Tuesday, 12 July 2016

Costs in Trade Mark Oppositions

Cutting Costs
Did you happen to notice that while we were enjoying the Orlando sunshine at INTA2016 the UK IPO put out a new tribunal practice note 2/2016 relating to scale costs in oppositions. Here it is in case you missed it. It's not very exciting. In fact it's almost depressing.

The general principle in the UK is that the winner is reimbursed his costs by the loser. It sounds as if the winner should therefore not be out of pocket. This is not the case. It is sometimes difficult for clients to understand that. In the case of UK trademark opposition proceedings the registry uses a nominal scale of costs which bears no relation whatsoever to the costs that you might be charged by even the most economical of professional advisers.  

So costs don't put the winner back in the position he would have been had he not had to fight the contest. What are they for then? I think the philosophy is that they're supposed to act as a deterrent to bringing oppositions. I am ready to be corrected on this if you have any better justification for this irritating procedure. As the practice note explains, they are also available to deal proportionately with unreasonable behaviour. What is unreasonable is a very subjective thing and hearing officers have quite diverging views on the behaviour of some parties. It really depends on the lens that you are looking at it through. If you are facing a bad faith claim it is always unreasonable. If you are making one it is totally reasonable.

Trademark owners now must bring oppositions if they want to stop conflicting marks getting on the register. Although they can do this as litigants in person, it isn't ideal for them or their adversary or the office. Therefore, in the interests of efficient opposition procedure we need to reduce complexity and encourage competent professional participation.

If you commenced your opposition after 1 July the new scale applies to you. This is going to be fun on consolidated cross oppositions. But not such fun because the difference between the two scales is minuscule. In fact the scales are pretty minuscule and strangely remain focused on the largest amount of costs being reserved for the hearing not its preparation. Personally I think it might be a good idea if we either had fixed costs (like the silly scale used by EU IPO were all representation is deemed to cost €300 or €550 in the case of appeal even if the winning party didn't participate)  or none at all.

Fast Track costs are still capped at £500 and even I cannot offer a client that low a fee for the most streamlined no-negotiation opposition. This may be acting as a deterrent to the use of fast-track oppositions. The other major deterrent to the fast-track opposition is the upfront requirement to demonstrate use which makes them much more expensive than ordinary oppositions if your earlier rights have any seniority.

With Brexit about to happen we no longer have to follow harmonisation rules. Many are useful but the inundation of earlier rights that community trademarks became prevented the UK from giving trademark owners a reasonable degree of protection. We can rethink this now.

Thursday, 23 June 2016

Voting Day

We have European weather from France today. This will probably result in an even lower turnout in the referendum in the south-east though I understand the weather is better further away from the continent.

In the hopefully unlikely event that you hear tomorrow morning that the vote has gone the wrong way (leave), the message is definitely KEEP CALM AND CARRY ON. Although the UK will apply to leave the European Union there will be a prolonged negotiation period and then we will fall out ignominiously after 2 years. Maybe even by then some other countries will have made choices too.

As regards the effect of European Union trade marks in the UK after that, this will fall to be decided under UK law. I think it is probable that either they will be granted automatic protection as UK national marks or there will be a transitional period within which they can be converted. Many UK businesses have only European Union trade marks (although generally I have always encouraged my clients to have solid protection at home first before looking overseas, though the low cost of European Union trademarks has meant that some businesses do not follow that advice and prefer 28 for the price of one) and therefore there is very little likelihood that the UK government will decide that European Union trademarks are no longer effective.

It's never a bad idea for any clients in doubt to have a UK trademark but that's an extra level of security for brands that feel they don't want any uncertainty about their protection in the UK.

As you will be aware, proving use of European Union trademarks has become more hazardous of late. However, I did have a recent decision from the EUIPO which explicitly said they weren't following the UK community trademark court in deciding that even significant use on the UK market without any export trade is not sufficient to maintain an EU trademark. That will be a relief to many but it is only a first instance decision and there is some way to go before we have complete clarity about exactly how much local use will keep an EU trademark alive.

My prediction is that the turnout will be below 40% and that the remain vote will be over 60% of the votes cast but only just. Tomorrow you can rate me as a pollster!

Today 23 June 2016 is also the Feast of St Etheldreda - an event being marked this afternoon in Ely Place with a Strawberry Fayre, catered by the Bleeding Heart. In truly British fashion, in case of rain, you can drink your Pimms and eat strawberries in the Crypt of the church

God Bless England and may she continue to sail within Europe! 

Monday, 30 May 2016

The UK Series Trademark Lives

The series trademark was challenged in a dispute over the GLEE trademark which I discussed here.  Now the Court of Appeal has decided on 25 May 2016 that they are not only valid but also how they should be understood.
Lord Justice Kitchin
The principal Judgement was given by David Kitchin And not unsurprisingly agreed with the UK IPO view on the scope and interpretation of series trademarks. They do not contravene EU law. They are not misleading and being an administrative device to our allow multiple trademark registrations to be secured under one number, there was no need to trouble the European court of justice.

In the original decision by Roger Wyand QC the scope of the series registration was discussed. One of the marks had a colour claim, but being an old registration it wasn't shown in colour. The other, presumably the one on the right was supposed to be in greyscale.

However, the judge interpreted the registrations as if they were one basing himself on the opinion of Mr Arnold QC as he then was in Sony Ericsson (o/138/06) (25 May 2006) that a series was "a number of different manifestations of what is in essence the same trade mark" and therefore any differences must be so insignificant that they go unnoticed by the average consumer. That is they satisfy the LTJ Diffusion v Sadas case.  It is also stated in that judgement (Paragraph 65) that 'monochrome trademarks, all colours'. This we now know is not strictly correct after the adoption of the common communication of April 2014. However, the judge also concluded that he did not see the colour combination as being a part of the distinctiveness of the registered trade mark.

The reason I am writing about this decision is that Lord Justice Kitchin thinks that Arnold J was wrong 10 years ago to impose such a high standard of identity on series marks.  He did not like this approach because it meant that you had to distil from the series some kind of "supervenient" mark with which all the marks in the series are identical. This is far too difficult and certainly doesn't satisfy the test that the graphical representation must be self-contained, clear, precise and readily accessible and intelligible. The easy way out is simply to say that the series of  marks is a bundle of different marks registered under the same reference number. They must satisfy the requirements of the act (Section 41) but they need not be Sadas identical. This is what the Court of Appeal decided.

Accordingly, I am delighted that the very pragmatic and helpful series mark provisions of the UK Act survive and that they no longer need to be examined with the severity imposed upon them by Richard Arnold 10 years ago.

Saturday, 28 May 2016

INTA for small business

I have just returned from the INTA meeting in Orlando. When I worked for a large firm I had to write a report for the committee that paid the bill. It was never easy. As the meeting gets bigger (attendance broke 10,000 for the first time this year) the possibilities of making fruitful new contacts diminishes. A modest number of meetings with loyal clients makes it worthwhile. I also attend the educational sessions in the hope of education.

INTA is an organisation for trademark owners. Lawyers attend as hangers on, while the owners experience a parallel universe.

What I learned this year:
  • The core members don't think trade marks stop at indications of origin and want to cover all manner of personal brands, marketing devices (eg hashtags) and merchandising rights within the remit of trademark law
  • Associates of associates don't count to some brand owners. Their briefing sessions/receptions/awards are for those they directly instruct.
  • Large brand owners are very fond of service providers that provide cheap infringement monitoring services and just love using cheap and effective take down services
  • Registration is becoming an ever easier, more automated process but do remember class headings only cover what they say
  • 3D printing wont bring about the demise of intellectual property but there is a book I could buy that says so - it was a very slick and enjoyable presentation
  • The significance of the EU TM reforms 
Guy Heath reviewing some EU law
The best sessions as usual were the surveys of the year's case law from the USA and Europe. The European session had no chair (actually neither did and chairing seems to be a dying art). It would have been useful to manage the interruptions from the floor. Its nice to know that folk are listening, but it loses the rest of the audience.

Either INTA or the speakers do not believe in making slides or materials available. Do you remember the days when you got a lever arch folder full of course notes, some of which were really good articles? I should be able to replay recordings of sessions from the meeting portal but this image is the most common
There is a similar one for all the presentations I tried.

Both EU IPO and WIPO gave excellent presentations on Sunday morning - the only crowded room sessions I attended.

Obviously the best reception was the intimate Tweetup which provided an hour or two's respite from the humidity and some genuine human contact.

Tuesday, 26 April 2016

Going out of Business : Insurance Issues

Selling a small IP practice is no easy thing. Giving one away is even harder.

When you go out of business you need to consider what happens if someone makes a claim against you. You could disappear so you cannot be found for the claim to be made or you can buy Run Off insurance. This means you will pay a sum of more than twice your usual annual premium to walk away. If however you can persuade an existing business to buy your practice and take on the liabilities you wont need to pay a run off premium but the enlarged entity may be asked to pay a larger premium due to enlarged turnover but it wont kick in immediately and will depend on the increased turnover being achieved and will not be subject to anything other than the usual multiplier.

It therefore makes sense to give your practice away rather than close it. However if you are giving away a practice rather than selling it, prospective purchasers are going to be worried that there are all sorts of hidden liabilities and wont want to touch it. So you had better sell it for a price and agree some warranties about the extent of the liabilities. Now the question is can you get cover for the cost of the cap you place on your liability or keep a reserve from the sale price.

Saturday, 23 April 2016

Getting used to EU IPO

It is a whole month since the end of the community trademark and the rise of the EU TM.

Everything still works - but a tad slower perhaps but maybe thats just catch up. On filing applications I have discovered that if I want to be on the fast track I must forego the right to receive the search report of earlier European union marks. I am expecting that I will be able to see the search report online as there is still an obligation for the search to be carried out.

I have noted that I can still claim priority and seniority on the fast track if I provide the evidence.

There has been lots of excitement about the possibility of clarifying the class heading registrations using the Article 28(8) procedure. You can only do it between 23 March 2016 and 24 September 2016 inclusive. There is an online form or rather you use the existing online form choose Recordal then EUTM and then the big inviting button labelled "Declaration under Article 28(8) EUTMR"

Its not a complicated form just a box that invites you to provide your declaration, identifying your Goods and Services per class. There is no fee. Maybe it will be a hot topic of conversation at INTA in Orlando. I will be there. Sadly I suspect that having advised clients in the past to say what they mean, this is not a marketing opportunity that will be profitable. You cannot use Article 28(8) procedure

 If the specification includes specific terms plus the class heading then chances are you are okay anyway and dont need to use the service

 If the specification only includes part of the class heading then you cannot use the service

 If the specification includes the class heading with an exclusion then you cannot use the service

If the applications were applied for after 22 June 2012 then you cannot use the service

Corsearch have ingenuously offered to create a new report that identifies by owner name relevant registrations from the right period which include class headings that might need to be amended. I have not been paid to promote this product but Corsearch continue to support the newly Chartered Institute of Trade Mark Attornies evening lectures with canapes and wine.

Tuesday, 29 March 2016

Updating UK Patent Rules

With so much emphasis on the Unified Patent Court and European patent with unitary effect or unitary patent if you prefer, administered by the mighty EPO, the humble UK national patent can
Baroness Neville-Rolfe champion of UK IPO
easily be forgotten. However, its importance, particularly to entrepreneurs looking for early grants and the inventors of those technologies shunned by the EPO is not to be underestimated. Any innovator who finds the prospect of €10,000 as the starting price for litigation and has been taken with the access ability of the Intellectual Property Enterprise Court should still be very very interested in the UK national patent.

The UK IPO has been doing a little tidying up and recently produced a consultation on proposed changes to the Patents Rules. Responses are sought by 22 April 2016.

There are a number of specific rule proposals but there is an open question (17)which invites any other proposals for rule changes or clarifications. There is a hint that you might want to consider the extensions of time rule but the question is not limited to that and if there are any other rules of bug you now is the time to say so that they can be included in the amending statutory instrument under construction.

The Patents Rules live here  But only in PDF downloadable format. Isn't it time they came in a nice HTML version for easier referencing.

Some of the proposals are very straightforward and it will be difficult for anybody to dissent from the idea that we should no longer have to file multiple copies of form 51 when appointing an agent or triplicate copies of international applications (does anybody really file international applications with the UK IPO in paper. It might even be time to make electronic filing compulsory what do you think, or are you still reliant on the fax machine. In cases of Internet meltdown and bearing in mind that large parts of the country have dire Internet connections, it may be a little too soon for that step to be compulsory but we should certainly be encouraging paper elimination.

The object of the rule changes is to benefit did businesses and individuals making use of the patent system (which naturally includes those at risk of being patent infringers)

Omnibus claims
The proposal is to discourage them- not by relying on clarity objections but by introducing a new rule prohibiting references to the description or drawings. I entirely agree with the ambition but I'm less certain that this is the way to do it. The scope of these claims is unclear. The reason that they refer to the description and drawings is to limit them to the embodiments and it may well be that for some inventors limiting their claim to the embodiment described is all they can afford. If the embodiment is described clearly and often it isn't, this might be an acceptable claim but a very narrow one. The really offensive part of an omnibus claim is the "substantially as herein described" phraseology not the reference to the drawings.  After all Article 69 says that every claim has to be interpreted by reference to the description and drawings.

Rewriting paragraph 14 .124 and .125 of the Manual of Patent Practice to reflect current case law might be the answer.

As to the transition I would be happy if no omnibus claim were allowed from now on but  the idea that it should apply to granted patents when the rule comes into force could be a very Draconian hit on some self filers who may find their patents no longer exist in any valid form despite payment of renewal fees. IPEC may well have to continue to construe those claims narrowly as they have done before.

Most applicants will also have a main claim so we could achieve the same effect by limiting the number of independent claims.The requirement for a statement of invention harks back to the need for the omnibus claim to be no broader than claim 1. I have always thought statements of invention were bad drafting practice and made patents more difficult for the lay reader to understand. The solution of the invention is defined by the appended claims does the job.

Photographs Q10 

The proposals include the possibility of photographs, but not CAD Drawings which might be shaded. Reproducibility is what it's about and it drawings can be reproduced it shouldn't matter whether they are in black-and-white colour or gray scale. However, line drawings are often likely to be the best choice.

I wonder what our illustrious professional body is going to say about these proposals