Company-made trade mark law – the Amazon Brand Registry

With the introduction of the Amazon Brand Registry, see https://brandservices.amazon.co.uk/, Amazon has, in effect, created its own trade mark law, which seems to be a first, for a commercial enterprise.  According to the information provided on their website, the aim of the system is to “help you protect your registered trade marks on Amazon and create an accurate and trusted experience for customers”.

The Brand Registry really seems to have gained momentum over the past few months but our experience with the system is that there are a number of wrinkles to be smoothed out and this note is intended to summarise some of the issues we’ve come across.

1. Misrepresenting a trade mark as registered

In most jurisdictions, it is a criminal offence to misrepresent a trade mark as registered.  The Amazon Brand Registry requires a registrant to provide the brand name it has registered as a trade mark, in the form of a word mark, or a figurative mark containing word elements that match the brand name, and the trade mark number – for the USA, there is a requirement that the trade mark is registered on the Principal Trade Mark Register.  The writer has, however, come across incidents where a client has sought registration in the Amazon Brand Registry based on a pending application for registration and that application doesn’t seem to have been weeded out by Amazon before the verification code was issued. The fact that a mark must be registered to appear in the Amazon Brand Registry means that the trade mark attorneys have to consider whether they refuse to pass on a verification code to a client, when they know that the trademark in question is not registered in the jurisdiction concerned.

2. Client Confidentiality

Trade mark registrations can last for ever, and the identity of a client in connection with a given trade mark registration often changes over time, although trade mark attorneys are not always kept advised of this.  This can lead to an unknown party contacting the trade mark attorney firm, demanding a verification code, which puts the trade mark attorney in an awkward position. Nobody wants to be unhelpful, but equally, we can’t simply disclose confidential and commercially important information to individuals and firms we have never had contact with.

3. Keeping in contact with a trade mark attorney representative, when the Amazon Brand Registry request is submitted

In nearly all cases, the first we hear regarding an Amazon Brand Registry request, is an email from Amazon themselves.  Although Amazon state in their emails that they have told the applicant for Brand Registry protection that they should contact their trade mark attorney, hardly any do so.  For us as a UK based firm, this is particularly embarrassing when Amazon Brand Registry emails are sent to US trade mark attorneys, recorded as a representative in connection with our client’s US registrations. We appreciate that it would probably be too complicated, at the technical level, for Amazon to include a functionality in their Brand Registry request form, to enable applicants automatically to notify their trade mark representative of the fact of submission of a Brand Registry request.  The need to notify the trade mark representative should be made much more prominent, though.

4. Control of Amazon Brand Registry listings

The information supplied by Amazon suggests that only the registered owner of the trade mark should apply to enrol a brand in the Brand Registry.  We have, however, encountered instances of trade mark owners allowing their customers to submit Amazon Brand Registry applications.  This is not necessary, as once a Brand Registry listing is made, the user who registered the brand and/or the user who has been designated as the administrator may submit a request to add additional users to the account, including agents.  Given the fact the Brand Registry is a recent phenomenon, it will be some time before the effects of its existence really play out.  However, it is a fundamentally bad idea to let anyone have control over any aspect of brand protection, other than the registered owner of the brand, so we would encourage all trade mark owners to take responsibility for Amazon Brand Registry listings themselves.

Authored by Cathy Ayers[:]

L’Oréal in court: You might be worth it, but the prosecution history isn’t

An interesting decision was recently given by the UK High Court, in which RN Ventures was found to infringe L’Oréal’s patent for a skin care device.

It was argued that the prosecution history of the patent application should be used to determine the scope of the patent’s claims. The Court re-iterated the test provided in the recent Actavis case which stated that the prosecution history should only be taken into account if;

“(i) the point at issue is truly unclear if one confines oneself to the specification and claims of the patent, and the contents of the file unambiguously resolve the point,

or

(ii) it would be contrary to the public interest for the contents of the file to be ignored”.

Because the wording of the claims was held to be clear, the prosecution history was of no assistance in determining their scope.

It was also emphasised that “reference to the prosecution history is the exception, and not the rule” and that “parties should think carefully in future before incurring additional costs in arguing about the prosecution history”.

Authored by Nick Bennett [:]

Intellectual property law specialists back the UK’s top businesswomen for the third year running

A firm of intellectual property law specialists has lent its backing to the UK’s top businesswomen for the third year running, as it confirmed that it will once again be sponsoring the Best Customer Service category at the Best Business Women Awards this year.

Cathy Ayers, a Partner and Chartered Trade Mark Attorney at Cleveland Scott York, which has offices in St Albans, the City of London, Reading and Brussels, took part in the launch of this year’s awards at the Aubrey Park Hotel in Hertfordshire, on Friday 23 March.

Last year, the firm presented the award to Nevina Holland of Peekaboo Studios, which she had built up in order to offer families a relaxed and homely atmosphere in which to have photographs taken.

Cathy Ayers said: “The achievements of women in business are too often not given the recognition they deserve, which is why we are delighted once again to lend our backing to the Best Business Women Awards this year.

We would encourage all businesswomen with a commitment to delivering exceptional levels of customer service to enter the Customer Service category.

We are looking forward to reading some strong entries in the Best Customer Service category and I suspect we will be faced with some difficult choices ahead of the awards evening in the autumn, where I look forward to congratulating the finalists and overall winner.”

Anyone wishing to enter the Best Business Women Awards can do so by visiting www.bestbusinesswomenawards.com and submitting an entry before the closing date of 31 July 2018.[:]

Landmark Decision For Landmark Graphics Corporation?

Computer Implemented Inventions at the UK Intellectual Property Office

In 2014, Landmark Graphics Corporation (a Halliburton company) filed a series of non-convention PCT applications relating to various techniques for assessing petroleum reservoir performance.  Landmark then took the unusual step of filing national phase patent applications at the UK Patent Office rather than the European Patent Office (EPO), with its quite significantly different approach to computer implemented inventions.  Whilst this has probably given Landmark a higher hurdle to overcome (and it is pleasing to note that they were generally successful with these applications), it has had the beneficial side effect that third parties now have a large number of recent decisions to assess the UK Intellectual Property Office’s current approach to excluded matter.

BL O/155/18 is one of a set of decisions (the others being BL O/112/18, BL O/138/18, BL O/140/18, BL O/143/18, BL O/148/18 and BL O/154/18) which between them relate to sixteen UK applications, and which were issued in early 2018.  In this particular decision, the Hearing Officer considered whether what had been added to human knowledge was merely a computer program or mathematical method as such. He found that “the invention provides a flexible way of altering the way in which … geophysical data is presented to a user and is clearly directed to the technical field of endeavour of visualising characteristics of petroleum reservoirs.”  There was also some discussion of errors being reduced and thus “the object [being] changed or manipulated in some way even though the underlying … data is not changed” – perhaps an echo of the old US Bilski machine or transformation test.

The Hearing Officer analysed the UK Patent Office Examiners’ approaches under the well-known Aerotel 4-step test, and generally concluded that the Examiners had applied this test too narrowly.  The applications were therefore remitted to the Examining Sections for further consideration of novelty, inventive step, clarity and support issues.  The Hearing Officer looked at EPO Boards of Appeal case law and commented that the approach used by the Examiners based on the UK Aerotel test may have been inconsistent with the UK Courts. Perhaps we will now see a revision of the UK manual of patent examining practice and a more relaxed approach to computer implemented inventions that will be more consistent with European Patent Office case law and, arguably, the UK Courts.

For more detailed information the main approach is set out in BL O/112/18.

Authored by Andrew Mackenzie[:]

EPO to standardise supplementary search fee from 1 April 2018

The European Patent Office (EPO) has recently confirmed that, from 1 April 2018, it will no longer offer a reduction in the search fee for European regional phase applications searched by non-European patent offices during the PCT international phase. Currently, the EPO offers a search fee reduction for European regional phase applications which have been searched by any of the following offices during the international stage:

  •  The United States Patent and Trademark Office
  • The Japanese Patent Office
  • The Korean Intellectual Property Office
  • The Chinese Intellectual Property Office
  • The Federal Service for Intellectual Property, Patents and Trademarks (Russian Federation)
  • The Australian Patent Office

The reduction of €190 amounts to a saving of approximately 15%. Accordingly, if applicants are intending to pursue European regional phase protection for any PCT applications searched by the above offices, it may be prudent to deliberately file the European regional phase application prior to April 2018, before the full search fee becomes payable.

Authored by Hazel Stewart[:]

UK Joins the Hague Agreement for Industrial Designs

As of 13 June 2018 there will be more flexibility for UK and international IP holders wishing to apply for UK registered designs. Following deposit of its instrument of ratification in Geneva on 13 March 2018, the UK is acceding to the 1999 Hague Agreement Act. The accession will become effective on 13 June 2018, meaning that the UK can then be separately designated in international design applications.

The UK had been in discussions about joining the Hague Agreement for some time and the issue recently gained even greater significance in light of the Brexit vote. Alicia Instone has been working with the UK Intellectual Property Office through her activities with the Chartered Institute of Patent Attorneys to assist in making this a reality.

The Hague Agreement for industrial designs allows applicants to register a design in any number of the contracting parties through a single application. Applications are most frequently filed at the International Bureau at the World Intellectual Property Organisation and the system helps simplify and streamline international protection by enabling single-language applications and centralising fees. The UK is the 68th member of the Hague Union.

UK businesses have had to access the Hague Agreement since 2008 through the EU’s membership, but this is unlikely to continue following Brexit. The UK’s national ratification hence ensures that UK businesses, both pre and post Brexit, can benefit from the Hague Agreement and use it to pursue design registrations in the UK and the EU, without the need for separate representation.

Authored by Alicia Instone[:]

SKYKICK – The High Court requests a ruling from the CJEU on whether there is, in essence, an “intention to use” requirement in EU trade mark law.

By way of background, all applicants for registration of a trade mark are required to specify in their application the goods and services in respect of which they seek to register their mark. The wider the range of goods/services specified, the larger the number of later businesses that may be prevented from using a mark by the applicant. Accordingly, the wider the specification, the wider the scope of infringement rights.

UK law has long included an explicit requirement that an applicant have an “intention to use” its trade mark on the goods/services specified. This seeks to ensure that, on the one hand, applicants are able to protect their mark in respect of goods/services connected with their business, but, on the other, also to ensure that later businesses do not face illegitimate obstacles in selecting and clearing their own trade marks for use. Where there is not such an “intention to use” requirement, the risk is that the trade mark registers become cluttered – increasing searching costs for later entrants.

EU trade marks have never been subject to an explicit requirement that the applicant have an “intention to use” its trade mark, though there have been some cases where the EU General Court has come close to suggesting that there must be some commercial rationale for the specification. Nevertheless, as things stand, the specification of a typical EU trade mark is usually considerably longer (covering a wider range of goods/services) than the equivalent in the UK or United States.

This issue has come to the fore in a case between the well-known TV broadcaster and broadband provider, Sky Plc, and an IT support specialist called SKYKICK. (Skykick assists businesses with, for example, migration of its e-mail accounts to the cloud-based Microsoft Office 365 system.)

Sky Plc’s registrations for its SKY trade mark cover broad terms such as “computer software” and “telecommunications services” and, in some cases, they cover thousands of terms, many of which (e.g. “luggage”) are not closely related to its existing business. Given the broad scope of the SKY registrations, the UK court held that the use of the SKYKICK trade mark had (in principle) infringed the SKY registrations. Skykick had nevertheless also challenged the SKY registrations on the basis that:

  • terms such as “computer software”, “electronic mail services” and “telecommunications services” in the specification of the SKY registrations are not sufficiently precise and specific – with the result that the SKY registrations are invalid for these goods and services; and
  • in the alternative, that SKY could not have had an “intention to use” its marks for all the goods specified, with the result that the SKY registrations were invalid as a whole as being filed in bad faith, or invalid in respect of those goods where Sky Plc had had no intention to use.

If Skykick were successful in its validity challenges, Sky’s infringement case would fall away or be very much weakened.

The UK court made findings of fact that there were at least some goods within the SKY registrations where Sky Plc had not had an intention to use at the time of filing of its marks. And it also held that terms such as “computer software” were not, in its view, sufficiently precise and specific. Nevertheless, it held that it required a determination from the Court of Justice of the European Union (CJEU) as to whether, as a matter of law, it could declare part of a registration invalid (where the terms used were not sufficiently precise) and separately whether it could declare invalid a registration (either as a whole or in part) for bad faith where the proprietor had not had an intention to use its mark in respect of the goods/services specified.

Given that the EUIPO has accepted EU trade marks including terms such as “computer software” for the past twenty years without objection, a finding from the CJEU that terms such as those are no longer acceptable would cause a very dramatic shift in the language used in specifications. And again if the CJEU were to hold that an applicant for an EU trade mark (or any national trade mark in the EU) was required to have an intention to use its mark in respect of the goods/services specified (or risk a bad faith finding), that again would have a radical effect on the way current trade mark applications in Europe are prepared and filed.

On the face of it, it is ironic that it is the UK court that is seeking approval from the CJEU to rein in the scope of trade mark registrations (given that the UK was recently assessed, in the US Chamber of Commerce’s Annual IP Index, as the number one jurisdiction in the world for trade mark protection). The better view may be, however, that the UK court is seeking to create a better balance between trade mark interests and, in particular, is seeking to address the problem of the cluttering of trade mark registers which was not addressed (or even recognised) by the EU Commission in its last round of trade mark law reforms.

Authored by Peter Houlihan[:]

SULETS case demonstrates importance of IP Enterprise Court in widening access to justice

The recent case of Student Union Lettings Limited and Essex Student Lets Limited, http://www.bailii.org/ew/cases/EWHC/IPEC/2018/419.html demonstrates the importance of the London-based Intellectual Property Enterprise Court in providing a cost effective dispute resolution forum in the United Kingdom.  The judgment reveals that the Claimant here had an income of around £464,000 in 2014/15 and the Defendant is quoted as having a turnover of around £47,000 for the period from 29 September 2014 to 29 March 2015.  The cost of High Court litigation would most likely have been beyond both parties but they were, nevertheless, able to have their dispute determined by an Intellectual Property specialist court.

The dispute arose from the rebranding of the Defendant’s business, in autumn 2014, to SU LETS.  The Claimant had been using the term SULETS in connection with essentially the same business since 2011/2012 and registered the trade mart SULETS as of 27 March 2015.  With the Claimant’s registration of SULETS being dated after the date on which the Defendant rebranded its business to SU LETS, there was a question over whether that prior use of the SU LETS mark gave the Defendant a defence to an action for trade mark infringement, the Judge having decided that the marks SULETS and SU LETS were identical, and that in the absence of any defence, there would be a finding of trade mark infringement.

Although the Defendant had used its trade mark SU LETS prior to registration of the trade mark SULETS by the Claimant, this did not save them, because of the Claimant’s even earlier use of their SULETS mark.  In particular, the Judge found that although the Claimant only offered accommodation letting agency services to the students of the University of Leicester and the De Montfort University in Leicester, they had generated a nationwide goodwill in the name by October 2014, because their tenant customers had come from all over the United Kingdom.  In the United Kingdom, there is a long tradition of students going away to a university, which is not located in their home town.  Indeed, many prospective students seem keen to move as far away from their family home as possible. I am fully expecting my daughter to inform me, in due course, that she intends to study in Swansea/Aberdeen!

The claim in relation to trade mark infringement and passing off, therefore, succeeded.  As well as demonstrating the benefits of the Intellectual Property Enterprise Court, this case once again highlights the importance of conducting trade mark searches before any rebranding is carried out.  It also highlights the importance of registering trade marks early.  Although the Claimant prevailed in this case, they would have made life a lot easier for themselves, had they sought registration of their trade mark when they started using that sign, back in 2011/12. The Defendant would then have had no prior use case to argue and the matter would certainly have settled before proceedings had to be issued.

Authored by Cathy Ayers[:]

Patent attorney engages with biotech researchers on technology transfer at major European conference

A leading UK-based Chartered Patent Attorney has engaged with some of the top biotech researchers from across Central Europe at a major international conference.

Dr Adrian Bradley, a Partner at Cleveland Scott York, which has offices in the City of London, St Albans, Reading and Brussels, is attending the 3rd Annual BIOSPOT Conference at the Dox Gallery in Prague on Thursday 1 March 2018.

The conference brings together leading biotech researchers with technology transfer professionals to exchange ideas and spread awareness of new discoveries, ideas and inventions.

Technology transfer involves protecting, promoting, funding and partnering innovations with the aim of bringing them to market in commercial applications.

As a Chartered Patent Attorney, Dr Bradley advises on the protection of inventions from unauthorised copying, which is necessary for effective commercialisation and for attracting new revenue streams.

Dr Bradley said: “Biotech research is something that matters to all of us, given its particular importance to medical breakthroughs.

“However, in order to see the latest biotech research translate into improved outcomes for patients, it is important for that technology to make its way out of the confines of the lab and into commercial applications.

“I was encouraged by how engaged the researchers at the conference were with the task of attracting investment and ultimately delivering improvements to people’s health.”

Dr Bradley regularly assists researchers and universities on technology transfer matters, recently attending the Association of University Technology Managers (AUTM) in Phoenix, Arizona and sitting on the Business Advisory Board to the Czech Institute of Organic Chemistry and Biochemistry.[:]