Original coffee table from Porta Romana 

Hartnell Interiors is to pay over £5000 in costs to ACID members Porta Romana in a recent settlement over look alike tables which Hartnell have now destroyed.

Two decades dedicated to creating objects of beauty under the brand name of Porta Romana has earned ACID members Andrew and Sarah Hills a reputation as a company which thrives on the pursuit of excellence and originality. Recently Andrew discovered some look-alike products being sold by Hartnell Interiors under the name of Clifton. They immediately instructed Niall Head-Rapson of ACID Accredited Law Firm McDaniel& Co. to send a letter before action. Despite providing compelling evidence of design ownership, Hartnell denied there was any wrongdoing. Draft pleadings followed and a settlement was reached. 

“A company like Hartnell, which describes itself on its website as providing a ‘unique and stylish range of furniture dedicated to design’, is misleading not only to their customers but the interiors sector generally”, says Andrew Hills. “Design credentials such as ours do not happen overnight. Innovative design coupled with a flawless service is the theme underpinning the Porta Romana brand and we will take action when and where necessary as a matter of policy”.

ACID’s CEO Dids Macdonald said, “All Porta Romana’s new designs are sent to the Design Data Bank – ACID holds 300,000 on behalf of all its members, a free membership benefit. Taking action requires evidence and there can be no more compelling evidence to support a letter before action. Copyists can rarely provide a design audit trail when challenged.”

Hartnell’s Version ‘Clifton’

ACID (Anti Copying In Design) members Btech are manufacturers of, amongst other things, wall brackets for flat screen televisions.  When they discovered graphics of some of their products in the 2006 Argos catalogue (without even the courtesy of stocking their products) they were affronted and sent a letter before action to Argos through ACID Accredited Law Firm McDaniel & Co. Despite lengthy correspondence, Argos refused to compromise and Btech instructed proceedings to be issued. Clearly Argos then knew that the matter was being taken seriously by Btech and decided to settle. Unfortunately, the terms of settlement were that they remained confidential.

Commenting on the settlement ACID’s Dids Macdonald said, “Often when major brands like Argos are challenged there is an insistence of confidentiality. Reading between the lines of previous cases like this, this is often a damage limitation exercise, but does it fool anyone?”

 The Alliance Against Counterfeiting & Piracy Supports ACID’S Ongoing Campaign to Introduce Criminals Sanctions for Design Infringement.

UKIPO Signals Tougher Penalties For Online Infringement

In a letter to the UKIPO to accompany the Alliance’s response to the above consultation, Susie Winter, Director General of the Alliance says,

“While not explicitly part of this consultation, the Alliance would like to register a concern at the continuing inequality between the penalties available for copyright and trade mark offences and those for design rights.  The EU definition of pirated goods amounts to any goods which are, or which embody, copies made without the consent of the holder of the design right (registered or unregistered).  Products within this design industry which are often pirated include plush toys, clothing and jewellery, with the industries most affected being furniture, textiles, interior accessories and giftware. 

The absence of any criminal sanctions in this area means that anyone dealing in pirated goods that are protected by design rights, rather than by copyright or trade marks, are at no risk of criminal proceedings being brought against them.  This means that while the proposal in this consultation, to increase the financial penalties available for IP offences in Magistrates’ Courts, is premature in the case of design infringement, it makes it all the more important for the government to addresses this anomaly and introduce criminal sanctions for design infringements. 

ACID is an associate member of the Alliance Against Counterfeiting & Piracy – a powerful lobbying group UK-based coalition of trade associations and enforcement organisations with an interest in ensuring intellectual property rights receive the protection they need and deserve. The Alliance is concerned with ensuring intellectual property rights are valued in the UK, and that a robust, efficient legislative and regulatory regime exists which enables these rights to be properly protected.  www.allianceagainstiptheft.co.uk

ALL CHANGE – NEW MINISTER FOR IP APPOINTED – THIRD IN 18 MONTHS.                             

David Lammy, MP for Tottenham has been appointed Minister of State for Higher Education and Intellectual Property. ACID lobbied for years to have a dedicated Minister for Intellectual Property but has been disappointed that in no less that 18 months 3 ministers have been appointed – Lord Triesman, Baroness Morgan and now David Lammy.

Rt. Hon. David Lammy

It would appear that Government is still not giving intellectual property the continuity in stewardship it deserves more especially when IP theft soars, SME’s are finding it increasingly difficult to afford to take legal action and, with the economy heading downwards, it will be reasonable to assume that many more will seek the fast track to market through copying. Whilst ACID believes that IP education plays a huge roll within the creation of a preventative and deterrent strategy against copying, it is still a microscopic element within Higher Education as a whole. In acknowledging the key and growing role that the creative industries play in the UK’s GDB and in light of the UK’s current fiscal crisis, wouldn’t it have been wiser to create a cabinet post reporting directly to the Prime Minister to better safeguard the UK’s intellectual capital?

Do you know when you can use other companies’ trade marks to trigger your own ads on search engines?

The recent decision of the High Court in the case of Victor Andrew Wilson v Yahoo! Limited[1]clarified the position in the UK on keyword advertising.  Advertisers may now use other companies’ trade marks as keywords to trigger their own advertisements on search engines.

The position in the rest of Europe is less clear.  Three cases on this issue recently came before the French appeal courts.  The first was brought by the proprietor of the trade mark EUROCHALLENGES against an advertiser using EUROCHALLENGES as a keyword.  The second was brought by the proprietor of the trade mark BOURSE DES VOLS but here the claim was against Google who had made BOURSE DES VOLS available as a keyword.  Both proprietors alleged trade mark infringement.  In the third case, the proprietor of the well-known trade mark LOUIS VUITTON brought trade mark infringement proceedings against Google for allowing sellers of counterfeit Louis Vuitton goods to use LOUIS VUITTON as a keyword.  In all three cases, the trade mark proprietors were victorious. 

The position taken by the courts in France is exactly the opposite of the approach taken by our judges in the UK.  This leaves the position worryingly unclear for businesses, particularly those wishing to advertise in multiple jurisdictions.  Because of the importance of the issue, the three French cases have been referred to the European Court of Justice (ECJ), the highest court in Europe.  The ECJ will give a definitive ruling on whether the use of third party trade marks by advertisers as keywords will be trade mark infringement.  UK judges will be bound to follow the ECJ’s ruling in future decisions.

For now, advertisers in the UK may continue to use third party trade marks as keywords and trade mark owners are powerless to stop them.  “But,” according to ACID Accredited lawyer Patricia Jones of Hammonds, “Both sides are advised to watch this space!”

http://www.lawgazette.co.uk/in-practice/search-engines-and-trademarks

Beware of fraudulent companies asking for what appear to be official fees for trade mark registration.

We all need to protect our Intellectual Property Rights, especially when things are getting tight in the economy.  Registering Trade Marks is a key part of any protection regime.  But Fraud seems to be on the increase and an old scam has raised its head recently. 

The registration process for any trade mark involves the payment of official fees.  In the UK there is one payment when you apply for a trade mark, in the European Community there is a fee for making the application and a further fee when your trade mark is about to be granted.

Fraudulent companies search the official register looking for applications which look like they are about to be granted.  They then send out a request for payment to protect your trade mark.  It comes on very official notepaper, usually with an official flag of the European Community calling themselves “European Industrial Property Protection”.  These ARE NOT requests for official fees but a ruse to get unsuspecting trade mark applicants to part with their hard earned cash.

If you are making a trade mark application you should only part with your money if the fee request comes from either:

1. Your agent who is making the application on your behalf
2. If you are making the application yourself, from the trade mark registry you are applying to. Usually this will be either the UK Intellectual Property Office or The Office for the Harmonization of the Internal Market.

OHIM have helpfully provided a page on their web site, detailing the fraudulent companies that they are aware of, which can be found at the following web address.

http://oami.europa.eu/ows/rw/pages/CTM/feesPayment/fraudCases.en.do

Niall Head Rapson of McDaniel & Co.

ACID member Watch Me are celebrating the success of contemporary watch brand watcha – silicone bracelet watches with waterproof replaceable LCD units. 

Despite the down turn in the economic climate, watcha has continued to show an increase in number of stockists and a subsequent growth in month-on-month sales.  Media interest is likely to spur further growth, with editorial coverage in Draper’s Record and forthcoming features in The Sunday Mirror and Shout magazine. 

Brand identity has been a key force in driving sales, with the registration of intellectual property rights as defined by the aims and objectives of ACID, enforcing the fingerprint and logo of watcha and distinguishing it from its competitors.

 Founder and Director of EGAR, ACID member Sue Scott-Horne was entered into the Blackberry Women & Technology Awards this year and did very well to be one of four shortlisted as a National Finalist in the Public Sector & Academia category. She attended the awards night at The London Marriot Hotel in Mayfair, London and was asked to be an Ambassador for Blackberry on the same evening which she gratefully accepted.

Sue is also a member of BFIIN, British Female Inventors & Innovators Network.  She won a ‘Special Recognition’ Award from BFIIN in March 2008 in Cardiff to commemorate her work in founding and developing EGAR with its range of unique PSHE resources which she showcased with positive feedback.  She is also a member of The British Association of Women Entrepreneurs (BAWE) and The Global Women Inventors and Innovators Network (GWIIN).

Sue, an Islington woman, holds a 25 years Long Service Award and was Commended by Islington Council, Education Department for her innovative work and commitment to children and young people.   She has worked in schools, youth clubs/centre’s and children’s care homes in Islington, specialising in teenage work.   Sue’s concern with teenage problems in society today, in the  light of the knife, gun and gang murders and the hopelessness that prevails for some of our young people, motivated her to develop education resources that can be used to change lives and make a difference.  Hence, EGAR!  Sue, a mother of four, (the youngest a son of 18) and a grandmother of four; was Head of Marketing and Deputy Head of Personal Social Health Education (PSHE) for Children’s Services in Islington, whereby she supported most of the Play and Youth Curriculum Development work, in this high profile inner city London borough.

 The economic down turn has some nasty by-products including a potential increase in copying. Like street crime this increase is fuelled by a need to make money – fast.  Copycats will seek a quick route to market by ripping off original design, rather than commissioning it, buyers will undercut suppliers and originators, unless they get their IP armoury in place, will be left vulnerable.

ACID ( Anti Copying in Design) has seen a marked increase in membership since the ‘R’ word became part of the UK’s vocabulary and a huge increase in the use of ACID’s Design Data Bank – a free service to members where they can safely store original designs should originator proof be required. ‘ People want to protect what they own more than ever’, says Dids Macdonald, ACID’s CEO, ‘in times of real prosperity there is not such a great desire to  enforce strict contract terms in business, enough money can bring with it a laisse faire attitude towards litigation. However, as this down turn has shown, designers and manufacturers are prepared to stand by their original work and do what they can to protect it.’

ACID members, equipped with a sound IP strategy are pro-active when it comes to IP protection.  ACID member, Smallbone & Co (Devizes) Ltd, has recently enforced their UK registered design and unregistered design rights in a kitchen island, part of the companies popular ‘Walnut and Silver’ kitchen.  Smallbone of Devizes are highly influential market leaders and their anti-copying strategy is a great model for any manufacturer committed to innovative, original design. Like all ACID members, Smallbone do not allow others to take advantage of their novel designs and are prepared to take immediate action.

As the threat of copying increases, conflict will inevitably ensue. With conflict comes the threat of litigation – which apart from the expense can be very costly in sleepless nights.  ‘This is why we encourage our members to be IP savvy and in times of dispute, seek mediation as a positive solution. There is no doubt mediation will become standard practice for dispute resolution in these worrying economic times’, adds Macdonald.

Mediation provides a highly cost effective and time effective route to solving allegations by bringing parties together with the support of a mediator to resolve alleged copying complaints, whilst avoiding legal intervention. So often mediation can result in realistic out of court settlements therefore avoiding potentially costly and often inflammatory legal disputes. As an alternative to litigation, mediation can also result in commercial agreements being brokered. Many designers have walked away from mediation with a royalty or licence agreement in their pocket rather than a hefty legal bill. 

ACID’s prime objective is to help designers appreciate and protect their IP equity. In this tough economic climate some of the UK’s excellent design talent could be sucked dry by high street copycats and many designer/manufacturers who may be experiencing financial difficulties just can’t afford to fight their case through the courts when their products are ripped off.  ACID’S objective is to ensure that every designer in the UK understands the value of their IP rights and has the support to put effective IP armoury in place in order to fight plagiarists while having access to the multiple benefits of mediation.

ACID will be present at the ACID Accredited Exhibition Interiors Birmingham 2009 which promises a complete showcase of the best in classic and modern, indoor and outdoor furniture and accessories.  The ACID Stand will be in Hall 1 D30 where we will be available for help and advice on all IP issues. One to one IP clinics are available in the following subjects:

       Design Protection
       Responding to Pitch/Tenders
       Brand protection
       IP Health Checks
       Exhibiting protecting new designs/ranges 
       Brand expansion using licensing
       Brand expansion through franchising
       IP focused industry standard agreements
       What’s in a name – trade marks

Interiors Birmingham is the ultimate sourcing solution for the trade interiors industry. Running over 4 days at the NEC Birmingham, from the 18-21 January 2009, this unmissable event is free to attend. Whether you are a retailer, interior designer, architect or contract buyer, Interiors Birmingham is perfectly timed and formed to provide the one stop shop for all your sourcing needs from high end bespoke furniture to volume or practical pieces.

IP clinics will also be held during 2009 at: 
ACID Accredited Spring Fair Stand www.springfair.com 1-5 February inclusive,
Autumn Fair, NEC www.autumnfair.com 6-9 September 2009
100% Design www.100percent design.co.uk (dtba) ,
Decorex www.decorex.com (dtba) 

For further information visit www.interiorsbirmingham.com

We will also be supporting all exhibitors of ACID Accredited exhibitions with the ACID Exhibition Protocol – an on the spot mediation service should IP infringements be discovered.