14 March 2015

Trade Marks for Inventors

Jane Lambert

Inventors are most interested in protecting their inventions for which they require patents but some set up businesses to manufacture or market their inventions. Such businesses need to identify themselves and their products in the market place and for that they need brands. Brands are built up by sales and marketing and the common or judge made law of England and Wales gives a measure of protection for established brands by the law of passing off, But if you are new to the market or are about to launch a new product or service you can't rely on that law. You need to register a trade mark first.

What are trade marks?
S.1 (1) of the Trade Marks Act 1994 defines a trade mark as
"any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings."
The following paragraph helpfully adds:
"A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging."
The Trade Marks Act 1994 applies only to the United Kingdom but our trade marks law has been harmonized for over 20 years with the laws of the rest of the European Union by an EU Directive and a string of decisions of the Court of Justice of the European Union. As all the EU member states are members of the World Trade Organization EU trade mark law and the trade mark laws of each of its member states have to comply with Annex 1C to the World Trade Organization Agreement which is better known as TRIPS (Trade-Related Aspects of Intellectual Property Rights). Art 15 (1) of TRIPS contains a definition that is very similar to s.1 (1) of our Trade Marks Act 1994.

A word on spelling
You will have noted that trade mark is spelt as two words in our statute but as one word in the TRIPs. Both spellings are correct but we tend to use the two word spelling in the UK, the EU and most of the Commonwealth whereas Americans use one word. As I am British I shall stick to spelling it as two words but you may find your spell check prefers the American spelling.

Specified goods
Trade marks are registered for goods or services and when you apply for a trade mark you have to specify the goods or services to which it is to apply.

It is still sometimes possible for two different trade mark owners to register the same sign for different goods. We were once familiar with Mazda card and Mazda light bulbs. But that has become more difficult since s.5 (3) of the Trade Marks Act 1994 now provides that a trade mark shall not be registered if it is
"identical with or similar to an earlier trade mark, shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom (or, in the case of a Community trade mark or international trade mark (EC) in the European Community) and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark."
Goods and services are divided into a number of classes by an international agreement called the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks or Nice Agreement for short.  Our Intellectual Property Office has very helpfully published Guidance Trade mark classification list of goods and services 2 May 2014 which you can consult on its website.

When you apply to register a trade mark you have to state the class or classes of goods and services for which you wish the mark to be registered. You should bear in mind that one class of goods or services is included in your application fee and that you have to pay extra for each additional class of goods or services.

What is the point of a trade mark?
The rights conferred by the registration of a trade mark are set out most succinctly in art 16 (1) of TRIPS:
"The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed"
That is echoed by s.9 (1) of our Trade Marks Act 1994:
"The proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed by use of the trade mark in the United Kingdom without his consent."
The acts that constitute infringement are set out at some length in the first three sub-sections of s.10 of the 1994 Act.

UK and Community Trade Marks
Applicants for trade marks in the UK has the choice of registering a trade mark for the UK alone or for the whole of the EU. Trade marks for the whole EU are known as "Community trade marks" or "CTM" and I shall refer to them as CTM for the rest of this article.

If you want a trade mark for the UK alone you apply to the Intellectual Property Office or "IPO" in Newport. The department that looks after trade marks is known as the Trade Marks Registry which us usually referred to as "the Registry".  Confusingly the head of the IPO is called "the Comptroller" in relation to patents and unregistered design rights but "the Registrar" in relation to trade marks and registered designs, However, he or she is the same person.

If you want a CTM you have to apply to the curiously named Office for Harmonization in the Internal Market Trade Marks and Designs ("OHIM") in Alicante in Spain. Applications for CTM are governed by the CTM Regulation (Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark OJ 24.3.2009 L78/1) but its provisions are very similar to those of the Directive and hence our Trade Marks Act 1994.

Guidance on applying for trade marks
The IPO contains a useful step by step guide to registering a UK trade mark that begins with the section "Trade marks: protect your brand". The next sections are "What you can and can't register", "Apply" and "After you apply". Most of the information in those pages would also be of use if you are applying for a CTM or a trade mark in any other country's trade marks registry.

If you want a CTM, OHIM also gives you some useful information. I recommend starting at the Trade Marks Basics page and working your way from there. There is an amusing little animated video called "It's all about trade marks" which you shouldn't miss.

There is also useful stuff on the British Library's Business and IP and World Intellectual Property Office websites and there is lots more from law firms, patent offices, trade mark and patent agencies and universities around the world but for now I would be content with the publications that the IPO and OHIM put out otherwise you will never get started.

Should you get professional advice?
It is perfectly possible for a reasonably well educated and intelligent individual to apply for a UK trade mark or CTM without the assistance of a trade mark or patent attorney or lawyer and many business owners do just that but unless you have a lot of experience of IP and trade marks you can easily come unstuck if you try to do it yourself. For instance, you may miss something on a search, you may fill out the form incorrectly, you may apply for a mark that can't be registered or a third party may oppose your mark after it has been advertised if he thinks that you are unrepresented in circumstances that he wouldn't try if he knew you were professionally represented. The cheapest you can register a UK mark is £170 if you make the application on-line and there are many attorneys who will do all the searches, draft the application, pay the Registry fees for £500 or less. To me that seems a no-brainer.

If you don't have an attorney and you would like me to suggest one, call me on 020 7404 5252 during normal office hours or message me through my contact form.

On-line or paper
Both the IPO and OHIM encourage on-line applications by offering slight discounts for on-line applications.

Regardless of whether you apply for a UK mark or a CTM it is imperative that you carry out a thorough search for you will probably not be allowed to register a mark that is the same or similar to an existing one for the same or similar goods or services. Even if your application does somehow slip through the owner of the earlier mark can apply to invalidate it on the grounds that it should never have been registered.

You can search the IPO or OHIM databases yourself (see Search for a Trade Mark on the IPO website and eSearch plus on OHIM's) but you will get a better result if you instruct an attorney for he or she knows what to look for. You can also get a good search from Leeds Business and IP Centre if you call Ged or Steff on 0113 247 8266.

Making the application
As there is excellent information from the IPO and OHIM on trade mark applications I am not going to repeat it here.

If you are doing it yourself and encounter a problem you can contact me on 020 7404 5252 or use my contact form. In most cases my advice will be go find an attorney and I will tell you how to get one but there may be a point of law which requires professional advice in which case I will see you in conference or advise you in writing (see "What happens if the examiner says no?" below).

IP insurance
Another thing you should consider when you apply for a trade mark is enforcement. Although some trade mark infringements are crimes which can be prosecuted by trading standards officers in the magistrates or Crown Court it is generally down to you to enforce your trade mark. You do that by issuing proceedings in the civil courts. Though you can't start proceedings until your mark has been registered your rights and hence your claim to damages can be backdated to the date of application. IP litigation in the UK has always been more expensive than on the Continent and the costs of issuing proceedings for claims over £10,000 have recently sky rocketed (see How to enforce your IP claim after court fees sky rocket 7 March 2015). Unless you have lots of money I would advise your taking out before-the-event IP insurance at the earliest possible opportunity (see Intellectual Property Litigation - the Funding Options 10 April 2013 NIPC Law) which is when in the case of trade marks is when you make your application.

What if the examiner says no?
Here's where I come in. Any decision of the hearing officer can be appealed but appeals are be expensive and you will want to make sure that you are on firm ground. You could ask your trade mark or patent attorney or your solicitor but at the end of the day they may well suggest your taking counsel's opinion. "Counsel" is another word for barrister or someone like me and if you want to know what IP barristers such as I can offer read my article IP Services from Barristers 6 April 2013 4-5 IP). I will advise you on your options and if you decide to appeal I will represent you all for a fixed fee that will be agreed in advance. Again, if you want to consult me call me on 020 7404 5252 during normal office hours or message me through my contact form.

In the IPO appeals from examiners are made to an official known  as a hearing officer who sits on behalf of the Registrar. The IPO has published two useful articles on Options following an objection to a trade mark examination and Trade mark disputes resolution: hearings which I advise you to read.

Appeals in OHIM are made to Boards of Appeal and the procedure is set out in the Appeal page.

What if someone else says no?
if the examiner finds no objection  to your application it will be advertised on the web and elsewhere. If anyone objects to your application he or she may get a trade mark or patent attorney to write to you to explain the objection and ask you to withdraw your application.  Again, this is where I could come in either at your request or the request of your attorneys or lawyers. I can advise you whether the objection is justified and if it is not represent you in opposition proceedings again for an agreed fee.

There are basically two grounds upon which an opponent can object to your application. The first is that he or she has an earlier trade mark with which your mark conflicts. The second is that he or she could bring an action for passing off, copyright infringement or some other cause of action that would prevent your using your mark.

Appeals in the IPO are heard by hearing officers and appeals in OHIM by Boards of Appeal, Much of what I have written under the previous heading applies to opposition proceedings.

If nobody objects to your application or if all objections are resolved in your favour your application will proceed to grant and you will receive a certificate of registration and your mark will be entered on the register.  However, that is not necessarily the end of the story because it is still open to a third party to apply for invalidation of your mark on the ground that it should never have been granted. You also have to make sure that you use your mark within 5 years of registration otherwise someone may seek its revocation for non-use. Invalidity proceedings can be made in the Trade Marks Registry or as the case may be OHIM or by way of counterclaim in any proceedings you may bring for infringement of its mark.

Watch service
You need to make sure that another business does not apply to register the same or similar mark for the same or similar goods. As it is impractical for most businesses to scour the intellectual property offices or trade mark journals it is a good idea to instruct someone to do that for you. That is known as a "watch service". Your attorney ought to be able to arrange that for you but if not call Ged or Steff at Leeds Business and IP Centre on 0113 247 8266.

If you want to discuss this article or trade marks generally call me on 020 7404 5252 or use my contact form.

07 March 2015

How to enforce your IP claim after court fees sky rocket

Saturn V rocket - the biggest rocket ever to fly
Photo Wikipedia

A patent or other intellectual property rights is essentially a right to bring a law suit. With a few limited exceptions it is not a crime to infringe an intellectual property right. Patentees and other intellectual property rights holders have to enforce their rights have to enforce their rights themselves which generally means bringing proceedings in the civil courts.

1.  Court Fees are about to Sky Rocket

Unfortunately, the costs of issuing proceedings in the civil courts of England and Wales are about to soar through the roof. Art 2 of The Civil Proceedings and Family Proceedings Fees (Amendment) Order 2015 which is currently before Parliament requires those claiming more than £10,000 in damages or other monetary relief to pay 5% of the value of the claim up to a cap of £10,000.  At present, the most that anyone has to pay for issuing a claim is £1,920. That will increase to £10,000 after the Order is made - a whopping £8,080 or 421%. It is even worse for those with modest claims. Those seeking damages of £190,000 will have to pay £9,500 an increase of £8,185 or 622%.

The peers including the law lords have protested at these new fees as have the senior judges and lawyers (see Senior judges attack government's planned court cost rise 4 March 2014 BBC and Wednesday in Westminster 4 March 2015) but governments tend to get their way and the draft order will go through. So what should inventors and other small businesses do now?

2. Limit Damages Claim to £10,000

The issue fees for claims under £10,000 remains unchanged. They increased quite a bit last year but they will not be going up this time. If your claim for damages is between £5,000 and £10,000 the issue fee will still be £455. Limiting claims to £10,000 is not nearly as bad as it sounds because the principal relief that an intellectual property owner wants is an injunction - that is to say, an order of the court to do or refrain from doing something on pain of a fine or imprisonment for disobedience. Inquires as to damages and accounts of profits are very rare in IP litigation. I can count on the fingers of one hand the number of cases in which I have been instructed that have actually gone all the way to a full blown inquiry.

Happily there is now a court for small intellectual property claims, namely the Intellectual Property Enterprise Court (formerly the Patents County Court) small claims track. The judges of that court will hear claims for all types of IP cases except those involving patents, registered designs, registered Community designs, semiconductor topographies and plant breeders' rights where the damages or other pecuniary relief is £10,000 or less. I have written a lot about that tribunal, given a lot of presentations and even argued a case before it. You will find links to those articles at Patents County Court - the New Small Claims Track Rules 20 Sept 2012 NIPC Law. The great advantage of the small claims track is that the procedure is very simple. There is usually only one hearing which lasts less than half a day and the judge can award an injunction and damages at the same sitting. Something that can't be done in any other court. The risk as to costs is limited to a few hundred pounds though by the same token you can's recover more than a few hundred pounds if you are successful.

Even if your claim is in relation to patents, registered or registered Community designs, semiconductor topographies or plant breeders' rights you can still limit your damages claim to £10,000. Your case will be allocated to the multitrack which means that your liability for costs will increase but you will still only be charged £455 for issuing proceedings and recoverable costs in the multitrack are limited to £50,000.

3.   Bring your Case in the Intellectual Property Office

The hearing officers of the Intellectual Property Office have extensive jurisdiction in patents, trade marks, registered designs and unregistered design rights disputes and recoverable costs in proceedings before hearing officers are limited in most cases to a fixed scale (see Tribunal Practice Notice 2/2000 Costs In Proceedings Before The Comptroller).

In patents, for instance, hearing officers can decide who is entitled to a patent or to be named as an inventor, they can amend or revoke a patent, they can declare that a patent has not been infringed and they can decide compulsory licensing and licence of rights disputes. They can even hear infringement claims with the consent of the parties under s.61 (3) of the Patents Act 1977 though that has rarely if ever happened, possibly because hearing officers cannot grant injunctions.

In trade mark disputes hearing officers can revoke or declare trade mark applications invalid.

In designs hearing officers can cancel design registrations and determine the conditions for licences of right.

Appeals from decisions of hearing officers in trade mark disputes can be made to an Appointed Person rather than the court who will generally award costs on the same scale as hearing officers.   S.10 of the Intellectual Property Act 2014 makes similar provisions in respect of designs.

4.   Seek an Examiner's Opinion

For the last 10 years Intellectual Property Office examiners have delivered non-binding opinions as to whether a British or European patent is valid and whether it has been infringed.  This has proved very popular and their jurisdiction has recently been extended to other patent disputes and will shortly extend to designs. The cost of an examiner's opinion remains at £200.  In some cases an authoritative opinion is all that is needed to resolve a dispute. In cases where the losing party refuses to back down a favourable opinion should make it easier to get after-the-event insurance or litigation funding.

5.  Use established Arbitration or other Alternative Dispute Resolution Schemes where they exist

Probably the best known schemes are the ICANN Uniform Domain Name Dispute Resolution Policy for generic top level domain name disputes and Nominet's Dispute Resolution Service for domain name disputes in the .uk top level domain name space. For a few hundred pounds trade mark owners can obtain an order for the transfer of a domain name in less time than it takes to exchange statements of case in many intellectual property disputes. Costs are irrecoverable but then you don't usually get all your costs back on a detailed or summary assessment anyway.

6.  Insert Dispute Resolution Clauses into your Licences and other Agreements

If you don't want to go to court to resolve a dispute with your licensee, joint venturer or other associate you can insert provisions for mediation, expert determination or arbitration into your licences or other agreements.

7.  Take out Before-the-Event Insurance

Although the 622% and 421% increases that I mentioned above are enormous, they are not a large part of the total cost of litigation and should not increase before-the-event insurance premiums greatly. There are some good IP packages on the market, particularly the IP Insured package which Sybaris IP offers to ACID members.

8.  On the Horizon

The British government has signed an agreement to establish a Unified Patent Court with exclusive jurisdiction to determine disputes over European patents and passed enabling legislation to implement the agreement. Art 71 of that agreement restored legal aid for inventors which was taken away from them by paragraph 1 (h) of Schedule 2 to the Access to Justice Act 1999. The Court will consist of a Court of Appeal in Luxembourg and a Court of First Instance with a central division based in Paris with a section in London. The Court will have its own rules and charge its own fees. So long as this country remains in the EU it is the best news for private inventors for 20 years.

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