Wednesday, 16 September 2015

Design Clients - the impossible market

Where they agreed
The UK Intellectual Property Office has just launched a consultation paper to determine whether the UK should join the Hague Agreement for the protection of industrial designs. Recently, the UK IPO has launched a twitter feed (@BeautifulIP) to promote design registration, mainly focusing on the low cost and benefits of registration.

It knows from the activities of organisations like ACID that design matters and is really important to UK designers, who just hate being copied or even emulated. What is more difficult to understand is why the registration systems are the most neglected part of the IP system. Even the grace period has not helped much. There is, of course, competition from Europe with the Community Design System and there is no doubt that their filing interface is a million times better than the UK one - which is still paper based. Nevertheless for a single design €350 is a lot more than £60.

A UK designer can already access the Hague System since the UK is part of the European Union, which is a member. Hague allows you to file online. It is operated by WIPO but unlike the PCT and Madrid systems for patents and trademarks, Hague goes all the way and gives you design protection, though you may still need to deal with national offices if they have additonal examination issues within 6 months. You can also file and manage your applications online. Now that you can use the system to protect your design in Europe, the USA and Japan, it has become a practical proposition for designers to use. Prior to May 2015 when the US and Japan joined, the scope of protection available beyond the EU had almost no overlap with the real market for exclusively designed products.

The biggest problem I have when dealing with clients that are interested in protecting their designs is explaining to them the nature of the representations they are going to need. These images are the essence of what is protected and a simple snapshot, a glossy picture from your catalogue, or even a clip from your production drawings isn't likely to help the judge if you want to enforce the design registration. The judge can't and won't go behind your scrappy image (even if it was taken at phenomenal cost by an art photographer)  and look at your preparatory work. This was why things went badly for the Trunki designer. Even the Supreme Court may not be able to help him. Look out for the hearing of PMS International Limited (Respondent) v Magmatic Limited 

Design clients want great value for money. They want certainty. They don't want to engage in discussions about which aspects of their design are significant and whether colour, shading or particular elements of the shape are original or commonplace. They want to evolve and change their designs frequently. They are economical with both funds and time. They are creative and don't mix well with the pedantry of lawyers. Even those who have suffered plagiarism are reluctant to make upfront investments and they prefer the court of public opinion to IPEC. Design collections are typically numerous, frequently refreshed and many designs fall by the wayside before the one classic for which 25 years of protection would be of value is found.

The UK government wants to help and support these people. I applaud them. They may be able to go where the profession cannot. Designers have abandoned lawyers but they cannot abandon the law if they want to manage what they see as plagiarism. I hope that our leading designers like Tom Dixon will stand up and respond to the good Baroness in her efforts to get UK designers to go to the WIPO site and protect their designs both in the UK and possibly in other countries which belong to the system. He briefly flirted with the system in 2011. You can search here.

Certainly if we are going to exit Europe, it's going to be a good idea for the UK to join in its own right.  The consultation paper emphasises fee savings but fails to consider how designs need to be represented for effective protection, especially in the US, where refusals may be more likely.

Do you have any design clients left? If so it may be worth responding to this consultation before 10 November 2015. The UK government is doing its very best to assist the creative industries I hope they respond and encourage the UK to sign up.

Wednesday, 9 September 2015

EPLC not so epic, it seems

Grandfathering provisions
aid those already practising
Practising patent law? Planning to litigate in the new but not yet operational Unified Patent Court? If so, this may be for you.  Today the Unified Patent Court website has posted the following information:
Draft proposal for rules on the European Patent Litigation Certificate and other appropriate qualifications 
At its meeting on 3 September 2015 the Preparatory Committee agreed the draft proposal for the Rules on the European Patent Litigation Certificate and other appropriate qualifications. The Explanatory memorandum and a copy of the Draft Rules are available.
The Explanatory memorandum is nine pages long, while the 22 draft rules take up just eight pages.  There's good news for grandfathers, in that some existing qualifications will be recognised, and those who have had a hand in three pieces of patent litigation over the past five years too.

The draft Rules make no reference to solo practitioners or to the size or resources of practices.

Monday, 7 September 2015

the Ethics of Patents on Life : a taster

Murray Edwards College where we discussed #patentsonlife
Those of you who follow my twitter feed will know that #patentsonlife figured a lot from 4-5 September. This was a true multi-disciplinary conference that I blogged about before the event here.
It was an extremely stimulating conference and brought together many streams of academic interest within a manageably sized gathering. There was good representation from the patent professions from a High Court Judge to several patent agents; the Churches Religions (mostly from the Catholic church which being an undemocratic global organisation is able to speak with a single voice); Bioethicists and Scientists from Academia; and even Syngenta's IP counsel to represent the commercial world, though we had no policy makers or representatives from the patent offices (they need not have been afraid). The list of speakers can be seen here and they all stayed for at least one full day and participated in the discussion unlike many a traditional IP conference.

I am hoping that Michael Factor who presented a Mosaic viewpoint on property in ideas will also blog his impressions of the event.

Each delegate came from his own world but went away with a better understanding of the viewpoint of others. Those of us who understood that patents are time-limited and relate to inventions strove to help others discern  the distinction between discovery and invention. While there are some who feel the patent system is iniquitous, it is clear that there are distinctions to be drawn between the morality of research, the validity of patents relating to aspects of outcomes of that research and the manner in which any patents are exploited to the benefit or detriment of society. In turn,  we gained a better understanding of how  catholic social doctrine can justify the capitalist concept of property ownership. Big academic ideas like social mortgages and the public trust doctrine were also explored. The capacity of patent examiners to make moral judgements or even apply the Biotech Directive was considered. We learned how the search for funding may perhaps create a tendency to make big promises or attempt to exploit the patent system for financial gain.

There is much to be done by those digesting the contributions to this conference and a publciation should emerge. Nevertheless I hope that when silos of interest discuss ethics they will remember that social doctrine is something that affects and needs to be influenced by the whole of society and cannot be dictated by any single sector - however learned the  IP specialists.

UCL is also organising their own micro panel event here.

Saturday, 29 August 2015

Mis-Sold Community Trade Marks

Following the judgement of Mr Justice Hacon in The Sofa Workshop Ltd v Sofaworks Ltd [2015] EWHC 1773 on 29 June 2015, there have been a flurry of case notes from the great and the good of the UK trade mark profession drawing attention to the fact that community trademark registrations maybe inappropriate for many clients who don't maintain a presence on the European Union market, but something rather smaller and more local. These case reports include ones from  Cleveland, Marks & Clerk, Dehns, Mewburn Ellis and others.

Those links will take you to the articles which describe the background to the case and the decision.  Essentially, since the mark had been used and promoted only on the UK market for sofas, it was held not to have been used in the manner required by the European Court of Justice when it decided C 149/11 Leno merken, the ONEL reference from Benelux. This was in December 2012, so why the long hiatus before we realised what this all meant.

But wait, the opposition divisions of OHIM and national patent offices have been trying to apply Leno merken all this time. Opposition decisions, though, do not create precedents and are frequently not studied in any detail by academics or the trademark profession.

Leno merken was a clever academic decision that said (unhelpfully, if politically correctly) that we were to  ignore the territorial borders in the European Union. This rather detracted from the important point that it was the use in accordance with its essential function and for the purpose of maintaining or creating market share within the European Community for the goods or services covered by it we had to look at. In particular we should  a"take into account the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and the scale of the use as well as its frequency and regularity".

The European market for anything is typically bigger for most goods and services like sofas, but it is often quite difficult for a trade mark agent to provide evidence of the European market for their goods. The CJEU did recognise that some markets could be restricted to a single member state (paragraph 50) but in this world we need to know more about the economic features of a market and (perhaps) provide evidence about it. Help!

On 20 May 2014 in a first instance case 000008263  - the Cancellation Division considered the board game market and made this damning assessment:

The remaining invoices which are dated within the relevant period only show sales to customers in Germany which is a relatively small part of the European Union. In territorial terms and in view of the unitary character of the CTM, the appropriate approach is not that of political boundaries but of markets. As the Court indicated in 'Leno Merken', it is impossible to determine a priori and in the abstract what territorial scope should be applied in order to determine whether the use of the mark is genuine or not (para. 55). All the relevant facts and circumstances must be taken into account, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and scale of the use as well as its frequency and regularity (para. 58)....     these 15 invoices are only billed to customers in Germany and as such invoices for three years for a low amount in one country are not sufficient to prove genuine use of the earlier mark.
Nevertheless on 27 February 2015, paying lip service   to Leno the Fifth Board of Appeal decided in RAPIDO  a case concerning goods and services related to lotteries, said:
The evidence submitted in the present case essentially covers France, which considering its geographical size and population density constitutes a substantial part of the European Union. The evidence, therefore, shows that the contested CTM was used in the territory of the European Union
One might have thought that the characteristics of the lottery market in a world of EUROMILLIONS  were such that a presence on it required a little more to sustain a Community Mark as opposed to a French national mark, but no.

The principle of  use relative to the market has brought in a de minimis standard by the back door (not a rule, you understand, a relative standard that takes into account all the circumstances).  This even applies in judging genuine use of national registrations. See Case C-141/13 Reber WALZERTRAUM from 17 July 2014. The case is in German but you can refer to the IPKAT report here.

Nike has added a interesting dimension in its heroic fight to register JUMPMAN in Europe. Its CTM succumbed in  Case T‑233/10 to an opposition based on earlier Spanish registration and was duly converted to national marks, at least in the UK and Benelux, and the same opponent raised an opposition based on an earlier community trade mark for JUMP which was subject to proof of use.

The shopping in Varna
In the UK in October 2014 Oliver Morris assessed the evidence and found it wanting to show genuine use on the market for shoes in the European Union. He applied Leno Merken  with the same aggressive verve as Mr Justice Hacon did later, and also considered Reber. The decision in O/451/14 is here. It was appealed to the Appointed Person and the hearing was on 21 July 2015. Rouse, who acted for the opponent at first instance, have provided an interim report here. The real decision is awaited.

Meanwhile, in Benelux, on a parallel case, where we must assume the evidence was pretty similar, the Benelux IPO decided exactly the same way on 12 August 2015

In both cases the decisions stopped at the proof of use stage and did not consider what would have happened if they had been wrong. I suppose there was no need with Case T‑233/10 lurking in the background.

Now did these two independent tribunals stretch Leno Merken for the benefit of a big brand owner or are their decisions correct. They deny genuine but small use in a shop in Varna, Bulgaria as an  insufficient presence on the European Union footwear market, which Mr Morris held was manifestly huge. He was supplied with a Euromonitor report, but he said its hugeness was self-evident. This leaves us a little in the dark as to when evidence may be required and when not. The Benelux decision does not refer to any evidence about the European footwear market.

OHIM's cancellation division on 30 June 2015 in the case of CECCONI'S had to consider the EU market for celebrity restaurants. The Decision in C000008943 held that one location in Mayfair was enough to sustain a CTM for "restaurant and bar services" but they revoked it for the broader category of "Services for providing food and drink; catering services.". In this case the characteristics of this esoteric market and a nice continuous stream of TRIPADVISOR reviews across the relevant period and from other Europeans,saved the validity of this CTM.

It would be interesting to have input on other cases if you have suffered any surprises.

Although consistency may not always be there in a Europe, which doesn't believe in precedent, it does seem that the selling spiel we were all encouraged to give that the CTM was validated by use in a single country is now wrong. OHIM has become extremely wealthy on the back of a misrepresentation.

Indeed if your client is a lifestyle business with a local footprint and no intentions to expand, the right advice may be to leave even the UK Trade Mark register alone. After all most fights start when a big brand notices and opposes a  startup. Of course, that leaves the lifestyle business relying on a section 11(3)  or Art 111 defence if someone else later registers the same or  a similar mark in the UK or OHIM respectively.

For other clients we now need to make a more careful choice before opting for the hitherto bargain CTM. In some cases it might be wise to surrender and convert a vulnerable CTM. What say you?

Wednesday, 19 August 2015

Affording Regulation

If you wish to object to your regulator, IPReg, increasing your practice fees, then by 7 September you need to email IPReg

Earlier this month you probably received an email about the 2016 business plan and budget. It contained a link to this page which includes a nice little letter from Mr Heap the chairman of our regulator, a draft business plan, draft budget and, significantly, a table showing the proposed increases in fees.

Now the proposed increases don't look much, but they do amount to 7% which in a time of 0% inflation is quite stonking. Due to the fact that everybody pays more than one fee the precise impact is going to vary from firm to firm.

I was surprised to see that attorneys who are retired or inactive are paying to remain on the registers £147 for one or £236 for two . I suspect they won't be for much longer. What is the purpose of being on a register if you are retired, so I suppose this means unemployed and looking for a job - so raising that fee is to encourage them into the unregulated world?

Stop Discrimination against Patent and Trade Mark Attornies

In 2014 I paid  as a solo practitioner with no employees £390 and next year they will want £459. If I could limit my practice to one or other of patents and trademarks, then I could make a saving. However, I'm not too sure why I am penalised for offering more comprehensive service to the consumer. This structure encourages over specialisation and should STOP

Amongst the more interesting things the draft  business plan promises is a policy on stale examinations. They've been promising this for a while (might even be a little stale itself) but I am not sure if it has anything to do with the notorious  CIPA biscuit pixies.

Under Communications they propose to meet with registrants at regular open meetings - which is the same as last year's plan but I can't recall any.

Another thing they intend to do is monitor the enterprise court small claims procedure which is intended to widen access to the lay applicant.  Lay applicants do not use regulated people, why am I funding this?

One thing that isn't there is any review of the Insurance sector. At present rule 17 requires any new entity requiring approval to use PAMIA. Isn't it about time they reviewed the market and approved at least one competitor?

While regulation is necessary it seems desirable that we should stop the cost of it escalating. The Chairman's letter acknowledges that mining into ABS structures costs money. This year perhaps their review of what they did will reveal that it had little regulatory benefit. If IPReg is really too small to be cost effective, it should be looking to merge. Put that in the business plan.

Monday, 10 August 2015

Are we UPP to speed on on Unified Patent Strategy

Patent applications filed at the EPO today could emerge on grant as Unitary Patents or European
High Tech Lemon Squeezing
Patents of Unitary Effect - abbreviated to UPP (which really stands for Unitary Patent Protection). So far most of the news on this exciting topic has concentrated on the preparations for the Unified Patent Court (UPC) and its procedure. UPC even has its own website and its news machine is very exciting and efficient. The date it all goes live could be in 2016.

My latest copy of the CIPA Journal -available to members using Safari or Internet Explorer here contains at page 59 an interesting article by Ellie Purnell reporting on the Manchester meeting which  encouraged us all to keep up-to-date. (If you read it you will understand what I mean when I say "I am squeezing her lemons").

We even know what the renewal fees of the UPP will be when one is eventually granted as this was agreed back in June. They are really very interesting. If you could get an UPP granted quickly you could save a bundle on awful EPO renewal fees on pending applications. Not until the 12th year does a UPP cost more to maintain than an application languishing before the EPO. This is a serious wake-up call to patent attorneys: we need to get patents granted or abandoned. I like their thinking.

Now I expect that all the big firms have been brainstorming their strategies for their clients and are able to advise on whether EPO applications or national applications are the right route on each individual case. However, solos might be a little bit less well positioned for brainstorming so I thought I'd look and see what resources were available to help clients and solo strategists.

The EPO has some useful FAQ here but they are not in the business of offering strategic advice.

The companies filing their priority applications now, the UPP is something they need to take into account, especially if they think they might want national patents rather than put all their eggs in one basket at the unitary patent court. Judging by the is the concern amongst big business for opting out their classical European patents and their distress about the possibility of paying €80 for each opted out patent family, we must expect that industrial patent departments are well abreast of the issues, so are they abandoning the EPO in droves?

The real decision time if you are on the EPO route is after grant. At that stage you have to choose whether to go for a UPP (patent with unitary effect) or national patents or a combination. Combination is necessary because the UPP does not cover all EPO states and will never do so since some of them like Switzerland are outside the European Union. Therefore, you may think it's safe to carry on with the standard PCT EPO route, but is it? If the EPO is going to stall applications with an adverse search report, sticking with the EPO could be an expensive option. Maybe long pendencies are quite attractive to an applicant and therefore choosing our now under-resourced national patent offices for examination might be an interesting option for keeping hopeless patent hopes alive and your competitors wondering.

What do you think. Please draw attention to any relevant articles?

Tuesday, 28 July 2015

Access to Justice Pro-Bono- the Beavis Way

A few days ago (21 -23 July 2015) three days of Supreme Court time were occupied discussing
whether an £85 fine for overstaying in a car park was an unenforceable penalty (which is an important point for all who enter into contracts) or merely unfair under the Unfair Terms in Consumer Contracts Regulations 1999/2083. Those with enough broadband in time can listen to the full argument here.

The Law Society Gazette reported the case here  and it has attracted a great deal of attention from those who comment. Many are concerned about parking, but some are interested in how one deals with unconscionable bargains in the wider world.  The earlier article from the Gazette is here. This discusses the legal issues in more detail. For the answers we will need to wait for the judgement. Even patent and trademark agents are aware of some obvious unconscionable bargains amongst the scam invoices and renewal services offered to their clients unsolicited. Such scammers, though, seldom try to enforce their contracts in the courts like parking contractors do.

Funding the Case

 Mr Beavis, who is said by The Independent to be the owner of the Happy Haddock in Billericay  was fortunate in being able to raise money for an issue that sparked the public interest of motorists at least, by means of a crowd funding appeal. He is not at risk of costs because this was only a "small claim" and he has paid the £85 penalty. Parking operators business models are however in jeopardy. Many other extortionate contracts might also suffer if the Supreme Court decides in favour of Mr Beavis. It should be noted that neither the original judge nor the Court of Appeal were sympathetic to his plight. Even if the Supreme Court decides £85 wasn't unconscionable, it may set guidelines that will keep figures more confined in future contracts.

What if your intellectual property problem does not capture the public imagination like Mr Beavis's car park fine? How will you will obtain economic access to justice if you feel you can't afford to defend your IP or defend a claim that you are guilty of IP infringement? You can become a litigant in person. However, a company does need to be represented. The Chartered Institute of Patent Attorneys now has a working group on pro bono services and if you are interested watch out for an announcement in the CIPA Journal. Meanwhile, your best bet is to work on a pitch for why your case deserves the unpaid help of a professional.