Dear ACID Member ….

So what happened in the world of IP in 2009? The good news is that intellectual property would appear to have gained a much higher profile and recognition by the Government’s policy makers. The bad news is that there is still no apparent cohesion between The Treasury, The Ministry of Justice and the UKIPO (through BIS) in fully protecting and valuing UK brands and the intellectual property they create. Few would deny the exciting transformation from a nation of shopkeepers into a nation of knowledge based entrepreneurs, so Government would do well to support this emerging pot of gold. Singing from the same hymn sheet by tangibly recognising the value to the economy of British brands wouldn’t be a bad start for any new Government!

Running parallel to a knowledge based economy come the pariahs and those who steal ideas and free ride on IP equity. It would be true to say that having waited for 2 years to see an improvement in exemplary damages for IP theft, the Ministry of Justice “disappointed” us by paying scant attention to providing a punitive award of damages to deal with escalating intellectual property infringement. It has also woefully failed to acknowledge, or recognise, the devastating effects this can have on micro and SME entrepreneurs. Whilst everyone would applaud the UKIPO’s policy of IP awareness, protection and registration, no-one can deny that for the majority, taking legal action against IP infringement is out of the reach of the majority. At present the Civil Justice system is inaccessible and time consuming and does not move in line with commercial needs. Business demands a much more robust framework for regulation and enforcement which has thus far been sidelined. We look to the Ministry of Justice to improve the Civil Justice system and to act decisively on recommendations from the long awaited Jackson Review on the civil justice system. Actions speak louder than words.

The Treasury would be wise to put a higher priority on their support of micro enterprises and SME’s (who make up 99% of our UK businesses) by giving them the right tax incentives to attract inward investment and ensure easier access to start-up funds. It is only 50 years ago that being a designer was considered to be one step above train spotting. Design’s evolution and meteoric rise in economic importance (and acknowledgement) has come about by the support of many design champions, not least, HRH the Duke of Edinburgh. Presenting the 50^th Design Council awards at Buckingham Palace to Andrew Ritchie, The Duke of Edinburgh said he richly deserved this coveted accolade for the quality and usability of the inventive Brompton folding bicycle.

At the recent “Branding in a modern economy conference”, the new Director of Trade Marks and Design, Andrew 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 there was hope, when 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. Layton finished by saying,

“There is a 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 a Government agency, there has been a public commitment – regarding the importance of brands – to listen, understand, consider and act. Hooray!

On a much more practical and grass roots level, prevention and deterrence provide a sound IP strategy so 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 spent. 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.

And a personal request! Many of you have supported the two Number 10 petitions to strengthen and improve design laws, if so thank you (and could you get another 5 to sign up!). if not……there is no better time than the present! www.acid.eu.com

And finally, a huge thank you to all the wonderful team at ACID and to our Accredited law firms, DMH Stallard and McDaniel & Co, all of whom have absolutely given their best shot this year!

 Let’s hope that 2010 is the best – safe trading!

 Dids

Dids Macdonald, CEO ACID

John Alty will become the new Chief Executive and Comptroller-General of the Intellectual Property Office, the Minister of State for Intellectual Property announced today in a press release through the UKIPO.

Currently Director General for Fair Markets at the Department for Business, Innovation and Skills, John brings with him broad experience of business, regulation and markets and will work to promote the Government’s innovation agenda, supporting creativity in the UK. . Previous roles have included Director Business Relations and Director Europe in DTI, for whom he has worked for most of his career.

John Alty said, “I am delighted to be taking up the Chief Executive post at the IPO. The IPO plays an essential role in supporting BIS’ aims of delivering economic growth and business success through supporting innovation. “Our IP framework is also important to all of us as consumers of goods and services. I look forward to helping the Office to make a real impact in the UK and internationally.”

Minister of State for Intellectual Property David Lammy said, “I would like to welcome John to his new role at the Intellectual Property Office, at a time where innovation and invention are more important than ever to the UK’s economy. He has a wealth of experience that will be invaluable in taking the work of the IPO forward, especially around our recent Copyright Strategy, and I look forward to working with him.”

John succeeds Ian Fletcher, who held the position of Chief Executive between April 2007 and October 2009, and will take up his role early next year. Sean Dennehey, currently interim Chief Executive, will continue in the role until John takes up his post.

Firecraft and Focal Point Fires plc have settled the litigation between them in relation to the FIRECRAFT mark. The terms of the settlement agreement prevent Focal Point Fires from using the FIRECRAFT mark in the future.  Focal Point Fires has already rebranded its fires “eko fires”. 

Focal Point Fires started to use FIRECRAFT for gas and electric fires in 2001 and registered a trade mark at the Trade Marks Registry of the UK Intellectual Property Office.

Last year Firecraft were successful in the Registry in applying to invalidate Focal Point Fires’ trade mark for the word FIRECRAFT. 

Firecraft based their application on the fact that they had substantial goodwill in the name FIRECRAFT in stone fire surrounds and that Focal Point Fires’ use on fires would be likely to damage the goodwill Firecraft had developed over the years. 

Firecraft issued proceedings against Focal Point Fires in the High Court in March 2009 for passing off.  In summary judgment proceedings, the Judge, Peter Smith J, found for Firecraft, stating that following the Registry proceedings, Focal Point Fires could not defend themselves against the passing off action.

Firecraft

Firecraft is a family firm providing high quality hand carved stone fireplaces from its factory in Hinckley which it has supplied to satisfied customers Nationwide for nearly twenty years.  For more information visit www.firecraft.co.uk or telephone 0116 2697030.

Focal Point Fires plc

Focal Point Fires plc is the UK’s largest manufacturer of fuel effect fires with both electric and gas fuel effect fires featured in an extensive product range, which includes flueless catalytic gas fires, traditional inset gas and electric fires and electric stoves.

The eko fires range is a revolutionary collection of gas and electric fires combining stylish design and innovative technology from eko fires.

If there are any queries arising from FIRECRAFT gas and electric fires which have in the past been sold by Focal Point Fires and its authorised distributors, members of the public are asked to contact eko fires at http://www.ekofires.co.uk/contact.asp.

ACID Members benefit by having  free initial legal advice from intellectual property specialist lawyers as one of their membership benefits. 

We are very proud to be supported in this aspect by Tim Ashdown and his team at DMH Stallard  and Niall Head Rapson and Andrew Lee at McDaniel & Co.

With DMH Stallard based in London and the South and McDaniel and Co located in the North, ACID has your IP rights covered.  There are very few – if any – membership organisations that can provide this type of IP specialist advice, from lawyers who are working at the forefront of actions and positive protection day in, day out.

Not only do our ALF’s provide regular articles and advice for our Newsdesk, Website and e-newsletters, they also provide the legal back-up for the ACID team at ACID Accredited Exhibitions.  Help and advice is made available not just to ACID Members, but to all exhibitors at these events – a huge plus for any exhibitor at an ACID Accredited Exhibition.

For case studies of ACID Member legal settlements visit http://www.acid.eu.com/news/category/legal/

Investing for returns – enforcing your IP rights

It is a common misconception that enforcing your Intellectual Property rights will be a long drawn out, and costly process. Brand owners often believe that if they invest in enforcing their IP rights, they will end up spending more on legal fees and “lost” management time investigating the problem than they’ll recover in the long run.  As successful brand owners, it is likely that the unscrupulous will try and piggy-back on your success.  However, having a clearly thought-through brand management, protection and enforcement plan in place can end up with the brand owner being the clear winner. It is all about choosing the right battles and navigating them cleverly, with the assistance of an able commercially minded legal team.

DMH Stallard, ACID accredited lawyers since 2006, get results for brand-owners on the basis of their sound understanding of their clients’ commercial goals. Not only will they act fast and strive to recover money to pay for all of your legal costs, they will also work hard to secure tangible returns on your investment – payments of damages and sending out a clear message to the marketplace which acts as a warning to others.

  TIM ASHDOWN

As an example, DMH Stallard are currently working closely with Office Holdings Limited (“Office Shoes”) pursuing [8] separate claims against companies who have infringed a number of their distinctive shoe designs. Office Shoes are bucking the trend in the retail market showing impressive success despite the recession and consequently are a clear target for copycats.  Through managing and enforcing Office Shoes’ rights, DMH Stallard have been able to secure undertakings from all parties involved, damages for loss of sales, and contributions to their legal costs. By working closely with Office Shoes, DMH Stallard has been able to turn enforcement of IP rights into an impressive business proposition, as well as working with them to raise their profile as a brand owner to be reckoned with.

DMH Stallard are a recognised market leader in guides to the legal profession such as Chambers, Legal 500 and Legal Experts, and are consistently placed in the top rank of advisers in the South East for Intellectual Property.

Should you wish to discuss an IP query with a member of the DMH Stallard Team, please contact Joanna Potbury  on 01293 605596 or e-mail joanna.potbury@dmhstallard.com

http://www.dmhstallard.com/site/services/disputeresolution/drip/

 JO POTBURY

MCDANIEL AND CO – OUR FRIENDS IN THE NORTH

            “an excellent client base and a deserved reputation for technical ability ”
             (Legal 500, 2008)                                                                                       

NIALL HEAD-RAPSON

Intellectual Property is a key commercial driver. It allows you to maintain your market and ensure that you can maintain a premium image and price.                                                                                                                                                                                             

Almost all businesses will have    some form of intellectual property rights, however, you need to know what assets you have and how you can exploit those assets to the best advantage. We know what you need and how to ensure you make the most of it. McDaniel and Co. can advise on all aspects of intellectual property.               

Ownership and understanding of Intellectual Property and Intellectual Capital can be key to the success of any business.  If you don’t know what the extent of your assets are or even understand how they are created then a valuable income stream and asset base is passing under your nose.

McDaniel and Co. can analyse your business and your relationships and identify assets you are generating in the course of your business.  We can train you and your staff to identify what is being created, how to capture it and how to exploit it.  Talk to McDaniel & Co and we will help you increase the value of your undertaking. Whether you are creating bespoke software, installing new systems or maintaining existing systems we can guide you through the pitfalls associated with Information Technology – how to work together and get the best out of any relationship with a supplier or user to ensure you get the best deal. Whether you are looking to develop new software or trade with pre-existing software we can assist and advise you on;

1. Capture and ownership of your  Software.
2. Developing Software for others.
3. Licensing to or Trading with others

For further information on the following intellectual property matters visit the website or telephone +44 (0)191 281 4000

1.  Patents Inventions and Trade Secrets 
2. Trademarks and Brands 
3. Copyright 
4. Designs 
5. Employee and Supplier Relationships 
6. Understanding and Identifying your Intellectual Property 
7. Training and Consultancy

ANDREW LEE

www.mcdanielandco.co.uk

Amendments to HMRC Counterfeiting procedure and how they affect your business

The HMRC has announced with immediate effect that  the way the HMRC administers the intellectual property regime for counterfeit goods will be amended. The old system was more favourable to rights owners than was allowed under European law.  HMRC’s acceptance that the old system was not permissible has led to the change.  The legislation required to change the law is currently being drafted and should come into force shortly.

This affects your businesses directly as the change will significantly impact on how goods that infringe either a trade mark or copyright are dealt with by the HMRC.  The initial practice of seizing goods with a statement will no longer suffice for the HMRC.  The rights holder (which could be you) will now have to confirm the infringing nature of the goods by issuing legal proceedings.  The proceedings must be issued within ten working days but not later than twenty working days after you receive notification by the HMRC detailing the detention of infringing goods.

Time has therefore become of the essence.  Goods will only be seized by the HMRC if you  gain a successful judgment and the court directs that the items in question are seized.  Therefore we recommend to all ACID members to take advice immediately on receipt of notification from the HMRC so that appropriate steps can be taken to protect your position. 

For further information contact Nick Kounoupias at DMH Stallard LLP

nick.kounoupias@dmhstallard.com

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. www.oami.europa.eu 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.

One of the most important priorities for launching any new designs is to take steps to ensure they are protected before going to market. 

ACID member Miranda Hart, of Nappy Cakes Ltd., has created a simple range of “nappy cakes” which cater for all budgets. All the gifts available on the website are thoughtful, practical and beautifully presented. Each cake is ‘freshly baked’ or, in other words “freshly designed” to order which means that Miranda can claim artistic craftsmanship in the copyright of each individual design. In essence this means that because her designs are “one off and made individually” she could rely on copyright should someone decide to replicate her designs. Miranda also photographs each design herself and the photographs are signed and dated and a copy sent to the ACID Design Data Bank giving her peace of mind that an independent body holds copies of her designs. “Don’t forget too”, said Miranda, “That I also own copyright in the photographs I take so that in the event someone decides to use any images from my website I can also claim copyright protection in the photographs.  This proved to be invaluable in a recent “fracas” with a competitor who had “taken” my images and placed them on her own website passing them off as her own”. A call from Miranda claiming copyright in the photographs, whilst also mentioning her ACID membership, achieved her objectives!   

Artistic copyright will exist in sculptures, works of architecture and works of artistic craftsmanship (the definition of which is uncertain, but is probably limited to works of or similar fine art e.g. hand blown vases). The work must be original. No formalities are required and the ownership will rest initially with the creator or their employer. Artistic copyright lasts for the life of the creator plus 70 years following death. However, if the design is industrially exploited (e.g. where more than 50 items of the article are produced) this period is usually reduced to 25 years from the end of the year of commercial exploitation.

Take ACID member Isabelle Alice Ltd., who have created traditional, timeless and quality heirloom pieces. Owner Sarah Hollier said, “We started our business after we found it difficult to find that ‘special something’ that would stand the test of time and become a cherished treasure. Our research then proved that there was a distinct gap in the market for original, handcrafted and unique gifts for all sorts of special occasions – be it birthdays, christenings, anniversaries or simply to hang on your tree at Christmas allowing the gift to become part of the family’s Christmas tradition when the tree is decorated”.

Not only is there copyright in the signed and dated drawings which are sent to the ACID Design Data Bank but they also have unregistered design right in the products that are produced from the drawings. Unlike Miranda Hart of Nappy Cakes, Isabelle Alice do not take their own photographs of finished products and so owner Sarah Hollier is going to ensure that her photographer friend assigns the copyright in the photographs so that there is clarity of copyright ownership in the images she has commissioned.  

Their commitment to excellence means they have chosen one of the few remaining independent goldsmiths in Great Britain to make their precious, solid silver gifts. The family run workshop is based in Rutland has been established for over 20 years and in order to make their gifts as unique as possible, they have agreed that they will only make 750 of each design which can be engraved with an inscription of their customer’s choice. An ancient lost wax process is used to make their designs. This is a traditional hand crafted method of metal casting in which a molten metal is poured into a mould that has been created by means of a wax model. Once the mould is made, the wax model is melted and drained away. A hollow core can be effected by the introduction of a heatproof core that prevents the molten metal from totally filling the mould. The lost-wax method dates from the 3rd millennium BC and has sustained few changes since then.  Each decoration is hallmarked and engraved with ‘Made in England’ and the limited edition number.

Inventiveness springs to mind when describing designer and ACID member Susan Edgerton-Ball’s award winning company (SEB). She gained her business and marketing experience with Gardener Merchant, thereafter studied design at the Regent Academy in London. In 1990 she set up a company to manufacture, market, sell and distribute a new and unique novelty product of her own “Sunstrips Disposable Sunglasses”. This award-winning product sold in eighteen European countries. The product was ultimately licensed to a promotions company under a Royalty deal. In October 2008 she licensed off a self adhesive children’s character light-switch cover under a royalty deal to assist in the funding, development and setting up of the company. SEB is currently working on two projects, a whole new range of Greeting Cards under the brand name Cardframes. More recently, Susan protected a new innovation Belt Buddy a plush toy designed as a cuddly travelling companion. The product is scheduled to be launched January 2010. She is currently arranging production of a whole range of Belt Buddies for the Zoological Parks, London Tourist design and Football Mascots, including a special 2010 World Cup “Lion Cub” Belt Buddy.

Susan has used ACID’s industry standard License Royalty Agreement to underpin all her licensing relationships. Andrew Lee from ACID Accredited law firm McDaniel & Co steered her through a path which has led her to clarification of all agreements and below are her three top tips when negotiating a license royalty deal:

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

Now in its second year, the ‘Restaurant & Bar Design Awards’ is the only concept of its kind dedicated
exclusively to design. A judging panel of internationally respected journalists and editors from some of the
world’s top design, hospitality and lifestyle publications will recognise and reward both designers and
operators for design excellence in restaurant and bar projects opened in 2009.

With a wide selection of categories and free and simple online entry, the Awards will culminate in a unique
and innovative central London ceremony in June 2010.

www.restaurantandbardesignawards.com

As ever hot on IP news, ACID’s feline friend IPKat reports that a Parisian Court has ensured that eBay will pay a €1.7 fine because it believes that eBay had not taken positive enough action to prevent the distribution of cosmetics and perfume following the high profile Court case in 2008. The Guardian (http://www.guardian.co.uk/technology/2009/nov/30/ebay-louisvuitton-perfume) reports that since 2008 there were in excess of 1300 trading incidences. LVMH (Louis Vuitton Moet Hennessy) said the award was a victory in its fight to retain the right to “selective distribution” – control over which outlets are able to sell its goods.

“This decision constitutes an important step in the fight against unlawful practices,” said the company. “Selective distribution ensures the security and quality of products for consumers. It generates numerous jobs and contributes to the ongoing worldwide success of European luxury goods brands.”