A new programme launched on 26 November 2009, aims to create greater understanding of the value of intellectual property and  how IP underpins the UK’s Knowledge Economy.Launched by the Rt Hon David Lammy MP, Minister of State for Higher Education and Intellectual Property, the major international programme and research agenda will investigate issues seen as vital to our economic well being. This report sees the Strategic Advisory Board for Intellectual Property Policy (SABIP) and the Intellectual Property Office (IPO) building on a programme of work defined in June by a Forum of international experts from around the world.

Rt. Hon. David Lammy

To drive this work forward – as outlined in The Economic Value of Intellectual Property: Research Agenda and Plan of Action - they are establishing a number of national and international partnerships and work to clarify the role of IP in innovation and economic growth has already begun.

David Lammy, said, “Maximising the value of intellectual property is vital to the creative and innovative growth of the UK economy. Globalisation and the digital revolution are making us re-examine the current IP system and opinions are divided on how fair and useful it remains. This new research agenda looks to fill the gaps in our knowledge and provide a better understanding of the impact of IP on innovation and growth of the UK.”

 To begin to turn the research agenda into tangible and deliverable research, SABIP and the IPO can also announce:

• That they will partner with the UK Innovation Research Centre (UK~IRC) to deliver focused policy events and fellowships to begin seeding research projects.
• Work with National Endowment for Science, Technology and the Arts (NESTA) and other partners to build on their Innovation Growth Accounting framework to quantify intellectual property rights within the wider economy.
• Conduct value chain analysis to assess how copyright value-chains or networks are affected by digital media and the implications of this for copyright law

Joly Dixon, Chairman of SABIP, said:

“SABIP was set up just over a year ago to provide the independent research needed to inform IP-related policy making.

 “And this ambitious but achievable new research agenda will provide the conceptual framework, reliable data, and analysis that has not to-date existed in this field of work. I hope it will encourage others, not only in the UK but around the world, to collaborate with us in this work”

Economic growth is dependent on technological change and wider creativity, both of which are key drivers of innovation. This research agenda aims to generate a better insight into the relationship between intellectual property rights (IPRs) and innovation and how these influence economic growth – information which will provide the robust evidence-base needed to underpin policy-making.

For further information, or copies of the report, contact Salma Khan on salma.khan@sabip.org.uk or 07810 481732.

1.  The research will look at the following:

• The overall role of IPRs in the knowledge economy.
• How far the IPR system gives incentives to creativity and innovation.
• How far the IPR system restricts the ability of firms and individuals to benefit from new ideas.
• How intellectual property (IP) rights impact on the inventive and innovative process.
• The economic value of copyright, trademarks, and trade secrecy.
• The effects of alternative and non-existent, intellectual property rights systems, including open innovation, on the strength of economies.
• The potential for tailoring the IP system for different sectors.

2.   Other projects by SABIP are currently underway to understand consumers’ changing attitudes and behaviours in the digital age, and others to deepen our understanding of how small and medium size businesses use the intellectual property rights system.

3.   Knowledge Economy - HM Treasury Economic Working Paper no 1 (2007) sets out a definition of the knowledge economy for the UK. (http://www.hm-treasury.gov.uk/d/pbr_csr07_macroeconomic333.pdf ). This captures the investment firms make in knowledge assets (R&D, software, design, new business models, reputation, skills) and shows that it now surpasses investment in physical assets. Building on this work, Imperial College London and ONS show, in NESTA’s Innovation Index, that investment in knowledge accounts for two thirds of UK market sector economic growth since 2000. The trend was given a major boost in the 1990s by increasing availability of information and communications technologies, increasing connectivity over the internet, and by globalisation of markets due to national and international deregulation.   

4.   Intellectual Property Office – is an operating name of the Patent Office. It is an Executive Agency of the UK Government’s Department for Business Innovation and Skills (BIS)   and a Trading Fund. As part of BIS, the IPO is responsible for the role of IP rights in supporting innovation and reports to David Lammy, the Minister of State for Higher Education and Intellectual Property.

5.    SABIP’s mission is to provide strategic, independent and evidence-based advice to Government on intellectual property policy, covering all types of intellectual property rights. SABIP was formally established on 2 June 2008 following a recommendation in the Gowers’ Review of Intellectual Property published in December 2006. The Gowers’ Review identified the need for an organisation designed specifically to provide a strategic overview of policy and to advise on how the UK’s interests should be pursued in international IP negotiations.

6.    SABIP is an independent, Non-Departmental Public Body with the Intellectual Property Office (IPO) as its sponsoring agency. The IPO is an Executive Agency of the UK Government’s Department for Business Innovation and Skills (BIS) a Trading Fund. As part of BIS, the IPO is responsible for the role of IP rights in supporting innovation and reports to David Lammy, the Minister of State for Higher Education and Intellectual Property.

Further Information Economic Value of IP Research Agenda & Plan of Action

BURNT FINGERS FOR FOCAL POINT

ACID (Anti Copying in Design) members Firecraft, who specialise in the manufacture and sale of beautiful hand carved stone fireplaces and accessories, are celebrating after a landmark High Court ruling involving a competitor, Focal Point Fires Plc. Having previously been successful in invalidating Focal Point’s trade mark “Firecraft” and subsequently issuing High Court proceedings to Focal Point for “passing off”, Judge Peter Smith declared that there was no reasonable prospect of Focal Point Fire being successful in defending the Action because the Registry had already found that “passing off” had occurred. The Court will issue a declaration that Focal Point passed themselves off as Firecraft in due course.

ACID CEO Dids Macdonald said, “Pursuing a ‘passing off’ action is not for the faint hearted and involves considerable time, evidence and, therefore, cost. Often the outcome is far from certain. In clarifying this aspect of trade mark law, Judge Peter Smith has reinforced the importance of giving full attention to a system whereby trade mark registrations can be invalidated in the trade marks registry on the basis of prior rights and the potential consequences in subsequent high court proceedings. However, one benefit of this decision has been the substantial cost savings and use of court resources” 

In 2008 Firecraft were successful in their application to the UK Intellectual Property Trade Marks Registry to invalidate Focal Point Fires PLC’s trade mark for the word FIRECRAFT. Firecraft had based their application on the fact that they had created substantial goodwill in the name Firecraft over many years and that Focal Point’s use would be likely to damage this goodwill. Focal Point did not appeal the registry decision. In March 2009 Firecraft issued High Court proceedings to Focal Point, suing them for passing off. The strength in Firecraft’s case was that Focal Point could not defend the action for “passing off” as the Registry had already found that passing off had occurred.

Firecraft then applied for a summary judgment on the basis that Focal Point had no reasonable prospect of success in defending the Action. A hearing took place before the High Court and on 10 November 2009, Judge Peter Smith handed down Judgment in Firecraft’s favour. The Court will, in due course, issue a declaration that Focal Point passed themselves off as Firecraft. The question of costs and damages will be dealt with at a further hearing.

Niall Head-Rapson, of ACID accredited law firm McDaniel & Co. who acted for Firecraft commented, “This is a significant result for Firecraft. They have been inundated with enquiries relating to the fires of Focal Point, which they do not supply. It has interfered with, and had a detrimental effect, on their day to day business. Taking action has indicated their tenacity in protecting the credentials of the Firecraft brand, under which they have gained a significant reputation.”

ACID MembersNomad Wheelchairs, has just become the first UK company to win the ‘Excellence in a First Time Design Project’ Award at the European design awards, the DME Awards, in Eindhoven, Holland (http://designmanagementeurope.com/site/index.php?page=2&a=37).

Mark Owen, a wheelchair user himself, started Nomad with his brother Jon, just 6 months ago, in response to over a decade of feeling frustrated by the choice of wheelchairs available to the market.

The coveted DME Awards recognise and reward companies for excellent management of the complete design process, from product design to branding, marketing and literature. It covers how a company pulls all these elements together in order to lead through design and includes planning, communication, delivery and results.

Nomad are the first mobility company to win any DME Award and is the first UK company ever to win this category. Other companies to enter the awards this year came from Lithuania, Holland, Germany, and across Europe, and represented many various industries, from architecture to soft drinks.

Jon Owen, nomad Director, said “Even to be judged against such strong mainstream and lifestyle companies is a huge compliment to nomad – it is exactly the goal we had when we started – to move wheelchairs towards a more aspirational lifestyle sector. To win it was just mind-blowing!”

“We have a very strong design industry in Wales, and Nomad was lucky enough to work with some of the best that Wales has to offer – The stunning Mrk1 frame comes from Studio SDA, while Angela Gidden MBE heads up Attic 2, who developed our brilliant upholstery. Elfen have been responsible for the branding and marketing materials. Nomad brought these three design houses together to create a product and brand that is changing the way people think of wheelchairs and mobility companies”. 

The award recognises the fact that this was a truly multi-team, multi-disciplinary project and, more importantly, that is was a great success. The winning poster plots nomad’s journey through the design process and was produced by nomad and Elfen. 

Both Nomad Wheelchairs and Angela Gidden are ACID members and they join a long list of ACID award winning designers.  Jon Owen commented, “At Nomad, we invest very heavily in design.  As with any investment or asset, you need protection and ACID offered us just that.  This award comes 6 months after Nomad was launched – the first six months have seen us exhibit in UK and Germany, we have sold many wheelchairs to many happy customers and we are now looking to get representation overseas. The MRK1 wheelchair and the company’s marketing are setting new standards in the industry. Nomad are frequently asked to contribute to industry debate, to write articles for magazines and to feature on magazine covers – not bad for half a year’s work.”

The Nomad journey essentially started when Mark Owen had a road traffic accident in 1996, which left him paralysed from the chest down, and with the use of only his right arm. Jon Owen considers this award to be “proof that it is possible to make the best of any situation, no matter how bad it seems at first”.

 http://www.nomadwheelchairs.com/

The driving force behind a recent conference bringing Government, brand companies and key influencers together, was John Noble, Director of the British Brands Group. The event’s raison d’être was to involve a diverse group of 100+ key influencers, to listen to significant names behind brand creation, to brainstorm and to advise Government on whether the UK could be a better place in which to build brands.  “I see this conference as a defining event in making sure branding, and its place in the UK economy, begins to be recognised as the significant force that it is”, said John Noble.

Using an “iceberg” analogy for successful brands, conference Chair Rita Clifton of Interbrand claimed that “Most brand tangible benefits lie under the “sealine.” citing one of the world’s most successful investors in history, Warren Buffet, who rates “The Brand” as the first in his top three priorities in which to invest, followed by people – and surprisingly in third place, finance. The UK spends £32 billion on building brands and Clifton emphasised the compelling onus on Government to protect this investment from counterfeiting and free-riding.

Outlining his objectives of the day, conference host The Rt. Hon David Lammy, Minister for Intellectual Property said, “I want to establish a place for a branding policy within Government. It is important not only for the UK to emerge from recession but by recognising branding’s contribution to the UK economy; brands have and will play a significant role.  Underpinning new thinking will be the results of the workshops to distil ideas and possible action points which I will consider to influence future policy decisions. Government’s priority will be to establish clear ”next steps” to maximise benefit from UK’s established brands and encourage development of new and emerging brands.”

Pharmaceutical brands were represented by James Hallet of GlaxoSmithKline consumer healthcare division whose simple  decision-making process for acquiring a new brand is, “Can we manage the brand better?” By identifying the importance of brand credentials offering choice, trust, differentiation and innovation as the clear benchmarks, Hallet said, “There is a huge role for Government to recognise the importance of brands to the UK economy, intellectual property being critical to brand success. This is a golden opportunity for the Treasury to harness and develop a creative fiscal change and approach to tax advantages.”

According to Professor Christine Greenhalgh of Oxford University, brands and brand building provided employment for 1 million in the UK. Out of 2,240,000 UK companies trading by size in 2005, the proportions of those who used the registered system were large firms 5.4% SMEs 4.8% and Micro firms 0.8%. It is fair to say that within any five year period around 95% of SMEs and larger firms and 99% of Micro firms do not apply to use the registered IP system. In total this represents approx 3.6% of UK businesses. (A micro enterprise is up to 10 employees, an SME is up to 250 employees). Since 1996 the Community Trade Mark has become increasingly popular with the UK lying 2^nd in Europe with 65,930 registtations, behind Germany with 91,196.

The man behind global brands such as Audi, Vodafone, BA and Johnnie Walker, Bartle Bogle Hegarty’s Nick Kendal said his brand message was simple, “Excellence created by a combination of ideas and strategy” though the BRIC countries posed a real ongoing threat to western brands fuelled by cost reduction and ease of access through digitisation.

Relatively new brands ‘kid on the block’ Richard Reed of Innocent emphasised the importance of defining the vision for the brand and the effective connection between the brand and the end user. He cited brand gurus like Richard Branson as having paved the way to raise awareness about the significance of successful brands and the entrepreneurship that underpins all successful names. Innocent’s Reed tried more than 20 times to raise initial start-up funds and his key message to Government was, “Unlock the door to funding availability, simplify it and make it more accessible”.

Finally Simon Anholt, whose claim to brand fame lies in the tricky and diplomatic job of advising Governments on country branding, said, “Brands sit squarely in the minds of the consumer and in the context of brand messages”. And Anholt’s message to the UK Government? “The UK brand is outdated, we used to be a nation of shopkeepers, now we are a nation of creative entrepreneurs. Where are the foot soldiers? The UK should be known by its brands – it is a vector of national identity and we are missing a trick!”

Rounding up the event was the new Director of Trade Marks and Design, Andrew Layton, whose words ignited a beacon of hope for those who feel that the UK Government has sidelined the importance of brands to the UK economy. Layton admitted that whilst preparing for the conference, he googled “Government Policy on Branding” and found nothing! Not a surprise to the more cynical amongst us, but he reinforced that now is the time to match policy with business needs to emerge through recession into an improved and changed global market competitiveness through UK brands.

ACID CEO Dids Macdonald said, “There needs to be a much more robust framework for regulation and enforcement, something I believe the UKIPO has thus far sidelined. I hope that the UKIPO will look seriously at improving the Civil Justice system and act positively on recommendations from the recent Jackson Review.” Heartening for organisations such as the British Brands Group, representing UK brand owners, was Layton’s, “Commitment to press for a review on the issue of look alike packaging in line with Gowers’ recommendation.” At last, through Andrew Layton on behalf of the Government, there has been a public commitment regarding the importance of brands to listen, understand, consider and act – hallelujah!

Ganduxer Design Products Now Available at The British Museum

Ganduxer Design has produced a range of exclusive giftware for The British Museum which will be available from mid-November. The product range is hand decorated in the UK and the intricate timeline designs detail the history of Ancient Egypt and Ancient Rome. The range consists of bone china plates and mugs, coasters, magnets and tea towels.

Greta Paa-Kerner, Managing Director of Ganduxer Design is delighted to have teamed up with the prestigious British Museum.‘The new giftware range celebrates human endeavour during the Ancient Roman and Ancient Egyptian periods. It is the perfect fit with the British Museum as the range complements the Museum’s celebration of human achievement and milestones throughout civilisation.’ She goes on to say, ‘This range is the perfect gift for anyone interested in history or culture as it highlights the events that have brought us to where we are today. Visitors to the British Museum can now enjoy choosing their own memorable piece from the range.’

If you are unlucky enough to be in an intellectual property dispute, whether it concerns the ownership of graphics, the terms of a licence/royalty agreement or  someone has broken the terms of a confidentiality agreement, the devil is in the detail. It’s the small print which counts in your commercial relationships and allows you to address these hiccups more easily. It makes absolute sense to spare a few moments to see how healthy all your agreements are and where your intellectual property is at risk. After all, everyone is in business to  grow and develop business relationships, which will provide a return on investment for the time invested. Successful entrepreneurs need to be reassured that the precious commodity that is intellectual property or “know-how” is protected as much as it can be.

ACID recently carried out a  comprehensive ACID Intellectual Property Strategy Review,  with the Bentley Designs UK management and design team.  When we looked at the relationship between their PR/Marketing external advisors and the photographer who was taking pictures of their ranges it was apparent that clarity was needed. Who owned the rights? Many believe that if you pay a photographer to take photographs of, say, a new range of furniture, the commissioner (or the person who pays for the photographs) will own the rights. In law the answer is usually NO!  

Bentley Designs Bergen Table

The photographer will be the first owner of the intellectual property rights, in this case copyright, in the photograph(s) of your designs. However, it is possible to obtain the copyright by having the photographer “assign” the copyright to you and it is important to realise that copyright may only be assigned by a signed agreement in writing, and having an Intellectual Property Assignment Agreement drafted is the best way of achieving this.

Paying for the services of a professional photographer makes no strict difference to the legal position as stated above. However, payment may well provide an “implied term” of any agreement that you have with the photographer, that you intended to own the copyright rather than the photographer. Such an implied term will most likely result in your being permitted to decide where your photographs are published and for what purpose.

The photographer will also have moral rights associated with the photograph(s)he/she has taken. This means that you will have to take into consideration not using the photographs in a manner that could be interpreted as derogatory by the photographer. You will also have to credit the photographer as having taken the photograph(s) wherever published. In order for you to have full rights over how the photograph(s) are published, and to avoid having to name the photographer each time, you will need the photographer to “waive” these moral rights. A waiver of moral rights may be incorporated into an Intellectual Property Assignment Agreement.

Emma Holmes, Bentley UK Sales & Marketing Manager said, “As soon as ACID pointed this out we were able to purchase a generic, reusable IP Assignment Agreement and, together with some further advice from ACID Accredited Law Firm McDaniel & Co,  this is now part of our standard re-usable menu of agreements. People come and go at agencies and the most important thing for us is to know that we own the IP rights to any photographs that we have paid to have taken. It is also reassuring to know that if, as happened to us, we discovered someone had used our images on their website in order to sell a similar product line, we could take immediate and appropriate action, knowing that we had a piece of paper to say that we own the rights in the images which had been ”lifted”.

How many businesses thrive as a result of a positive relationship between designer and manufacturer and how few have a robust licence/royalty agreement to benefit both parties should things go wrong? In the creation of an industry standard agreement, ACID spent a considerable time consulting with both designers and manufacturers to create an agreement which demonstrates a fair balance between both parties and which is easy to understand, avoids legal jargon and most importantly is legally enforceable.  Having such an agreement protects the interests of both parties, without compromising either party and maximises commercial opportunities. Below are some key considerations for designers when thinking about a licence/royalty relationship: 

1  They’re my designs!… Assigning the rights in your designs effectively hands all the control over in those designs and the manner in which they can be exploited by the recipient, unless you agree specific terms under which you keep the right to maintain control over certain matters.

2      What licence?  If you do wish to retain more control over your designs, then you should license them rather than assign them. This means that you retain ownership of the rights and grant others the right to use the designs subject to certain restrictions which you can impose.

• An exclusive licence means that you cannot use the designs for the duration of the licence – that becomes the exclusive right of the person granted the licence.
•  A sole licence means that both you and the person granted the licence can use the designs.
•  A person who is granted a non-exclusive licence merely has the right to use the designs but cannot take action to prevent anyone else also using the designs. Someone granted an exclusive licence can take action to stop anyone else using the designs.

3      Make a list All the designs which are to be covered by the licence should be listed in a schedule attached to the agreement. This avoids any doubt as to which designs are covered. If the licence covers future designs then further schedules should be added when those designs are created. 

4      Copying – who pays the bills? The licence should state whose responsibility it will be to take action against someone found copying the designs. Sometimes the cost of this can be shared, as can the proceeds recovered from the copier, but the licence should state how they will be shared.

5      Hidden extras The licence should set out exactly how royalties will be calculated. There will be a big difference between a royalty calculated as a percentage of the retail selling price of the article as opposed to its wholesale price. Check for further deductions for things such as discounts on bulk orders.

6    Which country? It is possible to license different companies to sell the same design in different countries or other geographical areas. The licence should clearly state which country or countries it covers, and should prevent active sales of the designs outside of that territory.  It is also important that the licence states which country’s law will apply to the licence.

7      How much? It is possible to agree either a one-off lump sum, or payment of regular royalties on sales, or a combination of the two, often in the form of an upfront payment followed by royalties. If you do agree an upfront payment and royalties, check to see whether the lump sum payment is deducted from future royalties. Also consider using a minimum guarantee for royalties, so that you are paid a guaranteed minimum amount each year even if the royalties actually earned are less than that amount.

8      How long? This can often be an important but difficult issue, as the shelf life of the design is often not known at the outset.  It may be difficult to get a company to agree to continue paying royalties after the period of copyright or design right protection has expired.

9      The last word… If you want to ensure that the products are being made to your correct design, or to your standards, then include a right to inspect samples before they are put into production. Similarly, you can include clauses which state the manner in which the products will be promoted. You may want to ask for your name to be included on all publicity materials.

10    Remember!… You should always read the whole of the licence and ask if you are unsure of the effect of any of the terms.

ACID member and prolific designer, Damian Evans, who works effectively and successfully with some of Europe’s leading brands through licence royalty agreements says, “Without the inhibitors of writing and providing fee proposals, design briefs/meetings with a manufacturer become freer melting pots for idea growth. A manufacturer can also spread annual design costs over a greater range of product development allowing a competitive edge and, by using a broad spectrum of designers with different skills and styles, this adds to a manufacturer’s diversity. As the designer retains ownership of intellectual property rights in many cases, they are far more likely to present more ideas and greater choice than if they were only being paid a fee. Licensing rather than owning a design means that the period of license can be agreed and determined by both parties. Designers, too, are past masters at recognising the prevailing or emerging zeitgeist of a particular time. The creative lateral thinking designer is a sponge of new ideas and trends. Access to this pool of knowledge is licensing’s strongest asset to a manufacturer.  

It also allows a manufacturer to become a leader rather than a follower. Use of designers by store design buyers automatically provides a transformational competitive edge. Look at the metamorphosis of, say, John Lewis? By using the low risk license approach a company can keep on its toes with regard to continual product innovation, learning from mistakes and developing commercial successes. A designer, too, can be the eyes for more environmentally, cost effective use of materials”. Damian Evans was a key-driver in the creation of the ACID industry standard licence/royalty agreement which has since underpinned many successful commercial relationships

Susan Edgerton Ball, also a user of  ACID’s industry standard License Royalty Agreement to underpin all her licensing relationships, lists her top tips when negotiating a license royalty deal:

Make sure that the company you deal with commits to sales for a period of at least 3 years and that there is a clause included to enable you to accurately audit their Accounts.

1. Ensure that your Royalty Payments in the Agreement are in monetary terms rather than percentage terms.
2. Ensure you have an intellectual property lawyer specialist to include additional clauses in the standard license royalty that are pertinent to your particular needs.

The success of many within the interiors industry relies on trade secrets and know-how – it takes years to build up and can take moments to destroy when such valuable knowledge is stolen or used without permission. A company’s “know-how” is the fuel which provides a competitive edge in the market place, helping to differentiate your particular products or expertise from those of others.

So what constitutes a “trade secret” and “know-how”? Well, for example, a trade secret could be a formula such as used by coca cola or a chemical formula for a glue or cement. It could be an idea for a new product range or a method of manufacture. You cannot register trade secrets in the same way as other intellectual property rights and it does not have to be “novel” in the same way that design right or patents are. A trade secret does not have to be produced in a tangible form of reality either. For example, take a company’s valuable database of clients and suppliers, a classic example of confidential information gathered over years which gives that company the competitive edge. How many employers have failed to protect this vital information and taken the trouble to ensure that any employees sign a confidentiality agreement and/or have a specific clause in their standard terms of employment?

So, in short, if you land up in a dispute with someone who steals your trade secret you will need to be able to prove that you made every effort to keep it secret and confidential. A good start would be to have a policy in place which identifies all the trade secrets you have, lists the confidential knowledge or “know-how” that your company possesses and ensures that access is restricted tothis knowledge. Also keep an up to date  list of those who have been entrusted with this information. The bottom line – always ensure that trade secrets and confidential information is shared only when all parties have signed a “non-disclosure” agreement or confidentiality agreement. The devil is in the detail of SIGNED agreements upon which you can later rely if things go wrong.     

Italy has long been known for iconic designs and quality craftsmanship: the Arco lamp, the Fiat 500, the Vespa, Bialetti coffee pots, Alessi kitchenware, to name just a few…

Italian courts and customs: the designer’s best friend  Overseas mass-production and counterfeiting has raised the importance of design protection. Italian courts are taking an active role in allowing rights holders of registered and unregistered designs to exercise their rights and Customs are particularly active in preventing suspected counterfeit goods from entering into Italy and the EU via Italian points of entry. Whereas in the UK the debate has been focussed more on copyright than design right, in Italy, probably due to its strength in designs, the attention is focussed largely on designs.

Italy provides for the protection of registered and unregistered designs. Registration is relatively inexpensive and is highly recommended. Unregistered design right lasts for three years and protects only against mere copying of the design, whereas registered design right lasts for up to 25 years and its scope extends to any design that does not give a different general impression to the informed user while taking into account the author’s degree of freedom in making the design.

The Italian secret weapon… A very significant aspect of Italian law is that it allows the proprietor of a design application to initiate court action, seizures at fairs, or interlocutory injunctions even before registration is completed, provided that the application has been published. Moreover, seizure orders can be granted within just a few hours. The applicant is entitled to prevent third parties from manufacturing, offering, putting on the market, importing, exporting or using a product in which the design is incorporated.

Registering designs in Italy As in the UK, in Italy a design registration may be granted for the appearance of the whole or a part of a product resulting from lines, shape, colours and materials, provided that the appearance is new and possesses individual character in the sense that the overall impression produced on the informed user is different from the overall impression produced by any design previously made available to the public. Components of complex products are registrable only if they remain visible during their normal use. Features of appearance solely determined by a technical function cannot be registered, nor can “must fit” products where the shape is necessary in order to connect the products to one another.

The novelty requirement is of the absolute type: disclosure of the design before the filing date of the application for design registration or before the priority date is prejudicial to registration. However, disclosure of the design by the author is not considered novelty destroying if the application for registration is filed within the 12 months following such a disclosure. Moreover, the novelty requirement is met if the disclosure cannot reasonably be considered available to the specialised and interested circles within the EU.

Priority can be claimed for up to six months from the filing date of a first design filed in any country that is a member of the Paris Convention. Multiple designs can be filed in one application, provided that all objects belong to the same class of the International Locarno classification, thereby reducing costs.

On filing the application, the applicant may request that the application be made accessible to third parties only in a subsequent period which can not exceed 30 months from the filing or priority date.

The Italian Patent Office does not perform any substantive examination, and registration is granted after the formal requirements have been checked, usually about one or two years from the filing date. There is no opposition procedure.  As a result, a design lacking novelty and/or individual character can only be invalidated by launching a court action before one of the specialist IP courts in Italy.  Other grounds that can be raised are non-entitlement, and public policy or morality preventing the validity of the registration.

Italy: something to consider Italy is not always known as being a country that sticks to its rules when it comes to politics, but good design is well-respected. Accordingly, the Italian design registration and protection system has been honed to help protect rights holders. With the availability of quick seizure orders, commencing action based on just a design application, and the vigilance of Italian customs, Italy provides very viable options to designers to protect their designs and enforce their rights.

UNITED KINGDOM

4 Lincoln’s Inn Fields
London  WC2A 3AA
T: +44 (0)20 74302998/ +44(0)20 74302999
F: +44 (0)20 74300165

ITALY

Via Serbelloni 12

20122 Milano

T +39 02.763011

F +39 02.76301300

SWITZERLAND

Via Ariosto 6
6901 Lugano
T: +41 (0)91 922 0585
F: +41 (0)91 922 0558

E-mail: rapisardi@rapisardi.com

Web: www.rapisardi.com

In Her Majesty’s speech on the opening of parliament, The Queen has now confirmed that the Digital Economy Bill will be part of the legislative programme for the next parliamentary term. Although she did not mention IP specifically, the associated briefing from the Labour Party makes it clear that the Bill will include the following measures:

• Introducing proportionate measures to reduce the widespread problem of unlawful sharing of creative work (such as a song or film) online. These measures will place obligations on Internet Service Providers to work with rights holders and if necessary to take technical measures against persistent infringers;
•  Protecting authors by extending public lending rights to non-print books such as audio books and e-books;
•  Updating the UK’s 300 year old copyright framework through the regulation of collection societies (who collect revenue on behalf of authors) and to make provision for the granting of licenses for “orphan works” – creative works where the copyright holder is untraceable

In terms of immediate next steps, the Department for Business, Innovation & Skills should provide more details on the Bill which will be circulated by The Alliance Against Intellectual Property Theft of which ACID is a member. The Speech will also be debated in the Commons which may raise some issues.

CBI calls for IP to be central to government’s economic priorities!

The CBI has emphasised the importance of IP as a driver of future economic growth in meetings with David Lammy, Minister for Higher Education and Intellectual Property and Shadow Minister, Adam Afriyie MP. The CBI called on the government to take a holistic view of the factors that determine where companies invest in the creation and exploitation of IP. In particular the CBI stressed the need to improve the UK’s tax competitiveness, including through the introduction of a ‘royalty box’ system. “The IPO must also work domestically to act as a champion for IP across government and to educate the public about the importance of IP.” says Tony Cottam, Chairman, CBI IP Committee

Read more www.cbi.org.uk/pdf/20091001-cbi-ripe-for-success.pdf

The Hidden Art Open Studios features around 30 designer-makers selling attractive designs from their own studios. From lighting to textiles, fashion accessories to interior products, you are sure to find the ideal gift that no one else will be giving this year. A sale of opulent lighting and beautiful furniture made by designers who are committed to reusing salvaged items.
Quality and attention to detail are paramount.

Visit The Light Lounge @ Urban Upholstery with ACID Member Madeleine Boulesteix  To view purchase or commission works by Urban Upholstery and Madeleine Boulesteix visit:

Venue: Urban Upholstery, 21 De Beauvoir Road, London N1 5SF
Dates and time of the show: 16th of November 2009 – 10th of January 2010
Opening Times: 10:00 to 18:00 from Mon to Fri and 11:00 to 15:00 on Sat.
Hidden Art Open Studios 28th – 29th Nov & 5th– 6th Dec 12pm to 6pm,
except for the 29th Nov that we will open for the Private View from 3pm to 6pm.
Tel: +44 (0) 207 275 9436
Websites:www.madeleinebouleisteix.co.uk www.urbanupholstery.com  www.urbanupholstery-events.blogspot.com