Friday, 13 February 2015

IALCI Seminar: Enforcing IPR in England and Wales

Jane Lambert

IALCI stands for The international association of lawyers for the creative industries. It was founded in March 2013, during Paris fashion week to provide useful and up-to-date business and legal know-how and solutions to the creative industries.  Its main goal is to enhance the collective knowledge of the creative industries, by organising seminars, webinars and Massive Open Online Courses (MOOCS), talks, google hangouts, podcasts, TV programmes about, and by publishing articles, newsletters, blogs and books on, business and legal topics of critical importance to the creative industries and entertainment sector.

One of those seminars took place on Tuesday, 10 Feb 2015 on the law of luxury goods series: intellectual property – how to protect, manage and monetize the know-how and intangible capital of luxury and fashion brands. Alexander Rozycki and I spoke at that seminar.  My presentation, which appears above, was one of three talks on enforcing intellectual property rights ("IPR") in Europe. The others were by Holger Alt of von Boetticher in Berlin who spoke on enforcing IPR in Germany and Annabelle Gauberti of Crefovi.

Holger and I had already worked together the previous weeks on behalf of a small Yorkshire company to pre-empt an ex parte injunction application in  Germany. If anybody wishes to discuss my presentation, the seminar or enforcement of IPR generally, call me on 020 7404 5252 or use my contact form.

Friday, 2 January 2015

Putting IP at the Heart of Your Business Plan

European Patent Office, Munich
Photo Wikipedia

Jane Lambert

Many new businesses are started at this time of the year.  Unless it is a tech start-up little thought is likely to be given to intellectual property ("IP") by entrepreneurs and small business owners when drawing up their business plans. That is a mistake because the competitive advantages earned from designing good looking new products, innovation or establishing a reputation for good service can be entrenched by law. It is a particularly British phenomenon fostered partly by lack of awareness of IP law by many business owners and their professional advisers and partly because IP rights were until recently very expensive to enforce. Their competitors in continental Europe, Asia and North America are much more likely to incorporate IP into their business planning.

Develop an IP Strategy First

One of the reasons why British business owners and their advisers are wary of IP is that a lot of money has been wasted on patents that will never be worked or on trade mark or design registrations in countries where they will never trade. A lot of that waste could be avoided by doing the following exercise.
(1)  Identify the likely income streams over the period of your business plan: these may be sales, payments for services, grants, subsidies - any kind of revenue;
(2)  Consider the threats to those income streams over that period - most of those threats will be commercial such as competition from other businesses and changing customer behaviour but a few could result from copying your products or riding on your reputation;
(3) Develop responses to those threats - as most of those threats will be commercial so will your responses such as reducing prices and developing new products but such threats as plagiarism and free riding may require a legal response;
(4) Tailor your response to suit the threat and your resources - there is often more than one form of legal protection such as keeping your new product under wraps and relying on the law of confidence to keep it secret rather than seeking patent protection so consider all the options before you actually spend money on searches and applications.

Make sure that you can fund Enforcement 

All litigation is expensive and IP litigation particularly so but the cost has come down spectacularly over the last 5 years with the new rules for IPEC (formerly the Patents County Court), the launch of the small claims track and alternative methods of resolving IP disputes such as IPO examiners' opinions and expert determination of domain name disputes. Enforcement costs are likely to fall still further with the unitary patent and the Unified Patent Court. There have also been entrants into the IP insurance market which means that cover against the cost of litigation is more affordable. Explore all those options for defending or enforcing your rights when you apply for your patent, trade mark or registered design.

Subscribe to a Watch Service

A watch service scours the websites and journals of the Intellectual Property Office and foreign patent offices and sometimes the technical literature for patent, registered design and trade mark applications and other developments that are likely to affect your own IP portfolio so that you can mount an early challenge if need be. Most patent and trade mark attorneys will be able to advise you on the available services.  There is also a very good service from the Business and IP Centre at Leeds Central Library.

Further Information

If you want to discuss this article or IP protection in general call me on 020 7404 5252 during office hours or get in touch through my contact form.

Tuesday, 30 December 2014

What an employee can and cannot do when no longer on your payroll

Jane Lambert

While an employee remains on your payroll he or she is bound by an implied obligation of good faith and fidelity to do his or her best for you. He or she is not allowed to discuss your affairs in public or work for a competitor. As Mr Justice Laddie said in Ocular Sciences Ltd v Aspect Vision Care Ltd (No.2) [1997] RPC 289, [1996] EWHC Patents 1, (1997) 20(3) IPD 20022, that has nothing to do with the law of confidence or trade secrecy.

However, the employee is not your slave. He or she is entitled to seek work elsewhere or even set himself or herself up in business in competition with you. If the employee leaves your employment he or she is likely to use skills, knowledge and experience gained in your employment. There is nothing wrong with that even if you have spent time and money training the employee. After all, you see nothing wring in recruiting someone who has been trained by somebody else do you. Nor is it disloyal of the employee to attend interviews or take preliminary steps to set up a competing business so long as he or she does that in his or her own time or with your permission. If he or she is any good the employee is likely to have made some contacts while working for you. There is no reason why he or she can't stay in touch and deal with those contacts after leaving your employment.

But there are limits. Just as an employee can't steal from you neither can he or she run off with your customer list or use or disclose secret and sensitive technical or commercial information relating to your business that he or she acquired in confidence. The law of confidence applies to a  departing employee just as it would to anyone else and if there is any danger of his or her breaching an obligation of confidence you can enforce it against the employee just as you could against anyone else.

However, confidential information does not usually stay confidential for ever. The time eventually comes when it becomes common knowledge in the industry. The law deals with that by allowing employers to insert garden leave or other non-compete clauses into their employees' contracts of employment to cover the period in which they are vulnerable. But these can't go on for ever or even for an excessive period. Such a clause restricts freedom to trade and it is a fundamental principle of English law that contracts in restraint of trade are not allowed unless they are reasonable for the protection of the parties and in the public interest. The recent decision of the Court of Appeal in Sunrise Brokers LLP v Rodgers [2014] EWCA Civ 1373, [2014] WLR(D) 442 is an example of a case in which such restrictopm were held to be reasonable and were enforced by injunction.

So what should an employer do? First he or she should take professional advice on the drafting or enforcing of garden leave or other provisions before a dispute arises. We can help with that and our clerks will be glad to put you in touch with counsel specializing in employment law if you call them on 020 7404 4242 or get in touch through their contact form. Secondly, you can remind employees of the importance of keeping your business and technical secrets secret and of their obligations of confidence in the course of their employment through training sessions, staff manuals, regular circulars and otherwise. Thirdly, if you have reason to believe that an employee is about to breach his or her obligation of confidence you have to act quickly. Once the information has been used or disclosed there is no point in seeking an injunction to restrain such use or disclosure. You may need to apply for a "without notice" injunction immediately and then follow it up with an application on notice as soon as possible afterwards. It is all a bit hectic and I am afraid it can be expensive but then doing nothing until it is too late can cost you a hell of a lot more.

If you need emergency advice or representation you can come to us through a solicitor or you can come to us direct under the public or licensed access rules. Once the emergency is over we can help you build a legal team. If you want to discuss this article or restraints of trade generally, call me on 020 7404 5252 or use my contact form.

Thursday, 18 December 2014

Brilliant Beckton

In an email to the Intellectual Property Bar Association, our Chair Henry Carr QC reported that he and a party of other IP lawyers and patent attorneys visited 1000 Dockland Road, Royal Albert Dock, London E16 2QU last month. The reason for their visit is that the site has been identified as a possible venue for the London section of the central division of the Court of First Instance of the Unified Patent Court.

The estate agents' particulars sound idyllic:
  • "Fully accessible raised floor
  • Suspended ceiling with 1.5m planning grid
  • Cat 5 lighting
  • Excellent natural light
  • Views over Royal Albert Dock
  • Four pipe fan coil air conditioning
  • 7 underground car parking spaces and bicycle storage
  • 3 passenger lifts
  • Five-storey winter garden and building reception
  • On site coffee shop, cafeteria and news agents."!
Henry's note is also pretty encouraging:
"1. The facility is, potentially, very good for a European Institution. The space is large and will allow about five big courts as well as meeting rooms. Proper IT can be installed. There is a good, large canteen on the ground floor and catering can be brought to the meeting rooms.
2. There was slight aircraft noise at the front where some meeting rooms would be, but it was not intrusive. There was no noise at the back where the courts would be.
3. The journey took 40 minutes and involved one change. It is not ideal, but bearable. This situation will change in early 2018 with Crossrail as there is a station close to the site.
4. As well as direct flights, there are flights to City Airport from Amsterdam and Zurich, which are hubs for the rest of the world."
In my view, the location  could not be better. Not only is it close to London City Airport and the Crossrail line it is linked by dual carriageway to the M11 which leads to the M25 making it accessible to all parts of the country.  The building overlooks a marina. It is close to Beckton District Park. There is plenty of hotel accommodation nearby for parties, witnesses and legal representatives to suit all pockets. The building is in an attractive position overlooking a marina and not far from Beckton District Park.

Not everyone likes the proposed site. Henry reports that AIPPI in particular wants a central London location. That would be much more convenient for practitioners in central London but this is a court for most of the EU with parties and lawyers coming from the whole of the UK, the rest of Europe and around the world. Our needs have to be considered too and for us Beckton is brilliant.

Tuesday, 9 December 2014

WIPO Panellists Meeting

WIPO Head Office
Photo Wikipedia

Jane Lambert

Last Wednesday I attended the annual domain name panellists' meeting at the World Intellectual Property Organization ("WIPO")'s head office in Geneva. The meeting normally takes place on the third Monday of October but this year it was postponed until December.

The WIPO is one of five domain name dispute resolution service providers that have been approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") for the resolution of disputes between trade mark owners and those who have registered domain names. The other service providers are the Arab Centre for Dispute Resolution, the Asian Domain Name Dispute Resolution Centre, the Czech Arbitration Court Arbitration Centre for Internet Disputes and the National Arbitration Forum.

By a memorandum of understanding between the US Department of Commerce and ICANN dated 25 Nov 1998 the US government entrusted the oversight and management of the domain name system to ICANN. By paragraph C-3 of the memorandum ICANN agreed to:
"Collaborate on the design, development, and testing of a plan for introduction of competition in domain name registration services, including:
a. Development of procedures to designate third parties to participate in tests conducted pursuant to this Agreement.
b. Development of an accreditation procedure for registrars and procedures that subject registrars to consistent requirements designed to promote a stable and robustly competitive DNS, as set forth in the Statement of Policy.
c. Identification of the software, databases, know-how, intellectual property, and other equipment necessary to implement the plan for competition."
The accreditation process devised by ICANN pursuant to paragraph C-3 (b) of the memorandum requires registrars of generic top level domain names to enter an accreditation agreement with ICANN. Under the latest version of the agreement domain name registrars have to incorporate into their agreements with those seeking to register domain names dispute resolution procedure provisions known as the Uniform Domain Name Dispute Resolution Policy ("UDRP"), Under the UDRP, domain name holders have to agree to refer any dispute between themselves and a trade mark owner to a "mandatory administrative proceeding" before a panellist appointed by an accredited dispute resolution service provider.

The cost of the proceeding is born entirely by the complainant unless the respondent opts for the appointment of a panellist of his choice to sit with a panellist of the complainant's choice and a presiding panellist appointed by the service provider, in which case the respondent pays the extra cost. The WIPO's fee for the appointment of a single panellist is US$1,500 of which $1,000 goes to the panellist and the balance to the WIPO Arbitration and Mediation Centre ("the Centre"). The fee for a 3-member panel is US$4,000 of which $1,500 goes to the presiding panellist, $750 to each co-panellist and $1,000 to the Centre. A decision is rendered within a matter of weeks. If the panel finds for the complainant, the registrar is obliged to transfer the domain name to the complainant after 10 working days unless the respondent challenges the order to transfer the domain name in the courts.

The matters that a complainant must prove are as follows:
(i)  the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.
There are in practice four probanda because the complainant has to prove that the domain name was registered and is being used in bad faith. Proceedings are almost always in writing though the panel has the power under rule 13 of the UDRP Rules to conduct a hearing in an exceptional matter.

There is no appeal against a panel's decision though a respondent may apply to a court for an order not to transfer the domain name. For that reason. complainants have to submit to the jurisdiction of the courts where the registrar is domiciled or those where the domain name appears to be domiciled when they bring a complaint (rule 3 (b) (xiii) of the Rules). Theoretically, the administrative proceeding is an interlocutory procedure that exists to assist the courts but in practice there are very few challenges to panels' decisions. Consequently, those decisions tend to be final.

I have been a panellist for the WIPO for just over 10 years. Most of the disputes that have come before me have been undefended.  Even in those uncontested cases panels have to examine the complaint and make sure that the three elements mentioned above have been established.  In several of the cases that have been contested I have served as a co-panellist on a 3-member panel.

The annual conference is one of the means by which the WIPO maintains the quality and consistency of its panellists' decisions. The conference begins at 09:00 and there is a full day of talks until 18:00 which are broken only by lunch in the WIPO canteen and short breaks for morning coffee and afternoon tea. Those talks discuss issues that have arisen in the course of the year. Most of them are given by members of the WIPO panel. The rest are by guest speakers or members of the Centre's staff. As at Chatham House, those attending the meeting are free to use any information that they may receive but they may not reveal the identity or affiliation of the speakers, or that of any other participant. The information that I have received in those talks has been useful not only in my work as a panellist but also whenever I have been asked to advise on a domain name dispute or a transaction involving domain names.

I enjoy the annual conferences very much. Over the years I have made the acquaintance of many of the panellists and several members of the WIPO's staff. It is always good to see them.  Although the focus is on domain name dispute resolution we touch on other aspects of WIPO's work. This year, for instance, we were shown WIPO's new conference hall which is capable of accommodating over 900 participants.

Should anyone wish to discuss this article or domain name matters in general, he or she may call me during office hours 

Monday, 24 November 2014

Bringing high quality advice and advocacy to those who need them most but can often afford them least

Jane Lambert

When I practised on my own account from the Media Centre in Huddersfield my strapline was
"Bringing high quality advice and advocacy to those who need them most but can often afford them least."
 Although I now have to charge more because I have much higher costs I try to do the same in London.

It is now more necessary than ever because the Legal Services Consumer Panel wrote at page 5 of their report 2020 Legal Services How regulators should prepare for the future November 2014:
"The core challenge ahead is to extend access to justice to those currently excluded from the market because they cannot afford legal services. This need and other forces, including government policy, consumer empowerment, technology and the effects of liberalisation, will combine to result in less involvement by lawyers in many of the tasks that until now have made up their staple diet. Consumers will seek alternatives to lawyers or use them in different ways. In place of lawyers will be greater self-lawyering, online services, entry by unregulated businesses, and also by regulated providers, such as accountants and banks, who will diversify into the law. Calls will grow for more radical solutions that cut lawyers out, such as an inquisitorial style of justice and online dispute resolution, which are better suited to the new funding realities. The consumer interest will lie in resolving the tension between cost and quality, and determining when a lawyer is needed and when alternatives can safely suffice. Regulated lawyers should be viewed as a small part of an increasingly diverse ecosystem of legal services delivery; improving access will require looking at how the whole system will work in future around consumer need."
This is consistent with the speech of the Canadian futurologist Jordan Furlong to the Legal Futures Conference ("Knowledge gap between lawyers and consumers 'narrowing all the time'” 21 Nov 2014 Legal Futures).

This might sound rather depressing news for lawyers but it need not be. In reviewing Professor Susskind's Tomorrow’s Lawyers for the Law Society Gazette on 14 Jan 2013, my friend Joanna Goodman wrote:
"Tomorrow’s Lawyers, Susskind’s latest book, has a more optimistic title than The End of Lawyers? (2008), which he has referred to as ‘The End of Lawyers – question mark’.Tomorrow’s Lawyers removes the question mark and sets out a vision for the profession’s future."
In other words we do have a future so long as we respond to the "core challenge" identified by the Legal Services Consumer Panel. When it costs hundreds of thousands of pounds to litigate in the Patents Court and possibly more to fight a passing off or copyright dispute because of the need for oral evidence to prove confusion or copying it is not just the poor who are excluded from the legal services market but quite substantial businesses and institutions.

What can we at the IP Bar do to make the law more accessible? "Reduce your fees" is the usual call but that ignores the fact that it takes a lot of time and money to train a lawyer and even more to run a law practice. The answer is to use lawyers more effectively and technology certainly has a role there.

The other thing we can do is to make clients (particularly small businesses and their lenders and investors) aware of the cost saving opportunities that already exist. You don't have to patent every technology in every country in order to protect your investment in technology. Other legal and sometimes non-legal solutions can protect your investment and position in the market just as effectively. You don't have to fight every case in the multitrack. Most of the copyright, design right, passing off, trade mark and breach of confidence cases that I fought before the Vice-Chancellor of the County Palatine of Lancaster and his deputies over the last 30 years could now be litigated in the Intellectual Property Enterprise Court Small Claims Track where the costs and risks are minimal (see
Patents County Court - the New Small Claims Track Rules 20 Sept 2012 NIPC Law and the articles and presentations linked to that article. You can resolve generic top level domain name disputes for just US$1,500 by using the Uniform Domain Name Dispute Resolution Service (see "Always consider the UDRP first" 31 Aug 2014 NIPC Law) and many patent disputes through the IPO opinions service (see "Intellectual Property Act 2014: The New Law on Opinions" 29 Oct 2014 NIPC Law).

If you want to discuss this article, dispute resolution or intellectual property generally, give me a ring on 020 7404 5252 during office hours or message me through my contact form.

Wednesday, 5 November 2014

Intellectual Property Act 2014: Annual Report on Innovation and Growth: First Annual Report from the IPO

Jane Lambert

If there is one thing that the IPO is good at it is writing reports which is just as well as it was ranked 12th in 2012 in the the list of top 15 patent offices by number of patent applications which was the last year that the World Intellectual Property Office ("WIPO") published that particular league table (see page 17 of WIPO IP Facts and Figures 2012). No doubt it will slip still further after unitary patents become available because why would anyone want a monopoly of an invention for a small, crowded, offshore island which came within an ace of fragmentation last September when they can get a European patent for nearly the whole of the EU as though it were a single state?

S.21 (1) of the Intellectual Property Act 2014 requires the Secretary of State before the end of the period of 6 months beginning with the end of each financial year to:
"lay before Parliament a report setting out—
(a) the Secretary of State’s opinion of the extent to which during that year—
(i) the activities of the Patent Office have contributed to the promotion of innovation and of economic growth in the United Kingdom, and
(ii) legislation relating to intellectual property has been effective in facilitating innovation and economic growth in the United Kingdom, and
(b) how the promotion of innovation and of economic growth in the United Kingdom was taken into account in the case of any legislation relating to intellectual property that was passed or made during that year."
As the Act was only passed last May this obligation does not arise until next year but "the IPO wanted to start this good practice immediately" so this is the first report on the IPO’s work to support innovation and growth in the UK, covering the period from April 2013 to March 2014.

The report Supporting Innovation and Growth: a report on the work of the IPO  2013/14  appeared on the IPO's website yesterday. There are the highlights of the report as set out in the executive summary:

  • increasing the exceptions to Part I of the Copyright, Designs and Patents Act 1988 which is said "to ensure that our copyright framework reflects the impact of new digital new technologies" and somehow "contribute over £500 m to the UK economy over 10 years";
  • concluding negotiations on the European Directive on Collective Rights Management, signing the Beijing Treaty on the Protection of Audiovisual Performances, working in collaboration with other IP Offices to tackles issues around increasing patent backlogs and giving direct support to over 200 businesses dealing with IP issues worth over £370 million and helping a further 3,400 UK businesses through outreach and education work;
  • developing new ways of working to improve efficiency without loss of quality such as a new electronic processing system for trade mark applications and working with customers to develop on-line services for patents;
  • building awareness for IP;
  • passing the Intellectual Property Act 2014;
  • tackling IP crime; and
  • completing a programme of research to strengthen the evidence base on intellectual property.
Apparently the UK was judged to be the best location in the world for obtaining, exploiting and enforcing the main IP rights but the executive summary does not say who did the judging.