Brexit Countdown: What you should have done to protect your IP and what you can still do

Sheffield Central Library

Author Chemical Engineer
Licence Creative Commons Attribution-Share Alike 4.0 International
Source Wikipedia, Sheffield Central Library

Jane Lambert

IP Rights and Brexit  Sheffield Business and IP Centra, Central Library, 6 March 2019 18:00

Because intellectual property protects investment in branding, design, technology and creative output, any change in the nature and extent of the legal protection is likely to impact on the businesses that rely on such protection.  Since EU trade marks, registered and unregistered Community designs, geographical indications and Community plant variety rights will cease to apply to the UK upon its departure from the EU, Brexit will have a substantial impact on all those businesses.

For that reason, I have been writing and speaking about the consequences of Brexit even before the 2016 referendum (see Were we to go - what would Brexit mean for IP? 26 Feb 2016 NIPC Law). I contributed the chapter on IP to Helen Tse's Doing Business after Brexit,  I have spoken about the topic at leading law schools (see Implications of Brexit on IP Law 19 Jan 2018). I have followed each and every turn of the Brexit negotiations in my Brexit blog in order to advise my clients accurately and comprehensively (see Brexit - Why do I follow the Art 50 (2) Negotiations when I am an IP Lawyer? 26 July 2018).

It might be thought that everything that can be said about IP and Brexit has been said but, unfortunately, that is not the case.  Unless the notification that the Prime Minister gave to the President of the Council on 29 March 2017 is revoked or the notice period is extended before the 29 March 2019 the UK leaves the EU at 23:00 on that day. The impact of this country's departure on business will depend on whether the country leaves on that date and, if it does, on whether it leaves with or without a withdrawal agreement. As I noted in my latest Brexit Briefing we still have no idea of the terms or even the effective date of our departure.

Ever since the withdrawal agreement negotiations began I have advised businesses to prepare for all eventualities including a no deal Brexit.  I have advised them to review their patent, trade mark and design registration portfolios and apply for national or as the case may be EU registrations to fill possible gaps in their legal protection,  I have advised them to read their licences, franchise, joint venture and other agreements and to draft or negotiate contract terms to fill any lacuna.   It may be too late to do some of those things but there is still much that businesses can do.

My talk will list all the issues businesses will encounter when protecting their brands, designs, technology or creative output and the possible countermeasures. By the end of my talk business owners and managers will have a much better idea of possible risks (and maybe even a few opportunities) and the steps they should take.

If you want to come, register here.  It's free but you do have to book. If you want to talk about this subject call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact page.

Trade Missions from Yorkshire to China, Germany, the Netherlands and the USA

Jane Lambert

Yesterday I received an email from DIT North West stating:

"Working closely with our colleagues in both Yorkshire & Humber and the North East, we have created a calendar of 16 trade missions, covering various markets, trade shows and exhibitions to support your business to win sales overseas."

The email contained details of trade missions to California, Amsterdam, Cologne, Dusseldorf, China and Boston between 24 Sept and 28 Nov 2017 for the healthcare, food and drink and other industries.

Should any of my readers in Yorkshire or the Humber wish to learn more about those missions, I have written a short article on them entitled Powerhouse Trade Missions in IP Northwest.  Readers will find in that article a link to the Eventbrite page which contains details of each of the missions with links to the each of the mission Eventbrite pages.

I wish anyone whom goes on any of those missions the very best of luck and would urge them to have regard for their trade secrets and designs. They may find the following extract useful:

"If you plan to go on any of those trade missions, be careful not to disclose anything that you might wish to patent, register as a design or otherwise keep under wraps except in confidence (see Duty of Confidence). However, there is a year's grace period for design registration in Britain and the rest of the EU (see Registered Designs and Registered Community Designs) and don't forget the international exhibition exception provided by s.2 (4) (c) of the Patents Act 1977. Make sure that any non-disclosure or confidentiality agreement is to be construed and enforced in accordance with English law. We are harmonizing our trade secret law across the EU with the Trade Secrets Directive which will come into effect o 9 June 2018 just before Britain flounces out of the EU but we are not there yet (see my article on The Trade Secrets Directive 7 July 2016 NIPC Law).

You must also be aware of the ease with which it is possible for IPR owners to get without notice injunctions just before international exhibitions in Germany and some other countries and serve the orders on the first day (see the penultimate paragraph of Pre-Action Correspondence: What to do if you get a Stroppy Letter ....... or worse 4 Aug 2017 NIPC Law). That nearly happened to one of my clients not long ago. The antedate in Germany is to get a German lawyer to file a Schutzschrift ("protective brief") with the court in which the application is likely to be made setting our reasons why such an order should not be granted. You should also take a look at the arbitration schemes that exist in Italy and Switzerland (see my article Resolving IP Disputes at Trade Fairs 1 June 2017)."

Should anybody wish to discuss any of these matters, call me on 020 7404 5252 during office hours or send me a message on my contact form.


Further Reading

Northern Powerhouse Index

Business Funding in Leeds City Region

Jane Lambert


"Where do I get funding for my business now that the banks have stopped lending?" This is the most frequent question that I have been asked since 2007 at my IP clinics, inventors clubs and talks and seminars for business start-ups even though as an IP lawyer I claim no expertise in business funding. Now at least I have a  website to which I can refer enquiries in the Leeds City Region at any rate.

Leeds City Region LEP
The Leeds City Region Local Enterprise Partnership, which is a collaboration between local authorities and business leaders and academics within commuting distance of Leeds City Centre to promote economic and social development within that region, has gathered together a web page listing all the funding options that are available to businesses in that region  The title of that web page is Business funding options and you will find it at http://business.leedscityregion.gov.uk/support/funding/

Types of Funding 
Funding for businesses falls into two categories:

• long term investment in plant, buildings and other fixed assets; and
• short term funding to purchase stock or meet other immediate priorities.

As a general rule long term investment takes the form of investment in exchange for a share in the business while short term funding takes the form of loans.  If you don't know the difference between investment and lending then your first port of call should be "Business Finance Explained" on the gov.uk website. Once you are clear in your mind as to what you need for your business and what is on offer then take another look at the Business Funding Options web page.

Types of Funding Available

The website offers information on:

• Grants: essentially gifts of money that do not have to be repaid;
• Investments: funding in exchange for shares in a limited company or possibly a partnership; and
• Loans: funding that has to be repaid usually with interest.

Grants

One source of grant funding is The Business Growth Programme which provides grant funding to businesses based in Leeds City Region or planning to invest here. You will find further details on the LEP Business Growth Programme page of the LEP's website. There are details of other grants on the LEP website. There is also a very good website called j4bGrants which publishes a regular newsletter to which you can subscribe.

Investment

This could come from a business angel (a wealthy individual who wishes to invest in a new venture) or an institution that believes that your business will grow very quickly and sees an opportunity to make a substantial profit in two or three years time through a flotation on the stock market or a business sale. The LEP website links to Envestors which manages the Yorkshire Association of Business Angels (a group of business angels based in Yorkshire) and to Finance Yorkshire which provides a range of funding products.

Lending

Traditionally short term lending has been provided by the clearing banks and the LEP has arrangements with a number of banks that have received funding from the Regional Growth Fund to support local business. The Business Funding Options web page mentions those arrangements and links to a number of lending schemes. It also links to  the Business Enterprise Fund which is a community development finance institution which can sometimes offer loans to businesses that would not qualify for bank lending.

Eligibility

The website is directed to businesses that are in, or are contemplating moving to, the Leeds City Region only. Check the coloured map above to see whether you are in or out of that region. This article may still be useful to you even if you are outside this region because other regions make similar provision for businesses in that area.

Legal Advice

Whatever form of funding you seek even if it is a grant you will enter legal relations with, and may well incur legal obligations towards, your funder. Before assuming those obligations you should seek proper advice from an experienced business lawyer. Remember that there are likely to be many issues such as tax, intellectual property and enforcement.  

Further Information

if you want to discuss this article, call me on 020 7404 5252 during business hours or send me a message through my contacfot rm.

Post Script

Kin F. Kam wrote on Linkedin: "If you have an innovative product underdevelopment, or in the hope of developing it, there is also #InnovateUK 's innovation voucher scheme. It's worth £5K. I got mine confirmed last week."

Many thanks for that comment and good luck with the business

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.