Wednesday, 16 November 2022

Wales Enterprise Day 2022: Intellectual Property Rights outside the UK


 







Jane Lambert

Wales Enterprise Day celebrates business expansion.  Last year's theme was start-ups becoming scale-ups.  This year's is about obtaining and enforcing intellectual property rights abroad.  Businesses that export, license, manufacture or market their goods and services abroad need to make sure that their brands, designs, technology and creativity are protected outside the United Kingdom and that they have the means to enforce such protection in foreign courts and tribunals.

I discussed those topics in Protecting Intellectual Assets Abroad on 6 Oct 2022 in IP after Brexit and in Protecting your Brands, Designs and Technology Abroad on 21 Oct 2022 in this publication. Essentially a business should seek legal protection for those assets in its markets and in the jurisdictions in which its actual or potential competitors are to be found.  That is where a lot of mistakes are made and money is wasted.   For instance, many SMEs arrange for their product to be manufactured in China or some other country for distribution in the UK without first obtaining industrial design, patent or trade mark protection in that country, They then wonder why lookalikes flood their export and sometimes even their home markets.

To help businesses to avoid those mistakes I shall chair a hybrid in-person and online seminar on Protecting your Brands, Designs, Technology and Creativity at the Menai Science Park (M-SParc) on 18 November 2022 between 12:15 and 14:00.   To protect those assets businesses need to put the following arrangements into place:

  • Legal protection in the form of patents, copyrights, trade marks, registered designs and other intellectual property rights in each of their foreign markets and the countries where their competitors are to be found;
  • Local teams of lawyers and patent and trade mark attorneys to enforce such protection; and
  • Adequate funding for enforcing such protection.
M-SParc has gathered experts in each of those fields to speak on those topics.

The most important markets are the European Union, the United States and China.  Sean Thomas of Thomas Harrison IP will explain how to apply for patents whether directly or through the European Patent Convention or the Patent Cooperation Treaty.   He will discuss trade mark registration through the Madrid Protocol and design registrations through the Hague Agreement.  He will address such issues as how much a typical application will cost and how long it will take.  He has a lot of experience in registering and enforcing IP rights in China and the United States and will pass on some valuable tips.

When the UK was in the EU, the judgments of its courts could be enforced throughout the Union, EU trade marks and registered Community designs applied to the UK and they did to the other member states and London was to host one of the Central Divisions of the Unified Patent Court.  All that ended at 23:00 on 31 Dec 2020 when the implementation period provided by the EU withdrawal agreement expired.  Businesses in the UK that hold EU trade marks, registered Community designs or unitary patents have to bring proceedings in an EU member state.

Happily, a short ferry trip from Hollyhead lies an English-speaking common-law country that remains within the European Union,  Its courts can try EU trade mark, registered Community design and plant variety disputes.  Its counsel and solicitors can appear before the Unified Patent Court.  The Brussels Regulation continues to apply to the Irish Republic.

I have asked my friend and colleague James Bridgeman SC to speak on how the Irish legal profession can help UK businesses enforce their intellectual property rights.  James holds an appointment that is equivalent to King's Counsel in the United Kingdom.  He appeared in one of the leading cases on rights in performances before the Court of Justice of the European Union.  Before he was called to the Bar he practised as a trade mark attorney.   As a Past-President of the Chartered Institute of Arbitrators, he can suggest strategies in which the rights of British businesses can be enforced through international arbitration.

International IP litigation does not come cheap but, fortunately, it is possible to obtain insurance against such expenses.   M-SParc will welcome back Ian Wishart a director of Sybaris Special Risks whose company specializes in IP insurance. He has already spoken at M-SParc on litigation insurance for the UK.   On Friday he will discuss policies for the EU, USA, China and elsewhere,  In countries such as the USA where contingency fees are possible litigation funding is an alternative to IP insurance.   Sybaris talks to investors in litigation funding.  If there is time, Ian will say a few words about that market,

This will be a fascinating session.   Readers can register through this link.  Anyone wishing to discuss this topic can call me on 020 7404 5252 during office hours or send me a message through my contact page.

Friday, 11 November 2022

North Wales Creative meets Creative Wales

 
Author Tanya Dedyukhina Licence  CC BY 3.0  Source Wikimedia Commons

 


















On 9 Nov 2022, I attended a meeting of Creative North Wales (Gogledd Creadigol) at the Galeri arts centre in Caernarfon.  That was not my first encounter with Creative North Wales.  I wrote about them in Gogledd Creadigol on 11 May 2021 after I had given a talk to their members on Copyright Licensing and Information and Communications Technology on 21 April 2021 (see Jane Lambert Copyright Licensing and Information and Communications Technology 13 April 2021).

The evening began with an introduction to the executive and prominent members and a review of their recent activities.  One of those was a webinar entitled Powering up the Video Games Industry which took place just before my talk.  The keynote speaker at that webinar was Dr Davd Banner MBE who is founder and CEO of Wales Interactive.  David attended Wednesday's meeting and I was delighted to meet him in the flesh. He told me that he had been in the games industry since the 1990s and we remarked on the growth of the industry over the years.

David is also a non-executive board member of Creative Wales (Cymru Creadigol) and the purpose of the meeting was to introduce that organization and its leaders to stakeholders in the creative industries in Northwest Wales.  Gerwyn Evans, deputy director of Creative Wales delivered a short presentation on its work.  He began by stating that Creative Wales had a narrower remit than the Department for Digital, Culture, Media and Sport in that it did not cover such fields as architecture.  It occurred to me as he said those words that the United Kingdom equivalent to Creative Wales was the Creative Industries Council ("CIC") which is chaired by the Secretary of State for Digital, Culture, Media and Sport.  Architecture is indeed within the CIC's remit as well as advertising,, arts and culture and fashion which are outside Creative Wales's.

Creative Wales does, however, cover a lot:
  • film and television
  • music
  • games
  • animation
  • createch
  • R & D, and
  • publishing.
The deputy director mentioned each of those sectors in turn and discussed its importance to the Welsh economy and the support that it received from Creative Wales.

A surprising omission in view of the importance of such composers as Catrin Finch and Jack White, dance companies like Ballet Cymru and the National Dance Company of Wales and the National Eisteddfod is the exclusion of the performing arts.   According to Creative Wales's website:
"Fine art, dance, theatre and poetry fall outside of our remit. Don’t worry, they’re not forgotten. Other organisations, such as the Arts Council of Wales take care of these essential and thriving areas of creativity."

Other parts of the UK also have an Arts Council but the arts in those other nations and regions are still represented on the CIC. 

As an intellectual property specialist, I am particularly interested in the digital industries and I was fortunate to meet Paul Osbaldeston, the digital lead sector development manager.   Our meeting was brief but it is good to put a face to a name should we come into contact again.

Finally, I was delighted to see a strong representation from the Menai Science Park which included its managing director, Pryderi ap Rhisiart,. its outreach and community manager  Emily Roberts who has recently visited the Massachusetts Institute of Technology and Tanya Jones who kindly invited me to the event.  The science park and North Wales Creative complement each other in that the park catalyses business opportunities while the cultural industries feed the mind and soul.   Both are essential to making this region of Wales one of the most attractive places anywhere in which to work and live.

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

Friday, 21 October 2022

Protecting your Brands, Designs and Technology Abroad

Photo Jeremy Segrott Licence CC BY 2,0 Source Wikimedia Commons

 
















According to Business Wales, International Trade Week takes place between 31 Oct and 4 Nov 2022.  The Welsh Government has published an Export page which provides advice and guidance on exports and overseas investments.  One of its recent articles is Protecting your UK Intellectual Abroad which it published on 16 Sept 2022.

That article advises:
"To protect your intellectual property outside of the UK, you usually need to apply in each country you want protection in."

Although the author has confused intellectual property with intellectual assets this is good advice.  As the article also says, intellectual property rights are territorial and if you want to protect your brands, designs, technology or works of art or literature outside the United Kingdon you probably need to apply for a trade mark, registered design or patent in the countries or territories in which you seek protection.  Works of art and literature and the performances of actors. dancers, musicians and singers and other performing artists are slightly different since copyrights and rights in performances arise automatically in each of the countries that belong to the Berne and Rome Conventions.  

In Protecting Intellectual Assets Abroad (6 Oct 2022 IP after Brexit)  I explained that trade marks, design registrations and patents could be obtained singly by separate applications to each national or regional intellectual property office or collectively from a single filing under the Madrid ProtocolHague Agreement or Patent Cooperation Treaty.   Applications for patents under the PCT proceed in two phases.  As novelty, inventiveness, and utility are required by all countries' patent laws applications are examined centrally for those requirements.  If an invention passes that first stage it proceeds to national intellectual property offices which consider whether it complies with their local laws.  Equivalent procedures take place for designs under Hague and marks under Madrid.

Intellectual asset owners should beware that overseas protection can be very pricey.   In addition to the prosecution fees in each nation or regional office, registrations have to be renewed every so often.  In some countries, patent renewal fees will actually increase as the patent ages.  The validity of your patent, trade mark or design registration can be challenged in the courts or intellectual property offices of the countries in which you seek protection.   If anyone infringes your intellectual property right, you usually have to go to court to enforce it.  Defending invalidity or revocation claims or pursuing infringers can be very expensive, particularly in common law countries like Australia. Canada, Hong Kong, India, the Irish Republic, New Zealand, South Africa or the USA.  Unless your company is very well established you will probably benefit from taking out before-the-event insurance.

How do you decide where to protect your intellectual assets?   Generally, it should be where you have a market or a competitor.   If your company is big enough to export or invest abroad it has probably developed an intellectual property strategy which is integrated into its business plan.  If not, identify the asset that needs legal protection in the country concerned and seek the appropriate protection.

The Menai Science Park will hold a hybrid in-person and online seminar on IP protection overseas on 18 Nov 2022 at which expert patent attorneys,  specialist IP insurance brokers and lawyers from Ireland, India and Argentina will discuss those topics.  The science park expects an international audience for that event.  That is just one of many services that M-SParc offers to businesses in Northwest Wales that want to export or invest abroad.  We can introduce you to the UK's IP attaches abroad, the British Library's Business and IP Centre and its regional partners as well as many other resources.

Anyone wishing to discuss this article may call me on 020 7404 5252 or send me a message through my contact page,

Monday, 10 October 2022

Welsh Vodka Litigation- AU Vodka v NE10 Vodka













Jane Lambert

Chancery Division (Mr Justice Mellor) AU Vodka Ltd v NE10 Vodka Ltd and another [2022] EWHC 2371 (Ch) (21 Sept 2022)

Whisky Galore is the title of a novel by Sir Compton Mackenzie about the shipwreck of a cargo vessel off the Hebrides in the Second World War. The ship had been carrying whisky and the story is about a battle of wits between islanders who had salvaged the freight and hidden and the authorities who were doing their best to stop them.  I was reminded of that novel by the passing-off action that AU Vodka Ltd has brought against NE10 Vodka Ltd.

AU distils and distributes the vodka in the gold bottle and NE10 the vodka in the metallic blue.  Both companies are incorporated in Wales and carry on business in Swansea.  The action has been brought in the Intellectual Property List of the Chancery Division in London even though it could have been brought in the Business and Property Courts of Wales in Cardiff or the Intellectual Property Enterprise Court.

The first round of the proceedings was an application for an interim injunction to restrain NT10 from marketing and selling its products until judgment or further order.   It was heard by Mr Justice Mellor who delivered judgment in AU Vodka Ltd v NE10 Vodka Ltd and another [2022] EWHC 2371 (Ch) on 21 Sept 2022. The judge dismissed the application because he found that there would be a  greater risk of injustice to NE10 were he to grant the order than there would be to AU in refusing it.  I analysed his judgment in Passing-off: AU Vodka v NW10 Vodka in NIPC Law on 9 Oct 2022.

The next stage of the litigation will be a trial which the judge directed to take place in January,  In that hearing the court will consider the substantial issues.  The judge did not have to consider the merits of the case for the interim injunction application.  All he had to do was decide whether AU could win.   Mr Justice Mellor said at para [80] of his judgment that there was "a serious issue to be tried" but the case was "finely balanced."

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

Wednesday, 28 September 2022

Nesta Cymru


 







Jane Lambert

Nesta stands for National Endowment for Science, Technology and the Arts.  It was established by s,18 of the National Lotteries Act 1998 to administer funds raised by the lottery.  In 2012 its assets were transferred to a charity which has carried out the Endowment's functions ever since (see National Endowment for Science, Technology and the Arts is now independent of the UK government on the UK government website). Nesta describes itself as "The UK's innovation agency for social good."

Yesterday Nesta published its first issue of Nesta Cymru, a newsletter on the charity's events, research and projects in Wales,  It discussed healthy school meals, access to healthy food for adults to combat obesity, Nesta's submission to the Senedd on decarbonizing the private housing sector, access to green finance to upgrade homes, Nesta's partnership with Flintshire County Council to use early years data to support families,  Helen Wales's article on Graham Donaldson, Laura James's article Embracing insurgency: why local authorities need to be ready to fail and an interview with Dr Jan Rosenow, Principal and Director of European Programmes, Regulatory Assistance Project.

Nesta Cymru indicates Nesta's collaboration with the Welsh government, Cardiff University, the Wales Council for Voluntary Action and the Arts Council of Wales to fund programmes, produce research and design and test new ideas in its mission areas.  Nesta notes that devolution enables Wales to experiment and try new ideas for social good, finding places where devolution allows it to go further and faster in achieving its aims.  It has already set up Arloesiadur: an innovation dashboard for Wales and Y Lab, a public services innovation lab for Wales with Cardiff University and has supported several arts projects in Wales.

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

Wednesday, 31 August 2022

The IPO's Welsh Language Policy

Author Diomedea Exulnns  Licence CC BY=SA 3.0  Soutce Wikimedia Nant Gwrtheyrn

 











Jane Lambert

Occasionally I am asked why I spend time and money on learning Welsh. After all, so the argument runs, only a few hundred thousand speak it and nearly all of them speak also English. The answer is the same as the reason for learning any language.  A language is the key to a treasure house of ideas and information not all of which are translated or translated well.

Ideas and information are intellectual assets  They take several forms: a line of verse, a catchy song,  an elegant solution to a technical problem or an unforgettable slogan.   They are the product of skill and labour and sometimes genius.   To incentivize their generation the law protects them.  It is that legal protection that we call intellectual property.

Ideas that are generated in Welsh can be protected in Welsh.  The Intellectual Property Office which is headquartered in Newport has operated a Welsh language scheme since 3 Oct 2007.  It was prepared in accordance with the guidelines of the Welsh Language Service pursuant to s.21 (3) of the Welsh Language Act 1993.

Paragraph 1 of that scheme promises "that, in the conduct of public business, it will treat the English and Welsh languages on a basis of equality so far as is both appropriate to the circumstances and reasonably practicable."  The document continues that, where possible, the IPO will explain and offer the IP system in Welsh to those customers wishing to register their IP rights in the United Kingdom through the medium of Welsh.  

Rule 14 (1) of the Patents Rules 2007 which came into effect on 17 Dec 2007, requires the contents of all documents contained in a patent application to be either Welsh or English However, while the English language patent forms are available online, Welsh speaking applicants or their agents must call 01633 814936 or email information@ipo.gov.uk if they require a Welsh version of any of the IPO's forms/booklets.  According to David Pearce, no patent applications in Welsh had been received by the Office by 28 Jan 2008 (see Welsh patent applications: the results are in! 28 Jan 2008 IPKat).

There is no equivalent to rule 14 (1) of the Patents Rules 2007 in The Registered Designs Rules 2006 or The Trade Marks Rules 2008 but para 49 of the scheme offers to accept applications for registered designs and trade marks in Welsh and to make the relevant forms and guidance available in Welsh on the IPO's website.  As far as I can see, applicants or their agents would have to call the above number or send an email to request the relevant form or other document in Welsh.

It would appear from para 34 of the scheme that proceedings before IPO hearing officers can take place in Welsh.  The paragraph states that if the hearing takes place in Wales, it can be conducted in Welsh in the Newport Office where arranged in advance. If, however, no advance notice is given then due to limitations on the number of Welsh speaking staff and the lack of an in-house interpreter, there may be no legally and technically competent Welsh speaker immediately available. The applicant will then be given the choice, without prejudice, of continuing with the hearing in English or adjourning it until a Welsh speaker is available.

The rest of the document deals with such matters as signage, telephone calls, visits from members of the public, seminars and publications. I owe it to the IPO for my first lesson on soft mutations while driving around Newport searching for signs to Concept House when I noticed that "patent" had suddenly morphed into "batent".

I do not know whether any of the Appointed Persons speak Welsh but the Business and Property Courts in Wales ought to be able to hear appeals from Welsh speaking hearing officers in Welsh as well as infringement, invalidity, revocation and threats actions in all areas of IP law except patents, registered designs, chip topographies and plant varieties. The Court of Appeal and Supreme Court have been known to sit in Cardiff and there is at least one Welsh speaking Supreme Court justice.

My Welsh is not yet good enough to present a case in Welsh, but once it is ............ Anyone wishing to discuss this article may call me on +44 (0)7404 5252 during office hours or send me a message through my contact page.

Thursday, 21 July 2022

Consultation on a New Innovation Strategy for Wales

Jane Lambert

 











Yesterday the Welsh government launched a consultation on a new innovation strategy for Wales.  It has published a draft Innovation Strategy for Wales upon which it invites responses by 28 Sept 2022. Responses can be made online or by post.   Yesterday's Innovation Brief which announced the consultation mentioned "consultation events" at which views can be contributed in person but I have not yet been able to find any particulars of them,  However, those who want to register an interest can email InnovationStrategy@gov.wales.

According to the consultation document the Welsh government published Innovation Wales in 2013.  The consultation document reported that Innovation Wales had been successful but the "innovation landscape" has changed since then.   The UK has left the EU, the world has suffered the Covid19 pandemic and the legislature has enacted the  Well-being of Future Generations (Wales) Act 2015.

S.4 of that Act sets out the following well-being goals:

  • a prosperous Wales
  • a resilient Wales
  • a healthier Wales
  • a more equal Wales
  • a Wales of cohesive communities
  • a Wales of vibrant culture and thriving Welsh language, and 
  • a globally responsible Wales.
The strategy aims to forward those goals.

I was very encouraged to read the following observation on the Menai Science Park:
"M-Sparc, the low carbon incubator centre on Anglesey work with clients to turn initial ideas into successful ventures. They ignite ambition and offer a facility to energise, somewhere to spark a better future. Their tenants are built from great ideas at the cutting edge of science, they are offered expert knowledge, support, encouragement and investment to succeed. M-Sparc also work with a number of international businesses who are developing major infrastructure projects on Anglesey in nuclear, solar, marine and offshore wind, they encourage the use of local content in the supply chain by supporting companies to develop their capability a capacity to compete for tenders in these major projects."

There are 22 questions ranging from:

"What would you like the Innovation Strategy to achieve in the short (1 year) term in relation to: 

  • Economic growth 
  • Skills development 
  • Social equity 
  • Climate and environment 
  • Other" 

in question 1 to

"As part of Welsh Government commitment to a vibrant culture and thriving Welsh language, the proposed Innovation Strategy looks to ensure multi-lingual development as standard. 
Do you agree that the strategy outlines the ways in which it hopes to successfully create the right conditions to increase the use of the Welsh Language across all proposed innovation activities? If not, what additional activities should be undertaken?"

in question 15.

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