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.

South East leads the Nation in Patenting

The White Horse at Uffington

Source Wikipedia

Jane Lambert

According to the Intellectual Property Office Facts and Figures 2012-2013 2,822 applications were made to the Intellectual Property Office for British patents from South East England in 2013 and 437 patents were granted to applicants from that region in that year. That is better than any other region in the UK. London was second in the number of applications (2,588) and also in the number of grants (346). The East of England was third in the number of applications (1,802) and the South West in the number of grants (340). Great industrial areas like the West Midlands, North West, Yorkshire and the North East were well behind both in the number of applications (1,180, 1,259, 984 and 314) and grants (192, 204, 171 and 52) respectively.

The South East also did well in trade marks with 6,197 applications and 5,258 registrations in 2013 in which it came second only to London 12,669 applications and 10,583 registrations (the figure in the table for the East Midlands being an obvious mistake). In registered designs the region was second to London in the number of applications (1,153 for London and 1,066 for the South East) but top in the number of registrations (883 for South East England and 720 for London).

Our chambers support inventors, entrepreneurs and investors with our IP clinics at Middlesex University and our talks and publications.  If anyone wants to discuss his article or any patent, trade mark, design or other intellectual property matter he or she should call us on 020 7404 5252 or get in touch through my contact form. You can also tweet me, write on my wall or send me a message through G+, Linkedin or Xing.

How to take proceedings in the IPEC Small Claims Track

Jane Lambert

IPEC stands for the Intellectual Property Enterprise Court. This is a specialist court within the Chancery Division of the High Court of Justice. It came into being on 1 Oct 2013 when it took over the functions of the Patents County Court after that court had been abolished by paragraph 30 (3) of Schedule 9 of the Crime and Courts Act 2013. Unlike the rest of the High Court it has a small claims track for certain types of intellectual property claim up to £10,000. The rest of this article will discuss this jurisdiction.

What Sort of Case Can be Brought in the IPEC Small Claims Track?
Just about any sort of intellectual property claim may be brought in the small claims track except one involving patents, registered or registered Community designs, semiconductor topographies or plant varieties so long as the claim does not exceed £10,000. Typical sort of cases would be claims for copyright infringement in photographs where the defendant has posted a photograph taken by the claimant to his website without the claimant's permission and simple trade mark cases or passing off cases where a small local shopkeeper or restaurateur adopts a name, logo or trading style similar to that of a well known brand. The small claims track could also resolve cases where a confidante fails to respect a non-disclosure agreement.

What Sort of Remedies are Available?
Everything! Injunctions, orders for delivery up and damages subject to two limitations. The first is that costs are limited to court fees, loss of earnings, travelling expenses, counsel or solicitors' fees up to £260 where an injunction is sought and experts' fees up to £750. The second is that the small claims track has no jurisdiction to award interim injunctions.

Who are the Judges?
There are three full time District Judges - Janet Lambert, Melissa Clarke and Charlotte Hart - and two deputy District Judges - Nicola Solomon and Richard Vary. They hear all trials and preliminary hearings.

Where does the Court sit?
The court is based in the Rolls Building in Fetter Lane with rest of the Chancery Division but hearings take place in the Royal Courts of Justice in The Strand. The court can sit elsewhere in England and Wales for the convenience of the parties and witnesses or in order to save costs.

Essential Reading
If you have never been anywhere near a court before you should download the following documents from HM Courts and Tribunal Service website and read them very carefully:

• EX301 I’m in a dispute - what can I do?
• EX302 How do I make a court claim?
• EX304 I’ve started a claim in court - what happens next?
• EX306 The small claims track in the civil courts
• EX50 Civil and Family Court Fees

In addition there are two documents that apply specifically to IPEC:

• The Intellectual Property Enterprise Court Guide
• Guide to the Parents County Court Small Claims Track.

Advice and Representation

This point is a good time to decide whether you really want to act for yourself or consult a lawyer or other professional. The advantage of calling in a lawyer or patent or trade mark attorney is that they can advise you of the strength of your case, do all the paperwork and go to court for you. The drawback is that lawyers and attorneys cost money and the most you can expect from the other side is £260 towards your costs and then only if you seek an injunction. You do not have to go to a specialist IP practitioner or even a lawyer but unless the person you consult knows at least some IP law you may well find that he or she can do the job no better than you.  You will find a lawyer specializing in IP from the IP Bar Association or the Intellectual Property Lawyers Association websites. Patent and trade mark attorneys are listed on the CIPA and ITMA sites respectively.

More Reading

If you do decide to act for yourself you should be aware that the civil courts in England and Wales are governed by the Civil Procedure Rules (CPR) which are divided into a number of Parts and supplemented by a series of Practice Directions (PD).  Individual rules are referred to by the initials CPR and then the number of the Part followed by the number of the rule.  Thus "CPR 63.17" is short for "rule 17 of Part 63 of the Civil Procedure Rules."    

CPR Part 27 governs proceedings in the small claims track generally and CPR Part 63 intellectual property proceedings including those in IPEC and IPEC's small claims track.  Before you do another thing read and digest the following Parts and Practice Directions:

• Practice Direction - Pre-Action Conduct
• CPR Part 27 - Small Claims Track
• PD Part 27 - Small Claims Track
• CPR Part 63 - Intellectual Property Claims and
• PD Part 63 - Intellectual Property Claims.

It is also worth taking a glance at the other Parts so that you understand their structure and what they cover because the court and other side are likely to refer to them from time to time.

What to do first?
The first thing you do is write a letter before claim in accordance with paragraph 2 of Annex A to the PD - Pre-Action Conduct and send it to the other side. The recipient is supposed to acknowledge your letter in accordance with paragraph 3 within 14 days and to respond in full within 28. If the other side takes no notice of your letter you can issue your claim without further notice. However, in many if not most cases, someone from the other side will call you which may lead eventually to settlement negotiations. There are also various mediation and other ADR schemes to facilitate dispute resolution.

Threats
You should be aware that threatening certain people with certain types of IP proceedings can be risky. That us because the Copyright Designs and Patents Act 1988, Trade Marks Act 1994 and certain other statutes and statutory instruments provide a right of action against those who make groundless threats. The rationale behind this legislation is that IP proceedings can be horrendous - one great 19th century judge famously compared patent litigation to a killer flu virus - and the threat to bring such proceedings should not be made lightly.  If you want to know more about threats read my article "If you think someone has infringed your patent talk to a lawyer first" 11 July 2014 in the NIPC Inventors' Club blog.

The Claim Form
If the other side does not respond to your letter before claim or you are otherwise unable to resolve your claim you should download a claim form and notes on completing a claim form from HM Courts and Tribunal Service website. Study the notes very carefully and then fill in the form in accordance with the notes.

Particulars of Claim 
You will note that the claim form leaves space for Particulars of Claim.   Some claims are very simple and can be contained in that space.  Most intellectual property cases, however, are more complex and require several sheets of A4 paper to set out.  

The particulars of claim should identify your intellectual property right and explain how it has been infringed.  You must state your case in numbered paragraphs. If your claim is for infringement of copyright you should:

(1) identify the work in which you say copyright subsists
(2) explain how that copyright arises and how you own the copyright
(3) identify the alleged copy
(4) point out the similarities between your work and the alleged copy,
(5) explain thar the defendant had an opportunity to copy your work,
(6) set out the loss or damage that you have sustained as a result of the damage, and
(7) state the remedy you want and why you want it.

Your particulars of claim must also state that you have sent a letter before claim in accordance with Annex A of the PD - Pre-Action Conduct and that you want the action to proceed in the IPEC small claims track.

At the end of the numbered paragraphs you should write what is known as "the prayer".  That is the relief that you seek and it begins with the words "AND the Claimant claims" followed by an injunction, deliver up of infringing items, damages, interest and costs.

At the very end of the particulars you should fill in a statement of truth which states that you believe that the facts stated in the particulars of claim are true. If you are representing a company or other entity you should also state that you are duly authorized to sign the statement on behalf of the claimant. Make sure that everything in the statement is true to the best of your knowledge and belief.   If it is not you could be in contempt of court and punished with a fine or even prison.

There is also a statement of truth on the claim form. You must fill in that and sign  it too.

Issuing the Claim
Take or post your claim form and particulars of claim together with a copy for each defendant to the public counter of the Intellectual Property Enterprise Court at

The Rolls Building,
7 Rolls Building,
Fetter Lane,
London,
EC4A 1NL

You should then pay the appropriate fee which will depend on the amount of damages you are seeking and be sure to obtain a response pack for each defendant.   

Serving the Claim

It is your responsibility and not the court's to serve  each defendant with a copy of the claim form, particulars of claim and the response pack. Until you do that the proceedings cannot start and any judgment or order you get will be a nullity.   The safest course is to arrange for a process server to serve process on each defendant personally but process servers do cost money which you will not be able to recover from the other side if you win. Most claimants serve process by post or one of the other methods provided by CPR 6.3.

What Next?

If you have sent the other side a response pack they must acknowledge service and then file a defence with the court and send a copy to you. How long they get to file and serve their defence will depend on whether you have sent them a letter before claim that complies with Annex A of PD - Pre-Action Conduct. If you have they must reply in 42 days. If not they get 70 days. 

Often this is the point at which the defendant or his or her solicitor or other representative realizes that you are serious and will pick up the phone or write to you. if he or she spots a problem with your case your opponent will point it out to you in which case you have to decide whether to stop and maybe start again or proceed regardless. It is also possible that the defendant may propose terms of settlement or at least negotiations.

Counterclaim

It is also possible for the defendant to counterclaim against you. He or she may think your trade mark is invalid or should be revoked in which case he or she will seek a declaration of invalidity or the revocation of your mark. He or may think you have made an actionable threat. But the defendant's counterclaim can arise over anything and be quite unconnected with IP.  The defendant will make his or her counterclaim in a document called defence and counterclaim.  If the other side does counterclaim his or her counterclaim will be treated in the same way as your claim against him or her. You will have to respond to it which is usually done in a document called a reply and defence to counterclaim. Things tend to get a bit complicated when there is a counterclaim and it is at that point that you should reconsider your previous decision not to seek legal advice.

Judgment in Default

If the defendant does not acknowledge service or file and serve a defence within the specified time you can apply to the court for judgment in default. But be careful. Everything depends on your serving each defendant with a copy of the claim form, particulars of claim and response pack.  If you slip up on any of those points any judgment that you get may be set aside without more ado however much you time and money you have spent to get this far.

Similarly, if you do not file a reply and defence to counterclaim in time and in the correct manner the other side can get a default judgment on the counterclaim against you.

Case Management

If the other side acknowledges service and files and serves a defence or a defence and counterclaim a district judge will read and consider your particulars of claim. their defence or defence and counterclaim and any reply or reply and defence to counterclaim from you.   

If the case is straightforward and the other side agrees to the case proceeding in the small claims track the district judge will give directions for the trial of your claim and any counterclaim without a hearing. These directions will be standard directions in accordance with Appendix B to the Small Claims Practice Direction or one or more special directions in accordance with Appendix C .

Preliminary Hearing

If the district judge is minded to: 

• give special directions and wishes to make sure that all parties know what they have to do, 
• strike out a claim or defence on the ground that it fails to disclose a cause of action or defence or 
• give judgment on the ground that there is no real prospect of success 

he or she may order a preliminary hearing. This could take place in the judge#s room in the Royal Courts of Justice or in one of the court rooms.

Preparation for Trial

Make sure that you comply with all the district judge's directions within the time limits specified in his or her order. If you have any doubt as to what you have to do you should seek legal advice.

The Trial

This could take place in the district judge's room at the Royal Courts of Justice or in any of the court rooms. If both parties are legally represented the trial will take place like any other with an opening by the claimant's advocate, the calling of witnesses and their cross-examination and closing speeches from each side. The judge may deliver judgment extemporarily or reserve judgment. The judge has power to depart from the strict rules of evidence and proceed informally if one or more of the parties is unrepresented.

Appeal

Appeals from a final decision lie to the Court of Appeal and appeals from an interim decision to the Enterprise Judge who is presently Judge Hacon.  Permission must be sought from the judge who made the order or from the appeal court.

Further Information

If you want to discuss this article or small claims track proceedings in IPEC generally feel free 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.