Celebrating Barnsley's Intellectual Property on World IP Day

Joseph Bramah

 

Jane Lambert

World Intellectual Property Day is a celebration of creativity, enterprise and innovation.  Over the years Barnsley folk have demonstrated those qualities in abundance.  As for creativity, the composer John Arthur Casken, the playwright John Arden and the poet Ian McMillan came from Barnsley.  So, too, did the entrepreneur Rita Britton whose conversation I discussed in Meeting Rita Britton, a Living Legend on 9 April 2024.  But perhaps the Barnsley scion who has had the biggest impact on the world is the inventor, Joseph Bramah because he invented a device that enables large concentrations of humans to live healthily in close proximity to each other 

That device was the water closet which was Bramah's first and most famous invention but it was not his only one.   He developed a particularly secure kind of lock for which he received a patent in 1784. On the strength of that invention, he set up the Bramah Locks Company which continues to this day.  He also invented a hydraulic press the drawings of which are on Espacenet under the title "Obtaining and Applying Motive Power".  In his lifetime he received 18 patents for inventions that ranged from fire trucks to beer engines.   Wetherspoon has a pub called The Joseph Bramah at 15 Market Hill in Barnsley town centre.

Over the 20 years or so that I have been running a pro bono IP clinic at The Business Village I have seen many budding entrepreneurs and inventors.   Some I have referred to Sheffield Central Library for a patent search,  Others I have referred to product design consultants.   I have introduced several to local patent or trade mark attorneys.  On a few occasions I have helped businesses settle potentially ruinous disputes on advantageous terms at the earliest possible stage.

Barnsley's Library @ The Lightbox where I gave a presentation to local entrepreneurs entitled IP for Startups and Other SMEs in 2019. The Lightbox is part of the Business and IP Centre South Yorkshire which is itself linked to the British Library's nationwide network.  It is possible to access a lot of useful resources including Esp@cenet from the Lightbox and one-to-one interviews with experts are offered on that site.

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

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.