24 January 2015

Sheffield Business and IP Centre Launch

Sheffield Central Library
Photo Wikipedia

In Enterprise and Libraries: a New National Network of Business & IP Support 6 Match 2013 Inventors Club I wrote about the launch in Portcullis House of a new network of PatLib libraries in the North and Midlands in association with the British Library. I reported in Business and IP Centre National Network 14 Oct 2013 that Leeds and Sheffield Central Libraries were part of that network and mentioned some of the activities of those libraries.

On Thursday I attended the official launch of the Sheffield Business and IP Centre. As this network is freceives funding from the Department for Communities and Local Government we had expected an appearance from The Rt Hon Eric Pickles MP but we learned the evening before that he was unable to make it. There were nevertheless speeches from quite a lot of other dignitaries including Laraine Manley, Executive Director of Sheffield City Council, Councillor Mazhar Iqbal, Roly Keating of the British Library and Brian Ashley of the Arts Council of England.

There was also a talk by Guy Jeremiah of Ohyo on his invention which turns out to be a collapsible water bottle coupled with a website and app for finding water fountains and other sources of water.  The default page shows a few fountains within walking distance of Endell Street in Central London but none at all for central Sheffield when I keyed in the postal code for Sheffield Central Library and the wevsite could not find Holmfirth at all on the map when I keyed in the postal code for my home address even though there is quite a famous one in our town which has features more than one in episodes of Last of the Summer Wine.

After the speeches there was an opportunity for networking over drinks and canap├ęs.  I met Kalim Yaseen, a patent examiner who had given an excellent presentation  to the Sheffield Inventors Club on 6 Feb 2012 (see Straight from the Horse's Mouth:"Filing a UK patent application - process and procedures" 31 Jan 2012) and Roger Tipple who had spoken about Getting your Product to Market on 7 Oct 2013. I met Joyce Gray who runs the Sheffield centre and many of her colleagues. Joyce was struggling under a massive bouquet of flowers from the British Library which she richly deserved. I met three good friends from Leeds Central Library, Ged Donnan, Stef Stephenson and Andrea as well as a number of other old acquaintances from the Intellectual Property Office. I also made the acquaintance of Isabel Oswell, Head of Business & Research Audiences at The British Library and Dave Gimson, regional project manager of the British Library.

Surprisingly and somewhat disappointingly there were very few local inventors or entrepreneurs apart from Mr Jeremiah. Joyce Gray told me that she had invited some of the members of the Sheffield Inventors Club but if any turned up I did not recognize them. The one entrepreneur whom I did recognize was Mel Wong who has danced on national TV and has probably performed more grands battements than anyone else on the planet and is now setting up her own dance business. In his speech Roly Keating emphasized the importance of the creative sector for Sheffield and British Industry as a whole. I am sure that Mel will contribute to that sector considerably.

The Business and IP Centre is a great initiative and one that I welcomed and always supported but unless it collaborates with other networks it will never meet its potential. I was dismayed to learn that many of our guests from London were unaware of other groups such as Ideas Northwest or the Wessex Round Table of Inventors though Isabel heard of Richard Gallafent and Linda Oakley of Ideas 21. Nobody was aware that Ideas 21 once held meetings in Manchester. Nobody knew of the Liverpool Inventors Club or my IP clinics at Barnsley and Middlesex University. If public money is to be used to best advantage there has to be a lot more co-ordination and communication.

If anyone wants to talk about the Business and IP Centre launch or IP generally they should call me on 020 7404 5252 during office hours or use my contact form.

22 January 2015

Register your Registrable Rights at once

Over the last few days I have been advising a client who has been threatened with proceedings for Community trade mark infringement. Nothing unusual about that except that my client was the first to use the mark that he is now alleged to have infringed. In fact, he had been using the mark for quite a while before the other side applied to register the mark. It's just that he never thought of registering it for himself. And why should he because advertising and sales give the right to prevent others from using a trade mark, don't they? Why pay lawyers or attorneys to register something that is already yours.

In a sense that is right because nobody can pass off their goods or their services off as yours. As Mr Justice Arnold said in Enterprise Holdings, Inc v Europcar Group UK Ltd and Another  [2015] EWHC 17 (Ch) the elements of an action for passing off are as follows:
"(1) the claimant's goods or services have acquired a goodwill in the market and are known by some distinguishing name, mark or other indication;
(2) the defendant has used, or threatens to use, a name, mark or other indication which has led, or is likely to lead, the public to believe that goods or services offered by the defendant are goods or services of the claimant, or connected with it, and thus to a misrepresentation by the defendant (whether or not intentional); and
(3) the claimant has suffered, or is likely to suffer, damage as a result of the erroneous belief engendered by the defendant's misrepresentation"
(see my case note  Car Wars: Enterprise and Europcar 21 Jan 2015 NIPC Law).

A right to bring an action for passing off is an "earlier right" within the meaning of art 53 (2) of the Community Trade Mark Regulation (Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark OJ 24.3.2009 L78/1). My client could have opposed the registration under art 8 (4) of the Regulation and he could still apply for the invalidation of the registration under art 53 (2). But an action for passing off requires evidence of use such as sales figures and advertising spend and lots of samples of packaging and advertising just to satisfy the first element and you have to prove misrepresentation and confusion as well.

So much easier just to register the mark which you can do on-line from just £170. You can apply to register before you start trading and you are allowed up to 5 years from the date of application to register the mark before you need to use it. That means that you can prevent others from using the mark even before you have started to use it yourself which you could never do if you relied solely on passing off. Also, if you have applied for a mark in the UK or any of the other countries in the EU it is much easier to oppose or invalidate a subsequent Community trade mark.

This is not the first time that I have had to advise in a  case such as this. The last time it happened the client decided to re-brand as it was cheaper, easier and more certain than bringing cancellation proceedings in OHIM. And it is not just trade marks where this sort of thing can happen. It also happens with designs. In fact it is easier with registered or registered Community designs because there is no examination of prior art. So remember. If you have a brand or product design register the distinguishing sign or design first. Just like Spencer and Diana Hannah did with "Herdy" (see Case study Intellectual Property: Herdy 21 Jan 2015 IPO website).

If you want to talk about this article or trade marks or registered designs in general give me a ring on 01484 599090 during office hours or use my contact form.

6 January 2015

In-house IP Training

View of Huddersfield
Photo Wikipedia

Yesterday lunch time I visited a business in Huddersfield to talk to its staff about intellectual property ("IP"). An incident had occurred some months ago when it would have been to their advantage to have known more about IP. Sensibly the company's managing director sought training for its employees and asked a local business advisor to help. The advisor made enquiries at a neighbouring law school but their IP specialist could not assist so the advisor approached me.

That is the sort of invitation I am always happy to accept. As I explained in IP Services from Barristers 6 Apr 2013 4-5 IP:
"It is now permissible for members of the public to consult barristers directly under the Public Access scheme and there are sometimes advantages in doing so, especially in respect of intellectual property. Because we are independent and objective we can advise on the optimum legal protection for a new product or business. For instance, the instinct of a patent attorney is to recommend patent protection for a new invention and in as many countries as possible. Often, that is the best advice but when the inventor is an individual, start-up or small business more nuanced advice is required."
A barrister's job is to obtain the best legal outcome for his or her client and not simply to represent them effectively in court though of course we do that as well. Because we see a lot of disputes we can often spot pitfalls well in advance and advise on how to avoid them. And that is just what I did yesterday.

I was led into a conference room where a table was set up for lunch.  There were different types of bread, cold ham and chicken, fresh fruit salad, profiteroles and a chocolate Yule log. The managing director introduced the trainees, offered us tea and coffee and invited us to tuck in. There were four trainees.  All were women. They were all very bright and it became clear from the conversation that they all had substantial business experience. Each of those ladies had prepared a list of questions and they took it in turns to quiz me.

The first question was on artwork. They were often asked to do artwork for customers who later used it for purposes for which it was not intended. The customers thought they could do what they wanted with the art work just because they had paid a fee. The question boiled down to "who owns the copyright and what licences (if any) are granted or retained?" I referred the ladies to the Copyright, Designs and Patents Act 1988 and in particular to s.11:
"First ownership of copyright
(1) The author of a work is the first owner of any copyright in it, subject to the following provisions.
(2) Where a literary, dramatic, musical or artistic work, or a film, is made by an employee in the course of his employment, his employer is the first owner of any copyright in the work subject to any agreement to the contrary.
(3) This section does not apply to Crown copyright or Parliamentary copyright (see sections 163 and 165) or to copyright which subsists by virtue of section 168 (copyright of certain international organisations)."
Their company owned the copyright in any art work that they produced subject to any contract that the company may have made with its customer. That could depend on their company's terms and conditions or on those of their customer. I asked what the company's terms and conditions said about ownership of copyright in its employees' artwork. I was told that there were no terms and conditions. I replied that they should consider getting a lawyer or patent or trade mark agent to draft some for them.

One of the ladies asked whether it might be to their company's advantage "not to have a contract". I responded that they did have a contract but not a written one. In  a dispute over title to copyright in the artwork a judge and lawyers would scour the party to party correspondence, minutes and memos of meetings, previous dealings between the parties and what was normally done in transactions of that kind by other businesses in the industry. All that could take time and cost money and lead to a lot of uncertainty. Much if not all of that could be avoided by adopting a simple set of terms and conditions.

The next question was on artwork for quotations. Sometimes a customer asked them to prepare a quote which might involve quite a lot of work. The customer might reject the quote and take the work to a competitor who could undercut them.  I told them that had actually happened in Pensher Security Door Co. Ltd v Sunderland City Council [2000] R.P.C. 249 and that the Court of Appeal had held that the customer had infringed copyright by taking the design to another company and ordering goods from them.

They asked me how much it would cost for a lawyer or attorney to draft terms and conditions and I replied that it would be between £500 and £750 plus VAT. There was a collective intake of breath around the table suggesting that they thought it was a little on the high side. I decided to discuss the alternatives. "Some companies" I said "simply look at their competitors' websites and lift the legals from them. But that is a mistake for two reasons. First, copyright is likely to subsist in the terms and conditions just as it does in any other kind of work so copying the T & C even with a few changes here and there amounted to copyright infringement for which the copyist might be sued either by the person who drafted the terms or his client. Secondly, terms and conditions are intended to manage risk and the risks of the competing company might not be the same as the company's. It was like wearing another person's clothes. They might cover the body up to a point but they would not fit snugly or look very good."

I pointed out that terms and conditions are rather like the fortifications of Sandal Castle or some other medieval fortress. The first line of defence was the moat which kept out most of the undesirables of medieval Yorkshire such as waifs and strays, thieves and vagabonds, sturdy beggars and wild animals. In a company the moat corresponded to best practice. The next line of defence was the curtain wall from which defenders could rain down arrows, boiling oil and molten lead on more determined invaders. That defence corresponded to insurance. The last line of defence was the keep or bailey and if an invader got that far he had come a long way. That was where the hand to hand fighting might take place such as Macbeth against McDuff. The keep was like terms and conditions. They were for situations where best practice had failed and there was no insurance cover. The T & C had to be integrated with the insurance cover and best practice and that was where the work was to be done. When they considered that the cost of a law suit might run into the hundreds of thousands or even millions the ladies agreed that £500 to £750 was very good value.

We talked about IP insurance and I warned the ladies that many legal expenses insurance specifically exclude IP disputes. I advised them to check the company's policy and consider obtaining additional cover unless they were confident that they could fund any infringement claims that they might wish to bring or defend any revocation or invalidity claims that others might bring against them. They asked about the costs of litigation and I told them all about the Chancery Division and the chancery county courts, the Patents Court, IPEC including its small claims track and other options such as the IPO hearing officers, IPO examiners' opinions, domain name dispute resolution services and various mediation services. One of the ladies asked me to explain the difference between patents and copyrights which led to a discussion on intellectual assets and the different forms of legal protection. Another asked about IP protection abroad and I told them about TRIPs and the international conventions.

I had been booked for an hour but the session lasted nearly double that time. None of us was looking at the clock. The conversation was lively and stimulating and I think we all enjoyed ourselves.  If any other business, law firm or patent or trade mark agency in Yorkshire or indeed anywhere else wants me or one of my colleagues to lead a similar discussion he or she need only ask. I would normally charge about £350 + VAT for a session of this kind but as the initial enquiry had come through a connection who had recommended me in the past I did it for free.

If anyone wants to discuss this article or IP law generally he or she should call me on 020 7404 5252 during office hours or use my contact form.

Finally, I should like to wish all my readers a very happy New Year.