This year we were excited to be a part of the Stationers’ Company Innovation Excellence Awards 2017, which aim to recognise ‘the key role the Communications and Content industries play in the UK economy, highlights outstanding innovation in the sector and offers the opportunity to share best practice’.
Winners of the individual categories were:
We were pleased to attend the Awards ceremony, and provided a prize to the winner of each category of free consultation time with our team.
Universities and Commercial Enterprises working closer together.
Comment from partner Chris Hamer at Mathys & Squire in relation to the general election outcome.
“The general election results have come as a shock to the UK. It is clear that this result will cause continued uncertainty for the country, especially with regards to Brexit, economic and domestic social issues.
The Conservative government had promised increased funding for research and development and university spin outs, as well as for a general increase in the number of scientists in the UK. Theresa May herself had put an emphasis on ‘science and innovation’. We urge the newly formed Conservative government, now with support from the DUP, to continue with this promise and to look at how best universities should use some of this funding and resource to engage with commercial enterprises and businesses.
The potential increase in funding presents exciting opportunities but also, we believe, commercial challenges. Whilst research and fundamental knowledge are a priority for universities receiving funding, there is a need for academics to increase their commercial focus, i.e. how might their innovation be applied in the real world and where does it fit commercially? Whilst university technology transfer offices have made a start, we hope to see a greater focus on entrepreneurs and businesses (themselves benefiting from tax incentives) working with academics on how best to focus and commercialise their innovations and maximise the potential for products and services, forming the basis of many spin outs.
Whilst extra funding and resource in these areas are certainly needed, there is a need to also focus energy on developing a more balanced working relationship between the two.”
Margaret Arnott discusses counterfeiting in the latest edition of Intercontinental Finance & Law Magazine.
As technology and logistic networks across the globe become increasingly sophisticated, so does the business of counterfeit goods.
So, what can governments and the courts do to safeguard the consumer goods industry, and what businesses can do to protect themselves against infringments?
To read the article please click on the link below:
http://view.intellimag.com/go/icfm-issue144-7/
In December 2016 Nokia asserted patents relating to displays, user interfaces, software, antenna, chipsets and video coding against Apple across multiple jurisdictions. Apple retaliated by initiating an antitrust lawsuit in the US, as well as removing a number of Nokia ‘health products’ from their retail stores.
Initiating multiple patent infringement actions simultaneously is a common tactic to swamp defendants in court procedure, making a worldwide settlement the easy way out; however Apple are perhaps one of the few companies that would have had the resources and inclination to contest numerous lawsuits simultaneously – as the Apple v Samsung patent saga had shown.
However, while Samsung and Apple are of course fierce commercial competitors, Nokia’s share of the mobile telecoms market is now negligible in comparison. In response to this decline, Nokia have altered their business model so to leverage the large patent portfolio developed during their historic dominance of this market. This portfolio was significantly bolstered by the acquisition of Siemens’ share of NSN in 2013, and Alcatel-Lucent in 2016.
This shift in business model has led some commentators (and indeed Apple themselves in court documents) to label Nokia a ‘patent troll’ – an entity which is able to issue spurious patent infringement actions without fear of retaliatory lawsuits significantly impacting other business activities.
In this regard, the antitrust suit filed by Apple was the logical response – any precedent which would limit Nokia’s ability to extract licence revenue would have been highly damaging to Nokia’s nascent business model (in particular with respect to standard-essential patents).
Whilst the terms of the agreement and the sums changing hands have not been released, I expect that Apple would have negotiated a favourable deal – with Nokia happy to oblige so that they can parade Apple as a licensee when requesting royalties from the rest of the industry.
It remains to be seen what Nokia’s next move will be, but no doubt they would have been emboldened by this settlement without having to go through the pain of protracted litigation. Apple on the other hand are probably relieved to put this battle behind them just as the war with Qualcomm seems to warming up.
For the rest of the industry, there will be some disappointment that this dispute has fizzled out without setting a precedent, and this in turn will likely only add to the animosity towards patent licensing entities demanding high royalty rates for patents of dubious value. In this regard patent attorneys are uniquely placed to advise on both issues of patent ‘essentiality’ and to interpret what licence rates are truly ‘reasonable’ – two factors which can assist even the smallest entities to apply some pressure of their own back on the likes of Nokia.
We are delighted to announce that a number of attorneys and partners have been promoted. The nine attorney promotion round includes four women representing 44.44% of the total made up.
Amongst the partners promoted, Jane Clark, Chris Hamer, Alan MacDougall and Martin Maclean have all been promoted to senior equity partners; whilst senior associate Anna Gregson has joined the partnership ranks for the first time; and Juliet Redhouse has been made a senior associate. All promotions have been made with immediate effect and brings the total number of partners to 24.
Commenting on the promotions, senior partner, Peter Garratt said:
“This year’s promotions demonstrate our ongoing dedication to career progression here at Mathys & Squire. Speaking on behalf of the whole firm, we would like to congratulate the nine individuals involved and wish them all the success in their new roles. We are committed to the growth and development of our business and are making significant investments in expanding our operations in the UK and internationally. We very much look forward to continuing this journey with all of our partners, associates, staff and clients.”
After months of deliberating the Court of Appeal this week refused Nestlé’s attempt to trade mark the shape of its four-fingered KitKat bar, upholding the High Court’s prior ruling. The 16,000 word judgment is the latest development in this long-running dispute with its rival Cadbury and is a big blow to Nestlé.
The Court did not accept Nestlé’s arguments that the shape of the bar is unique and has acquired distinctiveness. The judges noted that the shape of the bar had not been central to Nestlé’s marketing of the product for many years, meaning that the shape was unrelated to decisions made by consumers about whether to purchase the KitKat bar.
Cadbury’s arguments were bolstered by the existence of a Norwegian chocolate bar called Kvikk Lunsj, which also has a four fingered rectangular design. The Kvikk Lunsj bar has been on the market since the 1930s.
Nestlé’s frustration at the judgment will lie with the fact that other manufacturers and supermarkets will have greater chances of selling copycat chocolate bars at lower prices without Nestlé being able to stop them. This could impact Nestlé’s sales and profits.
The case highlights the high threshold for the registration of trade marks in the form of shapes, despite shape registrations becoming of increasing importance to brand owners. There must be clear evidence that consumers rely on the shape of a product to identify its origin before a Court will grant such monopoly rights.
However, this is unlikely to be the last stage of this saga, as Nestlé may appeal to the Supreme Court. Nestlé’s representatives have already expressed their disappointment in the ruling and said that the company is considering its options.
As a business the value you place on your reputation is immense – but are you doing all you can to safeguard your good name and great ideas? We’ve teamed up with The Insider magazine in Manchester, to discover how North West businesses are protecting themselves from copycats, at home and overseas. We’d like to know: are you monitoring misuse and have you ever taken action against an infringement?
Your help will provide us with valuable insight into this area. Click here to fill in our short survey.
China is one of the leading global manufacturing hubs and the fastest growing consumer market in the world. As an operating base, manufacturing for export to other Asian economies, and as a consumer market in its own right, China offers almost unparalleled opportunity for foreign businesses looking to trade.
Chinese businesses are very IP savvy, and clearly see the value in registration and enforcement of their IP rights in China. The numbers are staggering. China received 2.88 million single-class trade mark applications in 2015, an increase of 24% from 2014. 96% of applications were from domestic applicants. Every year, the Chinese authorities oversee hundreds of thousands of administrative trade mark disputes (oppositions, revocations and cancellation actions).
This IP landscape is what UK businesses will face when looking to expand into China. Please click here to read an article in which we explain some important considerations for those looking to trade in China and what to prepare for.
On 27 April 2017, the long-awaited Intellectual Property (Unjustified Threats) Act 2017 received Royal Assent. The Act follows the Law Commission’s recommendations to reform the regime relating to groundless threats of IP infringement proceedings, and has been heralded as long-overdue, particularly in relation to trade marks and designs, following reforms to patent legislation in 2004. Although the provisions of the Act will not take effect immediately, they are expected to enter into force in October 2017. As a result, practitioners and rights owners should be aware of the upcoming changes.
The Act replaces or amends the current groundless threats provisions in the relevant legislation relating to patents, UK and EU trade marks, UK registered designs, UK design rights and Community designs, and introduces several new changes which aim to make it easier for rights owners to enforce their IP rights. In particular, the Act:
The aim of the Act is to update the current framework in response to criticisms that the current legislation is overly complex, inconsistent and uncertain. In particular, the Act seeks to introduce certainty as to what constitutes a threat, therefore encouraging parties to enter into communications and resolve their IP disputes outside of court without fear of an unjustified threats action being brought against them.
For more information about this contact [email protected] or your usual Mathys & Squire contact.
On 6th March 2017 the Indian government introduced new rules governing trade mark registrations.
One of the most interesting developments is the ability to now apply to protect a ‘well-known mark’. Companies can apply (via a form) for their mark to be recognised as ‘well-known’. This should mean that the issuing of opposition proceedings and/or infringement actions moving forward should be simplified and more cost effective.
In order to register a well-known mark, companies must provide evidence to support the claim. It must be proven that the mark is well recognised by the relevant public, and a record of successful enforcement of the mark must be provided. To indicate relevance it will also be important to show the marks’ geographical influence, and the number of potential customers of the goods or services. With sufficient evidence, it is possible to prove fame without the mark being in use in India, as long as it is deemed to be well-known among the relevant public. This is likely to be beneficial to foreign companies who have not yet used their mark in India, but require protection against infringement.
Once a trade mark is granted the status of a ‘well-known’ mark, it can be protected across classes. This one step process will then mean that evidence of use and reputation needn’t be provided every time an action is filed in India, thereby reducing cost and most likely timescales.
If you believe you could support a claim to a well-known mark and often have to enforce your mark in India, this could be a worthwhile exercise to reduce the administrative burden in the future.
Please do get in touch if this is of interest to you.
