Monday, 29 April 2019

Celebrating World IP Day at M-SParc: Basic Tips for Startups and other Small Businesses

M-SParc (Menai Science Park)
Author Jane Lambert
© 2018 Jane Lambert: all rights reserved














Jane Lambert

Last Friday I visited M-SParc (the Menai Science Park) to participate in Wales's celebrations of World Intellectual Property Day (see Happy World Intellectual Property Day 26 April 2019). I discovered M-SParc while I was on holiday in Beaumaris last summer and it is or at least should be a tourist attraction in its own right for its architecture and environmental engineering.  It also has an excellent eatery called Caf√© Tanio which is open to the public as well as staff and tenants during office hours.  I had a delicious freshly cooked chicken curry, a slice of lemon and meringue pie and sparkling mineral from a local spring for just over £8.

M-SParc celebrated World IP Day with a lunchtime seminar on intellectual property in its boardroom at which I was one of three speakers.  The audience included several of the park's tenants and other local businesses, representatives of Welsh Water and Coleg Menai, M-SParc's managing director, Pryderi ap Rhisiart and one of his colleagues.  The other speakers were Huw Watkins of BiC Innovation and Steve Livingston of IP Tax Solutions.  Both speakers, who are experts in their respective fields with national practices and international reputations, are based at M-SParc.  That speaks volumes about the quality of the professional services that are available to businesses in the science park as well as the rest of North Wales. London and the rest of the UK come to Huw and Steve and not the other way round.

My presentation was a short introduction to IP and I have posted my slides and handout to Slideshare in case anyone who missed my talk would like to read them. Huw spoke about the services that his company offers and Steve discussed the tax incentives that are available for innovation in technology and creativity in the arts.  After the talks, I held four pro bono consultations with members of the audience that consumed the rest of the afternoon.  I was one of the last to leave the park just after 17:00.

I can't identify the businesses or mention the topics that I discussed for reasons of professional confidentiality but I think I can give two tips to businesses in Wales and elsewhere on the basis of my visits to the Anglesey Business Festival in October, Ty Menai in January (see IP for the Welsh Food and Packaging Industries 30 Jan 2019 NIPC News), Pitch Perfect (see A Good Way to spend St David's Day 2 March 2019 NIPC News), Aberystwyth University and the Beacon Enterprise Centre in Llanelli for Business Wales (see Intellectual Property for Startups and other Small Businesses 26 March 2019in March and M-SParc last Friday.

The first tip is that every business with customers has goodwill which is likely to be connected with its name, the names of one or more of its products or services, a logo, a combination of name or logo or some other sign.  It is in the interests of the business and indeed its customers that that sign is associated with that business and none other.  Sometimes unscrupulous competitors try to muscle in on a market by presenting their goods or services under the same or similar sign.  Other times a competitor can adopt the same or similar sign quite innocently. Either way, it can result in lost sales and damaged goodwill.

Registering a trade mark need not break the bank.   The basic office costs of an online application for a UK mark are £170 although I would strongly recommend obtaining a search before making an application  I would also advise businesses to instruct a chartered trade mark attorney to do the search, draw up the specification, correspond with the Registry and any objectors who many appear and obtain the grant  s (see Whom you gonna call? IP Professionals and what they do 2 April 2019).  Having said that, plenty of businesses have registered marks without using an attorney.  An attorney will charge a few hundred pounds on top of the search and filing fees for his or her trouble but that is one hell of a lot cheaper than the cost of an opposition.  Ideally, I would also pay for a watch service and take out IP insurance against the costs of enforcement.

The second tip is to ensure that website terms and conditions pass muster. Every website should have at least two sets of terms, namely website access terms and a privacy statement.  The website access terms are essentially an end-user software licence.  A website consists of code which has to be reproduced in order to appear in a browser.  Such reproduction requires permission and that can be subject to conditions. These could include restrictions on copying materials on the site or specifying that the terms are governed by the laws of England and Wales and that any disputes will be referred to courts in those countries.  The privacy statement must contain the information that should have been registered with the Information Commissioner. If cookies are used,  visitors must be made aware of that.  Any special or unusual use of data extracted from visitors to the site should also appear in the privacy statement.   If the site is to be used for e-commerce it must comply with The Consumer Protection (Distance Selling) Regulations 2000 and The Electronic Commerce (EC Directive) Regulations 2002 at the very least.   I published Basic Law for Web Designers: No. 2: Website Terms and Conditions in JD Supra on 27 Aug 2011 and although that article may be getting a little long in the tooth it is still good law.

Everybody who attended the seminar on Friday regarded it as a foundation upon which we can build.  The next step may be to arrange for a patent librarian to show how to carry out patent, design and trade mark searches, a specialist broker to talk about IP insurance or a chartered patent agent to run a clinic.  In the meantime, if anyone has a problem with a third party or an examiner, needs something drafted for a business transaction or some advice on IP law, he or she should give me a call on 020 7404 5252 or send me a message through my contact form.  If it is straightforward and I know the answer I shall tell you for free. If it requires some work I will warn you and we can agree a specification of work and a fee or charging basis.  Any fee I may charge will be reasonable and properly negotiated in advance. There will be no nasty surprises.

Friday, 26 April 2019

Happy World Intellectual Property Day


Standard YouTube Licence

Jane Lambert

Today is World Intellectual Property Day and Francis Gurry, the Director-General of the WIPO, has recorded the above message for us.  According to the WIPO, more than 400 grassroots-organized celebrations are planned worldwide of which 17 will be in the United Kingdom.  M-SParc (Menai Science Park) near Gaerwen on Anglesey will host Wales's contribution at 13:00 today with talks from Steve Livingston of IP Tax Solutions and Huw Watkins of BIC Innovation and me.

Every year World IP Day is celebrated around a different theme.  This year the theme is IP and Sport.  This is particularly relevant to Anglesey as it is famous for yachting and many other sports.  The wide range of sports that are available on the island, as well as climbing, hill walking and other land-based sports in Snowdonia, attract tourists from all parts of the world.  As Carole Beckford, a sports marketer on another island, notes in an article for the WIPO magazine, IP, sports and tourism are a perfect match.

As next year will be an Olympic year, there are special articles on the IP journey of the Olympic games and ambush marketing.   That is obviously important for broadcasters and sponsors but it also benefits schoolchildren and adults who participate in sport and other physical exercises for fun since every Olympic city has to invest in heritage activities as a condition for hosting the Games.  In
Intellectual property rights: driving global sports, the chair of the Sports Rights Owners' Coalition discusses the enormous sums that his members invest in grassroots sport.  This is done not out of altruism but self-interest, as it is in schools and clubs that stars like Gareth Bale and Alun Wyn Jones, are first noticed. 

Steve, Huw and I look forward to our talk this afternoon.  If this event succeeds we shall try to organize IP advice clinics and other events at Gaerwen.  If you have not already registered there is still time to do so here. If you can't attend today's seminar, call me on 020 7404 5252 during office hours or send me a message through my contact form and I shall send you my slides and handout,

Wednesday, 24 April 2019

Choosing the Right IP Protection

Author Ron Maijen
Licence Creative Commons Attribution0Share Alike 2.0 Generic
Source Wikipedia Playing Card





















Jane Lambert

There is usually more than one way to protect an intellectual asset.  A brand, for instance, may be protected by trade mark registration or by the law of passing off. A business owner's choice will depend on many factors such as the business's resources, the value of the intellectual asset, the vulnerability of the IP right to cancellation and so on.

Trade Mark Registration
A trade mark can be registered for the United Kingdom alone or for the whole of the European Union including the United Kingdom for so long as the UK remains a member of the EU.  It is also possible to register a mark in some or all of the countries that are party to the Madrid Protocol by applying for an international registration. 

In each case, there are three sets of costs to take into account.  The first is for searches to ascertain whether there are any early registrations that might conflict with the application. Secondly, there are the fees charged by each office for processing the application.  These start at £200 for an application to the Trade Marks Registry of the Intellectual Property Office ("the IPO") for the registration of a mark for one class of goods in the UK.  Thirdly, there may be attorneys' fees for conducting the search, drafting the application and dealing with objections from examiners or third parties in the IPO or indeed the registries of any of the other countries in which registration is sought.  Sometimes a hearing may be necessary for which counsel must be briefed.  The cost of a trade mark application may, therefore, range from a few hundred pounds for a single country where there is no objection to many thousands of pounds for a contested application.

A registration may be challenged even after it has been granted on the grounds that the mark should never have been registered or that it should be revoked because it has not been used or it has ceased to be distinctive.  The challenge may be brought in the registry or by way of counterclaim in infringement proceedings.

Although some trade mark infringements are criminal offences in the UK, it is primarily the registered proprietor's responsibility to enforce his or her rights.  The small claims track of the Intellectual Property Enterprise Court ("IPEC") can hear claims for damages of £10,000 or less that can be tried in no more than a day.  In the small claims track the costs that can be recovered from an unsuccessful party are limited to a few hundred pounds.   Claims up to £500,000 that can be tried within 2 days can be brought in IPEC's multitrack. The costs that may be recovered from an unsuccessful party in IPEC are capped at £50,000. Any other claim has to be brought in the Chancery Division of the High Court where cases and costs are managed but the amount that can be recovered from the unsuccessful party is unlimited.

Passing off
The right to bring an action for passing off arises automatically so there are no application costs.  On the other hand, is usually more difficult and hence more expensive to bring such an action than it is to sue for trade mark infringement.  The claimant has to prove that he or she has goodwill by reference to a trade mark, trade name, logo, get-up or other indicia which usually requires voluminous evidence of sales and advertising. Secondly, he or she has to prove that the defendant has misrepresented a connection with his or her goods, services or business by, for example, using the same or similar name, mark, logo or get-up. Thirdly, the claimant has to prove loss or damage such as loss of sales or reputation.

Actions for passing off can be brought in the small claims track or multitrack of IPEC or the High Court with the same costs consequences as for trade mark litigation.  Actions for passing off are often brought with trade mark infringement claims.

Since it has become possible to register marks for services, there are very few businesses that decide deliberately to rely solely on the law of passing off. Quite apart from the ease with which a trade mark action can be brought, a trade mark is a right that can be assigned, charged or licensed for money or moneysworth which is not the case with an action for passing off.

Designs
A new design with individual character can be registered for up to 25 years for the UK alone as a registered design or for the whole of the EU including the UK as a registered Community design ("RCD").  Any design that can be registered as a registered design or as an RCD enjoys automatic protection against copying throughout the EU including the UK for 3 years as an unregistered Community design ("UCD").  As the UK is now party to the Hague Agreement concerning the International Registration of International it is possible to apply for the registration of the design in the contracting countries from a single filing.

Original designs of the shape or configuration (whether internal or external) of the whole or part of an article made by UK nationals or nationals of certain other countries are protected automatically against copying for up to 15 years in the UK by unregistered design right.

Artwork for surface decoration can be protected automatically against copying for the life of the author plus 70 years by copyright in the UK and other countries. Certain other designs can be protected by copyright for the same term as works of artistic craftsmanship.

The process of registering a design or RCD is simpler than the process of registering a trade mark because there is no substantive examination.  Accordingly, the process is quicker and cheaper. The IPO charges £50 to register a single design as a registered design and the European Union Intellectual Property Office ("EUIPO") €230 to register an RCD. However, design registrations can be challenged after grant by cancellation proceedings in the IPO or the EUIPO or by way of counterclaim in infringement proceedings.

Design registration is appropriate for high-value items that are likely to be on the market for a long time such as jewellery or electrical appliances.  For toys, fashion items and other items that are likely to go out of style quickly the terms provided by UCD and unregistered design right may be quite long enough.

Actions for the infringement of registered designs or RCD must be brought in the Patents Court or IPEC multitrack regardless of value.  They cannot be brought in the IPEC small claims track.  Claims for the infringement of UCD, unregistered design right or copyright may be brought in the IPEC small claims track or multitrack or the Chancery Division.

Technology
Those who have created a new product or process can choose to disclose it to the world in return for a patent or to keep it under wraps in the hope that nobody will work out how to make or use it.  In the case of CocaCola and Chartreuse, keeping stumm can be a very effective strategy as I noted in Trade Secrets and Non-Disclosure Agreements 1 April 2019.

Patents are the most difficult and expensive IP right to acquire but they can also be the most valuable.  They prohibit not just the copying of an invention but also making, importing, distributing, keeping or using it.  A person who makes or uses an infringing item can be liable even if he made or used the product or process quite honestly without referring to the patented product or knowing the existence of the patent.

Patents can be granted for the UK alone by the IPO or for the UK and up to over 40 other countries by the European Patent Office ("EPO"). Patents can also be granted pursuant to a single application in all the countries that are party to the Patent Cooperation Treaty ("PCT"). An application for a patent for the UK alone rarely costs less than £5,000 (see Dehns The Cost of a Patent).  According to Roland Berger, the cost of obtaining and maintaining a typical European patent in up to 6 countries from 10 years cost over €30,000 (see Roland Berger Market Research Study on the Cost of Patenting).  Registering the patent in the USA, China, Japan, South Korea, Brazil, Russia, India and other industrial countries can easily exceed £100,000.  In addition to searches and office fees, applicants have to pay for renewal fees which increase over the years in some countries. 

Attorneys' fees are also more expensive than for design and trade mark applications since the specification has to be sufficiently clear and complete to enable a person with the appropriate skill and knowledge to make or use the invention after the patent expires. The monopoly claimed must be broad enough for the owner of the patent to have the widest possible protection but it must not be so wide as to be invalid.

Patents granted by the EPO can be challenged immediately after grant in proceedings called "opposition". In the UK and other countries, patents can be challenged in the office that granted them in revocation proceedings or by way of counterclaim in infringement proceedings.  Such proceedings tend to be expensive.  According to TaylorWessing's Patent Map, patent infringement proceedings can cost between £200,000 and £1 million in London.  Claims have to be brought in the Patents Court or IPEC multitrack. They cannot be brought in the small claims track.

Businesses can rely on the law of confidence and the new Trade Secrets Directive to prevent unauthorized access to, use or disclosure of undisclosed technical information for so long as it remains outside the public domain. Trade secrecy has proved to be an effective way to protect the source code of computer programs over the years.  That protection is lost once the information enters the public domain which can result from reverse engineering or parallel research and development.

Software is also protected from reproduction by literary copyright for the life of the author plus 70 years. Data can be protected from unauthorized extraction and re-utilization by database rights. A modified form of unregistered design right can protect semiconductor topographies from unlicensed reproduction for up to 25 years.

Creativity
Works of art and literature including broadcasts, films and sound recordings as well as original artistic, dramatic, literary and musical works are protected automatically from copying, publishing, renting and lending, performance, communication to the public and adaptation for the life of the author plus 70 years. Her Majesty's Government is party to the Berne Convention which extends such protection to most countries of the world.  Actors, dancers, musicians, singers and other performers automatically have the right to object to the unauthorized broadcasting, filming or taping of their performances and the distribution of copies of those performances by virtue of Part II of the Copyright, Designs and Patents Act 1988. Those rights are known as rights in performancesBroadcasters, film and sound recording studios which have contracted to record such performances also have the right to object to unauthorized broadcasting, filming or taping. Although piracy (copyright infringement on an industrial scale) and bootlegging (infringement of rights in performances on an industrial scale) are criminal offences, primary responsibility for enforcing copyrights and rights in performances rests with the rights holders. They can bring claims up to £10,000 in the small claims track of IPEC, £500,000 in the IPEC multitrack and all other claims in the Chancery Division.

Conclusion
This is the toolkit that is available to rights holders. I shall discuss how to select those tools at my talk on What is IP? et cetera at M-SParc (the Menai Science Park) on Friday, 26 April 2019 at 13:00 (see Anglesey to celebrate World IP Day 10 April 2019 and Maximizing your Intellectual Assets  23 April 2019).  If you want to attend you can register here.  If you can't make that seminar but would like my slides or handout or wish to discuss any other IP matter, please call me on 020 7404 5252 during office hours or send me a message through my contact form.

Monday, 22 April 2019

Maximizing your Intellectual Assets

























Jane Lambert

Intellectual assets are creations of the mind that give one business a competitive edge over others.  They include brands, designs, technology and creativity.  They are assets because they generate or safeguard revenue.  The laws that protect them are known collectively as intellectual property ("IP").

You probably have a business plan but how well (if at all) does it take account of IP?  If it doesn't then it should for the reasons I set out in Why Every Business Plan should take Account of IP 3 April 2016 NIPC News.  It can make all the difference between the success or failure of your business venture but it is not easy to do because "not every accountant or solicitor is IP savvy and certainly not every business adviser."

In that article, I said that I would be giving talks around the United Kingdom on IP and business planning.   As part of Wales's celebrations of World Intellectual Property Day, I shall be talking about that subject at the M-SParc (Menai Science Park) at Gaerwen on Anglesey between 13:00 and 14:00 on Friday, 26 April 2019 and I have gathered a team of experts on innovation and IP tax incentives to join me.

 I shall discuss the available legal protection - copyrights, design registration, patents, trade marks, trade secrets, unregistered design rights and so on - how you can obtain those rights and other things.   Huw Watkins of BIC Innovation will talk about ways his company can help you develop and distribute your new products and services.   Steve Livingston of IP Tax Solutions can advise you of the tax incentives and other opportunities available to you.  These are three short complimentary presentations that will not be available anywhere else.

This is one seminar you should really try to attend.  You can register for the event through Eventbrite.  If you really can't make it on the 26 April 2019, call me on 020 7404 5252 or contact me through my contact page and I will email my handout.  I am also happy to talk about this article and any other IP matter you may want to discuss.

Wednesday, 17 April 2019

Enforcing Intellectual Property Rights: Interim Injunctions

Cardiff Law Courts
Author Ham II
Licence Creative Commons Attribution-Share Alike 2.0 unported
Source Wikipedia Cardiff Crown Court


















Jane Lambert

It can take several months and often longer for a claim to come to trial and a lot of harm can be done in that time.  If the harm can be compensated in damages and the wrongdoer is good for the money then all well and good.  The injured party can claim back everything that is owed to it in proceedings known as "an inquiry as to damages". But what if it can't put an accurate figure on its loss for any reason or the person on the other side is a man of straw?  In those circumstances, the applicant may be entitled to an interim injunction.

As I said in Enforcing Intellectual Property Rights 16 April 2019, an injunction is an order by a court to stop or refrain from doing something or, occasionally, to do something.   In Wales and England, disobedience to an injunction is punishable with a fine or spell in prison.  In other countries, it is punishable by a periodic payment known as an astreinte.   There are two kinds of injunctions, namely final injunctions, which are granted after a trial when the parties' rights and obligations are determined, and interim injunctions which are granted from the until the end of the trial.

Interim injunctions can be granted by the High Court or the County Court but not by IPEC's small claims track.  To get one an applicant has to satisfy a judge that he or she could win, that the loss or damage that the applicant will sustain between the date of application and trial if the other side is not stopped cannot be compensated properly in damages and that the applicant can compensate the other side adequately if it transpires that he ort she should never have been awarded the injunction.   Interim injunctions do not come cheap. They can easily double the cost of the litigation,   But if they are granted appropriately they can bring the litigation to a head and lead to an early settlement.

An application should be made for an interim injunction as soon as the injured party becomes aware of the wrongdoing.  If it waits too long the court will assume that it can live with the wrongdoing until trial. Unless there is a good reason for not doing so, a request should be made for the wrongdoing to stop with a warning that an application will be made for an injunction if the request is not complied with.

if such a request is ignored or refused the applicant needs to issue its claim form, an application notice in N244, a draft of the order that it wants the court to make and witness statements in support of the application.  It can issue those documents in London or out of a Chancery district registry of which there are three in Wales, namely Cardiff, Caernarfon and Mold.  The witness statement should state among other things:
  • the claim the applicant is making
  • reasons why it thinks it will win
  • reasons why the other side cannot compensate it adequately in damages attaching documentary evidence wherever possible and appropriate: and
  • evidence that the applicant can compensate the other side in damages should it lose the action or otherwise not be entitled to the relief.
It should serve copies of those documents on the other side. 

Unless the application is extremely urgent, service should take place not less than 3 whole working days (not counting the date of service or the date of the hearing) before the applicant applies to the judge for the order.   If it makes its application in London, the hearing can take place almost any day.   If it makes the application anywhere else it should make it on a day (known as an application day) when a chancery judge appointed to hear applications of this kind is sitting in the court for or near the district registry out of which the applicant issued its claim form and application notice.  Interim applications judges sit regularly in Cardiff.  If the applicant issues the claim out of Caernarfon or Mold district registries, it may have to travel to Liverpool or Manchester to make the application.

if the respondent can live with the order that the applicant seeks until trial it may be prepared to give undertakings in accordance with the draft order in exchange for cross undertakings from the applicant to compensate the respondent in damages should the claim fail.   If not, the respondent will file evidence in answer to the applicant's.   The court will consider both parties' evidence on the application day.   If it can deal with the application on the day it will make an order.   If not, it will order it to heard on a later date at a hearing known as an "application by order." Usually, it will set a timetable for the service of further evidence by each party and may make a temporary order to protect both parties' interests to the date of the hearing.

After the hearing, the court will usually order the unsuccessful party to compensate the successful party for the costs or legal fees and other expenses that it may have incurred.  A day before the hearing each party serves on the other schedules (or details) of the costs that it wishes to recover.   There is usually a heated discussion as to how much of the successful party's costs should be allowed.

There is a right of appeal to the Court of Appeal against the decision of the applications judge with the permission of that judge or of the Court of Appeal.  As injunctions are an exercise of the applications judge's discretion the appellant has to show an error of law leading to injustice in order to disturb the decision of the court below.

There are two special injunctions that are made in intellectual property disputes.   One is a search order where a respondent is ordered to open his or her premises and allow a team consisting of a supervising solicitor (a neutral solicitor appointed by the court) and a team of experts and solicitors form the applicant's law firm to search his or her computer, phone and paper records for relevant evidence.  The other is a freezing injunction where the respondent is ordered to disclose all his or her bank accounts and other assets and restrained from touching them except for normal business or living expenses and paying for legal services to defend the action.   Examples of a freezing injunction and a search order appear in the Annex to Practice Direction 25A - Interim Injunctions.

Search orders are made where the court has reason to suspect that the respondent would hide or destroy relevant evidence and freezing injunctions where it fears that the respondent would transfer abroad, hide or dissipate its assets to avoid a judgment.  Applications for such orders are made in secret and without notifying the other side.  As the respondent is absent from the hearing, the applicant has a duty to dislcose to the judge every fact or matter within its knowledge that could be relied upon by the respondent.  Should it fail to do so any order that the court may have made can be dissolved and the applicant ordered to compensate the other side.

Anyone wishing to discuss this article or injunctions generally should call me on 020 7404 5252 during office hours or send me a message through my contact form,

Tuesday, 16 April 2019

Enforcing Intellectual Property Rights

Cardiff Law Courts
Author: Ham II

Licence Creative Commons Attribution-Share Alike 3.0 Unported
























States grant patents to inventors to encourage them to share their inventions with the public after they have had a reasonable opportunity to recoup their investment in R & D and, with any luck, a little bit extra. Similarly, copyrights are granted to encourage publishers to disseminate works of art or literature.  Trade marks are a bit different as they indicate the source of goods and services in which consumers, as well as suppliers, have an interest. It is perhaps for that reason that WTO members are required by an annexe to the agreement setting up that organization to treat counterfeiting (trade mark infringement on an industrial state) as an offence.

Because intellectual property rights are intended primarily to benefit rights holders it is they who have primary responsibility for enforcement.  In Wales and England (as in most countries) that means bringing proceedings in the civil courts.  Remedies include injunctions (orders by a judge not to do something or, occasionally, to do something on pain of fine or imprisonment for disobedience), damages (compensation for past wrongdoing) or an account of profits (disgorging ill-gotten gains), surrender of all infringing articles and costs (a contribution to the successful party's legal fees). 

As parties to disputes in Wales and England decide the issues to be determined and the evidence to be considered, civil litigation there is much more expensive than on the continent where the judge chooses the issues to be considered and the evidence he or she wants to hear.  According to TaylorWessing's patent map, a patent infringement action in London can cost anything from £200,000 to £1 million compared to €200,000 to €800,000 in France, €100,000 to €200,000 in Germany, €75.000 to €200,000 in the Netherlands and €2,530 to €375,000 in Switzerland.

Claims for patent, registered or registered Community design, semiconductor topography or plant breeders' rights infringement have to be brought in the Patents Court or the Intellectual Property Enterprise Court ("IPEC").  Both courts are based in the Rolls Building off Fetter Lane in London but paragraph 4 of the Patents Court Guide and paragraph 1.5 of the IPEC Guide state that the judges off both courts are ready and willing to sit outside London in order to save time and costs. That has only happened once in the case of each court.  In Hadley Industries Plc v. Metal Sections Limited, Metsec (UK) Limited [1998] EWHC Patents 284 (13 Nov 1998) Mr Justice Neuberger (as he then was) sat in Birmingham as a judge of the Patents Court.  In APT Training & Consultancy Ltd and another v Birmingham & Solihull Mental Health NHS Trust [2019] EWHC 19 (IPEC) (9 Jan 2019) Judge Melissa Clarke sat in Birmingham as a judge of IPEC.

Both the Patents Court and IPEC are specialist courts within the Chancery Division of the High Court of Justice with judges who have either practised at the IP bar or otherwise acquired expertise in IP. IPEC is for claims of £500,000 or less that can be tried in no more than 2 days. The costs that can be recovered in IPEC from an unsuccessful party are capped at £50.000.

Claims for infringement of all other IP rights can be brought either in London or a town or city with a Chancery District Registry. Wales has Chancery District Registries in Cardiff, Caernarfon and Mold though the courts in Caernarfon and Mold do not have jurisdiction to hear trade mark disputes. Unlike the Patents Court, IPEC hears cases other than patent, registered and registered Community design, semiconductor topography and plant varieties disputes so long as the claim is for £500,000 or less and the case can be tried in 2 days or less. Again, there is a £50,000 limit on the costs that can be recovered from an unsuccessful party.  Theoretically, both the High Court and the County Court sitting in Cardiff, Caernarfon and Mold have jurisdiction to hear IP cases other than those that are reserved to the Patents Court or IPEC.  In practice,  County Court judges outside London tend to transfer smaller and simpler IP cases to IPEC and the larger and more difficult ones to the High Court.

IPEC has a small claims track to hear claims for infringement of all IP rights except patents, registered or registered Community designs, semiconductor topographies or plant varieties that can be tried in one day where the damages or other monetary remedy is £10,000 or less (see Small IP Claims on the NIPC Law website), The procedure is simpler than in other courts and the costs that can be recovered from an unsuccessful party are limited to just a few hundred pounds.

As for alternatives to litigation, the Intellectual Property Office ("IPO") in Newport has jurisdiction under s.61 (3) of the Patents Act 1977 to hear patent infringement claims where no injunction is sought, though that jurisdiction is hardly ever invoked.  IPO tribunals regularly hear claims for
  • revocation, amendment and declarations of non-infringement of patents, 
  • oppositions to trade mark applications and applications for revocation and declarations of invalidity of granted trade marks and 
  • the cancellation of registered designs. 
The IPO offers a mediation service for all IP disputes. Its examiners will offer non-binding opinions on whether patents are valid, whether they have been infringed and other matters.

The Internet Corporation for Assigned Names and Numbers and several national domain name authorities such as Nominet offer an inexpensive procedure for resolving disputes between trade mark owners and the holders of domain names as I mentioned in Welsh Top Level Domain Names 12 April 2019.  I gave an example of the resolution of such a dispute in Welsh IP Cases: D2016-0485 ALDI GmbH & Co. KG v. Mahfuz Ali 13 April 2019.

As IP litigation is expensive startups and other small and medium enterprises are advised to consider insurance against the cost of bringing and defending IP claims.  I have written extensively on IP insurance most of which is summarized in IP Insurance; CIPA's Paper  1 May 2016 NIPC Inventors Club.

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

Monday, 15 April 2019

"All At Sea!" - Terms and Conditions of Business

Author Tfioreze
Licence Creative Commons Attribution-Share Alike 3.0 unported
Source Wikipedia "Ocean"



















Jane Lambert

Do you remember the fuss over Seaborne Freight when the press found out that its terms and conditions were like those used by takeaway food delivery services?  That happens more often than many would think.  Sometimes it is the fault of the draftsperson who recycles terms he or she has used for a previous client.   Other times, a client lifts the terms from a similar company's website in an attempt to save legal fees.

It is never a good idea.  For a start, terms and conditions are likely to be protected by copyright as original literary works.  Secondly, it is unlikely that clauses meant for one business will be entirely suitable for another. It is a bit like wearing clothes that have been snatched from someone else's washing line.

The primary function of terms and conditions is to regulate risk.   That is not just the risk of liability for loss or damage resulting from something going wrong.  It includes other risks such as the risk of non-payment, non-acceptance of delivery and customers' or suppliers' insolvency.   However, terms and conditions will not exclude or mitigate all risks.  For instance, S.2 (1) of the Unfair Contract Terms Act 1977 precludes exclusion or restriction of liability for death or personal injury resulting from negligence by reference to a contract term or notice.  Liability for other loss or damage can only be excluded or restricted by reference to a contract term or notice only if and in so far as it satisfies a requirement of reasonableness.

Terms and conditions can be compared to the keep of a medieval castle.   The moat keeps out most undesirables such as wild animals and sturdy vagabonds, and the curtain wall keeps out many of the rest, but the last line of defence is the keep.  Best practice can be compared to the moat, insurance to the curtain wall and the terms for those liabilities against which it is impossible to insure.

A good draftsperson will draft his or her terms and conditions with the company's business plan in one hand and its insurance policy in the other.  Ideally, he or she will have spent some time with the company to understand its business, identify the risk areas and ascertain ways of alleviating them. Such an exercise will not be as cheap as lifting another set of terms off another company's website and altering the names but it should be a lot safer and hence more economical in the long run.

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, 13 April 2019

Welsh IP Cases: D2016-0485 ALDI GmbH & Co. KG v. Mahfuz Ali




















Jane Lambert


WIPO (Richard Hill) Case No. D2016-0485 ALDI GmbH & Co. KG v. Mahfuz Ali  20 April 2016

In Welsh Top Level Domain Names 12 April 2019 I discussed the provisions for resolving disputes between trade mark owners and holders of ".wales" or ".cymru" domain names.  I searched the WIPO's database of panel decisions to see whether there had been any disputes relating to either of those TLD and discovered this decision by Mr Richard Hill.

The respondent had registered the domain name <aldi.wales> in 2015 but not used it. The complainant, ALDI GmbH & Co. KG, operated over 9,500 discount supermarkets around the world. It had registered the ALDI as a trade mark in Germany under registration number 1913288 on 26 Jan 1981. Mr Hill noted that that trade mark was famous.  The complainant sought the transfer of the domain name on the following grounds:
"(i) Complainant's trademark has a strong reputation and is widely known, (ii) it is not possible to conceive of any plausible actual or contemplated active use of the domain name by Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation (e.g. prohibition of misleading), or an infringement of Complainant's rights under trademark law, (iii) prior to initiation of the URDP proceeding, Respondent has not reacted to an e-mail of Complainant despite several reminders, (iv) Respondent cannot have ignored Complainant's trademark at the time of registration and (v) there are no indications of any good faith use of the disputed domain name. Therefore Complainant comes to the conclusion that Respondent registered and used the disputed domain name in bad faith."
The respondent did not reply to those contentions.

Mr Hill found for the complainant and ordered the domain name to be transferred to that party. 

Noting that the domain name contained the complainant's trade mark in its entirety, he observed that is generally sufficient to establish identity or confusing similarity for the purposes of the UDRP. Further, the gTLD ".wales" combined with the well-known trade mark ALDI was likely to be understood by Internet users as referring to ALDI geographically located in Wales or near to it.  Mr Hill concluded that the disputed domain name was identical or confusingly similar to a trade mark in which the complainant had rights.

The respondent had not been licensed or otherwise authorized to use the complainant's mark. There was no evidence to indicate that the respondent was commonly known by the disputed domain name. The disputed domain name was not being used. As the complainant had made out an unrebutted prima facie case, Mr Hill found that the respondent did not have rights or legitimate interests in the disputed domain name.

Mr Hill held that the domain name had been registered and was used in bad faith for the following reasons.  First,  the complainant's mark was famous. Secondly. there had been no response to the complaint. Thirdly, the disputed domain name associates the complainant's famous mark with a geographical indicator, the gTLD ".wales", which could lead Internet users mistakenly to believe that the disputed domain name was associated with complainant's activities in that region.

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

Friday, 12 April 2019

Welsh Top Level Domain Names

ICANN's Head Office
Author Coolcaesar
Licence Creative Commons Attribution Share-Alike 3.0 unported
























Jane Lambert

A domain name is a mnemonic for an address on the internet.  It must have at least two elements:
  • a top-level domain ("TLD") such as ".com" or ".uk"; and
  • a second level domain which can be registered with the operator of the TLD registry.
Usually, there is a third level domain such as "www" for "worldwide web."   In a typical "universal resource locator" such as "www.nipclaw.com" the third level domain name is on the left, the second level domain name is in the middle and the top level domain name is on the right.

Top Level Domains
There are two kinds of TLD:
  • ccTLD (country code top-level domains) such as ".au" for Australia, ".cn" for China, ".de" for Germany, ".fr" for France, ".jp" for Japan and ".uk" for the United Kingdom; and
  • gTLD (generic top-level domains) such as ".com" for a commercial organization, ".org" for an organization and ".net" for a network.
A list of country code top-level domains appears here and a list of the original generic top-level domains appears here.

ICANN
The domain name system is managed by a California not-for-profit corporation known as the Internet Corporation for Assigned Names and Numbers ("ICANN") which is located in Los Angeles. ICANN delegates the administration of TLDs to generic and country code top-level domain operators such as Nominet which runs the ".uk" space and Verisign which runs the ".com" space. 

Geographically Specific gTLDs
Country code TLDs were not originally allocated to political subdivisions of countries.  However, in 2005 ICANN authorized the Fundaci√≥ puntCat to sponsor the registration of TLDs ending in ".cat" as URLs for Catalan language sites or sites about Catalonia.  Further, in 2007 it authorized the registration of ".asia" TLDs for URLs for sites about Asia or the Pacific.  The ".cat" and ".asia" TLDs were not ccTLDs but gTLDs designating specific geographical areas.

New gTLD
In 2012 ICANN invited bids for new gTLDs. These could include TLDs for cities such as ".london" and ".tokyo" and regions such as ".scot" as well as brands and generic names like ".top", ".loan" and ".xyz".  Nominet bid successfully for the right to launch ".cymru" and ".wales" registration services and entered agreements with ICANN for the operation of the ".cymru" and ".wales" TLD spaces on 8 May 2014.

Nominet's Welsh Domain Name Registration Services
Nominet operates its ".cymru" and its ".wales" registration services separately from its ".uk" services.  It markets those services through separate Welsh and English language websites at eincartrefarlein.cymru and ourhomeonline.wales. The sites promote ".cymru" and ".wales", provide "whois" searches and link to a blog.  Nominet does not register ".cymru" or ".wales" domain names directly. Instead, it introduces applicants to registrars that offer registration services for such TLD.

UDRP 
ICANN requires all operators of gTLD spaces to oblige their registrars to incorporate provisions for resolving certain disputes between trade mark owners and domain name holders known as the Uniform Domain Name Dispute-Resolution Policy ("UDRP") into their domain name registration agreements.  This is quite separate from the Dispute Resolution Service that Nominet offers for the resolution of similar disputes that relate to ".uk" ccTLDs.

Applicant's Representations
Every applicant for the registration or renewal of a ".cymru" or ".wales" domain name must make the following representation and give the following warranty to his or her registrar in accordance with paragraph 2 of the UDRP:
"By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights."
The last sentence is perhaps the most important part of this provision.   It is the applicant's responsibility and not the registrar's or Nominet's to ensure that the registration if the domain name will not infringe any other person's trade marks or other intellectual property rights.

Cancellations, Transfers and Changes
Paragraph 3 of the UDRP entitles the registrar to cancel, transfer or otherwise make changes to a domain name registration in any of the following circumstances:
(a)    the domain name holder or his or her agent asks the registrar to make such a change in writing,
(b)    a court or arbitrator of competent jurisdiction orders such a change,
(c)    such a change is ordered by a panellist in an administrative proceeding, or
(d)    in accordance with any other provision of the registration agreement

Administrative Proceedings
Paragraph 4 (a) of the UDRP provides:
"You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present."
Those proceedings are determined in writing by one or more panellists who are appointed by an accredited domain name dispute resolution service provider.  There is more information about domain name disputes in my article of 15 July 2017 in NIPC Branding,

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

Wednesday, 10 April 2019

Anglesey to celebrate World IP Day
















Jane Lambert

The island of Anglesey just off the North Wales mainland may not have a very large population or land area but its Menai Science Park (M-SParc) is almost at the centre of the World Intellectual Property Organization's map.  If you hover your cursor over the British Isles, you will find the following mention:
"name
World IP Day 2019 Celebration
description
The Menai Science Park organizes a lunchtime introduction to intellectual property to be given by Mrs. Jane Lambert of NIPC Law, Mr Steve Livingston of IP Tax Solutions and Mr Huw Watkins of BIC Innovation.
Date: April 26, 2019
Link: http://bit.ly/2UuZVtp"
The World Intellectual Property Organization ("WIPO") is the United Nations's specialist agency for intellectual property.  Formed originally from a merger of the secretariats of the Paris and Berne Conventions, the WIPO is now the guardian of most of the world international agreements on intellectual property offering a wide range of services to its 192 member states and their nationals.
On the 26 April of every year, it organizes a worldwide festival of events to celebrate the anniversary of the coming into force of its founding convention.  As the WIPO notes, Anglesey's contribution to this worldwide event will be a lunchtime workshop on copyright and other intellectual property law will take place at M-SParc between 13:00 and 14:00 on 26 April 2019. The speakers will be Steve Livingston of IP Tax Solutions, Huw Watkins of BIC Innovation and me.
M-SParc opened its doors on 1 March 2018 and has already attracted some great businesses.  You can find more information about it in this film
Anyone wishing to discuss this article or IP generally can call me on 020 7474 5252 during office hours or send me a message through my contact form.

Saturday, 6 April 2019

Welsh IP Cases - Nomination Di Antonio E Paolo Gensini SNC and Another v Brealey and Another




















Jane Lambert

Case   Nomination Di Antonio E Paolo Gensini SNC and Another v Brealey and Another

Date   13 March 2019

Reference  [2019] EWHC 599 (IPEC)

Areas of Law   Trade Marks and Passing Off

Court   Intellectual Property Enterprise Court,  His Honour Judge Hacon

Connection with Wales    Defendants based in Caerphilly

Facts   The claimants import high-quality charm bracelets consisting of a frame and detachable and interchangeable charms from Italy which they distributed in the UK through a chain of authorized dealers and online under the NOMINATION brand.  They protected their brand by registering the word NOMINATION simpliciter and in a stylized form as European Union and international trade marks for  "precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments" in class 14.  They distributed their merchandise in sturdy, stylish boxes prominently branded with the NOMINATION mark that exuded quality.

The defendants ran an online-only jewellery business. They offered their own similar charm bracelets under their own registered trade mark with charms that were interchangeable with the claimants' charms.  They also purchased genuine NOMINATION bracelets which they disassembled and re-sold as individual NOMINATION charms.  They advertised their own and NOMINATION goods on eBay as
"1 x Family Superlink Daisy Charm 1 x Genuine Nomination Italian Charms"
which gave the impression that both parties charm bracelets came from the same source. The defendants supplied the claimants' charms not in their original packaging but in blister packs or polythene bags.

Claim  The claimants claimed that the defendants had infringed the claimants' trade marks by purchasing the claimants' bracelets, disassembling them, advertising the claimants' individual charms together with their own bracelets and charms on eBay by reference to both their own and the NOMINATION trade marks and supplying the claimants' products not in their original packaging but in the defendants' blister packs or polythene bags.  The claimants also claimed that the defendants had passed off their bracelets and charms as the claimants' goods.

Defence  EU and UK trade mark laws provide that a trade mark is not infringed by a resale of branded goods by reference to the mark once the goods are placed on the market with the trade mark owner's consent.   The defendants replied that the claimants had exhausted their rights in their trade marks by placing their bracelets on the market.  As the defendants had bought the claimants' bracelets from authorized dealers there were entitled to dismantle them and sell genuine NOMINATION charms under the NOMINATION mark.

Response   The claimants had not given their consent and they had a legitimate reason to object to the resale of their charms as they were supplied in inferior packaging which detracted from their reputation for quality.

Judgment   Judge Hacon found that the defendants had infringed the claimants' trade marks by referring to those trade marks in their eBay ad and by repackaging the claimants' products in cheap packaging.  The ad gave the impression that the claimants' products came from the same source as the defendants'.  That was also an actionable misrepresentation for the purposes of passing off.  Such misrepresentation had led to confusion which damaged the claimants' business.  The judge also found that the repackaging of the claimant's charms in inferior packaging was a legitimate reason for opposing further reference to the claimants' mark in that such repackaging detracted from the claimants' reputation for quality. However, His Honour did not find the purchase and dismantling of charm bracelets and the resale of individual charms to be actionable per se.  In his view, the claimants impliedly gave their consent because the whole point of a charm bracelet is that individual charms can be changed or even taken apart and reassembled from time to time.

Further Reading    Jane Lambert   Trade Marks and Passing off - Nomination Di Antonio E Paolo Gensini SNC v Brealey and Another  5 April 2019 NIPC Law

Contact   Jane Lambert  Tel 020 7404 5252

Tuesday, 2 April 2019

Whom you gonna call? IP Professionals and what they do

Author: Biswarup Ganguly
Licence: Creative Commons Attribution-Share Alike 3..o Unported
Source Wikipedia Telephone








































Jane Lambert

In many respects, intellectual property ("IP") is quite unlike other areas of law.  For instance, the remedies for infringement can be quite draconian and IP rights owners can be sued for threatening patent. trade mark, registered design or unregistered design right infringement proceedings if they can't make good their threats.  It is therefore imperative to obtain good, specialist, legal advice.  Such advice is available from patent and trade mark attorneys and barristers and solicitors specializing in IP.

What is the Difference between a "Patent Agent" and a "Patent Attorney"?
In the United Kingdom "attorney" is another word for "agent."  For instance, we talk about "a power of attorney" which is simply an authorization for one person to act on behalf of another.  The person holding a power of attorney is called an "attorney".  Often he or she may be a solicitor because of the nature of the transactions to be entered but that is not always the case.

In other countries (particularly the USA) "attorney" means "lawyer".  There used to be lawyers who called themselves "attorneys" in England and Wales until the late 19th century.  Nowadays, all such lawyers are "solicitors".    In the USA there is a clear distinction between "patent attorneys" who are lawyers specializing in patents and "patent agents" who prosecute patent applications.  In the UK the terms "patent agent" and "patent attorney" are used interchangeably.  The same is true of "trade mark agents" and "trade mark attorneys".

What is a Patent Attorney?
Patent attorneys draft and file applications for patents and other intellectual property rights. Many offer other services such as advice on the subsistence of copyright and related rights, licensing and enforcement.  Some are entitled to conduct litigation or appear as advocates in the civil courts.  There is, therefore, a measure of overlap between their services and those of other IP professionals.  Their expertise lies in drafting patent specifications in a way that meets all the requirements of the Patents Act 1977 while claiming the maximum protection for the invention.  No other IP professionals are trained to do that though barristers specializing in IP ("patent counsel") are often asked to advise on and sometimes draft or redraft individual claims. Patent attorneys can practise as sole practitioners, in partnership or limited companies or as in-house advisors.  Their professional body is the Chartered Institute of Patent Attorneys (until recently "the Chartered Institute of Patent Agents") ("CIPA") and they are regulated by the Intellectual Property Regulation Board ("IPReg).  A searchable database of patent attorneys can be accessed through the "Find a Patent Attorney" page on the CIPA website.   According to that database, there are a number of patent agencies around Cardiff and other parts of South Wales but none in the rest of the principality. The nearest firms to Bangor are in Chester and Liverpool and the nearest to Aberystwyth are in Wolverhampton and Birmingham.

What is a Trade Mark Attorney?
Trade mark attorneys draft and file applications for trade marks and registered designs. They also advise on the subsistence of copyright and related rights and on the enforcement and licensing of other IP rights. As is the case with patent attorneys, many have rights to conduct litigation and rights of audience. Many trade mark attorneys are also qualified as patent attorneys.  Some are also qualified as solicitors. Their expertise lies in drawing up trade mark applications that are most likely to survive an examiner's scrutiny.  Trade mark attorneys may practise as individuals, in partnerships or limited companies or as in-house advisors. Many practise as partners or employees of patent attorneys. Some as employees of law firms.  Their professional body is the Chartered Institute of Trade Mark Attorneys ("CITMA") (formerly the Institute of Trade Mark Agents). They are also regulated by IPReg,  A searchable database of trade mark attorneys is accessed through the "Find a Trade Mark Attorney" page of the CITMA website. According to that database, there are three trade mark attorneys in Cardiff and one in Chepstow.

IP Solicitors 
IP solicitors are solicitors who specialize in IP law. They advise on joint ventures, franchises, licences and other transactions relating to IP. They draw up and review agreements and other legal instruments. They also bring and defend infringement, revocation, invalidity, threats and other proceedings in the Senior Courts.  Most but by no means all of the leading law firms specializing in IP, belong to the Intellectual Property Lawyers Association ("IPLA")  None of those firms is headquartered in Wales. Solicitors are regulated by the Solicitors Regulation Authority ("SRA").

Patent Counsel
Traditionally, barristers specializing in intellectual property have advised solicitors and patent and trade mark attorneys on difficult points of law, drafted complex legal instruments and appeared for them in the Patents Court, Intellectual Property Enterprise Court ("IPEC"), the Intellectual Property List of the Chancery Division, hearing officers in the IPO, arbitrators and other tribunals. Since 2004 it has been possible for businesses and individuals to consult or instruct barristers directly. The unique advantage of the Bar is that most of the judges of the Senior Courts are recruited from its numbers. Since it is the judges who interpret and develop the law nobody is in a better position to anticipate how a particular issue will be decided than those who have appeared before those judges and possibly against or with them when they were barristers.  Most of the barristers who specialize in IP belong to the Intellectual Property Bar Association ("IPBA").  All barristers are regulated by the Bar Standards Board.  There is more information on this topic in IP Services form Barristers 6 April 2013, updated 16 May 2017 NIPC News.

Pro Bono Services
The four professional organizations (that is to say, the IPBA, IPLA, CIPA and CITMA) have collaborated to provide free advice and representation for those involved in infringement and other IP disputes who cannot afford to pay for their members' services through an initiative known as IP Pro Bono.  Members of Advocate (the Bar's pro bono service) appear in court upon instructions from members of IP Pro Bono.

IP Clinics
Advice on non-contentious issues is available through a network of IP Clinics where inventors and other members of the public can book a free consultation with a patent attorney.  There is as yet only one  IP Clinic in Wales.  That is located in the Intellectual Property Office at Newport. There are, however, others in Liverpool and Birmingham which may assist those living in North and Mid Wales.

Business and IP Libraries
A network of public libraries has teamed up with the British Library's Business and IP Service to provide free access to databases, market research, journals, directories, articles and reports for entrepreneurs and small business owners.  There is a programme of free and low-cost events and workshops on a range of topics including business planning, marketing and intellectual property at each of the libraries. The nearest Business and IP Centre for North Wales is at Liverpool.  There is also a Business and IP Centre in Birmingham.

Contact
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.

Monday, 1 April 2019

Trade secrets and Non-Disclosure Agreements

Glass of Chartreuse
Author Ospalh 



























Jane Lambert

If you have acquired business or technical information that is either secret or not generally known the unauthorized use or disclosure of which would either harm you or benefit a competitor, you have what is known as a "trade secret".

For many years, the common law (that is to say, law made by judges and not by Parliament) has obliged those who receive trade secrets in confidence ("confidantes") to use such information only for the purpose for which it was imparted and not to make further use of it or disclosure it further.  Such obligation is known as "the obligation of confidence" and the law that imposes it is known as "the law of confidence,"

Since 9 June 2018, the law of confidence has been supplemented by Directive 2016/943 ("the Trade Secrets Directive") which has harmonized trade secrecy law across the European Union.  Art 2 (1) of that Directive defines a trade secret as:
"'......... information which meets all of the following requirements:
(a) it is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question;
(b) it has commercial value because it is secret;
(c) it has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret,"
Both the law of confidence and the Directive require those who own or control such information to keep it secret.  Once it enters the public domain otherwise than through an unauthorized disclosure the obligation of confidence and the Directive cease to apply.

Although there are other circumstances in which an obligation of confidence can arise, the usual way is to require the confidante to sign a confidentiality or non-disclosure agreement ("NDA") before you give him or her the information.  NDA can be stand-alone agreements or they can form part of some other agreement such as a contract of employment or a consultancy, distribution, franchise, joint venture, licence, technical transfer or other commercial agreement. Lawyers and patent and trade mark attorneys are often asked to draft general purpose agreements but that is very hard to do and sometimes dangerous as an agreement that is drawn too broadly may not be enforceable.

The best sort of confidentiality agreements specify the information to be disclosed very precisely.  They will state whether the information is to be disclosed in writing, in which case the agreement will identify the document or data file, or orally, in which case it will state the date, time and place of the conversation, the persons present and so on.  The confidante will acknowledge that the information is secret and that he or she will receive it in confidence.  Should there be any possibility that the information may already be known to the confidante there should be a procedure for him or her to say so within a limited time and for some method of expert determination, arbitration or other ADR to resolve disputes.  The reason for, and purpose of, the disclosure should be made clear.  If the confidante can copy a file or document or consult another person his or her permission to do so and any conditions, such as obtaining further confidentiality undertakings, should appear in the agreement.  The confidante must promise to make no further use or disclosure of the information and to hand back any documents, files or copies by a certain date and time.  Finally, the confidante should agree to submit to the courts of Wales and agree that any disputes will be determined in accordance with Welsh and English law.

The agreement must be policed rigorously.  If documents have to be returned by a certain day you should chase them as soon as the deadline arrives.  If third parties are to receive the information in confidence you must make sure that they have signed confidentiality agreements.   If you have any reason to fear that your agreement has been breached you should raise it with the confidante at once. If you are not satisfied with his or her explanation then you must consult solicitors.  If the confidante still does not satisfy you then your solicitors must apply to the court for an order known as an "injunction" requiring the confidante to honour his or her promises with the threat of a fine or imprisonment if he or she disobeys.

All inventions start off life as trade secrets otherwise they will have ceased to be "new" by the time the inventor applies for a patent.   There are, however, many technical advances that remain trade secrets forever.   That may be because the law makes it difficult to patent them such as the source code for computer software which is specifically excluded from the definition of patentable invention as such or because the law of confidence provides better protection than patents for the asset in question.   A good example would be beverages since recipes cannot easily be reverse engineered.  The recipe for Chartreuse, for instance, has been kept secret for hundreds of years because it is known only to two monks at any one time. Many attempts have been made to replicate the liqueur but none has come close.

Should you wish to discuss this article or trade secrecy in general, call me on 020 7404 5252 during office hours or send me a message through my contact form.