Wednesday, 13 November 2024

IPO's Welsh Language Website

Pont Gludo Casnewydd - Transporter Bridge Newport
(c) 2015 Jane Elizabeth Lambert: all rights reserved


 






































The UK Intellectual Property Office updated its news story IPO launches bilingual website as part of Welsh language commitment on 12 Nov 2024 ........ by adding a translation.  The story which was originally uploaded on 12 Sep 2024 announced:
"Visitors to the Intellectual Property Office’s home page and main navigation pages on GOV.UK will now see that these are bilingual, as the IPO completes the first phase of its programme of work to provide digital information and services in Welsh."

And so it does:














The first page to be translated partially is on trade marks:
~














Readers can learn more about the IPO's Welsh language commitment on Monday 18 Nov 2024 from Emma Richards who will be one of the speakers at the Menai Science Park's contribution to this year's Wales Enterprise Day celebrations.  She will also have a lot of other topics to discuss as she is the Regional Policy Advisor to the IPO,

There are still a few places at the event online and at the venue,   If you want to take part  you can register here,

Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

Friday, 1 November 2024

Wales Enterprise Day 2024 - Diwrnod Menter Cymru 2024

 








Jane Lambert

Wales Enterprise Day takes place on or around 18 Nov of every year.  It grew out of the Menai Science Park's World Intellectual Property Day celebrations in 2021,  The theme that year was "Taking your Ideas to Market".  The topic was so large that the science park decided to hold two events, one focusing on startups on Word Intellectual Property Daty and another on scaleups in autumn.  Emily Roberts suggested that the Autumn event should be called Wales Enterprise Day and the name stuck.  Last year Aberinnovation and Tramshed joined our celebrations.  This year we shall invite organizations, communities and individuals throughout Wales and beyond to take part in the day.

The main celebrations will be a hybrid online and in-person seminar on 18 Nov between 12:00 and 14:00.  We have some star speakers such as Antony Craggs of Shoosmirths, Geraint McGrath of the Foresight Group, Tom Burke of Haia and Streams+  and I shall chair the event.  Antony was one of the speakers at the  Cambridge IP Law Summer School and he gave one of the best presentations on IP strategy and enforcement that I have ever heard.  I signed him up to deliver a similar talk to Wales Enterprise Day before he left the conference hall.  I met Geraint at the St David's Day Dinner at the Guildhall in March.  He will discuss the Investment Fund for Wales and the massive opportunities it offers to Welsh businesses.  Tom has co-founded several of M-SParc's tenant companies and he is now the Innovation Manager of M-SParc.  We recently collaborated on the Convergent Content Scaler Programme on 25 Sept 2024 at which I discussed IP rights.  We have invited several other distinguished speakers and everybody in the audience will be invited to participate.

For those who want to attend in person, the seminar will take place in M-SParc's boardroom. The event is free and readers can reserve their places by booking online. Anyone wishing to discuss this article may call me on 020 7404 5252 during office hours or send me a message through my contact form.

Saturday, 26 October 2024

Digidol 24

Llanbrynmair, the first community in the UK with full-fibre broadband


















Jane Lambert

In TallinnI remarked that Estonia reminded me of Wales.  Estonia has a highly developed digital infrastructure that has launched businesses like Skype, Bolt, and Starship Technologies. Having spent Wednesday, 23 Oct 2024 at Digidol 24 - Wales's Digital Conference, Wales reminded me very much of Estonia. An impression was strengthened by the news that Llanbrynmair in Powys was the first telephone exchange area in the UK where every resident had access to ultrafast broadband (see Mari Grug 19 Oct 2024 BBC website).

Digidol 24 was the biggest event that I had ever attended at the Menai Science Park and one of the best.  When I learned that it was to be hosted by Ameer Davies-Ranam I could not stay away.  Ameer (or Sgrameer as he is known on YouTube) kept me amused and actually taught me a bit of Welsh during lockdown.  I loved his pub, burger, ChineseChristmas dinner, curry and other eatery reviews.  He is such a good sport that he even tried Welsh folk dancing which includes a leap known as "the grasshopper".  I introduced myself to Sgrameer during the coffee break and he seemed genuinely surprised and flattered to learn that he had a fan in Yorkshire.

Plenary sessions were held in the science park's atrium where the Tanio is located.  There were breakout sessions in room G69 and the Ffiws, Boardroom and Collaboration rooms.  I attended the plenary sessions but visited the Ffiws room for lunch and the exhibition stands in G69.   

The first speaker in the atrium was Glyn Jones, Chief Digital Officer and Director of Analysis at the Welsh Government, who delivered an update on the Digital Strategy for Wales.  He was followed by Avril Lewis, Managing Director at Technology Connected, who spoke about Wales Tech Week which takes place at the International Conference Centre in Newport between 24 and 26 Nov 2024. I had previously heard her at the Digital Wales event at the Welsh Government's office in London on 12 Sept 2023 (see Reflections on Wales Innovation Week in London on 20 Sept 2023).

One of the most interesting presentations of the day was an introduction to Glu by Mike Hawkes of CapVentis. Dr Hawkes had previously spoken at Wales Enterprise Day in 2023.  Glu appears to be a comprehensive suite of business applications built around a single-core GluFoundation. I listened very carefully to his talk and discussed it with him over lunch afterwards.  As far as I could understand it, the technical advance lay in the connection and manipulation of data in different formats.  The "Our Glu Journey" segment at the end of the Glu page on the CapVentis website provides further information.  If my understanding is correct, this technology could be of immense commercial value.

Another fascinating presentation was delivered by Paul Kinlan of Google.  He discussed the history of the development of the Chrome browser and operating system and Google's plans for its future development. I encountered him on the way to lunch and asked him what if anything could be done to improve the interoperability of files created by Microsoft software on Chrome and vice versa.  I remarked that it is possible to run Office 365 pm a Chromebook but not very convenient.  I got the impression that the difficulties were more commercial than technical.

After lunch, Llion Jones delivered an online presentation on artificial intelligence from Tokyo.  He is one of the authors of Attention is All You Need which proposed a simple network architecture called "the Transformer" based solely on attention mechanisms.  According to the Eventbrite card, the Transformer became the basis of ChatGPT.  Mr Jones is now working for Sakana AI which describes itself on https://sakana.ai/seed-round/ as a new AI research company based in Tokyo.  It aims to develop transformative AI that will lead to the next paradigm. The main focus of its research and development of new kinds of foundation models will be based on nature-inspired intelligence. The company's name is Sakana (さかな) which means "fish" in Japanese. It is meant to invoke the idea of a school of fish coming together and forming a coherent entity from simple rules.

"The unlicensed use of creatiuve works for training generative AI is a major unjust threat to the livelihood of the people behind those works, and must not be permitted"

I asked Mr Jones whether he agreed that there was a distinction to be drawn between creativity and intelligence.  To my surprise, he replied that there wasn't. I responded that they are completely different mental processes, the former being an exercise in understanding and the latter an inspiration of the spirit. My view is that authors like Kazuo Ishiguro and Ian Rankin have nothing to worry about.  A machine may be great at creating elevator music but will never produce a work that stands comparison with Chopin.

A highlight of the day was an unscheduled session of short presentations by three of M-SParc's tenants in the atrium.  One of the speakers was Tomos Owen who co-founded Pelly.  That is an app that helps football clubs make recruitment and other decisions.  This is another product that has been developed in the science park and has considerable commercial potential.  

The last of the plenary speakers was Susi Marston who discussed the digital infrastructure that is soon to be rolled out in Wales.  She promised very similar services to those that are available in Estonia including tariff-free voice calls and very fast broadband.  BT had a stand in the atrium which I visited during one of the breaks.  There I learned about the 5G mobile network that the company is installing.  I was told by one of Ms Marston's colleagues that there is an excellent signal at the summit of Yr Wyddfa and that Northern Ireland has the most advanced fibre network in the UK.

Breakout sessions that I would have attended had it been possible to be in two places at once included 

  • Huw Watkins and Iqbal Bedi on Technology Options to Improve SME Performance - Examples from North Wales and the BT Connectivity Roadshow in the Ffiws room, 
  • Senedd member Rhin ap Iorwerth's reflections on the Digital Strategy, the panel discussion on smart buildings and decarbonization and the Federation of Small Businesses' Creative Report in the Boardroom, and
  • Business Wales's workshops in the Collaboration Room.
I visited as many of the stands as I could.  I was particularly glad to make contact with Ambition North Wales which brings together the region's local authorities and its universities and to renew my connection with Gogledd Creadigol.

One of the reasons for Estonia's success in establishing and growing new businesses is that it has a highly skilled workforce.  In my article on Estonia, I explained that that was because it has an excellent education system and that its kids regularly outscore children from other countries in the OECD PISA tests.  However, Welsh schoolchildren are not far behind and one of M-SParc's most important activities is Club Sparci.  It was encouraging to see that the last event of the day was a meeting of Club Sparci where the kids would learn about Raspberry Pi.  

Anybody wishing to discuss this article may call me on 020 7404 5252 during UK office hours or send me a message through my contact form.

Friday, 27 September 2024

M-SParc Returns to London

(c) 2024 Jane Elizabeth Lambert all rights reserved
Gareth the Orangutan at the London Welsh Centre 25 Sep

 












Jane Lambert

During last year's Indian summer, representatives of the Menai Science Park ("M-SParc") held a series of events at the House of Lords,  the London Welsh School and the Welsh Government's London offices in Victoria.  I attended two of those events and discussed them in Reflections on Wales Innovation Week in LondonYesterday and the day before the M-SParc team returned to London to promote opportunities, investment, entrepreneurship and innovation in Wales (see M-SParc #ArYLonDon on the M-SParc website).

This year they held a reception at the London Welsh Centre on 25 Sept 2024 and continued the next day with STEM workshops at the London Welsh School and a pitching event organized by Global Welsh in Whitechapel at which M-SParc was a sponsor.  As soon as I finished my talk on intellectual property for the Convergent Content Scaler I took a train to London which arrived just in time for the reception at the London Welsh Centre.

Someone at M-SParc took or made arrangements for a video to be taken of the event and posted it to Linkedin.  The event took place in the first-floor bar of the Centre.  I was shown the dancing robot and invited to try my luck at one of the video games.  I also circulated and introduced myself to some of the speakers and other guests.

Sometime after 18:30, Pryderi ap Rhisiart, M-SParc's Managing Director, introduced himself to the audience.  He said a few words about the science park, the trip to London and the programme for the evening,  He then introduced Hywel Pitts, a superabundantly talented singer I would never have discovered had I not started to study Welsh.  

He had the audience in fits of laughter.  Sadly most of his jokes and allusions passed over my head because I could not keep pace with the lyrics or patter. While my Welsh is a little bit more than "tipyn bach" it is a long way short of "yn rhugl."  Simultaneous translation was available but I try not to use it when learning a language. It is usually possible to pick up the gist of a conversation and attune the ear but relying on an interpreter teaches nothing.  Happily, there is a song about Brexit recorded on YouTube that Hywel sang with another popular singer known as "the Welsh Whisperer."  The lyrics of that song are so obvious that anyone can follow that song sufficiently to appreciate both artists' wits.  

After the singing, Pryderi introduced a panel of speakers:

He had several questions on folded post-it notes that had been placed in a tricorne hat.  He invited each of the quests to pick one from the hat, read it to the audience and discuss it.  Some of the interviews were in Welsh where, again, I picked up the gist but not the detail.

After a short break, we met the star of the evening, Gareth yr Orangutan.  I have been a fan of Gareth's for years - long before he joined M-SParc.  I first encountered him during lockdown when I spent the fortnight that I had intended to spend in St Davids listening to "Say Something in Welsh" recordings.  I think I learnt more Welsh from those videos than ever I did from the courses at Nant Gwrtheyrn, Popeth Cymraeg and the London Welsh Centre.  Gareth speaks the Welsh of everyday conversation which is a lot less structured than the classroom version.  My favourite videos are his work experience in the chip shop and his Christmas show with the ghost of Christmas past, the Welsh whisperer and Sion Corn.  Gareth interviewed some of the guests in his inimitable style.

The evening was in full swing when I was horrified to see that I had just 35 minutes to dash to King's Cross to catch the last train back to Donny.   Since buses are as frequent as the Preston Guild and taxis are as rare as hens' teeth I had to run.  I did not have time to say goodbye to Gareth or the rest of the team from M-SParc.  I had been hoping to meet Hywel Pitts and Llinos Medi MP but that will have to be another occasion.   

I boarded my train with minutes to spare, picked up my car at the station car park and arrived him just after 02:00. It had been a very long day but a very pleasant one.

Thursday, 26 September 2024

The Welsh Science Parks' Convergent Content Scaler Programme

 

Jane Lambert

The Menai Science Park ("M-SParc") has been running a very successful accelerator programme for startups for several years.   In Two Kinds of Accelerators - Colin Jackson in a Race and Accelerators for StartupsI described accelerator programmes as "fixed-term, cohort-based programmes, that include mentorship and educational components and culminate in a public pitch event or demo day. Another way of describing an accelerator is as a cross between The Apprentice and Dragons' Den. Your idea is pinched, pulled and prodded tested to destruction but if it survives you will receive training, mentoring and ultimately funding." I discussed M-SParc's accelerator programme on 15 Feb 2022 and the Accelerator's Showcase on 22 June 2022.

Startups cannot remain startups forever and as I noted in IP Strategy to Scale-Up on 19 Oct 2021 the transition from startup to scaleup is often described as a chasm.   I explained in that article

"That is because most scale-ups are very different from start-ups in terms of governance, marketing and funding. One obvious difference is that start-ups can be funded by their founders themselves, possibly with the support of friends and family and maybe some grants or soft loans whereas scale-ups usually need investment from third parties such as angels, venture capitalists and in a few rare cases the AIM."

Such investors will expect safeguards for their investments and the bundle of laws that protect investment in innovation, branding and creativity is known collectively as "intellectual property."   It was for that reason that Tom Burke invited me to give a talk on "Safeguarding Investment in Convergent Content" to the Convergent Content Scaler between 10:00 and 12:00 on 25 Sept 2024.

The Convergent Content Scaler is a collaboration between M-SParc on Ynys Môn and Tramshed Tech in South Wales.   It is a 12-week programme in which participants will receive tailored support to help scale up and expand on creative tech projects as well as gain access to further funding, resources and coaching. I attended the launch at M-SParc and online on 12 Sept 2024 between 09:00 and 11:00.

My talk was received very generously by the audience. Klaire Tanner one of the attendees wrote:

"Completely forgot to tell you that I’ve been accepted onto the Convergent Content Scaler Programme, run by Tramshed Tech and M-SParc 🚀

Had a fantastic time this morning on the programme, Jane Lambert did a really insightful session on IP!"

She also posted some lovely photos of the smiling faces of the M-SParc attendees in the park's Collaboration Room.   Tom wrote:  "Was a fantastic session! Diolch yn fawr Jane Lambert."  I replied that it is always a pleasure to work with Tom and that Klaire had delivered a splendid talk on AI from which I had learnt a lot in the same room earlier this year.  For the convenience of those who attended my talk and anyone else who may be interested I have uploaded my slides to Slideshare,

After the talk, I discussed some of the IP issues of some of the members of the audience.  There was insufficient time to address everyone's issue and I invited the attendees to book appointments on our "Initial Advice and Signposting" clinic by filling in the form below.  Anybody wishing to discuss this article may call me on 020 7404 5252 during normal office hours or send me a message through my contact page.

Tuesday, 17 September 2024

Re Gary Atkinson's Trade Mark - Owen v Atkinson


 













Jane Lambert

Trade Marks Registry (Judi PikeRe Atkinson's Trade Mark, Huw Richard Owen v Gary Atkinson  BL O/1202/23 20 Dec 2023

This was an application to the Registrar of Trade Marks by Huw Richard Owen ("Mr Owen") for a declaration that UK trade mark number 3687974 which Gary Atkinson ("Mr Atkinson") had registered for a range of goods in classes 1, 7, 11, 19, 21, 31 and 37 was invalid under s.47 (1) and/or (2) (b) of the Trade Marks Act 1994.  Mr Owen alleged that the mark had been registered in bad faith within the meaning of s.3 (6) and that he had an "earlier right" in relation to which the condition set out in s.5 (4) had been satisfied. 

S.5 (4) (a) provides:

"A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented—
(a)    by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade, where the condition in subsection (4A) is met."

Mr Owen claimed the right to bring an action for passing off to restrain Mr Atkinson's use of trade mark number UK3687974 on the ground that he had run a licensed pet shop on the island called "Anglesey Aquatics" or "Mon Aquatics" since January 2017.  He also claimed that Mr Atkinson's registration and use of that mark amounted to bad faith.  Mr Atkinson denied Mr Owen's allegations and requested sight of the evidence upon which Mr Owen relied.

Neither party was legally represented and the invalidity proceedings came on before Judi Pike ("Ms Pike") acting on behalf of the Registrar.  As neither side had requested a hearing, Ms Pike determined the application on written submissions and evidence.  She delivered her decision on 20 Dec 2023 (see Re Atkinson's Trade Mark, Owen v Atkinson BL O/1202/23 20 Dec 2023).

After referring to s.5 and s.47 of the Act Ms Pike cited paras [55] and [56] of Judge Melissa Clarke's judgment in Jadebay Ltd and others v Clarke-Coles Ltd (t/a Feel Good UK) [2017] EWHC 1400 (IPEC) (13 June 2017):

“[55]. The elements necessary to reach a finding of passing off are the ‘classical trinity' of that tort as described by Lord Oliver in the Jif Lemon case (Reckitt & Colman Product v Borden [1990] 1 WLR 491 HL, [1990] RPC 341, HL), namely goodwill or reputation; misrepresentation leading to deception or a likelihood of deception; and damage resulting from the misrepresentation. The burden is on the Claimants to satisfy me of all three limbs. 

[56] In relation to deception, the court must assess whether "a substantial number" of the Claimants' customers or potential customers are deceived, but it is not necessary to show that all or even most of them are deceived (per Interflora Inc v Marks and Spencer Plc [2012] EWCA Civ 1501, [2013] FSR 21).”

She also mentioned Lord MacNaghten's speech in Inland Revenue Commissioners v Muller & Co’s Margarine Ltd [1901] AC 217 at 223:  

“What is goodwill? It is a thing very easy to describe, very difficult to define. It is the benefit and advantage of the good name, reputation and connection of a business. It is the attractive force which brings in custom. It is the one thing which distinguishes an old-established business from a new business at its first start."

As Mr Atkinson had applied for his trade mark on 31 Aug 2021, Ms Pike held at para [12] of her decision that Mr Owen must show that at that date he had sufficient goodwill in his business to bring an action for passing off.  

Mr Owen made a witness statement stating that he had traded as Anglesey Aquatics and Môn Aquatics from when he opened his business in 2017. One of the exhibits is a licence under The Animal Welfare (Licensing of Activities involving Animals (Wales) Regulations 2021 covering the period from 25 March 2022 to 24 March 2024 identifying his business as Môn/Anglesey Aquatics trading from an address on the island,.  He also exhibited a business card, screen prints of a Facebook page, a web page, a social media comment page and an address label.   A screenshot showed that Mr Owen owned the domain name <monangleseyaquatics.co.uk> but it was not clear when if at all he had ever used it.  Ms Pike observed at para [19] that mere ownership of a domain name does not prove that the name is in use or has contributed to the accrual of goodwill.

None of these exhibits were dated and the hearing officer expressed Mr Owen's first difficulty in para [20]:

"The assessment as to whether Mr Owen owned sufficient goodwill at the relevant date of 31 August 2021 is tied to goodwill accrued prior to that date. This makes it very important that exhibits are dated or, if undated, other evidence corroborates them and make it possible to place their significance as generating custom prior to the relevant date. It is also very important that the evidence which is dated shows that use which generated custom took place before the relevant date. I have already referred to the lack of dating in respect of the delivery label and the social media and website screenshots. Exhibits MA35, MA36 and MA37 are photographs of shelves stocked with aquatic goods (such as decorative rocks and fish food). They are undated and Mr Owen refers to them in the present tense: “I have a number of accounts open with a number of these [trade accounts with suppliers, distributors and wholesalers], which entitles my business to buy and sell all goods associated within the aquatic trade as in pictures Exhibit MA35, Exhibit MA36 and Exhibit MA37…”

She added at [23]:

"What Mr Owen must show in evidence is that, by 31 August 2021, he owned a protectable goodwill in the signs relied upon, sufficient to have prevented the use of the contested mark under the law of passing off. He states that he has been using Mon Aquatics/Anglesey Aquatics since January 2017, but the evidence falls a long way short of demonstrating the relevant goodwill in either or both names. I cannot tell from the evidence how much turnover was achieved prior to the relevant date as there are no such figures and no dated invoices. There are no dated website or social media screenshots. Owning an unused domain name does not show goodwill. Goodwill is the attractive force which brings in custom, but there is no evidence to show when that custom was generated, and how much custom was generated. The only dated evidence of trade dates from fourteen months after the relevant date. The pet shop licence is dated after the relevant date. Although there are screenshots of messages from customers who went to Mr Atkinson’s shop instead of Mr Owen’s premises, they are not dated. In the absence of any content which pre-dates the relevant date of 31 October 2021, it is not possible to put these in context."

Another difficulty is that Mr Owen gave no evidence of sales from which the hearing officer could assess the level of goodwill.   Referring to Thomas Mitcheson QC's judgment in Smart Planet Technologies, Inc. v Rajinda Sharma BL O/304/20, 2 June 2020, she said:

"The law protects a small goodwill but not a trivial one; i.e. sales so small that the goodwill is trivial."

Further, "Aquatics" strongly alluded to the type of goods and "Mon/Anglesey" the location of the business.  She had already noted that where a sign is descriptive or weakly distinctive, the evidence needs to be compelling.  At para [28] she quoted Lord Simonds's speech in Office Cleaning Services Limited v Westminster Window & General Cleaners Limited [1946] 63 RPC 39:

“Where a trader adopts words in common use for his trade name, some risk of confusion is inevitable. But that risk must be run unless the first user is allowed unfairly to monopolise the words. The court will accept comparatively small differences as sufficient to avert confusion. A greater degree of discrimination may fairly be expected from the public where a trade name consists wholly or in part of words descriptive of the articles to be sold or the services to be rendered.” 

She concluded at para [29] that Mr Owen's case based on s.47 (2) failed.

Turning to the question of whether Mr Atkinson's application had been made in bad faith, Ms Pike referred to para [67] of Lord Justice Floyd's judgment in Sky Ltd and others v Skykick, UK Ltd and another (Rev2) [2021] RPC 17, [2021] EWCA Civ 1121:

"The following points of relevance to this case can be gleaned from these CJEU authorities:

1. The allegation that a trade mark has been applied for in bad faith is one of the absolute grounds for invalidity of an EU trade mark which can be relied on before the EUIPO or by means of a counterclaim in infringement proceedings: Lindt at [34]. 

2. Bad faith is an autonomous concept of EU trade mark law which must be given a uniform interpretation in the EU: Malaysia Dairy Industries at [29]. 

3. The concept of bad faith presupposes the existence of a dishonest state of mind or intention, but dishonesty is to be understood in the context of trade mark law, i.e. the course of trade and having regard to the objectives of the law namely the establishment and functioning of the internal market, contributing to the system of undistorted competition in the Union, in which each undertaking must, in order to attract and retain customers by the quality of its goods or services, be able to have registered as trade marks signs which enable the consumer, without any possibility of confusion, to distinguish those goods or services from others which have a different origin: Lindt at [45]; Koton Mağazacilik at [45]. 

4. The concept of bad faith, so understood, relates to a subjective motivation on the part of the trade mark applicant, namely a dishonest intention or other sinister motive. It involves conduct which departs from accepted standards of ethical behaviour or honest commercial and business practices: Hasbro at [41]. 

5. The date for assessment of bad faith is the time of filing the application: Lindt at [35]. 

6. It is for the party alleging bad faith to prove it: good faith is presumed until the contrary is proved: Pelikan at [21] and [40].

7. Where the court or tribunal finds that the objective circumstances of a particular case raise a rebuttable presumption of lack of good faith, it is for the applicant to provide a plausible explanation of the objectives and commercial logic pursued by the application: Hasbro at [42]. 

8. Whether the applicant was acting in bad faith must be the subject of an overall assessment, taking into account all the factors relevant to the particular case: Lindt at [37]. 

9. For that purpose it is necessary to examine the applicant’s intention at the time the mark was filed, which is a subjective factor which must be determined by reference to the objective circumstances of the particular case: Lindt at [41] – [42].

 10. Even where there exist objective indicia pointing towards bad faith, however, it cannot be excluded that the applicant’s objective was in pursuit of a legitimate objective, such as excluding copyists: Lindt at [49]. 

11. Bad faith can be established even in cases where no third party is specifically targeted, if the applicant’s intention was to obtain the mark for purposes other than those falling within the functions of a trade mark: Koton Mağazacilik at [46]. 

12. It is relevant to consider the extent of the reputation enjoyed by the sign at the time when the application was filed: the extent of that reputation may justify the applicant’s interest in seeking wider legal protection for its sign: Lindt at [51] to [52]. 

13. Bad faith cannot be established solely on the basis of the size of the list of goods and services in the application for registration: Psytech at [88], Pelikan at [54]”.

Citing Red Bull GmbH v Sun Mark Limited and Sea Air & Land Forwarding Limited [2012] EWHC 1929 (Ch) the hearing officer held that it was necessary to ascertain what Mr. Atkinsion knew when he applied for his trade mark.  She observed that an allegation of bad faith is a serious allegation which must be distinctly proved.  She said at [36] that the basis of the bad faith claim was that Mr Atkinson had taken Mr Owen’s Welsh business name which he has been using since 2017. As Ms Pike had found that Mr Owen had not demonstrated in his evidence that he had sufficient goodwill in the name Mon Aquatics (or Anglesey Aquatics) prior to the relevant date of 31 August 2021, the case under s,47 (1) must also fail.

As Mr Owen's application for trade mark UK3687974 to be declared invalid failed, Mr Atkinsin's trade mark remains on the register.   The hearing officer said that Mr Atkinson would have been entitled to costs had he filled in the appropriate form before the hearing.  As he did not do so, Ms Pike made no order for costs.

As I said above, neither party was represented. Time and possibly money might have been saved had either or preferably both of them taken advantage of the pro bono IP Clinic that has operated at the Menai Science  Park since 2018.   This case was just the sort of issue that the clinic was set up to resolve.  Anyone wishing to discuss this case may do so by calling me on 020 7494 5252 during office hours or sending me a message through my contact page.

Tuesday, 3 September 2024

New Supervising Judge for the Business and Property Courts in Wales

Author Ham - Licence CC BY-SA 3.0, Source Wikipedia
 

















Mr Justice Michael Green has been appointed as the Supervising Judge of the Business and Property Courts in Wales from 1 Oct 2024 for the next years.  He will also sit as Supervising Judge for the Business and Property Courts of the Midlands and Western Circuits for the same period.

The Business and Property Courts in Wales consist of 3 specialist jurisdictions: 
Those Courts are based in Cardiff but Business and Property Court judges also sit in Mold from time to time and other court centres in Wales as and when required.  Mr Justice Michael Green will be assisted by His Honour Judge Jarman KC, the Chancery judge for Wales, and His Honour Judge Keyser KC, the Circuit Commercial Court Judge for Wales.   Judge Jarman also hears Circuit Commercial and TCC cases and Judge Keyser Chancery and TCC ones.  The Supervising and Specialist Circuit Judges are supported by several specialist district judges.   Profiles of the judges of the Business and Property Courts in Wales can be found on the Courts and Tribunals Judiciary website.

Although the Regional Business and Property Courts website makes clear that the Patents Court list remains in London, para 16.1 of the Part 63 Practice Direction states that most other intellectual property claims can be issued and tried in Wales. Having said that, para 16.3 of the same Practice Direction warns that the Caernarfon and Mold hearing centres have no jurisdiction in relation to registered trade marks.

The small claims track of the Intellectual Property Enterprise Court ("IPEC") hears claims for £10,000 or less falling within para 16.1 of the Part 63 Practice Direction in Cardiff (see IPEC Small Claims Track IP Litigation in Wales of 13 July 2019).  That court cannot award interim injunctions but it can grant final injunctions, delivery up of infringing items and on on.

Although CPR 63.2 (2) requires any claim falling within CPR 63.2 (1) to be brought in the Patents Court or the IPEC, para 4 of the Patents Court Guide provides that If the parties so desire, for the purpose of saving time or costs, the Patents Court will sit out of London.  Para 1.6 of the Intellectual Property Enterprise Court Guide contains a similar provision.  To my knowledge, the Patents Court has sat in Manchester and Birmingham and IPEC has also sat in Birmingham but it does not happen very often.

Anyone wishing to discuss this case may call me on 020 7404 5252 during office hours or send me a message through my contact form at all other times.