

Whatever!  It became much quicker and cheaper to enforce intellectual property rights after the 1 Oct 2010 when recoverable costs were capped at £50,000, applications had to be made in writing and trials were fixed for one or at most two days.   

However, even £50,000 is a fair old sum for a start-up which is why the government launched a small claims track for IP in the Patents County Court.   I wrote about it in "How Small Businesses in Yorkshire can protect their Intellectual Property" on 14 Oct 2012 and gave a presentation on the new jurisdiction to the Sheffield inventors club on 1 Oct 2012.   The new small claims track does not cover everything - in particular, it does not cover patents and registered designs - but it does cover breach of confidence cases.   You can't get an interim injunction from the court but you can get a final one which has the advantage that you do not have to give a cross-undertaking as to damages.   And for the time being it can be quite quick with district judges giving automatic case management directions immediately after the exchange of statements of case for final hearings two months afterwards.   Costs are limited to just a few hundred pounds and then only if you need a solicitor.

I spoke about the new small claims track to the Leeds Inventors Group on the 13 Feb 2013.  There had been snow earlier that evening and the traffic was terrible which meant that I arrived very late but there was a young lady in the audience from Walker Morris called  Emily Baeza-Chavez who later contacted me to ask about the fixed fee service that my chambers run for the small claims track in Lancashire.   There we have teamed up with patent agents HutchinsonIP and JWK Solicitors to offer an all in advocacy and litigation service for £1,2000 + VAT and we are open to similar deals with solicitors and patent agents on this side of the Pennines (see "The Patents County Court Small Claims Track" IP North West 6 March 2013).

I got a chance to revisit the subject in Sheffield on 4 March 2013. The advertised speaker dropped out at the last moment because he was afflicted with one of the bugs that are doing the rounds so I stepped in with my "All you need to know about confidentiality" presentation which I had previously given to the Leeds and Manchester clubs.   When it came to enforcement I talked about the new small claims track and how it meant that an inventor could enforce an obligation of confidence or indeed most other intellectual property rights cheaply and with minimal risk.

The new small claims track court really does shift the balance of power towards the small business and private inventor and it really would be worth your while to find out more about it.   You can now contact me on 020 7404 5252 as well as on 0113 320 3232 or you can send me a message through Facebook, Linkedin, Xing or twitter or indeed my contact form.

18 January 2013

Trade Marks - Huddersfield Firm Marks its Cross

Thornton & Ross Ltd, which was founded in 1922, is the largest independent pharmaceutical manufacturer in the UK and is expanding rapidly. Based in Huddersfield, the company manufactures and distributes such well known  brands as Covonia, Hedrin, Asilone, Setlers, Transvasin and Mycota.

On the 17 May 2011 Thornton & Ross applied to register the following sign as a British trade mark for the following categories of goods:

"Class 03: Preparations for care of the skin; cosmetics; toilet preparations; after-sun preparations; preparations for sun protection; hair lotions; shampoos; hair care preparations; foot care preparations; dentifrices; mouthwashes; essential oils; soaps; cleaning preparations; bleaching preparations and other substances for laundry use; polishing, scouring and abrasive preparations
Class 05: Pharmaceutical preparations and substances; veterinary preparations; sanitary preparations for medical purposes; medicated skin care preparations; medicated preparations for application to the skin after exposure to the sun and for use in the treatment of sunburn; sun protection preparations for medical purposes; medicated hair care preparations; medicated foot care preparations; medicated mouthwashes; materials for dressings; preparations for aiding removal of head lice in hair; insecticidal preparations for hygiene purposes; disinfectants; fungicides"
Its application was opposed by the Swiss company Strellson AG, which had registered the following device mark for perfumes and cosmetics in class 3.   Strellson relied on s.5 (2) (b) of the Trade Marks Act 1994 which provides:.

“5.-(2) A trade mark shall not be registered if because –
(a) ……..
(b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.”

Both sides applied for a hearing and the case came on before Mr.Oliver Morris on behalf of the Registrar on 15 Nov 2012.  Strellson was represented by Mr. Mark Foreman of Rouse & Co. and Thornton & Ross's agent, Janet Bray of L J Bray & Co,. instructed me.   Mr. Morris's decision appeared on 27 Dec 2012.

In deciding the issue Mr. Morris referred to Sabel BV v. Puma AG [1998] R.P.C. 199, Canon Kabushiki Kaisha v. Metro-Goldwyn-Mayer [1999] R.P.C. 117, Lloyd Schuhfabrik Meyer & Co. GmbH v. Klijsen Handel B.V [2000] F.S.R. 77, Marca Mode CV v. Adidas AG + Adidas Benelux BV [2000] E.T.M.R. 723, Case C-3/03 Matrazen Concord GmbH v GmbGv Office for Harmonisation in the Internal Market [2004] ECR I-3657 Medion AG v Thomson multimedia Sales Germany & Austria GmbH (Case C-120/04) and Shaker di L. Laudato & Co. Sas (C-334/05).  Citing Mr Geoffrey Hobbs QC;s decision in  La Chemise Lacoste SA v Baker Street Clothing Ltd (BL O/330/10) he summarized the principles as follows:
"(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) a lesser degree of similarity between the goods or services may be offset by a great degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense;
(k) if the association between the marks causes the public to wrongly believe that the respective goods [or services] come from the same or economically-linked undertakings, there is a likelihood of confusion."
Mr. Morris decided that 
"The average consumer will be a member of the general public and, although the cost of the goods can vary, they are not, generally speaking, expensive items and will be selected with no more than an average level of care and consideration. The goods in class 5, on the other hand, contain goods which are medicated. The impact of this is that the level of care and attention used in their selection is likely to be higher and, furthermore, the average consumer may be a member of the general public or a health care professional"
 In making his comparison he adopted the Collins dictionary definition of "cosmetics":
“Any preparation applied to the body, esp. the face, with the intention of beautifying it.”
He concluded that a cosmetic was, therefore, "a preparation, the purpose of which is to beautify the face or body."  He continued 
"Whilst cosmetics such as lipstick, mascara and eye shadow may be the first and most obvious type of goods that come to mind if one were asked to consider the type of goods that fall within this category, I do not consider that this is all the term covers. For example, preparations (such as creams and lotions) whose intended effects are to reduce wrinkles would be classified as a cosmetic given that it aims to have a cosmetic impact on the appearance of the user. A further example can be seen when Mr Justice Neuberger in Beautimatic International Ltd v Mitchell International Pharmaceuticals Ltd and Another held, on the facts of the case before him, that a dry skin lotion was a cosmetic."
Mr. Morris found that preparations for the care of the skin, cosmetics, and toilet preparations were identical to cosmetics, after sun, sun protection and foot care preparations had a reasonably high degree of similarity, hair lotions and hair care products, essential oils and soaps and cleaning preparations to have a moderate degree of similarity.   The opposition thus succeeded in respect of
Class 03: Preparations for care of the skin; cosmetics; toilet preparations; after-sun preparations; preparations for sun protection; foot care preparations.
Class 05: Medicated skin care preparations
but failed in respect of everything else.  Though Thornton & Ross had won more than it had lost Mr Morris did not think that that justified an order of costs in its favour. He thus ordered each side to bear its own costs.

If anyone wants to discuss this case or proceedings in the Trade Marks Registry generally call me on 0113 320 3232 or send me a message through my contact form. You can also follow me on Facebook, Linkedin, twitter or Xing..

Huddersfield Youth Dance Academy Auditions 26 Jan 2013

The third week of January is rarely a bundle of laughs but with the horrible weather, the crisis in Algeria and the terrible attack on Sergei Filin today has been worse than most.   So here is something to cheer us all up. The Base Studios which I mentioned last week in "Interesting Yorkshire Businesses No. 1: The Base Studios Huddersfield" 11 Jan 2013 will hold auditions for the Youth Dance Academy. on 26 Jan

As you can see the Base has sent some lovely photos of its outstanding young dancers.

We at NIPC think that the Academy is an excellent project and will help it any way we can.   We hope our clients and connections around Yorkshire will do the same.

There are many ways you can help:
- You can sponsor the project;
- You can provide a scholarship for a student;
- You can help bring a star to Huddersfield for a master class.

But you don't need to part with brass to help the Academy.

If you know a young dancer you can encourage him or her to audition for the course.If you are in education you can bring it to the attention of local schools and colleges.

Even if you can do nothing else you can spread the word on Facebook and twitter.
"Any support from anywhere would be amazing to help fund the new Youth Dance Academy. Whether is be to offer students scholarships or reduced fees etc etc. Or money to get in some master classes from other teachers/artists to enhance the training on offer etc " says Base General Manager Matthew Slater, 
"I would love the programme to be fully accessible to talented young dancers from whatever financial background and support with that would be amazing!"

Just think how proud you would feel watching one of the kids you helped on a stage in the West End in a few years time.

I you want to help get in touch with Matthew at the Base at 3 New Street, Huddersfield on 01484 428778 or you can contact us and we'll sort you out. :-)

11 January 2013

Interesting Yorkshire Businesses No. 1: The Base Studios Huddersfield

With the Choral, Contemporary Music Festival and an exceptional music department Huddersfield already had a good claim to being the most musical small town in England.  Now it can also lay claim to excellence in dance. The Base Studios will be holding a series of courses in ballet, contemporary and jazz for young dancers known as the Youth Dance Academy. Auditions for this new Academy will be held on 26 Jan 2013.

Though the Academy is for the young and gifted the Base does not ignore the rest of us. There is a whole range of classes from adult ballet to zumba.   The instructors are excellent.   Fiona Noonan, for example, who trained at the Queensland Dance School of Excellence and danced in theatres around the world, teaches ballet.  

The Base offers a range of services to businesses such as fashion shows, corporate entertainment and other events.  

Located at 3 New Street you can call the Base on 01484 428778 or follow it on Facebook and twitter.