The IP Bill is about to become Law. Learn all about it.

Source Wikipedia

Jane Lambert

The Intellectual Property Bill has completed its passage through the Lords and Commons and awaits royal assent. Once the Clerk of the Parliaments utters the words "La Reyne le veult" the Bill becomes law. The Bill makes important changes to patent and design law and imposes a duty upon the Secretary of State for Business Innovation and Skills to deliver an annual report on how far the Intellectual Property Office and IP legislation generally have contributed to growth and innovation.

I have charted the progress of the Bill since it was introduced into the House of Lords by my fellow St Andrean Lord Younger just under a year ago (see Jane Lambert "The Intellectual Property Bill" 28 May 2013 NIPC Law) and I submitted evidence to the House as it passed through committee (see Intellectual Property Bill, Written evidence submitted by Jane Lambert (IP 04) 31 Jan 2014). Two days ago, I analysed the Bill's provisions in so far as they affect inventors (see Jane Lambert "How the IP Bill affects Inventors" 21 April 2014) and I am about to write a corresponding article on how the Bill is likely to affect designers.

This Bill has had a rougher passage than it need have had largely because of the government's determination to  criminalize registered design infringement notwithstanding advice to the contrary from the vast majority of intellectual property practitioners. Thankfully the original proposals have been watered down significantly so it is unlikely that there will be many prosecutions that could not have been brought under existing legislation but the fight over that provision delayed the reforms to design law that everyone welcomes such as an alternative appeals procedure from the Designs Registry, accession to the Hague, the extension of the IPO opinions service to designs and some important changes to unregistered designs law.

Despite the watering down of the provisions criminalizing design infringement the threat of prosecution is likely to result in more challenges to registered and registered Community designs whether in invalidation proceedings, threats applications and requests for opinions on validity (see my article "Clause 13 of the Intellectual Property Bill will probably go through. What next?" 20 Dec 2013 NIPC Law).

Our chambers will be responding to this with a series of training sessions the first of which will be a talk by my colleague Alex Rozycki and me on the Intellectual Property Bil at 4-5 Gray's Inn Square on 19 May 2014 between 16:00 and 18:00 (see "Learn how the IP Bill will affect you"  17 April 2014 NIPC Law). Alex specializes in the criminal aspects of IP law and will speak on how to defend a Crown and magistrates court proceedings and indeed how to bring a successful private prosecution under the new legislation.  I will be talking about every other aspect of the legislation. CPD points will be available and if you want to attend this talk call George on 020 7404 5252 or fill in our on-line form.

If the event in London is a success we shall repeat our talk in other parts of South East England. If you want to host our talk in your offices or at your local law society then call me on 020 7404 5252 or fill in my contact form. You can also tweet me, write on my wall or send me a message through G+, Linkedin or Xing,

What is a Patent? Why might I want one? How do I get one?

Intellectual Property Office       Photo courtesy of the IPO

Jane Lambert

What is a Patent?

A patent is a monopoly of a new invention. The word invention is not defined by statute but it would seem to be either a new product or a new process.

If the invention is a product the monopoly is the exclusive right to manufacture, dispose or offer to dispose of, use import or keep the patented product. If the invention is a process the monopoly is the exclusive right to use the patented process including the disposal, offer to dispose of, use, importation or keeping of any product obtained directly by that process.

If anyone other than the owner of the patent ("the patentee") does any of those things without the licence (that is to say permission or consent) of the patentee, he or she is said to infringe the patent. Patentees can sue infringers for injunctions (orders of a judge not to infringe the patent on pain of imprisonment or fine for disobedience), damages (compensation) for the infringement or other remedies in the civil courts.

Why might I want a Patent?

If you have spent a lot of time or money on research and development you will probably want to get at least some of that back and if possible to make a little bit extra for your trouble. The problem is that we live in a free market and if your product or goods made by your process are in demand you can be pretty sure that someone will want to compete with you.

There are some things that you can do to protect yourself from such competition even without a patent. For instance, you can keep some vital information on making the product secret and there are laws in some countries including the UK that automatically prevent copying of designs. But if your product can be reverse engineered or if a similar product can be made without copying your design the only way you can prevent
such competition is by seeking a patent.

Without a patent it may be difficult to find investment, loans or other help in developing and marketing your invention. One of the first questions the dragons ask on Dragons Den is about intellectual property (see "What is IP? Why do Folk want it? How do they get it? How to learn more?" 20 Aug 2013).

Even if you do not want to make and sell your invention there may be somebody else in the world who does so it may be worth patenting an invention with a view to selling the patent or granting a licence under it.

But a word of warning! A patent is no lottery ticket. It is  worth something only if it helps you or some other person make money from it. And people will make money from a patent only if folk want to buy or use the invention and the patent is drafted sufficiently tightly to prevent others from making or using the invention.

Where do I get a Patent?

Patents are granted by national governments for individual countries or territories or groups of countries or territories. There us as yet no such thing as a world patent or even a European Union patent though there may soon be a patent for some but not all the member states of the EU which will be known as a unitary patent.

The agency that grants a patent is known as an intellectual property office or patent office. In the UK that is the Intellectual Property Office ("IPO") in Newport, A picture of the IPO appears above. The IPO also grants trade marks and registered designs for the UK and a few dependent territories.

The British government is party to an agreement with a number of other European countries to establish a European Patent Office ("EPO") in Munich and a number of other cities to examine applications for, and grant patents on behalf of, the contracting parties including the UK. Patents granted by the EPO are known as European patents and a European patent that applies to the UK is a European patent (UK).  European patents (UK) are treated for all intents and purposes as though they were patents granted by the IPO. The proposed unitary patent mentioned above will be a European patent for most but not all of the member states of the EU.

If you want a patent for a country outside Europe you need to apply to the patent office for the country or group of countries concerned. And you have got to make your application quickly because it you hang around your invention ceases to be new.  At one time inventors had to apply to every patent office in the world at more or less the same time which cost a lot of money and required a lot of work. Life was made somewhat easier by the Paris Convention which gave inventors a year from their first application to apply for patents in more than one country. It has been made easier again by the Patent Co-operation Treaty which allows you to apply to many countries simultaneously from the same application. There are some basic requirements that all countries demand such as novelty, inventiveness and utility. Your invention is examined for those qualities on behalf of all patent offices at the same time. If your invention passes that test the application is sent to individual patent offices to see whether your invention satisfies any further requirements under their local laws. If it does you get a patent for that country.

How do I get a Patent?

Requirements vary from country to country but all countries require inventors to submit a document known as a specification as part of the application to the relevant intellectual property or patent office.

The specification must include a description of the invention and a series of numbered paragraphs called claims.

The description normally identifies the problem that the invention seeks to resolve and often mentions previous attempts to resolve the problem. It then states how the invention addresses the issue and explains how to make or use the invention. That is very important because the inventor makes a deal with the public. In exchange for the monopoly of the invention the inventor must explain precisely how a person with the relevant skill and knowledge can make or use the invention. If the inventor fails to do that the patent is invalid and the monopoly may be revoked.

The claims set out the extent of the monopoly. They list the essential components of the invention known as features or integers. These also have to be drawn up carefully. If a claim is drafted too wide in that the inventor claims features to which he or she is not entitled that claim may be revoked. If the claim is too narrow a competitor will simply make something very like the invention which performs in very much same way.  The reason why claims are numbered is that the inventor sets out the monopoly in the widest terms that he or she can get away with in the first claim and then narrows it down in subsequent claims. A patent is said to have been infringed when a product that has the features of at least one claim is made, sold, offered for sale, imported, kept or used or a process with one of the features is used.

Once the application is filed the patent office examines the invention to see whether it really is new having regard to everything that has been invented or made known before ("the prior art"), whether the invention involves an inventive step or obvious when considering the prior art, whether it is useful and whether it satisfies other requirements of local law. A problem that often arises in the UK and other European countries is that computer programs as such cannot be patented whereas in the USA and many other countries they can. Often there is a debate as to whether a software implemented invention is just another computer program or whether it is an invention that resolves a technical problem. If all those tests are satisfied, then the patent is granted. If not the application may be rejected.

Can I apply for a patent myself?

Er y-e-e-e-e-e-s but I wouldn't recommend it. Applying for a patent is a tricky business and there is so much that can go wrong. It is much better to consult a patent attorney (also known as "patent agents"). They can get the specification right first time and if there is a problem with the application they can often resolve it in correspondence. If the examiner won't budge an attorney can represent you on appeal to a tribunal which in the UK IPO is an independent official known as "a hearing officer" who represents the Comptroller or chief executive of the IPO.

Those services come at a cost which can be a bit daunting if you are a new business. It is worth remembering that it takes a long time to train a patent attorney. Most have degrees in natural sciences, engineering or technology and many have doctorates in one of those subjects too. After they finish their university education they have to study intellectual property law and patent office practice and procedure and undergo a period of on the job training before they are in a position to draft patent specifications and navigate them through the intellectual property office.

Patent attorneys in this country belong to the Chartered Institute of Patent Attorneys ("CIPA") and are regulated by the IP Regulation Board ("IPReg"). There are similar bodies in other countries.

Where can I get more information?

A good starting point for general information is the Business and IP Centre of the British Library. They have a lot of materials including information on patenting, a good website, Linkedin group and Facebook page and they run workshops and seminars on IP including patents and provide other services. Some of those services are also available at Portsmouth and Southampton Central Libraries,

If you want to compare notes with other inventors you could attend a meeting of an inventors' club. There are three in London (Croydon, Kingston and the University of East London) and at least one (the Wessex Round Table of Inventors) in Southampton.

If you have a specific problem you could attend a patent clinic where you can meet a patent attorney, lawyer or other professional. We run patent clinics at Middlesex University on the last Thursday or every month and others are operated by CIPA and Ideas21. If you want an appointment at our clinic or discuss any other aspect of our article please call me on 020 7404 5252 or send me a message through my contact form, Facebook, G+, Linkedin, twitter or xing.

Related Articles

6 Sep 2014	Jane Lambert So what’s a patent?	IP East Midlands
2 Aug 2013	Jane Lambert How to read a Patent	IP London

Our London IP Clinics

Jane Lambert

In "Where to get free basic Information on Intellectual Property" 18 Dec 2013 I mentioned the IP Clinics in London, Portsmouth and Southampton. Well there is now a fourth.  Our very own London IP clinics which takes place at 4-5 Gray's Inn Square between 15:00 and 17:00 on the last Wednesday of every month except August and December.

I have described those clinics in more detail in "IP Clinics with a Difference" 31 Dec 2013 in London IP. The important point is that our clinics are a bit different from some of those others because we are barristers and not patent or trade mark attorneys. In that article I wrote:

"We can advise you on IP generally, IP strategy, enforcement, responding to claims by third parties, licensing, joint ventures and so much more. Although we know about patent, trade mark or design registration we do not do that work ourselves. If it appears to us that you we may need a patent, trade mark, registered design or other professional's services, we would introduce you to one of the patent or trade mark attorneys or other professionals on our panel.
We can also advise you of some of the other resources that are available such as the Business and IP Centre of the British Library and the three inventors' clubs in London. We can guide you to some of the useful on-line materials that are published by the Intellectual Property Office, European Patent Office,World Intellectual Property Office, Chartered Institute of Patent Attorneys, Institute of Trade Mark Attorneys and, of course, ourselves."

If you would like a free 30 minute consultation with one of us  - which would otherwise cost you at least £250 + VAT - please call George on 020 7404 5252 or contact us through our booking form.

Where to get free basic Information on Intellectual Property

British Library                                                          Source Wikipedia

Jane Lambert

Whatever the nature of your business you are bound to have some intellectual property. It may be a patent for a groundbreaking new invention or it may be something simple like the goodwill that is attached to your business or a secret recipe. Whatever it is you will need some basic information and maybe some advice. Here are some pointers.

British Library
A good place to start is the British Library Business and IP Centre in St Pancras. They have a lot of useful information about business networking, planning, IP and market research. There is a good introductory video by Anthony Lau who invented a cycle lock and started a business to market his invention. The Centre holds frequent workshops and seminars on all those topics. To access these resources you will need a reader's card which is issued free on production of a passport or driving licence and a utility bill or other evidence of residence. The British Library also has groups on Linkedin and Facebook which you can join on-line.

Portsmouth Central Library
The British Library is a member of a network of libraries around the country known as Patent Information Units. These are in turn part of a wider European network known as PATLIB which is affiliated to the European Patent Office.  Because most of our region is close to London there is only one Patent Information Unit in the South East. That is the Portsmouth Central Library at Guildhall Square which is very close to Portsmouth and Southsea railway station.

IP Clinics
If you want more detailed one to advice you can book a free consultation with a patent attorney at an IP clinic   Patent attorneys are professionals who apply for patents and other registered rights on behalf of their clients and offer a wide range of other services (see my article "IP Professionals - who does what" 5 Sep 2013 London IP). Clinics are held by appointment at

• the London branch of the Intellectual Property Office every Tuesday evening between 17:00 and 19:30
• Portsmouth Universities for students and graduates of the University; and
• Southampton Central Library between 17:00 and 19:00 on the last Thursday of every month.

To find out how to book an appointment and other information see the IP Clinics page on the Chartered Institute of Patent Attorneys' website.

Inventors Clubs

You can get a lot of information. sometimes useful technical and legal advice and occasionally even some investment or other assistance through meeting other inventors and entrepreneurs at an inventors' club or group.  I am aware of at least two in Surrey and one in Southampton but there may be more:

• Croydon Round Table of Inventors
• Kingston Round Table of Inventors, and
• Wessex Round Table of Inventors.

Details of meetings, subscriptions and other matters are available from the club websites. One article that I particularly commend is the "Invention Checklist" on the Wessex site. If more inventors and indeed their professional advisers read that page they would save an enormous amount of time and money not to mention aggravation and frustration.

Workshops and Seminars

Libraries, universities, law firms, patent and trade mark agencies and many others hold occasional workshops and seminars on IP. We have just completed a season of four introductory talks entitled which I have mentioned in the following articles:

• Introduction to IP
• Introduction to the Law relating to Branding: Passing off, Trade Marks, Geographical Indications and Domain Names
• Introduction to the Law relating to Creative Output: Copyright, Related Rights and Designs and
• How the Law protects Investment in Technology.

You can download the slides and handouts from those articles. We shall be holding more workshops and seminars in 2014. We also send out regular newsletters and news updates on topics that may be of interest to your business. If you want to be put on our mailing list call George on 020 7404 5252 or 023 9316 2030 or fill in our contact form.

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

Box Camera

Author Jacek Halicki  Licence CC BY-SA 4.0 Source Wikimedia Commons

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 arm's 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.

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.

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