Friday, October 10, 2008

Wider protection for Databases?

The European Court of Justice has, by a recent decision, seemingly given wider protection to the owners of databases.

Databases are big business these days with almost all websites interacting with a database. The European Database Directive was set up to protect these valuable assets based on the existing copyright regime. 'Screen scraping' of website database information is now fairly common and this should assist database owners from protecting their rights.

A person infringes a database right if, without consent, they extract or re-utilise all or a substantial part of the contents of a database. The Directive prevents "extraction" which in this recent decision was interpreted widely. Thus protection can be seen to be wider.

Proving the copying of a database right is always difficult though. There are technical (coding) ways to demonstrate copying but the best and most practical way is to insert "Ghost" (made up) entries or insert deliberate mistakes or grammatical errors that others are unlikely to have made. The chances of two people making the same mistakes and making up the same "Ghost entries" is highly unlikely.

Trade Mark Applications – Faster, Cheaper, More Efficient?

Since October last year there have been numerous changes to the UK rules the govern UK trade mark applications. On 1 October 2008, the next changes came into force.

The main change is the reduction of the opposition period from three months to two. The opposition period is the time allotted for objections to a trade mark application. For example if a brand owner considers that an application is too similar to theirs they may oppose.

This combined with the option of fast tracking an application could mean that trade mark applications could proceed to registration in 4 months. This is great news for businesses looking to protect their brands, especially if they are rushing to protect a new product prior to launch.

Since October 2007 brand owners and not the trade mark registry must ‘police’ applications that they consider are too similar. Consequently, market vigilance will have to be heightened to ensure that oppositions are actioned sooner.

There is some comfort - where a need to oppose an application is identified, it will be simple and free to extend the period to three months. In addition trade marks can still be revoked or invalidated post registration if you miss the opposition period, but this is more costly and difficult.

An opposition requires formal legal proceedings with cost implications should a party lose. From October there are numerous procedural amendments to this system that are designed to streamline the trade mark tribunal system.

It is best to avoid oppositions by drafting the application correctly at the outset and assessing the risk of an opposition by carrying out searches to identify possible conflicting marks.

From October it will also be critical to get your application in order before you file it because the time period to correct application deficiencies and classification will be reduced to one month. If this is exceeded the application will have to be re-filed and a further application fee incurred.


Thursday, September 11, 2008

Nominet DRP gets easier and cheaper....

Sorry I have been on my hols - now back and blogging away.

Nominet is the registrar for all domains ending in co.uk. They have the power to order transfers of domain names that are in dispute. This is a large amount of power particularly when domain names can be transfered for a great deal of money on the open market. Recently Tell.com sold for around £200,000.

Understanbly, given the potential value of some domians you get disputes over who should be the proper registrant of the domain name. Many organisations have been frustrated by registrants squatting on their domains and turn to the Nominet Dispute Resolution Procedure for assistance. This policy which provides a formal procedure to resolve ownership disputes changed from August 08. To have a domain name transferred a claimant should prove that the registrant has either abused the registration system or abused the use of the domain following registration. (This is different to ICANN, which regulates top level domains where you have to prove both)

The main change since August is the introduction of a summary decision from an expert where there has been no response from a defendant. This costs £200 plus VAT as opposed to the full mediation cost of £750 plus VAT. In addition much of the dispute resolution procedure can now be followed online including the submission of evidence. www.nominet.org.uk/disputes/drs/policyprocedurechanges

Nominet have also clarified point on what amounts to abusive registration including where are domian name is likely to confuse people that a domian is associated with a brand owner or even threatening the same.

These changes are welcome and the clarification reflects the recent cases.

Friday, August 01, 2008

Weak Trade Marks can leave a sour taste

A recent case (June 2008) has highlighted why you should always assess the strength of your trade mark before enforcing your rights.

Devon County Council were sued for copyright and trade mark infringement by a local businessman. The Businessman had registered "Devonshire Flavour" as a trade mark in relation to certain foods and drinks.

DCC counterclaimed by arguing that the trade mark should not have been registered in the first place and as such was invalid. There argument was that the mark was not distinct as it described the characteristics of the goods that are being supplied under the trade mark. The judge agreed and was particularly damming saying the mark was "hopelessly invalid".

The judge also agreed with the argument that the mark was used by DCC in relation to different goods and services to those registered so that there was no use of the trade mark.

Therefore, the claimant has wasted an application fee for the trade marks and is likely to have a significant costs award against him for losing to DCC.

It shows that you have to think very carefully what mark you are going to use and which classes of goods and services it will be used for.

You may get a trade mark registered but that does not mean it gives you any rights or is enforceable.

Obviously living in Devon this case is of local interest to me and shows the breadth of registrations that a new product or business has to negotiate.

Thursday, July 24, 2008

WOW

Look what I stumbled upon......

Google now has a patent search facility

www.google.com/patents

A central and translatable patent search facility could be very useful for companies developing new technologies to check what already exists.

However this is still a 'beta' version and is not in a position to replace Patent Attorney searches.

In my opinion Google's services just keep improving!

ICANN means YOU CAN!

On the 26th June 2008 ICANN (Internet Corporation for Assigned Names and Numbers) decided that it would open up Top Level Domians (TLDs) so that anyone could apply to operate a TLD. In theory you will be able to have nearly anything as a TLD for example a www.xybc.law domain, .firm or .brand.

The expectation is that the first applications will be received in the second quarter of 2009 and the first sunrise periods will occur at the beginning of 2010.

A sunrise period is the period before a new TLD goes live when Trade Mark owners and well established businesses have a preferential rights to purchase a domain name which incorporates that trade mark/name. However, this is still a first come first served basis. Ie Nestle, Volkswagen and Ralph Lauren all want ‘polo’ domain names.

Most commentators are of the view that .com will remain the TLD of choice and is still the best brand for companies. However, new TLDs will mean there will be further similar domains coming into existence and brand owners should look to acquire new domian names for their brands utilising the Sunrise Periods to prevent others from registering them and thus diluting their brands.

I expect you will have read about the much publicised www.narnia.mobi dispute.

Wednesday, July 23, 2008

Pro-Patent decision a warm welcome.

The House of Lords has recently passed down a decision that will help UK patent owners. The case has given guidelines on the test for obviousness when the validity of a patent is being attacked.

A quick recap: in the UK something is patentable if it is novel, has an inventive step (ie it is not obvious), is capable of industrial application and is not excluded by law (ie discoveries or games)

In nearly all claims of patent (or other intellectual property for that matter) infringement the defendant will always counter claim with an attack on the validity of a patent. There argument will be that the patent is not new because of the following prior art and that the in any case the patent is obvious and therefore should not have been granted in the first place.

The case in question should mean that it is more difficult to attack a patent on grounds of obviousness which is good news for patent owners. Of course if there is prior art that anticipates the patent then validity will still be attacked.

This is good news as many commentators were questioning the value of patents because they are always attacked in counterclaims.

Any patent litigation is still very expensive.

Thursday, June 19, 2008

Astroturfers are sent off?

Astroturfing is the process where by a retail or service provider leaves fake and very favourable feedback about their own goods and services. From people I have talked to this is a wide spread practice and concumers are aware not to fully trust very positive feedback.

However, new legislation may have made this practice illegal. The Unfair Commercial Practices legislation says that you are not allowed to deceive or make false represenations about products. This would seem to encompass astroturfing.

Don't panic though. The OFT have to police the legislation and are unlikely to investigate such practices.

Monday, June 09, 2008

Commuinty Trade Mark to become cheaper?

Apparently the Office of Harmonisation for the Internal Market, which oversees Community Registered Trade Marks and Registered Designs, has a surplus of €300m from application fees.

As a result there are plans to reduce the cost of a Community Trade Mark Application. On the face of it this seems like a good thing but if the application becomes cheaper, logically, more people will apply. However, with more applications, presumably, there will be more oppositions, registrations and potentially a dilution of marks. So I would question whether this reduction in fees will be beneficial?

We will see if, during the difficult economic climate, whether such a reduction ever comes to fruition....

Thursday, June 05, 2008

Community Design Rights - a further erosion?

Following the narrow interpretation of what consitutes a "different overall impression" earlier this year there appears to be a further erosion of the strength of a Community Registered Design (CRD).

A recent case regarding plastic balls for tumble dryers has clarified that any pre-dating design, no matter what field of industry, can be used to destroy the novelty of a design and thus provide an opportunity to invalidate the registered design.

Obviously, this widens the scope of what represents prior art and is compounded by the numerous states that the CDR encompasses. In this case a massage ball was used to invalidate the CDR for the tumble dryer ball.

I believe this makes product clearence searches for pre-existing designs almost impossible to do without significant risk.

However, if a Patent is not available or is too expensive then CDR and UK registered designs are still the next best protection despite the erosion.

Data Protection - a new era

After a number of Data Protection 'boobs' including the high profile child benefit data scandal, the Information Commissioner is being given new powers. The Data Protection Act is overseen in the UK by the Infomation Commissioner who is responsible for enforcing the DPA. The DPA requires businesses to comply with the 8 Data Protection Principles which includes the duty to keep personal data secure.

On the 8th May 2008 the Criminal Justice and Immigration Act was passed by parliament ammending the Data Protection Act 1998 (DPA). This legislation facilitates a new system of fines that can be levied on businesses that knowingly or recklessly disclose personal information.

These powers do not come into force until secondary legislation is brought in to give effect to it so do not panic just yet.

However, adverse publicity can still be seen to be the most powerful deterrant to non compliance.

Tuesday, June 03, 2008

New Legislation could help intellectual property owners to enforce their rights.

The Consumer Protection from Unfair Trading Regulations (CPUTR) and The Business Protection from Misleading Marketing Regulations came into force on the 26 May 2008 with the aim of protecting consumers and suppliers from unfair commercial practices.

One of the most interesting prohibited activities provided in the legislation is "Faking Goods" ie "Promoting a product similar to a product made by a particular manufacturer in such a manner as deliberately to mislead the consumer into believing that the product is made by that same manufacturer when it is not" (Schedule 1, para 13 CPUTR). This activity is considered 'unfair' in all circumstances.

This could be equated to a 'passing off action' for similar get up or a design right infringement action. However, the main difference is that the rights owner cannot enforce this legislation themselves. The Office of Fair Trading has been given the power to enforce this legislation so all a rights holder can do is to report an offender to the OFT.

There will also need to be some case law to interpret what is meant by 'deliberatly mislead' as this is not included in the definitions contained within the legislation. I suspect that this will, in practice, be difficult to prove.

The sanctions for breach of these laws includes a maximum of 2 years imprisonment and a £5,000 fine so are not to be taken lightly.

Obviously having the OFT taking action against a third party infringer is cheaper than enforcing the rights yourself. However, the OFT's ability to investigate and enforce is limited to the resources they have available and so any action could be too late to prevent irreparable damage to your products or goodwill.

However, this is an extra weapon to be used in the war on piracy and counterfeiting and is probably something that should be considered in conjunction with civil action.

Nominet joins the 21st Century

On 25 June 2008 Nominet (the body that oversees .co.uk domains) will be replacing the laborious system of paper based domain name transfers with an online system. This brings Nominet in line with the transfers of top level domians. (ie .com)

The fee will be the same (£10 per transfer) but the administration burden should be dramatically reduced without the need for letters of confirmation from the assignor and assignee. The bulk transfer fee is also being reduced from £22 to £10.

This move is to be welcomed and not before time.

Monday, June 02, 2008

Online content ratings

There is a new voluntary classification scheme for online content run by the British Board of Film Classification http://www.bbfc.co.uk/bbfcOnline/bbfcOnline.php

Many of the major studios have signed up already.

I would question whether this offline classification system is transferable to an online environment with content being accessible anywhere in the world.

Piracy - a new gamekeeper?

The general rule is that IP owners have to police and enforce their own rights through the civil courts, but a recent case brought by Hertfordshire County Council under money laundering legislation showed that criminal proceedings can be just as effective.

In that case the directors of a company were found guilty of money laundering because they received rent which was paid from the proceeds of selling pirated and counterfeit goods on the market stalls.

This also acts as a warning to landlords who receive rent from tenants they consider to be "dubious". The maximum prison sentence if found guilty is 14 years!

This is a very new area of law and there is an appeal underway. So watch this space!

Thursday, May 22, 2008

Trade Mark Law - A New Amendment

The 'snapily' titled "The Trade Marks (Earlier Trade Marks) Regulations 2008" has recently come into force.

Does it change the face of trade mark law in the UK? Not likely. It merely amends the procedure of "use conditions" for Madrid applications designating a Community Trade Mark.

Wednesday, May 21, 2008

Social Networking, Profile Portability and the Law

As so called Facebook and Myspace fatigue sets in there are numerous 'niche' social networking sites setting up and taking hold.

These start ups concentrate on particular industries or activities that people have in common but with each comes different and unique legal risks. Apart from Data Protection the main risks lie in the User Generated Content (UGC) that is usually the key to the success of the site. Some of the main copyright issues of UGC have been addressed by the big players but there are risks beyond copyright infingement.

For example www.forkd.com (which I really like) provides culinary networking - allowing users to share and amend recipes. Immediate questions that spring to mind include what happens if someone has an allergic reaction to the ingredients in a recipe or worse they are maliciously poisonous?, what if the recipes are copied from the latest Gordon Ramsey or Jamie Oliver? I could go on....... I am sure that forkd's lawyers have already considered these issues in detail and this is by way of example only.

Apart from the classic tale of how to monetise these businesses there are very different problems associated with the user generated content that is being published depending on the type of content.

My view is that these risks can be managed effectively in the terms and conditions of membership but with a global membership there may be different jurisdictional and dietary problems.

One problem that has not currently been addressed is whether profile portability (whereby I can log onto other social networks using the information in my existing profile) will incorporate acceptance of these additional terms and conditions.

For example if I sign up to Myspace and then port my profile to Forkd have I accepted the Forkd terms and conditions of use?

No doubt this will work on a practical level but it always seems to be that the legal position is always following the real life position. As with all new enterprises the directors will have to balance risk versus reward.

Tuesday, May 20, 2008

No Trade Mark Protection for Keywords in the UK and Ireland

May the 5th can be seen as a seminal point in trade mark history in the web 2.0 epoch. No longer does Google have a policy of disabling keywords for registered trade marks following a substantiated complaint.

All previously disabled keywords will now be enabled allowing competitors to purchase each others brand or trade names as keywords.

Google has provided an explanation for this change in policy here:
https://adwords.google.com/support/bin/answer.py?answer=92877

My personal view is that this is in response to the Mr Spicy case (see previous Blogs on this) which held that a search engine was not liable for selling keywords that were registered trade marks as they were using the mark in relation to different goods and services. Obviously, the administration burden on Google in dealing with these complaints is dramatically reduced.

A number of commentators have suggested that this re-enablement will increase the cost of advertising via keywords because the brand owner will have to bid against their own trade marks with competitors.

All is not lost however as Google will still be providing a courtesy investigation into complaints where registered trade marks are used in the wording of the actual advert but not the keyword.

What is untested is whether a trade mark owner can take civil action against a competitor (leaving Google out of the picture) who purchases a keyword for that trade mark. Logic would dictate that such a claim would be successful if the competitor is using an identical trade mark for a keyword in the course of trade (ie to further its business).

Whether the purchase of a keyword infringes a trade mark for similar marks that confuse the public is another matter, especially where keywords are hidden from the public in the coding.

This is a very uncertain area of IT and trade mark law. There must be a test case in the pipeline to determine whether a competitor is infringing a trade mark by purchasing it as a keyword........

Until then...... watch this space!

Monday, May 19, 2008

Software as a Service - Law as a Product

I was sat drafting a service agreement for the provision of a database service and noticed that there is a reciprocal change in attitudes to the way software and legal services are provided.

Software as a service is not a new concept but it requires a very different legal framework compared to your standard shrink-wrap or click-wrap licence agreements. Software as a service is nearly always a hosted service and therefore a click-wrap licence is required, normally with a service level agreement (ie what is the uptime and fix-time etc) rather than your normal product warranties and specification agreement. The Software Service agreement will not require a maintenance agreement as the supplier is the host and therefore maintains the servers etc. This avoids at least one legal agreement but, I believe, puts a lot more emphasis on the software service supply agreement and the warranties that are given under it.

Conversely, there is a move, in forward looking law firms, to "productise" their services and move away from the by the hour charges to fixed fee products. ie we will provide you with E-commerce terms and conditions for £[x]. This is obviously a world a way from the normal hourly rate basis but it can be seen to be making legal services or products more accessible, more transparent and more affordable. Transparency can be seen as a USP with law firms and this might repair the view that lawyers are "ambulance chasers". Transparency in the Software Industry can be equated to interoperability and API access and, I believe, this improving consumer relations. Therefore, these changes in supply, in the main, should be welcomed.

Unfortunately/Fortunately, depending on your point of view not all legal products will be capable of being productised and, at present, not all Software can be provided as a service.

What's next? Licence free software - oh I forgot we are already there : )

Tuesday, May 13, 2008

Glossary for Intellectual Property

I thought it would be useful to compile a list of commonly used abbreviations used in Intellectual Property and Technology Law.



Feel free to add additional abbreviations:



IP - Intellectual Property

IPR - Intellectual Property Rights

TM - Trade Mark

WIPO - World Intellectual Property Organisation

EPO - European Patent Office

Madrid - a worldwide trade mark application under the Madrin Convention

CTM - Community Trade Mark

UKIPO - UK Intellectual Property Office

OHIM - Office of Harmonisation of the Internal Market (administrate CTM and CDR)

CDR - Community Design Right

There are many more.

Trade Mark Trolls and Trade Mark Poaching

Trade Mark Poaching – A New Trend?

Trade marks and trade names are valuable commercial assets that instantly distinguish your goods or services from your competitors. As people become more savvy in intellectual property we are seeing an increasing number of businesses attempting to unfairly acquire trade marks by using “Trade Mark Poaching”. Others are calling these operators "Trade Mark Trolls".

These unscrupulous operators want to steal or takeover your trade name/mark and piggy back on your hard earned goodwill.

This takeover usually occurs in the first few years of a business using a new trade name or unregistered trade mark, often with a web presence.

Typically the business is contacted by a third party, often via a trade enquiry requesting information.

The third party then uses this information to set up their own business with the same or very similar name and applies to register the name as a trade mark.

Once registered the third party writes to the original business with a claim of registered trade mark infringement and a request to stop using the mark.

Few people would argue that this practice is fair and, unsurprisingly, there is remedy under trade mark law. A registered trade mark can be invalidated for ‘prior early rights’ or ‘bad faith’.

Unfortunately, both of these invalidity provisions are inherently difficult and costly to prove and it is up to the trade mark/name owner to act as the “Game Keeper”. The police are unlikely to be interested unless you have proof of fraud or deception.

More useful, are the steps any business can take to lessen the risk of trade mark poaching. The best step is to register a trade mark with the UK Intellectual Property Office at the outset. The registry operates a ‘first come first served’ basis so once you have a ‘filing date’ it is far more difficult for a third party to register your name for the same goods or services.

In addition employing trade mark watching services on your trade marks or trade names allows you to identify predatory trade mark applications prior to registration. You can then object to the application during the formal 3 month opposition period.

Of course, keeping records of the development and use of the trade mark/name is good practice and a way of showing earlier rights to a name/mark.

Trade mark law is still relatively young and the boundaries are constantly changing, so there is always plenty of room for legal argument about the validity of registered trade marks.

Poachers are aware of these grey areas and the cost of challenging the validity of a registration so unfortunately Trade Mark Poaching continues to be a real problem for hard working business entrepreneurs.

What is Intellectual Property Worth?

Here is an article I wrote on the value of Intellectual Property (IP):

A business’ intellectual property (IP) is always seen as hugely valuable as IP represents 7% of the national economy, approximately £60 billion. It can certainly give you the competitive edge to stand out in an ever crowded market place.

IP rights are now coming to the forefront of the Government’s economic strategy with Alistair Darling mentioning the creative industries twice in the first 5 minutes of his recent budget speech.

There is even a Minister for Intellectual Property, Baroness Morgan of Drefelin who said recently “The government is committed to safeguarding the intellectual property rights of those who make a living from their creativity, ensuring the long term economic viability of our creative enterprises”

Creative industries rely heavily on IP rights to protect their output and allow commercial exploitation of their endeavours. They appreciate the importance of IP rights, especially the protection of trade marks in a global market.

I think the United Kingdom Intellectual Property Office which oversees registration of IP rights in the UK sum up IP nicely as the “ingredient that turns knowledge into assets”.

Adding IP assets “Can account for as much as 80 per cent of the value” of a business.

IP rights are mainly national and range from trade marks and patents to know-how and design rights.

It is critical for any business to identify their main commercial markets, and if practicable, apply for protection in these areas.

I see IP in three stages:
  1. creation and development,
  2. exploitation and
  3. enforcement

But IP is more than just an asset for the balance sheet. It can:

  • attract investment or suitors
  • provide something tangible in commercial agreements
  • recoup money spent on R&D
  • create and maintain brand identity
  • and secure and preserve market share.

However the value of any IP is determined by who owns it and your ability to enforce your rights. There are various types of legal ownership, with many grey areas and importantly joint owners have restricted rights.

However, enforcement is critical otherwise word will spread to competitors that you are a soft touch.

Intellectual Property in the UK

Hello and welcome to my blog on all things relating to intellectual property and technology law in the UK.

For those that don't know intellectual property relates to the law that turns your ideas into commercial assets. You can not protect the idea itself only the elements that make up or give effect to this idea.

I will be commenting on the latest developments in UK copyright, patent, trade mark, design, e-commerce and technology law. Some of these rights require registration and a great place to get further information is the UK Intellectual Property Office. http://www.ipo.gov.uk

Already this year there have been a myriad of developments, with major changes to interpretation of design law and domain names. The UK government is also undertaking a comprehensive review of copyright laws for the digital age.

Rather than watch this space it is a matter of "WATCH THIS BLOG"

Here is a quick link to my online profile:
http://www.foot-ansteys.co.uk/index.cfm/solicitors/People.Details/staff_id/120