The changes have led to widespread concern, with companies fearing reputational damage if their key brands and trade marks fall into the wrong hands. However, with a non-refundable “evaluation fee” of $185,000 and careful policing promised by the registries, there should be a significant barrier in the way of most Internet fraudsters.

The industry is estimating we will see around 1,500 initial applications for gTLDs. In our opinion, gTLDs represent a new frontier on the Internet and, in turn, a great opportunity for companies to stake their claim with key trade marks or creative new branding.

Posted by Oliver Laing, who specialises in intellectual property agreements, anti counterfeiting and disputes relating to patents, copyright, trade marks, designs, as well as domain name disputes and reputation management.

Oliver Laing
0115 908 4854
olaing@brownejacobson.com

The DCE is proposed as a solution to the problem of the collapsing value of creative content – which can be electronically replicated and shared – by creating a cheap and efficient online copyright licensing system. The Government hopes that this will harness the growth potential of creative industries and make the UK a leader in digital copyright services.

However, there was a note of uncertainty from Baroness Wilcox, the intellectual property minister, who indicated that it was still to be determined if the DCE was a “workable proposition.” Updating copyright law for the digital age will be complicated and, whatever the government’s decision, Hargreaves’ proposed completion date of the end of 2012 looks increasingly ambitious.

Dave Drew
0115 976 6226
ddrew@brownejacobson.com

Furniture Village brought a Nominet complaint about furnitureland.co.uk. The respondent claimed that, although he knew about Furnitureland, he thought they had stopped trading, and so his registration of the domain name was in good faith.

Both the first instance Expert and Appeal Panel agreed, so the respondent gets to keep the domain furnitureland.co.uk, which it is using as a click through website.

The case shows that the Nominet DRS is not suitable unless the complainant can clearly show the registrant knew of the complainant’s rights.

Faced with similar facts, brand owners should consider a passing off or trade mark action, which may have a better chance of succeeding.

It is also worth noting that the panel maintained the DRS’s reputation for speed by refusing to stay the appeal because of a pending trade mark revocation.

Posted by Giles Parsons, who specialises in intellectual property agreements and disputes relating to patents, copyright, trade marks, designs, as well as domain name disputes and reputation management.

Giles Parsons
0121 237 4557
gparsons@brownejacobson.com

The Opinion relates to the scope of copyright protection for databases. The Opinion states that a database, including the likes of football fixture lists and TV listings, can only be protected by copyright if it is an original intellectual creation of its author. Any creative effort in determining the elements of the database is a data creation activity and so does not count.

AG Mengozzi’s Opinion, if followed by the CJEU, will be a blow to the creators of sporting fixture lists and similar databases. No matter how much creative effort goes into the difficult task of creating a set of sporting fixtures, copyright in the database will only subsist if the presentation of the database is also in some way creative.

Posted by Mark Daniels, who specialises in intellectual property dispute resolution involving infringement and validity of patents, trade marks, designs and copyright, as well as reputation management and domain name disputes.

Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com

For the companies whose products are being counterfeited it poses a concern not only for their customers’ safety, but also for the damage these inferior quality and potentially dangerous products could do to their reputation.

While stopping all counterfeit goods entering the UK is impossible, a strong and structured approach can be taken. In particular, customs watches can be set up with the UK Border Agency who will seize infringing goods of which it becomes aware, preventing their access into the UK. Once confirmed as counterfeit, goods are then destroyed.

In our view failure to control the influx of counterfeit products can cause irreparable damage to a company’s reputation and, as we have all seen, can be the death of a premier brand.”

Posted by Oliver Laing, who specialises in intellectual property agreements, anti counterfeiting and disputes relating to patents, copyright, trade marks, designs, as well as domain name disputes and reputation management.

Oliver Laing
0115 908 4854
olaing@brownejacobson.com

The strategy picks up a number of proposals for the future (such as the creation of a register of IP advisors, online training tool, and provision of audits) and some that are already in place such as online patent service “Ipsum” which allows businesses to find patents and related documentation online.

All steps are welcomed if they result in SME’s developing and protecting IP. So often SMEs only become aware of IP rights and their protection as a result of an internal dispute or on the departure of a key developer. Lets hope these measures will allow SMEs to be sufficiently informed at an early stage to prevent unnecessary disputes from arising.

Posted by Richard Nicholas, who specialises in commercial, IT and outsourcing agreements, complex projects for private and public sector clients, collaboration, distribution & agency contracts, e-commerce and consumer law.

Richard Nicholas
0121 237 3992
rnicholas@brownejacobson.com

Tom Duke will be based at the British Embassy in Beijing and will be responsible for providing UK companies trading in China with support and advice about the enforcement of IP rights.

In making the announcement, Baroness Wilcox (UK Minister for IP) commented on the opportunity that the Chinese market represents for UK businesses, stating that trade between the two nations was last year worth an estimated £42 million; she noted ‘we need an efficient global intellectual property system where businesses have the confidence to trade in growing markets’.

This appointment will be welcome news to UK companies such as Dyson who, we reported this week, are put off from dealing in China despite its rapid growth, due to the apparent lack of monitoring of domestic infringers of UK IP rights.

Laura Mackenzie
0121 237 3959
lmackenzie@brownejacobson.com

In advance of this week’s Intellectual Property Office (IPO) symposium, which will be attended by trade representatives from China and the UK (including the UK Minister for IP- Baroness Wilcox), Dyson warned that China faces expulsion from the World Trade Organisation (WTO), the body that enforces global trade rules.

Dyson, a member of the prime minister’s business advisory group, suggests that China is creating an unlevel international playing field which prevents foreign companies enforcing their rights against Chinese infringers by maintaining a patent application process in which Chinese applications are passed in less than a year, compared to five years for foreign businesses.

China’s approach to IP right enforcement is likely to be of increasing interest to UK companies eager to protect their products, should the emerging market continue to pursue rapid economic growth without attempting to monitor domestic infringers.

Laura Mackenzie
0121 237 3959
lmackenzie@brownejacobson.com

Cadbury are likely to claim as a victory the ruling that they have built up enough distinctive character in their purple shade through their use of it on chocolate in bar and tablet form and eating and drinking chocolate products.

However, it is worth noting that the registry agreed with Nestle that this distinctive association did not extend to their chocolate cakes, chocolate assortments, and some confectionery chocolate, and therefore Cadbury’s attempt to register trade marks in these areas was refused. Nevertheless, many will regard this as a victory for Cadbury in its long-running battle with Nestle.

Laura Mackenzie
0121 237 3959
lmackenzie@brownejacobson.com

This latest phase of ZTE’s phenomenal rise from its origins as a trader of accordions and low grade telephones, coincides with growing political tensions between the US and China. The US House intelligence committee recently launched an investigation into the security threat posed by the Chinese technology firms operating in the US market. ZTE and Huawei, another multi-national telecommunications firm, are both under scrutiny.

These developments highlight the sheer structural breadth of the Chinese economy, simultaneously industrialising from subsistence agriculture at one end to manufacturing cutting edge smart phones at the other. It also reveals US concern about losing its primacy in hi-tech innovation. For all the rhetoric about ‘threats to national security’, it is the threat to US business interests that really concern American lawmakers.

Dave Drew
0115 976 6226
ddrew@brownejacobson.com

The High Court had dismissed Dyson’s infringement claim on the basis that the Mach Zen produced a different overall impression on the informed user. Dyson appealed the decision but the Court of Appeal dismissed the appeal emphasising that the key legal issues was whether the Mach Zen did or did not produce on the informed user a different overall impression and, in this case, the Mach Zen did indeed produce a different overall impression with the court noting that there were in fact ‘substantial differences’.

This case is a reminder that even if you have broad registered design protection, the use by a third party of a similar design will not amount to infringement if that design produces a different overall impression on the informed user (a knowledgeable user of the product).

Posted by Sara McNeill, who specialises in non-contentious intellectual property matters, including licensing, franchise, collaboration and development arrangements and IP audits and strategy; experienced in drafting and advising on commercial agreements.

Sara McNeill
0121 237 3930
smcneill@brownejacobson.com

The design was previously ruled invalid because it did not create a different overall impression on the informed user than an earlier Promer design. A key facet of Pepsi’s appeal was that the General Court had incorrectly defined the “informed user” and his level of attentiveness.

The ECJ disagreed with Pepsi and stated that informed user lies “somewhere between … the average consumer… who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trade marks in conflict, and the sectoral expert, who is an expert with detailed technical expertise”.

Although this is a welcome clarification, this case concerned a very simple design, and it seems likely that the courts will continue to grapple with this concept in less straightforward design fields.

Posted by Ryan Harrison, who specialises in intellectual property agreements and disputes, licensing, commercial contracts, and commercial and intellectual property issues arising from M & As and disposals.

Ryan Harrison
0121 237 3950
rharrison@brownejacobson.com

The damages cap which is to be applied to claims in the Patents County Court has now been formally extended to all claims brought in that court (previously it applied only to patents and designs). A sensible move, ensuring that claims relating to all intellectual property rights are brought into line with the court’s objective. With the PCC having dealt with over 100 new cases in the last year, it is apparent that parties have the confidence to resolve their disputes using the reformed process in the court.

Posted by Mark Daniels, who specialises in intellectual property dispute resolution involving infringement and validity of patents, trade marks, designs and copyright, as well as reputation management and domain name disputes.

Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com

The two technology giants, both global leaders within the smartphone market, are now battling it out within the rapidly expanding market for personal tablets.

As of April 2011, Apple initiated lawsuits alleging patent infringement for the use of touch screen technology. The claims specifically concern the iPad and Galaxy Tab 10.1, with legal action spanning 10 different countries.

The most recent development concerns a decision taken today (13 October 2011) by Judge Bennett. The judge granted a temporary injunction on the sale of Samsung’s Galaxy Tab 10.1 within Australia, prohibiting participation in the upcoming Christmas sales.

This is yet another victory for Apple, with similar rulings given in Germany and the Netherlands. Despite this, the conflict seems unlikely to die down, as Samsung has threatened injunctions to ban sales of the new iPhone 4S in France and Germany.

Posted by Oliver Laing, who specialises in intellectual property agreements and disputes relating to patents, copyright, trade marks, designs, as well as domain name disputes and reputation management.

Oliver Laing
0115 908 4854
olaing@brownejacobson.com

The ECJ ruled (amongst other points):

• a trade mark proprietor can prevent a competitor from using a keyword identical to their own trade mark to advertise goods or services identical to those covered by their trade mark where such use is liable to have an adverse effect on the functions of the trade mark: the ‘indicating origin’ function of a trade mark will be adversely affected if the advertising displayed as a result of the keyword does not enable an internet user to ascertain whether the goods or services advertised originate from the trade mark proprietor or a third party.
• the proprietor of a trade mark with a reputation is entitled to prevent a competitor from advertising on the basis of a keyword corresponding to that trade mark where the competitor takes unfair advantage of the distinctive character or reputation of the trade mark or where the advertising is detrimental to that distinctive character.

The first point is unsurprising – its what we’ve been seeing in the national court rulings. However, it will be interesting to see how broadly the second point is interpreted by the English courts.

Posted by Sara McNeill, who specialises in non-contentious intellectual property matters, including licensing, franchise, collaboration and development arrangements and IP audits and strategy; experienced in drafting and advising on commercial agreements.

Sara McNeill
0121 237 3930
smcneill@brownejacobson.com

The Government revealed its goal to “have measures in place by the end of this Parliament” and will prepare more detailed proposals for consultation. The report’s recommendations include:

• the creation of a digital copyright exchange which would assist the buying and selling of digital copyright licences and add up to £2.2 billion to the UK economy by 2020
• allowing copying of data for private purposes or where it does not damage the underlying aims of copyright, which would enable private users to copy media from one format to another (e.g. copying iTunes tracks onto a CD)
• adapting the patent and design frameworks to enable IP law to keep up to date with technology and business practices.

The Government’s response demonstrates a commitment to assist UK businesses in using intellectual property but it remains to be seen how, and whether, such assistance will be given.

Alex Kynoch
0115 976 6528
akynoch@brownejacobson.com

Currently, groundless threats of trade mark, design or patent litigation can be causes of action themselves.

Sabre rattling should obviously be discouraged, particularly as just the threat of infringement can be enough to make customers defect to rightsholders to avoid the threat of litigation.

But businesses harmed by allegations of infringement are often reluctant to bring a claim for groundless threats, particularly as they could be ordered to provide security for the rightsholder’s costs. When claims for groundless threats are brought, the costs can be disproportionate to the damage done by a threat. And in practice, the threats provisions can cause costs to increase, because rather than encouraging a litigant to set out its case clearly (which could result in an early settlement), litigants may seek to artificially narrow their claim to avoid threats actions.

So whilst the rationale behind the threats provisions is admirable, in practice they do not function effectively. Part of the solution may be amendment to the Civil Procedure Rules to allow declarations that threats are unjustified to be brought cheaply and quickly.

Posted by Giles Parsons, who specialises in intellectual property agreements and disputes relating to patents, copyright, trade marks, designs, as well as domain name disputes and reputation management.

Giles Parsons
0121 237 4557
gparsons@brownejacobson.com

TVCatchup provides a quasi-live service, relaying free-to-air TV channels to UK members. ITV (etc) claimed that this infringed their copyright by “communicating to the public”, by electronic transmission, their films and broadcasts. TVCatchup argued that the relevant legislation had been amended improperly and was therefore invalid.

The judge provisionally found that the transmissions were “communicating to the public”, although he thought that they only reproduced a substantial part of ITV’s films, not of their broadcasts; also, for some reproductions TVCatchup may have a defence of “incidental” copying. However, he felt these issues needed clarification from the ECJ.

A final judgment may be years away allowing TVCatchup in the meantime to continue profiting from its services and must surely be a bitter pill to swallow for the broadcasters.

Laura Phillips
0115 976 6182
lphillips@brownejacobson.com

Though there have been concerns that peer review could be negative with competitors attacking rival applications, earlier trials in the US and Australia appear to have been largely successful and so there is little reason to suspect that results in the UK will be significantly different. The real test may, however, come later when we see whether the project can be extended to other fields of technology.

Posted by Emma Tuck, who specialises in Intellectual property disputes relating to patents, trade marks, designs and copyright; non-contentious intellectual property matters including advising on licensing, assignment, confidentiality and collaboration agreements

Emma Tuck
0121 237 3908
etuck@brownejacobson.com

Miffy, a small white female rabbit, was created in 1955 by Dick Bruna. Cathy, also a small white female rabbit, was created by Sanrio in 1976.

In 2010 Mercis Media BV (Mr Bruna’s copyright management firm) brought trademark and copyright infringement proceedings against Sanrio. Why it took Mr Bruna 34 years to bring proceedings is unclear…

Sanrio was ordered to stop production, sale and marketing of Cathy character goods in the Netherlands, Belgium and Luxembourg and to pay €25,000 per day if it did not comply, up to a maximum of €2m.

Sanrio appealed and filed a counter claim seeking the Miffy trade mark be removed from the register.

The matter has now been resolved, with Sanrio agreeing to no longer use the Cathy character. Both parties have also agreed to donate €150,000 jointly to the victims of the Japan earthquake. A very commendable settlement indeed.

Oliver Laing
0115 908 4854
olaing@brownejacobson.com

The court decided that Team Lotus owns the goodwill in the Team Lotus name, but that the trade mark has been revoked because it did not use it for a five year period. This means that Team Lotus can still enforce its unregistered rights in the name. The court also found that Team Lotus is entitled to register new trade marks for Team Lotus. Team Lotus was also found not to have infringed the Group Lotus trade marks.

However, Team Lotus could not prevent Group Lotus from racing in Formula 1 using the JPS black and gold livery, and it was found to have breached an earlier licensing agreement entered into with Group Lotus.

Perhaps the proof of the pudding is in the eating – both teams can continue to line up at this season’s Grand Prix with the names and liveries they were using before the judgment!

Posted by Mark Daniels, who specialises in intellectual property dispute resolution involving infringement and validity of patents, trade marks, designs and copyright, as well as reputation management and domain name disputes.

Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com

The Advocate General has now provided an opinion in the case of Interflora v Marks & Spencer stating that a trade mark owner can forbid the use of a trade mark in such circumstances where the advertising link:

• is liable to lead some members of the public to believe that the competitor is a member of the trade mark owner’s commercial network; and/or
• displays or mentions the trade mark and the advertiser thereby attempts to benefit from its power of attraction, reputation or prestige

Surprisingly the Advocate General believes that the advertisement may confuse searchers in to believing that M&S is part of the Interflora network. If the court’s hypothetical searchers are so easily confused then adword purchasers will need to select their adverts very carefully.

Alex Kynoch
0115 976 6528
akynoch@brownejacobson.com

Issues of trade mark infringement, copyright infringement, and passing off aside, the judgment has attracted interest because of Judge Birss’ flexible and streamlined approach to trial management.

In particular, the solicitors for the claimant complimented the new regime stating that it provided a “faster, cheaper way of getting expert justice in IP cases”. As an example, the Court ordered a telephone hearing a few days before trial in order to address issues which would have otherwise taken up valuable time at trial.

The case highlights Judge Birss’ hands-on approach to case management and makes the PCC look very attractive as a faster and cheaper alternative to the High Court, particularly for claimants who feel confident that they can fund their case within the £50,000 costs cap.

Posted by Ryan Harrison, who specialises in intellectual property agreements and disputes, licensing, commercial contracts, and commercial and intellectual property issues arising from M & As and disposals.

Ryan Harrison
0121 237 3950
rharrison@brownejacobson.com

Posted by Peter Ellis, who specialises in commercial litigation or dispute resolution; intellectual property disputes e.g. trade marks, copyright, designs issues; breach of contract and claims through interruptions to trade.

Peter Ellis
0115 976 6269
pellis@brownejacobson.com

A) Own it; B) Be licensing it (from a third party); or C) Be infringing (a third party’s rights)

A case in the Patents County Court last month however has looked at the question – “if you are using copyright material under licence, but fail to pay the ongoing licence fee – are you therefore infringing the owner’s rights?” The answer was no – it is not necessarily an infringement. Even though you are in breach of the licence, so may be in breach of contract, it does not necessarily follow that you are infringing copyright, or that the licensor has a right to terminate the licence.

From a pure contract law perspective, this isn’t that surprising but is a reminder that if you don’t put express wording in a contract, the courts will not imply it for you (so it is worth getting the wording in at the start).

When and how contracts can be terminated for breach is an issue we’ll be covering at the next in house lawyers forums on 16th, 29th and 31st March. Please sign up here if you’d be interested in attending.

Posted by Richard Nicholas, who specialises in commercial, IT and outsourcing agreements, complex projects for private and public sector clients, collaboration, distribution & agency contracts, e-commerce and consumer law.

Richard Nicholas
0121 237 3992
rnicholas@brownejacobson.com

Posted by Emma Tuck, who specialises in Intellectual property disputes relating to patents, trade marks, designs and copyright; non-contentious intellectual property matters including advising on licensing, assignment, confidentiality and collaboration agreements

Emma Tuck
0121 237 3908
etuck@brownejacobson.com

This perhaps shows that the Government has recognised that these powers, as currently envisaged, will be extremely difficult to implement and may do little to stem the tide of online copyright infringement.

The Digital Economy Act, and the anti-filesharing agenda of such creative arts trade associations as the BPI that lies behind it, have been on the ropes for some time. In November last year the High Court granted permission to BT and TalkTalk to judicially review the Act.

Meanwhile a pending decision of the European Court of Justice in Scarlet v Sabam could have a significant impact in the way the UK courts interpret the Act.

The fight is far from over yet but for the moment it seems that the filesharers are having the better of the early skirmishes in what will be a long and bloody battle!”

Posted by Nick McDonald, who specialises in intellectual property law including copyright, patents, trade marks, passing off, design disputes, breach of confidence, database rights and IT.

Nick McDonald
0115 976 6198
nmcdonald@brownejacobson.com

Why? Such shapes are devoid of distinctive character as they are the typical chocolate-shaped goods that one finds in their stocking at Christmas or receives as a gift at Easter, thus they fail to meet the requirements for shape protection under the Community trade mark regime. Unfortunately, the red ribbon collar and little silver bell didn’t help the reindeer and bunny leap over the distinctiveness hurdle either.

Was it the right decision? Well, it was certainly consistent with previous case law (think back to Guylian’s seahorse-shaped chocolate). Also, bearing in mind the ultimate purpose of a trade mark, to act as a badge of origin, the decision must be correct.

Posted by Sarah Fellows, who specialises in non-contentious intellectual property, and IT commercial agreements; familiar with a range of sectors, including technology, biosciences, retail and education.

Sarah Fellows
0115 976 6242
sfellows@brownejacobson.com

L’Oreal argued that in using L’Oreal’s trade marks, eBay (in some cases) directed its customers to infringing goods and that it was involved in the infringements of sellers using its online marketplace.

The AG’s opinion is that on the face of it eBay is not liable for acts of trade mark infringement committed by its customers (since the function of the trade mark should not be affected). However, eBay could become liable, if it was notified of the advertisement or sale of infringing goods, and such infringement by that seller continues or is likely to continue in relation to the same or similar goods.

eBay are said to be pleased with the opinion, though trade mark owners will take comfort from the fact that eBay will have to remove listings for goods of questionable origin and could be liable for future infringement by the same person.

Posted by Emma Tuck, who specialises in Intellectual property disputes relating to patents, trade marks, designs and copyright; non-contentious intellectual property matters including advising on licensing, assignment, confidentiality and collaboration agreements

Emma Tuck
0121 237 3908
etuck@brownejacobson.com

Posted by Emma Tuck, who specialises in Intellectual property disputes relating to patents, trade marks, designs and copyright; non-contentious intellectual property matters including advising on licensing, assignment, confidentiality and collaboration agreements

Emma Tuck
0121 237 3908
etuck@brownejacobson.com

In this case Daniel Stubbs registered a number of spread betting related domain names including worldspreads.co.uk for the purposes of making money through affiliate marketing. The website at the domain initially contained links to generic shopping websites.

WorldSpreads, a well-known provider of financial spread betting services, began trading in the UK two months after the date of Mr Stubbs’ registration and was unable to adduce evidence of prior rights in the UK. The registration was, at that point, legitimate.

Following several approaches by WorldSpreads to purchase the domain, Mr Stubbs changed the content of his website to include links to the websites of WorldSpreads’ competitors.

It was held that, although the initial registration was legitimate, Mr Stubbs’ later use of the domain amounted to abusive use.

This decision will be welcome news to brand owners, and private individuals seeking to profit out of speculative domain name registrations will need to tread more carefully.

Posted by Ryan Harrison, who specialises in intellectual property agreements and disputes, licensing, commercial contracts, and commercial and intellectual property issues arising from M & As and disposals.

Ryan Harrison
0121 237 3950
rharrison@brownejacobson.com

Their interpretation was that someone can infringe simply by supplying “means essential” for using a patented invention if, when supplying, they know (or it is obvious to a reasonable person in the circumstances), that ultimate users will intend to put the invention into effect.

The decision was underlined this week in KCI Licensing v Smith & Nephew. The original judge had found that on the facts it would have been obvious that end users of Smith & Nephew’s wound drainage device might combine it with a clamp, infringing KCI’s patent. The Court of Appeal therefore held that by supplying the device, Smith & Nephew had themselves infringed.

This interpretation of the statute is likely to catch many more ‘indirect’ infringers – companies should be particularly careful when advertising products that they don’t suggest potentially infringing modifications.

Laura Phillips
0115 976 6182
lphillips@brownejacobson.com

In the case of Football Dataco Limited and others v Sportradar, the claimants ran a site which exploited certain data relating to English and Scottish football matches. Sportradar ran a similar site hosted on webservers in Germany and Austria. Dataco argued that when the British public viewed Sportradar’s site, this infringed Dataco’s UK copyright and database rights. The High Court disagreed.

Whilst this decision does clarify the law on this point, it does not particularly assist in aiding the prevention of online infringement. In fact it may influence some operators to host infringing data on servers in selectively sourced countries…thereby making the protection of intellectual property rights in relation to the internet even more difficult than it already is.

Holly Mitchell
0115 908 4886
hmitchell@brownejacobson.com

From 1 April 2013 this reduced rate of corporation tax will apply to profits from patents, but not from other intellectual property. Consultations surrounding the so-called ‘Patent Box’ will now take place. This corporation tax rate change is just one measure unveiled as part of the government’s ‘Corporation Tax Reform’. Others include changing the rules on controlled foreign companies which, by the Chancellor’s own admission are ‘outdated and complex’.

An increasing number of companies are leaving or considering leaving the UK, citing high tax rates, uncertain/complex tax rules and tax red tape among their motivators for so doing. These changes alone may not stem the exodus, but at least it’s a start.

Posted by Beth Dowson, who specialises in taxation aspects of a wide range of property, corporate and commercial matters; provides taxation support to other internal departments.

Beth Dowson
0115 976 6186
bdowson@brownejacobson.com

From 1 December 2010 until 17 January 2011, owners of registered trade marks which match their desired “short” domain name will have the first option to apply, upon providing evidence that they have used their trade mark in the UK before 1 January 2008.

Following this will be a second sunrise period for owners of relevant unregistered marks and then a landrush period before a general release (dates to be confirmed).

Rights holders might be tempted to apply immediately on 1 December. Nominet expects fierce competition for the domain names, but beware! Applications will be published, and rival applications will proceed to an auction. Applicants should consider the potential commercial advantages of filing closer to 17 January, since Nominet has confirmed that where there are rival applications, no priority will be given to the earliest application.

Posted by Mark Daniels, who specialises in intellectual property dispute resolution involving infringement and validity of patents, trade marks, designs and copyright, as well as reputation management and domain name disputes.

Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com

Posted by Peter Ellis, who specialises in commercial litigation or dispute resolution; intellectual property disputes e.g. trade marks, copyright, designs issues; breach of contract and claims through interruptions to trade.

Peter Ellis
0115 976 6269
pellis@brownejacobson.com

Rowling and Bloomsbury claimed that Jacobs’ claim should be dismissed summarily, as (a) Rowling had not read Willy the Wizard, and (b) the plot and themes she had allegedly copied were too abstract to be protected by copyright.

The allegations of copying were complex, and the defendants had not disclosed Rowling’s drafts or of her agent’s diaries. Similarly, the judge strongly inclined to the view that no copyright subsisted in the plot and themes, but on neither point was the case clear enough to be suitable for summary judgment.

The matter may roll on to court – but with three firms of solicitors and six barristers involved, the loser could face a very large bill, and hopefully common sense will allow the matter to settle.

Posted by Giles Parsons, who specialises in intellectual property agreements and disputes relating to patents, copyright, trade marks, designs, as well as domain name disputes and reputation management.

Giles Parsons
0121 237 4557
gparsons@brownejacobson.com

The act created the ‘London Olympic Association Right’ which gave the London Organising Committee (LOCOG) substantial powers to prevent unauthorised association between a business’ goods or services and the London 2012 Olympic Games.

The Government has now introduced further Regulations The Olympics, Paralympics and London Olympics Association Rights (Infringement Proceedings) Regulations 2010 (SI 2010/2477) which come into force on 8 November 2010 and give the High Court the power to order the erasure, removal, obliteration or destruction of any offending representations. LOCOG may apply to the court for the delivery up of infringing goods or articles, which may then be destroyed.

The Regulations illustrate what a huge battleground the London 2012 Olympics will become and companies will need to understand the parameters clearly before embarking upon related advertising campaigns.

Posted by Nick McDonald, who specialises in intellectual property law including copyright, patents, trade marks, passing off, design disputes, breach of confidence, database rights and IT.

Nick McDonald
0115 976 6198
nmcdonald@brownejacobson.com

Costs and time involved in securing protection can still inhibit invention and innovation especially for smaller companies and the taxation of IP and R&D should allow for the time and costs taken to create new IP.

There should also be greater investment in the education of small business about how to identify, protect and exploit the intellectual property which the Government is encouraging.

The UK IPO which is part of the BIS should be properly funded and new ways of expediting applications for registration of rights both in the UK and Europe should be explored.

Posted by Peter Ellis, who specialises in commercial litigation or dispute resolution; intellectual property disputes e.g. trade marks, copyright, designs issues; breach of contract and claims through interruptions to trade.

Peter Ellis
0115 976 6269
pellis@brownejacobson.com

Robert Tyler registered the domain name and used it for his anti-Ryanair website, which was devoted to criticism of the airline.

Nominet ordered the transfer not because the domain name pointed to a protest site, but because Mr Tyler derived advertising revenue from that site totalling £322 – hardly a fortune.

But maybe Mr Tyler has had the last laugh – he has moved his website to here and has removed the commercial advertisements. Interestingly, at the time of this posting, the domain name ihateryanair.co.uk still points to Mr Tyler’s website.

Conversely a victory for free speech then! Brand owners should beware of the limitations of the Nominet dispute resolution process in relation to criticism websites. If you are looking to manage online content about your brand consider also whether the content is defamatory, or whether your trade mark has been infringed.

Posted by Mark Daniels, who specialises in intellectual property dispute resolution involving infringement and validity of patents, trade marks, designs and copyright, as well as reputation management and domain name disputes.

Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com

Notwithstanding countless international treaties on trade since that time, and the recognition of IP rights across jurisdictions and at both a national and international level, we are still far from international harmonisation of law and procedure. The Anti-Counterfeiting Trade Agreement (ACTA), published in April this year, is the latest attempt. ACTA is a proposed international agreement whose purpose would be to establish international standards on intellectual property protection. ACTA is another attempt by governments to negotiate a common international standard on how countries should act against large scale infringements of IP rights.

ACTA is being negotiated by 10 developed countries and the European Union. It is moving slowly to a consensus. As it does, however, criticism is mounting that the final agreement will amount to an infringement of human rights, thereby restricting the right of an individual to buy something which he knows is not an original. As a senior judge recently stated, the consumer is not stupid. So, given that ACTA is negotiated by governments, far removed from ordinary people, has the individual lost out?

Posted by Peter Ellis, who specialises in commercial litigation or dispute resolution; intellectual property disputes e.g. trade marks, copyright, designs issues; breach of contract and claims through interruptions to trade.

Peter Ellis
0115 976 6269
pellis@brownejacobson.com

The BBC will no doubt claim to have image rights in The Stig. However those image rights will be limited. Indeed, there are no such things as image rights per se under UK law. The BBC would need to specifically identify any IP rights it claims to have in The Stig; including design rights, copyright, trade marks or rights in passing off.

Any programme with Collins in a racing outfit that doesn’t confuse the watcher, which uses the name The Stig carefully, or uses clothing that is dissimilar to The Stig’s famous white outfit, is ultimately unlikely to put Channel 5 the wrong side of the line.

No doubt both channels will already be considering the legal issues.

Holly Mitchell
0115 908 4886
hmitchell@brownejacobson.com

This week, ACS suffered an attack on its website, designed to make the site unavailable. During efforts to bring it back online, various documents became publicly accessible, including unencrypted users’ details…with a range of consequences for ACS (and BT).

One issue here is whether ‘Norwich Pharmacal Orders’, typically used to compel ISPs to disclose information, are too freely granted. Amongst other criteria, the applicant has to show that the data requested is relevant to a possible claim, and disclosure is in the interests of justice. The chances of refusal may have been higher if the ISPs had defended ACS’ application, for evidential and confidentiality reasons, rather than taking the usual ‘don’t agree but don’t oppose’ stance!

Laura Phillips
0115 976 6182
lphillips@brownejacobson.com

So where does that leave products whose shapes are dictated by technical functions? Design protection may be available for some features of shapes, but again there is an exclusion applying to features of a design which are solely dictated by technical function, so community registered and unregistered design rights may be of little assistance. If the product is novel and inventive, it may qualify for patent protection.

The ECJ gives little guidance as to when any non-technical features are sufficiently relevant so as to bring the shape within trade mark protection. Those seeking such protection will have to place a great emphasis on any non-technical features, to get over the hurdle of registrability – something which the Lego brick failed to do.

Posted by Mark Daniels, who specialises in intellectual property dispute resolution involving infringement and validity of patents, trade marks, designs and copyright, as well as reputation management and domain name disputes.

Mark Daniels
0121 237 3993
mdaniels@brownejacobson.com

The Office of Harmonization for the Internal Market (OHIM) says not – an application for a community trade mark by Borco to register the Greek letter alpha – α – for wines was held to lack distinctive character, being a simple reproduction of the letter and also a mark that Greek consumers would not see as an indicator of origin.

Advocate General Bot thinks otherwise and contends the OHIM’s practice of automatically rejecting applications to register single letters as trademarks without a full assessment is wrong.

This decision follows swiftly on from recent decisions on colour marks and confirms that all marks must be examined on their capability of distinguishing their particular goods from those of others.

It is hard to see how the ECJ could fail to follow the Advocate General’s opinion. Clearly there are no short cuts to examining distinctiveness no matter how short the mark!

Posted by Paula Dumbill, who specialises in non-contentious intellectual property, particularly trade marks and copyright, advising in particular on IP exploitation and collaboration agreements and trade mark portfolio management.

Paula Dumbill
0115 976 6059
pdumbill@brownejacobson.com

Google signed up its Gmail users to BUZZ, their new social networking application, without their prior consent. The BUZZ application created the user’s network on the basis of their email contacts but Gmail users objected saying that this violated their privacy, as Google’s activities resulted in Gmail users contact details being shared with others against their wishes.

With a proportion of the settlement payment going to organisations educating and promoting online privacy, this case illustrates the importance of online privacy and the need to get users consent to the receipt of services via opt in/opt out controls prior to launch. Having seen Google stung for $8.5 million in this case, hopefully others will not be inclined to indulge in similar ‘anti-social’ networking.

Posted by Emma Tuck, who specialises in Intellectual property disputes relating to patents, trade marks, designs and copyright; non-contentious intellectual property matters including advising on licensing, assignment, confidentiality and collaboration agreements

Emma Tuck
0121 237 3908
etuck@brownejacobson.com

Mr Justice Arnold dismissed the claim, deciding the two designs gave a different overall impression to the informed user of vacuum cleaners. He based this on the significant differences between the two machines; stating the Dyson machine gave a smooth, curving, elegant impression whereas Vax’s machine gave a rugged, angular, industrial and even rather brutal impression!

Despite the judge’s complementary take on its design Dyson are very unlikely to be satisfied with this decision. Dyson have historically gone to great lengths to protect their famous intellectual property. It therefore seems very likely that they will try to appeal it, in which case there is a likelihood of a referral to the ECJ.

Posted by Oliver Laing
0115 908 4806
olaing@brownejacobson.com.com

By ruling of Mr Justice Morgan earlier this week, the High Court declined to grant the above relief, leaving publishers HarperCollins free to proceed with its proposed release. The Court’s reasoning is presently unknown and may remain so for some time as it is understood that judgment is to be given in private. One can only speculate, therefore, that the BBC may have been unable to show the necessary quality of confidence in Stig’s identity to persuade the Court that an injunction was appropriate (speculations about Mr Collins’ alter ego having been published as long ago as January 2009). Alternatively, HarperCollins may have successfully relied on Mr Collins’ right to freedom of expression, enshrined in Article 10 of the European Convention on Human Rights, to defeat the BBC’s application.    

Of course, just because the BBC has lost the battle for an interim injunction, doesn’t mean that it will not ultimately be entitled to compensation for what may have been a breach of an equitable and/or contractual duty of confidence by Ben Collins. If this happens, Mr Collins may find a significant proportion of his royalty income wending its way towards dear old Auntie.

Some say…  it’s not over yet!

Posted by Richard Roberts, who specialises in intellectual property law including patents, copyright, trade marks, passing off, designs and breach of confidence; regular speaker on IP issues.

Richard Roberts
0115 976 6199
rroberts@brownejacobson.com

Oracle deliberately does not publish information about whether its goods have first been sold in the EEA, making it virtually impossible for re-sellers to know where the goods were first marketed. This acts as a deterrent to the importation of Oracle hardware generally, regardless of place of first marketing.

M-Tech said Oracle’s policy was contrary to European competition law but the High Court granted summary judgment in Oracle’s favour. The decision was overturned by the Court of Appeal who decided that M-Tech had a real prospect of success with its so called “Euro-defences”.

M-Tech still needs to establish those arguments in order to win its case and we could be waiting some time for an answer, given that a reference to the Court of Justice of the European Communities looks likely.

Posted by Emma Tuck, who specialises in Intellectual property disputes relating to patents, trade marks, designs and copyright; non-contentious intellectual property matters including advising on licensing, assignment, confidentiality and collaboration agreements

Emma Tuck
0121 237 3908
etuck@brownejacobson.com

Presumably, if Mr Collins is the current Stig (or perhaps one a number of Stigs) there will be restrictive covenants in place. If Mr Collins is merely a former Stig then the contractual position may be more complicated. Even so, one must fancy the BBC’s chances of showing that any such disclosure is/was a breach of confidence at common-law (although interim injunctive relief would appear impossible given that the Stig is out of the bag, so to speak).

Either way, The Stig’s secret identity is a key theme of the show. If Mr Collins is the current Stig, the BBC will surely move quickly to replace him.

Posted by Nick McDonald, who specialises in intellectual property law including copyright, patents, trade marks, passing off, design disputes, breach of confidence, database rights and IT.

Nick McDonald
0115 976 6198
nmcdonald@brownejacobson.com