The Furniture Industry and IP

High Wycombe

Map Wikipedia

This is the first of a series of articles about the communities and industries of South East England and how IP relates to them.  This post focuses on High Wycombe and its neighbourhood which is best known for furniture making.   According to the Wycombe District Council website, furniture has been manufactured in the district since the 17th century. Despite competition from other parts of the UK and abroad furniture making in Wycombe is still going strong.

Legal Protection
The reason for the industry's success is its reputation for quality and design.  That reputation results from considerable investment in technology, product design and marketing for which the industry requires robust legal protection.  Investment in new technology is protected by patents which may be granted by the Intellectual Property Office ("IPO") in Newport or the European Patent Office ("EPO") in Munich. New designs may be protected by registration with the IPO as registered designs or the Office for Harmonization in the Internal Market ("OHIM") in Alicante as registered Community designs ("RCD"). Brands are protected by the registration of distinctive signs as "registered trade marks" with the IPO or as "Community trade marks" ("CTM") with OHIM.  Copyright is also important to the furniture industry as the artwork for fabrics and other surface decoration are artistic works and some items of furniture may be works of artistic craftsmanship.

Patents
A patent is the monopoly of a new invention. It confers the exclusive right to make, sell, import or use the invention.  An invention may be a product or a process.  Patents may be granted for the United Kingdom by the IPO or the EPO. It is not yet possible to get a patent for the whole European Union but it is already possible to apply to the EPO for patents (known as "European patents") for the same invention in up to 38 European countries and it should soon be possible to apply to the EPO for a European patent for (which will be known as a "unitary patent") for the territories of most of the countries of the EU including the UK.

Designs
There are at least 6 ways of protecting designs in the United Kingdom:

• new designs having individual character may be registered with the IPO for the UK alone as registered designs under the Registered Designs Act 1949;
• new designs having individual character can be registered with OHIM for the whole EU as RCD under the Community design regulation;
• designs that could have been registered with the IPO as registered designs or registered with OHIM as RCD are protected from copying throughout the EU as unregistered Community designs ("UCD") by virtue of the Community design regulation;
• original designs of aspects of shape or configuration of 3-dimensional articles are protected within the UK from copying by unregistered design right pursuant to Part III of the Copyright Designs and Patents Act 1988 ("CDPA");
• the artwork for fabrics, floor and wall coverings and other surface decoration is protected from copying in the UK by copyright pursuant to Part I of the CDPA; and
• works of artistic craftsmanship within the meaning of s.4 (1) (c) of the CDPA which might include some items of furniture are protected in the UK as original artistic works by Part 1 of that Act.

Registration of a design as a registered design or RCD confers the exclusive right to use the design and "use" for this purpose means "making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes." Designs may be registered as registered designs or RCDs for an initial term of 5 years which can be renewed for further 5 year terms up to a maximum of 25 years. Registration of a design with the IPO confers that monopoly for the UK alone. Registration with OHIM confers that monopoly throughout the EU including the UK. UCD subsists in a new design for 3 years from the date upon which the design was first made available to the public in the EU. Unregistered design right subsists for a total of 15 years unless articles made to the design are offered for sale or hire within the first 5 years of that term in which case design right subsists for 10 years from the end of the year in which such articles were first made available to the public. In the last 5 years of the term anyone in the world can apply to the design right owner for a licence to make articles to the design as of right. If the terms of such licence cannot be agreed they are determined by a hearing officer appointed by the the CEO or Comptroller of the IPO.

Copyright
Artistic copyright subsists for the life of the person who created the design plus 70 years. However, s.52 of the CDPA limits the term of the copyright of any artistic work that was or could have been registered as a registered design or RCD to 25 years. S.52 has been repealed by s.74 (2) of the Enterprise and Regulatory Reform Act 2013 following the decision of the Court of Justice of the European Union in Case C168/09 Flos SpA v Semeraro Casa e Famiglia SpA [2011] ECDR 8, [2011] RPC 10, [2011] EUECJ C-168/09. The repeal has not yet taken effect and the government is consulting on when the repeal should take effect (see Jane Lambert "Flos putting us all through the Mill" 17 Oct 2014).

Trade Marks
A trade mark is a sign that can be represented graphically which is capable of distinguishing goods or services of one undertaking from those of others. Examples include words (including personal names), designs, letters, numerals or the shape of goods or their packaging. Signs are registered in relation to specified goods or services. Registration of a sign with the IPO as a registered trade mark confers the exclusive right to use that mark in the UK relation to the goods or services for which the mark is registered. Registration with OHIM confers the exclusive right to use that mark in relation to such goods or services throughout the EU. "Use" includes labelling, advertising and point of sale marketing.

Enforcement
The rights mentioned above may be enforced by civil proceedings of the courts of the country where an infringement is threatened or takes place.  Remedies include injunctions (orders of the court to do or refrain from doing specified acts punishable by fine or imprisonment if disobeyed), damages (compensation for loss or damage resulting from the infringement) or an account of profits (surrender of benefits of infringement) and costs. In England and Wales claims up to £500,000 may be brought in the Intellectual Property Enterprise Court ("IPEC") where trials are limited to 2 days and recoverable costs capped at £50,000. IPEC has a small claims track for trade mark and copyright claims up to £10,000 where recoverable costs are limited to a few hundred pounds. All other claims should be brought in the Chancery Division of the High Court. Patent and registered and RCD claims over are reserved to a special tribunal of the Chancery Division known as the Patents Court. Claims relating to the new unitary patent and eventually all European patents will be determined by a new Unified Patent Court consisting of a Court of First Instance and a Court of Appeal. The Court of First Instance will be based in Paris with a section in London and other chambers throughout the EU.

Criminal Proceedings
Piracy (copyright infringement on an industrial scale) and counterfeiting (trade mark infringement on an industrial scale) are offences in the UK and most other industrial countries. Since the 1 Oct 2014 intentional copying of a registered design or RCD has also been an offence in the UK. Prosecutions are brought by local authority trading standards officers or privately. It is not an offence to infringe a patent, unregistered design right or other intellectual property right in the UK.

Further Information
From time to time we hold workshops and publish guidance on issues that affect particular industries. Issues that we have identified as of particular interest to the furniture industry in High Wycombe and the rest of the UK are the unitary patent, the repeal of s.52 and the new offence of intentional copying. If there is sufficient interest we shall hold seminars in the town in conjunction with local patent and trade mark attorneys and solicitors. In the meantime, if anyone wants to discuss those issues or IP law in relation to furniture manufacturing and distribution generally he or she should call me on 020 7404 5252 or message me through my contact form.

Get your free intellectual property rights

Jane Lambert

Everyone knows that patents, trade marks and registered designs have to be registered, that applications for patents and trade marks are examined, that all those registrations can be challenged and that it all costs money. But there are some intellectual property rights ("IPR") that cost nothing and these should be considered when budgeting for the protection of intellectual assets.

Non-registrable Rights
These fall into two groups:

• those created by a succession  of judicial decisions (sometimes called "common law") such as the right to enforce and obligation of confidence or bring an action for passing off; and 
• those created by British or EU legislation such as copyright, design rights, database rights and unregistered Community designs.

Some rights are alternatives to registrable rights such as the obligation of confidence and patents.  Others supplement registrable rights such as the law of passing off and trade marks. I will consider each class of intellectual asset - that is to say, brands, design, technology and creative works - in turn,

Brands

Trade marks, business names, the get up of products, the layout and livery if business premises or other distinguishable signs can be protected by the law of passing off. The right to bring an action for passing off arises in the following circumstances:

• consumers of a product or service associate a supplier or its products or services with a particular sign;
• a competitor misleads such consumers by offering goods or services under a similar sign; and
• the supplier loses sales or suffers some other kind of loss and damage.

The action of passing off can sometimes be used to protect signs that cannot be registered as trade marks but there are two drawbacks. The first is that the action can only be brought once consumers have begun to associate a business or its goods and services with a particular sign. That is not always easy for start-ups or other small businesses. The second drawback is that complainants have to gather a lot of evidence about their goodwill or reputation and the alleged misrepresentation before an action can be launched. Thus, a passing off action tends to be more complex and expensive than an action for trade mark infringement.

Design

There are five ways in which designs can be protected in the UK:

• new designs having individual character can be registered under the Registered Designs Act 1949;
• new designs having individual character can be registered as registered Community designs under the Community Design Regulation;
• designs that could be registered as registered designs or registered Community designs are protected from copying throughout the EU for up to 3 years as unregistered Community designs by the Community Design Regulation;
• aspects of shape or configuration of the whole or part of an article can be protected from copying by unregistered design right for between 10 and 15 years under Part III of the Copyright Designs and Patents Act 1988; and
• artwork for textiles, wall coverings and also surface decoration may be protected from copying as copyright works for the life of the author plus 70 years under Part I of the Copyright Designs and Patents Act 1988.

Registration of a design as a registered design confers a monopoly of  a design whereas the other rights confer protection only against copying. The significance of the distinction is that a monopoly may be infringed by making, selling, importing, exporting, using or stocking a product that looks like a registered design even even without copying. The other rights are infringed only where copying has occurred and that is not always easy to prove. 

Technology

Patents are monopolies that are granted for disclosing a new invention to the world. The law of confidence is the very opposite in that it can be used to keep technical information secret. An obligation of confidence arises when A ("the confider") discloses technical or other information that is not generally known the use or disclosure of which could harm the confider or benefit a third party ("confidential information") to B ("the confidante") expressly in confidence or in circumstances giving rise to an on obligation of confidence. The obligation continues for so long as the information remains secret. If is breached by using the information for a purpose other than the one for which it was disclosed or by passing it on to a third party without the confider's consent or other lawful excuse. The obligation subsists for so long as the information remains secret. One legitimate way of learning a business secret is by buying a product, taking it apart to see how it was made and reverse engineering it. There are however some products that cannot easily be reverse engineered such as food and drink. The recipes for chartreuse and Coca Cola have been kept secret for centuries.

Some new technologies such as computing and financial services cannot easily be protected by patents in the UK at any rate. The source code of a computer program is generally kept secret while the code itself (whether in digital impulses or human readable form is protected from unauthorized reproduction by copyright.

The casing and circuity of products with a short shelf life such as mobile phones, toys and consumer electronics can be protected from copying by unregistered design right.

An intellectual property right that can be used t protect compilations of data are database rights - that is to say the right to prevent unauthorized extraction and re-utilization of data held on databases.

Works of Art and Literature

Original artistic, dramatic, literary and musical works, broadcasts, films and sound recordings and published editions of typographical works can be protected from copying and other restricted acts for varying terms by Part I of the Copyright, Designs and Patents Act 1988.

Actors, dancers, musicians, singers and other performers can object to the unauthorized broadcasting, filming or taping of their performances by Part II of the Copyright, Designs and Patents Act 1988.

Publishers of an unpublished work in which copyright has expired are protected from unauthorized copying and other restricted acts by publication right.

The provisions relating to copyright, database right, publication rights and rights in performances are set out in an informal consolidation published by the Intellectual Property Office.

Intellectual Property Insurance

As with all IPR it is essential to consider how they will be enforced.   In the case of a new business that is best achieved by before-the-event insurance.

Further Information

Should anybody want to discuss this article or any of he topics mentioned or referred to call me on 020 7404 5252 during normal business hours. You can also contact me through my contact form or message me through Facebook, G+, Linkedin, twitter or Xing.

Someone has stuck one of my photos on his website without my permission. What do I do?

A Brownie Box Camera                                Source Wikipedia

Jane Lambert

It is amazing how often I am asked this sort of question. The topic comes up at least once a month at one of my IP clinics.  I am tweeted about it.  I get messages about it through my contact form.   Occasionally, I get the converse question: "I have just had a bill for a lot of money from an image library? Should I pay?"

Until recently the advice to both sides would have been as follows.   "The cost of litigation is prohibitive." I would have urged photographers to let it go. I would have advised alleged infringers to take no notice for nothing was likely to come of the complaint.  I now give different advice for two reasons.  First, the small claims track provides a low cost and virtually risk free forum for photographers and other copyright owners to pursue their claims for copyright infringement.  Secondly, His Honour Judge Birss QC awarded substantial damages for copyright infringement in Hoffman v Drug Abuse Resistance Education (UK) Ltd [2012] EWPCC 2 (19 Jan 2012) which serves as a deterrent to copyright infringers and an incentive to copyright owers.

The starting point for any discussion on this topic is that photographs are included within the definition of "artistic works" in s.4 (1) (a) of the Copyright Designs and Patents Act 1988 ("the CDPA").  S.4 (2) defines a photograph as "a recording of light or other radiation on any medium on which an image is produced or from which an image may by any means be produced, and which is not part of a film."  So long as the photograph is original in the sense that it is not copied from an antecedent work and the photographer is a citizen or resident of the UK or some other country that is party to the Berne or other copyright convention to which the UK is party then copyright will subsist in the photograph as "an original artistic work" for the life of the photographer plus 70 years.

Copyright in an original artistic work is infringed by any of the acts mentioned in s.16 (1) of the CDPA. These include copying the work, issuing copies of the work to the public, communicating the work to the public and making an adaptation of the work without the copyright owner's permission. If you do any of those acts during the life of the author plus 70 years the copyright owner can claim an injunction (an order from the court to refrain you from doing or repeating the act complained of on pain of punishment for disobedience). damages (that is to say, compensation for the loss or damage that the owner has incurred), costs or other relief.

Now damages for infringement of copyright are intended to put the injured party in the position he would have been in had the infringement not occurred. In the case of a photographer that is computed on the amount a willing user would have paid a willing photographer bargaining at arms length.  In Hoffmann the judge assessed that figure at £10,000 which was considerably less than the £28,000 that the photographer had claimed (see Jane Lambert "Damages for Infringement of Copyright in Photographs: Hoffmann v Drug Abuse Resistance" 25 Jan 2012 NIPC Law). I hasten to add that not all photographers would get that fee. These were rather special photos.

The small claims track of the Intellectual Property Enterprise Court ("IPEC"), which has replaced the Patents County Court, will entertain claims for injunctions and damages or other pecuniary relief for up to £10,000.  I have written extensively about this jurisdiction in a number of articles which I have listed in Patents County Court - the New Small Claims Track Rules 20 Sept 2012 NIPC Law. In "How to bring a Small Claim in the Patents County Court"  12 Oct 2012 I set out a simple step by step guide to bringing an action in the small claims track from the letter before claim to a hearing in The Thomas More Buildings of the Royal Courts of Justice.

It is important to note two developments since I wrote those articles.  First, the jurisdiction of the small claims track increased from £5,000 to £10,000 on the 1 April 2013.  Secondly, IPEC including the small claims track is part of the Chancery Division of the High Court of Justice and not a county court.

I shall be presenting a webinar on the small claims track for the Institute of Trade Mark Attorneys on 12 Nov 2013 between 12:00 and 13:00. I shall also mention copyrights generally in my seminar on "Creative Output - Copyright and Related Rights" at 4-5 Gray's Inn  Square between 16:00 and 18:00 on 30 Oct 2013. If you want to discuss this topic generally or have a specific question to ask, call me on 020 7404 5252 or 023 9316 2030 during office hours. You can also tweet me, write on my wall or send me a message through G+, Linkedin or Xing.

What is IP? Why do Folk want it? How do they get it? How to learn more?

Jane Lambert

What is IP?
Intellectual property ("IP") is the umbrella term for the bundle of laws that protect investment in intellectual assets.

OK! What are Intellectual Assets?
These are the things that give one business a competitive advantage over others. They can be grouped into four categories:

• Brands
• Designs
• Technology, and
• Creative works.

Why do Folk want IP?

If you have spent a fortune on developing a drug or making a film you do not want competitors to counterfeit your medicine or pirate your movie. You want the law to stop them and that is what IP does.  

However, intellectual asset owners do not have it all their way. Consumers and competitors also have interests. The law strikes a balance between those competing interests by limiting the duration, providing exceptions or otherwise restricting your exercise of IP rights ("IPR").

How do you acquire IP?

Some IPR come into being automatically.   Good examples are copyright and the right to bring an action for passing off.   Other IPR such as patents, trade marks or registered designs require registration at the Intellectual Property Office ("IPO") or some other national or intergovernmental IP office.

Tell me more about those IPR
A copyright is the exclusive right to copy, publish, rent, lend, communicate to the public, perform or adapt an original artistic, dramatic, literary or musical work, a broadcast, film or sound recording or typographical arrangement.   That is how the law protects creative output, that is to say the work of artists, authors, broadcasters, composers, computer programmers, film makers, publishers and recording artists.

Passing off is misrepresenting your goods or services as those of another supplier by adopting the same or similar name, trade mark, style of packaging or other presentation.   It is one of the ways the law protects brands.

Patents are monopolies of new inventions which can be either new products or processes.   They are one of several ways in which the law protects new technology.

Trade mark registration is another way of protecting brands.   A word, logo or other sign is registered as a trade mark for specified goods or services with the IPO.   Registration confers the exclusive right to market the specified goods or services under the mark.

A product design can be registered at the IPO if it is new and has individual character.   It is one of the ways the law protects ornamental as opposed to functional designs.

Remember that there are lots of other IPR and this is just an introduction to the IPR that we have discussed.

How can I find out more?
I gave an introductory talk on IP on the 26 June 2013 and you can download my slides and handout here. I am running follow up talks at 4-5 Gray's Inn in London between 16:00 and 18:00 on the following days:

• 25 Sept 2013 Branding law: trade marks, passing off, geographical indications, domain names etc;
• 30 Oct 2013  Creative output: copyrights, rights in performances and related rights; and
• 27 Nov 2013 Technology: patents, trade secrets, design rights, semiconductor topographies, plant breeders' rights etc.

If you want to catch the talk on branding law you have to move fast as we have only 3 places left but there is still room on the other two classes.

Getting in touch

If you have a specific enquiry call me on 020 7404 5252 or send me a message through my contact form. I can also be contacted through twitter,Facebook, G+, Linkedin and Xing.

Related Articles

Jane Lambert  "Introduction to Trade Marks" 9 Oct 2013
Jane Lambert  "Introduction to Design Law" 10 Oct 2013 London IP and Technology Law