Some of you may already be aware of an Article 28 declaration in connection with the scope of protection for goods and services of Community Trade Marks.

The implication for clients with a portfolio of CTM’s, or even just one, filed before 22 June 2012 is that trade mark owners will soon be given a six-month, one-off window to bolster the scope of their pre-June 2012 CTM portfolios by making an “Article 28” declaration to the EU Intellectual Property Office regarding the goods and services covered by their registrations.

If such a declaration is not made, then those registrations may forever thereafter be limited and no longer cover goods and services which owners previously thought they did.

The change in law and practice is to reduce or remove completely one owner having a trade mark monopoly and is going to take away some trade mark rights – probably forever.

It is important for owners of CTM’s filed before 22^nd June 2012 to look at the options available to them.  Please talk to one of our trade mark team for further information about how we can help.

This week has seen the High Court dismissal of Nestlé’s appeal against the decision to reject its trade mark application for the 3D shape of its four finger Kit Kat.

Mr Justice Arnold commented that, “the proposed trademark had not acquired distinctive character and that the Court of Justice of the European Union (CJEU) had not sufficiently answered a question he had asked.”

Both Nestlé and Cadbury had appealed against aspects of the original decision made by the IPO in 2013.  The original examiner, Allan Jones, had said that, “the trade mark could not be registered on the basis that the mark not acquired distinctive character and that it consisted exclusively of a shape which results from the nature of the goods themselves.”

This week’s judgement raises the question of what gives something a distinctive character in terms of its shape and how does this translate into trade mark protection. 

Nestlé plan to appeal the decision.

By Dani Kramer

The UK Government has just opened a consultation on a proposal to reduce significantly the fees for registered design filings.  If adopted, the changes will be hugely beneficial to designers wishing to protect their designs in the UK.     

The current fees, based on the original paper-based system, were last amended in 2006 and designers have stated that they are ‘prohibitively expensive’. In response to a consultation with designers, the UK Government has set up a new digital registration service, and the reduction in cost from a paper-based system to a digital-based system can be passed on to businesses.

The major reductions in the filing fees for multiple-part applications filed via the online system will mean that designers can file applications covering numerous different aspects (or parts) of their designs at a fraction of the current costs. 

In practice the reductions will work out as follows:

Renewal fees will also be significantly reduced, with the first renewal starting at £70 for renewing a design after its initial 5 year term for another 5 year term.

With large reductions for multiple filings, businesses will have greater ability to protect their designs more robustly.  This will be particularly beneficial for businesses that wish to protect UX and GUI designs for Apps and other electronic devices, as multiple-part applications are usually needed to show the various transitions between different screens in a user interface, and the various constituent parts of a user interface.      

The Government is interested to hear from designers and businesses, and the consultation is open until 29 January 2016.  Submissions can be made via the following site:  

https://www.gov.uk/government/consultations/proposal-for-changes-in-registered-design-fees

This year we were pleased to run our annual Christmas card competition in collaboration with St James C of E Primary School. The winning Christmas card design was created by 5 year old Niko and is shown below.

In lieu of a printed card the firm made a donation to Centrepoint, our chosen charity of the year, and donated two bikes to the St James Primary school raffle! 

By Robert Hawley

Last month’s Autumn Statement included the promise of a continuing commitment to investment in the North; particularly vis-a-vis Manchester, the Northern Powerhouse.  However, there has been much speculation that even though Manchester has been tipped as the fastest growing city outside the South of England, the Government’s measures with regard to the North in general will have very little impact upon the region until the next decade.

Ernst & Young published a report in December 2015 stating that whilst Manchester is due to record growth in GVA of 2.5% per year between 2015 and 2018,  the North West as a whole will only grow 2% per year (with Liverpool predicted to increase by a more modest 1.9%), making it the UK’s sixth fastest growing region.  London is forecasted to grow by 3% per year, the South East by 2.5%, the East by 2.4%, the South West by 2.2% and the East Midlands by 2.1%.  All of which points to a continuing disparity between the North and South; at least for a few more years.

It is not all doom and gloom, however, with EY predicting that Manchester will see a growth in employment, with 4,300 new jobs created in 2015 alone; fuelled by some 1,300 new positions in the professional, scientific and technical services sectors.  The rest of the North will begin to experience real growth after 2020, when the impact of the Northern Powerhouse and infrastructure projects are expected to take effect.  The re-balancing of the UK economy will have limited impact in the short term, but from 2020 onwards we can expect to see some dramatic changes for the North of England; particularly towards the end of the next decade, when the benefits of HS2 begin to be felt.

By Martin MacLean 

The UK has recently experienced some of the worst flooding ever recorded.  Having invested billions of pounds already in the sector, Martin MacLean ponders the benefits of the government working in unison with the green sector and the more conventional flood defence businesses:

“In 2014 the UK government committed to a six-year spending plan of £2.3bn for UK-wide flood defences, with 1,400 projects being funded to protect 300,000 homes. 

Notably, the majority of these funds are for engineering/structural defences, such as the Boston Barrier (£73m), Oxford Flood Alleviation Scheme (£42m), Humber Estuary (£80m) and Thames Estuary (£196m).

While these projects aim to bring relief to those affected by or at risk of flooding, they are not without their own issues (cost of maintenance, potentially environmental consequences).  In addition, these projects take time to implement, and unfortunately in some cases can’t resolve the problem quickly enough.  Therefore, there is great potential for green-tech/biotech innovations to work in parallel with the more conventional approaches to provide more effective and timely flood protection.”

The Patent Court aim to bring patent cases to trial within 12 months of the claim being issued. Arnold J, Judge in Charge of the Patents Court, has issued the Practice Statement outlined below. 

For more information please click here.

1. The parties will be expected (a) to start to consider potential trial dates as soon as is reasonable practicable after the service of the proceedings and (b) to discuss and attempt to agree trial dates with each other when seeking to agree directions for trial.

2. The starting point for listing trials is the current applicable Trial Window advertised by the Chancery List Office. Patent cases will be listed on the basis that the Trial Windows are divided as follows: estimated hearing time (excluding pre-reading and preparation of closing submissions) up to 5 days; estimated hearing time (excluding pre-reading and preparation of closing submissions) 6 to 10 days; and estimated hearing (excluding pre-reading and preparation of closing submissions) over 10 days.

3. Where it will enable a case to be tried within 12 months, or shortly thereafter, the Court may list a trial up to one month earlier than the applicable Trial Window without the need for any application for expedition.

4. The Court will use its case management powers in a more active manner than hitherto, with a view to dealing with cases justly and at proportionate cost in accordance with CPR rule 1.1. This may have the effect of setting limits on hearing times that enable cases to be listed promptly. For example, the Court may direct that a case estimated at 6 days will be heard in 5 days, and may allocate time between the parties in a manner which enables that to be achieved.

5. Where it makes a significant difference to the time which cases must wait to be listed for trial and it will not cause significant prejudice to any party, cases may be listed without reference to the availability of counsel instructed by the parties.

These steps do not exclude the possibility of cases being expedited where expedition is warranted. Nor do they exclude the possibility of the parties opting to use the streamlined procedure or the Shorter Trial pilot scheme or the Flexible Trial pilot scheme.

Mathys & Squire are members of the Semiconductor Industry Association, and on 3rd December Jeremy Smith and Cathy Booth were pleased to attend the annual award dinner.

The  dinner took place at The Fairmont Hotel San Jose, California, and was interesting and informative event.

https://www.semiconductors.org/

George Osborne this afternoon delivered his annual Autumn Statement speech to the House of Commons.

We welcome the government’s continued investment in science to ensure that the UK remains a world class centre of research.  George Osborne, today, reasserted the government’s commitment to remain at the forefront of world science by both protecting the £4.7 billion science resource funding for the duration of the Parliament, which will include a new £1.5 billion Global Challenges fund to ensure UK science takes a lead in addressing problems faced by developing countries; and delivering on his promise for long term science capital investment of £6.9 billion between now and 2021.

The government has also pledged to take forward the recommendations of Paul Nurse’s independent review and, subject to legislation, will introduce a new body – Research UK – to work across the seven Research Councils. The aim of this new body would be to take the lead in shaping and driving a strategic approach to science funding, in turn ensuring a focus on the challenges and opportunities for UK research.  George Osborne has also committed the government to look at integrating Innovate UK into Research UK to strengthen collaboration between the research base and the commercialisation of discoveries in the business community.

Today’s announcement extends the freedoms granted to Research Institutes at Budget 2015 to all Department for Business, Investment and Skills (BIS) Sector Research Establishments which are not public corporations, and will also grant access to accumulated reserves of commercial income, subject to a cap.

Over £130 million has been promised to the Department for Environment, Food and Rural Affairs’ (DEFRA) science facilities which will be a welcome move for the industry.

In order to continue to support innovative businesses, George Osborne has stated that the British Business Bank will retain the £400 million of additional funding for Enterprise Capital Funds that was announced at Autumn Statement 2014.

For further information on the rest of the Autumn Statement please click here. 

We are looking forward to exhibiting at MACH 2016.

MACH showcases innovation and the latest developments in the manufacturing industry. It covers a wide variety of sectors including aerospace, automotive, oil & gas, power generation, medical, autosport, rail and space.

We are delighted to support the Manufacturing Technologies Association. To read more about our work in this sector please click here.

http://www.machexhibition.com/