Representing yourself in Intellectual Property cases

Jane Lambert

Since the Access to Justice Act 1999 came into force more and more people have had to go to court without a lawyer.  Those who represent themselves in court are known as "litigants in person". The following guides have been produced for such  persons:  A Handbook for Litigants in Person published by the Judicial Studies Board and A Guide to Representing Yourself in Court ("the Guide") by the Bar Council.

Intellectual Property
Those guides are very useful and should be read by litigants in person in any type of case. However, they do not cover intellectual property ("IP") proceedings which is a pity because IP has rules and practices that differ from other types of dispute resolution. The purpose of this article is to supplement both publications and, in particular, the Guide. This article covers intellectual property proceedings in the civil courts and Intellectual Property Office ("IPO") tribunals. It does not cover proceedings in the European Patent Office ("EPO") or the Office for Harmonization in the Internal Market ("OHIM").

How to use this Article

Use this article in conjunction with the Guide. When I mention sections and paragraph I am referring to sections and paragraphs in the Guide. Treat this article as though it were an addendum to Section 4.  The disclaimer on the inside cover which is headed "Disclosure" (probably a misprint) applies equally to this article.

Section 1: How to find free or affordable help with your legal problem

Free legal advice and representation

Specialist legal advice on IP can be obtained from IP clinics run by the Chartered Institute of Patent Attorneys ("CIPA") and other bodies. Our chambers have run monthly clinics in London in conjunction with Middlesex University which we hope to resume in the New Year. We also run a regular clinic on the second Tuesday of every month in Barnsley. If you want to attend one of our clinics call George Scanlan on 020 7404 5252 during regular office hours or use our contact form. For more information on basic advice and information on IP in South East England, please read "Where to get free basic Information on Intellectual Property" 18 Dec 2014.

Paying for legal services

It is unlikely that any household policy will cover advice on IP. In fact, most legal indemnity policies for businesses specifically exclude IP. If you want cover against the costs of enforcing your own IP rights or resisting a claim against you for the revocation or invalidation of your own IP rights or the infringement of a third party's you will need special before-the-event IP insurance. There are only a handful of specialist brokers who provide such cover and I have listed some of them in IP Insurance Five Years On 23 Oct 2010 Inventors' Club blog and Intellectual Property Litigation - the Funding Options 10 Apr 2013 NIPC Law. Professional opinion does differ on the value of IP insurance but in my view it is well worth it.

Who can provide legal advice and representation?

In addition to barristers, solicitors and legal executives mentioned in the Guide, you can also consult patent attorneys (also known as "patent agents") and trade mark attorneys (also known as "trade mark agents"). For more information read my articles IP Professionals - who does what 5 Sept 2013 IP London and IP Services from Barristers 6 Apr 2013 4-5 IP. If you consult a barrister or a solicitor make sure that he or she is a specialist in IP or technology law for not all of them are. Most specialist counsel are members of the IP Bar Association and many specialist law firms are members of the IP Lawyers Association. If you want to sort out the IP sheep from the goats read How to spot an IP blagger at 30 paces 23 Feb 2009 IP North West.

If you can, settle outside court

There are three specialist alternative dispute resolution services ("ADR") for IP disputes of which you should be aware:

• IPO opinions on patents and registered and unregistered design rights;
• IPO's mediation service for IP disputes; and
• the Uniform Domain Name Dispute Resolution Policy for generic top level domain names and equivalent services for country code top level domain name disputes such as Nominet's Dispute Resolution Service for .uk domains.

You may find the following articles useful:

• IPO Opinions: Intellectual Property Act 2014: The New Law on Opinions 29 Oct 2014;
• IPO Mediation: The IPO's New Improved Mediation Service - will it make a difference? 7 Apr 2013; and
• Domain Name Dispute Resolution: Always consider the UDRP first 31 Aug 2005.

Is ‘no win, no fee’ right for you?

It will be very difficult if not impossible for you to find a lawyer who is prepared to take an IP case on a "no win no fee" retainer. There are several reasons for that which I explained in Intellectual Property Litigation - the Funding Options 10 Apr 2013 NIPC Law and No Win No Fee 14 Jul 2011 NIPC website. Read my case notes on Henderson v All Around the World Recordings Ltd (Success Fees and ATE Premiums in the Patents County Court: Henderson v All Around the World Recordings Ltd 4 May 2013 NIPC Law and Inquiries as to Damages in the Intellectual Property Enterprise Court: Henderson v All Around the World Recordings Ltd. 5 Nov 2014 to see what can go wrong.

Section 2, Part 2: Starting and defending a claim

‘Letter before claim’

It is very important to send a letter before claim in any type of action unless there is a good reason why you should not but it is particularly important for proceedings in the multitrack and small claims track of the Intellectual Property Enterprise Court ("IPEC") because CPR 63.20 (2) requires you to state in your particulars of claim whether you have complied with paragraph 7.1 (1) and Annex A (paragraph 2) of the Practice Direction (Pre-Action Conduct). If you fail to do so the defendant has up to 70 days to file a defence under CPR 63.22 (3).

In addition to the Practice Direction - Pre-Action Conduct you will find the Code of Practice for Pre-action Conduct in Intellectual Property Disputes useful for completing your letter before claim.

Threats

One of the special features of intellectual property litigation is that you can be sued for threatening to sue for patent, registered and Community design, registered and Community trade mark and unregistered design right infringement without justification. You must therefore be very careful how you write your letter before claim.

You should remember this rule if you are threatened with patent, registered or unregistered design or trade mark infringement by a third party. Remember that the claim can lie not just against the party making the threats but also against its solicitor, patent or trade mark attorney. For more information see my article Threats Action Updates 26 Jan 2006 NIPC Law.

This is one of the occasions when it would be prudent to seek specialist advice from a barrister or solicitor specializing in IP or a patent or trade mark attorney.

Starting a claim – which court?

Some IP claims must be brought in the civil courts. Others must be brought in the IPO. Some can be brought in either. 

Claims for the infringement of most IP rights, breach of confidence, passing off and actions for groundless threats must be brought in court.

Claims to determine who is entitled to a patent or patent application, licences and supplementary protection certificates have to be brought in the IPO. So, too, do trade mark oppositions.

Claims for revocation and amendment of patents and declarations of non-infringement and counterclaims for invalidation of trade marks and registered designs can be brought in either the courts or the IPO.

Courts that hear IP cases

IP cases must be heard in the Chancery Division of the High Court of Justice or one of the county courts that is attached to a Chancery District Registry (that is to say, the Manchester, Liverpool, Leeds, Preston, Newcastle, Birmingham, Bristol, Cardiff, Caernarfon and Mold county courts). 

Within the Chancery Division there are two specialist courts, namely the Patents Court and the IPEC. IPEC has a small claims track for claims up to £10,000. The Chancery Division sits in London, Manchester, Liverpool, Leeds, Preston, Newcastle, Birmingham, Bristol, Cardiff, Caernarfon and Mold.  

For more information on practice in the Chancery Division see the latest Chancery Guide. 

Patent, Registered Designs, Semiconductor Topographies and Plant Breeders' Rights

Claims for patent, registered or registered Community design, semiconductor topography and plant breeders' rights infringement have to be brought in the Patents Court or IPEC. If the claim is for  £500,000 or less and can be tried in no more than 2 days the case can be brought in IPEC. Otherwise it must be brought in the Patents Court. See the Patents Court Guide for more information on the Patents Court and the Intellectual Property Enterprise Court Guide for more information on IPEC. My article New Patents County Court Rules 31 Oct 2010 NIPC Law may still be useful.

Other IP Claims

All other IP claims can be brought in IPEC, the Chancery Division and the Manchester, Liverpool, Leeds, Preston, Newcastle, Birmingham, Bristol, Cardiff, Caernarfon and Mold county courts. As with patents, if the claim is for £500,000 or less and the trial can be heard in not more than 2 days it can be brought in IPEC. The procedure in IPEC differs from that of the rest of the Chancery Division and costs are capped at £50,000 for trials and £25,000 for accounts of profits and inquiries as to damages.  

IP claims other than patent, registered or registered Community designs, semiconductor topography or plant breeders' rights under £10,000 can be brought in the small claims track of IPEC. Recoverable costs in the small claims track are limited to just a few hundred pounds. For more information on the small claims track, see the Guide to the Intellectual Property Enterprise Court Small Claims Track and my article How to take proceedings in the IPEC Small Claims Track 12 July 2014.

IPO Tribunals

There are separate tribunals within the IPO for patent, registered design and trade mark proceedings. Cases are decided by officials known as "hearing officers" who are addressed as "sir" or "madam" as the case may be. Costs are usually awarded on a scale annexed to Tribunal Practice Notice 2/2000 unless a party has behaved badly in which case a hearing officer may award costs off the scale.

European Patents

Claims relating to European patent applications and oppositions to European patents must be brought in the EPO. 

Community Trade Marks and Designs

Oppositions to Community trade marks have to proceed in OHIM while claims for the invalidation or revocation of Community trade marks can be brought in OHIM or Community trade mark courts which include the Chancery Division and chancery county courts. Similarly, applications for the invalidation of registered Community designs can be brought in OHIM or Community design courts including the Patents Court and IPEC.

Injunctions

In  many cases an IP owner requires an injunction to restrain an infringement between the issue of proceedings and trial. Such injunctions are known as "interim injunctions" to distinguish them from injunctions after trial which are known as "perpetual injunctions". Applications for interim injunctions are determined by a Chancery interim applications judge. For more information on interim injunction applications see Litigation choices - should I apply for an interim injunction or should I not? 29 Oct 2014 IP East and the Judiciary's Interim Applications in the Chancery Division: A Guide for Litigants in Person.

Further Information

ff you wat to discuss this subject further, give me a ring on 020 7404 5252 during office hours or message me through my contact form.

Introduction to Trade Marks

Trade marks everywhere! But how to get one?    Photo Wikipedia

Jane Lambert

In "What is IP? Why do Folk want it? How do they get it? How to learn more?"  20 Aug 2013 I explained that

• IP (intellectual property) is the umbrella term for the bundle of laws that protect investment in intellectual assets,
• intellectual assets are things such as brands, design and technology that give one business a competitive advantage over other, 
• some IP rights ("IPR") such as copyrights and related rights and the right to bring a claim for passing off arise automatically while others such as registered trade marks have to be applied for.

Here I discuss trade marks, whether it is necessary to register a trade mark, where to register a trade mark, legislation, whether you need professional representation, costs, enforcement, revocation and invalidation and make some suggestions for further reading.

What is a Trade Mark?

The definition in s 1 (1) of the Trade Marks Act 1994 is "any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings."

Gobbledegook! 

Even for lawyers. 

Last Friday the highest court in England and Wales handed down judgment in two appeals on what constitutes a "sign" and what is meant by "capable of being represented graphically". One of them concerned chocolate so I analysed it for my patent attorney and specialist clients in "The Colour Purple - Société Des Produits Nestlé S.A. v Cadbury UK Ltd." 4 Oct NIPC Law.

Basically a "sign" can be more or less anything that can be seen or sensed and the Trade Marks Act 1994  gives a few examples: "words (including personal names), designs, letters, numerals or the shape of goods or their packaging."  

The words "capable of being represented graphically" mean that it must be possible to describe the trade mark in words, numbers or some other way. The case I mentioned discussed that point.

"Undertaking" is a high faluting Eurocrat term for a business or enterprise. Not necessarily to do with funerals though undertakers do have trade marks just like any other business. Last year I advised in a trade mark dispute between two firms of funeral directors.

The words "capable of distinguishing goods or services" are important. The sign must identify the goods or services of a business.  It can't do that if the mark is or could be used by everybody in the trade.   For example, "Bread" won't do for a bakery because all bakers bake bread but maybe the image of a loaf coupled with the baker's name might. Unless of course the baker is called Mr. Baker.  Also, a trade mark can't exist in a vacuum.  It must relate to the goods and services of a business.

So in everyday language a trade mark means any name, logo or other sign that can be described in writing which identifies a business's goods or services in the market place.

Registration

Trade marks may be registered or unregistered.

If a mark is registered the owner of the registered mark has the exclusive right to use the mark for the goods or services for which it is registered. "Use" for that purpose includes placing the mark on goods or their packaging and advertising, importing or exporting goods or services under the mark.

A mark that is unregistered may still be protected in the United Kingdom by the law of passing off.  That is a judge made law that forbids traders from leading the public to believe that their goods or services as those of another trader by, for example, using the same or similar trade mark or style of packaging.  In many other legal systems there is a similar doctrine known as the law of "unfair competition".

Why bother to register a Trade Mark if it can be protected by the Law of Passing off?

There are two important advantages of registration.

The first is that it is a lot cheaper and easier to prove trade mark infringement than passing off.  In an action  for passing off a claimant has to prove that his or her trade mark is recognized in the market place which is usually done by producing sales figures, advertising and marketing expenditure and samples of advertising which can be expensive and time consuming to assemble.  Then he or she has to show that the defendant has misled or mislead the public by the use of the same or similar trade mark or in some other way. If the defendant disputes that the public has been misled the claimant may have to call witnesses who have been misled or even commission market surveys.  Finally, the claimant has to show that he or she has suffered loss or damage as a result of the defendant's activity such as loss of sales.  In an action for trade mark infringement the claimant has only to point to his or her registration and produce evidence of the defendant's use of the same or similar mark.

The second important advantage of registration is that the exclusive right is backdated to his or her application. The owner of a registered mark who is known as "the registered proprietor" does not have to prove that he or she has started to use the mark in the first 5 years after that application whereas in an action for passing off the owner does for he or she cannot otherwise prove that he or she is known in the market.

Registration of a trade mark does not affect the right to bring a claim for passing off.  The two rights are different though there is a lot of overlap. There are circumstances where it is possible for a claim for passing off to succeed and a claim for trade mark infringement to fail and vice versa.   Often a claim for trade mark infringement and passing off are brought in the same action.

Where to register a Trade Mark

If you want a trade mark for the UK alone you should apply to the Intellectual Property Office ("IPO") in Newport.

If you want to register a mark for the whole European Union including the UK you should apply to OHIM (Office of Harmonization in the Internal Market (Trade Marks and Designs)) in Alicante.

If you need a trade mark for any other country you should apply to the intellectual property office for the country or group of countries concerned.  The World Intellectual Property Organization (the UN agency for intellectual property) publishes a directory of intellectual property offices.  If you want to apply for trade marks in several countries at the same time the British government is party to an international agreement known as the Madrid Protocol that allows you to do so.

Applicable Laws

The basic legislation for the UK is the Trade Marks Act 1994 which has been amended several times.  The IPO publishes a useful unofficial consolidation of the latest version of the Act.  The Act is implemented by The Trade Mark Rules 2008.

In order to create a level playing field for businesses throughout the EU the national governments and European Parliament have adopted Directive 2008/95/EC known as the Trade Marks Directive which requires all national trade mark laws to be substantially the same.  Our Act and Rules have to comply with that directive.

Trade marks granted by OHIM are known as Community trade marks ("CTMs") and the legislation providing for CTMs is called the Community trade mark or CTM regulation (Regulation (EC) 207/2009). The basic provisions of the CTM regulation are very similar to the Trade Marks Directive.

Professional Representation

It is not compulsory to instruct a professional representative to apply for a trade mark and many business people have registered trade marks without any difficulty.  Applications in the UK and many other countries can be made on-line and the IPO, OHIM, WIPO and national intellectual property offices provides lots of useful information.

However, I would nevertheless strongly advise business owners and managers to consider seeking professional advice.   Their priority is to launch or manage their businesses and the time they spend on looking up the law, making searches and drafting and filing an application has to be taken into account. Trade mark attorneys have spent many years studying and practising trade mark law and know it inside out. They can make searches, form judgments as to what signs will or will not be accepted for registration and draft specifications and file them in a fraction of the time that it would take most businessmen or women to do the same and attirneys are much more likely to be right first time. They are also regulated by the Intellectual Property Regulation Board ("IPReg") and are insured against professional negligence.   The few hundred pounds that a trade mark attorney would charge for such work is likely to be money well spent.

The professional body for trade mark attorneys (who are also called "trade mark agents") is The Institute of Trade Mark Attorneys ("ITMA").  ITMA has a searchable database of trade mark attorneys with their websites and contact details.  Also, we have worked with many trade mark agents throughout the UK over many years and if you want a recommendation our clerks will gladly give you 2 or 3 names of firms who have done a good job in the past.  Call them on 020 7404 5252 during normal office hours or use their contact form.

How much will it cost?

If you make your own application on-line for a range of goods or services in the same class in the UK the IPO will charge you £170.

Goods and services are grouped in classes according to a treaty known as the Nice Agreement. If you want to register your mark for goods and services in more than one class the IPO will charge you £50 for each additional class.

To those basic filing fees you must add attorneys' or other professionals' fees or your own time for carrying out searches, drafting specifications and filing the application.   It is worth shopping around but it should be possible to find an attorney who is prepared to do all those things including on-line filing for around £500 plus VAT.

If the IPO or a third party objects to, or opposes, your application you may have to argue your case before an official known as "a hearing officer". An unsuccessful party made be ordered to pay some costs to the successful party but these are usually a fraction of the amount the successful party will have incurred in presenting a case to the hearing officer.  These costs could amount to several or even tens of thousands of pounds depending on the nature of the case and the representation. There is also the possibility of an appeal to the court or an independent lawyer known as "the Appointed Person."

If your application is successful and you are granted a trade mark you may have to sue infringers in the Chancery Division or a county court which could cost you tens or even hundreds of thousands of pounds. Unless you have, or your business has, plenty of resources you should consider taking out insurance against the cost of suing third parties and indeed the cost of third parties suing you for revocation or invalidation of your mark.

There are of course different costs for searches of, applications to, and proceedings in OHIM and foreign intellectual property offices. Information about those costs can be obtained from their websites or from your trade mark attorney.

Enforcement

You must sue for infringement of a British or Community trade mark in the High Court or in a county court that is attached to a chancery district registry.  As there are no chancery district registries in South East England your nearest court is the High Court of Justice in London.

If you claim is relatively straightforward, you seek damages limited to £500,000 and the case can be disposed of at a trial lasting no more than 2 days you can bring your claim in the Intellectual Property Enterprise Court ("IPEC").  On 1 Oct 2013 IPEC replaced a specialist jurisdiction of the Central London County Court known as the Patents County Court and has inherited most of its rules and practice.   If you sue in IPEC you will usually be allowed to recover more than £50,000 in costs from the other side if you win but, by the same token, they cannot recover more than £50,000 from you.

The IPEC also has a small claims track for injunctions and claims for up to £10,000 where recoverable costs (and the risk of adverse costs) are limited to a few hundred pounds.  I have written a lot of articles and given a presentation on the small claims track which are listed in "Patents County Court - the New Small Claims Track Rules" 20 Sep 2012 NIPC Law.  I shall also give a talk on the small claims track to ITMA over the internet on 12 Nov 2013 between 12:00 and 13:00.

If your claim falls outside IPEC's jurisdiction you have to sue in the Chancery Division.  There your liability for costs and that of the other side is unlimited.

As trade mark law is not straightforward be use to instruct litigators and counsel with expertise in IP law.   Though there are plenty of other good law firms with knowledge and experience of IP you are assured of such expertise if you instruct solicitors who are members of the Intellectual Property Lawyers Association. There are also a number of patent and trade mark attorneys who are accredited to conduct litigation in the High Court.

Similarly, if you instruct counsel or a solicitor or a patent or trade mark attorney advocate make sure that he or she has the necessary expertise.  Most barristers specializing in IP law are members of the Intellectual Property Bar Association.

If you try to enforce your rights without a specialist lawyer you could find yourself in serious trouble. For instance, s.21 of the Trade Marks Act 1994 provides a right of action against persons who threaten others with trade mark infringement proceedings without justification. Anybody making such threats can be sued for declarations, injunctions, damages and costs which can amount to many thousands of pounds.

Revocation and Invalidation

You should be aware that your trade mark can be taken away from you after it has been granted for a number of reasons.  For example, it may be revoked if you never use it or suspend your use for up to 5 years for no good reason. You could also lose it if becomes the common name in the trade for a product or service for which it is registered.  It may be that a judge or the IPO decides that you should never have been granted the trade mark in the first place in which case the court or IPO will invalidate your registration.

Applications for revocation or invalidation of a registered trade mark may be made to the IPO or court. You should not be surprised if a defendant to an infringement action counterclaims against you for revocation or invalidation of your registration.

"Trade Marks" or "Trademarks"

"Trademark" is the American spelling and "trade mark" is the spelling used in the UK, EU and much of the Commonwealth.  However, nobody in the UK will complain too much if you use the US spelling here.

Further Information

I gave a presentation on the law of branding which covered trade mark law and passing off on 25 Sept 2013. You can download myt slides and notes which provide links and make suggestions for further reading from Slideshare.

This article plus my presentation will be a foundation for further talks and articles on different aspects of trade mark law.

If you have any questions about this article or trade mark law generally, call me on 020 7404 5252 during office hours or use my contact form.

There's More to South East England than London

South East England    Source Wikipedia

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Because of its proximity to the capital, South East England is often seen as the hinterland of London. That is not without justification because many in the region work in central London and many more visit London frequently for shopping and entertainment. Nevertheless, there are important towns and cities in the region such as Basingstoke, Brighton, Canterbury, Chichester, Dover, Guildford, Maidstone, Milton Keynes, Oxford, Portsmouth, Reading, Southampton and Winchester with distinct identities and dynamic local economies.  Our aim is to support businesses and their professional advisors in those communities

We shall do that in a number of ways.

First, through our conferences, seminars and publications (including this blog) we shall help educate those who create intellectual assets, such as artists, authors, designers, entrepreneurs and inventors, those who invest in them, such as angels and venture capitalists, and those who advise and represent those creators and investors such as accountants, lawyers, patent and trade mark attorneys in intellectual property law.  We shall offer speakers and materials for publication to businesses and institutions that already provide such education.   Thus, if a law firm, accountancy practice or inventors' club wants to talk about litigation in the small claims track of the Patents County Court or the Patent Box one of us and perhaps one of our colleagues from Atlas Tax Chambers or an accountancy practice, law firm or patent agency with which we work closely will speak.   Where nobody else is providing such education we shall do so ourselves.

Secondly, we shall provide high quality but affordable advice and representation on intellectual property and related areas of law.  We shall do all that we can to reduce costs without sacrificing quality.  For instance, we shall advise and take instructions by Skype, phone or email wherever possible.   Where a physical meeting makes sense we shall hold it at the client's or professional intermediary's premises rather than expect everybody to traipse into Gray's Inn unless there is some advantage in meeting in chambers either because it is the most convenient point or because we are going to court. We are helping to develop interactive technologies so that a lot of the work that is presently done in meetings can be done electronically,

Thirdly, over the years we have developed lots of connections with professionals such as specialist solicitors, patent attorneys and other experts in all parts of this country all and around the world.   Until 2004 the only way members of the public could consult counsel was by instructing a solicitor or patent or trade mark attorney first.  Now they can come directly to us.   If they have a professional intermediary we shall be glad to work with him or her.  If not, we shall introduce clients to somebody whom we know to have the skills, experience and other qualities that the case requires.

Fourthly, we shall develop our strengths.   There are already areas of intellectual property law that we believe we can do better than anybody else. We believe that we are the only set of chambers in the country with expertise in tax as well as IP law and our colleague, Anne Fairpo, is one of the authorities on IP and taxation.   We have already held one very successful seminar on the Patent Box on the 12 July and you can download those and other slides and handouts from our special Patent Box blog,   Traditionally our chambers have been known for their expertise in public law. Well there is a public law dimension to intellectual property where we are already among the leaders. A good example of this overlap is the use of bilateral investment treaties to seek redress for failure to protect intellectual assets.  Very timely in view of Eli Lilly's notice of intention to claim compensation from Canada for revocation of its Canadian patents and the interim decision in Philip Morris's claim against Australia in respect of its plain cigarette packaging legislation.  I have already written several articles on the topic for our own publications as well as a more detailed one for Sweet & Maxwell's European Intellectual Property Review (see Jane Lambert "Bilateral Investment Treaties: Claiming Compensation from Foreign Governments under Bilateral Investment Treaties for failing to provide adequate IP Protection" 27 July 2013 NIPC Law).

We are aware that we are the new kids on the IP block, that we have some formidable competitors and that like Avis have to try harder. You have our assurance that we shall do just that.