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

Saturday, 5 March 2016

Preparing for 23 March and the European Union Trade Mark

Go to home pageThis name will disappear on 23 March 2016 so are we ready for the change? The page that the soon to be European Union Intellectual Property Office has created is here.

Although there is a new Harmonisation Directive the approach taken for our favourite CTMR 207/2009 is that it is amended so we need a consolidated version. I haven't found one yet. Will we still call it CTMR for old time's sake?

The simple things we need to do is change the name of OHIM  which becomes European Union Intellectual Property Office and community trade mark becomes European Union trade mark. What is the consensus for the abbreviations: EU IPO and EU TM is my choice. European Union TM is officially sanctioned in Art 1(2) of the amending regulation.

Not much will change about day to day filing except that you will have to decide whether you want to receive the search of earlier rights on the Community Trade Mark Register Register of EU Trade Marks . This is now known as an EU search report but it still only covers EU TMs. You can say you don't want it but they have to create it even if you don't want it because they are still sending out those pesky surveillance notices. We are now allowed to opt out of receiving them though and I shall be looking at how to do that, especially where I am the representative for one and two letter logos.

Graphic representation is now (well with effect from 1 October 2017 and we can expect the EU IPO to tell us what representations are acceptable)  not essential and there is plenty of hot air about the possibilities of registering non-traditional EU TMs. Forget it. They also amended Art 7(1)e so you cannot register:
‘(e) signs which consist exclusively of:
(i) the shape, or another characteristic, which results from the nature of the goods themselves;
(ii) the shape, or another characteristic, of goods which is necessary to obtain a technical result;
(iii) the shape, or another characteristic, which gives substantial value to the goods;’

Now Arnold J had a go at the Taxi CTM not long back and at paragraph 215 of his judgement killed it under  the substantial value provision. The same has to be the case for the smell of perfumes. Even if the representation is not graphic it is still required to be clear, precise, self-contained, easily accessible, intelligible, durable and objective. I don't know of any self-contained sound representations. Even a recording needs something to play it and the sound file also needs to be easily accessible and durable - quite a challenge. My best advice is stick with registration for traditional marks.

The amendments allow for Certification EU TMs but these points of the Regulation will not apply until 1 October 2017 so we have more time to prepare for those.

We have already seen the benefit of the reduced renewal fees when renewing EU TMs that were due to expire after 23 March.

Thinking of Brexit, the provisions on representation  Art 93(1)b now simply says
(b) professional representatives whose names appear on the list maintained for this purpose by the Office.
If UK representatives are on that list they will still be there after Brexit so the old campaigners should be able to continue to represent. The requirement for representation is also amended so that it is only applicants outside the European Economic Area who need representation as opposed to outside the Community. Its possible, but uncertain, that the UK will stay in the Economic Area. This is the area for free movement of people and that is a big issue for many LEAVE voters who might feel betrayed if we stayed in the EEA and were simply told what to do by Brussels without any say in the negotiations.

A lot more of  the changes are less likely to affect our daily lives, but there are a lot of them so we might be surprised.

Tuesday, 23 February 2016

is it the end for the Series Trade Mark?

UK Trademark UK00002200698
First I must apologise for the long absence. I am missing my retired co-blogger and there has been an excess of litigation files in my life recently. There are many things that are sent to try us, from IT calamities to Brexit (more of that in a later post) but one issue that recently vexed me was the attack on the vires of the series trade mark in the UK.

It came in the long running and much commented saga between Comic-Enterprises and 20th-Century-Fox. The court of Appeal issued their decision on 8 February 2016 and for those of you interested in wrong way round confusion the full decision can be found here and I would have cited Wragges case note had they not re branded as Gowling WLG but you can still see how The Guardian reported it to the average consumer  here

The image of the mark it was all about is shown here.  Red, black and white are elements of the first mark in the series. You thought they both looked grey, but no the top one is brightly coloured and I suspect the staple is not intended to be an element of the sign either. It derives from 1999 before colour could be handled by the IPO and certainly before the sophisticated understanding encapsulated in the 2014 European Common understanding of black and white marks

In the 20th Century Fox case, Fox made an application for permission to amend its defence and counterclaim to introduce a claim that the registration is invalid because s.41 of the 1994 Act (which allows series marks to be registered) is not compatible with the requirement in EU law that a trade mark must be 'a sign' in the sense of being a single sign and capable of being 'graphically represented' as such pursuant to Articles 2 and 3 of Directive 2008/95/EC ("the Directive") and s.3(1)(a) of the 1994 Act. Now bear in mind that graphical representation is about to disappear from the reformed Directive. Signs will henceforth need only be represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor. The Court did not decide the matter. Instead they noted the IPO comments and left the matter as an outstanding issue, which is hardly satisfactory for the series using public.

The relevant part of the judgement is at paragraph 23:
Mr Alan James of UKIPO responded very promptly by letter dated 4 November 2015. In broad outline he submits on behalf of UKIPO that s.41 of the 1994 Act is wholly compatible with the Directive and that any doubt about this stems from a misunderstanding about the meaning and significance of a series of trade marks: a series of trade marks is a bundle of separate and individual trade marks each of which must comply with the requirements of the Directive, and each of which is entitled to the protection afforded to every trade mark under EU law. There is, he continues, nothing in the Directive which governs or restricts the form of trade mark registrations, and there is nothing which prevents Member States from enacting a national law permitting a number of trade marks to be registered together. We are extremely grateful to Mr James for dealing with this request so swiftly. However, in light of his submissions and the limited time available at the hearing of the appeal for the parties to consider them, we decided, at the conclusion of the hearing and with the agreement of the parties, that we would, if necessary, give further directions for the resolution of this issue after giving judgement.

It is perhaps disappointing that Mr James' spirited defence of the trademark agent's favourite two for the price of one offer was not immediately accepted. Now we must wait to see if Fox pursue the matter. They are not it seems guilty of passing off but only of trade mark infringement so invalidity of the registration would provide relief from their difficult situation.

Should we stop using series? What do you think?