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Intellectual Property Enterprise Court expands its small claims track outside London

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Bristol Civil Justice Centre – photo depositphotos / jaceksphotos

In the new IPEC guide issued last week, it was rather quietly announced that from October 2019 District Judges will be available in Birmingham, Bristol, Cardiff, Leeds, Manchester and Newcastle to hear intellectual property small claims. This will be welcome news for businesses and individuals in the regions who will now have easier access to the court system to resolve certain small-scale IP disputes.

Since it was set up in 2012, it is difficult to present the history of the IPEC small claims track as anything but a resounding success.  The value of an individual small claim is low (at least, relatively low) but the importance of being able to effectively enforce IP rights at low cost is invaluable in certain industries. Professional photographers in particular have been able to use the system to obtain good compensation for infringements that have occurred, and no doubt deter a great many infringements that as a result have not occurred.

At the same time, small business and individual defendants faced with certain spurious or unjustified allegations that they have infringed intellectual property rights have been able to have their side of the story heard, without the fear that the legal costs involved give them no option but to “settle and pay up”.

An IPEC small claim will typically be dealt with by directions being given on a judge’s review of the paper file, and a final hearing being allocated with a time estimate of one day. In the vast majority of cases it will be necessary for the Claimant to attend the final hearing themselves as a witness, whether or not they choose to be represented by a lawyer. The availability of the “Business and Property Court centres out of London” – the new and rather more descriptive name for what you may still see called the “Chancery District Registries” – is therefore a significant improvement in the accessibility of the Court to litigants far from London.

For “multi-track” cases, those which are too high-value or too complex for the small claims procedure, the IPEC guide has stated for many years that the judges are able and willing to sit outside of London.  Perhaps litigants and their lawyers were afraid to ask, because the first such trial outside London took place in Birmingham in October 2018.  HHJ Melissa Clarke, the judge in the case, commented “I do not know why it has taken so long”.

From time-to-time we have seen intellectual property cases issued in the County Court via the “money claim online” procedure.  The rules make it quite clear that this is not allowed (63.13, Civil Procedure Rules if you want to look it up).  Where a claim is wrongly issued by this route, it almost always serves to increase the time and cost of resolving the dispute.  Given the availability of IPEC small claims outside London, there is no excuse now.  An intellectual property claim must be issued in the correct court.

We look forward to the continued success of the Intellectual Property Enterprise Court and expect that this latest development will further assist those who rely on intellectual property, and a reliable and accessible court system to enforce it, for the success of their own businesses and livelihoods.

Carry On…Using Your Trade Mark!

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Branding Trade Mark

 

The “use it or lose it” principle with regards to trade mark registrations applies in numerous jurisdictions around the world. However, as highlighted in a recent decision of the UKIPO involving three Trade Marks relating to the British “Carry On” film series, it may not be as straightforward as one might think. For instance, how easy is it to prove valid use of a Trade Mark where that Mark is used under a licence, and in conjunction with another Mark?

 

This most recent “Carry On” caper begins in April 2018, whereby Brian Baker applied for revocation of three UK Trade Marks for “Carry On”, on the basis of non-use. ITV Studios Limited, proprietor of the “Carry On” Marks, was tasked with proving use of their Marks. The “Carry On” Marks were the subject of numerous internal and external licence agreements. After evaluating the evidence of use submitted by the proprietor, the Hearing Officer found in favour of Mr Baker. Two of the three Marks in question were invalidated in-part, with the remaining Mark being invalidated entirely.

 

On the face of it, you could be forgiven for thinking that proving actual use of a Trade Mark associated with such a widely known and popular film series would be easy to demonstrate. However, throughout the decision, reference is made to the inadequacy and insufficiency of the evidence put forward by the proprietor, with questions being raised as to the function of the “Carry On” Marks. For example, were they merely titular in nature? Or did they indeed indicate the origin of the goods and services in question? Further to this, the Hearing Officer was not satisfied with the proprietor’s evidence in displaying that their Mark indicated a single trade source. That is, on the end products, the Marks were used alongside a second mark, namely another Mark belonging to the proprietor, the ‘ITV Studios Logo’. This is despite the advertisements mentioning the licence arrangements (albeit in small print). The proprietor’s use of their Marks alongside other marks would not, in itself, have precluded the “Carry On” Marks from demonstrating valid use; however, by using their Mark alongside another Mark, the burden of proof in displaying valid use was increased. In this case, DVD sales of £6 million spanning 11 years, was not enough to show valid use of the “Carry On” Mark, whilst it was being used alongside the ITV Studios logo.

 

The difficulties encountered in this case appear to be more related to the proprietor’s poor accumulation and organisation of their evidence, rather than to the issue of multiple Marks appearing on the final product. It goes without saying that each case is decided on its own facts, but this decision does offer food for thought on the levels of use required, when a Mark is used alongside a second, or possibly multiple, Marks. This should serve as a wake-up call for rights holders, in-particular to those that own, and use, multiple Marks that are licensed to third parties or licensed within their own organisation. What can be taken away in this regard is that particular attention should be paid to the look of the packaging, for example: where on the packaging the Mark is located, and the size of the Mark in relation to any other Marks featured.

 

The decision of the Hearing Officer is now open to appeal, whether the proprietor will be able to sway the UKIPO during a second round of arguments remains to be seen. Regardless, the importance of documenting thorough, and concise, evidence of valid use throughout the lifecycle of the Trade Mark should not be underestimated.

 

Should you be interested in seeking advice on the use of your Trade Mark, please contact us, and our highly experienced team of Trade Mark Attorneys here at Albright IP, will be pleased to advise you further.

 

Eviction Day for China’s Trade Mark Squatting

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China’s Trade Mark Squatters

 

Adjust your Yuletide calendars to 1st November because Christmas is coming early this year.

 

On the 23rd April 2019, China’s legislators passed significant amendments to their Trade Mark legislation to combat the scourge of bad-faith Applications, more commonly known as ‘Trade Mark squatting’.

 

Many brand owners will be familiar with the term, ‘Trade Mark Squatting’ and understand it to be the act of pre-emptively registering a Trade Mark in an available territory, before the ‘rightful’ owner secures registration. In the most extreme circumstances, Trade Mark squatting can undermine a brand to the extent that territorial expansion is impossible, and the only option is to migrate to an alternative brand, with all the costs and loss of reputation that would be associated with that.

 

Most infamously associated with this problem is, China. Unfortunately, it is common for brand owners entering the Chinese market to find their Trade Marks have already been filed or registered by an unrelated third party. Sometimes the illegitimate filing will be lodged within hours of the genuine owner publicising their impending launch, or at the stage when commercial discussions are being held with local distributors. As the official fees are low, squatters are not deterred from filing hundreds of Trade Mark applications, in the hope of receiving a ransom from at least some of the aggrieved brand owners.

 

Moreover, nor are they deterred by the deep pockets or celebrity of their victims. For example, the following are brand names that have been filed/registered by parties unrelated to the genuine owners: Bentley, Bosch, Hugo Boss, Macy’s, Michael Jordan and Viagra. To name but a few!

 

Whilst there are options available for brand owners to wrestle their Marks free from squatters, they are often onerous and costly. So much so, that it is sometimes easier to give in to the squatter’s demands, or rebrand entirely.

 

HOWEVER, all is not lost. As a welcome first step in combatting this unfair practice, and to restore confidence in their system, China intends to implement new legislation that will bring about the rejection of any new Trade Mark applications filed without a bona fide intention to use. Essentially, new applications can be refused during examination, if the Applicant does not demonstrate sufficient proof that they intend to exploit their Mark in commerce. The expected result is a decrease in the amount of Trade Marks being ‘stolen’ in China.

 

How this will work in practice remains to be seen. At present, it is unclear what body of evidence will be required to prove an intention to use, and whether this will be adequately evaluated. However, combined with other proposed amendments to the Chinese practice, victims of Trade Mark squatters will have further opportunities to oppose or invalidate these bad-faith Registrations. For example, if a malicious Trade Mark application is not stopped during the examination phase, there is still hope it can be terminated during Opposition or post-Registration. Moreover, coupled with new penalties against bad-faith registrations, and very hefty fines for those found to have relied upon a bad-faith registration in litigation; the system underlying Trade Mark registration in China could soon be a much friendlier environment for foreign Applicants.

 

What this Means for Your Brand

 

Whether these new legislative changes are effective or not, companies interested in expanding their brand portfolio to China should always endeavour to obtain a Trade Mark registration as soon as possible. It will remain a ‘first come, first served’ country, i.e., securing the earliest possible filing date will continue to matter.

 

Whilst we remain cautiously optimistic that the new practice will provide recourse against Trade Mark squatters, it has been reported that Chinese Trade Mark examiners have on average only 10 minutes of inspection time per Application, and in 2018 over 7 million Applications were filed in China. With such a small window to reject bad-faith Applications, registering your brand in China as soon as possible is, and will likely always be, the best practice for protecting your brand. Get there first, and deny others the opportunity of beating you to it!

 

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.

 

Albright IP Brexit Update: May 2019

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Brexit

 

At the time of writing, the UK Parliament is continuing to debate the terms upon which the United Kingdom and Northern Ireland will leave the European Union. In light of this, the deadline for the draft withdrawal Agreement to be signed, has been extended to 31 October 2019. Beyond this, providing ‘a deal’ is signed, a transition period will run up until end 2020.

 

Regardless of whether a modified version of the Withdrawal Agreement is negotiated, it is unlikely that the current draft proposals/terms relating to IP rights will change.

 

Trade Marks & Designs

 

Here are some key points to consider in anticipation of the post-Brexit proposals: 

 

Filing

  • All granted EUTM/RCD Registrations will be cloned at the effective date of Brexit; with the original filing/priority dates being preserved.
  • Any EUTM/RCD Applications pending at the effective date of Brexit will not be cloned; these will retain the original filing date/priority date, provided they are re-filed at the UKIPO within nine months of the effective date of Brexit. Thereafter, they will undergo fresh examination.
  • To ensure you will have rights in the EU and the UK after Brexit, file any new Applications in the EU and the UK going forwards from this point.
  • When filing IRs designating the EU; a separate UK designation should be added.

 

Renewals

  • Any EU renewals falling due prior to Brexit will encompass the UK.
  • Any EU renewals falling due after Brexit will not avoid payment of the renewal fee for a UK clone; this will require a separate renewal.

 

Use

  • For the future, use in the UK will not validate an EU Registration and vice versa. This will become relevant five years after grant, if vulnerability to cancellation for non-use is to be avoided.

 

Pending Proceedings

  • Closure of pending proceedings prior to the effective date of Brexit is to be recommended. As such, Cooling Off periods in pending EUIPO Oppositions should be brought to an end, and ongoing proceedings expediated.
  • Any ongoing EU Opposition and Invalidation proceedings based solely on a UK right, may be thrown out following Brexit.

 

Licenses and Security Interests

  • Licences or security interests recorded against an EUTM/RCD should also be recorded against its clone when this is created.

 

Contracts and Agreements

  • The terms of any pre-Brexit agreements should be reviewed, to ensure compliance following Brexit – opting-out or surrendering a clone might be necessary, as the existence of a UK Registration might be contravening earlier agreements.
  • Any clauses related to jurisdiction, governing law, and territory in existing contracts should be reviewed and amended to include the UK, as well as the EU, where appropriate.
  • Distribution agreements should also be reviewed in anticipation of changes to the exhaustion regime.

 

Patents

 

There will be no fundamental changes insofar as patents are concerned. Since the European Patent Office is not an EU Institution, and since the European Patent Convention is unrelated to EU law, practice will continue as usual.

 

Summary

 

As Brexit approaches, IP owners should be taking pro-active steps to ensure that their rights are well-managed and adequately protected. Whilst Patent owners and Applicants remain largely unaffected by the unfolding Brexit scenario, owners and Applicants of Trade Marks and Registered Designs should actively safeguard their interests, by paying attention to the action points outlined above.

 

Whatever happens in the lead-up to and indeed after Brexit, Albright IP will continue to offer expert advice to our clients, and we will be moving forward and adapting our practice, to ensure that the most appropriate, most comprehensive and cost-efficient IP protection is put in place in the UK and the European Union.

Cadbury’s Purple Trade Marks

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Cadbury Trade Marks

Cadbury has faced yet another blow in their long-term battle in winning Trade Mark rights to their signature purple colour, used on its chocolate bars since the 1900s.

 

Last week (12 April 2019), the UK Intellectual Property Office delivered a mixed judgement following the Oppositions brought by Nestlé against three of Cadbury’s Trade Marks. The three Trade Marks in question were all for the colour purple, in shade Pantone 2685C, and the Marks all designated goods such as chocolate and drinking chocolate in Class 30.

 

The Marks in issue were the following:

  • UKTM No. 3019361 – Rejected
  • UKTM No. 3025822 – Rejected
  • UKTM No. 3019362 – Accepted

 

Pantone 2685C, as filed in the three Applications.

 

 1.) UKTM No. 3019361

 

This Application was accompanied with the following description:

 

“the colour purple (Pantone 2685C), as shown on the form of the application, applied to the packaging of the goods”

 

In its judgement, the IPO agreed with Nestlé’s arguments that the above description created substantial ambiguity, stating that it was potentially wide enough to cover the colour purple applied to packaging, ‘where other colours could also be present’, and that such colours had not been described or at all displayed in the Application. For this reason, the Mark was rejected.

 

2.) UKTM No. 3025822

 

This Application had the following description:

 

the colour purple (Pantone 2685C), shown on the form of application

 

The IPO considered this representation of this Mark to be arguably even more imprecise, as Cadbury did not explain how the colour sign was to be used at all. Whether the Mark was to be used on packaging, advertisement materials, or the products themselves, was undefined and indeterminate. The ambiguity was also said to have the ‘potential for the mark to cover at least two different signs’, i.e. purple chocolate, as well as purple packaging for the chocolate products. This Mark was therefore also rejected.

 

3.) UKTM No. 3019362

 

This Application was filed with the following description:

 

The colour purple (Pantone 2685C), as shown on the form of the application, applied to the whole visible surface of the packaging of the goods

 

This description was thought to be comparatively more precise, and sufficient in defining the scope of Application. Nestlé had argued that the purple colour would appear darker, depending on the medium of display, and also, that the description was ambiguous because the Mark would look different, depending on the shape of the packaging of the goods. This was rejected by the IPO. Instead, the IPO confirmed that the use of an internationally recognised colour code, which is both precise and durable, is wholly sufficient in satisfying the Trade Mark criteria of being ‘clear and precise’, by identifying a specific colour. The description filed was also held to be equally ‘clear and precise’.

 

Summary

 

The UKIPO decision adds to the recent defeat of Cadbury in the Court of Appeals in December last year, where the court dismissed Cadbury’s efforts to alter its purple Trade Mark.

 

In that case, Cadbury was seeking to amend the Registration of one of its earliest Trade Marks for their signature colour by shortening/narrowing its description. The amendment was pursued as a response to the outcome of another Opposition action, again, brought against them by their competitor, Nestlé. In that particular Opposition, the court rejected one of the purple Trade Marks owned by Cadbury, on grounds that the description filed was insufficiently precise.

 

Combined, the decision of December and the more recent decision last week has further opened opportunities for rivals to start using the signature colour for their own chocolates, or for knock-off brands to pass off their products as Cadbury’s. Either way, the colour protection wars have now clearly become a reality in the context of Trade Marks, not least applicable in the chocolate manufacturing industry. The fashion industry, for example, has recently seen a battle between Yves Saint Laurent and Christian Louboutin over Louboutin’s Trade Mark red sole, and we have also seen a battle across sectors, for the colour orange, between mobile network operator Orange, and airline company easyJet.

 

Although Cadbury still has existing valid Trade Marks in its signature colour, the message to take away from the recent decisions is clear – insofar as colour Marks are concerned, Applicant’s should always seek to file narrow descriptions, with a precise and defined scope, and irrespective of whether an Application relates to a single colour, or a colour combination.  Broadly speaking, where colour Marks are concerned, it seems wise to steer clear of any language which might leave room for flexibility, interpretation and/or ambiguity, and instead, opt for detailed language, which serves to systematically describe the exact distribution of colour/s, in relation to the medium where it is intended to be used.

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

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.

 

Mitigating the Effects of Prior Unpublished Patent Applications

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Prior art searching is one of the most difficult things to get right in the IP sector, since any search is open-ended. How do you know whether there is a knockout document which discloses something identical to your invention that has just not been found, or whether it just does not exist?

 

This issue is compounded for patents by the publication cycle. Almost all patent applications are secret for the first eighteen months of their lives, and therefore have the potential to act against later-filed applications.

 

The prospective patentee is therefore presented with an unpleasant uncertainty – even the most thorough search cannot guarantee validity if unknown non-public prior art is available. Given that preparing and filing a patent application can involve a significant outlay of initial resources for start-ups, this can be very off-putting.

 

The British Process

 

It is worth, at this stage, outlining just what happens to a British patent application once filed.

 

From the date on which the application is filed, the claimed invention is ‘patent pending’. However, only a few morsels of information are visible on the UK Intellectual Property Office Register.

 

Provided the interim steps are taken, in particular, submitting formalised drawings suitable for publication, then the application will publish in full eighteen months from the date of filing or priority, which allows third parties to inspect the content of the application.

 

Critically, though, the first person (or their successor) to apply for a patent to an invention is the only person to whom the patent can be granted. This is known as the ‘first-to-file’ system, rather than ‘first-to-invent’.

 

Double Patenting

 

This secrecy creates an inherent problem. A patent is a monopoly right, but since the applications are secret when filed, it is feasible that lots of people could independently arrive upon the same idea, and want to patent it before any of the pending applications become public.

 

To offset this issue, prior-filed or prior-priority but unpublished patent applications are deemed relevant to the patentability of later-filed applications, for the purposes of novelty (i.e. uniqueness) only, provided that the application was filed in the same jurisdiction. Such a document cannot be cited against the inventiveness of a later application.

 

This provision in the law is specifically designed to prevent ‘double patenting’, that is, two patents being granted to the same invention.

 

This provides some comfort to prospective patentees. An unpublished document can only be used to attack the validity of any later-filed patent application in very specific circumstances. It would be unjust for the unpublished document to be deemed relevant to inventiveness (i.e. obviousness), when the skilled person could not rely on that information at the time of applying for their own patent.

 

Hunting for information

 

Whilst full patent applications are not available until the date of publication, there is some information available regarding patent applications which have been filed.

 

Every Wednesday, the UK Patents Journal is published, which has a list of patent applications which have been filed recently. The visible information includes the date of filing, the name of the applicant, the title of the invention, and the application number.

 

Whilst this is a very minimal amount of information, it does allow some level of monitoring to be undertaken to see whether competitors are filing patent applications themselves, and to what type of technology. It also allows you to keep track of the status of the application over time where applicable.

 

Strategies for minimising surprises

 

If you are considering filing a patent application, you may want to take the following steps to avoid unpleasant surprises downstream:

  1. Ensure that full patent searches are conducted prior to filing a patent application so that relevant prior art documents can be uncovered in advance. See our earlier articles on how best to go about conducting free patent searches.
  2. Keep an eye out for competitors’ product launches, and monitor the patent journal for applications which have been filed shortly in advance of the product launch. This may give you an idea of the sort of things that they are looking to protect, and you then may be able to foresee potential difficulties.
  3. File early! As soon as you are ready, and have the necessary technical information to warrant filing a patent application, you should do so. Delaying increases the risk of third parties filing their own applications before you.
  4. Ensure that you have thought through optional embodiments of your invention, or other clever features which may be important. The more technical information that is provided about these features from the outset, the greater the likelihood that you will have options for overcoming surprises during the examination procedure of the application.

 

As patent attorneys, we try and provide you with a flexible application which can withstand the rigours of examination, so that if close prior art documents are found, you have options for still getting some form of patent granted, so that initial risk does not become a lingering concern as you grow your business.

 

Trade Marks in a Post-Brexit World: The Implications of ‘No Deal’

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As the countdown towards Brexit draws nearer, we appear to be edging closer than ever to a “no deal” situation, particularly given the recent turn of political events. From an IP perspective, this will no doubt represent a period of substantial uncertainty, and it is rather difficult to predict how well businesses will be able to navigate around these unchartered territories.

Those in the IP fields can, however, be somewhat reassured that the government, amongst all the crisis, have taken steps to put IP issues on their agenda when preparing for the eventuality of a post-Brexit world. In their notice, published 24th September 2018, the government offered some guidance on the approach to be taken in a “no deal” scenario, specifically with Trade Marks (and Designs) in mind. The technical notice is aimed at preparing the road in such a way as to minimise disruption, ensuring a ‘smooth and orderly exit’.

Since then, a draft instrument has been written up to address, at least in part, the implementation of Trade Marks following the UK’s departure from the EU – see The Trade Marks Exit Regulations 2018 (the “TM Exit Regulations”).

 

The TM Exit Regulations

If a deal is done with the EU, the TM Exit Regulations will come into force on “exit day”, which, for all Trade Mark intents and purposes, will be at the end of the transition period (currently 31 December 2020).

If there is no deal on exit day (currently 29 March 23.00 GMT), the effect of the Regulations is still likely to be applicable – so the only real conceivable practical difference between a deal and no deal departure, will be in timing.

The draft TM Exit Regulations includes a new Schedule 2A, which will be inserted into the UK Trade Marks Act 1994.

In short, the TM Exit Regulations provides for a cloning-based Trade Mark regime. Existing EUTMs will be cloned into UKTMs, provided that they have been registered prior to exit day (29 March 2019). These UKTMs will be given a new title, “comparable Trade Mark (EU)” (hereinafter “clones”).  Clones will share the filing (including priority and seniority) and registration dates of their parent EUTM, and there is to be no fee or opt-in procedure for this process to happen.

Clones should, according to the Regulation, appear automatically on the UK Trade Marks Register ‘as soon as reasonably practicable after exit day’. The government’s notice has confirmed that a notification will be made to EUTM owners that a UK clone has been created. Given the multiplicity of EUTMs currently existing on the UKIPO database, and the likely administrative challenge of implementing this wholly novel clone-based database, it is foreseeable that there may be a significant lapse of time before clones start showing up on the IPO Register, and before owners are actually notified of their new clones.

 

Opting-Out

EUTM owners may choose to opt-out of cloning at any time on or after exit day by serving notice on the UKIPO. However, opting out is not possible in the following circumstances:

  • If the clone has been used in the UK;
  • If the clone has been licensed or involved in certain transactions;
  • If proceedings relying upon the clone have commenced.

With this in mind, it is questionable whether European Trade Mark owners with business in the UK can choose to opt-out at all, given that, in most cases, EUTMs will be used extensively in the UK during the course of business on the day before exit day, and will likely continue post-Brexit, upon which a clone will have automatically been made. Therefore, unless a business completely ceases to operate its business activities following exit day, it is difficult to envisage how a situation might arise, whereby an owner would not be “using” a clone in the UK, allowing them to utilise the “opt-out” provision.

 

Renewals

Renewals will still follow existing UKTM renewal procedures following Brexit, but with important added protection anticipating the potential problem of owners forgetting about their clones. The Regulation provides that any owner with a clone renewable in the first 6 months post-Brexit will receive written notification from the UKIPO, notifying them of the upcoming expiration. From the date of receipt of this notice, Trade Mark owners will have 6 months to renew their clones.

Crucially, renewal fees will have to be paid to both the EUIPO and UKIPO for all Marks with a renewal deadline post 29 March 2019.

 

Proof of Use

There are some important technicalities to bear in mind when it comes to proving use of a Trade Mark post-Brexit. When proving the use of a clone within a proof of use period occurring wholly before exit day, the use of a parent EUTM in the EU, which will include use in the UK, will count towards establishing proof of use. However, where the proof of use period of a clone is split partially before and after exit day, the use of a parent EUTM can only count for the part of the period before exit day. Any evidence of use during the part of the period after exit day must be use occurring specifically within the UK.

 

Reputation

Similar provisions are mirrored with respect to proof of reputation. Where there is requirement to prove reputation at a point before exit day, the reputation of a parent EUTM in the EU prior to exit day will count, including any relevant reputation in the UK existing before exit day.

 

Co-existence Agreements, Licenses etc.

Post-Brexit, any co-existence agreements, licences and any other relevant transactions which involve EUTMs are deemed to cover their corresponding clones unless there is explicit evidence that such documents were not intended to have effect in the UK.

 

Pending Proceedings and Injunctions in the UK

Any actions pending before the UK courts concerning EUTMs will continue after exit day, but with the EUTM being swapped out for their corresponding clone. Similarly, any existing injunctions prohibiting acts in the UK on the basis of an EUTM will continue, with a clone being swapped in. From a practical perspective, this process of swapping in clones may potentially significantly diminish the scope of proceedings and injunctions between the parties, so it seems that pan-European level injunctions will no longer be available from the UK courts following Brexit, at least insofar as far a ‘no deal’ departure is concerned.

 

Pending EUTMs

One of the most important things to note in the new Regulations is that any EUTM Application pending as of exit day will not be cloned.

Instead, the Applicant will have 9 months from exit day to file a new UKTM Application, during which they will be entitled to claim the same filing date (or priority date) of the previously pending EUTM Application.

Given that most EUTMs generally taking at least 4 months from the date of filing to progress to Registration, 3 months of that being the mandatory Opposition period, the usual lag before the EUIPO marks an Application as “Registered” may well mean that EUTMs filed in 2019, and potentially some filed in December 2018, will not be automatically cloned, and will need to be re-filed within 9 months.

Importantly, Trade Mark Applicant’s with pending Applications should therefore note that they will not be notified of the need to refile, and will be required to pay all official fees to make a new filing.

 

Outstanding Issues Unaddressed by The TM Exit Regulations

Generally speaking, the TM Exit Regulations go some way in addressing the problems which may arise following the UK’s departure from the European Union. Nonetheless, despite a level of detail, some outstanding issues remain largely unaddressed. A few of these issues are summarised below:

  1. The UK government has confirmed the continued protection of International Trade Marks in the UK following a ‘no deal’ departure scenario. International Trade Marks designating the EU will be protected as new UK Registrations, rather than International Registrations designating the UK. It remains unclear whether this is to happen automatically, as with cloning, or, in the alternative, whether Trade Mark owners will have to take proactive steps in order to safeguard continued protection.
  2. Based on current rules on correspondence addresses, anyone applying for a UK trade Mark must supply an address for service in the European Economic Area (EEA). The Regulations does not adopt any form of “transitional” approach to representation, which would have ensured a level of certainty if the UK were to leave the EEA too. Considering that this may well become the reality following a ‘no deal’ departure, the lack of transitional measures addressing the loss of rights of representation on part of UK Trade Mark Practitioners might have some significant ramifications.

 

Conclusion

Overall, the TM Exit Regulations, address a large area of the upcoming issues which may arise in a post-Brexit, ‘no deal’ world. As we get nearer to Brexit day, things could, no doubt change significantly overnight. Judging by what the UK government has prepared thus far, the current ‘business as usual’ theme is entirely focused on a visible attempt to make everything as easy as possible for Trade Mark owners. Whilst most of what is being suggested appears sensible, some larger issues do remain unresolved at the expense Trade Mark practitioners.

With many of the important details still to be confirmed, and with Brexit still being “up in the air” in terms of securing a deal or “no deal”, we may find ourselves in a situation where solutions and/or any significant changes are only announced at the very last moment. With this in mind, Trade Mark owners and practitioners should be minded to closely follow and monitor the unfolding political and legal developments, as these will, no doubt, have a huge impact on the implementation of Trade Mark law and practice in the post-Brexit world.

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