When they discovered that one of their competitors, Four Seasons, appeared to be trading off the goodwill in their hugely successful Vancouver Premium collection, Mosley Trading Company Limited, instructed ACID Accredited lawyer Niall Head-Rapson of McDaniel & Co to write a letter before claim. This has resulted in an undertaking from Four Seasons that they will no longer use the name ‘Vancouver’ without permission and they have paid a contribution towards Mosley’s legal costs.  Mosley Trading Company Limited, which trades as Besp-Oak Furniture, has secured trade mark registrations for the use of ‘Vancouver’ and ‘Vancouver Premium’ as brand names for this key collection.

Besp-Oak MD, Steve Mosley said, “We invest heavily in designing and developing our furniture ranges and are determined to send a clear message to all our competitors. We have a sound intellectual property strategy and we will assert this at every opportunity. We are market leaders of oak furniture in the UK wholesale market and for many years we have had to endure people imitating our stock and trading off the back of our goodwill. This has to stop. The Vancouver range of furniture has proved extremely popular with sales over the past four years in excess of a value of £20m. Any actions by third parties which erode this market share will be taken seriously.”

Dids Macdonald, ACID’s CEO said, “As a result of intellectual property reviews for our corporate members, we have been able to advise many companies in this sector of the necessity to be proactive in the protection of their intellectual property, including trade mark registrations. In the 21^st century, any company hoping to survive the downturn needs to keep a keen eye on the bottom line – the safeguarding of their intellectual property, their know-how.”

The furniture industry is one of the most copied sectors within the creative industries. One of the most effective ways that design-led companies can protect their new designs is to register any new designs with OHIM (Office for Harmonization in the Internal Market). European design registration ensures monopoly in a new design for 25 years in 27 member states. Being in possession of a registered design makes it much easier and more cost effective to take action against alleged infringers because there is a numbered certificate which confirms “ownership” of the design. The basic criteria to register a new design are that no identical design has been made available to the public and that it has individual character. This means that the appearance, or overall impression, is different from the appearance of other already known designs. Clearly it cannot be a copy of someone else’s design. Trade mark registration is very important too, after all, if you build up a significant reputation under the name by which you trade or you have brought out a successful product range associated with a name, it doesn’t make sense not to protect it against those who may trade on your goodwill.

Besp-Oak Furniture is the brand of choice for over 250 garden centres nationwide.  Over 30 indoor and outdoor furniture collections are available, ensuring that there is a style or range to suit everyone.  Besp-Oak are proud to be market leaders within their domain, continually spearheading the development of new designs which are certain to surpass any preconceived expectations of what oak furniture has to offer a home. www.besp-oakfurniture.co.uk

At a positive meeting held with the new Chief Executive of the UK Intellectual Property Office, John Alty,  and Andrew Layton, Director of Trade Marks and Designs, Dids Macdonald outlined ACID’s ongoing lobbying priorities for improvements to the intellectual property framework for designers within the Creative Industries. Commenting on the talks, Dids said, “In line with our current Number 10 lobbying campaigns to improve the damages system and create criminal sanctions for design infringement, it was timely to reinforce ACID’s key messages.”

Left to Right Andrew Layton, Dids Macdonald and John Alty

Accompanied by ACID LOBBY’s Chief legal counsel, Nick Kounoupias, of ACID Accredited law firm DMH Stallard, Nick said of the talks, “Designs have been the poorer relation in the family of intellectual property rights for some time.  Whereas copyright issues are always on the agenda of the IPO, design right concerns are usually relegated to the status ‘any other business’, yet the continuing damage to UK SME’s and individual designers from the theft of their creations is colossal.”

Macdonald said, “Unless there is a stronger role for enforcement in UK IP policy and help for UK’s micro enterprises and SME’s to address IP infringement, they will continue to rely on perpetual innovation to beat copyists, which is self defeating. The balance would appear to be skewed as IP creation is not a short term activity. As 1 in 3 businesses believe the recession will lead to more infringements, there is a very real need for stronger enforcement . To date the   common feature of every recession has been the creation of a fast track to market through IP infringement and ACID has witnessed a massive rise in interest  in online infringements. However, currently there is little focus on design infringement. Although the UK is ranked 1^st for its IP framework, this does not reflect the true problem facing the Creative Industries, 70% of whom employ less than 4 people. SME’s need a robust means of protecting, fully exploiting and enforcing their IP rights. At the moment this simply does not happen because the majority of SME’s cannot afford to take legal action. Since first mooted in 2003, there are still no accurate figures on the scale of copying within the creative industries in 2010.  The criteria and methodology of identifying this scale is questionable, if relying on court cases, because most of the evidence is applied in the media sector and based on criminal court cases and seizure.”

Dids was keen to ensure that the incoming Chief Executive and his team would address the lack of acknowledgement by policy makers of design and its role in IP creation in the consultative process.

John Alty, incoming Chief Executive of the UK IPO commented “IPO are keen to work collaboratively with ACID and other organisations interested in designs with the aim of ensuring that more UK companies know about the value of design registration.”

ACID LOBBY was created in 2004 to lobby at grass roots and t Government level to make the voice of design heard loudly and clearly, to influence policy making decisions and to acknowledge  design’s role as a key contributor to the UK’s GDP. Design right is a comparatively new intellectual property right, and the least well-known and acknowledged, which seems out of kilter with the fact that every successful product has been designed. IP in design, therefore, has great value for the UK economy, provided it is properly protected. The UK is increasingly earning more from designing successful products than from manufacturing them and ACID’s membership, comprising micro enterprises, SME’s and some major brands, are key contributors.

ACID LOBBY OBJECTIVES remain consistent

• Addressing the disparity between copyright and design right
• Criminal Sanctions for Design Right infringement
• Moral Rights for designers who rely on design right
• Period of protectionto be  reviewed (currentlyUK unregistered design 15 years, EU unregistered design 3years yet copyright can last 70 years plus the  life of the originator)
• Cost of registered protection £60 in UK, €360 in EU, only 4000 registrations in UK. ACID holds over 350,000 designs for 1000 members and receives at least 50,000 per year
• There is a disproportionate strength of the copyright lobby which extends on behalf of the entire record, film, computer, software, book publishers sectors  etc –  and there is nothing equivalent for design right. It is also true to say that whereas the copyright lobby benefits non-UK companies, most UK SME’s are not represented on design right issues.
• Exemplary, restitutionary and aggravated damages to be improved
• If SABIP is to continue then design issues need to be reflected in research documents
• Kick start mediation as a real alternative to litigation
• Support and acknowledgement of ACID’s latest ongoing campaign launched on World Intellectual Property Day 2010 to enlist and encourage major UK PLCs to have a communicated section within corporate social responsibility (CSR) on respect for intellectual property
• Cabinet position for IP Minister –  or at least not a shared portfolio

8^TH DRAFT ACTA AGREEMENT SIGNALS INTERNATIONAL STANDARDS ON INTELLECTUAL PROPERTY RIGHTS…. BUT ACID ASKS WHY ISN’T INDUSTRIAL DESIGN INCLUDED?

Following the publication of the draft of the “Consolidated text concerning the Anti-Counterfeiting Trade Agreement (ACTA)” in Wellington, New Zealand during the 8th negotiation round, ACID believes this is a really positive initiative and strongly supports both the nature and the scope of the Agreement. Intellectual Property (IP) will be one of the key factors in global economic growth and financial recovery and we firmly believe ALL IPRs must be protected across all legal, commercial and procedural levels.

However, whilst welcoming this agreement, ACID has grave concerns about the content of art.2, section 2, par.2 concerning “Border Measures” in ACTA. Our concerns are in the content of this paragraph which allows a partial exclusion of the industrial design intellectual property rights, foreseen in art 25 of TRIPS, where design cannot be protected by other rights such as trade marks or copyright, which evidently weakens and undermines the role that industrial design IPRs play in today’s economy. This was brought to ACID’s attention by Valentina Downey of ADI Association for Industrial Design in Italy http://www.adi-design.org/homepage.html. and ACID has supported the stance taken by ADI in a letter to Mr Barossa, President of the European Commission.

ACID has always advocated clarification of design rights ownership in a signed agreement which can be relied upon if needed in any future dispute, so in an interesting design right case reported by IPKat on this subject, ACID has learned that Victor Ifejika  was not satisfied by a decision made against him by Judge Fysh QC of the Patents County Court. So, without legal representation, as a “litigant in person”, Ifejika had the satisfaction of the decision against him being overturned by the Court of Appeal. Ifejika believed he was the rightful owner of a design for a contact lens cleaning kit for which he had obtained an assignment of rights from the designer several years ago.  Below is the full article as it appears on the IPKat blog.

Victor is the victor when it comes to discretion

This was an appeal by litigant in person Victor Ifejika against the decision of the Patents County Court (Judge Fysh QC) last year to give summary judgment against him. In short, Victor claimed to be the UK registered proprietor of a design for a contact lens cleaning kit. This design originated from drawings produced by Murdoch, a design company. Victor said he had commissioned and paid for the designs in order to make a prototype of a product embodying the registered design. This design was first registered in 1989 in the name of a joint venture (JV) company owned by him and Charles Ifejika. An assignment of the design was subsequently made by the JV company to Victor, who sought an injunction and damages for infringement against Charles.

Charles applied for summary judgment on the basis that, since the original registration of the design by the JV company was invalid, the subsequent assignment of the design to Victor could not be effective as an assignment under the Registered Designs Act 1949, s.19. Charles’s application was granted on the basis that the registration was invalid since it was applied for by someone other than the person claiming to be its proprietor.

On appeal, Victor contend said the judge had failed to consider whether the combination of his intention to vest his rights in the JV company, together with the registration of the design in that company’s name, operated so as to assign the rights to the JV company in equity, thus giving it title as a proprietor entitled to registration.

The Court of Appeal (Lords Justices Kay, Rix and Patten, allowed the appeal. In the court’s view:

* When considering the issue of beneficial ownership, the judge gave no indication whether it was at least arguable that the combination of factors alluded to by Victor could have been effective to create an equitable assignment of the design rights in favour of the JV company which had to be proprietor if it was to exploit it. However, on the evidence, it was seriously arguable that an equitable assignment of the design rights existed and that the company was, after all, its proprietor;

* Even if Charles was right, that would only mean that Victor, as original proprietor, would have remained the legal owner of the design rights and he could have applied in his name anyway.

* This being so, it would be wrong for the court to exercise its discretion under s.20 to order cancellation than a variation of the register.

This month IP Doctor Andrew Lee, of ACID Accredited Law Firm McDaniel & Co, looks at issues associated with UK companies who wish to work with non-EU manufacturers and agents.  General rules apply to all working relationships whether at home or abroad.  Firstly - ensure that you have the correct legal agreements in place.  Secondly -  research the prospective business/agent thoroughly.  Thirdly – become familiar with the design laws which operate in the particular territory that you want to work within.

Andrew Lee

Q·         What do I need to have in place to work with a foreign manufacturer?

A.           A written agreement that sets out the terms clearly is essential. You need to document important information such as the price to be paid, delivery times for goods, quality control and design approval.  You should also look at who takes the risk of delivering the goods to you.

Not only do you need a clear agreement but you need it with someone reputable. Try and find out who they may deal with in your sector and do a little research. It would be good to ask if you can have a chat with a couple of their clients.  If you can, make sure the customers are local to you (i.e. your country) so that you can check the references you are given.

There are also some practical steps you can take. Is the manufacturer financially sound?  You don’t want them to go bust with your products undelivered.  Ask around, perhaps do an internet search to see if there are any good or bad things being said about the manufacturer.

A good, long term relationship works for both sides and becomes more productive the longer it is in place because it will become mutually important to maintain.

Q.         I would like to sell my product in America but I understand the design laws are different there.

A.         America does not have the versions of unregistered design rights that are available in the UK and the EU. Therefore if you have a product  that is industrially produced you will not have any protection in America for acts taking place there. American law can also differ from state to state.

Americans can rely on copyright but this may not be available to Europeans for items which attract Design Right over here.  It is possible to seek an American Design Patent which is granted on the ornamental design of a functional item. Design Patents are a similar concept to a registered design and will protect you for shapes. They are generally valid for up to 20 years from the date of filing.

Don’t forget to communicate your IP policy on your website and on your marketing material. A simple statement such as, “All intellectual property rights are and will remain the property of (insert your name).  Any infringements will be taken seriously.”  By including this statement you are ensuring that all with whom you deal will know that you value the intellectual property you create.

Q·         I want to work with a foreign agent but do not know if the contract should be drawn up under UK law or Chinese law.

A.         Preferably UK law because if it is in Chinese law you will need to seek advice from a Chinese lawyer over its interpretation and any disputes will need to be heard in Chinese courts. This could prove expensive for you as you will need Chinese lawyers to interpret the contract for you.  It is easier if the contract is under the law of your residence as your local lawyer will be able to advise you and if there is a dispute, your local lawyer will be able to guide you through the process. The China/Britain http://www.cbbc.org website has some very useful tips on helping you do business with China.

Q.           I have a registered design in the UK.   Do I need to have one in China where it will be manufactured?

A.           Your UK registration is territorially limited to acts within the UK. Therefore if any copies are made in China your UK registration will be of no effect unless those copies are then imported into the UK when the registration will bite. It is possible to obtain a Chinese registration however enforcing this could be costly and difficult. It could make more sense to have a strict agreement in place with the manufacturer and obtain an EU registration which would cover all of the EU. This would mean if any copies were made in China and then brought into anywhere in the EU, you could act.

Q·         My design has been copied by a foreign manufacturer but I can’t afford to take action in China and would not know where to start.

A.         This could prove costly and expensive. As most copies made in China are for importation into the EU and the UK it could be better to go after those who are having the copies made and then importing them.  This could be a UK company rather than the Chinese factory. Often the first instance of market entry for new products is a trade event/exhibition. Due diligence in checking exhibitions for potential copies is an effective way of identifying these and taking action. ACID has had many instances of being able to offer advice at trade fairs and its Accredited law firms have been able to act quickly and effectively when knock offs are discovered.

Honorary ACID Member Adam Aaronson of Aaronson Noon has been invited to talk at Zest Contemporary Glass Gallery  on Wednesday, June 9, 2010, 6.30-7.30 pm. Adam will explain the process and inspiration behind his newest work from the major solo exhibition ‘The Imaginary Landscape’ (May 13 – July 17, 2010).

Zest Gallery announced in May the opening of ‘The Imaginary Landscape’, a major solo exhibition of new work by the prominent glass artist Adam Aaronson.

Hilltop

Adam’s inspiration stems from his enthusiasm for the captured landscape, the quality of light on water, earth and skyline. The fleeting effects of sunset or twilight create a visual imprint or echo in the artist’s work – an ‘Imaginary Landscape’ made up of the seen, emotive and inspirational experience. Glass becomes the perfect medium for this kind of illustration, itself an ever-changing landscape in its molten state. In this work, the dynamic of each idea allows for the unexpected; organic shapes, and abstracted landscapes speak to the viewer of a frozen and yet timeless moment.

“I like the ambiguity of colour and contrast, the way in which, for example, a swathe of bright red in a landscape or sunset can be read as fire or flower by different viewers. In fact, even though I give each artwork a title that reflects my own perception and inspiration, observers may find themselves recalling moments in time within their own “imaginary landscapes.”

Each artwork considers the relationship between glass as organic force, in parallel with the artist as regulator of the molten medium. Adam has created objects that celebrate fluid glass forms and combines them with abstract painterly surfaces.

“The artworks in the exhibition are moving away from functional forms and were created with the intention of exploring the potential of the glass object. In reassessing expectations of vase, cylinder and vessel, I have been developing shapes that act as a raw canvas for the surface imagery. The large scale and dramatic forms of these works are intended to have a primitive quality that preserves the fluidity inherent in the glass medium.”

Each work is a unique form, unrepeatable and produced at the rapid pace that is inherent in the glassblowing process. The making process, which gives each of the works a uniquely beautiful surface, has been developed by Adam over many years, and involves the multiple application of coloured powders, lending the artwork an abstract painterly quality. “It has taken some time to build up to the large scale blown glass featured in The Imaginary Landscape. These vessels are physically challenging to make and required lengthy experimentation to achieve the right level of control over the colouring process… the ‘late colouring’ technique, has parallels in enamelling, ceramic glazing, printing and painting.”

Caribbean Vista

‘The Imaginary Landscape’ is curated by Jenny Starr and is accompanied by a catalogue with a foreword by glass artist and writer Peter Layton and an artist statement by Adam Aaronson.

Featuring organic forms and painterly surfaces, ‘The Imaginary Landscape’ is Adam’s most challenging and resolved body of work so far. This exciting exhibition is inspired by Adam’s enthusiasm for the captured landscape, the quality of light on water, earth and skyline. The fleeting effects of sunset or twilight create a visual imprint or echo in the artist’s work – an ‘imaginary landscape’ made up of the seen, emotive and inspirational experience.

For more information and images visit Adam’s website: www.adamaaronson.com

Or to view more images of the show at Zest Gallery: www.zestgallery.com

Spaces for Adam’s talk are limited so please RSVP to corinne@zestgallery.com or call Corinne on 020 610 1900.

Zest Contemporary Glass Gallery

Roxby Place (end of Rickett Street)

London SW6 1RS

+44 (0)20 7610 1900

www.zestgallery.com

Opening Times, Tues to Sat, 10am to 6pm

Acknowledgment to Zest Gallery for the copy and information contained within this article.

ACID Member Robert Welch Designs is delighted to announce that its Signature knives and Signature utensil range have both won Gold accolades in the ‘Product of the Year’ awards organised by Housewares and DIY Week magazines. This is the first time in the history of the awards that one company has won two ‘Product of the Year’ awards.

Rupert Welch, Managing Director of Robert Welch Designs said “When my father, Robert Welch, started the company over 40 years ago he was known as an innovator and won many awards for his work. We are proud to be able to continue that tradition. These awards emphasize the ongoing company commitment to innovation, quality and inherent functionality for all our products and we’re delighted to have won.”

The ‘Product of the Year’ Gold award is the latest success for the Signature knives which have also won an iF design award (Germany), the GOOD DESIGN™ award (from the Chicago Athenaeum: Museum of Architecture and Design), a red dot design award (Germany) and the Excellence in Housewares ‘Cutting Edge’ award (UK).

The Signature utensils range has also won a ‘Product of the Year’ Gold award and have also won the GOOD DESIGN™ award (from the Chicago Athenaeum: Museum of Architecture and Design and the Excellence in Housewares ‘Top Tool or Gadget’ award (UK).

Robert Welch Designs was founded by Robert Welch, Royal Designer for Industry, in the 1960s and is now under the direction of Rupert and Alice Welch (son and daughter of Robert). Robert Welch was one of the leading industrial designers of the 20^th century and specialized in stainless steel production design. The Robert Welch mission has always been to combine a search for innovation with a sincere respect for the traditions of the past so that quality, ease of use and fine design are in harmony. A new team of designers continues the studio’s design into the 21^st century creating award-winning products that will be lasting additions to any home. Robert Welch designed the classic ‘Kitchen Devils’ knife range and Prestige kitchen tools in the 1970′s. www.welch.co.uk

ACID Member and Liveryman Sean Dare has recently returned from Milan where he was showcasing his Katakana desk and chair together with other Dare Studio designs Cage Light and Fujiya lamps, which can all be viewed on the Hidden Art website. Hidden Art gave five independent UK designers the opportunity to launch new products and prototypes during the Milan Furniture Fair including Dare Studio.

Dare Studio – Katakana Desk and Chair, Cage Light, and Fujiya Lamps. (Shown Left)

Patternity – Phase Bureau.

Purewhyte –Tuffet stool, Array bowl and Drew tables.

RALLI Design – FLIP CHAIR and STEPPING STOOL.

Rupert Goldberg – Bounce chaise longue and E.M.4.

Hidden Art helps designer-makers and designers transform their passion into products,through promoting and supporting members to place their products both nationally and internationally through international trade fairs, the Hidden Art E-Shop, global press coverage, Hidden Art Awards and Open Studios events.

Hidden Art also runs Hidden Art Select, an initiative which aims to successfully market a range of retail and wholesale products on the Hidden Art E-Shop and other outlets. Starting in 2007, Hidden Art Select has launched 15 product ranges to date, with a plan to further develop the range in 2010 and beyond. Hidden Art Select includes Hidden Art Select kids, a collaboration between a designer and a local school which results in a commercial product. In 2009 the winning design was by Halima Begum of Mulberry School, produced by ACID Member Ella Doran into the Lucky Bag, available for purchase through www.hiddenartshop.com.

The Alliance Against IP Theft Big Quiz & Auction Night, hosted by Radio 5 Live’s Phil Williams, proved a huge success after it saw a record turnout for an Alliance fund-raising event, with over 250 guests.

Thirty two teams attended the quiz night and auction from a broad range of industries, including law firms, the creative industries and some of our best known brands.  A joint team from ACID ( Jane Stephenson and Janet Bedford) and ACID Accredited Law Firm DMH Stallard (Nick Kounoupias, Sarah Birkbeck, Nick Mallett and John Yates) were topically named ‘The Coalition’ for the night.

Held at Arsenal’s impressive Emirates Stadium, questions were answered on a variety of subjects including music, film, brands and brain teasers. Law firm DLA Piper took home the final trophy with the..  They came just two points ahead of the Entertainment Retailers Association.  A joint team of the BPI and PPL came third.  ACID/DMH Stallard Coalition finished a respectable 8^th of 32, with several teams tying for 4^th and 5^th place.

Susie Winter, Director General of the Alliance Against IP Theft said: “The inaugural Quiz Night was a huge success and great fun for all involved.  I would like to congratulate the team from DLA Piper, and of course the other teams for being such good sports.  The quiz night raised vital funds to help the Alliance’s campaign for better regulation to protect IP and to promote awareness of the value of IP. Key Alliance objectives this year are to ensure Trading Standards departments are properly resourced; that the judiciary recognises the real harm caused by IP crime; that car boot sales and markets are properly regulated by a binding charter and that the Digital Economy Act delivers on its promise to protect IP online.”

Organisations taking part in the Quiz were: ACID, The Alliance, Blackstone Chambers, Blue Rubicon, BPI, the BVA, CLA, Collyer Bristow, Disney, DLA Piper, DMH Stallard, ELSPA, ERA, Eversheds LLP, Finsbury, IFPI, The Industry Trust for IP Awareness, Lovefilm, Luther Pendragon, Max Bitel Greene LLP, PLS, PPL, the Premier League, Taylor Wessing LLP, the MPA, Open Road, SPHE, TSI, Universal Pictures Wiggin and VDC.