As we draw to the end of another successful working year at Mathys & Squire, it is appropriate to take stock of our achievements throughout 2024.
It is a privilege to work with some of the brightest minds within the industry here at Mathys & Squire, and it has therefore been a pleasure to see our staff and partners recognised as IAM Strategy 300: Global Leaders, Managing IP: IP Stars, Managing IP: Rising STARS, The Legal 500: Recommended Individuals, IAM Patent 1000: The World’s Leading Patent Professionals and WTR 1000: Recommended Individuals. Our team is dedicated to achieving the very best for our clients, and it has been great to see our hard work and expertise recognised in this way. Indeed, this dedication has found considerable success this year in terms of a significant number of new clients.
This past year we have also celebrated many personal milestones in our team, including the promotions of Samantha Moodie, Edd Cavanna and Laura Clews into the partnership. Further, Alex Elder, Adam Gilbertson, Lionel Newton, Oliver Parish and Leonard Wright were promoted to Managing Associates.
As we continue to grow, we have welcomed many newcomers to the team. Some of those joining this year include Partner Matthias Brittinger, Managing Associates Chloe Flower and Markus Von Rudno, Associates Danielle Champagne, Emma Pallister and Greg Jones, and Technical Assistants Nathalie Richards, Alícia João, Adrian Salt, Thomas Mead, Sophie Wilson, Daniel Speed, Alexander Osborne, Craig MacGregor-Chatwin and Daniyal Khan. It is a pleasure to take on so many new joiners this year, and we look forward to growing our team and welcoming even more staff in 2025.
We have shown once again the excellence of our internal work processes and management systems through the achievement – for the 8th consecutive year – of our ISO 9001 & 14001 certifications.
Within our community, it has been great to give back, particularly through the charitable donations of the firm. We are pleased to share that we have raised over £3,300 through fundraising and match funding, with Southwark Food Bank (an initiative led by Technical Assistant Nathalie Richards), Movember and Macmillan Cancer Support a selection of the charities that have been positively impacted by our donations.
We have also invested £22,000 in improving diversity, inclusion, social mobility and wellbeing within the IP industry. Through our continued partnership with Career Ready, a non-profit organisation dedicated to bridging the gap between education and employment, we have a 12-month mentorship programme in which our colleagues guide their mentees through the early stages of their career journeys. We have also sponsored two students to go through the In2STEM programme led by In2Science, an initiative which encourages the pursuit of science, technology, engineering and maths based employment by increasing accessibility in these sectors. Finally, we have signed the ’Leaders’ Pledge’ of IP inclusive to underline our genuine commitment to enact positive change within our industry. This includes signatures from Paul Cozens, Caroline Warren and Alan MacDougall.
This year more than ever, we have seen the rewards of our focus on ensuring that our values are at the forefront of all that we do. We strive to ensure that we are Better Together by treating everyone fairly, encouraging diversity, and collaborating effectively within and across our various areas. And by Empowering one another there is always a wide breadth of opportunities for positive change, personal development and progress. The very bedrock of Mathys & Squire is our Clients First approach, upon which our best in class technical, legal and professional expertise is founded. We are indeed fortunate to have such an exceptionally talented team at Mathys & Squire.
Reflecting upon what the firm has achieved this year fills us with an immense sense of pride. Now, looking forward to 2025, we can be more than confident that we will bring this same strength to the new year – a year that marks no less than the 115th year anniversary of Mathys & Squire.
Best Wishes,
Mathys & Squire Managing Partners
In the UK, it is estimated that 100,000 people suffer from strokes each year, equivalent to one stroke every five minutes. Research from the NHS demonstrates the life-changing aftermath they can have, with over 50% of survivors affected by a long-term disability.
Time is a crucial factor for preventing enduring symptoms as it is estimated that a patient loses 2 million brain cells every minute during a stroke. With the devasting impacts of this disease clear, it is not surprising that innovative technologies are being sought to help NHS staff and stroke centres decrease their response time and improve patient outcomes.
The Brainomix 360 Stroke AI tool is a fantastic example of how innovative technologies can unlock improved treatment delivery in the health care sector.
Brainomix launched as a spin-out from the preclinical stroke lab at the University of Oxford in 2010. Their advanced AI algorithms assist in the diagnosis and understanding of each patient’s condition by applying proprietary image processing techniques to brain scans to provide real-time interpretation, enabling more patients to get the right treatment at the right time.
For the NHS, the benefits unlocked by the Brainomix 360 Stroke technology have been vital.
Firstly, analysis of the impact of Brainomix’s 360 Stroke AI tool within the NHS demonstrated a 50 minute reduction in medical treatment time. Especially important in the field of stroke care, reducing the time taken to analyse and interpret test results enables the appropriate treatment for each patient to be identified and delivered at a much faster rate. Not only can AI technologies help in the display and interpretation of results but, as highlighted by David Hargroves (NHS England’s National Clinical Director for Stroke), it can help the confidence of NHS staff in supporting clinical decisions made in a high intensity, time pressured environment.
Secondly, the use of AI has enabled an increase in patient treatment by mechanical thrombectomy (MT). Mechanical thrombectomy is a time-critical intervention which helps patients by reopening a blocked blood vessel in the brain, significantly reducing the risk of long-term stroke impacts. As a result of rolling out the Brainomix 360 Stroke AI tool, it was demonstrated that patients were 70% more likely to receive mechanical thrombectomy (MT) than before.
In addition, through a faster understanding of the need of each patient, communication between hospitals has strengthened. As each patient is promptly assessed, they can be appropriately transferred, getting each patient the right help in the right location with ease.
Today, every stroke centre in England (107 in total) has now rolled out the use of AI in their practice, with research suggesting it now assists 80,000 people who have a stroke every year.
The adoption of innovative technologies in the field of stroke treatment has already demonstrated its potential for meaningful impact, greatly improving patient outcomes and streamlining the delivery of treatment. Yet, there still exists huge opportunity for AI technologies to revolutionise the delivery of medical treatment in the healthcare sector.
Mathys & Squire is proud to be working with Brainomix in the pursuit of protecting their innovative platforms and proprietary technologies.
If you have any questions about pursing patent protection for AI-based technologies in the healthcare sector, please reach out to a member of our team.
We are delighted to announce that we have successfully passed the ISO 9001 & 14001 audit for the 8th year.
ISO certifications are led by the British Assessment Bureau in order to assess and examine businesses, showcasing their dedication to excellence in work processes and management systems.
Our first certification, Quality Assurance (ISO 9001), demonstrates how the firm meets the globally recognised standards, showing our commitment in providing a high level of customer service, delivering consistent performance and continuously improving.
The second certification, Environmental Management (ISO 14001), recognises our commitment to improving environmental performance through efficient use of resources and reduction of waste. From this, it is clear we are taking meaningful steps forward to reducing our carbon footprint.
We are proud to be an environmentally aware firm, and are pleased to be able to formalise our progress and gain recognition for our commitment to delivering a first-class service to our clients.
To find out more about ISO 9001 and ISO 14001 click here.
Status Quo
On 18 November 2024 the new EU Design regime was published in the Official Journal as Regulation (EU) 2024/2822 and Directive (EU) 2024/2823, meaning the new regime will enter into force on 10 December 2024.
Regulation (EU) 2024/2822 will be applicable from 1 May 2025 and member states of the EU have until December 2027 to make necessary changes to national law to implement the Directive. However, what are these changes? And how do they account for 21st century?
Under the old regime (Regulation (EC) No 6/2002) an EU Design can be obtained for:
“the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation”; Article 3(a).
And a “product” is defined as:
“any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs”; Article 3(b).
Notably, EU designs (save for graphical symbols and typographical typefaces) in the original regulation were directed toward physical objects that one can feel and touch. Under this regime, while redress can be obtained for the sale of, for example, counterfeit Louis Vuitton handbags, their representation on a virtual reality video game without permission is, for want of a better phrase, fair game – unless a trademark is also being infringed of course!
The current regime thus means the world of video games, and the metaverse in general, is at risk of becoming like the wild-west, with proprietors of design rights having little control over how their designs are used in the digital world.
Welcome to the 21st Century
As of 10 December 2024, a welcome change to EU design law will come into force that will help to address this issue. Under the new regulation (Regulation (EU) 2024/2822) an EU Design can be obtained for:
“the appearance of the whole or a part of a product resulting from the features, in particular the lines, contours, colours, shape, texture and/or materials, of the product itself and/or of its decoration, including the movement, transition or any other sort of animation of those features”; Article 3(1).
And a “product” will be defined as:
“any industrial or handicraft item, other than a computer program, regardless of whether it is embodied in a physical object or materialises in a non-physical form […]”; Article 3(2).
meaning digital designs, either static or animated, will be protectable under EU law – it looks like the Sheriff may be coming to town in the wild-west of the metaverse!
Infringing in the Metaverse
Once the changes are implemented, EU design proprietors will be able to take action against anyone who infringes their registered designs irrespective of whether the design is infringed by a physical product that you can touch, or by a static or animated virtual representation in the metaverse.
For example, once implemented, someone will infringe a registered design if they are “making, offering, placing on the market or using a product in which the design is incorporated or to which the design is applied” (Article 19 2(a)) regardless of whether that product is in a physical or a virtual form. In other words, digital products (e.g., a digital representation of a Louis Vuitton handbag, a Jaguar car, etc.) that can be made, sold, and/or bought in a virtual reality environment may be considered infringing articles.
This does give rise to several questions about, for example: who may be considered an infringer? What does and does not constitute an infringing act? Where geographically an alleged infringement may be considered to have occurred?
For example, if an end user of a virtual reality racing game is given the capability to design their own car and sell that car for virtual or real currency to other users around the world, could the provider of the virtual reality platform itself be considered to be infringers if the car designed by the end user incorporates a registered design of e.g., a vehicle manufacturer?
Does every instantiation of the virtual vehicle on the respective screen of a different end user – or only the storage of the representation on the server – constitute the ‘making’ of an infringing product within the meaning of the amended regulation? Similarly, even if the virtual vehicle is being displayed on the screen of an end user in a country covered by the regulation, if the server is in a country that is not covered does that still represent an infringement?
Infringing by floppy disc, USB stick, and email…
As well as maintaining the infringing acts that already exist in EU design law, in another nod toward the development of 21st century tech, the new regulation will also introduce the infringing act of “creating, downloading, copying and sharing or distributing to others any medium or software which records the design for the purpose of enabling a product…to be made”; Article 19 2(d).
This change has been introduced to protect against the creation of infringing articles by technologies such as 3D printing by discouraging, for example, the distribution of CAD files that record a design and which can be used to manufacture an infringing product by e.g., a 3D printer.
Whilst this appears to be directed primarily at the manufacture of physical products, it does raise some interesting questions in the context of the other changes to the regulations mentioned above.
Take the example of the virtual car given above. Even though the provider of the virtual reality platform may have no direct knowledge of the creation of the infringing car design by an individual user, the platform will naturally store that design and distribute it to the screens of other users. Would this mean that the platform provider was guilty of the new infringing act of “creating, downloading, copying and sharing or distributing to others any medium or software which records the design for the purpose of enabling a product…to be made”?
As it stands the new regulation is not 100 % clear on this issue and needs interpretation – ultimately the courts will have to decide in test cases.
But what about the UK?
Since Brexit, Community (EU) Designs no longer apply to the UK, and EU regulations and directives will have no effect on design law in the UK. As such, design protection in UK and the EU are about to diverge … and not in a good way. As things stand, in the UK design protection will not be available for digital designs, and products created in virtual video games sold in the UK will not be infringing products!
With respect to virtual reality worlds, the divergence between the UK and the EU will create quite complex and nuanced issues. For example, if the virtual reality world is maintained by a UK company on a server in the UK and provided to end users in the EU, will a proprietor be able to enforce an EU registered design against the UK company? Possibly not…
The UK Government will therefore need to decide whether they wish to harmonise UK design law with the new EU design regime to bring the UK into the 21st century, and avoid the UK becoming a haven for possible infringers of EU designs in the digital world by becoming the new home of servers hosting digital platforms (presuming the servers hosting digital platforms are deemed not to infringe if they are outside the jurisdiction of the EU).
The Petition for Review procedure at the European Patent Office (EPO) is a limited form of judicial review enabling parties to have the Enlarged Board of Appeal review decisions made by an EPO Board of Appeal and vacate such decisions if it is established that a fundamental procedural error has occurred. The review is strictly limited to a procedural review and does not involve a review of technical or legal matters considered by the Board of Appeal.
Prior to 2020, these Petitions for Review were typically resolved in about 10 months, providing parties with a swift resolution as to whether or not a Board of Appeal decision might be vacated. However, since then, the EPO has experienced a significant increase in the volume of petitions leading to a substantial backlog.
At the end of 2019, 23 Petitions for Review were pending before the Enlarged Board. In contrast, at time of writing in November 2024, that number had almost exactly doubled to 45.
At the same time, the processing times for resolving Petitions for Review have increased significantly.
By way of example in the second half of 2024, the Enlarged Board of Appeal issued decisions on three Petitions for Review: R13/22, R4/22 and R1/20 which had been pending for over two and a half years; over three years; and four and a half years respectively.
Further investigation of the pending Petitions for Review reveals that the lengthy processing times of R13/22, R4/22 and R1/20 are far from being unusual.
11 Petitions for Review relating to Board of Appeal decisions from 2021 and 2022 were still pending as of November 2024. Oral Proceedings to resolve these cases have now been scheduled and the cases should now all be resolved in 2025.
Of the 22 pending Petitions for Review relating to decisions issued in 2023, Oral Proceedings have been scheduled for only 8 of those cases. This includes R 13/24 where Lord Justice Richard Arnold specifically requested accelerated processing in view of pending infringement and revocation proceedings before the Court of Appeal of England and Wales which had been stayed pending the outcome of this review.
Although further Oral Proceedings may be scheduled, this would seem to indicate that the majority of 2023 Petitions are unlikely to be resolved next year. Where Oral Proceedings have been scheduled on average more than 19 months will elapse between the filing of a Petition against a decision from 2023 and Oral Proceedings actually being held.
Finally, with only one exception – R17/24 in which a summons for Oral Proceedings was issued uncharacteristically fast – just one month after commencement of proceedings, none of the pending Petitions for Review relating to decisions from 2024 have been scheduled for consideration at Oral Proceedings. That is not entirely unexpected given that such Petitions will have been filed recently and have been pending for only a few months.
The following table shows the average times for certain events to take place during review proceedings for Petitions for Review filed from 2018 to 2024. It is clear that the time taken after the initial filing of the Petition for Review for proceedings to commence increased significantly from an average of 25 days in 2018 to 85 days in 2023. Although, processing times in 2024 for the commencement of proceedings were significantly reduced.
By far the most serious source of delay has been the time taken for Oral Proceedings to be scheduled, with this figure steadily trending upwards. As not all cases from 2023 have yet to have Oral Proceedings scheduled, the figures in the table below for 2023 will increase in due course.
*for a more accurate view of what Applicants can expect, a major outlier (R 8/19) has been removed from this average.
When depicted graphically, a trend of increasing processing time from filing to Oral Proceedings taking place is apparent (with the figure from 2023 being omitted in the following as, as noted above, that data set is not yet complete).
The increasing processing times for Petitions for Review are concerning for several reasons.
Delays in resolving Petitions for Review create prolonged uncertainty for the parties involved. When a patent’s status remains unresolved, it complicates business decisions related to product development, market entry, licencing agreements and investment. For businesses, in rapidly evolving sectors, such uncertainty can hinder innovation and market growth as companies hold off critical decisions until they have clarity on their patent rights.
Filing a Petition for Review does not cause a challenged decision to be suspended. This presents particular problems for patentees whose rights may have been incorrectly invalidated. If an opponent’s patent challenge is erroneously dismissed, an opponent always has the option to pursue such a challenge through the national courts or now potentially through an invalidation action in the Unified Patent Court. However, where a patent is erroneously revoked, a patentee’s patent ceases to exist and is not reinstated unless and until the Enlarged Board rules in the patentee’s favour. Even then the restored patent is subject to intervening rights of third parties who make substantial preparations to implement an invention during the period between the erroneous revocation and the patent being re-established.
Although very few Petitions for Review are successful, it is important for the EPO to rule on petitions promptly to ensure that the window of opportunity for third parties to establish intervening rights is as limited as possible, particularly as if a Petition for Review is successful, that will have established that the original erroneous revocation occurred due to a fundamental error on the part of the EPO.
When the European Patent Convention was revised in 2008 to include the Petition for Review procedure, the explanatory remarks to the EPC 2000 stated that: “the possibility of filing a petition for review must not cause long-lasting legal uncertainty for third parties” and that the establishment of a special three-member panel of the Enlarged Board to screen petitions for review was in the “interest of quick and effective” processing and that it was intended that “the proceedings before [the] panel shall be as simple and short as possible.”
With a minority of Petitions for Review now being resolved in less than 18 months and the processing time for some Petitions reaching or exceeding 4 years, it is clear that the original promise of a quick and simple resolution of Petitions for Review, which the EPO previously was admirably achieving, is no longer being met.
Four Mathys & Squire Partners, Anna Gregson, Dani Kramer, Sean Leach, and Martin MacLean, have been recognised in the 2025 edition of IAM Strategy 300 Global Leaders.
The guide serves as a platform to showcase the leading experts in the field of intellectual property (IP). Earning a place in the prestigious IAM Strategy 300 Global Leaders reflects a professional’s exceptional strategic expertise in IP, as recognised by peers from a range of sectors.
IAM says: Anna Gregson is a dedicated and client-orientated expert who is deeply committed to both intellectual property and people. She obtains win-win solutions to any patent issue and achieves them about with great integrity and skill.
IAM says: Dani Kramer consistently delivers exceptional IP work, whether its drafting ironclad files or strategically managing portfolios. As a true leader, he inspires and uplifts those around him, managing his team with excellence.
IAM says: Sean Leach stands out for his enthusiasm for technology and foresight regarding the use of IP for business growth. He is a strategic planner with a thorough grasp of the competitive IP landscape and current innovation trends.
IAM says: Recognised in the market as “an exceptional patent attorney who shares his expertise with ease, Martin MacLean is highly adept at addressing the most urgent IP issues and he effortlessly manages intricate technical aspects in tricky business plans.
We would like to express our thanks to every client, contact, and peer who dedicated their time to engage in the research process.
The full 2025 edition of the guide is available here.
International Men’s Day is being held on 19 November 2024. The UK International Men’s Day team promote this day as an opportunity for us all to work towards shared objectives which are applied equally to men and boys irrespective of their age, ability, social background, ethnicity, sexuality, gender identity, religious belief and relationship status.
The six key pillars of International Men’s Day are:
(1) To promote positive male role models; not just movie stars and sports men but everyday, working class men who are living decent, honest lives.
(2) To celebrate men’s positive contributions; to society, community, family, marriage, child care, and to the environment.
(3) To focus on men’s health and wellbeing; social, emotional, physical and spiritual.
(4) To highlight discrimination against males; in areas of social services, social attitudes and expectations, and law.
(5) To improve gender relations and promote gender equality.
(6) To create a safer, better world; where people can be safe and grow to reach their full potential.
There are many aspects to men’s health and wellbeing, but improving men’s mental health is a particularly important goal. Although poor mental health does not discriminate between genders, approximately 75% of suicides in the UK are male. It has been suggested that work and financial pressures, feeling less able to talk about mental health, and outdated views of masculinity e.g., an expectation to be “tough” and being told to “man up”, are all contributing factors. Sadly, despite the clear need to support men’s mental health, only a third of NHS mental health referrals are for men.
Gardening has recently been used to improve mental health in the UK. GPs are now starting to “prescribe” gardening to patients living with anxiety, depression, and loneliness. Patients are given a plant to look after and are invited to join local community gardening projects with other residents. GPs have acknowledged physical, mental, and emotional benefits from as little as two hours gardening a week.
There are many different types of gardening ranging from weeding, mowing the lawn, and deadheading in larger gardens, to maintaining window boxes and balcony gardens which are more common in cities. Speak to friends and neighbours and find out what grows well in your local area. Visit a local garden centre with a friend, colleague, neighbour or relative, and learn more about plants and how to look after them. Garden centres stock a wide variety of houseplants – some are suited to bright suntraps and sunny windowsills, and others prefer a shady corner or more humid environment. Some houseplants require more specialist care than others so be sure to ask for help if you need to.
Houseplants have been found to reduce stress. A recent study measured the blood pressure and heart rate of participants while either completing a short computer-based task or repotting a houseplant. The researchers observed lower heart rates and blood pressure for the group performing the repotting task.
Several research groups have investigated the effect of indoor plants on productivity and creativity. One study reported an increase in the productivity of college students performing a timed computer-based task when plants were introduced to the environment.
There are also many physical health benefits to gardening. For example, there have been studies that suggest the physical activity involved in gardening can reduce the risk of developing prostate cancer – a disease that is expected to affect 1 in 8 men at some point in their lifetime. Gardening can help with weight management and can reduce the risk of developing other conditions including type 2 diabetes and heart disease.
Talk to friends and colleagues about your houseplants and share tips for looking after them. Share cuttings and recommendations for the best plants to grow. Some houseplants that are particularly good for propagating are spider plants, money plants, monstera, and pothos. If you have one of these and someone says that they like it or it looks like it is doing well, offer them a cutting.
Try different types of gardening and see what works best for you. Perhaps you like growing vegetables or flowers from seed – seeing something grow and mature. You could plant bulbs in the spring and watch them come up year after year and spread to different parts of your garden. Maybe you prefer buying little plants/seedlings and potting up containers and window boxes. If outdoor space is limited then try going to a terrarium workshop and making something for your desk.
Gardens can also help develop friendships and a sense of community and belonging. Get together with friends and family for a BBQ or picnic in the garden. Join a local allotment and meet other people interested in growing vegetables and cut flowers. Plant native flowers to encourage biodiversity and watch wildlife using your garden. For more information on community gardening groups in your area, check out the RHS community gardening directory.
Whatever space you have, big or small, outside or inside, make some time to encourage a relative, friend, colleague, or neighbour to enjoy gardening with you this International Men’s Day.
The Supreme Court has partially overturned the Court of Appeal ruling and has provided further guidance on what can amount to bad faith.
The Supreme Court has found that the Court of Appeal was wrong to reverse the decision reached by the High Court on bad faith but was correct in its decision on infringement.
The Supreme Court has found that:
- The High Court was correct in finding that seeking protection for a trade mark in broad categories without commercial justification to use the mark for all goods and services applied for can amount to bad faith. This is especially the case for anyone applying for the registration of marks “with the intention obtaining an exclusive right for purposes other than those falling within the functions of a trade mark, namely purely as a legal weapon against third parties”
It was found that “Sky had applied for and secured these registrations across a great range of goods and services which they never had any intention to sell or provide, and yet they were prepared to deploy the full armoury presented by these SKY marks”
- The Court of Appeal was, however, right to find that, on the basis of the narrowed specifications of goods and services, infringement by Cloud Migration service had not been established; but no error had been made in relation to a finding of infringement in respect of Cloud Backup service.
- Additionally, the EU Trade Mark Regulation (the “EUTM Regulation”) continues to have direct effect in the context of proceedings pending before a United Kingdom court designated as an EU trade mark court prior to the end of the transition period on 31 December 2020 (“IP completion day”).
This judgment warns applicants to avoid registering trade marks for goods and services they do not intend to use, or to create a ‘legal weapon’ or monopoly over a wide range of goods and services. The implications of this decisions could mean that existing registrations face cancellation actions if the proprietor cannot demonstrate that, at the time of application, there was a reasonable prospect of using the mark for all or some of goods and services covered by the registration. Going forward, Applicants should be mindful when drafting their specification to ensure it doesn’t expose their trade mark to a bad faith challenge.
A more detailed analysis of the judgement and its implications will follow.
Find a link to the judgement here.
The UK Intellectual Property Office has recently launched a new awareness campaign “Fake Always Breaks” to highlight the dangers of counterfeit vehicle parts, the IPO defining such parts as ‘unauthorised copies of a genuine branded part’ whether that part is an original manufacturer or aftermarket part.
The campaign targets the ever-growing industry of counterfeit automotive parts by highlighting that fake automotive parts are more likely to fail in use and offer poorer performance than genuine parts, posing an increased risk to vehicle occupants and other road users alike. Particularly concerning are large numbers of counterfeit safety-critical components such as brake parts, airbags, wheels, and tyres. A recent East London operation organised by the City of London Intellectual Property Crime Unit resulted in the seizure of 500 counterfeit airbags, highlighting the prominence of this issue.
The scale of the counterfeit automotive parts market was brought to light by research conducted by the Organisation for Economic Co-operation and Development (OECD) in 2016 which estimated that there were around £1Bn of counterfeit parts imported into the UK in that year. Whilst it may be thought that counterfeit parts are primarily sold to deceive the user, a survey by the IPO revealed that 58% of respondents who had purchased a counterfeit part had done so knowingly, with lower cost and no discernible difference in appearance being cited by significant (31% and 34% respectively) portions of these knowing buyers.
The dangers of such counterfeit goods are apparent.
Tyres are the only contact a road vehicle has with the road and as such must transmit the huge cornering and stopping forces associated with sudden manoeuvres and emergency braking. Poor quality rubber or incorrectly sized tyres can not only increase braking distances and reduce grip, but also change the balance of a vehicle whilst stopping – potentially increasing the likelihood of an uncontrollable skid. To this end, some manufacturers (for example Porsche™) have even gone as far as to work with tyre manufacturers to produce specific compounds to suit the characteristics of their cars (in this case the N-rated tyre), highlighting just how essential the use of real components is.
There is also a financial and convenience cost associated with using counterfeit parts. “Buy cheap buy twice” is a common proverb in the automotive world where real parts are specifically refined to improve their lifetime and performance. Examples include spark plugs in petrol engines and headlight bulbs – a failure of either not only requires purchasing an additional part but a fault is most likely to occur whilst the vehicle is being driven, causing a delay and a potentially hazardous break-down for the user.
Intellectual property rights play a key role in preventing counterfeit automotive parts from entering the UK market. Patents protect the underlying technical aspects of an invention, trademarks protect against posing items as being from another manufacturer or seller, whilst design rights protect the look and appearance of parts. If in force, these rights can allow manufacturers to prevent the importation and manufacture of counterfeit parts, thereby ensuring the parts do not pose a risk to road users.
To that end, the IPO is keen to raise awareness of the risks associated with IP crime and infringement as part of the government’s Counter-Infringement Strategy (2022-2027). This strategy aims to make the UK an inhospitable environment for deliberate infringement, prevent people from choosing to infringe, and to enable law enforcement partners to effectively pursue and tackle IP crime and infringement.
As a more immediate solution, parts that may be counterfeit can be reported locally to the Chartered Trading Standards Institute or anomalously to Crimestoppers.
Mathys & Squire Partners Martin MacLean and Rebecca Tew have recently been featured in an exclusive interview for Lawyer Monthly Magazine sharing their expertise on their strategies for trade mark and patent management.
Click here to read the feature.
