TIPSY Dinner for Mr Justice Birss

Author General Tire Source Wikipedia General Tire 

Jane Lambert

Mr Justice Birss was the guest of honour at  The Intellectual Property Society of Yorkshire ("TIPSY") dinner at the DoubleTree by Hilton hotel at Granary Wharf in Leeds on 27 Feb 2020.  Once again it was organized by Mr Andrew Clay, a solicitor specializing in intellectual property law in Harrogate. The meal with its choice of three dishes for each course was excellent. I chose soup, salmon and crumble together with white and red wine, mineral water and coffee.

After dinner, Dick Waddington pf Appleyard Leeds introduced our guest and invited him to speak on the Assessment of Damages for IP Infringements.   Disarmingly the judge acknowledged that he had not chosen the most riveting topic for an after-dinner speech.  Having said that, his talk was as interesting and entertaining as any on the subject. The only hissing he received was when he mentioned his Scottish birth and Lancastrian education.  He had contemplated (but then thought better of) appearing in his old school tie which included red roses in its design. However, he revealed a Yorkshire connection in that his mother had moved to Ilkley.

The speaker began with a reminder that intellectual property infringement was a tort and that an award of damages in tort was supposed to put the injured party in the position he or she would have been had the wrong not been committed. Easy to say but not always easy to apply.  There were two qualifications to that rule

• An account of profits which is restitutionary or perhaps fiduciary in nature is available as an alternative to damages; and
• Damages for the misuse of confidential information is a remedy for a breach of an equitable duty rather than compensation for a tort.

Mr Justiice Birss reminded his audience of the House of Lords' decision in General Tire and Rubber Company v Firestone Tyre and Rubber Company Ltd [1976] RPC 197, [1975] 1 WLR 819, [1975] 2 All ER 173, [1975] FSR 273 which considered different ways of assessing damages.  One way was to calculate the loss of sales.  Another was to compute the royalties that would be agreed by a willing licensor and a willing licensee bargaining at arms' length,  There were however difficulties with both approaches.  Litigants were very different from parties wanting to do business with each other and there are circumstances when a claimant would have incurred losses from sales of a non-infringing item even if there had been no infringement.

The judge discussed such cases as Wrotham Park v Parkside Homes  [1974] 1 WLR 798 and Attorney General v Blake [2001] Emp LR 329, [2000] EMLR 949, [2000] UKHL 45, [2001] 1 AC 268, [2000] 4 All ER 385, [2000] 3 WLR 625, [2001] IRLR 36, [2000] 2 All ER (Comm) 487, [2001] AC 268, [2001] IRLR 37 where the object was to impose a cost on the defendant for breaching a restrictive covenant or a duty of confidence rather than delivering compensation. He also considered  Morris-Garner & Anor v One Step (Support) Ltd. [2019] AC 649, [2018] WLR(D) 260, [2018] 3 All ER 659, [2018] 1 Lloyd's Rep 495, [2018] UKSC 20, [2018] 2 All ER (Comm) 769, [2018] IRLR 661, [2018] 2 WLR 1353.

Points that the judge mentioned briefly included alternative ways of computing FRAND royalties - extrapolation or comparables - the right of a successful claimant to request disclosure of a defendant's sales so that he can make an educated choice as to damages or an account of profits, assessing damages liberally and the innumeracy of many lawyers.  Only at the very end did the judge mention the Enforcement Directive and then only in passing.

Mr Justice Birss reminded the audience that small claims track IP cases could now be brought in Leeds and other major cities outside London and he urged his audience to use them.  If there was demand for IP litigation outside London the courts would arrange for multitrack cases to be heard there.  In the Q and A that followed, one questioner asked about punitive damages in IP, another mentioned a rumour that the UK planned to withdraw from the Unified Patent Court agreement while Mr Clay speculated on a claim for a battleship fitted with a tine whistle.  I raised my hand and gesticulated wildly but Dick Waddington did not see me.

It was a very good evening and I look forward to the next one which is likely to be in June with Michael Silverleaf QC as the guest speaker.   Anyone wishing to discuss this article or damages generally may call me on 020 7404 5252 or send me a message through my contact page.

Northern Max - a new Healthcare Accelerator in Bradford

Bradford Royal Infirmary

Author David Spencer

Licence Creative Commons Attribution-Share Alike 2.0 Generic

Source Wikipedia

Jane Lambert

In Accelerators and Incubators in the Leeds City Region 22 April 2017 IP Yorkshire I wrote:

"Both accelerators and incubators help to launch fledgling businesses. Accelerators offer structured development and training with opportunities to attract funding for the most attractive businesses. Incubators are more like serviced offices with mentoring and other forms of business and technical support thrown in."

When I penned that article there were only four accelerators and all of them were in Leeds. I can now report the launch of a new one in Bradford for the healthcare industry called Northern Max. It came to my attention through a posting on the Yorkshire Business Desk: SMEs and start-ups embark on programme to bring innovative health solutions to market 12 Jan 2018

Northern Max describes itself as "a market-access focused 12-week accelerator programme that has been funded by City of Bradford Metropolitan District Council and AD:Venture."  AD:Venture supports start-ups and young business in their first 3 years of trading,within the Leeds City Region. Such support consists of "a tailored mix of practical advice, coaching, outcome focused events, academic support, incubation work space, finance brokerage, low rate loans and help".

The accelerator programme started on 8 Jan 2018 at the Digital Exchange in Little Germany. Businesses participating in the programme will have an opportunity to:

• validate their technology and business models;
• create and test minimum viable products; and
• be introduced to potential customers, funders and investors.

They should leave with a clear understanding of growth strategy, funding options and market opportunities. At least some should have secured some sort of funding and all will have tested their assumptions in live NHS and care settings, and pitched to potential customers and investors.  The programme will be provided by Innov8tive Minds and the Digital Health Enterprise Zone ("DHEZ").

Neither the The Business Desk article nor the announcements on the AD:Venture or the DHEZ websites state whether participating businesses will be made aware of the dangers of inadvertently infringing other businesses' patents, trade marks or other intellectual property rights or of competitors exploiting their intellectual assets through failing to protect then properly, If they have not been alerted to those dangers, they should be.

Happily, the Intellectual Property Office ("IPO") has recently updated its IP Basics guidance.  The best time to start thinking about these matters is when writing a business plan.  As the IPO notes:

" Your business builds goodwill and recognition through your brand, product or service. This value builds up over time and becomes integral linked to your business’s IP assets. If used well, IP can offer a solid platform for any business to grow. How you plan, manage and protect your ideas should be a crucial feature in your business planning. What seems unimportant today could be worth millions of pounds in the future, if protected."

Businesses on the Northern Max programme can find additional information on how to incorporate IP into their business plans in Jane Lambert Putting IP at the Heart of Your Business Plan 2 Jan 2015 NIPC News and Jane Lambert Why every business plan should take account of intellectual property 3 April 2016 NIPC News,

In Getting Help, the IPO advises that the British Library Business and IP Centre supports entrepreneurs, inventors and small businesses and will also give advice on creating a business plan. The British Library works with a number of public libraries around the country to provide similar advice locally at Business and IP Centres. The nearest Centre to Bradford is at Leeds Central Library.

Sometimes businesses need specialist professional advice and it is there that enormous care should be taken. Businesses requiring patents should consult a patent attorney and those needing trade marks a trade mark attorney. Law firms that are members of the Intellectual Property Lawyers Association can advise on licensing, joint ventures, funding and other business transactions, They can also assist parties to resolve infringement and other disputes.  Barristers who subscribe to the Intellectual Property Bar Association support patent and trade mark attorneys and solicitors by advising on difficult points of law, drafting complex legal instruments and presenting cases before judges and hearing officers much in the way that consultant physicians and surgeons support GPs in medicine (see Jane Lambert IP Services from Barristers 6 April 2013 NIPC News).

I wish Innov8tive Minds, DHEZ, participating businesses and everyone involved in the Northern Max project every success.  Should any of them wish to discuss this article or IP generally they should call me on 020 7404 5252 during office hours or send me a message through my contact page.

How to Access Specialist IP Services in Yorkshire for Free

Jane Lambert

Whether you are running your own business or just thinking of doing so, you need to know about intellectual property. There are two reasons for that.

First, the law on IP is very complex and there are a lot of urban myths and misinformation on what is and what is not permissible. Consequently, it is all too easy inadvertently to infringe someone else's IP. If you do, the consequences could be dire.  Some IP infringements are criminal offences the penalties for which have recently been increased, the costs of civil litigation are crippling and the remedies draconian

The other reason you should know about IP is that you will have spent a lot of time building a business or developing a product or service and you don't want other people to reap the benefit without your consent.

However, it takes a long time to qualify as a patent or trade mark attorney or specialist lawyer which is why high quality advice and representation do not come cheap.  Happily, there are ways you can save money.

I give up to 12 hours of my time every month to creatives, entrepreneurs, inventors or others who need specialist advice but can't afford my usual fees.  You can access my service simply by sending me a message on my contact form.

I can usually deal with most enquiries by email or telephone but there are some that require a referral to another professional advisor such as a patent or trade mark attorney, product design consultant, specialist insurance broker or a public library that is a member of the UK PatLib network.

If it appears to me that a client has an invention that might be patented or a design or trade mark that could be registered, I usually refer him or to one of the IP clinics operated by members of the Chartered Institute of Patent Attorneys (if there is one near the client's home or workplace) or to a local attorney who has agreed to offer the client up to 30 minutes of his or her time for free.

I also hold clinics in London and the North but I try not to replicate services that are available elsewhere.  As a barrister, I advise patent and trade mark attorneys on difficult points of law, draft complex legal instruments and represent clients in the Business and Property Courts and the Intellectual Property Office (see IP Services from Barristers 6 April 2013 NIPC News and What do Start-up Entrepreneurs need to look for in a Good IP Lawyer? 23 Aug 2017 NIPC News). The sort of matters that I reserve to myself in my own clinics includes IP Strategy, complex licensing and other transactions and dispute resolution.

Most of my clinics in Yorkshire take place at the Barnsley Business and Innovation Centre at Innovation Way in Wilthorpe on the second Tuesday of every month.

Talk to Halifax Law Society: Trade Marks and Passing Off

I have been asked to talk about trade marks, passing off, geographical indications and the legal protection of brands generally to Halifax Law Society at the White Swan Hotel in Halifax on Tuesday, 20 March 2012 between 13:30 and 15:30.


My talk will cover the following topics:

• Definitions: what is a brand and what is a trade mark;
• Common law protection of brands;
• Trade mark registration;
• TRIPS, Paris and Madrid;
• Trade mark directives;
• Trade Marks Act 1994;
• Community trade marks;
• Registration in the Trade Mark Registry and at OHIM;
• Objecting to a registration: third party observations, opposition, invalidity and revocation;
• Infringement proceedings in the Chancery Division and the Patents County Court;
• Passing off;
• Geographical Indications;
• Domain names; and
• Company Names Tribunal.

For further information, my contact at Halifax Law Society is Carol Stevenson of Finn Gledhill on 01422 330000 or enquiries@finngledhill.co.uk but the Halifax Law Society blog also invites enquiries to David Swarbrick (@dslippy) at dwarb@gmail.com on 0795 457 9992. I am also happy to be contacted on  0113 320 3232 or through my contact form and I shall pass on any enquiries to Carol or David. 

Finally, I wish you all a happy New Year.