US China Trade Deal

The trade deal signed this week between the US and China is interesting from an Intellectual Property perspective. The agreement is intended to strengthen IP protection in China, by bringing Chinese standards into line with those already present in the US.

Key points include;

Patents:

China shall;

  • permit pharmaceutical patent applicants to rely on supplemental data to satisfy relevant requirements for patentability (e.g. sufficiency and inventive step),
  • implement a system for notifying pharmaceutical innovators that generic companies are relying on data used in innovators’ marketing approvals,
  • introduce patent term extensions for pharmaceutical patents which are delayed by more than 4 years from filing, more than 3 years from the start of examination, or by slow marketing authorization.

Trade Secrets

China shall;

  • ensure that all natural or legal persons can be liable for trade secret misappropriation,
  • shift the burden of proof to the accused party to show that it did not misappropriate a trade secret once a holder of a trade secret produces appropriate evidence,
  • eliminate any requirement that the holder of a trade secret establish actual losses as a prerequisite to a criminal investigation for misappropriation of a trade secret.

Other areas of interest relate to:

  • Piracy and Counterfeiting on E-Commerce Platforms
  • Safeguarding Geographical Indications
  • Preventing bad faith trade marks

It remains to be seen how these commitments will be implemented in China’s Action Plan. Presumably, certain features of the deal, such as patent term extensions, are also US priorities for any trade deal with the UK.

By Nick Bennett

Tinsel guns and other curious Christmas patents

As the festive season approaches, here is a quick look at what seasonal offerings the patent databases had to offer.

Patents of Christmas Past

Title: Automatic Tree Fire Extinguisher
Patent no. US2522020
Patent date: 12 Sept 1950

The predecessor to stringed Christmas lights was the good old fashion candle, but, naturally, there was the risk that the tree could light up in more ways than one.

This patent claims a fire extinguisher designed to automatically put out festive fires. The extinguisher comprises a vertically disposed rod (10) and a decorative sealed fragile container (15) carrying a fire extinguishing liquid. Near top of the rod is a spring (11), held in a forcibly compressed position by a fusable element (18), such as solder. A freely slidable disc (16) is arranged to make contact with the container when the spring is released.

When a tree overheats/catches fire, the temperature of the rod increases. This increased heat causes the fusable element to melt, thereby releasing the spring. The freely slidable disc (16) is forced upwards as the spring pops up. The disc is arranged to collide with the fragile container as the spring is released, causing the container to break and releasing the fire-extinguishing liquid upon the tree.

 

Title: Device for Dispensing Tinsel and the like Adaptable for Decorating Christmas Trees
Patent no. US3494235
Patent date: 10 Feb 1970

What do you do when you find the process of dressing your house in tinsel tedious and tiresome? Fire it through a gun of course.

This next patent claims a device for dispensing tinsel (or similar such material). A tinsel supply is provided at one end of the device (shown here as a roll (30)). A nipping roller (21) guides the tinsel through the device, and a guide arrangement (41, 41’, 44, 44’) guides the tinsel from the nipping roller towards an idler roller (26). A cutting blade (37) sits in a flexed position against the idler roller, so as to trim the tinsel when the device is not in use, and to move to allow free passage of the tinsel past the blade when the deivce is in use.

When the trigger (35) is pressed, a circuit is completed to drive the nipping roller to feed tinsel through the device and towards the idler roller. Pressing the trigger also moves the cutting blade away from the idler roller, such that the tinsel is able to exit the device uninterupted.

Releasing the trigger causes cutting blade to be forced back against the idler roller, cutting the tinsel, and also breaks the circuit driving the nipping roller.

Title: Christmas ornament structure
Patent no. EP3315053
Intention to grant issued on: 15 Oct 2019

An intention to grant a patent related to the humble bauble was issued earlier this year. This patent claims a Christmas ornament structure comprising a hollow glass ball (3) and a ceramic cap (4). The hollow glass ball comprises a blow orifice part (31) which forms an arc-shaped connection with the glass ball. The cap has a body (41), an opening (411) a concavely shaped inner wall (412) and a hollow structure (413).

The blow orifice part of the ball enters the hollow structure (413) of the cap via the opening, and the inner walls of the cap closely fit the arc shaped connection of the ball. The ball and the cap are fixedly bonded.

It is disclosed that the fitting arrangement of the ball and the cap eradicates the need for extra connectors found in conventional baubles and allows fewer weight restrictions on the decoration. The ceramic material of the cap also lends itself to different colours and profiles.

 

 

Title: Turkey Leg Holder
Patent no. EP3277603
Intention to grant issued: 29 Oct 19

With the Christmas feast comes a lot of Christmas leftovers, and sometimes conventional storage containers simply will not do.

An early version of a claim directed towards a turkey leg holder defined a container suitable for holding a turkey leg (70), having a pair of supports for securing the turkey leg within the container and a rotation device attached to the supports to allow rotation of the turkey leg within the container. During prosecution the examiner cited a known container for a sports ball against this claim. After all, a container for a sports ball is suitable for also holding a turkey leg.

The claim was eventually amended to include a number of additional features. The supports are required to be positioned at opposite ends of the container and to be structurally different. The container comprises a rotation device having a rotating grip (28) extending through a stiffening ring (34) and engaging with a spring tube (38) within the container such that when the spring tube rotates the rotating grip also rotates. Further, the spring tube is positioned within a fixed tube (44), with an end of the fixed tube near the rotating grip being configured to engage with the stiffening ring and an end of the fixed tube distal from the rotating grip configured to engage with an end cap (54). Finally, a spring is positioned within the fixed tube and the end cap is configured to put pressure on the spring tube, thereby pushing the rotating grip away from the end cap.

 

Patents of Christmas Future

Could we perhaps expect to see applications for a machine-learning Santa, able to determine the perfect present for every child accurately? Perhaps a genetically modified flying reindeer? Or will we be forever perfecting the humble bauble? Festive patents, like all other patents, appear to cover both small yet practical improvements of known objects as well as weird and fanciful inventions. So here’s hoping that in true inventive spirit, we’re in for more rotating Christmas trees and flying sleighs in the Christmases to come.

An Update on Geographical Indications Post-Brexit

As the finale of the Brexit saga draws near it is high time for IP rights holders to make sure that they will not be caught out by the proposed changes to the various IP regimes.

Patents are unaffected and the position as regards EU trade marks (EUTMs) and Community registered designs (CRDs) is relatively clear in that comparable UK rights will be automatically created out of existing EUTMs and CRDs at no cost to the rights holder.  So far so good then – but what about Geographical Indications (GIs) which are perhaps not at the forefront of people’s minds and might be in danger of being overlooked?

The UK Government’s plan for GIs is to create, at the end of any transition period or in the event of a no deal, an independent UK GI scheme which mirrors the EU GI’s four registers for i) food, drink and agricultural products (including beer, cider and perry), ii) spirit drinks, iii) wine and iv) aromatised wine.

Crucially, all of the 88 EU GIs which are registered in respect of a UK product would be given automatic protection under the new UK regime but no such automatic right will be created for any of the other EU GIs.

This, of course, means that the holders of EU GIs for any non-UK products such as cheese, wine and olive oil would need to re-apply for protection in the UK to ensure that their rights continue to be protected.

Following the UK’s exit from the EU there will be a 9 month transition period during which EU GI holders covering non-UK products can re-apply for a UK GI under the new scheme.  The details of such a UK application would be the same as for the current registered EU GI but the application might face substantive examination before maturing to registration – so eventual protection in the UK is not guaranteed even for holders of existing registered EU GIs (details of the scheme have not yet been published).

The position as regards the continued enforceability in the EU r27 of the 88 EU GIs which are registered in respect of a UK product is not yet fully clear.  The most likely outcome at present is that these rights will continue in force and that no re-application will be needed.  The UK Government has committed to assisting rights holders with any re-application should that in fact become necessary.

The key message, therefore, is that holders of EU GIs covering non-UK products should make sure that they re-apply for corresponding UK GIs during the post-Brexit 9 month window to ensure that their rights are protected.

By Andy Clemson

A Cracking Idea by the UKIPO; Inspiring young inventors

The UK Intellectual Property Office (UKIPO) has launched a competition aimed at inspiring innovation amongst children. The competition, which closes on Friday 24 April 2020, is backed by Wallace and Gromit creators Aardman, who are offering the winners a chance to star in a new Wallace and Gromit project and partake in an Aardman model-making workshop.

UKIPO CEO Tim Moss hopes that, like in Wallace and Gromit, the entrants will be inspired by objects around us to produce inventions which make our world “a better, safer, easier place in which to live.”, and will show them “how to get the credit they deserve for their ideas and creations”.

Whilst aimed at a younger audience, the competition will help to show the next generation how important inventions and inventors are for the future, a consideration which was highlighted in the Queen’s speech in October, which emphasised the importance of science and innovation.

With innovation and intellectual property coming hand-in-hand, teaching inventors about their rights from an early age might also help to inspire the next generation of patent attorneys.

By James Bishop

Planned support for science

It was welcome to see that science and innovation warranted a mention in the Queen’s speech given at the State Opening of Parliament on the 14 October.

The Queen stated that: “My Government is committed to establishing the United Kingdom as a world-leader in scientific capability and space technology. Increased investment in science will be complemented by the development of a new funding agency, a more open visa system, and an ambitious national space strategy.”

It is thought that the new UK agency would be modelled on the US Defense Advanced Research Projects Agency (DARPA). There has been speculation that one of Mr Johnson’s prominent advisors is behind this typically disruptive drive to invigorate UK R&D. However, it is worth noting that, in his biography of Churchill, the Prime Minister himself clearly expresses appreciation for the confidence that Churchill had in key scientists such as RV Jones and Henry Tizard, and the value that scientific innovation can bring.

By Nick Bennett

New Partner appointments at Cleveland Scott York

Intellectual property law firm, Cleveland Scott York has continued its recent growth and added two new Partners to its partnership team.

Dr Alicia Instone and Nick Bennett, both formerly Senior Associates at the firm, have joined the partnership with effect from Tuesday 1 October 2019.

Alicia is based at the firm’s Hertfordshire office in Hatfield and is a dual-qualified Chartered Patent and Trade Mark Attorney. She specialises in technology areas including chemistry and medical devices, as well as the fashion and food & beverage sectors.

Nick is a European and Chartered Patent Attorney based at the firm’s London office. He specialises in chemistry, medical devices and mechanics.

Alicia said: “Our appointments continue the growth of Cleveland Scott York since it was formed from the merger of Cleveland IP and Scott & York IP Law in April 2017 and I am delighted to be joining the partnership.

“I am looking forward to continuing my work with our clients and the wider trade mark and patent professions in my new role.”

Nick said: “I’m excited to join the Partnership and I look forward to continuing to grow the practice, building on our recent successes in EPO Opposition work.”

Jonathan Clegg, a Partner at Cleveland Scott York, added: “Alicia and Nick’s promotions are well deserved. They both have strong reputations amongst our clients and the wider professions and we are very pleased to welcome them to the partnership.

“We are confident that Alicia and Nick will bring energy and drive to developing and growing the business and are looking forward to working with them in their new roles.”

Color trade mark protection in the fashion industry

Colour inevitably plays a central role in fashion—and public attitudes about fashion—from Coco Chanel’s iconic little black dress to Meryl Streep’s unforgettable cerulean sweater monologue in The Devil Wears Prada to the collective journalistic obsession with the shade known as “millennial pink” in more recent years. The Pantone Company, known for its proprietary colour-matching system, even releases a “Fashion Color Trend Report” coinciding with New York Fashion Week as a guide to forthcoming colour trends in fashion.

Colour is also a profoundly powerful marketing tool, with companies like Tiffany & Co and Cadbury jealously guarding single colours associated with their brands. But when and to what extent should colours be protected by law as trade marks? While consumers may well come to recognise certain colours or colour combinations as identifying the source of products, there is a strong interest in keeping colours available for use by competitors, particularly in the fashion industry, where aesthetics, trends, or the need to communicate a certain message may demand a particular palette.

The eye-catching red sole of a Christian Louboutin stiletto cuts right to the heart of this conflict between genuine widespread brand recognition on one side and the need to maintain free competition and protect creative expression on the other. Unsurprisingly, Louboutin’s registered trade marks in the contrasting red sole have been litigated in numerous jurisdictions, with divergent results.

In 2018, the CJEU gave a judgment in favour of Christian Louboutin on a request for a preliminary ruling on the question of whether its mark of a red sole shown on the contour of a shoe constituted a three-dimensional shape mark. The CJEU ruled that mark did not consist “exclusively of a shape” and so was not subject to the additional restrictions on registration.

While this was hailed as a victory for Louboutin, the judgment interpreted an earlier provision of the Trade Marks Directive that applied only to shapes. The amended Article 4(1)(e)(iIi) in Directive 2015/2436, however, applies to “the shape, or another characteristic, which gives substantial value to the goods”. The CJEU has since clarified that the amended article does not have retroactive effect on previously-registered marks. But it is unclear how this will affect future colour-mark registrations; there could easily be challenges based on the argument that a colour or combination of colours can give substantial value to goods by virtue of aesthetic merit.

Anyone thinking about protecting a colour mark in the EU must also take note of the CJEU’s recent judgment in Red Bull (C‑124/18), where it rejected Red Bull’s request to set aside the General Court’s judgment relating to invalidity proceedings for its silver-and-blue combination colour mark (below). The General Court had confirmed that the mark and description was insufficiently precise and durable to meet the requirements of graphic representation—Heidelberger Bauchemie, (C‑49/02) having established that a “combination of colours must be systematically arranged in such a way that the colours concerned are associated in a predetermined and uniform way” in order to meet the requirement of graphic representation.

Not unlike Louboutin, the court in Red Bull was interpreting a provision from an earlier version of the EU Trade Mark Regulation under the shadow of recent changes to the law; under Section (1)(4)(b) of  Regulation 2017/1001, the requirement of graphic representation has been removed, instead requiring marks to be represented “in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor”. While this might appear at first glance to be a relaxation of the requirement of graphic representation, the General Court in Red Bull asserted that the new wording is, in fact, more restrictive because itexpressly incorporates into the body of that provision the objectives identified in” the cases of Heidelberger and Sieckmann.

Just like fashion, trade mark law has its trends. With the changes to European trade mark law, and the CJEU’s approach in Red Bull,  it is looks like the latest trend in Europe is towards making it more difficult to protect colours as trade marks.

By Dr Barbara Lauriat, Senior Lecturer, The Dickson Poon School of Law, King’s College London.

Top 15 IP tips for the fashion business

  1. Register a trade mark early, especially if it’s your personal name, because this will help to enforce your rights. Having to deal with trade mark infringers is bad enough in the normal course of events, but even more unsettling, when it concerns misappropriate of your personal name.

 

  1. If you have a name similar to another fashion designer, be prepared to negotiate or even just live with the fact that you may need to rebrand, to avoid long-running and expensive trade mark disputes, not just in the United Kingdom, but also overseas.

 

  1. Inform yourself regarding the scope of copyright and unregistered design right, as these provide free of charge protection for the designs you create.

 

  1. Keep details and dated records of your design process, as a matter of course, so that in an infringement situation, you can prove the date of creation of any of your designs. This is often crucial in any dispute as to ownership/ authorship of a design as well as in resolving the question of which entity copied the other.

 

  1. Registering designs provides increased protection and is worth looking into for your important designs.

 

  1. If you are interested in registering designs, be aware that in a lot of countries, designs have to be new to be validly registered. The UK, EU and some other countries have a grace period, allowing designers to sell their designs and then only invest in registration for the most commercially successful. If you do decide to take advantage of the grace period, use a reliable diary system/keep your IP attorney advised, so that the opportunity to register designs is not lost.

 

  1. Use copyright notices and non-disclosure agreements to ensure that those you have commercial dealings with are fully aware that they are not free to copy your designs.

 

  1. Make sure you deal with contractors correctly – under UK Law, the owner of copyright work is the creator or their employer, unless there is an agreement to the contrary. So third party contractors own copyrights in works you commission, unless you agree otherwise.  Such agreements should always be obtained in writing and before work is done, or at least at an early stage. Once a job is completed, both sides have less impetus to clear up legal loose ends.

 

  1. If you think someone is copying your brand or design, make sure you work quickly to get hold of evidence. This means keeping records of any contact you or your employees have with confused customers and getting hold of media cuttings, as well as obtaining and saving screen shorts of any websites or social media postings.

 

  1. Be aware that while BREXIT will bring changes to IP regimes, in the context of copyright, these are not likely to be major.

 

  1. Be aware that the world of trade marks/brands extends beyond logos, slogans and words. The fashion industry relies heavily on non-traditional trade marks such as position marks, stitching patterns, the get up of retail stores, the colour of soles on shoes etc.  These can be powerful weapons in the fight against infringers.

 

  1. The fashion industry is commonly targeted by cyber-squatters, and so it is important to be aware of the issues around domains – see our previous Top Tips article for details.

 

  1. Be aware there are low-cost ways for dealing with infringement of your rights, such as take-downs from social media, applications for Customs seizures and assistance from Trading Standards. Whenever the writers have been contacted by Trading Standards or the Customs authorities, in relation to counterfeit items, they have always been fashion items.

 

  1. If you decide to increase revenue by licensing your brand, be aware that excessive licensing could lead to a situation where your brand is no longer an indication of origin, which could lead to rights in the trade mark in question being lost. Such a situation might arise if lots of unrelated companies were licensed to use the brand in question in relation to shirts, for example, and produced items of wildly varying quality levels.

 

  1. If you use your personal name as your brand and decide to sell your business, make sure you understand and are prepared to abide by the contractual arrangements relating to use of your name. A purchaser is likely to want to have exclusive rights to the brands the business has been using to date. If you don’t intend to retire, you may need to think carefully about how you will work as a fashion designer in the future.

By Andy Clemson and Cathy Ayers

Opportunities in vehicle electrification

Jaguar Land Rover has recently completed its fit-out of its Castle Bromwich Plant for producing the new electric, ninth-generation Jaguar XJ vehicle. This site has seen a great deal of technical innovation over the years, having first been created as a shadow factory for the advanced Spitfire fighter plane and then subsequently being fitted out for building the highly automated robotised XJ40 in the 1980’s ready for Jaguar’s 4th generation XJ40 vehicle.  The factory continues to produce other advanced vehicles in the model line-up, but this is the first time that Jaguar has set up for electric vehicle manufacturers in the U.K. (its fully electric I-Pace vehicle being made under contract by Magna Steyr in Austria). (more…)

Are patents being considered when looking at tackling global warming?

According to data published by NASA’s Gravity Recovery and Climate Experiment, over the past 35 years, global warming has occurred, however, the warmest years on record have taken place since 2010. (more…)