Image of IP agreement & ppenACID (Anti Copying in Design) welcomes the latest Government initiative with their announcement to raise business awareness to avoid falling foul of current IP laws. There are now clear guidelines to provide companies with up to date employee information to ensure that they are not breaking the law. Baroness Wilcox, Minister of Intellectual Property, who launched the new initiative said, “The new guidance was an example of Government, enforcement agencies and industry working together and raising awareness of managing IP in the workplace. Intellectual Property rights are essential to the success and growth of any business. However, many companies can leave themselves open to prosecution if they or their staff infringe the IP rights belonging to other companies or individuals.”

To avoid criminal offences (and potential fines of up to £50,000 and/or a possible prison sentence) taking place in the workplace employers should take a simple IP Health Check. If the answer is “NO” to the questions below, immediate, free and simple guidance is available on the IPO website

  • Do your employees know that they cannot sell copies of protected works?
  • Company IT equipment and servers – Are your staff aware that it should not be used to produce infringing content?
  • Are employees aware that they should not use the company equipment to sell infringing products to colleagues?
  • Do you have a company policy for staff on IPR infringement, procurement?

Dids Macdonald, ACID’s CEO said, “Taking time to look at these guidelines will help businesses protect themselves from legal challenge and, I hope, raise awareness about corporate responsibility and respect for IP. This comes as a very welcome addition to ACID’s Guidelines for Design Buyers which was launched several years ago to help design buyers through what they could and should be doing to protect themselves and their staff from infringing the rights of design originators.”

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.

Temple Island Red BusACID (Anti Copying in Design) member Temple Island Collection have scored an early victory against New English Teas in the first of a two part intellectual property case heard in the Patents County Court. Having settled the original dispute about the infringement of its iconic “Red Bus” image a dispute arose about the exact scope of settlement. In addition, New English brought out a second image which Temple alleged infringed its copyright. At a case management conference in June 2011 HHJ Birss QC decided the issues relating to the settlement of the first image could be hived off and dealt with separately and on paper. The second image issue will proceed to Trial in November 2011.  Three main issues required determination relating to the settlement.

The first was the Royalties due under the settlement. New English had agreed to pay 5% of the trade sale price of all past and pending sales of the first image. Later, New English attempted to reduce the royalty on “multi-packs” by 66% on the basis that of the 3 items in the multipack only one featured the first image. Temple disagreed, saying that it was clear that the parties had in mind a 5% payment on the sale price of the product sold which included the image. HHJ Birss QC agreed with Temple, the parties had not invented some complicated mechanism to decide the royalty and Temple’s reflected the parties’ intentions when viewed objectively.

The second issue was the amount of costs payable (by New English) for drafting a licence agreement, the rival figures being £500 and £2000. HHJ Birss QC accepted Temple’s submission that the time taken to draft the licence was not the only factor but that other factors, such as expertise and the value of the document to the parties, were relevant  and awarded £1500.

The third issue was as to whether or not the settlement required New English to enter into a formal licence, and whether that licence should include an ‘open book’ accounting term. This depended upon HHJ Birss QC analysing correspondence between the two parties’ representatives, and he ruled there was no requirement to enter into a formal licence. The Judge however indicated that he would have included an open book term had he found a licence was required.

New English have had to pay over £14,000 to Temple Island for royalties and the licence agreement as well as a previous unpaid amount in costs. Andrew Lee of ACID Accredited law firm McDaniel & Co. said, “This signifies a significant moral and financial victory for Temple Island heading into the determination of the second image in a trial set for November 2011.”

Justin Fielder, Managing Director of Temple Island Collection commented “It has been a long, exasperating road to get to this point, but we were obviously justified in taking this action to protect our intellectual Property rights and are pleased the court agrees.”

Dids Macdonald, ACID’s CEO said, “HHJ Birss QC would appear to be true to his word on simplifying the legal process at the new PCC, by giving both parties tight deadlines and page limits to adhere to relating to submissions. Inevitably, this leads to a more cost and time effective resolution, in this case in favour of ACID member Temple Island.”

Sarah Hendry Image of Dogs

ACID (Anti Copying in Design) member Sarah Hendry is celebrating a success in the Patents County Court after HHJ Birss QC gave judgment in her favour against American company Falcon Collectible Miniatures, who Sarah alleged had copied five of her 1/12th scale miniature sculptures.

This case was also of note in that a witness statement from ACID CEO Dids Macdonald was part of the evidence which confirmed Sarah had filed her designs with the ACID data bank on the dates she had alleged which helped support the alleged date of creation of her animals.

Renowned and highly regarded as a sculptor for her work in producing miniatures, which are typically bought as collector’s items and used in dolls houses, Sarah Hendry has been a member of ACID since 2002. Sarah discovered that Falcon was displaying copies of her work at the Miniatura trade show at the end of 2007. Sarah contacted ACID accredited lawyers McDaniel & Co who wrote a Cease and Desist letter to Falcon who would not cease their activities and therefore Sarah commenced proceedings.

Sarah’s miniature animals are each individually hand sculpted and the creation of a new animal can take up to 2 months working 6 hours a day to perfect.  It is a time consuming process which takes a great deal of skill and labour and as Falcon were having cheap copies made in Thailand and selling these at a greatly reduced price to Sarah’s, the effect on her business was very damaging.

The Action eventually reached Trial in June 2011 and HHJ Birss entered judgment in Sarah’s favour which included a declaration that the copyright in her works had been infringed, an injunction to prevent Falcon carrying out the acts complained of in the UK and a costs award in her favour.

Andrew Lee of McDaniel & Co, who acted for Sarah, commented,  “Sarah Hendry spends a great deal of time and effort creating her works and therefore it was imperative that she took action to protect her rights. She is a ‘one man band’ and therefore finding the money to fight this case was testing. However, to allow such infringement to go unchallenged would undermine her business and make the creative effort she employs pointless.”

Dids Macdonald ACID’s CEO said, “This is a great result for Sarah and shows that small individual designers can take Action when their rights have been infringed. Let’s hope it sends a very clear message out to companies like Falcon who think they can free ride on others craftsmanship and creativity without being challenged. We are hoping that following the recent Hargreaves Review and ACID’s compelling submission, Government will introduce a Fast Track IP Small Claims Court so that micro businesses like Sarah’s will have easier access to cost and time effective IP resolution. Hopefully, time is running out for those that think they can hide behind deep legal pockets”.

ACID Accredited Exhibition Organiser logoAccredited Spring & Autumn Fair show organisers emap support ACID IP Steering Group initiative

Following the exciting news that emap’s IP policy is now going to be ramped up after meetings with ACID’s Dids Macdonald on behalf of the Spring & Autumn Fair IP Steering Group, a new layer of Intellectual property (IP) focus is being included in a confirmation letter to all exhibitors when they sign up to either exhibition, that they have responsibility to adhere to ALL emap’s Terms and Conditions. The letter, as well as outlining what evidence will be required to prove IP ownership, will be reminding exhibitors to confirm:

•    They own the intellectual property rights or have the right to market and sell the products on their stand
•    They do not infringe the intellectual property rights of a third party
•    Their products will not be inaccurate, obscene, defamatory or disreputable
•    ‘The Exhibition Organiser’ reserves the right to remove products from stands if it believes they are infringing those of a third party

emap logoWe hope other exhibition organisers will follow the ACID IP Steering Group recommendations to ensure a safer trading environment for exhibitors and to create a stronger message, to those who do not adhere to stringent standards of IP probity, that they will run the risk of their products being removed.

Mike McLintock of 95Percent Ltd who was a prime contributor in one of the emap/ACID meetings said, “Most media has full IP protection so it is outrageous the same is not true of the design industry. Our frustration at being unable to remove a clear copy at the last Spring Fair convinced us to challenge emap to join us in ensuring those that insist on copying pay a high penalty.”

IP Steering Group member, Angus Gardner, on behalf of Caroline Gardner Publishing Ltd. said, “It is a great first step that emap has taken this decision to highlight to companies that they have these obligations with regard to IP integrity.  It would be good to get a similar commitment from them that all the visitors to their shows have similar intent.”

ACID’s CEO Dids Macdonald added, “The exhibition industry is worth big bucks. In the UK it is worth £9.3 billion which is no great surprise because exhibitions and trade fairs are still the most important venues and launch pads for marketing and testing new products and ranges. If exhibition organisers like emap are encouraging innovation as a key market differentiator, there is an onus to communicate a zero tolerance of IP theft to both exhibitors and visitors. Following meetings held over the past 18 months and the submission of draft documents, I am delighted that emap are tangibly supporting the creative industries with a new, revised IP focus. Having worked positively with Spring & Autumn Fairs over the last decade, providing support with the ACID Exhibition Protocol for complaint handling, this is a real USP for all existing and potential exhibitors to their exhibitions.”

Burgon & Ball ImageFollowing a cease & desist letter from ACID Accredited law firm, McDaniel & Co, ACID Members Burgon & Ball have protected their trade mark against infringement by Dutch owned Vanderschoot after discovery of the offending mark. Vanderschoot was using the mark without permission on their own planter, the Salad Planter, a product which was being imported into Garden Centres in the UK.

Shortly after the exhibition, Burgon & Ball discovered that large scale bulb supplier Vanderschoot, were potentially infringing their UK trade mark No: 2487749 for the mark ‘HOME ALLOTMENT’ in class 20 covering in particular ‘Planters of Wood, Planters of Plastics Materials and Planters of Wood and Plastics Materials’. The mark is commonly used on one of Burgon & Ball’s most popular and award winning ranges, the ‘Home Allotment’ range of planters.

Burgon & Ball are well known in the garden ware industry for selling high quality, durable and beautifully designed products. Following the successful settlement, Kelly Hudson of McDaniel said, “Burgon & Ball were determined to protect their market and resolved to take whatever action was required to do so. This matter demonstrates the effectiveness of a cease and desist letter and it will be seen by those within the industry as a key component of Burgon & Ball’s new wider strategy to ensure effective IP protection and enforcement. Growing popularity and a valued reputation mean that Burgon & Ball need to take effective action such as this immediately to stamp out IP infringements.”

ACID’s CEO Dids Macdonald added, “Following Burgon & Ball becoming members at GLEE, an ACID Accredited exhibition, meant that ACID and McDaniel & Co. were able to act quickly when the infrigement arose. Burgon & Ball’s IP message is clear, they will protect their brand at all costs.”

View the Burgon & Ball website

M & S Cutlery BoxAt the close of submissions to the Hargreaves Review, the British Brands Group have used the opportunity to raise awareness about the increasing problem of look alike packaging. The practice is not only misleading to consumers, who are probably unaware that they are being duped but it begs the question, what is main board food chain policy which allows and condones the production of parasitic packaging and an absolute disrespect for the IP of legitimate brand owners? ACID is quite sure that if the CEO of a major food chain was accused of stealing a watch or wallet there would be shock and horror but somehow feel it is OK to steal a brand identity which doesn’t belong to them. Seemingly, producing look alike consumer confusing packaging is without conscience, happily passing off their own products riding on back of another’s hard fought for “look and feel” and brand reputation. 2009 research, according to the British Brands Group, indicated that the more packaging looks like familiar brands, the more likely shoppers are to buy products by mistake and also think the products all come from the same manufacturer. Shoppers expressed a definite preference for clear packaging which did not mislead.

Time to stamp out misleading “parasitic” packaging

The IPKat’s friends at the British Brands Group (BBG), noting that today is the closing date of the Hargreaves IP Review, are marking the occasion by publicising a selection of products which they have found on the market and which, they maintain, are “packaged unnecessarily similarly to popular branded products”. While naturally no self-respecting and sophisticated Kat would ever fall prey to such mimicry, it is common knowledge that approximately 99.9% of ordinary mortals will quite easily be induced to pick up the copycat product which is why “unnecessary similarity” is practised.

The BBG’s media statement is reproduced below.  Note that it does not make wild and emotive allegations of any infringement of trade mark, copyright or design rights, or any passing off (although some or all of those causes of action may be relevant in any given situation).  The language of “unnecessary similarity” is moderate, grown-up and welcome, just as the practice of “unnecessary similarity” is sad, tediously annoying for consumers and intellectually stultifying [If the IPKat were a designer, he would cringe at the thought of having to fill his portfolio with work executed in pursuit of a "get as close to Brand X's product as you can without actually infringing it"].  It invites thought and debate as to the ethical dimension and even the business efficacy of leaning so heavily on the goodwill, the style and the creativity of leading brands.  Says the BBG:

Robert Welch ForkBBG’s Statement “Time to stamp out misleading “parasitic” packaging

The number of products packaged in a very similar way to familiar branded products reveals that this misleading practice continues unabated in the UK. The British Brands Group calls on Government’s independent IP review to press for measures to stamp out “parasitic” packaging which misleads shoppers.

Today, the British Brands Group released the latest examples of products in packaging very similar to popular branded products, to demonstrate the extent of the practice. Gathered from store visits last year, the examples cover a range of products from shampoo to cheese [Merpel was a bit puzzled by this: she's never been confused between shampoo and cheese, though if you keep the latter in the fridge too long it does get hairy ...].

The release of this evidence coincides with the end of the consultation on the independent IP review commissioned by Government. In its response, the Group calls for effective tools to stamp out similar packaging when it misleads shoppers. The last review (Gowers Review, 2006) found that brands are not well protected but its recommendation as to how to address the problem has yet to be implemented five years later.

Research in 2009 indicated that the more packaging looks like familiar brands, the more likely shoppers are to buy products by mistake and also to think the products all come from the same manufacturer. Shoppers expressed a definite preference for clear packaging which did not mislead.

In addition to duping consumers, similar packaging destroys distinctiveness which is crucial for branded products to stand out from the crowd. The original product also faces increased costs and lost revenue, damaging the ability to invest. Meanwhile, the copy benefits from a reputation it does not warrant, increasing its appeal to shoppers and allowing it to command higher prices.

John Noble, Director of the British Brands Group, said, “At a time when household budgets are under such severe pressure, shoppers must have confidence in what they are buying [this is a big problem, says the IPKat: when the imitation product sufficiently resembles the original, its very similarity gives them confidence false confidence]. People do not want the wool pulled over their eyes. Companies should be able to help both themselves and shoppers by stamping out misleading packaging. In the UK this is simply not possible – a situation which is in stark contrast to most other countries. The Government’s IP review offers a perfect opportunity to rectify this.”

The British Brands Group calls on Government to provide companies with effective tools to stop competitors misleading shoppers and destroying the distinctiveness of brands. This would result in better informed shoppers and a better environment in which companies can invest – all at no cost to the public purse”. Connoisseurs of previous IP reviews will instantly recall how the Gowers Review in 2006 almost effortlessly spotted that brands were not well protected from misappropriation, advising that, if new laws on unfair practices weren’t shown to work, the Government should take instant and decisive action by, er, having another consultation.   The new laws mentioned here are found in the Unfair Commercial Practices Directive, introduced into UK leglslation as the Consumer Protection Regulations 2008 [how fortuitous it is that the previous post on this weblog discusses exactly this legislation, here].

Says the IPKat, brand owners have a huge responsibility for keeping fakes, counterfeits and regular infringements off the streets and off the shelves.  They do this at their own expense and at their own inconvenience, even though they are actually acting as tax collectors for Her Majesty’s Revenue and Excise by ensuring that trade in legitimate goods, which generates value-added tax and corporation tax, supplants unlawful and often clandestine business activities.  Yet, when it comes to tackling the issue of misleading packaging, the self-same companies have not even been granted a civil right of action. Instead, as the BBG points out, enforcement is placed in the hands of such organisations as the Office of Fair Trading and Trading Standards — where resources are already over-stretched. [The mere fact that the OFT and Trading Standards are over-stretched is only a small part of the problem, says Merpel, who believes that the real problem is that they don't have a vested interest in securing an outcome: they keep their jobs whether they solve the unnecessary similarity issue or not, and they don't lose any sleep if they don't achieve anything].

View the British Brands Website Article

Boulevard DesignAshley Wilde Group has successfully forced Irish company Primark into a settlement of Ashley Wilde’s High Court action for infringement of its well known and highly successful Boulevard design.

In October 2008 Primark launched, in its Penneys stores in Ireland, a range of products bearing a copy of the Boulevard design. Ashley Wilde issued High Court proceedings in Dublin seeking an injunction to restrain sale, damages and costs. Primark agreed to withdraw its products from sale and made a payment into Court as an offer to settle the damages claim of approximately 100,000 euros, which sum was accepted by Ashley Wilde. The proceedings were compromised on the basis that Primark gave undertakings to the Court not to manufacture, import or sell products reproducing the Boulevard design, to disclose to Ashley Wilde the volume of its sales and to destroy any residual stock. As well as paying damages, Primark is also obliged to pay Ashley Wilde’s legal costs.

Managing Director of Ashley Wilde, Mr Ashley Brodin said: “We are very pleased with the outcome of this case, which demonstrates that Ashley Wilde will always take strong action to protect the integrity of its designs, whatever the financial position of the infringer. Ashley Wilde invests heavily in its design studio to enable it to produce high quality, commercially successful products. The practice of taking a short cut to market share by copying successful designs needs to be stamped out and Ashley Wilde will remain at the forefront of protecting the integrity of its products”.

Tony Catterall of Taylors Solicitors said: “It is pleasing that this claim was brought to an early and successful conclusion for Ashley Wilde. The issue of plagiarism in the home furnishings industry is an increasing problem heightened by the economic recession. Reputable design houses and converters need to follow Ashley Wilde’s example and stand up to infringers rather tha turn a blind eye. Those who copy successful designs need to be exposed and made to suffer the financial consequences of their unlawful conduct. In winning this action, Ashley Wilde has struck a blow for all design-led companies in the jome furnishings trade”.

Dids Macdonald comments: “I am pleased that Ashley Wilde has confirmed their strong and robust IP strategy on design protection which will now be publicised widely to those within this sector who appear to seek the fast track to market”.

For more of Ashley Wilde Group designs visit the website

PuffinAnti Copying in Design member Archipelago creates top quality design-led unique wood crafted products within the Giftware sector.  Whilst attending Autumn Fair (an ACID Accredited Exhibition) last year they discovered that one of their competitors, Quay Traders, were marketing and selling what appeared to be Archipelago lookalikes.

Following an assessment by Kelly Hudson of ACID Accredited law firm, McDaniel & Co,  it was discovered that a number of Archipelago’s most popular products had, in fact, been infringed by Quay Traders. Following the Fair, a Cease and Desist letter was sent alleging copyright infringement in the artistic works as all the products were designed by Archipelago and hand carved. Said Kelly, “We established that copyright subsisted in the works as artistic works and the subsequent letter put Quay Traders on notice of the infringement and requested various undertakings. This was a clear indication of the action Archipelago would be willing to take to protect their brand.”

Quay Traders solicitors responded denying the alleged infringement but later, through a subsequent letter, Quay Traders agreed to discontinue all products referred to in the cease and desist letter and to no longer import or sell these products. Undertakings followed, confirming Quay Traders commitment.

Two small birdsNiall Head-Rapson of McDaniel & Co commented, “Archipelago were determined to protect their market share and take whatever action was required to do so. This reinforces the effectiveness of a cease and desist letter and confirmed Archipelago’s decisive action following the discovery of the infringement at the Fair, an essential element in an effective IP protection strategy.”

Dids Macdonald. ACID’s CEO said of the settlement, “ACID works proactively within the Giftware sector and is determined to continue to raise awareness about the important role which intellectual property ownership plays for the key players in this industry.”

A recent opinion of the Advocate General could cause chaos for Intellectual Property Rights holders.  The case surrounds a huge industry; the Premier League.  The Premier League licenses its television rights and does it on a Country by Country basis.  The biggest market is currently the UK market which has broadcasts by Sky and ESPN.  However other Country broadcasters are licensed to show Premier League fixtures on their television channels.  These non British channels satellite broadcast can be picked up in the UK.  Because of the prices charged by Sky particularly public houses and social clubs which were struggling for revenue acquired a Decoder card for a non UK satellite channel.  A lady called Karen Murphy was prosecuted for showing a Greek satellite channel in her public house in Southampton.  Her case has been referred to the European Court for a guidance as to whether the showing of the Greek channel in the UK infringed, amongst other things, copyright.

In the European Court of Justice the process begins with the Advocate General giving an opinion.  This opinion is not binding on the Court but is more often than not followed.  Today the Advocate General has given an opinion.  In that opinion the Advocate General has said “the exclusivity agreement relating to transmission for football matches are contrary to European Law” he went on “exclusivity rights in question have the effect of partitioning the internal market into quite separate national markets, something which constitutes a serious impairment of the freedom to provide services.”

If this opinion is followed it will have certain repercussions for those people who have intellectual property rights and sell them on a territory by territory basis.  At the moment there is no decision as yet but it may well be that a major rethink by intellectual property owners will be needed if they are to properly licence their markets.

Read the IPKat’s opinion on the decision here

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