Anti Copying in Design (ACID) members Aspinal of London have secured a settlement after a long battle against copycat predators who  marched off with their products, mimicked their website and shamelessly created a look alike business, free riding on the back of Aspinal’s hard- fought- for brand identity and reputation. Despite denying liability, the defendants, in a confidential settlement, agreed not to trade in any capacity in the leather goods business for 10 years and to pass over all the assets including all the stock and their entire business to Aspinal. The case was described as being one of the most complex cases to come before the London Patents Court in fifty years.

An outraged Iain Burton the Chairman and Founder of Aspinal said, “This was an extraordinary example of unscrupulous business persons believing that they could, with impunity, walk off with an entire business and create a copycat trading company using every aspect of Aspinal’s brand identity, including its look and feel, text, brand voice and communication platform. The case boiled down to infringement of intellectual copyrights and also breach of numerous common law torts. The case was, of course, difficult to pursue and the costs were quite extraordinary, but in building a brand for generations to come it is an important principle that a company’s intellectual property and its brand identity and its confidential information must be fiercely protected.”

Aspinal of London, one of the UK’s fastest growing British luxury brands, had been forced to take action against individuals with whom they trustingly shared an office and warehouse premises.  Without warning, they vacated the shared premises and  promptly set about to manufacture a wide range of more than 100 designs, copying or mimicking Aspinal’s entire range of products and  designs, the Aspinal “ look and feel”  and the entire Aspinal business model. The case against the defendants was pursued in two parts. The first was breach of copyright, Community rights, registered designs and unregistered designs. The second was a case of common law tort, including the misuse of confidential information and inducement of Aspinal’s manufacturers to breach their agreements and exclusivity.

Dids Macdonald, ACID’s Chief Executive said of the case, “The fact that we are not allowed to mention the other party’s names is a great shame but the message to Aspinal’s competitors (and others who may think about following the same business strategy), must be crystal clear, brand protection and the intellectual property that underpins the success of Aspinal of London is its lifeblood and any infringement whatsoever by third parties will be taken very seriously indeed in the future.”

Aspinal is opening its new boutique Flagship in Brook Street. W1. At end of October and will be launching the first of 30 planned 2000 sq feet stand alone stores in the Middle East and East Europe early in the New Year.

Aspinal of London Head Office 01428 648180
Aspinal of London Press & PR Front Row Maria Blake:  0207 731 6077

Court of Appeal creates uncertainty for trade mark owners by allowing euro-defences to be argued by parallel importer of second hand computer hardware.

Through our support to ACID members, I am well aware that some of you sell your products outside the European Economic Area (“EEA”) under your own trade marks, and often at lower prices to those at which you may sell within the EEA member states.  For any business that does this, the risk of those goods then being imported and sold within the EEA without your consent is often a real and expensive pain.

There has always been a tension between the rights of trade mark owners to control the first marketing of their goods within the EEA, and the rights of those trading in the grey market.  This tension was intensified following a decision by the English Court of Appeal on 24 August 2010 in a dispute between Sun Microsystems Inc v. M-Tech Data Limited.

Trade Mark owners – and their lawyers – have for some time felt comfortable in taking action against those importing branded goods into the EEA which had not been first placed on the market within the EEA by the trade mark owner (or with its consent).  We had all assumed (as supported by the well-honed trade mark skills of Mr Justice Kitchin, who heard the case in the Chancery Division), that the so-called “Euro-defences” based on EU competition laws were not readily available to the parallel importers.  It now seems that in some circumstances they might be. Sun (now Oracle) was trying to prevent the vast trade in second hand Sun hardware which was being imported from outside the EEA. However, the practices it deployed in an attempt to stifle that trade, have potentially enabled M-tech to deploy some “Euro-defences”.  For example, Sun refused to publish its database of serial codes enabling resellers to identify whether goods were first market in the EEA with the consent of Sun or not.  This, combined with the aggressive pursuit of resellers through litigation, enabled the lawyers for M-Tech to present an argument that this behaviour was anti-competitive as its effect was to prevent the attainment of a single market in the EEA for legitimate trade in Sun products which had been first marketed in the EEA with the consent of Sun.

The decision was made following an early attempt by Sun to obtain early judgment.  Assuming it is not settled, the case has a way to go until trial and may well then be the subject of a reference to the European Court of Justice.  The downside of all this is the potential uncertainty – and legal expense – created for brand owners attempting to prevent parallel imports by legitimate means.  Trade mark owners pursing legitimate Infringement cases, now risk getting stuck in a quagmire of casually deployed euro-defences.

However the judgement is a useful reminder to trade marks owners that they might usefully consider assisting resellers in attempting to identify which branded goods they can legitimately re-sell in the EEA, either by marking goods or publishing other such data.

Tim Ashdown Partner at ACID accredited law firm DMH Stallard

New rules coming into force On October 1 2010 in the Patents County Court will limit costs recovery from the other side to £50,000. For those that may not be aware, the Patents County Court deals with all types of intellectual property issues and there is a recommendation from the CBI and the Jackson Review that this be renamed the Intellectual Property County Court to adequately reflect its purpose.

The Patents County Court was originally established to provide an alternative for Patent cases to be heard.  It has evolved to a point where all Intellectual Property matters can be heard in the Patents County Court.  The rules are being introduced in an attempt to streamline the process; to make it more efficient and more cost effective.

The headline grabbing issue is that the limit of the costs that can be recovered from your opponent has been capped.

There are two aspects to an Intellectual Property matter, which are what lawyers call a split trial.  Basically two trials take place; the first to decide whether an infringement has taken place and the second to decide how much money you should be awarded if you win.  The costs that you can recover from your opponent are capped at £50,000 for the former and a maximum of £25,000 for the latter. If the receiving party is not VAT registered then VAT is payable and if there are any cost awards for applications during the procedure which are dealt with on a summary basis then these are costs which are awarded in addition.

The main aim is to speed up the process which should be a positive aspect for those with limited time and legal budgets.  Cases will be presented by written arguments.  There will be no factual or experts evidence unless there is what is known as a cost benefit analysis and any trials will be limited to one or two days and there will be no cross examination of witnesses.

Following the introduction of this new cap, it will remain to be seen how popular these reforming steps will be.   If you already have a case going through the Patents County Court and you think this might affect you, our understanding is that these rules will only apply to cases commenced after 1 October 2010.

We will be watching closely to see what effect this has on enforcement and will keep you informed  In essence the new limits have been introduced to allow smaller organisations to take enforcement proceedings without the larger risks associated with litigation.

Niall Head-Rapson Partner at ACID accredited law firm McDaniel & Co

ACID Ambassador Dr Frederick Mostert, Nick Kounoupias, ACID’s Chief legal counsel and CEO Dids Macdonald held further constructive talks with UK IPO’s John Alty to present the rationale behind our claim for design rights to be brought in line with copyright and trade marks. ACID’s argument is based on the fact that copyright is a property right subsisting inter alia in “artistic works” – see Section 1(1) (a) CDPA and Design right is a property right subsisting in original designs (S.213 (1) CDPA).  ACID believes that copyright and design rights are exactly the same type of legal right and should be treated similarly. ACID further argues the fact that copyright infringement is in certain circumstances a criminal offence (see S.198 CDPA). Trade mark infringement is also a criminal offence (S. 92 TMA). These crimes are punishable by up to ten years imprisonment. Infringement of design right is not a criminal offence and can be dealt with by way of civil proceedings only and we believe that this gives rise to anomalies and inequality of treatment. Dids Macdonald said, “We have provided a compelling rationale and now that we have full backing from the influential Alliance against IP Theft, I feel that this will be a positive step forward in ensuring that Andrew Gower’s recommendations to the UKIPO for parity in IP rights will be nearer reality. It is long overdue for the design industry. Our next step is to present our case to IP Minister Baroness Wilcox.”

The Alliance Against IP Theft puts ACID’s lobbying issues in main strategy for 2011 onwards

• Design right to have parity with copyright
• Increase in exemplary damages for IP infringement

Scope of Protection

•    Copyright is a property right subsisting inter alia in “artistic works” –see Section 1(1) (a) CDPA.
•    Design right is a property right subsisting in original designs (S.213 (1) CDPA).
•    So copyright and design rights are exactly the same type of legal right
•    The copyright protection of artistic works is usually restricted to 2 dimensional works but it does also protect 3 dimensional works. Section 4 CDPA states that artistic works means
(a)-a graphic work (2D), photograph (2D), sculpture (3D) or collage (2D or 3D) irrespective of artistic quality
(b) a work of architecture being a building (3D) or model for a building (3D)
(c) a work of artistic craftsmanship (3D)
•    Graphic work is further defined to include any painting, drawing, diagram, map, chart or plan (2D)
•    Sculpture is defined to include a cast or model made for purposes of sculpture (3D)
•    The case law on works of artistic craftsmanship (unsurprisingly) requires a number of criteria to be met before a work will be considered as one of artistic craftsmanship and mass produced articles will not qualify.
•    Design Right only subsists in 3D. The word “design” means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article (S. 213 (2) CDPA).
•    Some 3D objects are therefore protected by both artistic work copyright protection and design right so long as they can be classified either as sculptures or as works of artistic craftsmanship but most 3D objects will be protected by design right alone.

Offences

•    Copyright infringement is in certain circumstances a criminal offence (see Ss 107-110 CDPA, S.198 CDPA. Trade mark infringement is also a criminal offence S. 92 TMA). These crimes are punishable by up to ten years imprisonment.
•    Infringement of design right is not a criminal offence and can be dealt with by way of civil proceedings only.
•    This gives rise to anomalies and inequality of treatment.
•    For example 2D design drawings are protected by copyright as artistic works. If these drawings are copied or a 3D object is made from the design drawing in circumstances where the person making the object knows or has reason to believe that he is making an infringing copy of a copyright work a criminal offence is committed.  But if that same person takes the 3D object and copies that rather than the design drawing then unless the 3D object qualifies for copyright protection as either a sculpture or as a work of artistic craftsmanship no criminal offence will be committed.
•    In the first case an offence punishable by ten years imprisonment is committed and the infringer gets a criminal record. If the infringer is a company S.110 CDPA confers criminal liability on directors, managers, secretary and other similar officers.  Police and Trading Standards can be deployed to disrupt the business of the suspected criminal and to arrest and / or search premises. The suspect can be interviewed under caution.
•    In the second case (on almost identical facts and certainly with no lesser harm caused to the victim) there is no criminal offence committed, neither the Police nor Trading Standards will be interested and disclosure of information and search of premises can only be obtained through expensive civil litigation remedies  . This is unfair.
•    Given that in nearly all cases the infringer will copy from the 3D design not from the 2D design document, and that this is perhaps a more serious problem for the design right owner, it is clear that weaker legal protection is currently provided for  more serious infringing behaviour .
Why the inequality of protection?

•    There is no obvious reason for the disparity of protection. This may have been overlooked during the frenzied last minute lobbying and amendments made to the CDPA in 1988 as it was passing through Parliament. Design right protection was a relatively late innovation in 1988 and at the time it was probably felt that it was a step too far to extend to design right the new improved protection introduced for copyright in 1988. Certainly no rational basis for the inequality has been advanced by Government.

Solution

•    The legal solution is to introduce into the CDPA two new Sections to mirror S.107(1) and 110 CDPA. The wording would be pretty much identical to Sections 107(1) and 110 and would be designed to criminalise the infringement of the design right subsisting in 3D designs. This can be done very simply by replacing the word “copyright” every time it appears in Sections 107(1) and 110 with the words “design right” and the words “copyright work” with the word “design.”  It would then be necessary to make consequential amendments to mirror Sections 107 (4), 107 (5) 107A, 108 and 109 CDPA.
•    It is necessary to specifically spell out what is required. Simply to point out the inconsistent treatment might lead to attempts to water down the protection available to copyright owners of artistic works rather than increase the protection for design right proprietors.

Nick Kounoupias
Legal Counsel – ACID (Anti Copying in Design) LOBBY
Partner, DMH Stallard

Susie Winter of the AAIPT recently attended the Trading Standards Institute launch of National e-Consumer week, where the danger of buying fakes online was highlighted.

Susie reports that the TSI recently conducted a survey of visitors to their own website and found that:

• Out of the 73% of people who are concerned about shopping online 6% are concerned the item will be fake
• However, out of the 28% who said they had problems shopping online 19% said the item when it arrived was fake (48% said the item never arrived)
• When asked what they would do if they had a problem 10% said they would take it on the chin and avoid using the same website

Calls to Consumer Direct on counterfeits went up 43% from Aug 08-09 to Aug 09-10

• Aug 08-09 1,958 calls
• Aug 09-10 2,801 calls

The number of fakes seized by the UK Border Agency has increased more than four-fold over the past decade

• 2000 – 857,772
• 2010 – 3,707,940

IP Minister Baroness Wilcox said, “Fake goods can pose a serious risk to health and safety. Poor quality electrical goods can cause fires and electrocution. Just this month a teenager was badly burnt after buying seemingly genuine hair straighteners.”

Download the Report in PDF Format Here

Registration deadline: December 3, 2010 -Early Bird Tariff for registrations before November 02, 2010

The 35th  Plagiarius-competition date has been announced. Action Plagiarius grants this negative award at the annual “Ambiente”, the world’s largest consumer goods trade fair, during an international press conference. The award is given to those manufacturers and distributors whom the jury has found guilty of making or selling “the most flagrant” (design) imitations. Key figure is a black painted gnome with a gold nose to signify the illicit earnings from product imitation.

Since 1977 Action Plagiarius has been increasing the public awareness of the unscrupulous business practices of imitators who copy 1:1 the innovative design and technical solutions of successful products. The aim of Plagiarius is to inform the public – industry and consumers alike – about the sweeping extent of the damages and dangers incurred by fakes and plagiarisms. Furthermore Plagiarius serves as a platform and is a great conduit for industry to shed light on this problem on an international basis. The huge public awareness level of “Plagiarius” often makes a strong impact. In the past, numerous imitators have withdrawn remainders of stock from the market, have signed cease and desist letters or revealed their suppliers.

It is most important that affected companies protect their innovations and at the same time draw the attention to the increasing problem of brand and product piracy. Particularly consumers should be sensitised for the problem. Without demand, there would be no supply. Action Plagiarius combines both: deterrence of the imitators (supply) and sensitisation of the consumers (demand).

On February 11, 2011 – the first day of the “Ambiente” International Consumer Goods Trade Fair – the award ceremony / press conference of “Plagiarius 2011” will take place. All entries will be shown from February 11-15, 2011 in Foyer 5.1/6.1 during the “Ambiente”. Afterwards the prize winners will be shown at changing world-wide exhibitions and in the Museum Plagiarius in Solingen (Germany).

Designers and companies affected by plagiarisms, should apply for the Plagiarius Competition 2011

For the evaluation the jury needs:

• The original product
• The alleged plagiarism
• The filled in registration for (new: can be filled in directly at the PC)
• Any correspondence with the imitator
• Copies of IP (Intellectual Property) registrations (certificates of design patents, utility patents etc.) if any registered
• If needed, any further information that may be helpful for the jury (short and precise !)

The early bird registration fee until Nov. 02, 2010:

Registration: EUR 250,00 – further registrations (each): EUR 150,00

The registration fee until Dec. 03, 2010:

Registration: EUR 300,00 – further registrations (each): EUR 150,00

Applications are welcome any time from now on – the application form can be downloaded at:

http://www.plagiarius.de/e_awards_comp.html

For further information please ask Christine Lacroix, info@plagiarius.com or phone. +49(0)7308 / 922 422

Last year’s winner image taken from Plagiarius website

ACID Member Damian Evans of Element Design has just announced his latest innovative design for Joseph Joseph.  He has developed a new style rotary peeler with three blades in a compact 90mm diameter case which can be split apart for ease of cleaning. The three blades are designed  to work efficiently for hard skinned vegetables such as potatoes, soft skinned vegetables and fruit and also for cutting juliennes.

It will be available from October.

View his latest work on his website

Celebrating British ingenuity – 6th September to 28th November 2010

In a celebration of British ingenuity the British Library is exploring the stories behind fifteen ground-breaking inventions from this century’s first decade. Whether they are changing the world of sport, fighting climate change, or just making life a bit easier, each inventor has challenged the established way of doing things. From Dyson’s revolutionary bladeless fan to President Obama’s favourite dog bowl and it is possible to trace the journey of an idea from that first spark of inspiration to the development of a business. The original drawings, patent specifications and finished products have been made available to view.

One of the 15 inventions is the Money Saving Ewgeco Energy Monitor developed by ACID Ambassador and Member Tanya Ewing.  Attached to a domestic or commercial power supply, this single device makes monitoring usage of electricity, gas and water easy through a simple traffic light warning system.

An inspiring programme of events will take a deeper look at world of inventions and help aspiring inventors to turn their ideas into reality, with the support of the Library’s Business & IP Centre.

Curator of the exhibition and the British Library’s resident Patent expert, Steve Van Dulken, said, “Inventing the 21st Century is a celebration of British ingenuity.  Investigating the stories behind fifteen leading British inventions from the last decade, this exhibition covers everything from potential world changing renewable energy devices and cutting edge medical technology, to products that simply aim to make daily life that little bit easier.  “Detailing the journey from inspiration to market behind each of these products, the British Library hopes this exhibition will inspire a generation of aspiring inventors to explore their ideas and turn that creativity into a reality.”

For further information visit the British Library Website

Please find a link below for a radio interview featuring Tanya on the You and Yours show

http://www.bbc.co.uk/programmes

SOCIAL: the new media for Brands?

Marketers, creatives and brand professionals are invited to join us on 6th October to learn about Social Media, which has been projected as bigger for brands than advertising! Social Media consultants Educated Change will present the topic at this free evening reception at the Brand Museum (from 6pm).

Further Information
The Museum of Brands charts 300 years of brand progression, through numerous technological and cultural revolutions.  Radio, TV and Internet each changed the face of branding and advertising.  A new revolution is underway that is likely to dwarf all those that occurred in the last 100 years.
The Museum of Brands have arranged an evening presentation with Educated Change to share how Social Media will impact how you promote and protect brand identity and loyalty in the coming years.  The event will be held at the Museum on October 6th and it is free to attend!

This event is about helping you and your company prepare for the next shift in communication (networking and social media). Understand what you can do now, what you should be planning and what tools will help reduce the workload.

Join us for a glass of wine, some light snacks, a tour of the Museum and a 40 minute seminar that will help you understand the way you communicate in the Brand Shift era.

Agenda
6.00  Drinks, Museum visit, networking
6.30  Social Media Seminar

• 300 years of communication history – a brief overview
• Trends in Social Media, Collaboration and Networking
• Success and Failure – Case Studies
• What you should be doing so you don’t waste time and money
• Feedback

7.10  Post seminar drink
7.40  Event ends

This event is now fully booked

For more information on this event and others please visit the Museum of Brands Events Page