Category Archives: Intellectual Property

Latest changes in the Legal System

The various specialist civil courts in England and Wales will be reorganised and be officially known as the “Business and Property Courts of England and Wales” from June 2017. They will handle, amongst other matters, international dispute resolution jurisdictions. The courts included within the Business and Property Courts will be as follows:

  • The Commercial Court which will continue to cover all its existing subject areas of shipping, sale of goods, insurance and reinsurance etc.
  • The Admiralty Court.
  • The Mercantile Court.
  • The Technology and Construction Court which deals with major technology and construction cases.
  • The Financial List which deals with all banking and financial market issues.
  • The Companies and Insolvency Court.
  • The Patents Court.
  • The Intellectual Property and Enterprise Court.
  • The Competition List.

The new structure will provide more flexibility while preserving the practices and procedures of these courts. Judges with suitable expertise and experience will be able to cross-deploy so as to be able to sit on cases where their expertise can be best utilised. The current situation means that judges who are experts in a particular legal field are not readily available to sit in cases in that area in another court, so, highly expert competition law judges in the Queen’s Bench Division cannot easily sit on the bulk of competition law cases that take place in the Chancery Division.

The overall intention is to enhance the U.K.’s reputation for international dispute resolution and to ensure that the U.K. continues to provide the best business court-based dispute resolution service in the post Brexit world. Business and Property Courts will be set up in Birmingham, Bristol, Cardiff, Leeds and Manchester, initially with planned future courts in Newcastle and Liverpool and these courts will enhance the connections between Business and Property work carried out both outside and within London.

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Filed under Arbitration, Commercial law, Company Law, Competition Law, Construction, contract law, Copyright Law, Dispute resolution, EU Law, Intellectual Property, Legal news, UK Law

Article 50 is here.

Well article 50 has been effectively triggered today. Since the referendum there has been a period of uncertainty, but the latest analysis of possible effects on businesses and the probable changes to the law can be better understood.

One of the major issues that will need to be addressed will be all the EU registered trademarks, designs and the protected food and drink designations. Currently we have a national system which closely mirrors the EU regime, but after Brexit, the EU Trade Mark and the Community Registered Design legislation will no longer apply in the UK. Also protected names such as “Stilton” cheese will no longer apply to UK products so we may see in the future, French “Stiltons” or “Melton Mowbray Pies” and UK “Champagnes” and “Parma hams”.

Although the government has stated it will transpose much of EU law into UK law (The Great Repeal Act), this is not a simple as it sounds, there are many, many, alterations needed for the Laws to continue to make sense in the UK only and it remains unclear what will happen to current EU Trade Marks and Community Registered Designs. In any event, it’s possible that the UK Intellectual Property Office could be inundated with new and renewed registrations.

Data protection is another area of concern; currently the UK is committed to implementing the General Data Protection Regulation, but this may not be enough to prevent future problems with the EU as there may be legal challenges within the EU to recognise non-EU country’s data laws. On possible solution would be to have individuals either specifically give their informed consent to transfer their data or add clauses to contract that may involve data transfer.

Regulated industries are also likely to be affected; currently London houses the headquarters of the EU pharmaceuticals and veterinary products regulator, the European Medicines Agency, but this must change post Brexit which might mean delays to the clinical testing or marketing of new products in the UK. This might also apply in other heavily regulated sectors like the motor and aviation industries.

Businesses will encounter difficulties in many areas planning for the future with the legal outlook so uncertain. Although this brief overview doesn’t cover the thorny subjects of immigration restrictions and trade barriers, business needs certainty, which will only happen as the negotiations begin in earnest and the Government’s approach to tidying up the legal mess that Brexit involves becomes clearer.

What is certain is that if you are planning to enter into, or have existing long term agreements with partners in the EU you may need to consider the implications for those agreements. Some changes can sensibly be made now to deal with a post-Brexit world, so why not give us a call.

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Filed under Commercial law, Company Law, Copyright Law, Dispute resolution, Ecommerce, EU Law, Intellectual Property, Law and Technology, Legal news, UK Law

Do I really need to register a trademark?

The brief and simple answer is “yes” if you want to stop others passing off their goods and services as your own. The technical definition of “Passing off” states that it occurs when someone in the course of trade creates an impression that their goods or services emanate from that of another business, so leading to customer confusion. This is actionable in law using a Passing off action. Usually a passing off action arises where the branding of a business is copied, although it can encompass more general attempts to replicate another business.

Although a passing off action will provide some protection against unauthorized use of your business name or logo if they have not been registered as trademarks, your brand/company remedies in law are much more certain if you can argue that your trademark has been infringed, but  this does involve having a registered trademark.

Having a registered trademark makes it easier and cheaper to take action to stop other businesses from using your name or other branding. If you have not registered a trademark the law of passing off is your only recourse.

In order to prove Passing off you will need to establish that:

  • Your name and/or logo have built up a reputation and consequently there is a measure of “good will” attached to the brand.
  • A disconnected third party has used your branding in such a way that potential and or actual customers could be misled into believing that the goods or services on offer were those of your business.
  • You have suffered some form of loss, either financial or reputational, by the other person’s use of your branding.

Establishing the above can be difficult and expensive so it’s best to get specialist legal advice so if you are affected, why not give us a call?

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Filed under Commercial law, Competition Law, Copyright Law, Dispute resolution, Intellectual Property

Company for sale!

There will inevitably come a time when you may want or need to sell your business; if it becomes unprofitable, if you just get bored and want to pursue a new venture, if you can no longer run the business effectively because you become ill or want to retire. Whatever the reason you sell up you need an exit strategy to maximise you business’ value while minimising any risks during the sales process. Set yourself clear objectives; know why you want to sell, set a realistic price and plan what you are going to do after the sale goes through. Think about whether you still want to be involved in the business after it has been sold and decide on the timescales that you want to work to.

Timing is key, think about whether it is a good time to sell; is the business saleable or is there work to be done first? If so, are your timescales realistic? Get advice from legal professionals and your accountants. If you are in a partnership or joint stock company, consult with your partners and major shareholders, but don’t forget to talk to key members of staff and consider the impact on your employees; you may even be able to motivate them to want to help sell the business. You will certainly need support from external advisers; use trusted solicitors, accountants, etc. that specialise in buying and selling businesses of your size, and in your industry.

It can take time to increase your company’s “attractiveness” to the market in order to maximise value for you so you need to make the right preparations with the help of your advisers. Things that need looking at include:

  • Financials: you will need to compile detailed accounts that cover the last 3 years and monthly management accounts from the last 2 years. Don’t forget to include any forecasts. Consider if this information shows your company is an attractive proposition?
  • Assets: make sure you own what you think you own, Intellectual property is often a bone of contention, for example.
  • Liabilities: find out what business’ liabilities the company has and see how these can be minimised as a purchaser may not want to take these on.
  • Contracts: check your current contracts, are they properly written down and sufficiently binding for key suppliers or customers.

When you are ready start targeting potential purchasers. Make sure you have confidentiality and/or non-disclosure agreements prepared and in place with any potential purchaser, so that you don’t put yourself and your business at risk by sharing information that might be of use to a competitor before they are legally bound to buy your business. Give prospective purchasers a deadline for them to make you an offer, this saves a lot of potentially wasted time.

Once you have conditionally accepted an offer, be aware the purchaser will typically want a period of time to carry out due diligence in relation to your business. At this point it is important to have the sale documented to ensure that it reflects what you and the purchaser have agreed.

If you are looking at seeing (or buying) a business, we can help so give us a call.

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Filed under Commercial law, Confidentiality, Dispute resolution, Duty of care, Insolvancy, Intellectual Property

Hey! That’s my logo.

One area of law businesses fall foul of sooner or later, either as perpetrators or victims, is that of intellectual property rights. Intellectual property can be best defined as intangible personal property; a collection of commercial ideas and information that the law recognises as having a value and therefore, deserves protecting. The law is often used to prevent others from exploiting or infringing the intellectual property rights of the owner.

Although intellectual property covers subjects like trademarks, copyright, patents and designs. We’re going to have a brief look at “Passing off”. This is the area of intellectual property rights that protects the reputation and goodwill of a business and prevents people from selling goods as if they were someone else’s. The law protects traders against unfair competition from rivals and also protects consumers who might otherwise be confused as to the origins of goods and services that they are offered.

Although both traders and consumers are protected, traders are the only ones allowed to take legal action against an offending trader. In order to bring a case the affected trader must demonstrate the following:

  • A misrepresentation has been made to the public by the Defendant.

Customers or potential customers could be deceived or confused, although it’s not necessary to show that someone has actually been deceived, nor does it even have to be deliberate or intentional. Even an innocent or accidental misrepresentation that leads the public to believe the goods or services offered by the Defendant are the goods or services of the Claimant applies.

  • That goodwill or reputation is attached to the goods or services.

This is more nebulous but is taken to mean something that distinguishes a business from another, be it a trade mark, logo, or catchphrase, something that brings to the mind of a customer a particular quality of product or the good name of the business.

  • Damage has been suffered by the Claimant.

This includes loss of sales through diversion of custom, but can include damage to reputation if the goods or services supplied are of an inferior quality

If a claimant is successful they can get an order for the delivering up or destruction of offending articles, or the erasing of the offending mark by the Defendant. Restraining Orders can also prevent the use of the mark by the Defendant and punitive damages may also be awarded.

If the claimant can’t demonstrate the three conditions necessary, the action will fail, but there are also some additional defences available, including where the Defendant is simply using his own name, i.e.“J. Smith, Plumber” and “John Smith, Plumber” Courts are reluctant to prevent an individual using his own name when trading, but if this is combined with another factor which may lead to the public being deceived or a fraudulent intent then this defence will fail.

Another defence is when a Defendant has an independent or concurrent right to use the mark. This could happen when businesses have marks of independent origin yet naturally expand into new areas where they come into conflict with each other; neither business with a concurrent right to use a name or mark can prevent the other from continuing to use it.

It can be very expensive to bring an action so it’s always best to take legal advice, if you are affected, why not give us a call?

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Filed under Commercial law, Competition Law, Copyright Law, Dispute resolution, Intellectual Property

Intellectual Property Infringed?

Are you a small business struggling to protect that unique idea or product that forms the core of your business? You are not alone. The Federation of Small Businesses recently conducted a survey that found that a quarter of Small and Medium sized businesses have had their Intellectual property rights infringed or violated in the last five years. Products had been copied by rival companies along with multiple other copyright or trademark infringements.

SME’s are often forced to use funds they would otherwise use to grow and innovate, on securing Intellectual Property rights in the past five years, 22% of those surveyed have spent more than £5,000 in such actions.

Not surprisingly many business owners believe it is scandalous that responsible and dynamic small businesses across the country are forced to invest so much money and time to fight frauds and copycats and are demanding the law needs to be clarified and simplified.

The Government does, however, run schemes to help small firms, like the ability to raise small claims actions in the Intellectual Property Enterprise Court or the mediation service run by the Intellectual Property Office, but in many cases firms have taken no action because of the time and costs involved and lack of knowledge of their existence and how the process worked.

This lack of knowledge has several knock on effects; such as the ability to raise finance. For example only 5% of those with intellectual property rights have used them to support an application for finance. Only 25% of respondents reported they had insured their Intellectual Property before they encountered any problems. Exporting companies will also need to secure overseas IP rights; only 13% of respondents in the FSB survey said that they had secured overseas IP rights.

It’s always best to seek legal, advice from the outset but if you find your Intellectual property may be being infringed, don’t hesitate to give is a call.

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Filed under Commercial law, Competition Law, Confidentiality, Cybercrime, Ecommerce, Intellectual Property

It’s my idea!

The Intellectual Property Act 2014 (IPA) comes into force, in parts, from 1 October 2014. The IPA aim to save UK businesses money, to strengthen and simplify design protection and to make the IP system clearer, easier, and more efficient for SMEs. Amongst other things, the IPA will:

  • Introduce criminal penalties for infringing registered designs.
  • Provide for unregistered designs, allowing the first owner of the work to be “the designer” unless a contract provides otherwise (in the past the first owner was the party commissioning the design).
  • Introduce a design rights opinion service, to enable more IP disputes to be settled without resorting to litigation.
  • Allow patentees to provide a web link, rather than putting the patent number on their product.

With regard to design rights, some of the most important changes in the act deal with design right protection as these will now include original 3D designs, which are not covered by copyright, trademarks or patents. This is good news for the creative industry sectors such as packaging, footwear, architectural features and other 3D objects. As a result, any small business that has developed a 3D design should think about design right protection.

Design rights proceedings can be costly and many small companies are keen to avoid throwing away good money on litigation which is likely to be fruitless. A new service will be introduced giving parties a right to obtain a non-binding opinion from the Intellectual Property Office. If a business has a registered design that is challenged as being unoriginal, then the business with the registered design can ask the IPO for its view before going to court.

Making infringement a criminal offence makes design rights equivalent to copyright and trade marks. A small business that has a registered design will be able to report those who are producing or selling “knock-off” designs to the police, as well as pursuing its own action.

The change that is perhaps the most important is the change in relationship between the business commissioning a design and the designer and this might cause problems for some businesses; from now on the designer will own the design right intellectual property rather than the business that has commissioned the work. A business that pays a designer (who is not an employee) to develop a product will not actually own the design unless this is specifically agreed.

For small businesses, the main issue is that ownership of IP in any commissioned work should be clearly agreed in writing in advance. If you are a small business that might be affected, give us a call.

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Filed under Commercial law, Duty of care, Intellectual Property, Law and Technology, UK Law