Saturday, 12 April 2014

Does The OHIM Board of Appeal have a Backlog?

All courts and tribunals have a period between the closure of the case (whether it be the end of the trial or the closure of a file of written submissions as at the OHIM Board of Appeals) and the date of the decision. In the case of the OHIM Boards of Appeal the published service standard is 8 months. As you can see from the results which were updated on 1 April 2014 with the 2013 4th quarter outcome, the inter partes Appeal  results rose from a dismal 58% in the third quarter to 80%. For ex-parte decisions they hit 96%.
A Backlog of paperless files can be denied

This would seem to suggest that any backlog has been dealt with, or does it?

These are figures for cases where decisions have been issued within 8 months - not exactly a short time compared with the UK IPO or Courts. Therefore a stunning result can be achieved by taking the recent cases and issuing quick decisions. There are a lot of simple decisions to be taken too, where the Appeal is ill-founded for want of grounds or some such. These decisions are commonly caused by an Appeal being filed to achieve a settlement, but they still generate quick and easy decisions to keep down the averages.

My perception is that there is a backlog is based on one observation of a decision awaited since the file was closed on 31 July 2012. The timeliness standards had given me the impression I was not alone, but apparently I am.

The President of the Boards Of Appeal who attended the Mediation event in London on 31 March 2014 told me there was no problem. The existence of a backlog was denied again by Christoph BARTOS,  member of the Board during the OHIM webinar on 9 April 2014 on Decisions of the Trimester.

ESearch reports that there are 884 appeals pending - these are the Opposition and Absolute Grounds Appeals. 280 filed in 2014, 503 are 2013 appeals but it also confirms that 60 of those appeals have 2012 Appeal Numbers but some of those are already with the CFI and some could be suspended so they are not all part of the non-existent backlog. There are 33 2011 Appeals pending and 7 from 2010 leaving only 1 earlier Appeal except there were 3 in 2009 so something does not add up. Ah, there can be more than one appeal number on a file. 

So what about Cancellations which don't get given an Appeal pending status but a Registration Cancellation pending status. There are 87 with 2014 Appeal Numbers, 239 from 2013, 117  from 2012,  96 from 2011, 37 from 2010, 20 from 2009,  23 from 2008, 14 from 2007.

Now this is perhaps not a backlog, because we cannot expect OHIM to take responsibility for the European Court and its delays or the desire of parties to suspend their cases. Nonetheless I suspect there might be a case to answer on Cancellations. These inter-partes issues are often more challenging legally but also more important commercially. Can you help me establish if there is a problem in the Cancellation corner?

Monday, 7 April 2014

The Enforced Covenant

Despite the oft repeated myth of recruitment consultants that restrictive covenants are seldom enforced or are unenforceable, the reported cases tend to tell a different story. Another such case emerged from the Chancery Division in March - often they are in Queen's Bench.K3 stood behind him and was prepared to undertake to the court that
David Donaldson QC the judge
It concerned Mr Huggett, a sales manager in the software for the fresh produce industry.  He does not get a good press for credibility in the report, but tellingly his new employer was prepare to undertake that
(1) until 2 January 2015 it will not permit or encourage the Defendant to act in breach of the Clause 20 covenants against solicitation and dealing and disclosure or use of confidential information (2) it will pay to Prophet any award of damages or costs ordered by the court arising out of this matters, if not previously satisfied by Mr Huggett.
It was to no avail, the former employer Prophet got its injunction to enforce the broader Clause 19 covenant preventing Mr Huggett working in a competing business for one year, despite considering the hardship  involved and the possibility that damages could be an alternative remedy under the Shelfer principles, that are now increasingly discussed post Enforcement Directive in relation to IP matters and which have recently been considered by the Supreme Court in Coventry v Lawrence another nuisance case. In this case the discretion was not exercised.

The covenant was interpreted generously. As drafted, a proviso said it would only operate to prevent the employee being involved in a business selling the Prophet products, which indeed he would not. As enforced it prohibited Mr Hugget from being involved in the provision of business process computer software designed for the fresh produce industry. The judge would have been happier with adding or similar to the original wording but Mr H's counsel does not seem to have been able to disagree with the Prophet amendment.

The court was persuaded that this covenant was reasonably necessary to protect trade secrets or confidential information. Technically a business  cannot be prevented from competition by an ex-employee.  Note that partners (not paying NICs) are not employees but owners and don't have that protection. To most of us the effect of this covenant was a non-compete clause. The trade secrets were just details of a producer on the market for such software. Nevertheless it was held reasonable. The fact that Mr Huggett had downloaded a large quantity of Prophet data did not help the credibility of his arguments that the databases were of little significance. The judge concluded that the risk was real, not fanciful, but that it did not greatly exceed the low threshold. Even so Mr Huggett cannot now work for a year to protect these nebulous secrets.

No doubt he wishes he could have mediated a compromise rather than encountering the black and white result of a court judgement. 

A matter of reference

As a person who has taught many students, worked in many places, met many people and, perhaps most critically, remained alive for a fair length of time, I have written far more references than many.  I'm always happy to write in support of friends, former students and colleagues, people with whom I've shared research projects and conference platforms and, increasingly, people whose work I have edited or followed online.

There are a few downsides to writing references, inevitably. These include but are not limited to the following:
  • people who apply for positions for which they have no aptitude and, frankly, no hope at all, but who apply because "they might as well" -- or because "someone has to get the job so it might be them". No, life doesn't work that way. It seems to be quite a common occurrence that, where there is no suitable candidate, most people nowadays don't award the advertised job to the most suitable failure. But HR are quite happy to ask me for a reference because "they might as well" ...
  • People who don't ask me before giving my name as a referee. Sometimes I have already committed to writing a glowing reference for a candidate who is in my opinion really worth appointing, and I don't have much fulsome praise left for the next one to come along.  I can't really write with conviction something like "If for some inexplicable reason you don't like candidate A, candidate B is nearly as good".
  • Reference templates that assume that you must have been the applicant's former employer. These are annoying since they require the provision of non-existent information like "how long was the applicant in your service?" and "for what reason did the applicant leave?"  Particularly where the applicant has been self-employed or has worked with rather than for the referee, this sort of template is unhelpful.
  • Requests for references after the appointment has already been made.  It seems to me illogical and unjustifiable to ask me for a reference for a candidate, as someone did this morning, a full five weeks after that person was interviewed, weighed, measured and offered a post -- which was accepted.  On being asked for a post-appointment reference on one occasion in the past, I asked why and received the answer "We want it for our records".  I then asked "And what do you propose to do with your records, when it comes to references received after you've chosen your candidate?" but received no answer. 
Can readers of this blog shed any light on this mysterious practice?

Wednesday, 26 March 2014

Associations and marks: which is the best approach?

This blogpost has been composed by Sally Cooper, but is posted on her behalf by Jeremy

NewAssociation Limited (“NA”) provides a logo and explains its business plan which involves both (i) NA engaging in the manufacture and sale of (a variety of) goods to which the logo is attached and (ii) NA engaging in licensing to (carefully selected) others who want to use the logo.

NA has great faith in the attraction of its logo and experience in selling low-price merchandise (so T-shirts, mugs, keyrings etc). NA has no experience of selling luxury goods but (back to the power or attraction) great faith that it can find established businesses prepared to pay to use its logo. There may even be a time (says NA) when it can stop its own activity of manufacture and sale and rejoice in being an
Association devoted to allowing others to use its logo.   

I like the logo. I am sympathetic. And I need time to think.

That is, to think about “collective marks” which are marks “distinguishing the goods or services of members of [an] association [which is the proprietor of the mark] from those of other undertakings” [section 49 Trade Marks Act 1994].

I see that the UK Trade Mark Registry’s Manual of Trade Marks [Chapter 4] sets out what I learned at Law School: viz:  
“ [Certification and] collective marks differ from “ordinary” trade marks because an ordinary trade mark is one that distinguishes the goods and services of one particular trader (a single trade source) from those of other traders”.
 I am pleased that the Manual sorts out a fuzzy memory: certification marks (used to indicate that the goods in connection with which the mark is used are certified in respect of origin etc) are (says the Manual) “not used by the proprietor of the mark”: however “not used by the proprietor of the mark” isn’t a consideration in the context of collective marks.

I remind myself of NA’s long-term aspiration of being an Association devoted to allowing others to use its logo.

Do I recommend only filing an Application for an “ordinary” trade mark ? Or do I set off into the (largely unknown) territory of an Application for a collective mark ?

Fortunately (grateful thanks to IPKAT) I then read the decision of His Honour Judge Hacon in The National Guild of Removers and Storers Ltd v Derek Milner t/a Intransit Removals and Storage [IPEC: 18 March 2014, IPKat here].

From its final paragraphs, I learn two things. 

First, I see that the claimant in the case shared similar uncertainties. The judgment sets out that before filing an Application “[the claimant] professed no expertise whatever in the law of trade marks and said that [ it] was entirely guided by the IPO" / “ [the claimant] must have discussed the alternative possibilities of applying for a collective mark or a trade mark, but in any event [ it] would have gone with whatever [ the IPO] advised [ regardless of fees] “. The outcome of discussion with the IPO was that the claimant became the proprietor of an “ordinary” trade mark rather than a collective mark.

Secondly, I learn the opinion of the Judge that, since the Trade Marks Act 1994 was drafted and enacted , “the view on how a trade mark may be used has been updated and has altered”; indeed it has been updated and altered to the extent that His Honour says 
“I find it hard to think of a circumstance in which an association entitled to apply for a collective mark could not avoid the cost and inconvenience of those provisions [ section 49 Trade Marks Act 1994 / Schedule 1], and indeed evade the safeguards to the public they afford, by applying instead for a trade mark".
 I shall recommend an Application for an “ordinary” trade mark: if you disagree – there’s the Comment box!

Sole practitioner Simon gains accolade

The SOLO IP weblog congratulates Simon Thorley QC on his recent award for Outstanding Achievement at Managing Intellectual Property magazine's Global Awards 2014 ceremony last week in the luxurious surroundings of London's Dorchester. This blogger was out of town at the time and missed all the fun -- but he understands that Simon graciously described himself as a "sole practitioner" -- which indeed he is.

You can check out all the awards here.

Tuesday, 25 March 2014

Of proof and professional duty: a thought

A recent post by this blogger on the PatLit patent litigation blog touched on two delicate topics: one is professional negligence, the other the extent to which a patent attorney who is accused of professional negligence can secure the documentary evidence that reflects on such relevant issues as (i) the precise scope of his professional duties, (ii) whether he has fulfilled those duties to the requisite standard or as failed to do so and (iii) whether his former client's loss is the result of any breach of those duties or is caused by some other factor.

In an ideal world, the terms on which any professional representative acts for a client will be contained in a document in which those terms are clearly stated, easy to comprehend, spelled out to the client and happily agreed. But we do not live in an ideal world. Even if such a document is drafted and the terms of engagement are as described in the previous sentence, the relationship of client to professional representative does not always remain static: as work progresses and the file grows fatter, the professional may find that he is, at different times, a technician, an amanuensis, a business adviser, a financial consultant, a marketing guru, a maker of vital personal connections with others, a confidante and a nanny too. Any original terms of engagement may well have been long overtaken by events -- with the result that the real relationship between client and professional representative may only be truly capable of being extracted from a myriad of emails, memos of meetings and other materials that are tedious to gain disclosure for and even more tedious to wade through.

Is there an easier solution, or an ideal one?

Friday, 21 March 2014

Sally Cooper reaches for her colouring book

NewClient Limited (“NC”) provides a new logo which involves a creative intertwining of the letters “N” and “C” imposed on a fictional flower. I see the flower as a combination of a buttercup (the head) and a rose (the stem). To hide my horticultural ignorance, I comment on the fact that four logos are provided – a first in orange, a second in green, a third in blue and a fourth in red. 

I am told that the new logo has been created in-house by NC’s (employed) design team and the
concept involves use of a different colour in the context of each different business activity. I am also told that NC will operate only in the UK in the near future, and all business is “sporting and cultural”.

The copyright symbol – (c) copyright NewClient Limited 2014 – is attached to materials provided
(none of which have yet been released to the public), and the budget for doing anything further is (very) limited.

I am asked about “Trade Mark Registration” and “DesignRegistration” which NC has read about on the website of the Intellectual Property office at

Particularly, I am asked about registration and colour : I do my best. Key parts of the letter I draft for sending to NC are as follows :
Dear NC
Amongst the issues under discussion are (1) the costs of filing either a Trade Mark Application or a Design Application, and (2) rights arising to the owner of a Trade Mark Registration (under the Trade Marks Act 1994) or to the owner of a Design Registration (under the Registered Designs Act 1949 (as amended). In turn :
1) Application Costs :
 a) Trade Mark Application :
    In order to concentrate on issues of colour, assumptions made are (a) that the Application will be for services in a single Class (viz: Class 41) and (b) that payment of official fees with not be made at time of filing (so no discount of £ 30).    The UK Trade Marks Registry will accept a series of two marks for its basic fee of £ 200.    So NC could apply for its new logo without colour (version in “black-and-white”) and, for that same basic fee of £ 200, add (say) the logo in orange as a second mark.    If NC takes the view that this gives undue importance to the logo in orange, it becomes relevant that the Registry requires an official fee of £ 50 for each additional mark in a series.
    To take account of its view, NC might apply either (a)  for one mark being  the new logo without colour (version in “black-and-white”) (basic fee of £ 200), or (b) for a series of five marks (logos in “black-and-white” / orange / green / blue / red) which attracts an additional official fee of  £ 150
(so £ 350 in total).
b) Design Application :
 The UK Designs Registry will accept two-dimensional designs (“Business logos”) in Class 99 (“Miscellaneous”). It has a basic fee of £ 60 for a first design, and £ 40 for each design thereafter. 
Hence, NC might apply only for its logo without colour (“monochrome”) for the basic fee of £ 60, or it might file for five logos (“monochrome” / orange / green / blue / red) at a total cost in official fees of £220. [ An assumption is made in the case of all fees that publication will not be delayed ].
2) Rights arising  : 
a) Trade Marks Act 1994
“The relevance of colour to a mark registered in black-and-white but used extensively in a particular colour or colours” is the title of a recent Notice issued by the Trade Marks Registry [ TPN 1/2014 ].
The background is a case decided by the Court of Justice of the European Union [ CJEU ] which concerned a mark which had been registered only in black-and-white, but which had, in fact been used extensively in colour  [ Case C-252/12 Specsavers  International Healthcase and Others v AsdaStores Limited ].
The Registry’s Notice brings good news that “use of colour may be taken into account as a relevant factor when considering the likelihood of confusion, detriment or unfair advantage being taken of the registered black-and-white mark” [ paragraph 3 ]
But the Registry also gives a warning : “the CJEU’s judgment does NOT (and NOT  is emphasised by the Registry) mean that colour should be taken into account where the [the owner’s registered trade mark ] has been registered in black-and-white but either (i) has not been used, or (ii) has been used in colour(s) but the extent and consistency of such use is not such that the colour(s) formed part of the distinctive character of [ the owner’s registered trade mark ] .... In these circumstances, colour will be regarded as irrelevant”.
b) Registered Design Rights 1949 (as amended)
The Court of Appeal in the United Kingdom gave its judgement in the case of Magnetic Ltd v PMS International Ltd on 28th February 2014
The Court looked at the record of a three-dimensional article where representations on file did not include any colour and (Lord Justice Kitchin) said “it is striking that the various representations are shown in monochrome, and so it must be concluded that this design is not limited to particular colours”  [ paragraph 42 ] (this time, the emphasis added is mine).
I have put this draft letter to one side whilst I ponder the question : is it really the case that black-and-white / monochrome logos on the Designs Register now enjoy broader protection than black-and-white / monochrome logos on the Trade Marks Register ?

Answers to the Comment box !