6 Oct 2018

Geographical Indications after Brexit

Stilton Cheese
Author Dominik Hundhammer
Licence Creative Commons Attribution Share Alike 3.0 unported
Source Wikipedia

Jane Lambert

According to the WIPO 
"A geographical indication (GI) is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin. In order to function as a GI, a sign must identify a product as originating in a given place. In addition, the qualities, characteristics or reputation of the product should be essentially due to the place of origin. Since the qualities depend on the geographical place of production, there is a clear link between the product and its original place of production."
As I noted in Geographical Indications 27 May 2010 parties to the WTO Agreement are required  to protect such signs by arts 22 and 23 of the Agreement on Trade-Related Aspects of Intellectual Property Rights and art 10bis of the Paris Convention.

As I also noted in Geographical Indications HM government discharges those international obligations through trade mark law, the action fort passing off and special EU legislation.  The EU legislation will cease to apply to the UK after 29 March 2019 except to the extent that it is preserved by s.2 and s.3 of the European Union (Withdrawal) Act 2018.

Paragraph 39 of the white paper on The future relationship between the United Kingdom and the European Union states:
"The UK will be establishing its own GI scheme after exit, consistent with the WTO Agreement on Trade-Related Aspects of Intellectual Property (TRIPS). This new UK framework will go beyond the requirements of TRIPS, and will provide a clear and simple set of rules on GIs, and continuous protection for UK GIs in the UK. The scheme will be open to new applications, from both UK and non-UK applicants, from the day it enters into force."
If the UK leaves the EU with a withdrawal agreement the legislation for this new scheme will be passed in the implementation period that will subsist between 30 March 2019 and 31 Dec 2020.

On 24 Sept 2018 the government published Producing food products protected by a ‘geographical indication’ if there’s no Brexit deal setting out its proposals for protecting geographical indications if there is no withdrawal agreement:
"When we leave the EU we will set up our own GI schemes which will be WTO TRIPS compliant, broadly mirror the current EU regime and be no more burdensome to producers. Details to be explored in a public consultation include the UK GI logo and appeals process. The protections will be similar to those enjoyed now by UK GI producers, with all 86 UK GIs given new UK GI status automatically. The UK would no longer be required to recognise EU GI status. EU producers would be able to apply for UK GI status. We will be publishing guidance on the UK GI schemes in early 2019."
HMG expects the EU to continue to protect British products after Brexit but, should that not be the case, it advises producers to apply for GI protection as third country producers or the registration of their signs with the EU Intellectual Property Office as collective or certification marks,

Anyone wishing to discuss this article or geographical indications generally should call me on 020 7404 5252 during office hours or send me a message through my contact form.

26 Oct 2017

WIPO Domain Name Panellists' Meeting 2017

(c) 2017 Jane Elizabeth Lambert: all rights reserved

jane Lambert

Every year the WIPO (World Intellectual Property Organization) invites its panel of neutrals to its headquarters in Geneva for a day's CPD training. It usually takes place on the third Monday of October though there have been years when it has taken place before and after that date. I am a member of the panel and I have attended this event every year since 2005.

The day focuses on practical issues in domain name dispute resolution and particularly the UDRP (Uniform Domain Name Dispute Resolution Policy) but there is always some discussion on wider issues. Immediately before Francis Gurry became Director-General the highpoint of the day for me was his summary of important developments in intellectual property law and that was often my main motivation for attending the event. In recent years he has been unable to attend every panellists' meeting in person, but he nearly always manages to send us a video message. This year the high point was a talk by a senior executive of one of the world's leading domain name registries entitled "DNS Industry Highlights" and an update on new gTLDs by officials of INTA and the WIPO.

After Dr Gurry's video and a welcome from our chair, Erik Wibers, the meeting began with a resumé of the WIPO's activities in relation to domain name dispute resolution since last year's meeting. The year ended 31 Dec 2016 was a busy year for the WIPO with 3,036 case filings under the UDRP (a 10% increase over the previous year) and more than 1,200 new gTLDs operational (see WIPO Cybersquatting Cases Hit Record in 2016, Driven by New Top-Level Domain Names 16 March 2017). The WIPO Arbitration and Mediation Centre has also been appointed as a dispute resolution service provider for ".eu" and many other country code TLDs (see New .eu domain name ADR service and
Domain Name Dispute Resolution Service for Country Code Top Level Domains (ccTLDs)).

Another important development has been the publication of a new WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”). This is an analysis of panellists' decisions on various issues under the UDRP. It is important reading for panellists and parties' legal representatives. Most of the talks addressed aspects of the Overview and were given by senior colleagues on the WIPO panel.

If anyone wants to discuss this port or domain name dispute resolution generally, call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

4 Sep 2017

Auntie Jane's Trade Mark Tips: No 8 - Oppositions in the Trade Mark Registry

Intellectual Property Office in Newport

Jane Lambert

In my last trade mark tip, I talked about publication and some of the consequences. In most cases, there are no consequences at all. Your application is published in the Trade Marks Journal and nobody bats an eyelid. If there are no objections the application proceeds to registration as the infographic indicates. But sometimes the Intellectual Property Office receives third party observations which the examiner considers and or even an opposition.

An "opposition" is an application to the Intellectual Property Office to stop the registration of the sign that you want to register as a trade mark. It can be made on any or all of the absolute grounds for refusal mentioned in my sixth trade mark tip and/or the grounds that the objector has an earlier trade mark or an earlier right under s.5 of the Trade Marks Act 1994. An "earlier trade mark" is a trade mark that has been registered for the UK or the EU, an international mark, an application for any of those marks, or a mark that is protected as a well-known mark under the Paris Convention. An "earlier right" is the right to bring an action for passing off, copyright or any other IP right infringement or some other claim that would prevent your using the trade mark. These are known as "relative grounds for refusal".

Your first inkling that you may have a problem could be a letter from the patent or trade mark attorneys or solicitors for the objector setting out the objection and the reasons for it and inviting you to withdraw your trade mark application.  Sometimes it is accompanied by a form TM7A or notice of threatened opposition. This is one of the times when you may need legal advice either from a barrister or solicitor specializing in IP law or a trade mark or patent attorney.

If you decide to proceed with your application, the objector may issue opposition proceedings which he or she does by filling in a form TM7 or a TM7F. The objector (who has now become an "opponent") will fill in a TM7F if he or she wants a fast track opposition. Fast track proceedings are available where the opposition is based on s.5 (1) or (2) of the Trade Marks Act 1994 and the application to register the earlier mark was made less than 5 years ago. The main advantage is that costs awards are limited to £500 but the disadvantage is that there is not usually a hearing. In all other cases, opposition proceedings are to be launched with a form TM7.  If you want to defend your application you must file a notice of defence and counterstatement in form TM8 within 2 months of the service of form TM7.

I described what happens next in some detail in Oppositions in the IPO's Trade Marks Registry on 12 Aug 2015 in NIPC London. Basically, the case goes before a hearing officer who may give a preliminary indication as to how he thinks the case will go. If the case proceeds, the hearing officer will direct the parties to file evidence. If you are unable to resolve your dispute opposition through direct negotiation or perhaps mediation the hearing officer may decide the case on the written materials only or order a hearing if you or the opponent so wishes. That will usually take place at the Intellectual Property Office in Newport with one or both of the parties sitting in London or occasionally elsewhere. It tends to follow the usual course of civil proceedings with the opponent opening and closing and the applicant responding. Judgment is usually reserved for several weeks and is delivered in writing. An unsuccessful party may appeal either to a tribunal within the IPO known as "the appointed person" or to the Chancery Division of the High Court.

If the opposition fails either before the hearing officer or on appeal the trade mark application to register the trade mark proceeds to grant. If it succeeds the application is stopped in its tracks.

That is quite enough for one day. If you want to discuss this tip or trade marks generally, call me on +44 (0)20 7404 5252 or send me a message through my contact form.

27 Jul 2017

Auntie Jane's Trade Mark Tips: No. 7 - Some more Things that can go wrong

Author JulieB2768
Licence: Creative Commons Attribution-Share Alike 3.0unported  

Jane Lambert

Since my last trade mark tip on 15 June 2017, the IPO has published a timeline of the Process for applying to register a trade mark.  It's a really useful graphic which does a lot of my work for me,

We are now at stage 6 - "Publication."

If you go back to the timeline you will see a note in brackets.  If the examiner has no objections your application will be published in the trade mark journal for 2 months which can be extended to 3 during which time anybody can make "third party observations."

That is true but not the note is incomplete in several important respects which will become apparent if you click the number 6 or the accompanying note on the graphic.  The graphic links to a page entitled "Check the Trade Marks Journal".

For most people, the Trade Marks Journal is about as interesting as the telephone directory and equally impenetrable but it will be examined avidly by businesses called "watch services" whose job is to spot applications for trade marks that might possibly conflict with another mark. It may also be read by your competitors who fear you may be up to something but don't yet know what and possibly by busybodies with more time on their hands than is good for them. They are the ones who could delay or even defeat your trade mark application and they will certainly waste your time and cost you money, Ugh!

If you instructed a patent or trade mark attorney to make your application on your behalf there is a good chance that most of the busybodies and maybe some of your competitors will back off because they know that your attorney will respond if they make an objection. But if they think you are on your own they may make a "third party observation" or even launch an "opposition."

Now oppositions are something you really have to worry about because they go before a hearing officer whom you may remember from my last tip.  In that article, I said that hearing officers decide disputes between applicants for trade marks and examiners. These are called "ex parte" hearings because they are between you and the examiner. Hearings between you and people who don't want you to get or keep a trade mark are called "inter partes" which literally means "between other parties". "Inter partes" proceedings are much more like trials in the civil courts than "ex parte" hearings. Parties are represented by barristers, solicitors or attorneys and the loser has to pay the winner some costs.  As Mr Trump might tweet if he is a few letters short of 140, "bad news" or even "very bad news".

Much less worrisome are "third party observations" which are made under s.38 (3) of the Trade Marks Act 1994:
"Where an application has been published, any person may, at any time before the registration of the trade mark, make observations in writing to the registrar as to whether the trade mark should be registered; and the registrar shall inform the applicant of any such observations."
The next paragraph adds:
 "A person who makes observations does not thereby become a party to the proceedings on the application."
If you click the link "object to a trade mark application" link on the "Check the Trade Marks Journal" page, you will be taken to a page headed "Objecting to other peoples trade marks and the legal costs" You will find that most of that page is on oppositions but there are the following lines on third party observations:
"At any point after we have accepted and published an application for registration, and before it is actually registered, anyone can make what we call ‘third party observations’.
You can tell us if you think that we accepted the application in error. You must bring to our attention any relevant facts of which we may not have been aware at the time we accepted the application.
Making a third party observation is not a formal legal action, and we are not bound to act on them. We may rely on evidence given in an observation to support any later objection to the application.
There are several ways to file third party observations with us."
I wouldn;t bother clicking the link under "file" because it is mainly about patents. Basically, you can send your observations by post, fax, email or traipse down to Newport and hand them over to reception. If you do go to Newport you might like to check out what's at the Riverfront Theatre where you might see Ballet Cymru if you are very lucky and the excavations and museum at Caerleon (see Tip #2).

Well, that's all for now folks. Next tip will be about Oppositions.

Meanwhile. third party observations put me in mind of Alexander Pope:
"Damn with faint praise, assent with civil leer,
And without sneering, teach the rest to sneer;
Willing to wound, and yet afraid to strike,
Just hint a fault, and hesitate dislike;
Alike reserv'd to blame, or to commend,
A tim'rous foe, and a suspicious friend."

15 Jun 2017

Auntie Jane's Trade Mark Tips: No. 6 - Some of the Things that can go wrong

Author Priwo
Source Wikipedia

Jane Lambert

There are all sorts of reasons why your application to register a mark might fail.

The official who examines your application ("the examiner") may consider that your mark falls within a number of statutory exclusions. For a start, the examiner may consider that the subject matter of your application is not even a trade mark, possibly because it is not a sign, or perhaps because it can't be expressed in writing or doesn't distinguish your goods and services from those of your competitors.

Even if it is a trade mark, the examiner may object to it on the grounds that it is not distinctive, that it is descriptive of the goods or services, or common to the trade. He or she may consider your proposed mark to be offensive or it may be too similar to a royal, national or other protected emblem. Those objections are called "absolute grounds for refusal" and are set out in sections 3 and 4 of the Trade Marks Act 1994.

Wherever possible, the examiner will give you an opportunity to overcome the objections. If you fail to take advantage of that opportunity or if the examiner believes that the objection cannot be overcome he or she may refuse your application.

If you think the examiner is wrong you can appeal against his decision to the Registrar of Trade Marks (that is to say the Comptroller or Chief Executive of the IPO). The Registrar will appoint an official called "a hearing officer" to consider your appeal. I have described the appeal procedure in "If the examiner says "no" - ex parte hearings in the Trade Marks Registry" 10 Aug 2015 NIPC London. That is where I or some other specialist intellectual property barrister can often help. We can advise you of your chances of success and, if necessary, represent you at the hearing before the hearing officer.

Even if the examiner has no objection to your application or you manage to overcome any objection that he or she raises, you may not be out of the woods. Someone else may object to your application and I will consider that problem next time.

Until then, I leave you with my case note on T-397/09 Prinz von Hannover v OHIM  [2011] EUECJ T-397/09  (Trade Marks: Prince Ernst August of Hanover and Brunswick etc v OHIM 6 June 2011 NIPC Law). Cheeky wasn't he!

Enjoy the lovely weather folks.

13 Jun 2017

Auntie Jane's Trade Mark Tips: No. 5 - How do I register a Trade Mark?

Jane Lambert

Probably the best advice I can give to an entrepreneur or some other business owner who wants to register a trade mark is:  consult a trade mark attorney.  In  Can I apply for a Trade Mark by myself or must I instruct an Attorney? 31 May 2017 I advised that it is possible to apply for a trade mark without an attorney, that it has been done many times before and that unrepresented applicants can expect a certain amount of practical help from the Intellectual Property Office ("IPO") but I would not recommend it. I cautioned that it is a lot of trouble to save a few hundred pounds and it could result in a lot of extra expense as there are many pitfalls in the process.

In that article, I directed readers to the "Find an Expert" section of the Chartered Institute of Trade Mark Attorneys' website or suggested that they might attend an IP clinic or even have a word with me. The fee that any of them would charge for taking your instructions, ascertaining your needs and preparing your application would be chickenfeed compared to the cost of your time in learning how to do all that for yourself. If you try to do it yourself there is a much higher risk of something going wrong. And in the very unlikely case that an attorney gets it badly wrong, he or she is regulated and insured against professional negligence whereas you are not.

For those who chose not to take my advice, I gave a number of tips. They are worth reading again even if you do instruct your attorney because you will find it easier to instruct your attorney and the attorney will find it easier to advise you if you know what is going on.  If you want to register an EU trade mark you should also read the EU Trade Mark fact sheet published by the IPR Helpdesk.

Your application to register a mark does not mean that it will be accepted. In tomorrow's tip, I will consider some of the things that could possibly go wrong. Theresa May will tell you all about that.

12 Jun 2017

Auntie Jane's Trade Mark Tips: No. 4 - "What is a Trade Mark?"

The Beehive Pub Sign in Grantham
Creative Commons Attribution Share Alike 2.0 Licence
Source Wikipedia

Jane Lambert

Lots of things can be trade marks.

S.1 (1) of our Trade Marks Act 1994 defines a trade mark as "any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings" and includes within the definition "words (including personal names), designs, letters, numerals or the shape of goods or their packaging".

Hannah Roberts mentioned some of the more unusual trade mark applications and registrations in her article "11 of the most unusual company and celebrity trademark applications and disputes" 31 Dec 2016 Business Insider UK.

The requirement of graphical representation (that is to say, that the sign can be written down in letters or figures) did present a problem when it came to smells because nobody could figure out how to express a perfume or other aroma in writing. However, that may change soon as the requirement for graphical representation will be replaced by a requirement that a mark must be
"represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor"
(see Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks).

Here's a question to ponder. Could a pub sign be a trade mark?  And if so, could the sign for The Beehive pub in Grantham which consists of a hive of been fall within the definition?  I discussed the issue in What has intellectual property got to do with Grantham? 4 Sept 2014 NIPC East Midlands. Do you agree?

Grantham, incidentally, is a very beautiful market town not far from the A1 and on the railway line London and  Scotland, the North East and Yorkshire. It is famous for its parish church, its grammar school where Sir Isaac Newton was a student, for the birthplace of our first and, so far, only successful woman prime minister, Gravity Fields (its biennial arts and science festival) and the magnificent Chantry Dance Company and Chantry School of Contemporary and Balletic Arts.