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 (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:

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.

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: