3 February 2015

Hull Central Library joins PatLib

Photo Wikipedia

PatLib is a European network of some 320 patent information centres where members of the public can obtain information about patents and other intellectual property rights. There are 15 of those centres in the United Kingdom including three in Yorkshire. I write about the network in PatLib Libraries in the UK 28 Jan 2015 Inventors Club.

Hull Central Library is the latest to join the PatLib network. Its reference library holds an enormous collection of resources for business in print and on-line including an Enterprise Hub where workshops and seminars take place. The full range of services include:
  • information on Intellectual Property (IP), copies of Intellectual Property Office (IPO) and European Patent Office (EPO) literature
  • enquiry service
  • assisted searching by appointment only
  • fee based document supply
  • referrals to other advice/service providers
  • free public access to internet, IP information resources, business and company databases, market research databases
  • patent clinics offering free appointments with IP advisrrs by appointment
  • workshops and Seminars.
Information on  those services can be obtained from the reference library on (0)14 8222 3344.

These additional services have arrived at an opportune time. In her report for The Business Desk Humber LEP continues to drive growth for region of 30 Jan 2015 Ellie Newton-Syms wrote about the strong recovery of the Humber estuary based largely on investments in the energy industry. With falling oil prices this will be a challenging time even for the renewable sector and businesses will need to be agile to ride the challenge. Having access to the latest technical literature and expert advice has never been more important.

If anyone wants to discuss this article or IP generally call me on 01484 599090 or use my contact form.

24 January 2015

Sheffield Business and IP Centre Launch

Sheffield Central Library
Photo Wikipedia

In Enterprise and Libraries: a New National Network of Business & IP Support 6 Match 2013 Inventors Club I wrote about the launch in Portcullis House of a new network of PatLib libraries in the North and Midlands in association with the British Library. I reported in Business and IP Centre National Network 14 Oct 2013 that Leeds and Sheffield Central Libraries were part of that network and mentioned some of the activities of those libraries.

On Thursday I attended the official launch of the Sheffield Business and IP Centre. As this network is freceives funding from the Department for Communities and Local Government we had expected an appearance from The Rt Hon Eric Pickles MP but we learned the evening before that he was unable to make it. There were nevertheless speeches from quite a lot of other dignitaries including Laraine Manley, Executive Director of Sheffield City Council, Councillor Mazhar Iqbal, Roly Keating of the British Library and Brian Ashley of the Arts Council of England.

There was also a talk by Guy Jeremiah of Ohyo on his invention which turns out to be a collapsible water bottle coupled with a website and app for finding water fountains and other sources of water.  The default page shows a few fountains within walking distance of Endell Street in Central London but none at all for central Sheffield when I keyed in the postal code for Sheffield Central Library and the wevsite could not find Holmfirth at all on the map when I keyed in the postal code for my home address even though there is quite a famous one in our town which has features more than one in episodes of Last of the Summer Wine.

After the speeches there was an opportunity for networking over drinks and canapés.  I met Kalim Yaseen, a patent examiner who had given an excellent presentation  to the Sheffield Inventors Club on 6 Feb 2012 (see Straight from the Horse's Mouth:"Filing a UK patent application - process and procedures" 31 Jan 2012) and Roger Tipple who had spoken about Getting your Product to Market on 7 Oct 2013. I met Joyce Gray who runs the Sheffield centre and many of her colleagues. Joyce was struggling under a massive bouquet of flowers from the British Library which she richly deserved. I met three good friends from Leeds Central Library, Ged Donnan, Stef Stephenson and Andrea as well as a number of other old acquaintances from the Intellectual Property Office. I also made the acquaintance of Isabel Oswell, Head of Business & Research Audiences at The British Library and Dave Gimson, regional project manager of the British Library.

Surprisingly and somewhat disappointingly there were very few local inventors or entrepreneurs apart from Mr Jeremiah. Joyce Gray told me that she had invited some of the members of the Sheffield Inventors Club but if any turned up I did not recognize them. The one entrepreneur whom I did recognize was Mel Wong who has danced on national TV and has probably performed more grands battements than anyone else on the planet and is now setting up her own dance business. In his speech Roly Keating emphasized the importance of the creative sector for Sheffield and British Industry as a whole. I am sure that Mel will contribute to that sector considerably.

The Business and IP Centre is a great initiative and one that I welcomed and always supported but unless it collaborates with other networks it will never meet its potential. I was dismayed to learn that many of our guests from London were unaware of other groups such as Ideas Northwest or the Wessex Round Table of Inventors though Isabel heard of Richard Gallafent and Linda Oakley of Ideas 21. Nobody was aware that Ideas 21 once held meetings in Manchester. Nobody knew of the Liverpool Inventors Club or my IP clinics at Barnsley and Middlesex University. If public money is to be used to best advantage there has to be a lot more co-ordination and communication.

If anyone wants to talk about the Business and IP Centre launch or IP generally they should call me on 020 7404 5252 during office hours or use my contact form.

22 January 2015

Register your Registrable Rights at once

Over the last few days I have been advising a client who has been threatened with proceedings for Community trade mark infringement. Nothing unusual about that except that my client was the first to use the mark that he is now alleged to have infringed. In fact, he had been using the mark for quite a while before the other side applied to register the mark. It's just that he never thought of registering it for himself. And why should he because advertising and sales give the right to prevent others from using a trade mark, don't they? Why pay lawyers or attorneys to register something that is already yours.

In a sense that is right because nobody can pass off their goods or their services off as yours. As Mr Justice Arnold said in Enterprise Holdings, Inc v Europcar Group UK Ltd and Another  [2015] EWHC 17 (Ch) the elements of an action for passing off are as follows:
"(1) the claimant's goods or services have acquired a goodwill in the market and are known by some distinguishing name, mark or other indication;
(2) the defendant has used, or threatens to use, a name, mark or other indication which has led, or is likely to lead, the public to believe that goods or services offered by the defendant are goods or services of the claimant, or connected with it, and thus to a misrepresentation by the defendant (whether or not intentional); and
(3) the claimant has suffered, or is likely to suffer, damage as a result of the erroneous belief engendered by the defendant's misrepresentation"
(see my case note  Car Wars: Enterprise and Europcar 21 Jan 2015 NIPC Law).

A right to bring an action for passing off is an "earlier right" within the meaning of art 53 (2) of the Community Trade Mark Regulation (Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark OJ 24.3.2009 L78/1). My client could have opposed the registration under art 8 (4) of the Regulation and he could still apply for the invalidation of the registration under art 53 (2). But an action for passing off requires evidence of use such as sales figures and advertising spend and lots of samples of packaging and advertising just to satisfy the first element and you have to prove misrepresentation and confusion as well.

So much easier just to register the mark which you can do on-line from just £170. You can apply to register before you start trading and you are allowed up to 5 years from the date of application to register the mark before you need to use it. That means that you can prevent others from using the mark even before you have started to use it yourself which you could never do if you relied solely on passing off. Also, if you have applied for a mark in the UK or any of the other countries in the EU it is much easier to oppose or invalidate a subsequent Community trade mark.

This is not the first time that I have had to advise in a  case such as this. The last time it happened the client decided to re-brand as it was cheaper, easier and more certain than bringing cancellation proceedings in OHIM. And it is not just trade marks where this sort of thing can happen. It also happens with designs. In fact it is easier with registered or registered Community designs because there is no examination of prior art. So remember. If you have a brand or product design register the distinguishing sign or design first. Just like Spencer and Diana Hannah did with "Herdy" (see Case study Intellectual Property: Herdy 21 Jan 2015 IPO website).

If you want to talk about this article or trade marks or registered designs in general give me a ring on 01484 599090 during office hours or use my contact form.

6 January 2015

In-house IP Training

View of Huddersfield
Photo Wikipedia

Yesterday lunch time I visited a business in Huddersfield to talk to its staff about intellectual property ("IP"). An incident had occurred some months ago when it would have been to their advantage to have known more about IP. Sensibly the company's managing director sought training for its employees and asked a local business advisor to help. The advisor made enquiries at a neighbouring law school but their IP specialist could not assist so the advisor approached me.

That is the sort of invitation I am always happy to accept. As I explained in IP Services from Barristers 6 Apr 2013 4-5 IP:
"It is now permissible for members of the public to consult barristers directly under the Public Access scheme and there are sometimes advantages in doing so, especially in respect of intellectual property. Because we are independent and objective we can advise on the optimum legal protection for a new product or business. For instance, the instinct of a patent attorney is to recommend patent protection for a new invention and in as many countries as possible. Often, that is the best advice but when the inventor is an individual, start-up or small business more nuanced advice is required."
A barrister's job is to obtain the best legal outcome for his or her client and not simply to represent them effectively in court though of course we do that as well. Because we see a lot of disputes we can often spot pitfalls well in advance and advise on how to avoid them. And that is just what I did yesterday.

I was led into a conference room where a table was set up for lunch.  There were different types of bread, cold ham and chicken, fresh fruit salad, profiteroles and a chocolate Yule log. The managing director introduced the trainees, offered us tea and coffee and invited us to tuck in. There were four trainees.  All were women. They were all very bright and it became clear from the conversation that they all had substantial business experience. Each of those ladies had prepared a list of questions and they took it in turns to quiz me.

The first question was on artwork. They were often asked to do artwork for customers who later used it for purposes for which it was not intended. The customers thought they could do what they wanted with the art work just because they had paid a fee. The question boiled down to "who owns the copyright and what licences (if any) are granted or retained?" I referred the ladies to the Copyright, Designs and Patents Act 1988 and in particular to s.11:
"First ownership of copyright
(1) The author of a work is the first owner of any copyright in it, subject to the following provisions.
(2) Where a literary, dramatic, musical or artistic work, or a film, is made by an employee in the course of his employment, his employer is the first owner of any copyright in the work subject to any agreement to the contrary.
(3) This section does not apply to Crown copyright or Parliamentary copyright (see sections 163 and 165) or to copyright which subsists by virtue of section 168 (copyright of certain international organisations)."
Their company owned the copyright in any art work that they produced subject to any contract that the company may have made with its customer. That could depend on their company's terms and conditions or on those of their customer. I asked what the company's terms and conditions said about ownership of copyright in its employees' artwork. I was told that there were no terms and conditions. I replied that they should consider getting a lawyer or patent or trade mark agent to draft some for them.

One of the ladies asked whether it might be to their company's advantage "not to have a contract". I responded that they did have a contract but not a written one. In  a dispute over title to copyright in the artwork a judge and lawyers would scour the party to party correspondence, minutes and memos of meetings, previous dealings between the parties and what was normally done in transactions of that kind by other businesses in the industry. All that could take time and cost money and lead to a lot of uncertainty. Much if not all of that could be avoided by adopting a simple set of terms and conditions.

The next question was on artwork for quotations. Sometimes a customer asked them to prepare a quote which might involve quite a lot of work. The customer might reject the quote and take the work to a competitor who could undercut them.  I told them that had actually happened in Pensher Security Door Co. Ltd v Sunderland City Council [2000] R.P.C. 249 and that the Court of Appeal had held that the customer had infringed copyright by taking the design to another company and ordering goods from them.

They asked me how much it would cost for a lawyer or attorney to draft terms and conditions and I replied that it would be between £500 and £750 plus VAT. There was a collective intake of breath around the table suggesting that they thought it was a little on the high side. I decided to discuss the alternatives. "Some companies" I said "simply look at their competitors' websites and lift the legals from them. But that is a mistake for two reasons. First, copyright is likely to subsist in the terms and conditions just as it does in any other kind of work so copying the T & C even with a few changes here and there amounted to copyright infringement for which the copyist might be sued either by the person who drafted the terms or his client. Secondly, terms and conditions are intended to manage risk and the risks of the competing company might not be the same as the company's. It was like wearing another person's clothes. They might cover the body up to a point but they would not fit snugly or look very good."

I pointed out that terms and conditions are rather like the fortifications of Sandal Castle or some other medieval fortress. The first line of defence was the moat which kept out most of the undesirables of medieval Yorkshire such as waifs and strays, thieves and vagabonds, sturdy beggars and wild animals. In a company the moat corresponded to best practice. The next line of defence was the curtain wall from which defenders could rain down arrows, boiling oil and molten lead on more determined invaders. That defence corresponded to insurance. The last line of defence was the keep or bailey and if an invader got that far he had come a long way. That was where the hand to hand fighting might take place such as Macbeth against McDuff. The keep was like terms and conditions. They were for situations where best practice had failed and there was no insurance cover. The T & C had to be integrated with the insurance cover and best practice and that was where the work was to be done. When they considered that the cost of a law suit might run into the hundreds of thousands or even millions the ladies agreed that £500 to £750 was very good value.

We talked about IP insurance and I warned the ladies that many legal expenses insurance specifically exclude IP disputes. I advised them to check the company's policy and consider obtaining additional cover unless they were confident that they could fund any infringement claims that they might wish to bring or defend any revocation or invalidity claims that others might bring against them. They asked about the costs of litigation and I told them all about the Chancery Division and the chancery county courts, the Patents Court, IPEC including its small claims track and other options such as the IPO hearing officers, IPO examiners' opinions, domain name dispute resolution services and various mediation services. One of the ladies asked me to explain the difference between patents and copyrights which led to a discussion on intellectual assets and the different forms of legal protection. Another asked about IP protection abroad and I told them about TRIPs and the international conventions.

I had been booked for an hour but the session lasted nearly double that time. None of us was looking at the clock. The conversation was lively and stimulating and I think we all enjoyed ourselves.  If any other business, law firm or patent or trade mark agency in Yorkshire or indeed anywhere else wants me or one of my colleagues to lead a similar discussion he or she need only ask. I would normally charge about £350 + VAT for a session of this kind but as the initial enquiry had come through a connection who had recommended me in the past I did it for free.

If anyone wants to discuss this article or IP law generally he or she should call me on 020 7404 5252 during office hours or use my contact form.

Finally, I should like to wish all my readers a very happy New Year.

27 December 2014

Leeds Ice Cream Van Makers lose Design and Trade Mark Infringement Claim

In Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd and Others [2014] EWHC 4242 (Pat) (17 Dec 2014) a company in Leeds which converts commercial vehicles into ice cream vans and the individuals behind it were sued in the Patents Court by Whitby Specialist Vehicles Ltd for registered design, design right and trade mark infringement. I have discussed the case in detail in Designs in Ice Cream Vans: Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd and Others 27 Dec 2014 NIPC Law.

The case was unusual in that it proceeded in the Patents Court which is a specialist court within the High Court for the trial of patent, registered design, semiconductor topography and plant breeders' right claims worth over £500,000. The case against the defendants was that they had bought one of the claimant's vans and used it as a template for making parts that they used to convert other vans. While any copying is serious it is unlikely that the damages or accountable profits will come close to the £500,000 figure. The usual forum for disputes of this kind is the Intellectual Property Enterprise Court ("IPEC") which I mentioned in Holding your Own - How to stop others from ripping you off if you are a Private Inventor 5 April 2014. There trials are completed in one or at most two days and the costs of  trial on liability are limited to £50,000. The costs in the Patents Court will be much higher.  Why the case was not transferred to IPEC is curious and that may be because nobody asked for such a transfer. That could be because the brothers and their company were unrepresented and the father, who was represented by Leeds solicitors and Manchester counsel, contested only his personal involvement in the infringement.

This case is worth reading for Mr Justice Arnold's analysis of the law relating to registered designs and unregistered design right infringement and the meticulous way in which he dissected the factual evidence against the father.  It is likely to be referred to in future cases on registered design and design right infringement. Finally, the claimant company has nothing to do with the seaside town. It is actually based in Crewe. It takes its name from its founder whose surname was Whitby.  If anyone wants to discuss this case or registered design and unregistered design right law with me after the Christmas holidays, call me on  01484 599090 or use my contact form.

22 December 2014

GOSH - a special IPR that never grows old

Peter Pan statute in Kensington Gardens
Photo Wikipedia

Last week Northern Ballet danced Peter Pan at The Grand theatre in Leeds. I saw it on Saturday. It was a brilliant production and I have reviewed it in my ballet blog (see Not too sure about Fairies but I certainly believe in Rachael Gillespie 21 Dec 2014). Peter Pan was written by J M Barrie who gave his rights in relation to the boy who never grew up to Great Ormond Street Hospital ("GOSH") (see "Peter Pan and the Hospital" on the hospital's Peter Pan website).

At the time of the assignment copyright subsisted in a literary work for the life of the author plus 50 years. Barrie died in 1937 so those copyrights would have expired on 31 Dec 1987.  The expiry of Barrie's copyrights coincided with the passage through Parliament of the Copyright, Designs and Patents Bill. Lord Callaghan of Cardiff took the opportunity to persuade his fellow law makers to insert a new Schedule 6 into the Bill for the benefit of GOSH (see Hansard HL Deb 10 March 1988 vol 494 cc 805-60 for Lord Callaghan's introduction and the debate on the amendment).  In his speech Lord Callaghan said:
"This new schedule would not revive the copyright. That would certainly not be the intention, the purpose or the effect of it. However, it would enable Great Ormond Street to continue to receive the royalties that have been paid under the copyright. But of course any right that the hospital used to have to refuse permission in connection with the work—I think that it was hardly ever refused—disappears and will continue to disappear. Nevertheless, the hospital will continue to receive royalties which, as your Lordships may know, are negotiated between the hospital and those who perform the play or who publish books from time to time. The purpose of the schedule is to provide for that to continue. I hope that that meets with your Lordships' approval. I am grateful for the support which I have had from noble Lords on all sides of the House. I know that the hospital appreciates what has been done."
The government accepted Lord Callaghan's amendment and it is now Schedule 6 of the Copyright, Designs and Patents Act 1988.

Paragraph 2 (1) confers on the trustees of the hospital a royalty in respect of any public performance, commercial publication or communication to the public of the whole or any substantial part of J M Barrie's play Peter Pan ("the work") or an adaptation of it. This provision creates a unique intellectual property for the hospital rather than a copyright as such.  This right cannot be assigned (see paragraph 7 (1)) or applied to any other purpose within the National Health Service (paragraph 7 (2)) and the cy-près rule does not apply (paragraph 7 (3)).

The exceptions that would have applied had copyright not expired continue to apply to this special IPR (see paragraph 3). Paragraph 4 provides that no royalty shall be payable for "anything done in pursuance of arrangements made before the passing of this Act."  This provision creates an anomaly in that it refers to arrangements made before the passing of the Act rather than its commencement. The Act was passed on 15 Nov 1988 but did not come into effect until 1 Aug 1989.  It is clear that royalties would not be payable for anything done in respect of Barrie's play between 31 Dec 1987 when copyright expired and the 15 Nov 1988 but it is not clear whether a royalty would have been due for arrangements made between royal assent and the commencement date. This difficulty is now entirely hypothetical because any claim by the trustees would now be statute barred. Moreover, Lord Callaghan remarked that many theatrical promoters continued to donate to GOSH after copyright expired.

Paragraph 6 provides that sums received by the trustees by virtue of this Schedule, after deduction of any relevant expenses, shall be held by them on trust for the purposes of the hospital. Disputes as to the amount of the royalties payable to the trustees are to be referred to the Copyright Tribunal under paragraph 5.

These provisions apply only to the United Kingdom. The minimum term of copyright in the rest of the EU was extended to 70 years by the term directive (Council Directive 93/98/EEC of 29 October 1993 harmonizing the term of protection of copyright and certain related rights OJ L 290, 24.11.1993, p. 9–13). That extended term expired on 31 Dec 2007 except in Spain where it continues until 2017 (see Publishing and the Stage on the GOSH website). In the USA copyright in the play continues until 2023.

It is of course possible for those who wish to benefit the hospital to donate to GOSH and they may do so through the GOSH charity website and I encourage them to do so.

Should anyone wish to discuss this article or copyright law in general he or she should call me on 01484 599090 or 020 7404 5252 during normal office hours or send me a message through my contact form.

Post Script

We have our own children's hospital in Leeds which also needs support (see Leeds Children's Hospital Appeal). Happily Peter Pan (otherwise known as Gavin McGaig) and Tinkerbell (Alice Bayston) paid them a visit on 16 Dec 2014 (see Peter and Tink at Leeds Children's Hospital on Northern Ballet's website). They are two of Northern Ballet's promising dancers and I was fortunate enough to interview Gavin earlier in the year (see Meet Gavin McCaig of Nothern Ballet 3 Sept 2014),  If you want to contribute to the Leeds Children's Hospital appeal click here for its "Just Giving" page,

20 December 2014

The Sheffield Devolution Agreement should mean more Business Support - but will it be the Right Kind?

Sheffield Town Hall
Photo Wikipedia

In his Autumn statement the Chancellor of the Exchequer announced investments of up to £7 billion to transform the great cities of the North of England into an economic powerhouse.  At paragraph 1.187 of his statement he wrote:
"Studies have shown that innovators and entrepreneurs are attracted to work in creative and cultural areas, which offer a high quality of life. Strong civic leadership is instrumental in enabling this. In addition, research by the OECD shows that cities around the world with fragmented governance structures have lower levels of productivity than those that do not."
 The Chancellor referred to HM government's devolution agreement with Greater Manchester Combined Authority agreement on 3 Nov 2014 in his statement and added that other city regions had come up with similar proposals.  One of the first of those city regions is Sheffield City Region which announced a devolution deal with with the government of 12 Dec 2014.

Details of the deal appear on the Sheffield City Council website. Under the deal a range of powers will be transferred to the Sheffield City Region Combined Authority and the Sheffield City Region Local Enterprise Partnership in relation to skills and training, employment, business support, transport, housing and future devolution.  The business support programme promises the following:
  • "Sheffield City Region will align national and local business support through the LEP’s growth hub, so that businesses get a joined up service which meets their needs. The Government will work with SCR to develop a devolved approach to the delivery of business support from 2017 onwards, subject to the outcome of future spending reviews
  • UKTI will become principle partner with Sheffield City Region’s Export Centre of Expertise and work closely with the LEP to encourage more businesses to export.
  • Government and Sheffield City Region will work towards a solution that will allow the Yorkshire JEREMIE to continue on an interim basis."
Having set up and supported the Sheffield inventors Group and operated IP clinics in Barnsley and Rotherham over the last 10 years, I welcome the creation of a business growth hub in the city region. 

The announcement promises "a comprehensive suite of services that will be tailored to the bespoke needs of businesses."  One of those needs is independent expert advice on IP strategy, that is to say advice on the intellectual property rights that are needed to achieve a business's objectives. There are plenty of business advisers in South Yorkshire but few of them understand how to to use the bundle of laws that protect investment in branding, design, technology or creative works that we call "intellectual property". Similarly, there are patent and trade mark attorneys who can prosecute patent, trade mark and registered design applications but few of them can advise on the business needs of their clients,

I will continue to provide pro bono advice on IP strategy at the Barnsley Business Innovation Centre on the second Tuesday of the month between 10 and 12 and will carry on supporting the Sheffield Inventors. Should anyone wish to discuss this article, IP strategy, business support or the devolution agreement, call me on 01484 599090 during office hours or message me through my contact form. I might not be too pleased to be mithered on 25 Dec but I am available to business owners and their professional advisers at all other times. 

Merry Chrsitmas!