ACID exhibition stand

So you’ve painstakingly taken all the steps to prepare for the exhibition (see our piece above entitled “Be prepared”!). Then, shock, horror, you spot the copy. The temptation may be to go and confront the stallholder. Don’t give in to it. In relation to certain rights, if an unwarranted threat is made it can result in you being sued in certain circumstances if the right that is being asserted does not exist or is not being infringed or the threat is not carried through. At ACID accredited exhibitions you have the advantage that there are always ACID staff with specialist IP lawyers on hand who can step in and can advise you as to what protection you may have and what steps you can take if you spot a copycat product. That applies whether or not you are an ACID member. Sarah Birkbeck of ACID Accredited Law Firm, DMHStallards advice is:

  • Carefully gather evidence. This may seem obvious but the more information you can provide to ACID the better placed they are to help you quickly. Visit the stand and make a note of the following: the date and time; the name of the company or business exhibiting; the location of the stand by reference to the exhibition programme; a clear description of the offending product including its name/product number; the location of the offending product within the stall. You do not have to engage the stand holder to obtain this information but if you are approached you can swap business cards (as this provides useful information about the stand holder) and ask for a sample of the product in question or a copy of their catalogue. You can then provide this to ACID.
  • Gather evidence of the product which you think has been copied, if possible including a catalogue reproduction, together with evidence of ownership of the design, any confidentiality/indemnity agreements relating to it.
  • Call the ACID exhibition hotline 07956 229876 or come and speak to someone at the ACID stand.
  • Work with ACID to try to resolve the problem as quickly as possible

Provided that a specialist ACID accredited lawyer is satisfied that rights subsist in a design that belongs to you and that it is appropriate to notify another party of your rights, ACID can relay your concerns to the third party on your behalf and attempt to mediate the dispute. Very often, a carefully planned on the spot approach by ACID can result in an agreement to remove the potentially infringing product from the exhibition stand, and placing a potential infringer on notice of your rights can be enough of a deterrent to avoid future problems particularly where no or few products have been sold. This newsletter has illustrated dozens of examples of such on the spot resolutions and has a mission to publicise successful outcomes as a further deterrent. If an on the spot resolution is impossible, you can enter into a formal agreement to instruct one of the ACID accredited lawyers to take further legal action. This should always be done without delay as any unreasonable delay can affect the remedies available to the Courts in such situations.

Using the ACID Protocol for on the spot interventions has resulted in over 1700 grass roots mediations and less than 30% have required further legal action.

Joining a growing band of industry media supporters, idFX and FX have placed their full editorial might behind ACID. From 1st September both titles will feature the ACID media supporter logo on the inside front cover of each publication and have agreed to support ACID editorially on IP issues which affect the design industry. FX editor Theresa Dowling says, “I am delighted that ACID are pioneering the way forward, campaigning against forgeries, piracy, and copies. This is the increasing scourge of our times for all types of designers, and manufacturers, so thank goodness that Dids Macdonald and the ACID team have taken up the flag to educate the uninitiated and shame those that piggyback on others’ hard work. We, at FX, are proud to be associated with ACID.”

To date ACID has 10 publications who are media supporters all of whom have used the association to demonstrate their commitment to fighting design theft, our new association with idFX and FX will provide further opportunities for ACID to educate designers regarding IP issues whilst helping them to protect and fully exploit their work”

idfx
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CEDR/ACID Mediation Theatre – Can you afford not to mediate? Experience the benefits of mediation from the experts.

cedr logo

CEDR, Europe’s leading mediation services provider and ACID are collaborating to deliver a mediation theatre to provide you with the opportunity to experience the dynamics of mediation through a live demonstration, with commentary provided by a high experienced CEDR mediator. There will be two “theatres” both using IP case studies – one with legal representation acting on behalf of the companies and one without legal representation. We hope you will be able to stay on for drinks afterwards, kindly provided by Accredited Law Firm Hammonds.

HAMMONDS LOGO

Cost: £30.00 (plus 5.25 VAT)
Date: Wednesday 17 October 2007 registration 4.30 for a 5pm start. Drinks 7-8pm
Where? The UK Intellectual Property Office, Harmsworth House, 13-15 Bouverie Street, London EC4Y 8DP
Contact: Faith Hardman at fhardman@cedr.com or telephone 0202 7536 6000

mediate logo

WHEN IS MEDIATION APPROPRIATE?

What is mediation? Mediation is a process where a neutral third party assists the parties in dispute to reach a settlement.

When is it appropriate? In any dispute situation.

Why? Patricia Jones of ACID Accredited Law Firm Hammonds explains that lawyers and their clients are sometimes reluctant to engage in mediation, especially when they consider they are in the right! Parties should always identify what is their objective before embarking on litigation. Mediation is one strategy to achieve this objective. Even if a party is successful, a Court is limited in the remedies it can award. In mediation, the parties have complete freedom and control over the outcome and the settlement terms.

Mediation is considerably less expensive than litigation and occupies less management time. Mediation should be considered as part of the litigation strategy early on, before the parties have become too entrenched in their positions or incurred legal costs which could be a barrier to settlement.

How does a mediator help? Very often the mediator can help with negotiations that would otherwise breakdown if the parties were to try to resolve issues face to face. The mediator can also help break down barriers to a successful settlement by helping the parties think through the risks of litigation and to honestly address the question of what happens if they don’t settle.

Nothing to Lose There is nothing to lose in entering into the mediation. It will not prejudice the litigation if a settlement is not reached. But on the other hand, there is every chance that a settlement will be reached.

Patricia Jones

ACID members are entitled to discounts. Please e-mail us for details

The UK Patent Office

The Copyright Licensing Agency Ltd

Intellectual Property
Government Backed Intellectual Property Portal

Department of Trade and Industry
Government department responsible for the interests and promotion of competitiveness of UK industry

DACS Design and Artists Copyright Society www.dacs.org.uk

European Patent Office

World Intellectual Property

United States Patent & Trademark Office

Irish Patents Office

United States Copyright Office

Delphion Research Intellectual Property Network

Institute of Patentees & Inventors

Chartered Institute of Patent Agents

Eureka Club
W website supporting new ideas and inventions

British Music Rights
Promoting the interests of Britain’s composers, songwriters and music publishers.

Mechanical Copyright Protection Society
Collect and distribute “mechanical” royalties to its composer & music publisher members

Performing Rights Society
Collect licence fees for the public performance & broadcast of musical works

The Patent Café
Forum

IP Worldwide
American site updating attorney & executives on the law and business of Intellectual Property

Alliance Against Counterfeiting & Piracy
I its objective is to raise public and political awareness of copyright and trade mark issues

British Video Association
Trade body representing interests of publishers and rights owners of video home entertainment

Federation Against Copyright Theft
Iinvestigative organisation, which aims to combat counterfeiting and piracy in the British & American film, video and television industries

Institute for Public Policy Research
UK centre-left think tank.

World Trade Organisation
TRIPS (Trade-Related Aspects of Intellectual Property), a WTO multilateral agreement onintellectual property

The Design & Artists Copyright Societ
The copyright and collecting society for visual artists in the UK

IPAC (Intellectual Property Advisory Committee)
An important body formed to give high level independent advice to Government on Intellectual Property issues

The British Design Council
Their aim is to inspire and enable the best use of design in the UK

Business Link
Give help and advice on running a business and starting one, throughout the UK

The IP Mall
An internationally acclaimed IP resource Website providing information and links to the most valuable online resources in the world

The Trevor Baylis Foundation
Set up to promote the activity of Invention by encouraging and supporting Inventors & Engineers, with practical help and advice

The OHIM
Trade mark applications

OHIM (Trade Marks and Designs)
FAQ Section

OHIM (Trade Marks and Designs)
European Design Registrations Application Form.

OWN IT (The Creative London Intellectual Property Advice Service)
www.own-it.org

Design Nation
Showcase website with work by over 120 selected designers.

The Design Trust
Educational resource for designers planning to set up in business.

It would take a brave retail chain to think they are going to get away with emulating Chloe fashion after the brand has effectively taken action, this time against Top Shop. The Chloe brand is owned by an ACID member who has a proactive approach to their intellectual property protection. Whilst the sum of £12,000 paid by billionaire Sir Philip Green is a mere drop in the ocean, the ensuing bad publicity might not be so cute and has gone a considerable way in yet again raising awareness that fewer and fewer retailers are getting away with producing nearly identical lookalikes and capitalising on the investment and creative excellence of luxury brands. Coincidentally, ACID has just sent its submission to the Ministry of Justice on the unsatisfactory level of damages which are due to be implemented in the Enforcement Directive. At the moment there are few elements which provide a dissuasive deterrent against copying but if ACID has its way, retailers should expect heavy financial penalties if they copy in the future.

Following the settlement, Dids Macdonald, ACID’s Chief Executive said, “There are still so many out there who think (quite wrongly) that if you make a percentage change or a specific number of changes then you have created a new design. This is a complete myth. Under relatively new European Community design law, the legal test is whether the copy creates the same overall impression as the original on the informed user”. She continued, “Following so closely on the heels of Jimmy Choo’s high profile cases against Oasis and Marks & Spencer, the writing is on the wall for retail chains that step out of line”.

In December 2006 the Chancellor Gordon Brown, now Prime Minister, appointed Andrew Gowers to undertake a consultation on the UK’s intellectual property and its fitness in the 21st century. Recommendation 38 in the recent Gowers Report on intellectual property suggested that the “DCA (Department for Constitutional Affairs) “should review the issues raised in its forthcoming consultation paper on damages and seek further evidence to ensure that an effective and dissuasive system of damages exists for civil IP cases and that it is operating effectively. It should bring forward any proposals for change by the end of 2007”. To fail to give due consideration to the creation of exemplary damages for IP civil cases would be a grave oversight and would appear to be in direct conflict to the contents of the DTI Innovation Report (December 2003) regarding creativity and inventiveness. In this report, the former Prime Minister acknowledged that creativity and inventiveness was one of the country’s greatest assets. However, if nothing is done to remedy the levels of copying and dealings in pirated goods by creating judicial support via a set of damages which hurt the perpetrators sufficiently, the UK design industry is likely to be damaged irreparably.

ACID (Anti Copying In Design) considers that the current system of damages as described by the term “additional damages” in the Copyright, Design and Patents Act 1988 should be replaced by Aggravated and Restitutionary Damages and considers that whilst Article 13 of the Enforcement Directive has gone some way towards addressing the continuing problem of exemplary damages, it is not nearly enough in relation to IP infringement for patents, designs, trade marks, passing off and copyright.

Damages under the existing legal structure are woefully inadequate and serve no purpose in dissuading those who seek criminal gain from what is still considered a “soft crime” by continuing to make vast profits from the immoral, anti-commercial and criminal activities which they continue to pursue. Current estimates about the escalating cost of IP crime and its devastating effects on IP rights holders would be significantly improved if there was a capability within the Court system to use aggravated and restitutionary damages in addition to exemplary damages as a compelling deterrent in fighting what has become a serious threat to the UK’s intellectual capital, its intellectual know-how and resultant IP rights.

It is for this reason that the current system of damages under civil law provides no disincentive whatsoever to copiers and is a significant contributor to the extent of the copying problem currently being experienced. The Enforcement Directive was implemented on 28 April 2006, the provisions of Article 13 have gone some way but not nearly far enough towards remedying the situation but ACID considers this is just a starting point.

Aggravated Damages (aim to compensate the victim of a wrong for mental distress)
The mental distress and moral outrage of IP theft must be seen to be quantified and demonstrated by the award of aggravated damages – often it takes a tremendous amount of conviction, courage and huge financial cost to take action causing ensuing mental distress.
Restitutionary damages (aim to strip away some of the gains by a defendant arising from a civil wrong)
Under an assessment of damages, a rights owner can only recover the profit that it would have made on sales of their original articles if they can show that each sale made by the infringer would have been a sale made by the rights owner. Where the selling price of the infringing article is significantly lower than the original, which is almost always the case given that the infringer bears no design, development or promotional costs, it is not possible for the rights owner to recover their lost profit on those sales
Exemplary Damages (aim to punish the wrongdoer)
Punishing the wrong doer in a fair and just society rarely happens in IP infringement. IP crime is still not considered as “theft” nor is it promoted as “theft” clearly because of economic concerns and a lack of education and awareness by the consumer that they are doing anything wrong when they buy counterfeit, pirated or copied goods.

ACID recently received a letter from Joanna Caria from the Office of Fair Trading regarding Fairguide – a name which for many of our members has a hollow ring (see below)

FROM THE OFFICE OF FAIRTRADING
Dear Ms Macdonald
Construct Data Verlag GmbH
I write further to your previous contact with the Office of Fair Trading (OFT) regarding the business activities of Construct Data Verlag GmbH (hereafter ‘Construct Data’). The OFT has recently been contacted by its Austrian counterparts and is pleased to be able to pass on information concerning recent development regarding Construct Data that may be of interest to you.As you may be aware, the Austrian publishing company Construct Data has contacted businesses worldwide for entry in an online trade-fair exhibitors’ directory bearing the name ‘Fair Guide’. Recipients often gained the false impression that, even when signed, this was a free entry or a free update of an existing entry in the official exhibitors’ directory of the respective trade-fair organizer. However, full completion and signature of the entry was in fact subject to a charge and the entry had nothing directly to do with the trade fair mentioned or its organizer.

The Austrain Schutzverband gegen unlauteren Wettbewerb (Protective Association against Unfair Competition) (hereafter ‘Schutzverband’) concluded that such advertising was misleading under the relevant legislation and instituted proceedings against Construct Data covering the European Union, the EEA and Switzerland. We understand that Construct Data has undertaken before an Austrian court of law on 13 February 2007 to immediately refrain from such misleading communications and from insisting on any payment claims within the EU, the EEA and Switzerland in so far as any person has been misled and therefore placed their signature in error.

If Construct Data continues to send misleading communications and reminders continue to companies, the Schutzverband has stated that it will take all possible further legal steps in order to put an end to such conduct.

If you have continued to receive communications or demands for payment from Constuct Data you may wish to contact me at the email address below and I will email or post you a copy of a standard response letter that has been forwarded to us by the Schutzerband.
Yours sincerely,
Joanna Caria
Joanna.caria@oftgsi.gov.uk

ACID would also like to raise awareness of a second business guide. Please be aware that you may receive a communication from an organisation calling itself the Euro Business Guide. They are based on the West Indian island of Nevis and are asking you to sign up to their guide for a sum of € 2970 (or £2000 at current rates). For this you will be inserted into their guide for 3 years, which they will automatically extend year on year after that period is over – unless you give notice 2 months before the year end.

ACID recommends that YOU DO NOT join or subscribe to this guide. The benefits of the guide are untested and it is a lot of money to commit to. We advise that you always check that you are dealing with exhibition organisers when asked if you would like a listing in a manual of any kind. Don’t sign up for what you think is a free service only to find out at a later date that you have committed to something entirely different.

In response to a recent survey carried out by ACID through its member participation at Spring & Autumn Fairs, the majority felt that more could be done by show organisers to support them against the escalating threat of copying within the industry. Following recent positive discussions between Dids Macdonald of ACID and Alison Jackson, Managing Director of Trade Promotion Services, Alison Jackson has put her full weight behind ACID Accreditation and has listened and evaluated the views and feedback expressed by ACID members. Certain criticism had been levelled at TPS for not adhering to strict enough controls on copying problems within the shows and an action plan has been put into place to address many of the shortfalls starting with a higher, more prominent position for the ACID stand and communication to all visitors of the importance which TPS and the Spring & Autumn Fairs place on brand protection and anti copying support. A communication strategy has been created to address the issues raised which will be fully up and running before Spring Fair 2008.

All were asked, “What do you feel organisers could do to improve both exhibitions to provide a safer trading environment?”

Some of the many responses included,

  • “TPS could exclude those companies (who copy) after a certain number of complaints”
  • “Plenty – for example if exhibitors are known for copying they should not be included”
  • “As always, more policing, more no photography signs, more anti copying messages”
  • “Look at long term,- many of us have invested in the shows for years, we need more support against piracy”
  • “Ban camera phones – be more vigilant”
  • “Make an example, publicise and gain credibility that money is not the only key driver”
  • “Make the shows trade only with no access to students/general public”
  • “Raise awareness to visitors about a zero tolerance to plagiarism”

65% of those questioned thought that ACID did not have a high enough profile, 60% felt that not enough weight was put behind ACID’s presence and with little visibility of ACID Accreditation status and 75% said that organisers are not tough enough on exhibiting companies with a known history of copying.

Dids Macdonald added, “The problems of counterfeiting, piracy and plagiarism are simply not going to go away, all exhibition organisers have a duty and responsibility to those customers who invest heavily in their exhibitions to work closely with organisations such as ACID in the fight against design theft”.

William Gatacre, Managing Director of Jellycat said, following the survey, “It is essential for the British Gift business as a whole, that ACID has as high a profile as possible, as copying in the long term will damage the whole industry. ACID should be clearly as visible as possible, so there is prevention rather than litigation. We have been at these shows for over 15 years and have spentd a vast amount of money. However, it is not about size time or monetary spend, it is about protection and building an industry. If protecting intellectual property is ignored there will cease to be an incentive to invest money in design, and this will eventually lead to a serious decline in the British and European Gift business. Unsurprisingly this would also lead to a serious decline in attendance at UK and European Gift Shows. There would be no reason for buyers from the UK and Europe to come to shows. They come to see and buy new designs. Only Chinese shows would gain which seems a real shame as design is so strong in this country and is one of the attributes that makes the UK a design leader in this field.

ACID members invest approximately 2.5 million per year in Spring & Autumn Fairs and over a period, for many, of between 10 and 15 years representing an approximate sum of £17.5 – £20million. To date ACID has facilitated 1700 on the spot mediations using the ACID Exhibition Protocol at its Accredited Exhibitions, less than 30% required further legal action – testament to its proactive work at grass roots.

ACID (Anti Copying In Design) members Firecraft, manufacturers of high quality hand carved solid stone fireplaces, took immediate action when they were faced with a problem with North Western Gas Safety Services, trading from the internet website gas-fire.gb.com when they continued to display photographs of Firecraft’s fireplaces without consent. In addition, their website displayed the Firecraft name and logo despite the fact that Firecraft had previously requested the images, name and logo be removed. Following the issue of proceedings, a settlement was reached and a Consent Order filed with the Court. The settlement with Alan Cropper, a director of North Western included undertakings to cease infringing Firecraft’s copyright and not pass themselves off as Firecraft. In addition they agreed to pay £9000 in costs and damages.

Bill Evans, the proprietor of Firecraft, contacted ACID accredited law firm McDaniel & Co through the membership specialist intellectual property hotline. McDaniel & Co wrote a cease and desist letter which was initially ignored. However, after considering the only remaining option, he decided to issue proceedings and Niall Head Rapson of McDaniel & Co agreed to conduct the matter under a Conditional Fee Agreement. Proceedings were commenced in the High Court against North Western and, in particular, its Director Alan Cropper.

The use of the images without consent constituted copyright infringement. In addition as Firecraft were not supplying any fires to North Western and the fireplaces on the website were offered for sale, inferring that North Western would make fireplaces to the designs of the fireplaces (themselves works of artistic craftsmanship) in the photographs, thus constituting a further potential act of copyright infringement. The use of the Firecraft name and logo also constituted an act of passing off.

Before setting up a new web site, be careful to whom you trust your domain name registration.

An instance was highlighted recently by the Centre of Excellence for Micro Nano and Photonic Systems Limited. The Centre is an organisation established to promote the economy of the North East of England by exploiting nanotechnology potential and, more particularly, seeking to transfer research ideas into nanotechnology products and services.

The Centre of Excellence established a joint venture with Durham University centering around terrahertz technology and, as part of the process, a web site was considered and it was thought a good idea to register relevant domain names. The following were registered:

durhamterrahertz.com
durhamterrahertz.co.uk
durhamterrahertz.eu
durhamterrahertz.org

The domain names were registered with UK Reg (a trading name of Fasthosts Internet Limited). As there was no web site yet created, The Centre of Excellence thought nothing more of it. They simply thought their domains were secure.

So it was a mild shock to say the least when a letter came in from lawyers acting for Hertz Services Inc. The letter explained that they acted for Hertz, and that acts of trade mark infringement were being committed by The Centre of Excellence. They accused the Centre of Excellence of creating a “click through” web site directing people to car rental companies. There was such a site attached to the domain names.

The site had been “put up” by UK Reg. If visitors hit the site, and click through to one of the pages listed on it, UK Reg receive a payment. Hertz were obviously upset.

The Centre of Excellence was forced (as the owner of the site) with a potential trade mark infringement action. They took legal advice and were advised that the activity, although not of their own doing, was trade mark infringement. As the owner of the web domain address, they were the logical people to approach.

Obviously the offending activity was that of UK Reg (who the Centre have reported to Trading Standards and the Office of Fair Trading) but it took time and expense to sort the matter out.

So when registering a domain name, you should take these practical steps:

1. Ensure that you direct the domain name to your own web site or holding page. This will avoid this kind of problem.
2. Always check that the domain register company you are using do not put up their own “click through” holding page.

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