How to Work With Your Intellectual Property Lawyer

By: Mikki Barry
In many small businesses, intellectual property is an overlooked asset. The goodwill from your company name, computer programs you have written, articles, manuals, or books that you have written, logos, advertising copy, methods you have used or processes to create your products or services, all should be closely examined in conjunction with a qualified intellectual property attorney, to decide how much value they are to your business, and how they should be properly protected.

There are many different disciplines under which your intellectual property can be protected. These include copyright, trademark, trade secret, method patents, design patents, product patents, and others. You can also consult with your intellectual property attorney to decide whether or not to extend your intellectual property protection world wide, or just keep it national.

If your business could be impacted by competitors copying your name, your logo, your products, your services, or anything else integral to your business' success, you owe it to yourself, your employees and your shareholders to protect it in the strongest way possible. Fine yourself a good intellectual property attorney with specific knowledge of your particular business genre who can help you "lock down" your investment.

What Should You Look For in an Intellectual Property Attorney?

Intellectual property is a field in which an attorney has to know not only the law, but must also have a sense about the potential client's business goals, practices, and ethical stance. These elements are not always obvious, so it is in the client's best interest to inquire in an initial interview not only how long s/he has been practicing this particular type of law, but also what type of businesses the intellectual property attorney has had experience with, as well as how "gung ho" the attorney is. For example, if your business wishes to take a balanced view of protection, going after only infringers that you feel are causing serious damage, if your intellectual property attorney delights in dropping nuclear bomb style threat letters on indigent college students and little old ladies, perhaps you would do better with an attorney more in line with your personal ethical structure.

Other things to look for in an attorney include whether or not your personal communications style meshes with that of the intellectual property lawyer. A good example is email communication. Email, for many business owners, is a much more efficient and usually cheaper method of communication. As an added bonus, you have a written record of the exchange in case of later misunderstanding. If your business runs on email contact and your attorney uses pen and paper, this may not work out in your best interests.

Once You Find an Intellectual Property Attorney, Then What?

What do you do once you've found your intellectual property attorney? Communicate clearly what your objectives are and let the attorney make suggestions to you as to how to reach those objectives. Intellectual property law is often highly complex and legally technical. If you have questions, ask the intellectual property attorney. If they don't communicate with you, their client, in clear English terms, ask them to. Oftentimes, lawyers forget that they are dealing with non-lawyers and may fall back on legal jargon. If they can't explain concepts to you in a way you understand, perhaps you should find an attorney who will.

On the other hand, you should not expect your intellectual property lawyer to boil 3 years of law school and decades of experience into a fifteen minute "Cliff Notes" summary. As with all things, finding a balance where both of you are comfortable is of great importance.

As a legal client, do not forget that you are in the driver's seat. Your intellectual property attorney can't make business decisions for you. You must weigh his or her advice carefully, then make your decisions as an informed consumer of legal services. Your decisions should feel "right" to you. Insist that your intellectual property lawyer lay out the scenario to you and give you appropriate cost estimates, time estimates, and how the attorney thinks that this action (or inaction) will be of benefit to your business.

Mikki Barry is a business and intellectual property attorney for technology and small business companies. More information is available at http://www.mikkibarry.com



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Intellectual Property Law: Community Trade Marks - Registration - Grounds for Refusal

By: Rosanna Cooper
In the case of CeWe Color AG and Co v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (T-178/03 and T-179/03), the Court of First Instance rejected CeWe's trade mark applications on the grounds that the marks were merely descriptive and lacked distinctiveness.

In 2001, CeWe applied for registration of the Community Trade Marks for the names DIGIFILM and DIGIFILMMAKER in Classes 9, 16 and 42 in respect of apparatus and automatic machines for recording data carriers, in particular apparatus for the transfer of digital data onto data carriers.

The examiner rejected the applications in respect of Classes 9 and 42 in accordance with Art 7(1)(b) and (c) of Council Regulation (EC) 40/94. The examiner concluded that:- - the trade marks sought were simply descriptive of the relevant goods and services; and - the terms 'Digi', 'Film' and 'Maker' did not have the sufficient level of distinctiveness for registration.

CeWe appealed and the Board of Appeal upheld the examiner's decision. CeWe further appealed to the Court of First Instance and contended that:- although the terms 'digi', 'film' and 'maker' are known to refer in the English language to respectively 'digital', 'film' and 'manufacturer', the marks were not descriptive but were rather technical terms which the general public understood; the combination of the terms 'digi', 'film' and 'maker' was unique; and although the marks for which registration was sought may appear on the internet, they are not listed in the dictionary and are therefore capable of registration.

The Court of First Instance held that:- the terms 'digi', 'film' and 'maker' in DigiFilm and DigiFlimMaker form combinations capable of being dissociated and these juxtapositions are neither unusual nor striking; DigiFilm and DigiFlimMaker would be understood immediately by the public as referring to the processing of digital data; in the absence of any additional element whether graphic or another distinctive feature, the marks sought lacked the necessary distinctiveness for registration; the terms DigiFilm and DigiFlimMaker would be perceived by the average consumer as terms simply descriptive of the goods and services they provide; and CeWe's appeal would be rejected. For help with registering your trade mark please contact us at enquiries@rtcoopers.com

© RT COOPERS, 2005. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.

Intellectual property law firm advising on patents, Patent attorneys, Patent Lawyers, Copyright, know-how, trade marks, trademarks, copyright law, IP lawyers, IP law Firm, IP valuations IP solicitors freedom to operate copyright lawyers, patent solicitors, branding,intellectual property lawyers, intellectual property solicitors. If you require any advice or assistance please email us at enquiries@rtcoopers.com. Visit our website at http://www.rtcoopers.com/practice_intellectualproperty.php



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Intellectual Property - Trade Marks - Distinctive Character Test - Landmark Decision

By: Rosanna Cooper
The recent decision by the European Court of Justice (“ECJ”) in Societé des Produits Nestlé SA v Mars UK Ltd [2005], makes it easier for trade mark owners to satisfy the distinctive character test when applying for registration of their trade marks. The ECJ decided that the necessary distinctive character required for a trade mark registration can be acquired as a consequence of its use as part of another registered trade mark provided that an average, well-informed consumer would deem it to be distinctive of its trade origin.

Nestlé owns the UK registered trade marks, KIT KAT and HAVE A BREAK…HAVE A KIT KAT in class 30 in respect of chocolate, confectionary, candy and biscuits. In 1995, Nestlé applied to the UK Trade Marks Registry to register the phrase HAVE A BREAK as a separate trade mark in class 30 in respect of chocolate, confectionary, candy and biscuits. The mark HAVE A BREAK was accepted by the Trade Marks Registry and published for opposition purposes. The mark was opposed by Mars UK Limited on the grounds that the mark was devoid of distinctive character relying in particular on art 3(1)(b) of First Council Directive (EEC) 89/104 (“the Directive”) (to approximate the laws of the member states relating to trade marks).

Art (3)(1)(b) of the Directive, (as well as s3(1)(b) of the Trade Marks Act 1994) provides that trade marks devoid of distinctive character shall not be registered. An exception arises where “…before the date of application for registration and following the use which has been made of it, the mark has acquired a distinctive character (Art 3(3))”.

As a result, the opposition was upheld and Nestle’s application for registration of the mark HAVE A BREAK was rejected. Nestle appealed to the High Court. This appeal was dismissed and Nestle appealed to the Court of Appeal. The Court of Appeal had to consider:-

 Whether the expression HAVE A BREAK was devoid of inherent distinctive character under art 3(1)(b) of the Directive rendering the expression unregistrable.

 Whether registration of HAVE A BREAK might occur only on the basis of art 3(3) of the Directive, subject to proof of distinctive character acquired through use i.e. whether the mark HAVE A BREAK had acquired distinctiveness through the use of the mark HAVE A BREAK…HAVE A KIT KAT. This meant that if the mark had acquired distinctiveness as a result of its use, then it would be registrable.

 The Court of Appeal highlighted that the application had been rejected on the ground that the phrase HAVE A BREAK was essentially used as part of the registered mark HAVE A BREAK…HAVE A KIT KAT and not, genuinely, as an independent trade mark.

 Nestle’s submission that this decision could have serious consequences for trade mark owners seeking to register marks comprising shapes since such marks were seldom used by themselves, and considered that a slogan-like phrase associated with a trade mark might, by repetition over time, create a separate and independent impression and thus acquire distinctive character through use.

 As a result, the Court of Appeal decided to stay proceedings and refer to the Court of Justice of the European Communities for preliminary ruling the question whether the distinctive character of a mark referred to in art 3(3) of the Directive might be acquired following or in consequence of the use of that mark as part of or in conjunction with another mark.

The ECJ ruled:

 The distinctive character of a mark referred to in art 3(3) of the Directive might be acquired in consequence of the use of that mark as part of or in conjunction with a registered trade mark.

 Whether inherent or acquired through use, distinctive character had to be assessed in relation, on the one hand, to the goods or services in respect of which registration was applied for and, on the other, to the presumed expectations of an average consumer of the category of goods or services in question, who was reasonably well-informed and reasonably observant and circumspect.

 In relation to acquisition of distinctive character through use, the identification, by the relevant class of persons, of the product or service as originating from a given undertaking had to be as a result of the use of the mark as a trade mark. In order for the latter condition, which was a central issue in this case, to be satisfied, the mark in respect of which registration was sought need not necessarily have been used independently.

 Art 3(3) of the Directive contained no restriction in that regard, referring solely to the ‘use which has been made’ of the mark. The expression ‘use of the mark as a trade mark’ had therefore to be understood as referring solely to the use of the mark for the purposes of the identification, by the relevant class of persons, of the product or service as originating from a given undertaking. Such identification, and thus acquisition of distinctive character, might be as a result both of the use, as part of a registered trade mark, of a component and of the use of a separate mark in conjunction with a registered trade mark.

 In both cases it was sufficient that, in consequence of such use, the relevant class of persons actually perceived the product or service, designated exclusively by the mark applied for, as originating from a given undertaking.

Comment:

 The main points arising from the decision that trade mark owners should be aware of are:


o A mark could acquire the necessary distinctive character when used as part of another phrase or trade mark;


o Distinctive character must be assessed in relation to the goods and services concerned and the presumed expectations of an average, well-informed consumer;


o Art 3(3) contains no restriction on the way in which any mark has gained its distinctive character; and


o It is therefore possible for this distinctive nature to be achieved through the use of the phrase HAVE A BREAK as part of the larger mark HAVE A BREAK…HAVE A KIT KAT.

 The decision must be applied to the facts by the Court of Appeal. However, the ECJ has made it clear that there is no requirement for a mark to be used independently in order for it to obtain a sufficient level of distinctive character to be registered as a trade mark.

 This decision has completely changed the English court’s approach to the question of distinctiveness when marks are used together. The English court’s approach was problematic for owners of non-conventional marks such as slogans, shapes or colours which are rarely used on their own. Use of the combination will now be taken into account when judging whether any individual element is registrable. This decision will be applied in all European Union Countries.

If you require further information contact us at enquiries@rtcoopers.com

© RT COOPERS, 2005. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.

Intellectual property law firm advising on patents, Patent attorneys, Patent Lawyers, Copyright, know-how, trade marks, trademarks, copyright law, IP lawyers, IP law Firm, IP valuations IP solicitors freedom to operate copyright lawyers, patent solicitors, branding,intellectual property lawyers, intellectual property solicitors.

If you require further information, please contact Rosanna at enquiries@rtcoopers.com. For information on intellectual property including trade marks, visit our website at http://www.rtcoopers.com/practice_intellectualproperty.php



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Intellectual Property Law- Patents - Assignment of Patents

By: Rosanna Cooper
In the case of QR Sciences Ltd v BTG International Ltd [2005], the defendant company, BTG, (a purchaser of intellectual property and technology rights, particularly patents) granted an exclusive licence to QR Sciences (an Australian Company), in September 2002 to use a large number of its patents subsisting in many different countries.

A clause in the licence agreement granted QR Sciences the right to assign the patents in certain circumstances. Clause 14.4 of the licence stated that: “throughout the term of the licence BTG will not assign any patent without first offering to assign such patent to QRS”.

In March 2004, BTG informed QR Sciences that it was negotiating an assignment of the patents to a third party. QR Sciences began proceedings against BTG. QR Sciences argued that clause 14.4 applied when BTG proposed an assignment of the patents as well as when BTG abandoned the patents and the Court should construe the clause to have this meaning.

The following issues arose during the action:-

whether BTG's negotiations triggered QR Science's rights under clause 14.4; and whether BTG's proposals to QR Sciences in March 2004 discharged BTG's duty to offer the patents to QRS first. The Court ruled:-

BTG's negotiations with the third party to assign the patents did not trigger QR Sciences' rights under clause 14.4. If the negotiations had involved abandoning the patents, QR Sciences could have enforced its rights under the clause; BTG's proposals were made subject to contract and were therefore not contractual offers but only invitations to treat; BTG had not yet satisfied its contractual obligations to first make an offer to QR Sciences; and any offer by BTG to QR Sciences must be a contractual offer whereby QR Sciences had a reasonable time to consider the offer and respond.

If you require further information contact us at enquiries@rtcoopers.com

© RT COOPERS, 2005. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.

Intellectual property law firm advising on patents, Patent attorneys, Patent Lawyers, Copyright, know-how, trade marks, trademarks, copyright law, IP lawyers, IP law Firm, IP valuations IP solicitors freedom to operate copyright lawyers, patent solicitors, branding,intellectual property lawyers, intellectual property solicitors. If you require further information contact us at enquiries@rtcoopers.com or visit us at http://www.rtcoopers.com



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Intellectual Property Law - Trade Mark Infringement - What is the Overall Impression?

By: Rosanna Cooper
The recent case of Wistbray Ltd v Creative Nature Ltd (2005) emphasises that the Court will look at the overall impression of a sign to determine whether it infringes a trade mark.

Section 10 of the Trade Marks Act 1994 provides, so far as is material: '(2) A person infringes a registered trade mark if he uses in the course of trade a sign where because.(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark'.

The claimant company, Wistbray Ltd, was the registered proprietor of a UK registered trade mark 'DRAGONFLY' in Class 30 in respect of teas. It was also the registered proprietor of a European Community registered trade mark for 'DRAGONFLY', combined with a logo of a dragonfly in silhouette in Class 30 in respect of teas. Wistbray had been using the trade marks for the sale of teas since September 2000 and had an annual turnover of about £1 million.

Creative Nature, a UK company, traded in incense, arts and crafts and herbal teas. Only a very small proportion of its sales were for teas in Class 30. Creative Nature used a sign comprising a pictorial depiction of a dragonfly in flight with the words 'CREATIVE NATURE'.

Wistbray claimed that Creative's use of its sign infringed both its trade marks, suing for infringement under s.10 (2)(b) of the Trade Marks Act 1994 and seeking summary judgment.

The court held that: the claimant's use of the marks was widespread and longstanding;

the claimant's marks, both as an expression and as a pictorial symbol for use in teas, was distinctive and memorable;

the fact that the defendant's teas were largely medicinal and were sold at specialised outlets did not remove the likelihood of confusion;

the likelihood of confusion between marks should be appreciated globally, taking into account all relevant factors of the case;

global appreciation should be based on the overall impression given by the marks, bearing in mind their distinctive and dominant components;

it was satisfied in the instant case that the defendant's sign was similar to the claimant's trade marks, the defendant's goods were similar to those of the claimant's, and the result was at least a likelihood of confusion on the part of the public.

The court granted an injunction restraining the defendant's use of the mark.

If you require further information contact us at enquiries@rtcoopers.com

© RT COOPERS, 2005. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.

Intellectual property law firm advising on patents, Patent attorneys, Patent Lawyers, Copyright, know-how, trade marks, trademarks, copyright law, IP lawyers, IP law Firm, IP valuations IP solicitors freedom to operate copyright lawyers, patent solicitors, branding,intellectual property lawyers, intellectual property solicitors. If you require further information contact us at enquiries@rtcoopers.com or visit our website at http://www.rtcoopers.com



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