This is an excellent opportunity for ACID members to contribute to building a better design law regime in the UK. British design makes a major contribution to the economy, but following ACID’s and others submissions to the recent review of IP and Growth, commissioned by the Prime Minister, Professor Hargreaves made it clear: ‘the role of IP in supporting this branch of the creative economy has been neglected’

The Intellectual Property Office has therefore commissioned Speechly Bircham and Mountainview Learning to explore the effectiveness of design law in the UK and to research ways of bringing the IP system up to date by examining:

• How effective the current UK design protection system is seen to be;
• Whether designers and design based companies believe they can access justice;
• The effectiveness of remedies available for design infringement; and
• Barriers to enforcement of design rights

The recommendations from the report prepared by Speechly Bircham will inform Government policy.

ACID members’ Involvement

The IPO hope to gain a broad insight into the way in which design law operates in practice. They are therefore keen to hear your views on (amongst other matters) the actual and perceived efficacy of design law, the benefits, disadvantages and availability of the various remedies available to address design right infringement and your proposed improvements to the current design law regime.

In this regard, They would be grateful if you could take the time to participate in the online questionnaire, which is being undertaken by Speechly Bircham and Mountainview, and which will help them understand whether the scope of the law relating to design and the structures and methods of protecting the aspects of design which you consider to be valuable are in your view “fit for purpose”, and if not, why not?

Please follow this link to the Questionnaire – it will open in a new window

Please note that the date for completion of the online questionnaire is 20 April 2012

Thank you in advance for your time with this

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

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

The Government today announced new measures which aim to help SME’s better protect their intellectual property and grow their businesses. Minister for Intellectual Property Baroness Wilcox said: “The intellectual property of SME businesses is vital to their future economic growth and success. Their innovative ideas and creations can be worth billions of pounds so it is essential that we provide them with the support they need to protect and enforce their rights. The package of measures outlined today will allow the Intellectual Property Office to build even stronger links with businesses, giving them the confidence to trade both in the UK and abroad.”

Dids Macdonald, CEO of ACID added, “This is a really positive step, we have been lobbying for the last decade for improvements in IP support for SME’s and this has paid off. The pace is hotting up with a whole raft of new support mechanisms. This valuable engine of the economy needs real action to replace previously rather empty words!”

ACID has been working with the UKIPO since The Hargreaves Review of Intellectual Property and Growth on their recommendations that the Intellectual Property Office should produce plans to improve the accessibility of the IP system to smaller companies within the design sector. The Government accepted these recommendations and is now in the process of implementing them.

Key actions announced today by the Intellectual Property Office (IPO) include:

• A new online business advisor training tool
• An online register of advisors to help businesses find the right advisor for them quickly and easily
• Consulting businesses, business advisors and IP specialists about how lower cost IP legal and commercial advice can be provided
• Offering free intellectual property audits to businesses through routes such as the Technology Strategy Board
• Enhancing existing schemes such as mediation to provide a more efficient dispute resolution service that can prevent potentially costly legal cases

The previous improvements include: A small claims process to be created for cases under £5,000 will be introduced at the Patents County Court for cases involving copyright, trademarks and designs; Launching Ipsum, an online patent service that could save UK business nearly £100,000 per year. It removes the cost to businesses of requesting patent documents; instead they will now be available for free online; Re-running the Fast Forward Competition which encourages Higher Education Institutions (HEIs) and Public Sector Research Establishments (PSREs) to work together with businesses to share research, innovation and intellectual property (IP).  £760,000 is available for winning bids to invest in research and knowledge transfer projects that have the potential to create new companies or services; and Supporting the Technology Strategy Board to develop an IP strategy for the new technology and innovation centres.

View the IPO Press release

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”.

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”.

SME Access to Small Claims IP Court set for 2012

After over a decade of representations to Government to improve access to a cost and time effective framework to address IP infringement issues for small businesses, ACID is delighted that the Government has confirmed today that a new small claims service will be introduced at the Patents County Court to give SME’s easier access to deal with copyright, patents, trade marks and design infringement. The Government announcement states;
“Currently, small firms are often put off enforcing their Intellectual Property (IP) rights by high costs. The new process will limit fixed costs and allow damages of up to £5,000 per case. New figures produced today by the Intellectual Property Office (IPO) estimate that around 150 firms will benefit from the service every year, providing an annual boost to UK business of £350,000.”

The recommendation for a small claims service, made in the Hargreaves Review of Intellectual Property and Growth was supported by ACID.  However, ACID believes that the Government figure of just 150 firms potentially bringing cases through the new system seems unrealistically low in terms of the infringement cases it hears about on a daily basis.

Dids Macdonald, CEO of ACID commented “This is a significant step forward to support small businesses in their continuous battle against copyists but it will only work effectively if the system itself is user-friendly and free from cumbersome bureaucratic and legal process complications. For the majority of UK’s 232,000 design community who have less than 4 employees and find it cost prohibitive to pursue legal action this will be a welcome initiative. We hope it will act as a deterrent against copying and provide a boost for growth and development. It is further good news, following the previous announcement of a separate fast track Patents County Court system, that smaller designers and innovators now have an improved legal system to protect their intellectual property rights and business interests.  I would like to thank those that contributed their experiences to the ACID submission to the Hargreaves Review and we hope that our latest submission to the Government’s Call for Evidence on Design will continue to bring about design law reform in other areas, chiefly addressing the disparity between copyright and design right.”

Minister for Intellectual Property Baroness Wilcox said: “We hope to have the new system in place by this time next year”.

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.

CEO Dids Macdonald with Mr Guriqbal Singh Jaiya, WIPO Director of SME Division

Following an invitation from the World Intellectual Property Office (WIPO) sponsored by the European Patent office (EPO) to a two-day SME and IP event held in Munich last week, Dids Macdonald CEO of ACID took the opportunity to raise awareness of the extensive use of unregistered and informal IP rights by the creative industries in the UK. Statistics from around Europe reinforced the fact that the UK is not alone in the distinct lack of formal IP registrations to support their business models.

Representatives from many national IP offices and other relevant institutions in the Organisation for Economic Cooperation and Development (OECD) shared their experiences in work being undertaken to help raise awareness about the significance of IP training for those involved with training the intermediaries who interface with SME’s in business mentoring. “Train the IP trainers effectively” was one of the key messages being discussed by delegates. Access to the EPO IP4inno website, which is an excellent site offering training modules for those involved in IP mentoring. The ip4inno project is funded by the European Commission as a part of the Sixth Framework Programme for Research and Technological Development. Its main aim is to help small and medium-sized enterprises (SMEs) enhance their understanding and use of intellectual property rights with a view to promoting innovation and competitiveness in line with the European Commission’s Lisbon goals.

Dids Macdonald, talking about ACID experiences emphasised the importance of providing one to one IP clinics on a wide variety of subjects, access to expert help at the end of a telephone and a proactive approach to communication of an IP strategy both internally and externally through the supply chain. Speaking at the event, Dids said, “The UK comprises of many micro and small businesses and designers account for approximately 232,000 but the majority of them have less than 4 employees. As such, many small firms are isolated and IP law can seem very complex, so it is important to move towards uncomplicated user friendly access to practical IP help and information”. Dids introduced ACID’s latest self-help tool for businesses sending confidential information by email, the IP Tracker. A simple to use cost effective tracking of confidential IP content to third parties. This works in harmony with ACID’s Design Data Bank which holds approximately 300,000 copies of members’ designs.