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!

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

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”.

Dear ACID members

We need your help to affect positive change in new UK design policy!

As a result of the compelling submission from ACID (and other groups) to the Hargreaves Review of Intellectual Property, the creation and shaping of new design policy has been brought to the forefront as one of its top 10 IP priorities with Government endorsement from the Prime Minister.

Since then, The ACID team has been collaborating with its diverse network within the design community to help the UK Intellectual Property Office gather the right sort of evidence to influence and shape future policy to support design – a critical contributor to the UK economy – 2.4% or £33 billion at the last count! This is why I am writing to you for your input by completing the UKIPO questionnaire. It will only take a few minutes of your time and can be completed on the UKIPO website

ACID Requests!

In addition, to strengthen the ACID main submission and recommendations, please would you help us by sending your case study evidence, this is a unique opportunity and it will only happen with your collaboration. We need your own examples of copying issues – real, hard evidence to support the case for policy improvements. The UKIPO will subsequently make their recommendations to Government. Please used the attached document as a guide.

Please send these to dawn.perry@acid.uk.com or directly to dids.macdonald@acid.uk.com

The ACID team has spent the last 10/15 years helping to ensure that design’s voice is heard on IP issues and now, through a united approach, we can influence real change. It is the first time that design is included as a mainstream Government recommendation and depending upon the strength of the case we can put forward, there will be a full consultation prior to an opportunity for potential legislative change in 2013. Questions are already starting to be asked in Parliament on design IP issues.

On behalf of us all at ACID and the wider design community, we very much welcome your support and would appreciate your responses by 7th November so that we can submit them by 11th November. We would personally welcome any further thoughts you may have on strengthening our case so please do pick up the phone or send us an email

Best Wishes

The ACID team

Parliamentary ActivityDesign has moved up on Government’s radar following the Hargreaves Review on Intellectual Property to which ACID submitted a compelling case for policy reform. There has been a recent flurry of questions tabled and answered by Ed Davey, The Secretary of State for Business, Innovation and Skills during Question Time at the House of Commons:

Q – Mike Weatherley: To ask the Secretary of State for Business, Innovation and Skills whether he plans to bring forward proposals to provide design the same legal protection as copyright

A – Mr Davey: The Government broadly accepted the recommendations of the Hargreaves review of intellectual property and growth, in particular, that policy should be evidence based. The Intellectual Property Office (IPO) has launched a ‘call for Evidence’ on design intellectual property (IP), which, together with an online survey, will help us identify changes to the designs IP framework that users of the system think are now needed

Q – Mike Weatherley: To ask the Secretary of State for Business, Innovation and Skills when he expects his proposed copyright small claims jurisdiction to be in place

A – Mr Davey: The Government are examining the business case for the introduction of a small claims track in the patents county court. We intend to report on progress this autumn. Subject to an appropriate business case being established, the Government would look to implement the change as soon as possible thereafter, hopefully in 2012

Q – Mike Weatherley: To ask the Secretary of State for Business, Innovation and Skills what research his Department has (a) evaluated and (b) commissioned to quantify the effects of design infringement on small businesses.

A – Mr Davey: In September 2011 the Intellectual Property Office (IPO) published the results of independent research into design economics, which added to existing evidence about the difficulties faced by small businesses seeking to protect design. Further research is now under consideration, while other work by the IPO—a ‘call for evidence’ on design IP, together with an online survey will help identify potential solutions.

In addition to the above, Chi Onwurah asked a Parliamentary Question on the Digital Economy Act, which has been answered by Ed Vaizey

Chi Onwurah: To ask the Secretary of State for Culture, Olympics, Media and Sport what statutory instruments he plans to lay before the House under the provisions of the Digital Economy Act 2010; and when he expects to lay each such instrument before the House.

Mr Vaizey: The Government will be submitting two statutory instruments to the House over the coming period to take forward the online infringement of copyright provisions within the Digital Economy Act 2010. The first, which is currently under consideration under the terms of the technical standards directive, sets out the way in which the costs of the provisions will be shared by industry. The second will be an order setting out the initial obligations code. We would expect the instruments to be laid before both Houses in the first quarter of 2012.

The European Patent Office (EPO) is offering three 2-day workshops this November with a selection of topics from over 60 teaching hours of recently updated material. This popular project is providing business advisors and TTOs with practical IP strategy training they can use when supporting their own client SMEs, entrepreneurs and start-ups. The modules cover much more than simply “how to register rights”, but rather discuss the business context in which IP can be commercialised. Modules on IP licensing, valuation, financing and enforcement provide a complete picture of the role IP plays in protecting and encouraging innovation.

PLEASE NOTE: each of the three workshops includes different topics.  For more information please follow the links below:

14 & 15 November – Munich, Germany
IP in Business Practice (Includes an all new module on “IP Deals in China”)

22 & 23 November – Vienna, Austria
IP Information for Business Success

29 & 30 November – Berlin, Germany
Trading IP (Includes an all new module on “IP deals in China”)

Attendance costs just €250 for each 2-day workshop – but places are limited to just 20 seats per workshop!

The EPO has recruited many of the authors of these new materials to teach what they have written, so this is a rare opportunity to be taught by the experts in the field.

IP MINISTER ISSUES INVITATION FOR DESIGNERS TO BE INVOLVED WITH FUTURE INTELLECTUAL PROPERTY DESIGN POLICY

ACID (Anti Copying In Design) welcomes an open invitation to the UK design sector from Baroness Wilcox, Minister for Intellectual Property, to shape future IP Design Policy, at an event held at the Design Council to encourage initial debate on what makes the design industry tick. Lady Wilcox said, “I urge the business community to participate in this call for evidence and help shape the future of design in the UK.” This could not come at a more timely moment following Professor Hargreaves recommendations that this sector of the creative industries had been neglected in the past. “Investment in design in the UK,” said Lady Wilcox, “Contributed £33 billion or 2.4% of the UK’s GDP in 2008.” 

Dids Macdonald, CEO of ACID, a panellist at today’s event said, “This is a very encouraging start but it will only be effective if the whole design sector is prepared to contribute, with real evidence and case studies to highlight some of the challenges facing design through IP infringement and Government listens and acts.  This is a huge opportunity for designers to speak out about their IP issues!”

Right, Baroness Wilcox earlier this month following a meeting with ACID Members Dan Black of Black & Blum and Rodney McMahon of Morgan Contract Furniture (also Chairman of BCFA and Honorary President of FIT) together with representatives from BDI.

Macdonald continued, “Innovation happens irrespective of IP rights but designers should demand a robust IP framework from which to achieve growth through ROI, reinforced by a realistic, cost and time effective legal framework to address infringement, with appropriate exemplary damages. Without this, growth will be eroded and jobs threatened. This, alone, would go a long way to discourage those who take the fast track to market by free riding on the back of the UK’s designers who are, undoubtedly, some of the best in the world.”

Design rights are complex. The majority of the UK’s 232,000 designers do not rely on registered rights and have less than 4 employees.  Therefore, it can be too expensive to take legal action, not to mention the debilitating negative effects which make running a small design led business almost impossible in the face of the uncertainty of potential infringement.  More importantly, Britain’s designers do not have the significant benefit that European counterparts have in being able to rely on unfair competition law.

ACID will be working closely and positively alongside the UK IPO to ensure that design’s voice is heard loudly and clearly with the creation of sound policy and tangible actions to support this important part of the economy.

Statement from IPO on 21/9/11

The Government has today issued a ‘call for evidence’ (1.31Mb) in relation to the design sector and launched a supporting online questionnaire/survey aimed at business.

Baroness Wilcox announced the publication of the first phase of research into the use of design rights in the UK. The research shows that the most intensive spenders on design in the UK are business services, manufacturing and construction sectors. Relative to other countries in Europe the UK spends significantly on design related products and services; but there is very low awareness of design rights. The research also found that registered design rights are used mainly in specific business sectors, such as furniture and clothing.

These reports are available via our IP Research area.

The full Government response (402Kb) to the Hargreaves Review, along with the IP International Approach (580Kb) and IP Crime Strategy (413Kb) are available on this website.

•  ‘Digital Opportunity: A review of intellectual property and growth’ is available on the review website.
• A full copy of the Government response to the Hargreaves Review is also available on the BIS website .
• For further information, please contact Dan Palmer on 0207 215 5303 or e-mail communications@ipo.gov.uk.