Albright IP Limited

Protecting your innovation

+44 (0)1242 691 801

Speak to a UK and European Patent and Trade Mark Attorney

Company Names v Trademark

by

Versus

 

Many business owners are unaware of the importance of registering their Trade Marks, even though this may become one of their most valuable assets.

This can be because many wrongly assume that once they have registered their name at Companies House, or have secured a domain, they have unrestricted rights to the name in conjunction with all aspects of their business.

Therefore, it is crucial for any business to understand the key differences between a registered company name and a registered Trade Mark.

(This article was first published in 2013, and was updated again April 2021) 

Company name

A company name identifies a legal entity.

By incorporating a company at Companies House, the owner of the company will only be preventing other businesses from registering an identical or very closely similar company name.

Crucially, incorporation of a company does not prevent other people from selling goods or providing services under an identical or a similar name.

Generally speaking, when it comes a Company Name, small differences may be sufficient to delineate between different parties, and minimise potential for conflict/issue. In the large majority of cases, a Company Name would have to be essentially identical to an existing registered Company Name, in order to be actionable.

Registered Trademark

A registered Trade Mark is entirely different from a company name.

A Trade Mark is a distinguishable Mark, which identifies goods or services of a particular source, from those of others. A Trade Mark can take different forms, for example, a business name, a product name, a logo or the name of a service.

A Trade Mark registration grants you (the proprietor or owner) exclusive rights to use the Trade Mark in relation to the goods and/or services in respect of which it is registered, for an indefinite period of time (provided renewal dates are met and the Trade Mark put to genuine use).

A registered Trade mark can deter other parties from misrepresenting or copying a brand identity, and gives enforceable to stop others from using an identical or confusingly similar Mark in relation to the registered goods or services, unless they have been given express permission.

A Trade Mark registration can be a hugely valuable asset to a business, helping to protect investment and reputation.

  • REMEMBER: Before a new company is formed or trading commenced, it is important that searches are made on the company, domain, and Trade Mark registers.

If a company registers a company name or a domain name which is identical or similar to a registered Trade mark and provides similar goods or services, the owner of the registered Trade mark may be entitled to bring an action for Trade mark infringement, even if the company has incorporated its name, or secured the domain, before the filing date of the registered Trade mark.

In many instances, companies opt to delay seeking Trade mark protection until they have been trading for a few years. This is a critical error.

Delaying the protection of your brand name can mean that, despite having spent significant time and money on branding and marketing, another company may have pre-empted you in securing a registration for an identical or closely similar Trade Mark. It is a first-come-first-served system. The competitor can thus block you, and in some instances you may have to change your brand name/company name.

Furthermore, the fact that registration will not be available to you, will diminish the value of the brand as an asset to your business, and make it more challenging and costly to defend/enforce your rights. In some cases, as mentioned above, it may also involve rebranding.

It is therefore of the upmost importance that a Trade Mark is registered as soon as possible within the lifetime of your brand/company. Do not delay.

If you are starting out, or expanding, think of ‘DoCiT’ as a helpful acronym: Domain, Company, Trade Mark; they each require separate protection.

The protection of any Trade Mark can be complex and multi-faceted. If you would like further information or advice, please contact the highly experienced Trade Marks team at Albright IP via email, by telephone: +44 (0) 1242 691 801, or using the form below and we will be happy to advise and guide you. 

 

ASK AN EXPERT

reCAPTCHA

Can a Machine Really Invent?

by

AI

 

As IP attorneys we have certainly seen a large increase in AI inventions over the past few years. It comes as no surprise then, that the UK Government wants to develop intellectual property law and policy to ensure that AI technology is supported and protected in the right way.

 

A public consultation has been launched and anyone can submit their views on the subject before the deadline of 11:45pm on 30th November 2020.

 

The consultation is wide-ranging, with questions on topics spanning from current practical problems (or not) with protecting AI inventions, to the seemingly less commercially-focused issue of “Is there a moral case for recognising AI as an inventor?”.

 

The scope of the consultation also covers designs, trade marks, copyright and trade secrets. Some of the questions are about practical problems in the here and now, some of them rather more in the crystal ball arena.

 

The UKIPO recognise that “there is no single agreed definition of artificial intelligence”, but the Government has chosen to use for these purposes the definition:

 

“technologies with the ability to perform tasks that would otherwise require human intelligence, such as visual perception, speech recognition, and language translation.”

 

That definition is probably not a bad one in terms of the AI technologies which are commercially important today. But although the introduction to the consultation says that impact of concepts such as AI superintelligence or an AI as a legal entity are not to be considered, some of the more future-gazing questions seem to assume the possibility of technology beyond the definition, which either does not yet exist at all or currently exists only as interesting proof-of-concept work.

 

Artificial Inventors

 

One area being covered is the possibility that an AI system may be able to invent.

 

In a series of patent applications Dr. Stephen Thaler and his company Imagination Engines have argued that they have a machine which does exactly that, and accordingly the machine “DABUS” was designated as an inventor.

 

Both the UK and European Patent Offices found that current law simply does not allow a machine to be named as inventor – the named inventor must be human. But in many ways that is a legal technicality – the wider question as to whether or not a machine can in fact “invent” was not really addressed in the DABUS cases. Is there, or will there ever be, “technology with the ability to perform tasks that would otherwise require human intelligence, such as inventing an invention”? Some commentators have questioned whether the alleged inventions in the DABUS applications were truly invented by the AI DABUS in the sense that the AI has devised the invention as opposed to being use as a tool to assist a human in devising the invention. So, the UKIPO is asking “can current AI systems devise inventions?”. If you work in the field, tell them what you think!

 

A more practical and immediate question is “does current law or practice cause problems for the grant of patents for AI inventions in the UK?”. The exclusion of patent protection for “computer programs as such” in UK and European law certainly does crop up in practice when prosecuting “AI inventions”.

 

My take is that the existing case law gives the UKIPO scope to grant patents for most new and non-obvious inventions which fall within the Government’s definition of AI. But the UKIPO seem to have unfortunately established a practice based on an interpretation of the case law which is not favourable to some inventions.

 

AI technology is, accepting the Government’s definition, technology which has the ability to perform tasks that would otherwise require human intelligence. This might be put as “an AI invention is an invention which achieves something which humans might be already able to do, but machines have thus far found very difficult”. Giving machines new competencies is in my mind the epitome of technological innovation.

 

But is it intelligent?

 

It is worth observing that bound up in this definition of AI is a certain expectation that the technology is novel and non-obvious. Something that would “otherwise require human intelligence” so requires because there is no machine yet that can do it and it is not obvious how to make one, even though the underlying task may be easy for a human child to complete. Thus, many of the rule-based expert systems which represented the state of the art of artificial intelligence in the 1980s might not be honoured with the “AI” moniker today.

 

The question as to patentability, both according to UK and EPO case law, boils down more or less to whether a true technical contribution has been made to a field of technology. The field of AI, that is the endeavour of trying to make computers do things that so far computers have not been able to do, is in my mind clearly a field of technology and a technological endeavour. If a technical advance has truly been made, then it should be patentable under existing law.

 

Unfortunately, the UKIPO and to some extent the EPO can sometimes focus more on the field in which the technology is applied than on the field in which the technological advance is made.

 

For example, the UKIPO has held that a natural language processing invention is patentable when tied to “speech processing” (i.e. audio) but not otherwise (when processing text)[1]. This is despite the real technical contribution apparently being in processing any computer-readable natural language, the conversion to or from audio being a matter of existing technology. This seems to me neither logical, fair, nor according to the established case law when properly understood.

 

It is certainly good to see that the UKIPO are taking these questions seriously. I hope that they will get some serious and considered answers from a range of stakeholders. The consultation will not be very useful if the only people who respond are patent attorneys, so I would encourage anyone working in or close to the field of AI to take the time to respond. The consultation materials can be found on the government website.

 

[1] Toshiba’s application BL O/453/14

Albright IP Proves Small Can Be Beautiful – and Successful!

by

CITMA ranking

 

Albright IP has again demonstrated its top-flight capabilities after earning a place in the recent Chartered Institute of Trade Mark Attorneys (CITMA) rankings.

 

The annual league tables produced by CITMA show how many filings IP companies have made – and in the 2019 results released earlier this month, Albright IP checks in at number 29 in the UK, and number 15 in the EU.

 

“These latest league tables are a clear indication that not only are we experts in what we do, but that we’re able to offer a very competitive service, both to clients in the UK and beyond ,” said Albright IP, Director and trade mark attorney, Julia House.

 

“Clients know they can rely on us to deliver a focused, consistent service that helps them to protect their investments in innovation and creativity. We may be a small company compared with many of the others listed, but the CITMA tables show this is no barrier to our success. All our clients benefit from our attorney partner led approach.”

 

Established in 2007, Albright IP operates with a six-strong trademark team, led by two fully qualified IP attorneys. It employs 30 people across the company and has seen significant growth over the past few years, currently working with more than 2,000 companies across the world, including Europe, the US and China.

 

“We have consistently appeared in the CITMA annual top-filer rankings, which is very impressive and testament to the skills and capabilities we have within the trademark team,” says Albright IP Managing Director Rob Games.

 

“Our commitment to quality, underpinned by attorneys able to give sound commercial advice, delivers what customers need when it comes to trademark filings. The trademark team have worked hard to achieve these rankings and I’m very proud of our staff.”

 

You can view the full league listings here:  CITMA 2019 top filers

SKY v SKYKICK: Part 2 – The Clouds Part…

by

 

Following the CJEU greatly anticipated judgement to questions raised to it, the UK High Court has now issued Lord Justice Arnold’s concluding decision, in the Sky v SkyKick case.

 

As reported previously, Justice Arnold had requested the CJEU provide clarity on a number of pertinent issues to the case; namely, the legitimacy of wide-reaching specifications, and the associated issue of ‘bad faith’ being pleaded in Trade Mark invalidation proceedings.

 

Now armed with the CJEU’s judgement, Justice Arnold’s ruling provides brand owners and practitioners with well-drawn conclusions, and strategic guidance.

 

Application of CJEU Judgment

 

The High Court mostly followed the CJEU judgment:

 

  • Confirming “Trade Marks cannot be declared wholly or partly invalid on the ground that their specifications are lacking in clarity or precision” [1]; and

 

  • “Trade Marks can only be declared invalid in relation to those goods and/or services in respect of which the Court finds that the applications were made in bad faith, and not totally invalid” [2].

 

  • However, Sky had applied for its Trade Marks “with the intention of obtaining an exclusive right for purposes other than those falling within the functions of a trade mark, namely purely as a legal weapon against third parties” [3]. Thus, limitations were applied to most of the relied upon goods and services, these being so broad Sky could not conceivably be using their Trade Marks to the full breadth of what these terms entail.

 

  • Extraneous to the CJEU judgment, Justice Arnold supplied the limitation wording himself in absence of Sky providing their own.

 

  • Limitations aside, Skykick were still found to have infringed Sky’s earlier rights. Justice Arnold concluded, “[t]he fact that [Sky’s] Trade Marks are partially invalid on the ground that they were applied for partly in bad faith does not affect [the finding of infringement]” [4].

 

Conclusion

 

Foremost, it is worth stressing that a finding of bad faith is not concluded lightly. In the context of Sky v SkyKick, it had to be demonstrated that Sky “had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark” [5]. Justice Arnold concluded these criteria were met. Sky had included terms that could not be conceivably supplied, in full, ‘in the course of trade’. The decision in Sky v SkyKick leaves us with a few points of particular note:

 

  • Where broad terms are used, a specification drafted defensively could now be vulnerable to an invalidation action. However, brand owners need not panic in that it cannot be assumed that Registrations will be invalidated in their entirety, even where an invalidation action succeeds.

 

  • When drafting a specification, use of broad terms such as “computer software”, should not be included without limitation as to the specific purpose that the software will be put to. On the basis of the agreed wording of Sky’s limitations, we now at least have Court-approved wording for certain broad terms. For example, “computer software supplied as part of or in connection with any television, video recording or home entertainment apparatus or service”.

 

  • Justice Arnold resorted to limiting Sky’s specifications because they had not proposed any wording as a fall-back position. In future invalidation proceedings, it may be worth Applicants, or their counsel, devising their own fall-back wording, lest the Court’s wording be imposed upon them.

 

Whilst the conclusion of Sky v Skykick has not met the initial expectations, our previous advice remains current:

 

  • 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.

 

Bibliography

[1] Sky Plc & Ors v Skykick UK Ltd & Anor [2020] EWHC 990 (Ch) (29 April 2020). Paragraph 12.

[2] Sky v Skykick. Paragraph 13.

[3] Sky v Skykick. Paragraph 21.

[4] Sky v Skykick. Paragraph 62.

[5] Sky v Skykick. Paragraph 11.

 

The Effect of The Coronavirus on Official Deadlines (Updated)

by

Deadlines

 

Normally, having to face moving goalposts would be a bad thing, but it is proving to be beneficial when it comes to IP deadlines falling during the Covid-19 pandemic.

 

For now, deadlines before the UK Intellectual Property Office remain extended under the ‘interrupted days’ provision, although this will be reviewed on 7th May. The UK IPO still intends to give at least 2 weeks’ notice before the automatic extension is halted.

 

Most deadlines before the European Patent Office have also been extended again to 2nd June, and deadlines before the EU Intellectual Property Office (for designs & trade marks) have been further extended to 18th May.

 

Further extensions may yet be available, depending on how quickly the pandemic is brought under control.

 

If you have a particular case you are concerned about, please feel free to get in touch and we can confirm the deadline to put your mind at ease

World IP Day – 26th April – Celebrating Innovation In a Crisis

by

World IP Day

 

The arrival of the Coronavirus onto the world’s stage has brought into sharp focus the need for businesses to combine thinking on their feet with innovation and creativity. As we celebrated World Intellectual Property Day on the 26th April, it is a chance to focus on the role intellectual property (IP) rights play in encouraging innovation and creativity, Albright IP’s managing director Robert Games takes a look at how things might play out for the companies which are willing to ‘think smart’…

 

With the NHS crying out for ventilators, and personal protective equipment such as masks, scrubs and face shields, it’s those companies that can demonstrate agility and manufacturing flexibility that are proving best placed to respond. We’ve seen some great examples of businesses which have recognised the need and taken a creative approach to their design, manufacturing processes and product lines.

 

At one end of the scale, you’ve got companies like Ineos and Dyson switching design and production to hand sanitiser and ventilators respectively. Ineos have committed to building a whole new manufacturing facility in just 10 days with a planned one million bottles of much-needed hand sanitiser due to come off its production lines each day – something that will be replicated in Germany.

 

Leading from the front

 

Dyson is working in partnership with The Technology Partnership (TTP) on a brand-new ventilator design called the CoVent which can be made quickly and at high volumes. Using Dyson’s existing Digital Motor design, as well as the company’s air purification products, the new product will deliver safe and consistent ventilation for COVID-19 patients.

 

Another UK company, Gtech, more familiar with the world of household appliances and vacuum cleaners, has made two ventilator designs available free of charge (www.gtech.co.uk/ventilator) after the government decided it no longer required the company’s assistance.

 

There’s the fantastic partnership between University College London, NHS clinicians and Mercedes Formula 1 which has developed a new breathing aid which can deliver oxygen to the lungs without the need for a ventilator.

 

And there’s the VentilatorChallengeUK consortium which has brought together some big names in the industrial, technology and engineering sectors, including Airbus, BAE Systems, Ford, Rolls Royce and Siemens. They are pooling their creative resources to develop new ventilator technology at speed.

 

At the same time, Innovate UK has been leading from the front and set up a competition to encourage business-led innovation in response to COVID-19. It’s offering a total of up to £20m and the winners are due to be announced on May 1st.

 

It’s encouraging to see so many organisations putting competitiveness to one side and coming together during this unprecedented time. Keeping their innovation and creativity muscles flexed in this way will stand them in good stead once we emerge from the other side of this pandemic.

 

This continued approach to innovation will keep them better placed for whatever the next chapter looks like, as will their employees who will very likely have learned new skills and expertise. But it’s not only the world-renowned brands that are demonstrating their flexibility when it comes to addressing the current challenges being faced in the health service and wider carer sectors

 

Celebrating our local innovation

 

In the South West we have our own business heroes that should be celebrated such as Emma Willis the Gloucestershire fashion house that has turned its hand to producing scrubs for NHS frontline staff; the Charlton Kings school, Balcarras, that’s used its 3D printer to make face shields;

 

And Staverton-based company Safran has joined forces with Decathlon and Segula Technologies to produce face protection masks. The masks are adapted from Decathlon’s Easybreath Subsea snorkelling mask. They’ve also made the adaptation design available via open access to anyone who wants to make the masks using their own 3D printer.

 

Further afield is the Canadian boy scout who deserves an honorary mention! He designed and printed facemask ear guards using ingenuity and his own 3D printer. He’s now shared his creation so anyone with a 3D printer can download and print his design.

 

Keep the innovation going

 

This approach to innovation and creativity perfectly sums up what World IP day stands for and showcases the potential within all businesses to innovate when they put their mind to it. There’s a humbling generosity of focus at the moment on sharing ideas, designs, equipment and know-how, and this is absolutely how it should be if we’re going to ensure the health service, the care sector and more besides have the right tools and equipment to enable them to do their jobs as safely as possible.

 

While it’s quite right for companies to be putting collaboration first in the current climate, it’s also important for companies who want to stay ahead of the competition and grow their businesses to look after their intellectual property.

 

When we final emerge from this unprecedented chapter in our shared lives, I would encourage businesses to look back at what they’ve learned, capture any innovative ideas or processes that will help them in the future, and continue to encourage creativity among their workforces.

 

The Effect of the Coronavirus on Official Deadlines

by

Intellectual Property Covid-19

 

National and regional intellectual property offices are, like all of us, feeling the effects of the on-going Covid-19 outbreak. Some of them have now extended deadlines or put into place corresponding measures which are aimed at helping you to weather the storm without losing your rights.

 

We remain very much open for business as usual, but here is a brief overview of the positions being adopted by the UK Intellectual Property Office (UK IPO), the European Patent Office (EPO), the EU Intellectual Property Office (EUIPO), and the World Intellectual Property Organization (WIPO).

 

UK IPO

 

The UK IPO has announced that all deadlines for UK patents, designs, trademarks, supplementary protection certificates, and applications for any of those rights, have been indefinitely extended. This applies to deadlines from 24th March 2020 to an unspecified future date.

 

It is important to note that this extension applies to UK rights only. Any applications for overseas rights made under international or regional agreements must still be made by the relevant deadlines.

 

The situation will be reviewed on 17th April 2020. The UK IPO indicates that there will be a two-week notice period before the extension period ends, so the earliest that any extended deadlines may fall would be 1st May 2020.

 

EPO

 

The EPO has announced that deadlines for time limits expiring on or after 15th March 2020 are extended until at least 17th April 2020. Oral proceedings scheduled during the same period have been suspended until further notice, unless video-conferencing has already been arranged.

 

It should be noted that the extensions apply to parties which are already party to proceedings under the European Patent Convention (EPC) or Patent Co-operation Treaty (PCT).

 

For opposition filing deadlines, it should be noted that the EPO has stated that the current situation qualifies as a ‘general dislocation’ under rule 134(2) EPC. Therefore, this should also extend the deadline for filing an opposition to a European patent until at least 17th April 2020, assuming that the opposition deadline had not already expired prior to 15th March 2020.

 

The EPO has also pointed out that the extension does not apply to some things such as the deadline for filing a divisional application and the deadline for making written submissions before oral proceedings. The same notice indicates that renewal fees falling due on 31st March 2020 can be paid until 17th April 2020, and that such renewal fees can for now be paid at the current rate rather than the increased rates coming into force from 1st April 2020.

 

EUIPO

 

The EUIPO has announced that deadlines expiring between 9th March 2020 and 30th April 2020 have been extended to 1st May 2020 (in practice, 4th May 2020, since 1st May is a public holiday followed by a weekend).

 

This specifically relates to deadlines for trademark or design matters, but does not cover deadlines which relate to other matters or which relate to another authority, e.g. bringing an action before the General Court against a Board of Appeal decision.

 

WIPO

 

The WIPO is still processing international patent, design and trademark applications as normal. The latest newsletter contains some advice on possible remedies in the event that a PCT deadline is missed for an international patent application.

 

If you are nearing the end of a priority filing period (12 months from first filing a patent application, or 6 months from first filing a design or trademark application), then the Paris Convention only allows for an extension to the priority period where the national Office was closed to the filing of applications. Please click the relevant links here for further details relating to the PCT, Hague System and Madrid System procedures as affected by the Covid-19 situation.

 

For the time being, the UK IPO, EPO, EUIPO and WIPO are still accepting applications. The EPO and EUIPO have indicated that priority filing deadlines may be extended, for now. However, to be on the safe side, if you plan to file a national/regional application, a PCT international patent application, a Hague System international design application, or a Madrid System international trademark application through one of those Offices, it is still worth aiming to file subsequent applications by the priority deadline.

 

The situation for all of the above Offices is still evolving, but we will endeavour to continue to provide up-to-date information on our website. If you have a query relating to a specific case, please do not hesitate to contact us for further information.

The Invention of Rules

by

 

BBC

 

Intellectual Property can be a difficult topic to publicize, so credit is due to the BBC for continuing to keep the fundamentals of the patent system in the public (Dragon’s) eye year after year. Auntie Beeb’s mission statement is to inform, educate and entertain, and for such a weighty topic, you would expect the home of respected heavyweights such as Attenborough, Bragg, and O’Carroll to be firmly in favour of educating the public and bringing the subject to the attention of younger consumers.

 

Bitesize

 

BBC Bitesize is an online study support platform for school-age students in the UK, and contains lots of articles that delve into interesting titbits from the news. I, as a mostly grown man, therefore was naturally drawn to a blog post entitled ‘How do you invent a new sport?’. The article itself is a brief discussion of the history of Bossaball, a mix of football, volleyball and extreme gymnastics.

 

Unfortunately, the blog has a rather fuzzy approach to the fundamentals of IP, which will no doubt encourage the reader towards some of the more common misconceptions about the difference between patent, trademark and copyright law.

 

The laws of invention

 

“Creating a sport isn’t just about building a player base – patents also comes into it. A spokesperson for the Intellectual Property Office (IPO) explained to BBC Bitesize that the name of a sport can be trademarked in the UK – recent examples are Zumba, Boxercise and Spinning. Rules of the game can’t be trademarked but they can be protected by copyright, and revisiting them over time also keeps them in copyright.”

 

There is a lot to unpack here.

 

  • The focus of the is on trademarks. The names of the new sports referenced are protected by Registered Trademarks. This is fine – a trademark protects branding or trading stylisation – but these are definitively not

 

  • The rules of a game cannot be trademarked, but this isn’t really the point. What the author wants to say here is that the rules of a game cannot be patented (in the UK). Rules for a game are explicitly excluded from patentability. A patent can protect the method of a technical invention (such as a method of manufacture), but the rules of a game are deemed non-technical in nature.

 

  • The rules of a game can be copyrighted, in the sense that the literal wording of the rules codifying the game fall under the scope of copyright protection, if original. Copyright cannot protect the underlying concept of a game.

 

The confusion between trademarking and patenting is reiterated in the next paragraph:

 

“Anything unique to a new sport in terms of equipment can be trademarked. The IPO has seen patents registered for wetsuit technology linked to triathlons, with many more for equipment linked to rugby and cycling. The UK is also number one in Europe for patents regarding sports-adapted wheelchairs used in the Paralympics and other events.”

 

In this instance, I believe the author is referring to trademarks when they mean patents. The name of a piece of equipment can be trademarked, but the unique (and inventive) aspects of a product can be patented.

 

A cursory search of the patent databases finds a single British patent application to a ‘sports wheelchair’, GB2130154, which dates back to the 1980’s. It’s not clear where the assertion of the UK’s pre-eminence in the sports-adapted wheelchair technology sector arises from, but I for one would be interested to know more!

 

Bossaball

 

Potentially, some of the confusion arises from the conversation with Filip Eyckman, the creator of Bossaball. He acknowledges a tricky past with the enforcement of his IP over the years.

 

The Bossaball website directs the reader towards a page entitled ‘Patents’, which recites the following:

 

“Bossaball Sports S.L. is the owner of all rights worldwide. Bossaball Sports S.L. is protected through international copyright and additional trademark and design patents worldwide.”

 

Herein lies another common misconception about IP – the existence of the ‘design patent’.

 

A design subsists in the aesthetic (i.e. non-functional) aspects of a product. Bossaball Sports S.L. do not appear to have any patents (called utility patents in some jurisdictions, such as the US), but instead have design patents or registrations.

 

As such, Bossaball Sports S.L. IP rights portfolio would appear to comprise the following (in at least some territories):

 

  • Protection, via a design patent/registration, over the aesthetic appearance of the inflatable court, upon which Bossaball is played.

 

  • Protection, via a trademark registration, to at least the Bossaball name.

 

  • Protection, via copyright, to the written rules of the Bossaball game.

 

What Bossaball can’t do, it would seem, is prevent the unauthorised use of a game played on an inflatable court which looks different to that protected by the design patent/registration, under a different name, and not utilising a copy of the rules created for Bossaball.

 

So how do you protect a game?

 

Whilst it may seem as though Bossaball Sports S.L. have vulnerabilities in their portfolio (i.e. potential avenues for copycats to arise), the vulnerabilities are narrow in scope. The protection sought by Bossaball Sports S.L. is actually a textbook case as to how to obtain some sort of protection for a game which otherwise cannot be patented.

 

  1. Obtain design (or, if feasible, patent) protection for any equipment or paraphernalia in the game;

 

  1. Register the game name as a trademark, and build up brand awareness to improve the strength of the trademark; and

 

  1. Ensure that you have good and detailed records of copyrightable material, so as to permit enforcement of any rights available against direct copycats.

 

What you shouldn’t do is mark your concept as patented or patent pending, when you only have trademark to the brand. This is illegal, and highlights why it’s important to be selective in the terminology you use in the IP arena. So I tip my hat to BBC Bitesize for raising these points to the wider audience, whilst giving them a digital slap on the wrists for using some misleading phrasing!

 

How To Make Competitors Aware Of Your IP

by

Competitors of intellectual Property

 

It is a question that we are frequently asked: ‘I have patents and trademarks, so how do I put a notice on my products and website to notify competitors of my intellectual property rights?’

 

Whilst driving home from a recent ski trip with my family, I noticed the following on a cardboard sleeve used by Starbucks® to hold my piping hot triple-shot cappuccino:

 

Competitors of intellectual Property

 

Curiosity took me to the stated page: www.lbpmfg.com/patents/, and I liked the way this was laid out.

 

The company’s rights are clearly displayed in a table, with a picture of the product, and the trademarked name …

Competitors of intellectual Property

 

… followed by the associated patent rights:

 

Competitors of intellectual Property

 

If curious, the granted patent rights can be viewed at US8,529,723 and US9,056,712.

 

(Interestingly, their associated right US9,580,228, granted in 2017, is not listed on their web page, so it does seem that LBP Manufacturing are behind with their updates.)

 

Undertaking a manufacturing run, whilst having pending patent and trademark applications, costs money to reprint or retool once your applications are finally allowed and become granted or registered rights. This usually results in a new ‘grant’ number, particularly for patent rights.

 

To this end, having a single website address which can be referred to on your products and literature, and which can be easily updated as new rights are won and older rights lapse, will save time and costs downstream.

 

Why Do I Want To Notify Others Of My IP Rights?

 

Let’s look briefly at the UK, and also the USA to answer this question.

 

In the UK, there are provisions for at least a partial defence against infringement if the infringer can argue that they were ignorant of the existence of the patent or similar rights. See ‘Section 62(1)’ on the UKIPO’s website.

 

The onus is on the infringer to prove that they were not aware.

 

Being clearly directed to a list of your IP rights by a statement on your product or associated literature makes this defence difficult or impossible to use.

 

There are no specific requirements, under UK patent law, for a patent owner to state their rights publicly (but why wouldn’t you? You have paid for the asset, why not use it to protect your market?). Under US patent law, legal damages will not accrue until an effective notice of rights is given.

 

35 USC 287(a), since the introduction of the America Invents Act (AIA) in 2011, gives the option of ‘virtual’ marking to avoid the necessity of physical marking. Virtual marking is as shown above, where LBP Manufacturing has put a statement on their cardboard sleeve of ‘Patent’ followed by their internet address for a web page that outlines a complete and up-to-date list of associated patent rights. See Page L-67 of the MPEP from the USPTO for more specifics.

 

As alluded to above, since you have paid to stake a claim to your intellectual property, why would you not make the best use of the assets? Use the rights as a ‘keep off the grass’ sign to deter your competitors.

 

Quicklinks & Glossary