Award winning ACID (Anti Copying in Design) members Spirit Fires have been granted an order against Go Modern Limited for infringing its CVO trade mark in a recent ruling by His Honour Judge Fysh. An initial payment of £5,000 was ordered with costs and damages to be assessed later.

Spirit Fires have built their reputation using a unique flueless gas fire technology. So when they discovered that one of their competitors, Go Modern Limited, had high jacked the domain names cvofires.com, cvofires.co.uk, cvo-fires.com and cvo-fires.co.uk., they immediately instructed trade mark agents. By high jacking these domain names, Go Modern were using this technique to direct users and potential new customers to their website.

Initially the trade mark agents from whom they sought advice had been reticent about enforcement and advised them to use a domain name dispute resolution procedure. However, as brand protection is a key Spirit Fires strategy, they decided to call Niall Head Rapson of ACID Accredited law firm McDaniel & Co who advised them to issue proceedings for infringement of their Registered Trade Mark ‘CVO’ on 21 June 2010.

Commenting on the Judgment, Dids Macdonald, ACID’s CEO said, “Being in possession of a Registered Trade Mark enabled McDaniel & Co to advise their client, Spirit Fires, to take instant decisive action in the form of issuing proceedings. In this case, it proved to be the most effective and timely means of achieving Spirit Fires’ objectives, to stop their competitors free riding on the back of their reputation.”

Christine McLoughlin, a Director of Spirit Fires said, “Our aim is to grow the Spirit Fires brand across Europe, supplying our clients with high quality designer flueless gas fires and flueless fireplaces using our unique gas fire burner technology – all hand made here in the UK. We are proud of our reputation which has seen our sales grow by 67% over the last 3 years.  We are determined that our brand will not be eroded by unfair competition and I am delighted that we were granted an Order and Injunction against Go Modern.”  www.cvo.co.uk

ACID (Anti Copying in Design) members Luminati Waycon trade under the name of Luminati, a recognised brand in the supply of engineered display solutions, supplying a vast range of display products. Like most companies in the 21st century, their website is one of their key means of marketing, being the main showcase of their products. Recently they have found many competitors copying the distinct look and text of their website which has proved to be an important selling tool.

One of the key product ranges marketed through Luminati’s website is its acrylic photo frames. The company had found that the website advertising of this product had been highly successful. Luminati recently discovered that one of their competitors had copied the literary text and layout of the webpage advertising the company’s acrylic photo frames. A letter before action was sent by ACID Accredited law firm McDaniel & Co. alleging copyright infringement. Following receipt of this letter the company concerned spoke with Luminati and agreed to remedy the infringement and pay Luminati’s legal costs.

Dids Macdonald, ACID’s CEO said, “Increasingly ACID members are finding that sending a strong letter before action can achieve the right results. Taking legal action does not mean going all the way to Court and in this instance Luminati is sending a clear message not only to the sector but to this particular competitor that they are not going to tolerate any IP infringement now or in the future”.

Luminati’s Managing Director, Steve Senior said, “In this particular sector most of the key players know one another and there is no room for those who seek the fast track to market by producing look alike web pages appearing to trade off our brand identity. The way in which this was discovered was a fantastic new free service called Copyscape. By entering our own web text a result came back which confirmed that the majority of the text had been slavishly copied. Luminati’s case was further compounded by a time stamped snapshot taken of their website by hosting company ICO3 who keep permanent incremental backups of their clients websites over several years. Our brand protection policy takes priority and we will always be assertive in pursuing any intellectual property infringement.”  www.copyscape.com

Luminati produce a variety of acrylic and Perspex display products including greetings card display stands, postcard racks, display cases, display cabinets, acrylic cubes, leaflet dispensers and information carousels, poster holders, photo frames, merchandising and display systems, FSDU’s, shelf management systems, sign holders, slat wall fittings, clear acrylic trays, wall mounted dispensers and lightboxes. They have a wide variety of customers ranging from large corporations to private individuals. The team at Luminati have an intimate knowledge of our chosen materials and pride themselves in the quality of their products and designs.   www.luminati.co.uk

IS IMITATION THE BEST FORM OF FLATTERY?   Usually not!

Do you check everything that you instruct your web designer to do on your behalf? Do you ensure that when you are briefing them that you do not ask them to inadvertently infringe someone else’s copyright?

In a recent case study an ACID member complained about another company (one of their competitors) after they had been alerted about some remarkable similarities in the text in a section headed “Technical Specifications”. The majority of the text was almost word for word copied from the ACID member’s website and there were paragraphs which had been slavishly copied. Putting together correct technical specifications, particularly in specialist areas, takes a tremendous amount of time, technical expertise and accuracy to ensure that those who buy the products are aware of all the finer detail and parameters in which they can use the product.

In many ways the devil is in the detail in many websites when maintaining professional standards. So, naturally, the ACID member was not only angry that the majority of this valuable information had been plagiarised but felt extremely disenchanted that someone in the same profession would take the fast track to supposed “respectability” by copying their hard earned information.

The ACID member telephoned the ACID IP hotline to clarify what her rights were and asked the question, “Well, if it is just technical specifications, have they infringed our copyright?” The answer is crystal clear, a resounding YES! The question has to be asked “Does the content have the quality of a literary work?” In this case, an IP lawyer who looked at the text, confirmed the legal position.

When ACID contacted the company in question they came back saying that they had instructed their web designer to include technical specifications and to look at competitors’ websites to check their technical details and compare with their own. Little did they know that the web designers had simply “lifted” most of the ACID member’s information, word for word. They did not believe they were legally liable because they had not instructed the web designers to do this.  Furthermore, they had not conducted a word by word check of the content of their new website before it went live. When it was pointed out that both the infringing web designers AND they would be liable, they were extremely apologetic and, naturally worried that this could be legally pursued. In this particular instance they were very lucky as the ACID member decided to not to pursue the copyright infringement legally and has accepted their apology. It was a salutary lesson and an extremely lucky escape for the other company concerned.

So what can be learned from this scenario?

1)    When briefing your web designer/s always ensure that you have an agreement which sets out the parameters within which you will work and make it quite clear that you respect the intellectual property rights of 3rd parties and you expect them to do likewise.
2)    Always ensure that you check website content before your website goes live
3)    Think about putting a clause in your agreement with your web designer which sets out clearly that you do not expect them to use images or wording where the intellectual property rights clearly belong to others. Always check that permission has been obtained or licences created for any images being used. Never “lift” images from a website without permission.
4)    It may also be useful to have a Freelance Designer Agreement with your web designer. When commissioning design work this is particularly relevant where designs are protected by copyright. This is because the position in copyright is that the author/creator of the work automatically owns the intellectual property rights in the work, not someone who has commissioned the work. However, there are also certain circumstances in which an agreement about who is to own the intellectual property rights can be implied.
5)    It is therefore ALWAYS advisable in a commission situation to obtain a written assignment of the intellectual property rights from the designer in order to ensure that there is no dispute about who was intended to own the intellectual property rights later on.

When would you use an ACID Freelance Designer Agreement?
When you ask someone to produce a design for you or design a website who is independent and not directly employed by you

Why?
To ensure you own all the rights but also to make sure that you include an indemnity clause against a designer whom you commission to do work on your behalf and to ensure that the work does not infringe the rights of a third party.

Do you know what automatic unregistered intellectual property  rights you have subsisting in your product?  Do you know how and when they occur and how long they last?  In this issue we look at the following FAQ’s received on this subject by ACID.

Q.    I have heard of copyright but I thought it was just for books
Copyright can protect a wide variety of things such as books, paintings, cartoon sketches, music, photographs films and plays. All of these come about because of somebody’s though, skill and judgment in their creation. There may be a number of different and separate copyrights subsisting together in everyday products. For example take a music CD. The lyrics to the song would have a separate copyright as would the music and the actual recording of the song and the music together would be protected as a sound recording. Also any graphics on the CD cover and text inside the cover (for example giving a history of the band) may also be individually protected.
It could be that you have copyrights in your product that you do know not about and it would be advisable to speak to a lawyer.

Q.    So what is unregistered design right?
There are two forms of unregistered design right, a UK version and a European Community version.
The UK version protects the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article, provided the design is original and non-commonplace in the design field in question at the time of its creation. In reality it protects only 3D aspects of products and not things such as surface patterns and the materials a product is made from.
The European Community version protects the appearance of the whole or part of a product and may arise from the lines, contours, colours, shape, texture, material or ornamentation of the product, provided the design is new and of individual character. This right therefore protects more features of a product than the UK version i.e. colours and surface patterns, but is more susceptible to attacks on its subsistence.

Q.    Can a product contain both copyright and design right?
Potentially yes. Although to some extent UK design right was introduced to prevent copyright being asserted to protect industrial designs, such as spare parts, there is in some limited circumstances still an overlap between the rights. If a design is a work of artistic craftsmanship and/or a sculpture then it could be protected by artistic copyright. Furthermore, its 3D shape and configuration could be protected by UK unregistered design right and its overall appearance, including colours and materials, by Community Unregistered Design right. In those circumstances the product could have up to 3 different rights subsisting.
In addition, a product may be protected by UK design right for its shape; and copyright may apply to its surface patterns or decoration if they can exist independently from their application to the 3D shape. An example could be the design of the mug (shape protected by design right) and the drawing of a cow applied to it (surface decoration which could exist without being applied to the mug i.e. it could also be applied to a t-shirt or bag).

Q.    Is there an unregistered version of a trade mark?
Yes. If you sell a product or service under a particular brand or ”get-up” then over time you could develop a goodwill and reputation in respect of that brand or get up so that the public will associate goods or services bearing those features as coming from a particular source and/or having particular qualities. Customers will look to those features to help them differentiate different companies’ products and be confident they are getting a certain quality. If somebody else then begins using the same or a similar name or get up for similar products people could be confused into thinking that their products are your products or that you are in business together. In those circumstances,  you may have an action for what is known as “passing off”.

Q.    Is it possible to take legal action relying on unregistered rights?
Yes.  However unregistered rights such as copyright and design rights only protect against copyists so that if someone has produced a similar looking product without copying, there is no case to answer. The burden is always on you to prove your case if relying on unregistered rights and that can include proving you did create the design you say has been copied and when. Therefore it is important to try and retain all documentation that goes into the production of your product in case it is needed at a later date. Try to ensure this documentation is signed and dated so that a paper trail exists.

Q.    How do I know which world territories recognize my unregistered rights?
It can often be difficult to know without seeking legal advice. It is always recommended to do so. However,  Community Design right is applicable in all 27 member states of the EU. UK design right is limited territorially to the UK (and a handful of countries offering reciprocal protection). Copyright on the other hand can be far wider ranging because of various international conventions and treaties which most countries in the world are party to and which offer reciprocal protection to contracting states.  So for example a book that is copyright in the UK will be protected in France. Difficulties can arise when it comes to copyright works which have been industrially exploited as often the level of protection offered can be left to individual countries. Advice should always be sought.

Our friend the IPKat has been taking note of where the Government axe will fall within the IP sector and has announced the demise of SABIP. Visit the IPKat website for more..

Dids Macdonald, ACID’s CEO said: “With SABIP’s recent demise and now the UK Film Council, the Government would seem to be intent on undermining the importance of its intellectual property to the UK’s economy. Whilst the Director of the United States Patents and Trade Marks Office David Kappos has a direct line to President Obama it would appear that the UK’s IP voices are slowly being eroded.

Full Story:

Before anyone else excitedly emails the IPKat to tell him, let him announce on this weblog of record that the new UK Business Secretary Vince Cable has today axed a number of Department for Business quangos — the top of the list being the Strategic Advisory Board for Intellectual Property policy (SABIP). The body — along with everyone else — must have foreseen its demise, since it has already posted this statement on its own dissolution:

“On 19 July the Department for Business, Innovation and Skills announced changes in order to streamline its partner organizations by reducing the number of ‘Arm’s Length Bodies’. This includes the dissolution of the Strategic Advisory Board for Intellectual Property Policy (SABIP).

In building the evidence base to inform IP policy, and bringing external strategic thinking to policy questions, SABIP achieved much since it was created in 2008. Many organizations and people contributed to these achievements but they were due above all to the work of the SABIP Board members. The Government is very grateful to them.

The Government intends to build on SABIP’s work. Its research programme will be integrated into the Intellectual Property Office’s research work. The Office intends to ensure that there continues to be external oversight and challenge to IP research work, and input to strategic IP policy. Arrangements to achieve this may include use of informal panels of experts to steer research, and discussion events hosted by third parties to support the development of policy thinking. Further details on the specific structures, including how they will be overseen by the IPO’s Board, will be announced in due course”.

The IPKat has had a number of encounters with SABIP, not all of which were particularly pleasurable, and has been unhappy about it for a number of reasons since its inception. Having said that, he believes that its members have made a big effort to discharge their duties in the most difficult of circumstances and they have certainly contributed to the ongoing debate regarding the interface between IP in practice and the policy considerations that should drive it in future. He was also pleased to hear their repeated refrain that IP reform should be evidence-based. He wishes its board and secretariat every success in the future, and hopes that they will always cherish fond memories of the IP communities of which they were, so briefly, a notable part.

A Bright Light on the Horizon..

ACID’s Trade Association Partner, the Lighting Association (LA), recently held their Gala Awards Night at Stratford Manor, Warwickshire.  ACID was sponsoring the awards along with other well known names such as Philips, Osram, The Energy Saving Trust, Spearmark and ACID Members Dar Lighting.  The after dinner speaker was the former MP and TV celebrity Gyles Brandreth whose speech was full of LA Member in- jokes and was extremely cleverly worded and performed.  For the first time ever, ACID supplied an intellectual property questionnaire to the LA to incorporate into the judging process and this section was marked by Peter Hunt, CEO of the LA.  ACID also offered 6 free 1 year memberships of ACID together with Safe Pitch Kits containing legal agreements and advice to set the new designers on the right road when striking commercial arrangements with prospective manufacturers.

Again, the standard was very high this year with the overall winner, John Etherington (above left) from Nottingham Trent University reigning supreme with his beautifully crafted ARC table lamp.  An interesting piece of work from Joseph Roberts from Aston University, Sputnik, an orb which traversed a metal arc and was multi positional, took second place with third place being filled by RCA’s Chris Taylor and his innovative Stem Light.  The Children’s sector was won by a partnership of Lise Carrillo & Marie Bachoc who joined forces at Central St. Martin’s College of Art & Design to produce the child-friendly Buddylight.  The best flatwork section was awarded to Catherine Bailey, another Nottingham Trent University student, for her Mr. and Mrs. design.

The prestigious Phillips Award went to two new talents, Isabel Heubl of the University of Falmouth with her egg-shaped Rocky design and Charles Jarrett from Coventry University with his unbelievable Pouring Light ceiling lamp. The range of different University courses which the students attended was heartening as it showed that innovation can come from many areas and still be adapted for a particular industry.

The presentations were made by Gyles Brandreth, Rune Marki of Osram and Jonathan Lucas, President of the Lighting Association and Managing Director of ACID Member Elstead Lighting.

Full Results Below.

Student Lighting Designer of the Year 2010
John Etherington
University: Nottingham Trent University
Course: Product Design

2nd Place
Joseph Roberts
University: Aston University
Course: Industrial Product Design

3rd Place
Chris Taylor
University: Royal College of Art
Course: Ceramics & Glass

Children’s Student Lighting Designer of the Year
Lise Carrillo & Marie Bachoc
University: Central Saint Martin’s College of Art & Design
Course: MA Industrial Design

Philips Award 2010
Isabel Heubl
University: University College Falmouth
Course: 3D Design

Runner Up Philips Award 2010
Charles Jarrett
University: Coventry University
Course: Industrial Product Design

Best Flatwork
Catherine Bailey
University: Nottingham Trent University
Course: BA Furniture & Product Design

Judges
Peter Hunt – Lighting Association
Ivan Hayward – Ivan Hayward
Nicola McGuirk – Dar Lighting Ltd
Fiona Elliott – Elliott Associates
James Russil – Energy Saving Trust Ltd
Nic Mallinson – LIF
David Ellis – Osram Ltd
Simon Farmer – Spearmark International Ltd

Congratulations to ACID Member Sue Scott Horne of Egar who has just been nominated for another award for her educational resource enterprise.  Sue’s inspirational story can be viewed at www.everywoman.com and we would urge ACID Members to read the advice given by Sue. If you would like to vote for her to receive a Daily Mail Inspirational Woman Award Sue will put the link on her own website as soon as it is available. www.egar.co.uk