ACID, along with many other IP stakeholders, has spent many years lobbying for a dedicated intellectual property minister to spearhead the UK’s IP strategy. Finally, aggressive lobbying paid off with the Gowers’ Recommendations of 2006 and the appointment of the well-respected Lord Triesman in June 2007. We were hugely optimistic about Lord Triesman’s appointment as he demonstrated a real understanding of the complicated raft of issues affecting different IP rights’ holders.

Now we understand Lord Triesman is going to the FA. Whilst it will be football’s gain, its IP’s loss. Having unanimously won the contest to be the first independent FA Chairman, it only remains for the appointment to be confirmed by the full FA council on 16 January.

As with any new Government post, it takes a Minister several months to get to know all the key players within IP and to fully understand the difficulties facing many rights’ holders through counterfeiting, piracy and design theft. IP stakeholders have also invested a great deal of their time in briefing the new Minister on their issues and attending consultation meetings to put their case on behalf of thousands of interested parties. It is to be hoped that momentum and continuity will be maintained in the handover to a successor. Let’s hope that Government will make it a priority to select a ministerial candidate with a similar, refreshing approach and enthusiasm for IP issues that Lord Triesman has demonstrated in his short foray into IP.

COPYRIGHT CONSULTATION

On January 8th in what may be Lord Triesman’s last stewardship of IP, he launched a copyright consultation at the British Library following the Gowers Recommendations. This will deal with improving access to and the use of copyright material specifically a new exception for format-shifting, copyright used for educational purposes, research and private study, libraries and archives and parody. The Copyright Exceptions consultation closed on 8 April 2008.

Lord Triesman said, “Copyright law affects our every day lives whether through the music we listen to, the films we watch and the books we read. It underpins the success of a variety of culturally important and economically successful sectors of UK industry such as music, film, computer games and sport. In an increasingly digital world, we need to be sure that our copyright system keeps up with the times and works effectively. This consultation is part of a package of measures which is designed to do just that. It explores where the boundaries lie between strong protection for rights holders and appropriate levels of access for users. A system valued by rights holders and respected by users is critical to the success of UK creativity”.

Ian Fletcher, Chief Executive said, “We should not underestimate the importance of making sure that we draw the line between access and protection in the right place. I appreciate that there will be a range of views as to where that line should be but I would urge all those with an interest to make sure their voice is heard”.

At the event, ACID CEO Dids Macdonald urged Lord Triesman to make a clear distinction between what is legal and illegal activity so that this can be simply communicated to consumers in a fair and sensible manner, “IP theft affects a plethora of different and varied rights holders but the basic message should be made clear that IP theft should be considered as seriously as any other sort of theft”.

Soft toy designers and manufacturers Jellycat have again made a forthright legal challenge, this time to Padgett Brothers over a look alike giraffe. No further Padgett giraffes will be imported or distributed and an undisclosed compensation amount was paid together with a contribution towards legal costs. Importantly, Padgett supplied Jellycat with the details of the supplier and manufacturer which means that Jellycat can add these names to their list to watch out for in the market place.

In any copyright or design right disputes, clear, signed and dated documented evidence of design ownership provides a compelling historical audit trail and Jellycat were able to rely on unique, distinctive design features they had designed in their original work. Jellycat’s legal team confirmed that the design was protected by copyright and that as it was the first time the giraffes had appeared in the EU, Padgetts defence that they were innocently importing this cut no ice!

Commenting on the recent settlement, Dids Macdonald, ACID’s Chief Executive said, ‘As industry leaders, Jellycat’s message to the market place is clear, intellectual property (IP) protection is key to building and maintaining their brand credentials. The problems of counterfeiting, piracy and plagiarism are simply not going to go away. Together with ACID, these are shared challenges and common goals’

A lot it seems! In the first Judgment under the 2002 EU’s unregistered design right regulation, court action was taken by Mosaic the owners of Karen Millen against Dunnes Stores in Ireland. Irish High Court Mary Finlay Geoghegan ruled that Dunnes had, in fact, copied 3 Karen Millen garments and rejected Dunnes argument that the Karen Millen garments lacked “individual character” and “failed to produce a different overall impression on the informed user”.

Karen Millen’s shirts were made available through the chain in December 2005 and in 2006 remarkably similar designs were seen in the clothing retailers Dunnes. Karen Millen’s lawyers argued that the similarities in designs were neither innocent nor coincidental and relied on the EU regulation on unregistered community design. Following this it is believed that similar actions will be taken by Coast and Whistles, both owned by Mosaic.

ACID Comment: Following the recent ground breaking judgment by Lord Justice Jacob at the Court of Appeal on the case between Proctor & Gamble and Reckitt Benckiser guidelines were been laid down on how monopoly rights over designs should be interpreted in the future across the whole of the European Union. This is the first example of an unregistered EU design relying on this Judgment.

What is the definition of design? “Design” means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, colour, shape, texture, contours, materials and ornamentation. Unregistered design rights last for 3 years in Europe and 10 years in the UK. The Registered Community Design is a monopoly right lasting 25 years, renewable every 5 years. It is valid in 27 member states. Obtaining a registered UK or Community design is still quite expensive for many, so ACID has a design data bank which stores thousands of designs – this service is free to ACID members. The design data bank does not add to rights but provides evidence of the date designs are received by ACID providing independent evidence of design creation should it be required.

For more information regarding registration of designs in the EU visit the OHIM website

Instructing an ACID Accredited Law Firm

Key changes to anti-money laundering laws have changed the procedure for instructing an ACID Accredited Law Firm (“ALF”) or indeed any law firm. Understanding these changes will help ensure that your legal issues can be addressed by your ALF quickly and efficiently.

For some time, law firms have been obliged by law to perform anti-money laundering checks on new clients before providing any advice. This often means certain documentation must be provided to prove your or your company’s identity.

These laws have recently been tightened up, as follows:

If you or your company are not already regulated by anti-money laundering laws, or cannot verify your identity “automatically” under the rules, e.g., as a subsidiary of an existing client of the ALF both of which are unlikely then identity documents will usually have to be provided.

These must include:

1. A photo verifying your appearance
2. Your full name
3. Either your current address or your date of birth

For an individual and, for a corporate member, the same documentation from at least two directors, plus any individual with more than a 25% interest (e.g. shareholding) in the company.

The best forms of identity document for all three purposes are a valid UK passport or UK or EU photo driving licence (although limited other forms of ID are acceptable).

Your ALF must see the original (not a photocopy) of that document, or receive a copy certified as a true and accurate copy of the original by a “person authorised to vouch” (e.g. a solicitor, accountant, bank etc). In practice, it will be far quicker, cheaper and easier to adopt the first route and have the document securely delivered to the ALF, who can then return it by the same method.

As an alternative to the above, members can ask a person authorised to vouch (again, a solicitor, accountant or bank, etc) to provide a letter confirming that they have verified your / your company’s identity and enclosing their evidence of this. However, this route is unlikely to be used often, as those persons may well be reluctant to comply.

Commenting on the recent change in the law, Mark Heritage of ACID Accredited Law Firm Hammonds said, “In practice, we are advising that members provide passports or driving licences by secure delivery. This is because, as mentioned, the “easy option” of a vouching e-mail has now dropped away and an actual letter is needed, but is unlikely to be provided. Occasionally, we will be able to verify “automatically” (e.g. if the ACID member is a subsidiary of an existing client) but again, this is unlikely. In our experience, therefore, the provision of original ID documents is likely to be the quicker / easier / cheaper route for members”.

Further guidance will of course be given once an ALF is instructed, and a detailed e-mail will be circulated to members shortly. However, while these rules are an annoyance, there is no way around them. Therefore, the best approach is to have the relevant documents “ready to go”, to ensure that your ACID ALF can advise as quickly as possible.

Owners of the iconic brand Lacoste recently took action against a Cheltenham dental practice who registered their trade mark for dentistry services under Class 44. Lacoste had taken exception under the Trade Marks Act of 1994 and sections which concern crocodile devices. The hearing office dismissed the opposition in May 2007 and Lacoste appealed and lost. Costs of £1450 were awarded to the Dental Practice of Cheltenham.

ACID COMMENT: It would appear that there has to be a sensible approach when challenges are made by trade mark owners, especially clothing giants like Lacoste. Would the average consumer planning to go and buy a polo shirt be confused and go to the Chelthenham Dental Practice by mistake? We rather think not! ACID understands that a trade mark or badge of origin is used to determine or distinguish the goods and services of one brand owner from those of other or have we got it wrong?

ACID Accredited Exhibition Interiors Birmingham is the UK’s largest event within its industry and includes halls complete with Furniture, Furnishing Accessories and Soft alongside the high-end halls of Design Interiors, Lighting, Lighting Collection, Collection and Outdoor Collection.

Offering visitors a world of British design over 12 halls of the NEC, Interiors Birmingham is the ultimate showcase of the best in traditional and contemporary, interior and exterior products and design for the trade. Delivering pioneering show features alongside new suppliers, product launches, new designers, ideas and interiors trend prediction areas, this event has the complete interiors solution.

Interiors Birmingham takes place from 20-23 January at the NEC, Birmingham and is the key event for you to source for the seasons ahead.

Event Show Director Cathy Oates welcomed ACID’s support at the show saying, “Interiors Birmingham is proud to be an ACID accredited event”.

For all exhibitors to Interiors, ACID will be on hand on Stand E142 Hall 6 to give one to one advice on design protection and IP clinics on a whole range of subjects. Help and advice will also be available on set-up day 19 January via ACID’s specialist IP hotline, should it be required on, 07956 229876 provided by ACID Accredited Law Firm, DMH Stallard.

We have received a terrific amount of membership renewals for 2008 membership which commenced on 1 January 2008. Following ACID’s investment in a new database and improved payment facilities, we are now able to accept monthly, quarterly or annual direct debits which many have taken up. If you have overlooked your membership renewal do please get in touch with us as soon as possible. Unfortunately, if you have any designs lodged with the ACID design data bank these will be returned if your membership is cancelled. Also, a reminder that the ACID logo is a registered trade mark which is licensed for use on websites, marketing materials for current members only.

We very much appreciate the continuing support of all members who have renewed. Your endorsement and support of our continued work lobbying, raising awareness and providing a developing raft of member benefits ensures that ACID’s voice continues to be heard loudly and clearly in the battle against design theft!

Don’t forget if you are bringing out new designs the ACID Design Data Bank is a free benefit of membership. Sending new designs to the ACID office will ensure that you have independent evidence of the date it has been received by this office reinforcing your design creation date and audit trail. Design is so often an integrating activity and process, an increasingly significant contributor to organisational success, in other words, the bottom line. The role of design is evolving beyond just the physical process of creating beautiful objects, desirable packaging or unique branding. Design can be a linking force, a unifying element across the enterprise, a connection between business, culture, and environment. Ensure that its value is communicated throughout all your marketing material together with the member of ACID logo.