The trade mark systems of many countries operate a first to file system, putting a legitimate brand owner on the back foot if someone else has registered their trade mark. This can leave the brand owner with an uphill battle to retrieve their brand. An extreme example of this was reported in The Daily Telegraph online:
"Manolo Blahnik has emerged victorious in a 22-year legal battle that prevented the luxury British shoemaker from selling in China.
The country’s highest court has now invalidated a trade mark using the shoemaker's name that has been owned by a Chinese businessman following years of legal wranglings."
The cost of battling for 22 years can only be guessed at, and to be fair. The morale of the story is simply to be the first for file for your trade marks in overseas markets. The international trade mark system makes this pretty straight forward to do. To arrange a discussion on this at a time to suit you please use: https://calendly.com/jdip/zoom-chat
The value of registered designs is illustrated by this recent case between two successful British businesses in the Intellectual Property Enterprise Court. The IPEC is the venue for low cost IP litigation in the UK. A smart leather boot based on the style of a Spanish boot was copied. Pictures from the registered design, and pictures of the infringing product are in the case report linked below. The case shows how the judge established the scope of the registered design in the light of known boots, and also the importance of keeping good records in the design process.
There is no such thing as a "World Trade Mark", but there is a very good system for overseas trade mark protection run by the World Intellectual Property Organisation in Switzerland.
Our experience is that International Trade Mark Applications are a cost-effective and procedurally efficient way of achieving registrations in most developed markets (with notable exceptions like Hong Kong, Saudi Arabia). For a UK client, a single International application is filed based on a UK trade mark registration, designating up to 121 countries/territories. In practice, this will usually be key markets in the first instance, with the opportunity to add further markets later on. After the filing stage, the International application proceeds quickly to “registration”. Then the national offices of the designated countries are notified of the International registration and conduct their own examination in accordance with local practice. Their examination reports come to us at different times. Responding can involve appointing a local attorney and costs will vary according to the objections raised. Sometimes no objections are raised so no local attorney is required. In our experience, the US will often raise formal objections to the wording of the specification of goods and services, which can be dealt with on a fixed cost basis by a US colleague. China often finds conflicting trade marks which may need to be cancelled. Other territories, like Singapore and Australia are more straightforward. A great advantage of the International system is the ability to add protection for other countries later on i.e., after grant of an International registration by adding subsequent designations for new markets. Furthermore, if examination is unsuccessful (e.g., because of a conflicting earlier trade mark registration) then it is cost-effective to drop a designation and re-designate the same country later on.
To arrange a meeting to discuss next steps please pick a time to suit you on: calendly.com/jdip/zoom-chat?back=1&month=2022-02
Recently the trading name of my business - JDIP - was registered as a trade mark in the UK for "Technical searching and research services; trade name and trade mark creation services; information services" and "Legal services in the field of intellectual property; intellectual property services and consultancy services relating to intellectual property; Management of patents;Patent and patent application licensing;Patent attorney services;Advisory services relating to patents;Consultancy relating to patent protection;Intellectual property consultancy services in the field of patents and patent applications;Legal services relating to the exploitation of patents;Management of trademarks;Trademark watch services;Licensing of trademarks;Trademark monitoring [legal services];Designs (Registered, filing of -);Designs (Registered, licensing of -)". These are most of the services provided by the business and the quoted text is the "specification of services" for the registration. Our business does not produce goods.
A common question from clients is how to indicate that a trade mark is registered? On this website, we have simply indicated that JDIP is a registered trade mark of JD IP Limited. We could also or additionally have used the registered trade mark symbol ®.
Details of the registration of the JDIP trade mark are at:
Since establishing an independent IP practice a few years ago, we have invested in various office systems to try to improve efficiency in operations here, ultimately to improve client service. I wanted to reflect on stuff that we have found works really well in case it helps other small businesses.
Some systems, like Xero for accounting and timekeeping, and DocuSign for electronic signatures on documents like Terms of Business, and authorisations, have been transformational to the business because of the way that tasks like reminders are handled automatically saving time and therefore costs. we are no longer chasing up the odd missed payment or a signature on a document. Calendly is absolutely fabulous for easing the process of booking calls and meetings with new and existing clients and contacts, and has been a great time saver: calendly.com/jdip. Even that old favourite, Adobe Acrobat, continues to be a great tool for document production and editing, and I now realise that one way or another I have had a full Acrobat licence for around 30 years.
Capsule is a very efficient CRM, and has proved much more user-friendly than HubSpot. Revolut and Starling are light years ahead of conventional banks. The nightmare of the NatWest legacy systems for foreign payment is well and truly behind us. ViewMessages answering service gets messages to me for those clients who prefer to telephone.
Weebly made setting up, and maintaining a website very easy.
All this IT has been ably supported by Paul Cruwys at ESC-IT near Bristol: www.escit.co.uk/
With thanks also to Louise Bagatelas-Allen at LBA Accounts and Richard Bunker at Corrigan for their work on the books and accounts and for helping me with my new fascination with Xero.
Something new happened today in my 35 year career,
It is a fact of life that, when working as a patent attorney preparing patent specifications, you may make an inventive contribution as one thinks about how to define an invention and new possibilities come to mind. I am sure that this has happened on many occasions to my patent attorney colleagues around the world. Often those contributions are not formally recognised - it often is just part of the job. However, today I was named as an inventor in a published PCT application filed for a client, and I thought it worth marking with a blog post.
I think it is worth mentioning that inventorship is something which should be carefully considered when preparing a patent application. A rule of thumb is to regard an inventor as being someone who devised an invention - or an aspect of an invention. Accordingly, there may be a single inventor or several inventors. Particular care should taken if a patent application may be filed in countries such as the US where naming or misnaming inventors may have significant consequences.
The European Patent Office's patent information system ESPACENET has been a great free resource for many years now. I regularly recommend it to clients, and when talking about IP for people looking for patent information to drive innovation. In many cases, you can quickly see if an idea is already known or not.
The EPO has just released a major update of the system and it's now even better and worth having a look at! Please take a look at:
EU trade mark registrations will still be possible for UK companies after BREXIT.
The UK rights in existing EU registrations will become separate UK national registrations after BREXIT under a new registration number, and will require separate renewal payments. I have been busy setting up cases for those new UK national registrations for current clients to compliment their EU registrations.
Design Right is a UK innovation in IP protection which has subsequently been adopted in EU law. Briefly it automatically protects the three-dimensional product and component design based on original design documents. For the UK, it replaced the extension of copyright in design drawings to cover products made in accordance with those drawings.
Design right can last up to 15 years in the UK, less in the EU. Bear in mind that, in contrast, a registered design can be kept in force for up to 25 years in UK or EU albeit at relatively low cost.
Two notes of caution:
First, copying needs to be established.
Second, a designer needs to be able to prove the origin of the design, by producing design documents, and should mark a product and or its literature to indicate that design rights exists e.g "Design Right SUPER COMPANY 2018".
Following last year's quick heads-up (https://www.jdip.co/blog/category/brexit ), we learnt this week that agreement in principle has been reached with the EU on the UK remaining in the EU trade mark and design systems until the end of 2020. Furthermore, and as expected, existing EU registrations will be converted to UK national registrations. We all hope that this process will be free and automatic, but this is still to be decided. A nine-month conversion period will be allowed for EU trade mark and design applications which are still pending at the end of 2020 to become the basis for new UK national applications.