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New Year, New IP

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New IP

 

Happy New Year from Albright IP. As we welcome in a new decade, we want to wish all our clients, colleagues and partners around the world a prosperous 2020.

 

At the turn of the last decade we were just starting out with six staff, today we have expanded not only in size to a team of 30 people split across two patent teams and a trade mark team, but also in the considerable development in our sector expertise.

 

Across our teams we now have technical expertise in sectors such as Bio Medical, Mechanical Engineering, AI and Software, Physical Chemistry and the Life Sciences to name but a few!

 

Our trade mark team has grown to six and was ranked, last year, at number 20 for the top 100 UK trade mark filers by the Chartered Institute of Trade Mark Attorneys (CITMA), beating many much larger firms.

 

Much like the ‘roaring twenties’ we hope that this new decade continues to see great advances in technology and economic growth and we are very much looking forward to supporting our clients and partners across the globe to secure their IP and grow their businesses over the coming decade.

 

Banksy: The Flower Thrower

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Banksy: The Flower Thrower

 

“Does art matter?”. On 17 October 2019 , graffiti artist Banksy launched an online shop called Gross Domestic Product to sell his branded merchandise for two weeks, the launch being advertised by a pop-up shop in Croydon, UK. To have chance at purchasing an item, would-be Banksy merchandise owners had to register their interest and answer the above tie-breaker question. The sale of trademarked merchandise, an unprecedented move by Banksy, is better understood in the wider context of a dispute surrounding one of Banksy’s trade marks.

 

Banksy is the owner of several European trade marks, registered under the name of Pest Control Office Limited, a handling service acting on behalf of Banksy. The particular European trade mark at the centre of the dispute is European Trade Mark 012575155  which protects an image reminiscent of Banksy’s Rage, the Flower Thrower mural in Jerusalem, also known as Love Is In The Air, Flower Thrower or Flower Bomber. The Flower Thrower trade mark was filed in February 2014 and registered by August 2014.

 

In a statement posted on the pop-up store in Croydon, Banksy has explained the motivation behind the shop as follows:

 

“A greetings card company is contesting the trademark I hold to my art and attempting to take custody of my name so they can sell their fake Banksy merchandise legally”.

 

Full Colour Black, the greetings card producer in question, deny that they are trying to take custody of Banksy’s name, and have stated that the company previously approached Banksy’s representatives to pay them royalties, which Banksy refused

 

Subsequently, in March 2019, Full Colour Black filed an action for invalidity to cancel the Flower Thrower European trade mark. If the trade mark were successfully cancelled, Banksy would not be able to rely on his European trade mark to prevent use of the Flower thrower image commercially and Full Colour Black would be free to sell cards featuring the Flower Thrower without any risk of infringing the mark.

 

Of course, Banksy could rely on copyright to stop Full Colour Black or any other entities who are copying his art work. However, so far, Banksy has not enforced his copyright, the likely reasons for this being that to do so would require giving up his anonymity, and the requirement to file statements of use to enforce his copyright in the USA.

 

The essential function of a trade mark is to enable consumers to distinguish the goods or services of one undertaking from those of other undertakings. As the Flower Thrower image is reproduced widely on goods sold by different entities, Full Colour Black have argued that the image is not capable of being a trade mark. This is because it does not allow consumers to distinguish the goods originating from an undertaking under Banksy’s control and those originating from other companies. This is particularly true, as, prior to the launch of the shop in October 2019, no official Banksy merchandise existed. Furthermore, Full Colour Black argue that Banksy has registered the mark with no intention to genuinely use it, which amounts to bad faith, a further ground for invalidity.

 

It is unclear how selling trademarked merchandise is supposed to help Banksy’s case, as evidence of use has no effect in an invalidation action. The sale would be much more understandable if the action filed by Full Colour Black had been for revocation, as a trade mark can be revoked for non-use.

 

According to European trade mark law, a trade mark can be revoked, upon application to the European Union Intellectual Property Office,

 

“a) if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use; […]”

 

(Article 58 of the EU Regulation No 2017/1001 of 14 June 2017)

 

In other words, as Banksy had not sold any goods to which the Flower Thrower trade mark was applied, and for which the trade mark was registered between August 2014 and August 2019, and there were no reasons preventing him from doing so, his Flower Thrower European trade mark became subject to revocation in August 2019 such that Full Colour Black could have applied for revocation from then on.

 

However, the law does also state that:

 

“no person may claim that the proprietor’s rights in an EU trade mark should be revoked where, during the interval between expiry of the five-year period and filing of the application or counterclaim, genuine use of the trade mark has been started or resumed; the commencement or resumption of use within a period of three months preceding the filing of the application or counterclaim which began at the earliest on expiry of the continuous period of five years of non-use shall, however, be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application or counterclaim may be filed;[…]”.

 

In short, the shop launch in October 2019 may have been an attempt by Banksy to pre-emptively invalidate any revocation action filed by Full Colour Black.

 

Such a revocation action would nevertheless remain admissible if Banksy only launched the shop after becoming aware of the possibility of a revocation action being filed against his trade mark and if such an action were filed within three months. Whether the sale of a few items for a limited period of time constituted genuine use of the mark is also an important question.

 

The current status on the European Union Intellectual Property Office register of Flower Thrower European trade mark 012575155 is “registration cancellation pending”, as the court determines the matter.

 

In a parallel move, Banksy’s legal team appear to have filed another representation of the Flower Thrower as a new European trade mark application in August 2019, European trade mark application 018118853. This new trade mark application is currently undergoing examination. If registered in due course, the sale of branded merchandise in October 2019 may well have been a move to demonstrate use of the image submitted in the newly-filed European trade mark application, rather than in response to the invalidation action. Of course, if the first Flower Thrower trade mark is invalidated (and therefore was never a valid registered trade mark), this may not bode well for the registration of the second Flower Thrower trade mark application, or indeed the registration of many other of Banksy’s image trade marks.

 

It will be interesting to see how this case develops further.

 

An important, practical conclusion for trade mark owners to draw from this case is to not wait five years before putting your trade mark to use. Otherwise, your trademark will become open to being revoked for non-use.

 

If you have not been using your mark in the last five years or more, the most advisable course of action in many cases would be to resume or start as soon as possible.

 

If in doubt, please do not hesitate to contact Albright IP for advice about your trade mark.

 

Has Sky been grounded? – Sky v Skykick

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Sky v Skykick

 

The recently published Opinion of the Attorney-General in the Sky v Skykick case, has provided some much-needed clarity on the legitimacy of wide-ranging specifications, and the associated issue of ‘bad faith’ being pleaded in trade mark invalidation proceedings.

 

Should the CJEU go on to adopt the AG’s Opinion, the subsequent changes in European law and practice, will have an enormous impact on the scope of protection that a trade mark can be granted a monopoly for. With an expected tightening of the rules, now is a prime opportunity for trade mark owners to assess the suitability of their specifications, and tighten their filing practice.

 

Background

 

In 2018, SkyKick successfully countered a claim of trade mark infringement against broadcasting juggernaut Sky PLC. Despite the clear similarities of the marks involved (see below), the presiding judge, Justice Arnold, ruled in favour of SkyKick.

 

Sky’s Marks The Signs Complained of
SKY

UKTM No. 2500604

EUTM Nos. 5298112 & 6870992

EUTM No. 3203619

EUTM No. 3166352
Sky v SkyKick [2018]

 

SkyKick had argued that:

 

  1. Sky’s specifications were insufficiently clear or precise.
  2. Sky’s specifications were filed in bad faith because they contained terms Sky clearly had no discernible interest or rationale in pursuing.

 

SkyKick’s arguments had highlighted an ambiguity of European legislation that allowed companies like Sky to operate an aggressive enforcement strategy; namely, lack of clarity on whether a trade mark can be declared as having been filed in bad faith (and thus subject to invalidation) if the registered goods and services are wholly unrelated to core interests of the applicant.

 

In filing incredibly broad specifications, some covering 8,000 words of goods and services, Sky had enjoyed years of success in its infringement claims against marks containing the word element ‘SKY’, regardless of the distance in goods/services of the later marks relative to Sky’s actual commercial interests.

 

Sky, by its own admission, is a direct-to-consumer media and entertainment company [1] and thus, unsurprisingly, Justice Arnold questioned whether its clear lack of intention to use (i.e. bad faith) constituted grounds for invalidation. This question, and four others, were referred by Justice Arnold to the CJEU for clarity, summarising that “if the [Sky] Trade Marks are valid, then there is a likelihood of confusion” [2].

 

AG Opinion

 

On 16 October 2019, Attorney-General Tanchev’s Opinion in response to Justice Arnold’s questions was published. The questions and answers (in summary) were as follows:

 

  1. Is insufficient clarity and precision of the specification a ground for invalidity in and of itself?

 

 

The AG answered in the negative, stating “there is no provision in any of the relevant legislation for [invalidation] … on the ground that some or all of the terms in the specification of goods or services lack sufficient clarity and precision” [3].

 

 

 

  1. May the requirement of clarity and precision be connected with a ground for invalidity that is laid down by the EU legislation?

 

The AG concluded that whilst there are no legal provisions for invalidation on the basis of a specification lacking clarity or precision, specifications could instead be found invalid where this is a breach of public policy/order i.e. bad faith. In other words, because Sky’s specifications confer the holder such a wide monopoly, broad terms such as the aforementioned “computer services” should be declared invalid to prevent repression of market competition.

 

  • What is the scope of bad faith?

 

The AG concluded the legal requirement preventing application of a mark in ‘bad faith’ was intended to encompass and broaden the previous provision, an explicit bona fide intention to use. Therefore, a broad specification, where there is a clear lack of intention to use but for the purpose of blocking third parties from using an identical or similar mark, falls within ‘bad faith’.

 

  1. What are the consequences of bad faith where bad faith only concerns some of the goods and services covered by a registration?

 

A relief to broad filers, the AG did not find that the existence of bad faith within a specification constituted invalidation of a mark in its entirety. Rather, “where the ground for invalidity exists in respect of only some of the goods or services for which the trade mark is registered, the trade mark is to be declared invalid as regards those goods or services only” [4].

 

  1. Is UK law regarding intention to use compatible with EU law?

 

Yes. Specifically, the AG found that the UK’s requirement that applicants declare they are, or will be, using their mark across the entirety of their specification is compatible with EU law. However, failure to live up to such a declaration would not be ‘the sole basis for a finding of bad faith’ [5].

 

Conclusion

 

As stated, if the CJEU adopts the positions expressed in the AG’s Opinion, trade mark owners will need to review carefully the contents of their specifications and consider whether they are fit for purpose. Failure to do so could ultimately be costly, even beyond registration.

 

Consequently, we recommend that our clients:

 

  • Avoid extending protection beyond the list of goods and services that are realistically likely to be provided, when filing a new trade mark application.

 

  • Avoid the temptation of filing for a list of speculative goods and services, that may be introduced at a future date, simply as a way of gaining ‘more value’ out of an application. Ultimately, instructing a second application if and when use expands to other areas, will be far more useful and cost effective, than fighting an invalidation action that could result in having goods/services struck through.

 

  • Do contact us should you require advice on how to best protect your trade marks. As always, our highly experienced team of Attorneys will be pleased to advise further, and share their expertise in the drafting of an appropriate specification.

 

In view of the possible changes to come, we will be monitoring for the publication of the CJEU’s final decision, and provide an update when this is delivered.

 

[1] www.skygroup.sky [Date Accessed: 06 November 2019]

[2] Sky Plc & Ors v Skykick UK Ltd & Anor [2018] EWHC 155 (Ch) (06 February 2018). Paragraph 358.

[3] Opinion of Advocate Tanchev [2019] Case C‑371/18 (16 October 2019). Paragraph 39.

[4] AG Opinion. Paragraph 127.

[5] AG Opinion. Paragraph 143.

Can I register this shape as a Trade Mark?

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Trade Mark Registration grants the owner a monopoly right over their Mark for an unlimited amount of time, so long as registration is renewed at each (10 year) anniversary.

 

When it comes to the registration of a 3D shape, arguably, the criteria for registrability is much more stringent, to avoid the same monopoly right being granted for a right that should more correctly be protected by a Design registration, with a limited life.

 

Aside from the usual requirements for registrability of a Trade Mark, a number of key hurdles are in place to limit the registrability of 3D shape Marks; these are listed below:

 

A 3D shape cannot be registered as a Trade Mark, if the shape:

 

  1. Arises from the inherent nature of the object/goods;
  2. Provides a technical function;
  3. Adds substantial value to the product.

 

Providing these objections can be overcome, a 3D shape can be an extremely valuable asset for an individual or company.

 

Case Study – The recent Jaguar Land Rover Case

 

Register a shape

 

Recently, the UKIPO rejected Jaguar Land Rover’s Trade Mark Applications for six 3D shapes, depicting their cars (pictured below), in a range of Classes of goods.

 

The grounds of the Oppositions were explored in detail in the UKIPO decision, which can be viewed here.

 

For the purposes of this article, we have focused upon two of the grounds pleaded:

  • the lack of inherent distinctiveness and
  • that the shape conferred substantial value to the goods

 

 (1) Lack of inherent distinctiveness

 

According to case law, for a shape Mark to be registrable, the shape must depart significantly from the norm or customs of the sector of products of that kind. This assessment is made through the eyes of average consumers, whose level of attention will vary, according to the nature of the goods in question.

 

The UKIPO identified that the shapes in question had some unusual aspects, namely “‘arrow shot’ rear windows and alpine side windows”. However, the configuration of the shape, as a whole, was important. Even with some unusual elements, the shape, as a whole, did not necessary depart from the norms or customs of the sector, and consequently, the Marks were found to be devoid of distinctive character in relation to passenger cars.

 

(2) Substantial value

Jaguar Land Rover pleaded that the boxy ‘slab-sided’ shapes were counter-functional, not necessary to achieve a technical result, and also, not features that consumers would be  looking for in competitors’ products.

 

The UKIPO expressed their uncertainty when deliberating whether the boxy ‘slab-sided’ shapes provided the ‘aesthetic appeal’, and it was merely noted that this was a ‘difficult and developing area of the law’, and the ground was ultimately left undecided.

 

Key Points from the UKIPO decision

 

  • When it comes to 3D Trade Mark Applications, Applicants will fare better the greater the degree that a shape constitutes a ‘significant departure from the norms or customs of the sector’. In this regard, mere elements and/or aspects of uniqueness or originality might not suffice, since it is the overall shape of the Mark which will be considered pertinent.

 

  • Unfortunately, the concept of substantial value still remains somewhat obscure. It is unclear whether this assessment should take into account or ignore the fact that consumers will recognise the shape. This raises doubt as to whether established brands, who have spent significant time and investment in creating brand recognition, will be jeopardising their ability to seek Trade Mark protection for a recognised product, if its appeal is only due to its ‘iconic’ shape/status in the mind of consumers. Hopefully, it will not take long for the ground of substantial value to be brought to the courts’ attention again, and perhaps the next time round, this will be properly addressed.

 

Summary

 

Overall, the UKIPO decision was not surprising. Given the potentially perpetual power of a Trade Mark registration, it remains in the interest of public policy to refuse registration of a 3D shape, where this would effectively grant a person or company, an endless monopoly over a shape that should be or become available for others to use in commerce.

 

If you would like further information or advice on registering 3D Trade Marks, or for any other Trade Mark advice, please contact the highly experienced team of Trade Mark Attorneys at Albright IP, who will be pleased to advise you further.

 

EPO to change Rules of Procedure of the Boards of Appeal

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EPO rules changes

 

The European Patent Office has recently approved the revised Rules of Procedure of the Boards of Appeal (RPBA) which will come into force to any pending or newly filed appeals relating to European patents or applications from 1 January 2020 onwards. This article provides a brief overview of the more important rule changes, governing the appeals procedure, and what they mean in practical terms.

 

According to the EPO, the new RPBA aims to increase “(i) efficiency, by reducing the number of issues to be treated, (ii) predictability for the parties and (iii) harmonisation”.

 

Following the rule change, parties will typically be given at least four months’ notice for oral proceedings. A decision will be issued within three months of the oral proceedings (or if later, parties will be informed of that date).

 

According to Article 10, it is now possible for an appeal to be accelerated on request by a party. Grant of the acceleration is at the EPO’s discretion and reasons justifying the acceleration, such as infringement proceedings, and supporting evidence should be provided with the request. It is now also possible for the EPO to accelerate proceedings of its own motion.

 

Another significant rule change in Article 12, paragraphs 4 to 6, sees restrictions on new requests, facts, lines of attack, arguments, and evidence being admitted during appeal proceedings. The new RPBA further emphasises that the primary object of the appeal proceedings, which is to review the contested decision rather than retry the case.

 

Furthermore, any part of a party’s case which does not relate to the material on which the contested decision was based will only be admitted into proceedings at the discretion of the EPO, according to new Article 13. Amendment to a party’s case after filing of its grounds of appeal or reply can only be admitted at the EPO’s discretion, taking into account whether the amendment is suitable to resolve the issues concerned and procedural economy. The bar is set even higher for an amendment made at a very late stage of proceedings – it will not be taken into account unless there are exceptional circumstances justified with cogent reasons.

 

Exceptions to the Application of the new RPBA

 

There are certain circumstances to which the new RPBA do not apply:

 

– Article 12, paragraphs 4 to 6, in particular, will not apply to any statement of grounds of appeal filed before 1 January 2020; or

 

– if a summon to oral proceedings or a communication under Rule 100(2) EPC (invitation by the EPO to file observations during examination of the appeal) is issued before 1 January 2020.

 

Practical Implications

 

It is more important than ever to ensure anything you may wish to rely on is included in the proceedings as early as possible. This applies to cases already in the appeal process and is also likely to be pertinent to cases that are appealable, such as cases in examination or opposition proceedings.

 

For cases already in appeal, it makes sense to submit any material you may wish to rely on, and certainly any grounds of appeal or replies, before 1 January 2020.

 

Care should also be taken to ensure all relevant facts, lines of attack, arguments and evidence, as well as any material that may be helpful, are on file for cases in opposition or examination proceedings. You want to reply on these materials if an appeal is necessary in the future.

 

The new RPBA will likely encourage the front loading of appeal proceedings as well as comprehensive preparation of the file for first instance proceedings to pre-empt any possible appeal in the future.

 

If you would like advice on this or on any other aspect of intellectual property, please do not hesitate to contact Albright IP on 01242 691 801.

 

Get Out On The Highway – What exactly is the PPH programme, and is it worthwhile?

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PACE vs. PPH

 

The European Patent Office (EPO) has announced as of July 2019 that the Patent Prosecution Highway (PPH) pilot programme with IP Australia is to be extended to June 2022.

 

In total, this means that the EPO has PPH programmes in effect with fifteen other patent offices. The relevant jurisdictions are: United States of America; China; Japan; Korea; Australia; Brazil; Canada; Colombia; Israel; Malaysia; Mexico; the Philippines; Russia; Singapore; and Eurasia.

 

What exactly is the PPH programme, and is it worthwhile?

 

Earlier Work Products

 

The PPH programme allows a later office to rely on ‘available work products’ from one of the partner offices, which indicates that the claims of the application are allowable.

 

This allows the EPO to fast-track the grant process of the European patent application, based on the earlier work product.

 

Requirements

 

There are specific requirements for participation in the PPH programme.

 

  1. The priority date or filing date of the earlier application must match that of European application to undergo PPH acceleration.

 

  1. The earlier application must have at least one claim therein indicated as allowable.

 

  1. The claims of the European application must be made consistent with the allowable claim(s) of the earlier application. A claims correspondence table should be provided as part of the request for PPH at the EPO.

 

  1. PPH must be requested before the EPO begins examination of the European application.

 

Effectively, the PPH programme allows the prosecution of a pending European application to catch up with that of an application in another jurisdiction, provided that the EPO has not already started examination on its merits.

 

Should I Use PPH Acceleration?

 

The EPO acknowledges that a valid PPH request will put the application into a fast-track stream, on a par with a standard request for acceleration under the PACE programme.

 

This is interesting, since there is a significantly lower administrative burden on the applicant for filing a PACE request than there is for filing a PPH request, with no apparent change to the potential timeframe to grant.

 

What is also worth noting is that the EPO Examiner is still required to assess the merits of the compliance of the European application with the requirements of the European Patent Convention. PPH acceleration does not guarantee grant – it is not a rubber-stamping exercise. The EPO has different requirements for grant when compared with, for example, the USPTO or KIPO. The EPO requirements with regards to added-matter are commonly regarded as being stricter than in some other jurisdictions

 

PACE vs. PPH

 

Therefore, there may be different factors to consider when deciding whether to request PACE acceleration or PPH acceleration.

 

  • I want to bring my European application into alignment with an already-granted patent in another jurisdiction.

 

  • In this scenario, it would seem prudent to allow the EPO to access the prior work product of the earlier office, in order to streamline grant. Provided there is no obvious reason that the application contravenes the EPC, then PPH acceleration would seem appropriate.

 

  • I have a patent in another jurisdiction, and want to align some, but not all, of the features of the European application with the granted patent.

 

  • In this situation, we would not want to just accept the allowed claims from the earlier office. As such, PACE acceleration would seem more applicable.

 

  • I have a granted patent in another jurisdiction, but I have already responded to one examination report in Europe.

 

  • A PPH request would be invalid here. PACE acceleration of the examination process could still, however, accelerate the route to grant. The timeframe between examination reports can be substantial under European procedure.

 

  • I have a granted patent in another jurisdiction, but I am not sure whether the claims would be valid in Europe.

 

  • The best thing to do here would be to assess the claims for compliance with the EPC first, potentially aligning the ‘spirit’ of the claims with those as granted overseas, and then just requesting PACE acceleration. This may shorten the examination procedure, given that any deficiencies in the claim set may be addressed first. This may not be possible in a PPH request.

 

Overall, there are scenarios in which a PPH request may be a useful tool to quickly obtain grant of a European patent. However, the more straightforward PACE scheme provides the same benefits of acceleration, without many of the restrictions associated with a PPH request.

 

The important thing is to remember that the application must still meet the requirements of the EPC for a valid patent to be issued, in particular, with regards to inventiveness and added subject-matter.

Can I wait to file a patent application?

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Can I wait to file a patent application?

 

For start-ups that are building their business around an innovative product, preventing more established companies from copying their idea by having a patent granted is essential. However, there are plenty of other essential aspects of a business which need attention when just starting out.

 

Therefore, is it possible for a start-up to defer filing a patent application, to allow funds to be spent on other areas of the business?

 

Why would I not be able to wait?

 

One of the chief requirements of obtaining a patent is “novelty”. Therefore, your idea must be completely new compared to what is already publicly available at the time of filing the patent application.

 

In general (read on to find a notable exception), patent offices do not distinguish between who made the idea available. Therefore, if you wait to file a patent application and start selling or marketing your product beforehand, then you may be prevented from obtaining a patent.

 

Even if you are not intending to publish or market your product just yet, someone else may have come up with a similar idea. Waiting to file your patent application increases the chance of someone else disclosing or filing for a similar idea – preventing you from obtaining a patent to that idea.

 

“Enabling disclosure”

 

To destroy the novelty of your invention, you would need to publish enough information to allow someone to recreate your invention.

 

In the case of a physical product, selling the product would likely destroy your chances of protecting the product itself. However, the method used to make the product may be the clever idea you want to protect.  If this method is not discernible from looking at the product, and if you have kept the method confidential, then you may still be able to protect this, even after launching. Additionally, if you only publish pictures of the exterior of your product (for example for crowdfunding campaigns), and these do not reveal how the product works, then you may still be able to obtain a patent to the workings of the invention.

 

In the case of an app, if the clever way the app works is locked away behind the scenes and is not apparent from the software which is distributed, then it may still be possible to protect this aspect of the app, even after launching.

 

In the above examples, it would be crucial that the method of production and working of the app be kept confidential. Non-disclosure agreements should always be used if such information must be disseminated to potential business partners or developers.

 

The notable exception

 

The United States (among a small number of other countries) provides a 12-month grace period for inventor disclosures. Therefore, if you publish your invention, this publication and any third-party publications going to the same published material won’t work against your US patent application. This is as long as you file for a patent within 12 months of your first publication.

 

However, other key markets (such as the UK, Europe and China) do not have such grace periods, so this strategy would result in a loss of ability to obtain protection in these markets.

 

Design protection

 

Whilst the UK and Europe do not have a grace period for patents, they do have a 12-month grace period for registered designs. Therefore, if you are only interested in protecting the way your product looks in these territories, you can market your product first, and file for a registered design within 12 months.

 

However, this strategy is not without risks as your registered design can be knocked out if a third party independently derives and publishes the same or a similar design before you file your registered design.

 

Additionally, China, among some other countries, do not have such design grace periods.

 

Conclusion

 

As a general rule of thumb, do not wait to protect your intellectual property (IP), whether that is by way of a patent, trademark and/or design. The IP in your business can be one of the most valuable assets within a few years. Stake your claim to it before someone else does.

 

Furthermore, selling or marketing your invention before filing a patent application would usually prevent you from obtaining a patent downstream. However, if the concept of your invention is not discernible from the product you sell or market, it may still be possible to protect it even after launch. But this is risky. Determining whether and where protection can be obtained in these instances can be complex. If you would like advice on this or on any other aspect of intellectual property, please do not hesitate to contact us on 01242 691 801.

 

Camborne Trevithick Day – 27th April 2019

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We are pleased to be supporting Camborne Trevithick Day on 27th April 2019.  This annual celebration commemorates Camborne’s most famous son, prolific inventor Richard Trevithick.  The first commercially useful steam engine was developed in 1712 by Thomas Newcomen, and improved by James Watt and others throughout the 18th century.  By the time Richard Trevithick began his professional career steam was already powering the industrial revolution – but Trevithick made critical improvements to efficiency and demonstrated the first working steam locomotive.  This laid the groundwork for George Stephenson’s famous locomotives and the development of the railway in the UK and around the world.

Full details of the event, including how to get there and where to park, may be found at the organiser’s website http://trevithickday.org.uk/.  Perhaps you will be inspired – as Cornwall’s newest patent attorney firm, we certainly hope that Richard Trevithick is not the last great inventor from Cambourne!

In the meantime, we thought it would be interesting to look at the legal side of Trevithick’s career.

Trevithick seems to have spent rather a lot of time trying to navigate patent law.  Initially, it was someone else’s patents – those of James Watt – which proved to be a thorn in Trevithick’s side.  As long ago as 1624, the law had set a maximum term for patents, but Watt managed to get an Act of Parliament to extend his protection for “A method of lessening the consumption of steam in steam engines” until 1800.  The nub of Watt’s patent was the separate condenser, something which led to improved fuel economy over the old Newcomen engine.

Towards the end of its extended term, it appears that Watt’s patent was being widely ignored in Cornwall, with various mining engineers adding separate condensers to old Newcomen engines.  Watt sued and, in theory at least, eventually won.

The expiry of the Watt patent in 1800, coinciding with Trevithick’s own pioneering use of high-pressure steam, represented an opportunity, and his experience with Watt had no doubt left an impression. There is a story – probably completely unverifiable – that on being served with an injunction Trevithick held Watt’s lawyer upside-down over a mineshaft.  Trevithick evidently did not gracefully accept defeat but had surely learned the power of the patent.  What’s more, the litigation over Watt’s patent lead to the important legal principle that a valid patent could be granted for an improvement to a known machine. Trevithick could turn this to his advantage.

After refining his high-pressure engine, Trevithick naturally sought to obtain his own patent.  In January 1802, with his cousin and business partner Andrew Vivian, Trevithick went to London and asked around for someone who knew how to get one.  This does not seem to have been an easy job and required personal attendance at multiple offices.  Trevithick was a busy man, visiting Merthyr Tydfil and Coalbrookdale in the same year, so it was Vivian who took his place in London and in March 1802 wrote to report that he “must call at the Patent Office for the great knob of wax”.  In those days there was no actual examination of a patent application to check that it was for a new invention, but the Patent Office made up for this in impressive bureaucracy.  Nowadays you get the photocopied signature of a middling civil servant in place of that great knob of wax.

Trevithick also took Watt’s lead when it came to charging for the use of his now patented invention.  Like Watt, Trevithick agreed with mine owners that he would be paid a percentage of the money saved on coal by the use of his modern and efficient high-pressure engines.  Unfortunately, after returning from his tour of the Americas, Trevithick found that his customers had simply stopped paying, variously claiming that they thought the patent had expired, or that it did not cover some variation in the boiler design. Trevithick managed to negotiate with a few, but – unlike Watt this time – did not pursue the matter in Court.

Trevithick nevertheless filed for patents throughout his career, ending up with fourteen to his name.  His first patent, of 1802, was numbered GB2599, in a sequence that starts with GB1 of 1617.  By the time Trevithick had obtained his last patent in the year before his death, the number was at GB6308.  More patents had been filed in Trevithick’s career than in the 200 years previous.  The age of technology had certainly arrived.

Illustration from Trevithick’s 1802 patent specification

How Disclosing Your Invention Can Prevent You From Obtaining a Granted Patent

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Starting a business is an exciting adventure to embark upon. Unfortunately, Intellectual Property (IP) is too often an after-thought and mistakes made early on in the process can be detrimental to obtaining IP rights.

 

Take patents for instance. In order to obtain a granted patent in the UK, at the time of filing a patent application, the invention must be novel (i.e. unknown in the whole world) and inventive (i.e. not obvious).

 

Looking more closely at the novelty requirement in the UK, the Patents Act 1977 states that:

 

“(1) An invention shall be taken to be new if it does not form part of the state of the art”,

 

and defines the state of the art as comprising:

 

“all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way” (see section 2 of the Patents Act 1977).

 

In essence, disclosing your invention publicly could prevent you from obtaining a granted patent because your invention will not be considered to be “new”.

 

So how do I know if I’ve publicly disclosed my invention?

 

You are likely to have disclosed your invention publicly if, before filing a patent application, you have:

  • Talked to investors, business partners, friends, or potential clients about your invention
  • Blogged, vlogged, tweeted, written about or posted images of the invention on a social media platform
  • Got a Kickstarter page in which the invention is disclosed
  • Posted a document about your invention on a website
  • Been on Dragons’ Den
  • Given a talk to an audience or displayed a poster at a conference,
  • Published a book or thesis which is on open shelves in a public library, even if no-one has ever read the book
  • Published an article, an abstract, or a grant proposal
  • Given away or sold samples
  • Shown your invention at an exhibition (with some exceptions)
  • Used the invention in a public place

 

There are, however, caveats to be voiced about the above list.

 

Confidentiality

 

Any disclosure in confidence, for example under a Non-Disclosure Agreement (NDA), will not be considered as a public disclosure. For a free, template Non-Disclosure Agreement, please click here.

 

Please note however, that any IP-related discussion you have with a chartered patent attorney or trademark attorney in the UK, such as those here at Albright IP, will be considered as confidential (i.e. not public), without you needing to sign an NDA first. This is because legal advice privilege applies to chartered patent and trademark attorneys.

 

Website postings

 

With regards to website disclosures, the European Board of Appeal provided the following two-step test to clarify when posting a document on a website constitutes a public disclosure.

 

If, before the filing or priority date of the patent or patent application, a document stored on the World Wide Web and accessible via a specific URL

 

(1) could be found with the help of a public web search engine by using one or more keywords all related to the essence of the content of that document and

 

(2) remained accessible at that URL for a period of time long enough for a member of the public, i.e. someone under no obligation to keep the content of the document secret, to have direct and unambiguous access to the document,

 

then the document was made available to the public […].

 

Therefore, if you post about your invention online, and if your posting remains online long enough and can be found by typing keywords into a public search engine (such as Google®), then the posting can be cited against your own patent application.

 

You should also, therefore, assume that the same approach will be taken by the UK Intellectual Property Office.

 

Emails

 

In a related case, the European Board of Appeal decided that the act of sending an email via the Internet does not constitute publicly disclosing the email’s contents.

 

Keep in mind, however, that the recipient of an email disclosing the invention needs to be under a confidentiality agreement – otherwise, the email contents could be considered as a public disclosure.

 

I think I’ve disclosed my idea publicly. Does that mean I can’t get a patent granted anymore?

 

Not necessarily.

 

To count as public disclosure, the disclosure also needs to be “enabling”. This means that enough detail needs to be disclosed so that someone “skilled in the art” could deduce how the invention works, for example, see Lux Traffic Controls Limited v Pike Signals Limited [1993] RPC 107, 132-135.

 

If your public disclosure is enabling, it may invalidate only part of your patent application. For example, you may have disclosed how the invention works but not how the invention is made. In this case, you may still be able to get a granted patent for the method of manufacture.

 

Where you have publicly disclosed everything about your invention, then patent protection in the UK or in Europe may no longer be an option. However, in some countries outside of the UK and Europe, you might still be able to rely on a grace period to get a patent granted, for example, in the USA. Alternatively, you may still be able to obtain another form of intellectual property in the UK or in Europe such as a registered design, due to the existence of a grace period.

 

Finally, it is worth highlighting that a public disclosure will only be detrimental if it is done before filing a patent application containing all the details disclosed.

 

In summary, avoid disclosing anything about your invention before you file a patent application, and make sure that any disclosure is done in confidence. If you are unsure on what to do, you can always talk to Albright patent attorneys or trademark attorneys for IP-related advice.

 

Victory for ‘Peppa Pig’ – Peppa’s win on Trade Mark Invalidity Claim

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The owners of a hugely popular British animated series, ‘Peppa Pig’, have successfully won their bid to invalidate a Mark, arguably evocative of their well-known ‘Peppa Pig’ character.

 

Peppa Pig first graced our TV screens back in May 2004, and has since become one of the most well-known, and most popular British children’s TV programmes of all time. The rise of ‘Peppa Pig’ has, quite naturally, created a multitude of extremely lucrative commercial opportunities for the owners, Entertainment One and Astley Baker, who are now appearing to be more actively enforcing and policing their Peppa Pig-related IP rights than ever before.

 

One of the most recent cases involving ‘Peppa Pig’ has been the invalidation claim brought against an EU Mark filed for by Xianhao Pan. The invalidity claim perhaps comes as no surprise when one views the Marks in issue side-by-side, as displayed below:

 

Xianhao Pan’s ‘TOBBIA’ Mark The ‘Peppa Pig’ Mark

 

Background

 

In 2013, Xianhao Pan was granted an EUTM for the ‘TOBBIA’ Mark in Class 25, for clothing, footwear and headgear. The Mark is in the colours, pink, red, yellow and blue, and is said to depict a ‘tapir head on a human body’, with the words ‘TOBBIA’ in bold and black text underneath.

 

This was argued to be confusingly similar to the Peppa Pig creators’ earlier black and white mark, registered for the same goods. The earlier Trade Mark depicted the famous cartoon character, Peppa, with the words ‘PEPPA PIG’ underneath, in black and bold text.

 

When the case was first heard by the EUIPO Cancellation Division, rather controversially, they ruled that the two Marks were not confusingly similar, upholding the validity of the ‘TOBBIA’ Mark. On appeal in 2017, a U-Turn decision was made, and the ‘TOBBIA’ Mark was invalidated on the finding that the Marks were visually, phonetically and conceptually similar.

 

The General Court’s Decision

 

Following a round of appeals before the Board of Appeals of the EUIPO, the General Court concluded earlier today, 21 March 2019, the invalidity of the ‘TOBBIA’ Mark. Despite noting the differences in terms of the colours of the Marks in issue, it ruled that these differences, considered overall, did not outweigh the similarities.

 

In the appeal to the General Court, the owner of the ‘TOBBIA’ Mark argued that the Board of Appeals had failed to state the reasons for going against the first decision by the Cancellation division, but the General Court was quick to confirm that it was sufficient for the Board of Appeals to only state the reasons on which its own decision is based, and that an obligation did not extend towards identifying the incorrect aspects of the Cancellation Division’s decision.

 

Undoubtedly in agreement with the preceding Board of Appeals’ decisions, it was confirmed that ‘the average consumer normally perceives a mark as a whole’, without engaging in lengthy analysis as to the various details, and therefore, it was right to find that the Marks were visually similar overall.

 

Most interestingly, the General Court also remarked approval of the Board of Appeals’ previous assessment, which found a certain correlation between the word ‘tobbia’ and ‘peppa’, in the sense that both words contain the reiteration of a strong consonant, namely, the ‘B’ in ‘tobbia’ and the ‘P’ in ‘peppa’.  Although not verbally similar therefore, it seems that there was a consensus that the structural correlation and extremely similar graphical elements in the Marks rendered an impression of similarity in the minds of the consumer, who might consequentially come to view the Marks, and also the respective goods, as being related in some way.

 

Despite assertions from the owner of the Mark that the ‘TOBBIA’ Mark depicted a tapir, rather than a pig, the court considered it unlikely that the public would at all associate the Mark with a tapir, consequently finding there to be conceptual identity in the Marks, in the sense that they both represented a pig.

 

Consequently, when considering the overall similarities from a visual, phonetic and conceptual perspective, the invalidity decision was upheld.

 

Conclusion

 

Whilst today’s decision may seem an overly generous stretch in favour of the creators of Peppa Pig, at least, when it comes to the court’s apparent approval of the ‘correlation’ between the ‘strong consonant’ elements of the Marks, the decision of the court does not appear all that surprising. A side-to-side comparison certainly highlights the ‘TOBBIA’ Mark’s eerie resemblance, highly reminiscent of the famous pig character. Given ‘Peppa Pig’s reputation, there is certainly a likelihood that consumers might come to perceive the Marks, and the respective goods, as being somehow associated and/or connected to the Peppa Pig franchise. Like it or not, what would have undoubtedly been interesting in the court’s decision would have been a more thorough discussion, or at least, a reference to the previous grounds raised by the owner of the ‘Peppa Pig’ Mark, specifically, the conflicts with the earlier copyright.

 

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