Thursday, 28 April 2016

Why Every Business Owner in the East Midlands Needs to Know Something about IP

IP can make more trouble than the Lincoln imp (see The Legend Visit Lincoln)
Author Hongking
Source Wikipedia

Reproduction licensed by the author

Jane Lambert

For the last twenty years I and countless others have been telling business owners in this region the positive case for learning about intellectual property ("IP"). There is a very powerful one. It can help businesses to establish themselves in a market by shielding them from competition. That is because the bundle of laws that we refer to as IP grants those who devise new products or processes monopolies of their inventions known as patents and a right to those who compose music or create games to prevent others from broadcasting, performing, publishing or otherwise exploiting their work known as copyright.

Too often my presentations in this vein are met with polite applause and the occasional question or discussion after the talk which probably explains why the UK, the country of Newton, Faraday, Watt and the first industrial revolution has trailed consistently not just Germany and France with similar populations and GDP in the number of European patent applications but even the Netherlands with one third of our population and Switzerland with an eighth.

So now I am going to try a different tack. One of fear. Those same monopolies and exclusive rights that can leverage your company's investment in branding, design, technology and creative output could threaten the very existence of your company and cost you plenty?

"How so?" you ask.
Well those same IP laws can grant monopolies to your competitors and impose restrictions on what you can make or sell and the name or style under which you carry on business that can be infringed quite inadvertently. If you are found to have infringed someone's IP right you could be injuncted (ordered by the court to do or refrain from doing something on pain of imprisonment for disobedience) and made to pay damages (compensation) or account for and surrender any profits that you have made from your wrongdoing and contribute substantially to the other side's legal fees and other costs. Some IP infringements are also criminal offences so in an extreme case you could be prosecuted and even fined or sent to prison if convicted.

"I understand that I could get into trouble if I copied someone's product or brand name," you say, "but all our research work, design and branding is done in-house and we are very careful not to copy anyone else's."
Unfortunately, that may not be enough for a monopoly can be infringed quite unintentionally. You may import a product made quite lawfully in China or some other country which falls within the claims of a patent granted by the Intellectual Property Office in Newport or the European Patent Office in Munich. If you did not know of the patent you should have done because nearly every British and European patent and patent application is published on the Espacenet, Google and other patent databases and all you have to do is look.

Easier said than done, of course, because patent searching is a skill that takes time to learn but there are plenty of people who will help you including Ged Doonan of Leeds Business and IP Centre on 0113 247 8266. You should also keep your ear to the ground and keep abreast of the technical literature.

Patents are not the only monopoly rights of which you should be aware. Businesses that register names and other words or logos as trade marks in relation to specified goods or services have the exclusive right to use their marks in relation to such goods and may sue anyone who used the same or similar sign in relation to the same or similar goods or services. The fact that you not have known of the registration is no defence. You should have made a proper search. If the registration or application would have shown up on a search you have only yourself to blame if you are injuncted and mulcted in damages and costs by the High Court.

There is also a registration system for designs in the UK and across the EU. Registration gives the person who registered the design "the exclusive right to use the design and any design which does not produce on the informed user a different overall impression" in "making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied" or "stocking such a product for those purposes." It is up to you to check whether the product that you make or sell falls within someone else's design registration.  Again, the Leeds Business and IP Centre should be able to help.

You should review the patent, trade mark or design registers regularly and preferably use a "watch service" (a service that monitors patent, trade mark and registered design applications and warns of any that may may affect their client). Yet again, Ged may be able to help.

You will probably find that any legal indemnity insurance that you may have taken out specifically excludes intellectual property claims but you can get such cover from specialist brokers such as Sybaris Legal and IP or Safeguard IP.

There may be grounds upon which you can retaliate. Sometimes it is possible to apply for the revocation of a patent or trade mark or seek the invalidation of a trade mark or design registration either in the IPO or to counterclaim for such relief in any infringement proceedings that may be lunched against you. It is also actionable to threaten patent, trade mark or registered design infringement proceedings without justification.

So where to get more information about IP? Well the IP, the Chartered Institute of Patent Attorneys and the World Intellectual Property Organization has made some useful animations which I discussed in Animated Advice on 18 March 2016 4-5 IP. The only Business and IP Centre in the East Midlands is Northampton Central Library (see Northampton Business and IP Centre 28 July 2015 and there is nothing to stop your consulting the resources in Birmingham, Hull and Sheffield.

If you think that you may have a problem in relation to someone else's IP rights or you simply want to discuss this article, give me a ring during office hours on 020 7404 5252 or message me through my contact form. Over the next few months I hold on-line and person to person seminars on this topic around the region in conjunction with local stakeholders.  If you are interested in coming do let me know.

Monday, 7 December 2015

The Midlands Engine

The Midlands
Author Morwen
Source Wikipedia
Creative Commons Licence

Jane Lambert

Although The Guardian facetiously described the "Midlands engine" as appearing to be "a leaflet and some money" in "Can the measly Midlands Engine turn the region into a powerhouse?" 4 Dec 2015 it offers serious opportunities for creative and innovative businesses in the region.  Having made a devolution deal with the West Midlands local authorities on 17 Nov 2015 (see Elected mayor deal for West Midlands Combined Authority agreed BBC website) the Chancellor of the Exchequer announced substantial investment in transport and the arts in his autumn statement (see Spending review and autumn statement 2015 27 Nov 2015 and the Business Secretary and the 11 Midlands local enterprise partnerships published the The Midlands Engine for Growth Prospectus on 4 Dec 2015.

The Prospectus indicated 5 priorities:
  • Trade and investment
  • Transport
  • Research and innovation 
  • Business support, and
  • Skills development.
On research and innovation the Prospectus promises:
"The Midlands Engine will drive up business innovation, improving business productivity and competitiveness. Our universities and business will work together pan-regionally to bring forward innovations that support our key sectors and drive this through the supply chain. We will work with Government to identify where opportunities exist to further our innovation activity across the Midlands Engine."
The opportunities mentioned in the Prospectus  include
  • Manufacturing, Engineering and Transport Technologies
  • Agri-food and drink manufacturing and production
  • Healthcare
  • Energy and low carbon technologies, and
  • Creative, Digital and Design industries.
To help finance such research and innovation, the Prospectus proposes "a comprehensive fund-of-funds:"
"To support business growth and survival, Midlands Engine partners will develop a £180 million region-wide fund-offunds utilising the EU Joint European Resource for Micro to Medium Enterprises (JEREMIE) programme. This fund will combine ERDF funding with matched lending from the European Investment Bank (EIB) and legacy returns from previous programmes. This will establish a comprehensive range of sub-funds designed to support the SME growth ambitions of the region. The funds will deliver access to finance solutions on a scale and ambition that has until now been unknown in the Midlands Engine region."
I shall support those initiatives by providing advice  on intellectual property, joint ventures, licensing and technology law through clinics. workshops and one to one consultations and representation in negotiations, mediation, the courts and Intellectual Property Office. Anyone who wishes to discuss this article or the Midlands Engine generally should call me on 020 7404 5252 during office hours or contact me through this form.

Monday, 31 August 2015

Intellectual Property and the Footwear and Textile Industries

Nottingham Lace Market
Author Allan Murray-Rust
Source Wikipedia
Creative Commons Licence

Jane Lambert

According to the East Midlands Textile Association ("Emtex") the East Midlands has the highest concentration of clothing and textile companies in the UK. Nottingham lace, Leicester knitwear, Northampton shoes have an enormous international reputation founded on branding, craftsmanship and design.

These intellectual assets that are protected by registered trade marks, registered designs and other intellectual property laws and on the 10 Sept and 7 Oct 2915 I shall explore such legal protection in a seminar for MBL entitled Intellectual Property and the Fashion Industry.  In this seminar I will cover the following topics:
  • What sort of IP protection does my employer or client require for his business and where?
  • What provisions should I insert in my employer or client's licence or manufacturing agreement?
  • What should I do if I find copies or lookalikes of my products in competitors' shops?
  • What's Hot? The implementation of s.74 of the Enterprise and Regulatory Reform Act 2013 - John Kaldor v Lee Ann/Specsavers vASDA/Thomas Pink v Victoria's Secrets
  • IP basics; terminology, intellectual assets (brands, designs, technology and works of art and literature), intellectual property (trade marks, registered designs and unregistered design rights, patents, trade marks, law of confidence and action for passing off), institutions (Intellectual Property Office, Office for Harmonization in the Internal Market, European Patent Office, World Intellectual Property Organization), Sources of law (treaties and conventions (TRIPs, Paris and Berne), EU legislation, statutes), enforcement. remedies, licensing
  • Advising the designer: types of design, aesthetic design, functional design, design registration and equivalent regimes, TRIPS, Paris and Rome Conventions, Designs Directive, Community Design Regulation, Copyright, Designs and Patents Act 1988, Registered Designs Act 1949, licensing, enforcement
  • Advising the manufacturer; patents, trade marks, designs, licensing, cabbage, summary of laws in China, Egypt, India, Indonesia, Morocco, Pakistan, Thailand and Turkey
  • Advising the retailer: trade marks, passing off, searches, agreements with designers and manufacturers
  • Dispute resolution: High Court, Patent Court, IPEC (multi track and small claims), IPO examiners' opinions, appointed person
  • IP strategy: identifying appropriate rights for particular jurisdictions, selecting and instructing foreign attorneys, watch services.
My seminar in London will take place on 10 Sept 2015 and my seminar in Leeds on 7 Oct 2015. Both will start at 09:30 and end at 17:15 and will earn 6 hours CPD. The standard cost is £480 but there will discounts for season ticket and smart plan subscribers. Register on-line or call  MBL on 0161 793 0984.

Tuesday, 28 July 2015

Northampton Business and IP Centre

Library card index

In Enterprising Licences 25 July 2915 NIPC Inventors Club I mentioned that Northamptonshire had received funding from the Arts Council to develop a Business & IP Centre at Northampton. I had noted that Northampton Central Library had joined the PatLib Network on 29 Jan 2015 so I checked the County Council's website to see whether there had been any change since then.

There has in fact been a workshop on intellectual property basics on 22 July 2015. Also, intellectual property advice sessions are available on the 1st and 3rd Thursday mornings of the month at Northampton Central Library and on the 2nd and 4th Tuesday afternoons of the month at Wellingborough Library. Anyone wanting to book a slot at one of those sessions should email or call 01604 361447.

There is also an organization called Creative Northamptonshire which offers one-to-one advice services to businesses in the creative sector and publishes a newsletter from time to time.

Although it is not connected directly to the  Business and IP Centre, Northamptonshire Chamber of Commerce will hold a business exhibition and lunch on 11 Sept 2015 at the Park Inn Northampton, Silver Street, Northampton NN1 2TA.

Tuesday, 3 March 2015

So maybe Grantham really is interested in IP Law

Rabbit food produced by Henry Bell of

Jane Lambert

Last September I tried to run a seminar on IP law as part of the Gravity Fields science and arts festival. To promote the seminar I wrote What has intellectual property got to do with Grantham? 4 Sept 2015 and an introduction to patent law as a Socratic dialogue in The Beehive pub. Try as I might I just couldn't raise any interest in IP and I had to cancel the seminar.

But a case that came before Mr Justice Arnold a few weeks ago shows that that there is at least one Grantham business that is interested in IP for it has contributed to the development of trade mark law. In Supreme Petfoods Ltd v Henry Bell & Co (Grantham) Ltd [2015] EWHC 256 (Ch) (12 Feb 2015) the Grantham pet food producer Henry Ball & Co. successfully resisted a claim by Ipswich based Supreme Petfoods Ltd. for trade infringement and passing off.  It is a very long, and unless you are a trade mark geek, difficult to follow, judgment but I have analysed it in my case note Trade Marks and Passing Off: Supreme Petfoods Ltd v Henry Bell & Co (Grantham) Ltd. 28 Feb 2915 which appears in my NIPC Law blog.

Basically, Supreme Petfoods objected to the packaging of Henry Ball's products because they had registered the word SUPREME as a word mark and various signs that incorporated the word SUPREME as device marks for various types of animals food.  The judge characterized their claim as an attempt "to monopolise use of the word SUPREME as a trade mark for animal food." He didn't let them do it.  He invalidated several of Supreme Petfoods' registrations except for small animal foods and held that Henry Ball did not infringe the trade marks that remained.

This is an important case for several reasons.

First, Mr Justice Arnold stressed that EU and hence UK trade mark law must be consistent with an annexe to the agreement that established the World Trade Organization called TRIPS (The Agreement on Trade-Related Aspects of Intellectual Property Rights) wherever possible. That is because it is an international agreement which HM government and the governments of all the other member states of the EU signed with most of the rest of the world's governments and pacta sunt servanda (promises need to be kept).

Secondly, the judge explored what makes a trade mark distinctive. It can be inherently distinctive simply because of its uniqueness or in the case of common English words like SUPREME it can acquire distinctiveness through making lots of sales and clever marketing. His lordship focussed on acquired distinctiveness.

Thirdly, the judge laid down six conditions that must be satisfied for a claim under s.10 (1) of the Trade Marks Act 1994 and art 9 (1) (a) of the  Community Trade Mark Regulation which he claimed to have been established by a long line of cases in the Court of Justice of the European Union. Though Mr Justice Arnold made no claim as to originality in respect of this analysis I think he is way too modest because I have never seen them anywhere else.  In Enterprise Holdings, Inc v Europcar Group UK Ltd and another [2015] EWHC 17 (Ch) (13 Jan 2015) which he decided a month earlier he made a similar analysis of the case law for claims under s.10 (2) and (3) of the Act or arts 9 (1) (b) and (c) of the Regulation. When read together Europcar and Supreme set out almost everything you need to know about trade mark law.

Fourthly, his lordship analysed in detail the last two of the six conditions for a successful suit under s.10 (1) or art 9 (1) (a), namely the use of the defendant's sign
"(v) .... must be in relation to goods or services which are identical to those for which the trade mark is registered; and
(vi) it must affect, or be liable to affect, one of the functions of the trade mark."
Most of Mr Justice Arnold's judgment was on those two points. He decided them in the defendant's favour at paragraph [165] because
"Henry Bell's use of the sign SUPREME would be understood by the average consumer as being purely descriptive."
In other words Henry Bell's packaging suggested that its food was of supreme quality and not that it came from Supreme Petfoods Ltd.

Fifthly, he made a very pithy comparison of mark and sign and specified goods and goods in use at paragraph [185] before throwing out the claim under s.10 (2) and art 9 (1) (b).

Sixthly, he did the same for the claim under s.10 (3) and art 9 (1) (c).

So this is a great case if you are a litigation solicitor in Lincoln or commercial lawyer in Spalding and your client walks into your office with a trade mark problem. Instead of thinking of learning curves and what they will do to your profits - or worse what patent counsel will do to those profits - you should read this case with my analyses and all will become clear I promise you.

Now I know this has nothing to do with intellectual property law but I am a ballet nut and the only other person I know who is crazier about ballet than me is called Michelle and she also comes from Linconshire. Your great county, oh Yellow Bellies, happens to host one of the best little dance companies in England called Chantry Dance Company which you really should support with your patronage. Last year they ran a workshop at the Drill Hall in Lincoln.  Here is the video of the show that put together with the help of two folks from Yorkshire and two from Coventry.  Can you identify the dancer stage right in the second row?

'Dream Dance' workshop from Rae Piper on Vimeo.

If you can I will buy you a pint next time we are both in The Beehive. If you want to discuss Supreme Petfoods and Bell or trade mark law in general give me a ring on 020 7404 5252 during normal office hours or message me through my contact form. Hasta luego amigos.

Thursday, 29 January 2015

Northamptonshire Central Library joins the PatLib Network

Northamptonshire Central Library
Photo Wikipedia

The PatLib network is a European network of libraries providing information on patents and other intellectual property rights to their local communities. I have written extensively about the PatLib network and you will find basic information and links to my other articles in PatLib Libraries in the UK 29 Jan 2015 Inventors Club blog, There are 15 PatLib libraries in the UK and Northamptonshire Central Library is one of the latest to join the network.

The Library offers a variety of business support and IP services in association with Northamptonshire Enterprise Partnership. These include:
  • information on IP, copies of IPO and EPO literature
  • enquiry service by appointment
  • advice on searching
  • free public access to internet, IP information resources, databases
  • commissioned IP searches
  • bespoke training sessions
  • business information advice sessions
  • referrals to other advice/service providers
  • workshops and seminars.
More information about these and other services can be obtained from the Northamptonshire Enterprise Hub Facebook page.

Sunday, 25 January 2015

Leicester Business sued for Copyright Infringement: McCormack Training Ltd v Goldmark Training Services Ltd and Another

Jane Lambert

In McCormack Training Ltd v Goldmark Training Services Ltd and Others [2015] EWHC 41 (IPEC) McCormack Training Ltd of Birmingham sued Goldmark Training Ltd and its director Ruth Goldsworthy ("Mrs Goldsworthy") of Leicester for copying a training manual used to teach nightclub bouncers and other security personnel how to exert physical restraint. The alleged copy was a manual used by the defendants called the "HZL Hostile and Hazardous Environment Training".  The claimant company was represented by Gateley LLP who instructed Charlotte Scott as counsel. The defendants were represented by Mr Scott Farmsworth who appears to have acted as both litigator and advocate.

The McCormack manual consisted of text and photos of individuals carrying out various physical restraints. The photos had been taken at an hotel in Birmingham in 2009 at the instigation and under the direction of one Andy McCormack ("Mr McCormack") who was the sole shareholder and director of the claimant company. There was no dispute that copyright subsisted in those photos and that those copyrights had been assigned to McCormack Training Ltd. The defendants claimed to have been licensed by the claimant to use those photos. The text was created after the photos and the parties disputed w hether it was written by Mr McCormack or Mrs Goldsworthy. The claimant company also argued that the combination of words and photos created a dramatic work.  Mrs Goldsworthy and Goldmark Trading denied copying and argued that dramatic copyright could not subsist in those works as a matter of law.

This case turned on its facts but the problem for Judge Hacon who tried the case was that he could not rely on either Mr McCormack or Mrs Goldsworthy and her brother Ian Fox who was also a director of the defendant company. He described Mr McCormack as "a garrulous witness who was often imprecise about dates and other details and was inclined to respond to questions by delivering argument rather than answering the question put to him." He found "Mr Fox and Mrs Goldsworthy were more self-controlled, but equally unsatisfactory as witnesses."

Relying largely on extrinsic evidence the judge concluded that there was no licence to copy the photos but that Mrs Goldsworthy was the author of the text. As McCormack's could not claim copyright in the text any claim for infringement of dramatic copyright had to refer to the photographs. Because one photograph of a dramatic work in progress could not constitute a record of that work such as to give rise to copyright in it as a dramatic work, copyright could not subsist in any of the sequences. His Honour added at paragraph [90]:
"Since one photograph of a physical restraint technique does not record the technique as a dramatic work, a collection of such photographs cannot record a sequence of techniques such as to create copyright in the sequence as an overall dramatic work. Moreover, there was no suggestion that the techniques had to be 'performed' in any fixed sequence. In my view an arbitrary sequence of physical restraint techniques, one possible sequence in many, could not collectively constitute a dramatic work."
The upshot was that the claim succeeded in respect of the photos but failed in respect of the literary and dramatic works.

The claimant had sought additional damages under s.97 (2) of the Copyright, Designs and Patents Act 1988. Referring to his decisions in Henderson v All Around The World Recordings Limited [2014] EWHC 2087 (IPEC) and DKH Retail Limited v H. Young (Operations) Limited [2014] EWHC 4034 (IPEC) which I discussed in Inquiries as to Damages in the Intellectual Property Enterprise Court: Henderson v All Around the World Recordings Ltd. 6 Nov 2014 NIPC Law and What is the definition of "design" in s.213 (2) of the Copyright, Designs and Patents Act 1988 following the deletion of "any aspect of" from the sub-section 13 Dec 2014 the judge held that additional damages were available only in accordance with art.13 (1) of Directive 2004/48/EC on the enforcement of intellectual property rights. In his judgment none of the circumstances for awarding additional damages applied to this case.

Should anyone wish to discuss this note or copyright in general he or she should call me on 0115 824 9090 during normal office hours or use my contact form.