Legal battle over best-selling Vancouver range

ACID Member Mosley Trading, the company behind furniture design and distribution brand Besp-Oak, has agreed settlements with retailer Argos and furniture wholesaler Magical Investments following, a trade mark dispute over its best-selling range.

The agreements follow a long running legal battle over Besp-Oak’s Vancouver collection and solidifies the rights that Mosley has in its registered trade mark 2530305 ‘Vancouver’. The terms of the amicable settlement were not disclosed.

Speaking generally, Steve Mosley, Besp-Oak MD, said: “My message to the industry globally is hands off any of our brands. I am adamant our recognition as a global leader in the furniture sector will not suffer because someone decides to free-ride on our brands’ reputation.”

Dids Macdonald, Chief Executive of industry anti-copying trade association ACID, said: “When market leaders like Besp-Oak invest millions in the products, quality and customer service that sit underneath their brand names, it is simply not acceptable for others to think they can hijack well known trademarks without being held to account.”

For the avoidance of doubt, Steve Mosley does not suggest that Magical or Argos were free-riding on his brand’s reputation, and Dids Macdonald does not suggest that Magical or Argos had hijacked Besp-Oak’s trade mark.”

TEMPLE ISLAND WIN SECOND COURT JUDGMENT AGAINST NEW ENGLISH TEAS TO PROTECT THEIR FAMOUS RED BUS DESIGN

ACID (Anti Copying in Design) member, Temple Island Collection Ltd, have won a second victory against New English Teas in an intellectual property action in the Patents County Court to protect their famous Red Bus image. After lengthy legal proceedings resulting in New English Teas agreeing to no longer use the first design, New England Teas released a re-designed tea range in late 2010 (without reference to Temple Island Collection) which again featured a red bus image that Temple Island Collection and its legal team felt was once again an infringement of its copyright.

In his judgment, his honour Judge Colin Birss QC said, “On the question of copying, I find that the common elements between the defendant’s work and the claimant’s work are causally related.  In other words, they have been copied… I have decided that the defendants’ work does reproduce a substantial part of the claimant’s artistic work.” Judgment was given in favour of Temple Island Collection Ltd on 12th January 2012, with his honour Judge Birss QC denying the Defendants permission to appeal.

Philip Partington, an intellectual property expert from ACID Accredited law firm McDaniel & Co said, “The action for copyright infringement was the second made by Temple Island Collection against New English Teas. Action was first taken in 2010, on discovering a range of products by New English Teas showing a red bus design, which Temple Island Collection and their lawyers felt was a copy of their famous image.”

The outcome was wholeheartedly welcomed by Managing Director of Temple Island Collection Ltd, Justin Fielder who said, “As creator of the Red Bus image and originators of the product concept we gave New England Teas the opportunity to license with us and work collaboratively, but this was declined. Upon discovery of their use of the imagery a second time, we felt we had no alternative other than to pursue legal proceedings once again. Now matters have been decided, we look forward to extending and developing this successful range, which we’re confident will sell exceptionally well before and during the Olympic Games. We’re also delighted that our licensing partners House of Dorchester are launching new Red Bus biscuit products this Spring.”

Dids Macdonald, ACID’s CEO said, “The proceedings have once again served to highlight the importance of protecting intellectual property.  The UK has a heritage of innovation and design, with leading brands such as Doc Martin and Dyson serving as great examples, yet recent reports show 23% of small and medium sized enterprises have had their business significantly affected by IP crime.”

Temple Island Collection Ltd is one of the leading names in visitor and heritage retail for both skilfully designed bespoke product and their own successful gift ranges. Their customers range from multi-national corporations, major visitor destinations, councils and charities to independents and small sites. www.templeisland.com

This announcement by Government is timely because in 2012 ACID will re-launch its “Commission it, Don’t Copy It” positive campaign aimed at retail buying departments which is “win win” all around. The designer is paid a commission and a royalty, The Retailer may use their purchasing power to produce the products more cost effectively and also has the opportunity to create a UK design signature range. Thus, actively supporting UK Design and respect for IP in CSR. The consumer still gets an excellent deal but in the full knowledge that they are buying an original design and supporting British design. We are looking to Government to actively support our Call to Action.

View the document in full on the IPO website

Did you know that there are approximately 232,000 designers in the UK, according to the Design Council, and last year the UK Intellectual Property Office granted just 4000 registered designs?  It is, therefore, not rocket science to come to the conclusion that the majority of the UK’s designers rely on unregistered design rights and informal rights! So what can be done to maximise protection under unregistered design and what does unregistered design right actually mean?

The productivity of this incredible UK design army, mainly made up of micro and small businesses, enables UK businesses to spend a staggering £33 billion on design and design services, adding 2.4% to the UK’s GDP. There are 55 different design disciplines/sectors whose numbers include many product designers who rely on either registered or unregistered design rights, so it is very important that designers are equipped with tools of self help to protect their creative work.

In a nutshell, unregistered design right (UDR) in 3D articles arises automatically so long as the design is original, hasn’t been copied from someone else’s design and is not “commonplace” in the particular design field at the time it was designed.  It gives automatic protection for the internal or external shape or configuration and, at the moment, lasts in the UK for either 10 years after first marketing the products or 15 years after the creation of the design, whichever is earlier. After 5 years, the design is subject to a Licence of Right which means that anyone is entitled to a reasonable licence upon the payment of royalties to make and sell the products. In the EU, unregistered design right only lasts for 3 years but covers a broader range of criteria such as shape, contours, lines, colours, texture or ornamentation. So, the good news is that for 3 years you have both UK and EU protection.

Don’t forget too, that copyright is an unregistered intellectual property right, so designs including images, artwork, surface decoration and greetings cards, for example, all fall under the heading of unregistered rights. Remember, in the UK you cannot register your copyright whereas in the USA you can.

Don’t be misled by any services which say “Designs Protected” as often this can be very misleading. Depositing designs with any unofficial third party does not add to any IP rights nor does it offer “design protection”. What it does do, however, is offer a means of recording the date on which the designs are received by the third party organisation.  It does not confirm anything other than this! The bottom line is that no one can say they are “protecting” your designs but what they can confirm is the date on which designs are received which, in ACID’s experience is invaluable evidence should a design audit trail need to be provided if relying on unregistered rights. More especially if it is by a respected third party and respected IP name within design such as ACID.

What is Registration?

ACID has been very careful not to confuse anyone into thinking that our Design Databank service is official registration, it is not. Nor do we issue numbered certificates because this could potentially mislead designers into thinking that they had “officially” registered their designs. We never describe this as a “registration service” either.   This could mislead respondents into thinking it is an equal alternative, with some online companies claiming to ‘register copyright’ which can also cause misunderstanding.  ACID is a proactive supporter of official registration as a first option and the key difference between registered and unregistered right is that registration gives a monopoly right for 25 years, renewable every five years, and you have a numbered certificate stating that you “own” that design and you don’t have to prove copying.  So, if you possibly can, register new designs if they are going to be valuable to your bottom line!

“So, if you are a designer relying on any unregistered IP right, (copyright or design right), and your designs are copied you must be able to prove they were copied. That is where the ACID Design Databank (holding over 300,000 copies of original designs) becomes invaluable.”

Using the ACID Design Databank

Those who send copies of their designs to the ACID Design Databank (whether copyright or design right) sign a statement that they are fully aware that submission does not add to their IP rights and that this is not an official registration. The ACID Design Databank is a free membership benefit and part of an ongoing education and awareness process to make people aware of official EU or UK registration as a first choice. The DDB provides independent  evidence of the designs existence on a particular date i.e. when they are received by the ACID office, should this be needed to prove copying for those relying on unregistered UK or EU design rights. Designers who have this information to hand in a potential infringement issue are usually ahead of the game against their copyist opponents who are rarely able to provide a compelling design audit trail. A design audit trail is difficult to create in hindsight when a company is challenged.

“Fundamentally, the ACID Design Databank (DDB) provides a design audit trail and encourages designers to keep evidence of the evolution of their designs, from the seed of an idea to marketplace.  Many ACID members use their marketing material to communicate to their competitors that they have sent copies of their designs to the DDB adding to an effective, communicated anti copying policy.”

The Temple Island Experience

In one of the first cases to be heard at the new Patent County Court, ACID members Temple Island Collection scored an early victory against New English Teas in an intellectual property case. The dispute was about the infringement of its iconic “Red Bus” image, a stylised photograph of a red Routemaster bus depicted on a greyscale image in front of the Houses of Parliament. Patent County Court Judge Birss allowed a written statement from ACID confirming that the designs had been submitted to the Design Databank on a certain date which contributed to the design audit trail behind the image.

ACID Advice

Many designers, who cannot afford to register all their designs, rely on unregistered design right when initially checking the market out to see if a particular design is a market leader and revenue producer. If the answer is “Yes”, they have a 12 month window from first marketing to register their designs in Europe. This is great value because it offers protection for 25 years in 27 member states.

Be aware! If your design has been marketed for over a year, you cannot register in the European Union!

The appointment of the UK’s first ever Intellectual Property (IP) Attaché will be welcomed by those who already work with China and give confidence to those businesses who are planning to working with China in the future. According to the UKIPO, “Tom Duke is the former head the IP Centre at the European Union Chamber of Commerce in South Korea. He will be based at the British Embassy in Beijing and will be working alongside UKTI and British businesses operating in China to provide support and advice on industry concerns about the enforcement of IP rights”.

Dids Macdonald, ACID’s CEO said of the appointment, “We are absolutely delighted with this positive step and we will be seeking the first opportunity to create strong links with Tom Duke and his team. However, the all too familiar reality is that for many design-led UK businesses the emergence of copies and lookalikes commissioned by some UK retail buying chains from China is a real threat to business growth. It is to be hoped that whilst fostering new opportunities in China, real dialogue will take place through the newly appointed IP attaché Tom Duke and the Chinese Government on the escalation of copying issues.

IP Minister Baroness Wilcox announced the appointment at the first UK-China Symposium held in London today saying, “The Chinese market presents a great opportunity for UK businesses – in 2010 trade between the two nations was worth an estimated £42 million. By appointing our first IP Attaché in Beijing it will provide a physical presence for British businesses and help to build relations with intellectual property agencies in China.

“We need an efficient global intellectual property system where businesses have the confidence to trade in growing markets. I’m delighted that we have been able to agree to share information and ensure that intellectual property rights both here and in China are enforced robustly.”

Tom Duke said, “This is a fantastic chance to work closely with UK businesses and build on our already strong links in China. I am looking forward to playing an important role in addressing the intellectual property protection and enforcement issues that have been raised by UK companies.”

Bombus original

Nostalgic lookalike

In a cease & desist letter from ACID Accredited law firm, McDaniel & Co, Kelly Hudson confirmed that, “Bombus asserted the Copyright and Design Right protection available in their products and made clear they were willing to take action over the alleged infringements. Following pre-action correspondence with Nostalgic Heart, a successful settlement was reached ensuring the removal from sale of the products concerned”.

Following the settlement, Amelia Coward said, “Bombus are determined to protect their market share and take whatever action necessary, particularly as we have built up a reputation for such unique products. We have made a statement to the industry that infringement of our IP rights will not be tolerated. ”

Dids Macdonald, CEO of ACID said, “Increasingly, more and more design-led companies are flexing their muscles when they discover look alike products and Bombus are no exception. The message is crystal clear, IP infringement doesn’t pay and reputations can be ruined”.

View the Bombus website

Hundreds of printed brochures have been destroyed following a legal challenge by ACID (Anti Copying in Design) member Talking Tables when they discovered another wholesaler, CSC Imports, selling markedly similar products through advertising and promotional material which was strikingly similar to their own Christmas feature promotional image.

In a cease & desist letter from ACID Accredited law firm, McDaniel & Co,  Taking Tables asserted the copyright protection available in the image and made clear they were willing to take action over the alleged infringement in order to safeguard their brand. After engaging in pre-action correspondence with the other party, and making clear there was a very real possibility of litigation, a successful settlement was reached ensuring the removal of the image from CSC Imports advertising and the destruction of nearly 1800 printed brochures.

Following the settlement, Kelly Hudson of McDaniel & Co. said, “The issue related to use of a promotional photograph, to which Talking Tables had put significant effort into creating.  Action was important in this case as allowance the use of such similar images can be a signal to other businesses that Talking Tables would accept copying”.

Mark McCormack, Managing Director of Talking Tables, said, “Talking Tables invest significantly in design and new product development and take infringement of our IP very seriously. We are pleased with this outcome and will continue to monitor the market for further infringements.”

Dids Macdonald, CEO of ACID added, “In publicising this settlement, market leaders Talking Tables are sending out a clear anti copying message to all their competitors.”

Burgon & Ball planter

Greentree Garden's lookalike product

Proteam (UK), Solus Garden & Leisure, Apollo and Greentree Garden products ALL successfully challenged by Burgon & Ball in a massive IP clampdown!

Gardenware industry leaders and ACID (Anti Copying in Design) members Burgon & Ball are no strangers to copying and the latest to receive the weight of Burgon & Ball’s IP message were Proteam, (UK), Solus Garden & Leisure, Apollo and Greentree Garden products. In alleged design right infringements Burgon & Ball secured signed undertakings that the quartet will not produce further look alike products and packaging. They also ensured delivery up of tens of thousands of pounds worth of stock.  In the case against Proteam, Burgon & Ball were forced to issue proceedings in the High Court to protect their rights under Claim No: HC11C01136, eventually settling with the administrators as Proteam had been placed into administration. The look alikes were various products and planters in the Burgon & Ball’s Home Allotment range.

“The cease & desist letters outlined the alleged UK and EU unregistered design right infringements and successful settlements were reached in signed undertakings. Significant amounts in legal costs were also received and the delivery up of the goods” said Kelly Hudson of ACID Accredited law firm McDaniel & Co who dealt with all the cases.

Dids Macdonald, CEO of ACID said, “Burgon & Ball have a consistent IP strategy to ensure that their growth is not impeded by the emergence of lookalike products. The Home Allotment Range is one of their best sellers and so immediate action upon discovery of the infringement minimised any potential damage to their market.”

Heather Culpan, MD of Burgon & Ball said, “We began manufacturing in 1730 and employ 45 people whose jobs are reliant on the company’s continued growth. Any further erosion of growth by IP infringement could have a significant impact on the company’s success so this is why our consistent and unhesitating IP strategy will be to challenge those who try to take the fast track to market by copying”.

• I understand that if I accuse someone of copying my work that they could sue me.  How can that happen?

Depending on what you accuse somebody of, the law allows the person accused to take action against you, for what is known as a “groundless threat”.  This can happen where there are Patents, Trade Marks and Designs involved.  There are no groundless threats for Copyright and for Passing Off.  However there are two other areas that you need to be aware of; that is interfering with somebody’s business and defamation.

If you make your statements public, such as writing to suppliers or posting things on the internet, and if those statements are wrong but it still affects the reputation of the Defendant, they can sue you for unlawful interference in their business and for defamation.

If you are going to make allegations of copying then you need to make sure that those allegations are justified.

• So how can I prove that someone has copied me?

If it is somebody that you are doing business with then you should make sure that you have a paper trail.  If you have sold goods to them, for instance, then there will be invoices, order forms and e-mails.  If you are doing a pitch to somebody, make sure that you at the very least have letters and keep copies showing the accused has had access to your Designs.  You should consider using the ACID Safe Pitch Kit or at least a confidentiality agreement.  If you are sending items electronically you could also use the ACID IP Tracker.  These steps will help you prove that the accused has seen your work. It is also good practice to keep contact details for everyone that has visited your stand at a show or exhibition.

• I have been accused of copying someone but it is just a coincidence.  Does this make a difference?

Well yes it does.  In order to prove a case for unregistered rights infringement there has to be proof of copying.  Similarities by themselves may not be enough.  For instance if you and I both take a photograph from the same place of the same scene we have not copied each other but the photographs will be more or less identical.  If you are creating your own Designs you need to keep evidence of how you did it.  Story boards, sketches, sources of inspiration all to show how you went from the concept to the final article without copying someone else’s work. It would be a good idea to send this information to the ACID Design Data Bank too.

• How do I check to see if someone has already created a similar Design to my latest idea?

Well the obvious answer is to do an internet search which will show you what is currently available.  However, this is time consuming and not fail safe.  Unfortunately there is no central database of unregistered designs at this time.  However, with regard to Registered Designs, you could consider searching the various Intellectual Property databases at the Intellectual Property Office in the UK or at OHIM for European registrations. There are other national offices worldwide that can also be contacted – it depends how much time and energy you wish to put into market research.

• All my Designs can be seen on my Website.  How do I stop the images being downloaded or copied?

These days this requires more of a practical solution than a legal answer.  All websites can now be created with ‘copy protection’ and you should discuss this with your web developer or IT support team.  If you do not have this copy protection then you should consider watermarks for your pictures and you should certainly not allow people to download without leaving their details.  If you have a website policy which includes a mandatory log in and registration system before access to your images is granted it may also help to prevent your images being downloaded without your permission.  You should clearly show a Copyright notice, the ACID intellectual property statement and the Member of ACID logo, which can have a strong deterrent effect.  Clear website terms and conditions can also act as deterrents for people who copy.

At an event held at the University of West London on the 17.11.11 at the request of the People’s Republic of China, Dids Macdonald, Vice-Chair of The Alliance against IP Theft and CEO of ACID (Anti Copying in Design) and Jennifer Castoldi, ACID’s Development Director gave a comprehensive presentation on UK design issues to the 25-strong Chinese delegation. The delegates were all senior directors or influencers of a Chinese Government research programme.

The delegation were on an information gathering exercise, specifically looking for examples of the way intellectual property in all its various forms is protected in the UK and the extent of  the effect of IP theft on businesses. Their main objectives were to get a good grasp of best practice in the UK and consider whether this is something appropriate for use in China.

Amongst their other objectives was to find out the current government position on design issues, to hear ACID’s views on current priorities and responsibilities, and to understand ACID’s business model. Primarily they wanted to hear from ACID about the effect of IP theft on design-led sme’s and how the organisation tackles various IP infringement issues.

The invitation from the Chinese Delegation was sent to The Alliance against IP Theft, to which ACID has strong ties. Other presentations that took place during the 2 day event included the Publishers Association Copyright Infringement Portal  (a global automated search, and cease and desist notification service for books, newspaper and magazine publishers), as well as an overview of the Alliance against IP Theft from Director General Susie Winter.  Presentations also encompassed information about the Enforcement Policy Council from Chris Oldknow of Microsoft Europe on counterfeit software and from the UK music industry and copyright, and the relation between IP and growth in emerging markets.

Expressing thanks to the senior representative Mr Li Jianguo, Head of the Chinese Government Delegation, Dids Macdonald said, “We hope that this is the beginning of on-going and formative dialogue with the Chinese Government to work together collaboratively and positively to raise awareness about the importance of best practice across all aspects of IP issues in support of the creative industries globally”. Macdonald continued, “I am encouraged that through the Alliance against IP Theft, ACID and other key organisations were selected by the Chinese government to be invited to demonstrate ways in which heuristic solutions and business models can help various different sectors in different ways.”

Responding, Mr Li Jianguo, Head of the Chinese Government Delegation said, “ACID is an excellent example of an organisation providing an effective conduit between government and industry on design IP issues”.