The UK’s Digital Economy Bill 2016, which amongst other things includes a handful of new IP provisions, is now in its final stages before enactment.

Amongst these IP provisions, the Bill will permit products that are subject to UK Registered Design protection to be “webmarked” in order to help defend against “innocent infringement”.

Under UK law, in general terms, an “innocent infringer” is not liable for damages if they have infringed a UK Registered Design right, but can show that they were not – and could not reasonably have been aware – of the infringed right. At the moment, physical marking of products (and/or product literature) with a reference to the relevant UK Registered Design is used to help forestall the “innocent infringement” defence. However, updating product markings to reflect changes to registered designs can be somewhat demanding and costly in certain cases.

The provision of “webmarking” in the Digital Economy Bill 2016 allows UK Registered Design holders simply to mark a product (and/or product literature) with a URL to a webpage that relates the product to the relevant UK Registered Design(s). In this way, UK Registered Design right holders should ultimately benefit by reducing the burden (in terms of effort and perhaps in terms of cost also) of marking products.

Similar provisions for “webmarking” are in place for UK patents, as well as for US patents (in relation to which the practice is more commonly known as “virtual marking”). As a result, right-holders already have the option of providing a single webpage to alert the public to their patent rights (in various jurisdictions), and the Digital Economy Bill 2016 will extend this to UK Registered Designs.

We are pleased to be Gold Sponsors of the inaugural Bionow Precision Medicine Conference.

Hosted in Leeds on 5th April, the conference will explore the impact that developments in this area is having on patients, particularly in the areas of inflammatory disease, cancer, cardiovascular/metabolic, infection, health economics and clinical trials. 

Precision Medicine is an emerging approach for disease treatment and prevention that takes into account individual variability in genes, environment, and lifestyle for each person. This approach allows doctors and researchers to predict more accurately which treatment and prevention strategies for a particular disease will work best in specific groups of people. 

Where: Horizon, 2 Brewery Wharf, Leeds, LS10 1JR

When: Wednesday 5th April 

http://www.bionow.co.uk/events/precisionmedicineconference.aspx

Please join the Mathys & Squire team at INTA for drinks and canapes at the incredible Marea Baja! 

We’ll be hosting a drinks reception on the 23rd floor of the newly opened Marea Baja from 16.30, where you can take in 360 degree views of Barcelona. 

Please RSVP to Victoria ([email protected]) by Friday 21st April.

Where : Marea Baja, Av . Drassanes 6-8, Building Floor 23-24, Colón, Barcelona

When : Sunday 21st May

Time : 16.30 – 18.30

On 2nd March, a group of investors, including some notable Angel investors and VCs, attended our London offices in The Shard to engage in a roundtable discussion on the topic of ‘Investing in Innovation’. The event was hosted by two of our attorneys, Graham Spenceley and Emma Reeve, together with Westminster Business Council, and focussed on the importance of IP for Startups, and the extent to which such IP is considered to be important by those investing in Startups.

The discussion covered several aspects, including: what drives investment, how IP influences the decision-making process, how to spot an IP savvy business, and possible red flags to investors when considering investing. 

It was pleasing to learn that the investors generally do store high value in IP, and would like their Startups to have protected their IP. However, it would seem to be common ground that a challenge remains in getting the Startups to understand the importance – and value – of seeking professional IP advice to formulate a solid IP strategy, rather than simply rushing to get their product on the market as soon as possible, especially when funds are so tight in the early stages. 

We would like to thank Westminster Business Council and the investors who attended the event for an interesting and informative discussion! 

Earlier this month Jean-Claude Juncker, the President of the European Commission, received a letter from 80 of the most well-known brands, including Apple, Coca-Cola, Dior. Lego, L’Oreal and Nike; urging the Commission to modernise European rules on intellectual property.

In a letter to Mr Juncker, dated 31 January 2017, the brand representatives highlighted the impact of counterfeiting on businesses and European economies. Appealing to the Commission they referred to loss of tax revenues from the import of counterfeit products, estimated to be at €116 billion in 2013.

The focus of their letter was on the role played by online intermediaries, such as social media, search engines, payment services and domain name registrars. These intermediaries have grown rapidly due to advances in technology over the past 20 years and aid the counterfeiters in their attempts to appear genuine.

The brands reminded the Commission of its promise set out in a paper in May 2016 which states that the Commission would “assess the role intermediaries can play in the protection of intellectual property rights, including in relation to counterfeit goods, and will consider amending the specific legal framework for enforcement”.

It will be interesting to see whether the Commission takes heed of this letter and addresses the role played by intermediaries in counterfeiting across Europe. If they do, it remains to be seen what impact these changes will have on intermediaries based in the UK after Brexit.

We have been working with the Manufacturing Technologies Association (MTA) and their members to promote the importance of IP as a strategic business asset. 

If managed properly it can offer significant benefits, and provide a tool to control commercial risk. In many businesses, however, it is unclear whose responsibility this is. In truth, successful IP strategy begins with the recognition that taking care of IP, as with any other asset, requires everyone in a business to play their part.

To read our recent article about the simple steps that businesses can take to develop successful IP strategy, please click the link below. 

https://www.mta.org.uk/resources/ip-strategy 

Kylie Minogue and a member of the Kardashian clan have been embroiled in a trade mark registration dispute in the USA since 2014. Kim Kardashian’s younger sister, Kylie Jenner, applied to register numerous trade marks for “KYLIE JENNER” and “KYLIE” in relation to fashion and cosmetics. She also applied to register “KYLIE” for entertainment, pop culture and personal appearances, together with advertising services, such as endorsements and promotion of others goods/services.

The Australian pop star, Kylie Minogue, opposed Jenner’s application in relation to advertising services, on the basis that it would cause confusion among consumers and dilute her brand. Minogue’s lawyers described the “Keeping up with the Kardashian” star as a “secondary reality television personality” who played merely a “supporting character” in the Kardashian television show.

Minogue’s lawyers allege Ms Jenner was better known for “exhibitionism and controversial posts”. They also mention that Ms Jenner has received criticisms from disability rights groups, likely a reference to a controversial photo shoot involving Ms Jenner posing in provocative clothing in a wheelchair. In contrast, Minogue’s lawyers highlight that Kylie is a breast cancer survivor who helped to increase research and public awareness during her illness. They also explain her humanitarian efforts, such as assisting with an AIDS research foundation.

The matter appears to have reached a successful conclusion, as on 19 January the opposition was withdrawn. Although it is not thought that the whole saga has come to an end, with Jenner continually filing additional applications, including for a trade mark for KYLIE for entertainment services.

This follows the recent conclusion of another trade mark dispute in relation to a celebrity’s name. Michael Jordan recently won a trade mark dispute in the Supreme Court in China against a Chinese sportswear company, Qiaodan Sports Co. The Chinese characters for Qiaodan, which the company used on its merchandise, are a Chinese translation of Jordan’s name. He argued that the chances of confusion were increased by their additional use of a silhouette of a jumping basketball player.

The Supreme Court Judge agreed and decided that the company’s registration of the trade marks showed malicious intent. Afterwards Jordan was reported as stating that “nothing is more important than protecting your own name”. 

The UK supermarket chain Iceland Foods Limited, advertised by household names such as Jason Donovan and Peter Andre, is facing legal action from the Nordic country over its trade mark ICELAND.

In Britain the word “Iceland” may be more likely to call to mind frozen prawn cocktails and mini quiche, rather than the small, volcanic country. The supermarket Iceland has been in business in the UK since the 1970s; however it waited until 2002 to file an application for formal trade mark rights. This application was not granted until 2014, due to a significant examination and opposition process.

Iceland has since used this registration to oppose an application for the trade mark INSPIRED BY ICELAND, by Promote Iceland, a partnership tasked by the Icelandic government with improving the competitiveness of its companies abroad. This has erupted into a dispute, with the Nordic country deciding to take legal action against the supermarket chain and applying to cancel its trade mark.

In November 2016 The Icelandic Ministry of Foreign Affairs filed an application to declare Iceland’s trade mark invalid. Some media outlets link the origins of the dispute to the supermarket successfully exploiting publicity from England’s humiliating Euro 2016 loss to Iceland on social media.

This dispute has allegedly caused confusion amongst the supermarket representatives, who visited the government in Reykjavik in an attempt to reach a resolution. However, the Icelandic government remains resolute, arguing that its businesses are unable to promote themselves across Europe due to the trade mark, causing them harm.

It will be interesting to see how this dispute plays out and whether a country is able to cancel the trade mark, despite owning no registered trade marks in the word itself.

Last week James Pitchford attended LAMMA 2017, the largest exhibition in the UK of agricultural machinery and equipment.

Around 50,000 visitors attended this year’s event, at the East of England Showground near Peterborough.  The organisers have reported that 2017 was the most successful year yet.

James commented: “It was great to attend the LAMMA show for the second year running.  The scale of the show is incredible, and the pieces of machinery on display were very impressive.

“People sometimes underestimate the amount of innovation that goes into agricultural machinery, control systems and the like.  It was good to speak to some of the exhibitors at LAMMA to discuss which aspects of their inventions and product designs might be able to be protected, and how this can be done cost-effectively.

“I look forward to attending LAMMA again in 2018.”

BrandZ, a market research company, has released an interesting report into the ‘Top 100 Most Valuable Bands in 2016’.

The top 10 ranking brands include Google, Apple, Microsoft, AT&T ,Facebook, Visa, Amazon, Verizon, McDonald’s and IBM. To read the report please click here. 

The report makes for interesting reading, and several points are worth highlighting. Brand value has increased by 133% over the past 11 years, and brands now ‘need to be seen as doing more than just making money; they need to be seen as improving the life of the consumer in some way’.

We believe that the importance of brand cannot be underestimated. In 2016 we held a roundtable event with several local design agencies to understand more about the importance of brand to their clients, and the importance of protection in a digital world that is getting smaller and smaller each day. There has been a rise in technological start-up businesses with little, or in some cases, no tangible assets, for example Airbnb and Uber. Brand reputation is therefore extremely important, and all businesses have elements of their brand that can be legally protected to ensure that their reputation is not tarnished.

To read more about this please click the link below to read Emma Reeve’s article considering the new rules of branding and trade marks.

http://www.behindthespin.com/features/the-new-rules-of-branding-and-trade-marks