5 October 2015

Sheffield Educational Charity's Trade Mark Case: NOCN v Open College Network Credit4Learning

In NOCN  v Open College Network Credit4Learning [2015] EWHC 2667 (IPEC) (25 Sept 2015) NOCN which is based in Sheffield sued its former affiliate OCN Credit4Learning for trade mark infringement and passing off for using the following sign:

The Trade Marks

NOCN had registered the following signs as well as the letters OCN and NOCN as trade marks for accreditation and certification services:

The Arguments

NOCN argued that it was the only organization in the country that was entitled to use the initials OCN or the swoosh device in relation to vocational qualification and accreditation services.  OCN Credit4Learning replied that OCN was short for "Open College Network" and counterclaimed for invalidation of the registration of the letters "OCN" as a trade mark.

The Decision

The action and counterclaim came on before His Honour Judge Hacon who held that NOCN had no monopoly of the use of the letters OCN and declared the registration of those letters as a trade mark to be invalid. However, he found that OCN Credit4Learning's use of the dot device in a sort of V shape around the words "OCN Credit4Learning" was too similar to the swoosh device in NOCN's trade marks and found that such use amounted to trade mark infringement and passing off.

The Reasons for the Decision

The judge came to his decision because a trade mark is supposed to distinguish one supplier's goods or services from those of all others. OCN is simply an abbreviation for "open college network" of which there are several in the UK. Some of these are affiliated to NOCN while others are not. If NOCN were allowed a monopoly of the abbreviation it would make it difficult for other open college networks to carry on their business.

On the other hand the letters "OCN" combined with the swoosh device were capable of distinguishing NOCN's services from those of other organizations. The dots device when combined with the letters "OCN Credit4Learning" looked very like NOCN's registered trade marks. Its use might lead people to believe that OCN Credit4Learning was somehow connected with NOCN.

If anyone is interested in the legal issues I have discussed them at length in When one charity sues another - NOCN v Open College Network Credit4Learning 4 Oct 2015 NIPC Law.

The Postscript

In a postcript to his judgment, Judge Hacon said:
"I now know that between them the parties, both charities, have incurred well over £400,000 on fees in this litigation. A very strong recommendation to settle at the case management conference was not taken up. The laudable cause of encouraging adult education will presumably have to endure an equivalent cut in funding solely because this dispute was not resolved at an early stage. Such an outcome is much to be regretted."
The action and counterclaim were brought in the Intellectual Property Enterprise Court, the successor to the Patents County Court, which requires trials to be completed in 2 days and limits the costs that one party can recover from the other to a scale (see Jane Lambert New Patents County Court Rules NIPC Law 31 Oct 2010). However, nothing in the new rules prevents lawyers charging their clients more than the costs that they can recover on the scale and that seems to have happened in this case.

Alternatives to Litigation

There are alternatives to litigation which parties to a dispute are required to consider (see paragraphs 8 to 11 of the Practice Direction - Pre-Action Conduct and Protocols). These include direct negotiations, mediation, expert determination, early neutral evaluation, arbitration and proceedings in the Intellectual Property Office.

Most disputes are settled by direct negotiations between the parties or their legal advisers. If conducted in the right spirit with a proper exchange of information and documents they can be the fastest and cheapest way of resolving a dispute. The Practice Direction promotes such negotiations by requiring parties to exchange information and documents in their letters of claim and response and they can be penalized if they fail to do so.

If a dispute cannot be settled by direct negotiations the parties are required to consider alternatives. One of the reasons why direct negotiations do not always succeed is that the parties do not usually know each other's bottom line or interests. Another is that bitter emotions and recriminations can get in the way. Mediation addresses those problems. It is essentially a form of negotiation where the mediator makes it his or her business to understand the underlying issues and suggest solutions which may not have occurred to either party but with which both may live. I am a mediator specializing in IP disputes and I sit on the WIPO and Consensus Mediation Panels. The Intellectual Property Office also offers a very cost-effective mediation service for trade mark and other IP disputes.

Expert determination, early neutral evaluation and arbitration are all forms of adjudication, that is to say where the parties agree to refer their dispute to a trusted third party for determination. ICANN's Uniform Domain Name Dispute Resolution Policy for generic top level domain name disputes and the IPO's opinion service for patent disputes is an example of early neutral evaluation.  The terms upon which neutrals are retained will depend on the needs and wishes of the parties. Our panel of arbitrators can sit as experts, neutrals or arbitrators in any kind of dispute though I specialize in IP.

Although the Registrar of Trade Marks does not have jurisdiction in infringement disputes his hearing officers can hear revocation and invalidity disputes. Proceedings before a hearing officer are more informal than court proceedings and can often be disposed of without a hearing. Costs are awarded in IPO proceedings but these rarely exceed a few thousand pounds.

Further Information

Should anyone wish to discuss this article or trade mark law or passing off in general call me on 01484 599090 during office hours or use my contact form.

22 September 2015

The High Cost of Copying in Buttershaw: Absolute Lofts v Artisan Home Improvements

Author Ordnance Survey
Source Wikipedia
Crown Copyright and Database Right

On 14 Sept 2015 a Buttershaw builder was ordered to pay £6,300 in damages to a London loft conversion company for downloading images of the London company's loft conversions from its website and posting them to his own (see Absolute Lofts South West London Ltd v Artisan Home Improvements Ltd and Another [2015] EWHC 2608 (IPEC)).

The parties were not competitors as they were separated by 200 miles of clogged motorway and the only loss that the claimant had suffered was a notional licence fee of £300 for the use of the pictures but the judge awarded the London company additional damages of £6,000 under art 13 (1) of Directive 2004/48/EC on the enforcement of intellectual property rights. His Honour made that award to take account of the defendant company's profits as a result of the infringement which he regarded as "unfair" and also to dissuade others from doing the same. I discussed the case in my case note
Damages for infringing Copyright in Photographs - Absolute Lofts v Artisan Home Improvements 22 Sept 2015 NIPC Law.

The judge made the award because art 13 (1) of the Directive comes into play when an infringer knowingly, or has reasonable grounds to know, that he or she is engaging in infringing material.  In this case there was an aggravating factor in that the defendants were misrepresenting the London company's handiwork as their own but that article can apply in any other case where the defendant knows he is copying without permission or copies anyway whether he or she has permission or not.

There is a widespread myth that if something is on the internet it must be free for anyone to use. Thus photos, videos and text including company's terms and conditions are downloaded and recycled with gay abandon. The number of times that clients have told me this week that their neatly drawn up terms of business have been lifted from a company in the same industry (sometimes even a competitor) does not bear thinking about. It has always been wrong to copy and now it is dangerous because the small claims track of the Intellectual Property Enterprise Court with its fixed costs makes it possible for copyright holders to pursue pirates at minimal cost and risk to themselves.

There is in truth a lot of stuff on the internet that is free to share or use under Creative Commons and other licences but check first.  Most but by no means all of the material on Wikipedia is free to use but click the image first and read the notes that appear on the Wikipedia Commons page. Usually you have to attribute the author and copyright owner and there are nearly always restrictions on use. Very much the same applies to clip art and other material. If in doubt ask the copyright owner for permission to use the material and if he or she says "no" then take your own photo or get a lawyer to draft your own terms. The few hundred pounds a professional will charge you is a fraction of the cost of litigation.

If you are accused of copying then remove the infringing material at once and apologize profusely. If the complainant wants money then take legal advice as a matter of urgency. Don't ignore the demand or you may find yourself in court with sky high costs and court fees.

Similarly, if you think your image, text or other work has been ripped off take legal advice before doing a thing. Some countries like Australia provide threats actions for unjustifiable threats of copyright infringement.

If you want to discuss this article call me during office hours on 01484 599090 or 020 7404 5252 or use my contact form.

20 September 2015

IP and Fashion Seminar - 7 Oct 2015

For nearly 200 years the Leeds City Region formed one of the twin pillars of the British textile, clothing and fashion industries. Overseas competition has diminished those industries and forced them to specialize but products from this region are still regarded as the best of their kind. I proudly recall visiting an area of Kyoto which consisted entirely of cloth merchants where I found that Huddersfield worsted was the most prized of all. The region has always been an important retail centre. Household names such as Marks & Spencer and Montague Burton started in Leeds.

With initiatives such as Lambert's Yard and the Textile Centre of Excellence in Huddersfield the region is striving to restore its pre-eminence in textile and fashion design and technology.  However, it can only do that if its designers, retailers and manufacturers can properly protect their brands, designs and innovation. That is where intellectual property comes in. Shortly after entering office the Coalition government commissioned Professor Hargreaves to review the legal protection for brands, designs, technology and the creative industries and propose changes in the legislation to promote growth.

Hargreaves came up with nine recommendations in his report DigitalOpportunityA Review of Intellectual Property and Growth all of which were accepted by HM government and have now been largely implemented.  On 10 Sept 2015 I discussed how those changes affect the clothing, fashion and textile industries in a full day seminar in London which received very favourable feedback from most of the 20 solicitors, trade mark attorneys and in-house legal advisers who attended the event  (see IP and Fashion Law 12 Sept 2015 IP London) and I am repeating the talk in Leeds on 7 Oct 2015.

In that seminar  I hope to 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 v ASDA and 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.
Rather than read from notes and slides I taught the course by setting typical problems such as
"The day after a royal baby makes his or her first public appearance you want to sell a similar set of baby clothes. How would you set about doing that without being sued?"
"What provisions would you place in a contract with a supplier from Bangladesh?"I got that idea from Ross Burrows of Burrows Law because that is how he taught the public access top-up and litigation courses which I took last year. He built on participants' knowledge and experience which he encouraged us to share. I decided to do the same next time I taught a CPD training course.
Preparing such courses requires a lot more work on the part of the trainer but it aids comprehension and retention. The overwhelming response of the London group was very positive according to the feedback forms.

If you want to attend this course there are still places available but you will have to move fast. You can register on-line or call MBL Seminars on 0161 793 0984.  The course will start at 09:30 and end at 17:15 and thus earn 6 hours CPD. The standard cost is £480 but there will discounts for season ticket and smart plan subscribers. If you want to discuss this course or any other point of IP law call me on 01484 599090 or 020 7404 5252 or message me through my contact form.  I look forward to meeting you.

30 August 2015

What's happening to Yorkshire?

A Wooden Spoon
Author David Jackmanson
Source Wikipedia
Creative Commons Licence

Yorkshire and the Humber have a population of nearly 5.3 million according to the 2011 census which is 8.4% of the population of the UK and larger than the populations of Norway (5.2 million), the Irish Republic (4.6 million and New Zealand (4.2 million) but the region contributed only 6.5% of the nation's UK patent applications in 2014 (see page 7 of the IPO's Facts and Figures for 2013 and 2014). Whereas there was a slight increase in the number of UK patent applications from 14,946 in 2013 to 15,187 Yorkshire's share actually dropped from 983 in 2013 to 980 in 2014. Yorkshire was 7th in the number of patent applications trailing London (2,766), South-East England (2,701). East of England (1,938), South West (1,510), North West (1,239) and the West Midlands (1,144).

It is the same story in trade mark applications (2,872 compared to London's 14,308, the South East's 12,484, North West's 4,676, South West's 3,597, East of England's 3,415 and West Midland's 3,127) and registered design applications (310 compared to London's 1,120, South East England's 988, North West's 585, West Midland's 505, South West's 452, East of England's 389 and Scotland's 326) though to be fair the region's registered design applications increased from 69 in 2013 to 310 in 2014).

With some of the nation's greatest research universities at Leeds, Sheffield and York, a highly developed financial services industry including business angel networks and private equity investors, Business and IP Centres in Leeds and Sheffield and strong cultural institutions, Yorkshire and the Humber should do better. In the next few months we shall investigate why our region under-performs and what can be done about it. We shall consult local enterprise partnerships, local authorities, chambers of commerce, universities and professionals throughout the region to see where (if anywhere) we have been going wrong and what (if anything) can be done to put it right. In the New Year we plan a day long conference to coordinate our activities. If you want to be involved email me or call me during office hours on 01484 599090.

26 July 2015

Business University Collaboration - the Yorkshire Innovation Fund

Yesterday the Yorkshire Innovation Fund started to follow me on twitter so I thought that the least I could do was to check it out. It describes itself on its home page as "a way of funding new ideas within your business" and explains:
"Many new ideas require a blend of skills and expertise to get them off the ground and working with a local university can often help by providing access to expertise, specialist equipment or facilities or new talent to develop your idea. YIF funds this access."
In other words, it puts up the money to pay for R & D and other work carried out by one of its partner universities which seem to include most of the universities in Yorkshire with the notable exception of the University of Sheffield.

Available Funding
According to the Is my company in an eligible sector? page of its website
"The Yorkshire Innovation Fund is available to Small and Medium-sized Enterprises (SMEs) in the Yorkshire region from the following areas:
  • Advanced manufacturing, engineering & materials
  • Bio-renewables (feedstocks, raw materials and ingredients)
  • Healthcare technologies
  • Low carbon energy (e.g. wind, nuclear, carbon capture & storage, bio-fuel)
  • Bioscience
  • Creative and digital 
  • Chemicals
  • Financial and business services
  • Food and drink
  • Sport (South Yorkshire SMEs only)"
On the What types of project has YIF supported? page the website mentions small innovation projects up to £10,000, research and development projects up to £31,000 and strategic intervention for which no figure is given. Detailed case studies of projects that the Fund has supported in the past can be downloaded from the Projects YIF has funded page on its website.

Funding for New Projects
This would seem to be a good port of call for many of the entrepreneurs and inventors I have seen in my IP clinics and the Leeds and Sheffield inventors clubs over the years except for this warning that appears on the home page:
"YIF is currently unable to commence any new projects with regional SMEs and is exploring new funding opportunities to support collaborative projects in the future."
We must hope that this is only a temporary hiccup and that the Fund will refill its coffers soon. It must be remembered that this is only one funding option among many and that I discussed some of the other options in Business Funding in Leeds City Region on 1 June 2015.

Issues to consider when Negotiating with a University
If a business does commission a university to do some work for it, its management should give some thought as to
  • the ownership and rights to use the results of the project
  • the financial and other contributions made by the commercial sponsor
  • the university’s use of the results for academic purposes.
It may come as a shock to readers that a not insignificant part of my work as a member of the IP bar is taken up with negotiating those issues with, and occasionally on behalf of, universities and resolving disputes over those issues once the work has been completed.

The Lambert Agreements
At the beginning of the present millennium Mr Gordon Brown who was then the Chancellor of the Exchequer commissioned Sir Richard Lambert (as he now is) to review collaboration between businesses and universities. In his Final Report which was published in December 2003 Sir Richard identified concern over those issues as one of the impediments to such collaboration. To allay those concerns the Chancellor asked Sir Richard to hold further meetings with stakeholders to develop model contracts for such collaboration and I actually participated in one of those sessions, The result has been a number of model agreements which are explained in The Lambert Toolkit. The Intellectual Property Office has helpfully provided a Decision Guide to help negotiators choose the right contract.

Need for Caution
Although it is a lot easier than it was dealings between universities and businesses are still tricky largely because academics and businessmen have different interests and come from different cultures. Universities have become pretty savvy of late and they have access to good and experienced legal and accounting advice. Entrepreneurs are often at a distinct disadvantage (especially in the early days of their business careers) and they need all the professional help they can get.

Should any reader want to discuss this article or requires advice on business-university collaboration or funding in general, he or she should call me on 020 7404 5252 during office hours or contact me through this form.

1 June 2015

Business Funding in Leeds City Region

Jane Lambert

"Where do I get funding for my business now that the banks have stopped lending?" This is the most frequent question that I have been asked since 2007 at my IP clinics, inventors clubs and talks and seminars for business start-ups even though as an IP lawyer I claim no expertise in business funding. Now at least I have a  website to which I can refer enquiries in the Leeds City Region at any rate.

Leeds City Region LEP
The Leeds City Region Local Enterprise Partnership, which is a collaboration between local authorities and business leaders and academics within commuting distance of Leeds City Centre to promote economic and social development within that region, has gathered together a web page listing all the funding options that are available to businesses in that region  The title of that web page is Business funding options and you will find it at http://business.leedscityregion.gov.uk/support/funding/

Types of Funding 
Funding for businesses falls into two categories:
  • long term investment in plant, buildings and other fixed assets; and
  • short term funding to purchase stock or meet other immediate priorities.
As a general rule long term investment takes the form of investment in exchange for a share in the business while short term funding takes the form of loans.  If you don't know the difference between investment and lending then your first port of call should be "Business Finance Explained" on the gov.uk website. Once you are clear in your mind as to what you need for your business and what is on offer then take another look at the Business Funding Options web page.

Types of Funding Available
The website offers information on:
  • Grants: essentially gifts of money that do not have to be repaid;
  • Investments: funding in exchange for shares in a limited company or possibly a partnership; and
  • Loans: funding that has to be repaid usually with interest.

One source of grant funding is The Business Growth Programme which provides grant funding to businesses based in Leeds City Region or planning to invest here. You will find further details on the LEP Business Growth Programme page of the LEP's website. There are details of other grants on the LEP website. There is also a very good website called j4bGrants which publishes a regular newsletter to which you can subscribe.

This could come from a business angel (a wealthy individual who wishes to invest in a new venture) or an institution that believes that your business will grow very quickly and sees an opportunity to make a substantial profit in two or three years time through a flotation on the stock market or a business sale. The LEP website links to Envestors which manages the Yorkshire Association of Business Angels (a group of business angels based in Yorkshire) and to Finance Yorkshire which provides a range of funding products.

Traditionally short term lending has been provided by the clearing banks and the LEP has arrangements with a number of banks that have received funding from the Regional Growth Fund to support local business. The Business Funding Options web page mentions those arrangements and links to a number of lending schemes. It also links to  the Business Enterprise Fund which is a community development finance institution which can sometimes offer loans to businesses that would not qualify for bank lending.

The website is directed to businesses that are in, or are contemplating moving to, the Leeds City Region only. Check the coloured map above to see whether you are in or out of that region. This article may still be useful to you even if you are outside this region because other regions make similar provision for businesses in that area.

Legal Advice
Whatever form of funding you seek even if it is a grant you will enter legal relations with, and may well incur legal obligations towards, your funder. Before assuming those obligations you should seek proper advice from an experienced business lawyer. Remember that there are likely to be many issues such as tax, intellectual property and enforcement.  

Further Information
if you want to discuss this article, call me on 020 7404 5252 during business hours or send me a message through my contacfot rm.

Post Script

Kin F. Kam wrote on Linkedin: "If you have an innovative product underdevelopment, or in the hope of developing it, there is also #InnovateUK 's innovation voucher scheme. It's worth £5K. I got mine confirmed last week."

Many thanks for that comment and good luck with the business

7 March 2015

Bradford International Film Summit 2015

Berween 4 and 6 March 2015 Bradford hosted an international film summit consisting of seminars, screenings and other events on film and TV production and education.  According to the summit website, the aims of the summit are:
  • "To attract increased film and TV production to Yorkshire
  • To capitalise on the business opportunities in film related industries and services
  • To create collaboration opportunities through international networks
  • To further develop education and skills programmes and share best practice
  • To inspire communities to enjoy and experience more film."
As my colleagues Thomas DillonAthelstane Aamodt and I have a particular interest in film, TV and games I attended the last day of the summit on behalf of chambers.  

I spent most of the day at the Film Hub North Roadshow at the National Media Museum listening to talks on Film Hub North's advice and experience sharing scheme, the Leeds International Film Festival, the Rotterdam International Film Festival, investment and other sources of funding and watching a number of films including Louise Osmond's Dark Horse.  Although I was there to listen rather than advise I was consulted on some of legal issues that confront independent film makers.

If anyone would like to discuss this post or legal issues relating to film making generally he or she is welcome to call me on  01484 599090 or 020 7404 5252 during normal office hours or message me through my contact form.

Further Reading