Proper design registration is a ‘Mast’ as demonstrated by Mast-Jägermeister last week when their appeal to the Court of Justice of the European Union (CJEU) regarding shot glass design was rejected.
On 5th July 2018, the CJEU rejected an appeal by the well-known liquor producer Mast-Jägermeister related to a European registered design application directed to shot glasses.
In 2015, Mast-Jägermeister filed a registered design application including figures (not made publically available) that showed shot glasses along with bottles of Jägermeister. The bottles were apparently not intended to form part of the claimed design.
The European Union Intellectual Property Office (EUIPO) Examiner objected to the application on the grounds that the representation of the design was not sufficiently clear, because the presence of the bottles in the design meant that it was not clear whether protection was being sought for the shot glasses or the shot glasses in combination with the bottles.
Mast-Jägermeister could have remedied the deficiencies either by adding “bottles” to the indication of product and dividing the design into separate parts, or by filing new views (which would have caused the application to be re-dated). However, they were apparently unwilling to use either of these remedies (presumably because either action would have made the registered design application somehow not fit for commercial purpose).
Accordingly, the Examiner took the view that the design application could not be accorded a date of filing, since the design for which protection was sought could not be identified.
Mast-Jägermeister’s subsequent appeals to the Board of Appeal of EUIPO, the General Court of the EU, and finally the CJEU focussed on whether the application clearly defining a scope of protection was indeed a requirement for according a data of filing for an application.
Mast-Jägermeister’s interpretation of the regulations was that, for a date of filing to be accorded, the design simply needs to include a representation of the design suitable for physical reproduction. This would mean that a design application would need only to pass a narrow formal examination to be accorded a date of filing.
However, the CJEU ruled that the concept of representation encompasses, in itself, the idea that the design must be clearly identifiable – so the appeal was rejected, and consequently Mast-Jägermeister’s registered design application could not be given a date of filing.
This case emphasises the vital importance of ensuring that the figures used in registered design applications are correct and cover what is intended to be covered before the application is filed, in particular where any re-dating of an application would be undesirable.
In this case, the originally filed figures in Mast-Jägermeister’s application fatally prejudiced their application, with the resulting deficiencies being incurable despite appealing to the highest possible level.
This article has recently been featured in The Patent Lawyer Magazine – click the image below to view!
For guidance on preparing figures suitable for use in registered design applications, or indeed questions about design registration in general, please contact a member of our Designs team:
Dani Kramer via [email protected]
Dani is a Partner and European Design Attorney with extensive experience of filing and prosecuting registered designs in the UK, via EUIPO and internationally. Dani works for a number of large corporations managing their international patent portfolios. His focus is on the fields of internet television, software, electrical and electronic engineering, information technology, microprocessors, semiconductor devices, and communication technologies.
Max Thoma via [email protected]
Max has a Masters in Mechanical Engineering from the University of Cambridge. Max works primarily on drafting and prosecuting patent applications in the UK, Europe, and the US and has experience in contentious matters. Alongside his patent work, Max works on preparing, filing and prosecuting Registered Designs in the European Union, as well as in many overseas jurisdictions.
Mathys and Squire Partner, Margaret Arnott, and Managing Associate, Laura West, hosted a workshop organised by the Asian Coalition Against Counterfeiting and Piracy (ACACAP) in conjunction with the Anti-Counterfeiting Group (ACG) on Thursday 5th July.
The discussion focused on: “Intelligence Led Anti-Counterfeiting Enforcement Strategies from Asia to the UK”, exploring and sharing effective ways to mitigate the risks of counterfeiting in Asia and the UK. There was also a lively debate regarding the Belt and Road initiative proposed by the Chinese Government, which is set to have a marked impact on the current enforcement strategies of many brand-owners.
The event was attended by representatives of a number of well-known brands, who are at the forefront of tackling IP infringement and counterfeiting within their businesses. The delegates heard from brand protection professionals including representatives from the ACG and ACACAP, the International Centre for Counter Terrorism and the Police Intellectual Property Crime Unit (PIPCU).
Tailored specifically to brands with manufacturing or trading interests in Asia, the workshop and debates explored effective ways of utilising the sharing of intelligence and collaboration in mitigating the risks of counterfeiting in Asia and the UK.
Laura West, event chair, noted that “the workshop brought together a fantastic range of individuals who experience first-hand the damage of counterfeiting activity here in the UK and overseas. The aim of the event was to explore recent trends in counterfeiting activity (both locally and internationally), share experiences regarding the threats that have been faced over the past year or so and to discuss possible strategies and solutions for tackling this ever-present problem. For me personally, the fantastic presentations and active debates throughout the day highlighted three key ‘take-home’ messages…”
- Counterfeiting is not a victimless crime and should be a high priority to government and law enforcement officials, particularly as there is evidence to suggest that it often delivers the funding required by criminals to pursue more serious criminal activity such as terrorism;
- Flexibility is key when undertaking a brand protection role. Counterfeiters are good at what they do and will adapt and change their modus operandi as soon as you successfully remove one of their (often numerous) sales channels;
- One of the best ways to tackle this issue on a wider scale is to effectively gather intelligence and to share this information (where possible) with other businesses and organisations such as the ACG and ACACAP who are in regular discussion with relevant stakeholders and law enforcement. A lot of evidence is not being effectively collected or, when it is collected, is not leaving the confines of that business or organisation. The sharing of this intelligence will help identify where infringers are targeting a number of different brands and therefore where an effective strategy would be to group together and share resource in tackling the individuals as well as possible links and connections that may otherwise be missed and that may help identify the source of counterfeit product.
If you are looking to protect your brand or would like to know more about trade marks in general, please email Laura West via [email protected]
Laura is a Chartered Trade Mark Attorney with experience in the filing, prosecution and enforcement of trade marks all over the world. She has a strong focus on business growth through imports, exports and global portfolio management and often works closely with Customs and Trading Standards in assisting her clients protect against counterfeit goods.
Margaret has been a trade mark specialist in private practice since 1992. She is a registered UK and European trade mark and design attorney and a member of the Institute of Trade Mark Attorneys. Margaret has considerable experience in advising a broad range of clients, including multinational corporations, in the development, management, exploitation, protection and enforcement of their trade mark portfolios.
ACACAP was founded in May 2014 and is based in Singapore with partners in over 30 Asian countries. ACACAP provides local expertise, investigations and enforcement actions to protect brands against counterfeiting and serves as a forum to discuss alternative solutions to counterfeiting and piracy.
The ACG represent the interests of: UK and international manufacturers, distributors and retailers; lawyers; trade mark agents; and brand protection specialists, campaigning to change perceptions of counterfeiting as a harmless activity and expose it as a serious organised crime.
The event was sponsored by Incopro.
Laura Clews, Associate at Mathys and Squire, recently sat with the team at Food Matters Live to talk about the IP on our plate.
From R&D and packaging to food technology, processing and the composition of ingredients, Laura outlined the various ways companies seek to protect their innovations in this competitive industry.
Laura is a Chartered Patent Attorney and European Patent Attorney with experience in the drafting and prosecution of patent applications in the UK, Europe and worldwide. A member of our Food and Beverage team, Laura has recently written articles regarding cell-cultured meat and was interviewed by the host of BBC Radio’s The Food Chain series, Emily Thomas, to discuss trade secrets in the food industry.
To watch the Food Matters Live video in full, please click below.
Food Matters Live is an annual event exploring the relationship between food, health and nutrition. Our dedicated Food and Beverage group has extensive experience in the industry and understands the challenges faced by companies in this highly competitive market. Members of the team will be attending Food Matters Live 20-22 November 2018 in the London Excel Centre and will be ready to talk all things food and IP.
Another exciting announcement from the Mathys & Squire team! David Miller and Martin MacLean, both partners and specialists in the fields of Life Sciences and Pharmaceuticals, have been nominated by their peers to feature in the 2018 edition of Who’s Who Legal: Patents.
Since 1996 Who’s Who Legal has identified the foremost legal practitioners and consulting experts in business law based upon comprehensive, independent research.
This is Martin’s third inclusion in Who’s Who Legal, having been nominated in 2016, 2017 and now 2018. He has also been ranked in the latest edition of IAM Strategy 300 – The World’s Leading IP Strategists 2017. Legal 500 (2017)
David, who has a master’s degree in natural sciences from the University of Cambridge and a master’s degree in the management of intellectual property (with distinction), from the University of London, is described in WWL as being “a seasoned expert with experience in handling examination and opposition proceedings at the highest level.”
Congratulations to both!
For more information about this, or any other people news, contact Marketing Director, Greg Birmingham on [email protected].
The N8 AgriFood Conference, hosted in Liverpool in June, brought researchers and industry together to review innovative approaches in food systems and sustainability.
Anna Gregson, Laura Clews and Dean Houston, members of the Mathys & Squire Agri-tech and Food team, attended the fascinating two-day event. A range of speakers explored hot topics within the industry, including sustainable consumer choices, new technologies in food manufacturing & processing, food waste, social innovation in food poverty and supply chain resilience. Mathys & Squire Partner, Anna Gregson, chaired a talk that considered the importance of intellectual property when innovating in the Agri-food industry.
Anna commented, “This well-attended annual event brings together stakeholders from all disciplines within the Agri-Food sector. The event discussed some fascinating and important topics regarding the critical issue of food sustainability, discussing the challenges ahead as well as offering solutions for the future. There was a real buzz about the event which brought together key players from industry and academia to exchange ideas and explore new collaborations. Mathys & Squire were proud to sponsor the event!”
Please click here for more information about our Food & Beverage team, and Agri-tech team.
Our team at N8Agrifood Conference discussing the importance of IP in food technology!
Mathys & Squire is delighted to announce two partner promotions in the firm in June.
Both Peter Arch and Craig Titmus have been promoted from Managing Associates to Partners, highlighting the firm’s ongoing commitment to career development.
Peter, who specialises in Life Sciences and Chemistry commented, “I’m very excited to have joined the partnership at such an ambitious and people focused firm, where our life sciences team continues to go from strength to strength”.
Craig, who also specialises in Life Sciences and Chemistry and is based in the firm’s Cambridge office said, “I am delighted to have joined the partnership at Mathys & Squire – it’s a real privilege and I very much look forward to contributing to the continued success of the firm”.
Mathys & Squire is dedicated to developing its people and this is yet another demonstration of our “One Firm | One Team” culture which is driven throughout our business. We wish Peter and Craig all the very best in their new roles and we know they will be immensely successful as partners.
Congratulations!
For more information about this, or any other people news, contact Marketing Director, Greg Birmingham on [email protected].
Did you take part in London Tech Week? With over 50,000 attendees, Mathys and Squire was part of the festivities!
You may have seen our team at TechXLR8, a conference celebrating and sharing the transformational impact of technology on industry and society.
As part of the conference, Managing Associate Andy White lead a panel discussion in the start-up hub Project Kairos. Panellists explored what it takes to get your operational ship in shape from R&D, tax, IP valuation and intellectual property perspectives.
Alongside TechXLR8, we also hosted an interactive panel session with Kingston Smith, exploring the path from start-up to success stories and the key intellectual property, tax and strategic insights tech entrepreneurs picked up along the way!
For any questions about the panel discussions or about protecting and commercialising your IP in IT, software, manufacturing or engineering, please contact Andy White.
The Mathys & Squire Agri-tech team visited the Cereals Show on 13th – 14th June.
Partners, James Pitchford and Craig Titmus, alongside Technical Assistants Clare Collins and Lionel Newton attended the exhibition at Chrishall Grange, which demonstrated the advances being made in agricultural technology, from crop science to autonomous vehicles.
With digging demos and a drone zone, the event showcased a variety of agri-innovation, including an ‘Innovation Insights’ lightning round, start-up pitch competition. The two-hour segment provided 30 start-ups with the chance to pitch their business to the crowd and showcase the developments and research in the field.
The showground was filled with vast ranges of crops and machinery and included demonstrations such as the Hands Free Hectare: the “future” of farming, with an autonomous combine harvesting wheat in a pre-prepared arena.
With over 20,000 farmers, agronomists and industry professionals, the team were impressed by the diversity, attention to detail and research conducted by all exhibitors and conclude it is a positive and encouraging time for the agri-community.
James commented, ‘One of the most impressive things about the Cereals show was the showground itself. Exhibitors of crops had grown plots of their plant varieties over the months running up to the show, and the displays were outstanding. Trenches had also been dug so that you could see the root structure of the crops being grown. Another show feature was the Syngenta Sprays and Sprayers Arena, in which a parade of farm machinery was displayed, with technical demonstrations taking place as well. The showcase of innovation at Cereals was exciting and we were very impressed by the diversity and the attention to detail, as well as the interest shown in intellectual property.’
For any questions or further information about protecting or commercialising your Agri-tech intellectual property, please contact James Pitchford or Craig Titmus.
A notable trend in 2017 was the increasing number of consumers turning to vegetarianism or veganism. The slaughter industry has been in the spotlight, and for some the consumption of meat has raised environmental and ethical concerns.
In a recent article, Laura Clews, Associate at Mathys & Squire, looks at the growing movement of cell-cultured meat.
Cell-cultured meat is made from a few ‘satellite’ cells, which can be taken from a muscle sample from a living animal. This breakthrough was made in 2013, and although it was a huge leap forward in science, the process was not commercially viable. The challenge now facing mFanufacturers is making the process economically viable, and Laura looks ethical and moral issues, as well as the importance of technology and intellectual property, in this area.
Click to read the article in full.
This article has since featured in New Food Magazine.
If you have any questions about the article please contact Laura Clews, or click here for more information about our Food & Beverage team.
On 13 June 2018, the UK Supreme Court handed down its long-awaited judgment in the Richemont litigation, holding that where rights holders obtain an order for internet service providers (ISPs) to implement a website-blocking order, the rights holders should indemnify the ISPs in respect of the ISPs’ reasonable costs of compliance (Cartier International AG and others (Respondents) v British Telecommunications Plc and another [2018] UKSC 28).
The Supreme Court’s judgment marks the latest and final determination in a series of decisions dating back to 2014, confirming that ISPs may be ordered by the UK Courts to implement website-blocking orders to prevent trade mark infringement.
In the first-instance proceedings, the Claimants (Cartier, Montblanc and Richemont), which design, manufacture and sell luxury goods under the well-known trade marks CARTIER, MONTBLANC, IWC (and other brands), were successful in obtaining an injunction against five of the UK’s leading ISPs (Sky, BT, EE, TalkTalk, and Virgin), requiring the ISPs to block or attempt to block access to specified websites which were advertising and selling counterfeit copies of the Claimants’ goods. This also included various other internet addresses whose purpose was to enable access to such websites. Importantly, the first-instance judge ordered the ISPs to pay the costs of the proceedings, as well as the costs for implementing the website-blocking orders.
This was a landmark decision, as it was the first time that the UK Courts had held that a website-blocking order may be used to prevent trade mark infringement, and such relief had only previously been granted by the courts in order to prevent copyright infringement.
The first-instance decision was reaffirmed in a further action between the parties, and confirmed by the Court of Appeal in 2016. Two of the five ISPs then appealed to the Supreme Court with respect to the order to pay for the costs of the proceedings and for implementing the website-blocking orders.
The Supreme Court has now unanimously confirmed that, where rights holders obtain an order that ISPs should block access to certain websites, the rights holders should indemnify the ISPs in respect of the ISPs’ costs of compliance with the order. As regards the costs of the litigation, the Supreme Court found that the judge at first-instance had been entitled to award costs against the ISPs as, somewhat unusually, the ISPs had made the litigation a test case and had strenuously resisted the application.
The Supreme Court’s decision will come as a disappointment to brand owners, as the costs of indemnifying ISPs for the costs of implementing blocking orders are likely to be high. However, the Supreme Court’s decision does not change the fact that brand owners now have at their disposal an important tool with which to tackle effectively the online sale of counterfeit goods.
Whether the Supreme Court’s latest decision will impact blocking orders sought for reasons other than the prevention of trade mark infringement remains to be seen. For example, the current case law with respect to cases involving blocking orders for the prevention of copyright infringement establishes that ISPs must pay the costs of implementation of any injunction ordered by the Courts, while rights holders bear the costs of the application. It is too early to assess whether the Supreme Court’s judgment will lead to this principle (and potentially others) being revised for copyright cases, but there is now scope for debate that a similar principle should be applied to blocking orders in respect of other intellectual property rights.
For more information about trade marks or how to protect your brand from the threat of online counterfeit sales, please contact Daniel Ramos or Margaret Arnott.
