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Company Names v Trademark

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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. 

 

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Brexit IP: Prepare for the worst, hope for the best

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Brexit - 31 January 2020

 

After several years of debate and negotiation, the UK will finally leave the European Union at midnight on the 31st December 2020. This brings with it some fundamental changes for UK companies with European trade mark and design registrations. Julia House, trade mark Attorney and Director at Albright IP outlines what companies need to think about and how Albright IP is ready to support them…

 

Following Brexit, the UK will no longer be governed by European law and in particular, be bound by decisions of the European Courts. This also means that the UK can no longer be part of the European Union Intellectual Property Office (EUIPO)

 

So, what does this mean? Well, in a nutshell, EU and UK trade mark and design protection will now be separate.

 

Moving forward, any existing European registrations will be automatically cloned in the UK (to create UK registrations) as EU registrations will cease to be covered in the UK.

 

Patents, however, will remain unaffected as they are covered by a separate treaty, which, hopefully, will not be repealed.

 

The newly cloned registrations will become your UK equivalent right and while this will be created freely and automatically, there will be renewal fees in the future which will have to be paid separately and will need to budgeted for.

 

Preparation is key

 

At Albright IP we are well prepared for Brexit, we have a network of European mainland attorneys who will assist us with our European cases. But essentially not a lot will change, we will continue to handle all cases, be the first point of contact for our clients and continue to provide the same high level of service, advice, and support as always.

 

For us this is a tried and tested approach, as a specialist IP attorney we have been working in partnership with foreign attorneys for over a decade now, it helps to minimise client costs (no overheads of foreign offices) and gives our clients the ‘on the ground’ expertise for each individual country we operate in.

 

Most of all, it gives our clients choice, our trusted partners have established businesses within Europe and it will be no different to how we operate in the US, China or Australia, where we are also not direct representatives.

 

Business as usual

 

For both existing and new clients, it will be business as usual and we will remain the key point of contact for your IP, we will continue to monitor your cases on our database, send renewal reminders, and ensure that the deadlines are met.

 

Our corporate customers will also be able to use our IP portal which will be uploaded with cloned cases once they have been generated by the UKIPO, helping to give you a ‘real-time’ view of your IP across the EU and the world.

 

For any of our clients with existing EU trade mark and design registrations, we will be writing to them directly to advise them of their cloned registrations and sending timely reminders for any decisions that need to be taken.

 

For any trade mark and design applications that are yet to be filed, we will guide you towards the most cost-effective and cohesive filing strategy to follow, to ensure the best protection is secured in the UK, EU, and beyond.

 

Worry not, it will be a smooth transition, and we will continue to keep you up to speed with your new rights, and the full implications of Brexit upon your IP.

 

Accelerated patents – are you making use of the Green Channel?

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Green Innovation

As the government grapples with the need to map out what the post-COVID landscape might look like, there is one thing for certain, now is the time to take the opportunity to do the right thing for our world. There is much discussion about the need to ‘build back better’ –  Robert Games, Managing Director of IP Attorney, Albright IP talks about the need to ensure we rebuild around a green economy with a focus on innovation that addresses climate change…

 

If we want a more resilient and sustainable future, we have to grasp this opportunity to reinvent our economy and put ‘green’ business and renewable energy at the top of our ‘build back better’ agenda. Climate change must be at the heart of any plan to address the post-Covid19 economic crisis.

 

Governments around the world have proved how swiftly they can move in the face of a pandemic and there is no reason they cannot act with same speed and agility to tackle carbon emissions. A recent international survey carried out by Ipsos Mori shows that most people believe that climate change is just as important an issue as the coronavirus, suggesting there would be support for a recovery plan that embraces carbon reduction strategies.

 

A critical ingredient in any green recovery plan is innovation, in all its guises. Whether it’s the development of smarter energy systems, more energy-efficient manufacturing processes, decarbonising heat, the harnessing of digitisation or the introduction of green travel solutions, there’s huge opportunity for so many companies to rethink the way they work and do things differently.

 

We can’t risk slipping back into our old ‘business as usual’ ways – something the EU has already recognised. It’s developing a Green Deal that will make the combined EU economies more stable and sustainable, with a focus on supporting businesses that are reducing carbon emissions and / or increasing digitisation. It is emphatic in its view that not a single Euro should be spent on propping up old, dirty industries.

 

It wasn’t that long ago that renewable energy technologies such as solar panels and wind turbines were regarded as ineffective, expensive, and too reliant on subsidies. Last year, renewables accounted for 72% of all new energy sources installed around the globe – backed by investments that could achieve returns of more than 800%. And just this month, Britain chalked up a record two months without using coal.  Our world energy map is changing irrevocably, and now we have the chance to change other sectors, too.

 

If we’re to succeed, however, innovation must be supported, encouraged, and promoted. It should be on the agenda for every company, large or small, and the government needs to step up and ensure the right environment exists to enable new ideas to thrive.

 

What if, for example, work to develop charging networks for electric vehicles (EVs) was to be incentivised and supported? Earlier this year, the results of a six-month trial to test the world’s first pop-up electric vehicle charge point in a residential street in Oxford were revealed – paving the way for a potential wider roll-out.

 

The UEOne pop-up charge-point project was developed and manufactured by Albright IP’s product design sister company, Duku as part of a consortium alongside Urban Electric and Oxford City Council, and protected by us.

 

The project involves designing, prototyping, testing and manufacturing six retractable bollard-style charge points. The bollards rise automatically when required and disappear out of sight when not in use. The consortium received funding from Innovate UK to help it realise the concept and prove its value in meeting the growing need to fast track the UK’s EV charging network.

 

This is a great example of how companies with expertise, can join forces to address a need, taking new thinking and new approaches, with the support of government funding, and delivering a solution that’s not only scalable, but offers the double benefit of helping both the environment and the economy. As the common parlance would have it, what’s not to like?

 

It’s important, of course, for companies to protect their ideas and innovations, and the patents process enables organisations to do so. However, this can take a long time … which is where the ‘Green Channel’ comes in.  This is a route by which companies can access an acceleration of the ‘search and examination’ process which is integral to applying for a patent.

 

To qualify, the invention or process must have an environmental benefit. It’s simple to apply on-line and if successful, the whole patent process will be speeded up. And, importantly, it also places the applicant in a much better position from which to apply for R&D tax benefits and the Patent Box.

 

The Patent Box is designed to encourage companies to keep and commercialise intellectual property in the UK. It allows companies to apply a lower rate of Corporation Tax – currently 10% – to profits earned from its patented inventions.

 

The EV charging trial is a perfect example of how, with the right support and partnership approach where appropriate, the UK can take the lead in exploring and applying innovation, and play a role in any economic recovery.

 

It’s good to see that the government has acknowledged the need for ‘green investment’, with its recent announcement of £2bn package for England, for projects like home insulation and the cycle repair voucher. This is part of its wider £3bn plan to cut emissions. But this simply isn’t ambitious enough – Germany, for example, is investing €40bn (£36bn) in green jobs and energy efficiency, and France, which has already pledged €15bn to tackle the climate crisis. We can and must do better.  The BBC have reported that the Government has spent £190 bn on the Coronavirus crisis.

 

It’s unlikely there will be any single quick fix to the damage done by Covid19, but if we act now, innovate, think differently, and are willing to challenge the status quo, we have a much better chance of creating a more resilient economy and a world that’s in better shape to pass on to future generations. No one knows for sure what our world will look like post-pandemic, but I am certain that this is an economic and environmental opportunity that we cannot afford to ignore.

 

World First Pop-Up EV Charging Unit Trial Paves Way for Wider Roll-Out

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EV Bollard

 

A successful six-month trial to test the world’s first pop-up electric vehicle charge point in a residential street in Oxford has paved the way for a wider roll-out, say its designers.

 

The UEOne pop-up charge-point, has been developed and manufactured by product design company Duku for Urban Electric Networks Ltd at their Cheltenham design studio and protected by sister intellectual property company Albright IP.

 

The project involved designing, prototyping, testing and manufacturing 6 retractable charge points that can rise automatically when required and disappear out of sight when not in use, maintaining space on paths and avoiding visual clutter. The project was conducted in association with Oxford City Council.

 

The retractable nature of the charge-points means that they reduce the amount of street furniture permanently on view. They are straightforward and speedy to install and don’t require the use of heavy machinery – a real bonus for councils, road-users and residents alike.

 

The consortium consisting were successful in received funding by Innovate UK to realise the concept and prove its value in meeting the growing need to fast track the UK’s EV charging network.

 

“This has been a fantastic project to work on,” said Duku director Alex Lee. “It addresses a real obstacle in the adoption of Electric cars – how to bring EV charging to drivers who have no-off street parking and no access to charge points near their homes.”

 

More than 40% of drivers don’t have off-street parking, with this figure rising to 85% in some parts of London which is a prime market for the short distance commuting to which electric vehicles are so well suited.

 

“There aren’t currently any viable, sustainable solutions, so we were asked to look at developing a pop-up charge-point that would allow EV owners to utilise practical and cost effective steady overnight charging at home” said Alex.

 

Using state of the art CAD technology and 3D printing, Alex and his team developed and manufactured the UEOne, a reliable and robust charge-point which users can command to pop up and connect their vehicle for charging. When the charge is complete, the charge-point is retracted out of sight. Discreet LED halo lighting indicates the location and status of the charge-point ready for the next user.

 

“Coming up with a solution that would be reliable and suitable for the installation environment was a challenge, especially when you consider existing infrastructure such as electrics and telecoms cables.”

 

To ensure accessible connection to a user’s EV, the charge point rises 800mm above the pavement surface when fully extended, so Duku had to minimise that bulk beneath the ground when retracted using an innovative telescopic design. In addition, they needed to ensure the charge-points were able to operate in all conditions that the British weather can throw at it, which during the trial period consisted of 30 degree heat, ice and torrential rain and flooding!

 

The project allowed Duku to demonstrate their flexible in-house manufacturing capabilities, with many of the components for the charge points being manufactured using recycled materials and modern production techniques such as 3D printing.

 

“This allowed us to be agile in our design development work, giving us the ability to act quickly to make design improvements that could be retrofitted to the charge points in a matter of days”

 

After trialling six units in Oxford over a 6-month period working in partnership with the city council, Duku says the results have been extremely promising, and that they are now underway on a further project to enable a roll out of the technology on a commercial, UK-wide scale.

 

“The feedback from the residents who trialled the charge points was very encouraging and emphasised the need for such technology to be reliable, accessible and avoid being a permanent eyesore,” added Alex.

 

“We also learned a good deal about user interaction with the charge-points and how to minimise the cost and disruption of installation and maintenance. We are now working on a second phase design which will incorporate additional features to make the charge points as easy to use and reliable as possible as well as further engineering that will ensure a cost-effective manufacturing process as the volumes scale up.”

 

“It has been hugely exciting to work on a project which is a genuine innovation in this sector and of real value in the move towards the widespread adoption of Electric cars.”

PlanetArt v Photobox: Does your app icon contain descriptive terms?

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Trademark infringement Recently, PlanetArt, the company behind the popular FreePrints app, succeeded in a Trade Mark infringement claim against one of its competitors, Photobox. The infringement claim related to Photobox’s rival app, which, like FreePrints, provides prints of photographs for free.

 

The High Court judgement ultimately represents a sound balance between the need to recognise and protect the investment of a Trade Mark proprietor on the one hand, and the need to preserve the wider public’s freedom to use inherently descriptive terms on the other.

 

At the same time, the reasoning behind the case merits scrutiny, as it can act as a useful guideline for app providers and developers, who are looking to establish a strong and enforceable brand identity.

 

Background

PlanetArt’s FreePrints app was launched in 2014 with this app icon

 

Essentially, the app allows customers to order free prints of their photographs, with the only fee being related to the delivery charges. That is to say, the app does exactly what it says – it provides free prints.

 

Since its launch, FreePrints has been attracted much success on the Appstore. By the end of 2019, the app had over 11 million downloads in the UK alone, generating substantial revenue for the company.

 

In April 2019, Photobox launched a rival app, providing a similar service to the FreePrints app, mainly using the following icons:

 

Icon 1:     Trademark infringement

Icon 2:    
Trademark infringement

Icon 3:
Trademark infringement

 

A day before a letter before action was sent to Photobox, PlanetArt applied for a UK Trade Mark for its app icon, displayed above (UKTM. No 3393165). The Mark was granted in August 2019.

 

When the case eventually came to trial, PlanetArt’s primary claim was based on the infringement of their UKTM Registration for the app icon. Specifically, PlanetArt alleged that the use of the three icons by Photobox was:

 

  • Confusingly similar to their earlier registered Trade Mark; and/or
  • Taking unfair advantage of, or causing detriment to the distinctive character or repute of their earlier Mark.

 

Each of Photobox’s icons are considered in turn below, since the judge arrived at a different conclusion for each sign.

 

The High Court’s Decision

 

Icon 1 – Infringed

 

This icon is what the customer would see on their own phones, once they had had downloaded the app from the Appstore.

 

The judge found that there were significant similarities in the aural and visual elements, and some level, albeit more limited, conceptual similarities. According to the assessment, the Photobox icon was a similar turquoise colour to PlanetArt’s Trade Mark, and featured a simple white line drawing, above the words ‘Free Prints’.

 

In the judgement, it was noted that app icons in similar fields (i.e photo-related apps) tended to feature words beneath the icon, to show brand name or origin, rather than a description of the app or the service provided. As such, the fact Photobox used the words ‘Free Prints’ beneath the icon, without any other wording or signs which might suggest that the app originated from Photobox, appears to be critical to the finding of infringement.

 

Whilst it was acknowledged that an app developer may be confined by the Appstore’s limits on the number of characters which can be used beneath an icon, from the evidence, it was unclear why the full name ‘Photobox Free Prints’ was not used; despite this being within the 30-character limit.

 

Based on the above, the use of Icon 1 amounted to infringement of PlanetArt’s Trade Mark on both of the grounds raised, i.e. confusing similarity and unfair advantage/detriment to distinctive character and/or repute.

 

Icon 2 & 3 – No infringement

 

In contrast, Icons 2 & 3 were held not to infringe PlanetArt’s Trade Mark Registration, since both contained the word ‘PHOTOBOX’ in a prominent position.

 

According to the judge, the words ‘PHOTOBOX’ was placed in a position and manner whereby consumers would ordinarily expect a brand to be found. As such, the average consumer would place any origin significance on the ‘Photobox’ element, and meanwhile, attribute the ‘free prints’ element, as merely having its ordinary, primary descriptive meaning.

 

For these reasons, the infringement claim failed against Icons 2 & 3.

 

Guidelines for app developers:

 

Some useful pointers can be discerned from the Court’s judgement:

 

  • Avoid descriptive names for your app where possible, as this may affect your ability to enforce against third parties.
  • The words under an app icon are more likely to be seen as your brand name, rather than as a description of the app – it should therefore be used for the purposes of denoting origin.
  • Although the Appstore operates some constraints on the format of an app icon, it is important to consider all the elements of branding when adopting an app icon, including: wording, images, colouring, and the positioning of each of these elements;
  • When adopting your app icon, reasonable steps should be taken to that it is sufficiently different icons already on the market, in order to make it straightforward for the consumer to distinguish between the multitude of apps available.
  • Extra steps should be taken to ensure that icons are sufficiently different from that of competitors.

 

Comments

 

The judgment of High Court is far from a clear-cut success for owners of descriptive brand names. Rather, it is a clear demonstration of the limits of an inherently descriptive term, and the fine lines that are at play where Trade Mark rights are concerned.

 

Had the issue not involved a Mark that was an inherently a descriptive term, the results of the decision may well have turned even more in PlanetArt’s favour.

 

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

 

The Effect of The Coronavirus on Official Deadlines (Updated)

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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

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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

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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

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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!

 

Albright IP – Covid 19 update – 17 March 2020

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Covid 19

 

We should like to assure our clients, colleagues and friends that we are all in good health.

 

  • We are open for new and existing business, we can meet your IP deadlines and our office is open for telephone enquiries.

 

Most of our staff are remote working in line with UK Government advice.

 

  • This week the EPO extended deadline dates to 17 April 2020 and the EUIPO pushed back deadline dates to 1 May 2020 for time limits falling within 9 March 2020 and 30 April 2020. Currently UK deadlines have not been extended.

 

  • It is worth bearing in mind that EPO fees are increasing by around 4-5% on 1 April 2020. You may want to file in March to beat the fee increases.

 

  • Please do continue to send us your instructions, when requested, so that we can serve your requirements.

 

Thank you. In these unprecedented times, we wish you, your colleagues and families, good health.

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