What can a Barrister do for an Inventor that a Patent Attorney or Solicitor can't do just as well?

Jane Lambert

A flippant response to the above question might be: "Why do patent attorneys and solicitors seek counsel's opinion, instruct barristers to draft complex legal instruments or brief them to represent them before the courts or hearing officers on behalf of their clients?"  The obvious answer is that barristers can do some of those things better than other legal professionals can. That is not because barristers are brighter or more knowledgeable than other IP professionals but because we have two important advantages.

The first is that we know the judges who make the law. We know how they think which enables us to guess how they would analyse an issue that has not come in front of the courts before. We gain that knowledge by arguing against them when they are at the bar and before them when they reach the bench. Anybody can look up a statute or the case law which will describe the law as it stands today but only a specialist advocate can forecast accurately how the law will develop tomorrow.

Our other advantage is that we tend to be called in only after things have gone wrong. Through such experience, we learn how disputes or other difficulties arise and what could have been done to avoid them.  That experience also enables us to flag up potential difficulties before they arise and to suggest steps to avoid them.  That is why barristers are instructed to draft contracts and other legal instruments for use in business, particularly in new situations involving new technologies or new business situations.

Until 2004 our expertise could be accessed only if a solicitor, patent attorney or other professional intermediary instructed us.  Since then, it has been possible for businesses or individuals in the UK to instruct us directly. That does not mean that we now do patent attorneys' or solicitors' work. We remain a referral or specialist profession, but there is no longer a need to instruct an intermediary just to instruct us.  Also, if we believe that it is our client's interests to instruct some other legal professional, we are under a professional duty to say so.

That leads to yet another advantage.  We see a lot of patent agents, solicitors and other legal professionals in the course of our work and are thus in a unique position to judge their relative strengths and weaknesses.  We can, therefore, help members of the public who require the services of such an intermediary to identify one who will best suit their needs.

We can now be a point of entry to the legal services industry. Often the best time to instruct us is early in the life of a new business or the development of a new product because we can help with the formulation of an IP strategy, suggest the optimum legal protection for an intellectual asset and build a team of IP professionals.  I have listed some of the services that I offer on the Services page of this blog and you will find others on the equivalent page of my NIPC Law blog. Details of how to instruct me appear on the Instruct Me page.

If you want to discuss this article with me or you have a specific matter upon which you require some help, call me on +44 (0)20 7404 5252 or send me a message through my contact form.

Further Reading

Date	Author	Title	Publication
06.04.2013	Jane Lambert	IP Services from Barristers	NIPC News

Talk "How can I protect my Business Idea?"

Jane Lambert

I have been holding patent clinics around the country for many years and the most frequently asked question is "How can I protect my business idea?"

There is no easy answer because it depends on the nature of your business and the type of idea. For instance, a patent may afford the most extensive protection for a new product or process but if the costs of patenting, insuring and policing the are likely to outweigh the income likely to be generated from the invention you would be better off looking at other forms of legal protection.

It is for that reason that I am giving a talk at Barnsley Business and Innovation Centre (BBIC) entitled

How can I protect my Business Idea?

on 9 May 2017 between 12:15 and 13:15.

I will 

• introduce you to all the tools in the legal toolbox such as patents, trade secrecy, unregistered design rights, trade marks et cetera; 
• tell you the advantages and disadvantages of each type of protection; 
•  explain how to get each type of IP and how much it will cost; 
• give you some useful tips about insurance, watch services and enforcement; 
• advise you on the different types of IP professional, where to find them, how to instruct them and how much they are likely to cost; and finally,
• share a methodology for working out an IP strategy.

There is likely to be quite a lot of demand for places so call George or any of his colleagues on 020 7404 5252 to book your place as soon as possible,

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.

Searches
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.

Registration
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.

Alternatives to Invention Promotion Companies

The other day I was asked for my opinion on an invention promotion company. It was not one that I had ever dealt with so I could not answer the enquiry directly but I referred the inventor to the advice that the US Patent and Trademark Office and our own Intellectual Property Office had given on invention promotion companies generally. 

The inventor thanked me for my reply and added:

"My family and friends have given me very positive feedback on my invention but how else do I check if my invention is good ?
What should I do next ?
Where can I find trustworthy contacts ?"

I replied:

"First do some market research. You can get some help with that at the Business and IP Centre of the British Library.
Next you should decide whether to exploit your invention directly by setting up in business to produce and sell it or licensing it out to someone else.
If you decide to license it out you will need to show your licensee how it will make money from the invention which means that you have to do much the same work as you would if you were making and selling it yourself. If you do get it out you will get a licence fee which will typically be a small percentage of the sale price.
I can advise you on the legal issues but not on the financial ones.
I wish you all the best with your invention."

The British Library and its associated libraries in Birmingham, Leeds, Liverpool, Manchester, Newcastle and Sheffield have massive resources on market research, business planning and everything else an inventor would need to know to set up in business. If he or she is not clear how to use those resources there are courses from the library staff and its partners.

I also advise the inventor to join an inventors' club if one is nearby. There he or she will meet product development consultants, patent attorneys, business advisers and other professionals who assist individual inventors and, most importantly, other inventors who can share their experience with him or her. I have listed some of the inventors clubs that I know about in the side panel to this blog. The Wessex Round Table of Inventors has a much longer list. I am sure that there will be lots of trustworthy and knowledgeable contacts at any of those associations.

In my email I made clear that I am a lawyer and not a business adviser. Here are some of the things I can do for inventors.

1. Tailoring a non-disclosure agreement to the inventor's needs or reviewing or advising the inventor on somebody else's.
2. Advising the inventor on the optimum intellectual property protection for his or her invention and if that includes patents helping him or her find and instruct patent attorneys in this country and abroad who can apply for them.  As I do not prosecute patent, design or trade mark applications I have no interest in selling the inventor a service though I must stress that every patent attorney I know would try to advise objectively too.
3. Representing the inventor at a hearing in the Intellectual Property Office if the examiner challenges his or her application.
4, Helping the inventor negotiate and draft agreements with collaborators, investors and consultants.
5. Drawing up terms and conditions, manufacturing and distribution agreements if the inventor wishes to make and sell the invention him or herself or licences if he or she doesn't and just about any other agreement the inventor may need.
6. Helping to keep the inventor out of trouble with third parties and resolving difficulties if any arise.

There was a time when barristers could be approached only through solicitors or patent or trade mark attorneys but that rule changed over 10 years ago, Now we can do more or less anything that a solicitor can do and as we don't have offices to maintain our services are often cheaper. You can find out more about instructing us in IP Services from Barristers 6 Apr 2013.

Should anyone wish to discuss this article, invention promotion companies or help to inventors in general they should contact me through my message form or call me on 020 7404 5252 during office hours.