Monday, 11 July 2016

IP and Fashion: the Consequences of Brexit

UK and the remaining Member States

Jane Lambert

Last month I conducted a seminar on IP and fashion for MBL Seminars in London.  As the fashion industry relies on EU trade marks and registered Community designs more than most I have published on article on the effect of Brexit on the IP rights used in that industry.

In that article, IP and Fashion: the Effect of Brexit 10 July 2016 4-5 IP, I have referred to art 50 of the Treaty of European Union which provides that the EU Treaties and all legislation derived from them will cease to apply from the coming into force of the withdrawal agreement or two years after our giving notice to withdraw whichever occurs soonest. It follows that all EU legislation will fall away upon our leaving the EU but there will be a difference between legislation enacted by Parliament to give effect to EU directives and regulations made by the EU institutions.

Legislation made to give effect to EU directives such as out Trade Marks Act 1994 and the Registered Designs Act 1949 will remain in force because they are Acts of Parliament but regulations such as the EU Trade Mark Regulation and the Community Design Regulation will fall away immediately. As a result EU trade marks and registered Community designs will cease to apply to the UK, unregistered Community designs will dissolve and the courts of the UK will no longer have jurisdiction in EU trade mark and Community design disputes.

That will require a thorough review of all agreements relating to those rights and in some cases renegotiation and re-drafting. Inevitably legal costs will rise appreciably though these may be offset by costs savings here and there.  I shall be discussing these and other changes resulting from Brexit in a seminar in September. If in the meantime you wish to discuss any of these developments call me on 020 7404 5252 or contact me through this form.

Friday, 27 May 2016

Second Course on IP and the Fashion Industry

Bond Street
Author Surgeonsmate
Source Wikipedia
Creative Commons Licence

Jane Lambert

I am running a day long course on IP and the fashion industry for MBL at the London Bridge Novotel on 2 June 2016. It you want to attend it will set you back £480 unless you have a "smart plan" or season ticket and even then it will cost you £216 for the former and £240 for the latter. That's quite a lot of money that you or your firm would have to shell out and you will almost certainly want to know what you get for that money.

When MBL asked me to propose a synopsis for the course I looked at blogs like Wigs and Gowns and The Fashion Law, courses like the ones offered in the USA by Fordham University's Fashion Law Institute and announced by the London College of Fashion earlier this year (see Katie King London College of Fashion unveils first of its kind law course 20 Jan 2016 Legal Cheek) and conferences like the one run by the Italian government and the WIPO at Caserta in 2005. I read some recent cases involving fashion and retain brands in the Fleet Streets and Reports of Patent Cases and made a keyword search of BAILII and the IPO websites. I could find no consistency of approach whatsoever.

I had more luck looking through my old opinions and pleadings and talking to some of the solicitors and patent and trade mark agents who had instructed me. It occurred to me that the starting point might be to imagine the sort of clients who would attend a course on law and the fashion industry and find out what interests them most.

The first conclusion I reached is that it is unhelpful to talk about the fashion industry. There are in fact several industries which include couturiers, Savile Row tailors, garment and textile manufacturers, importers and wholesalers, high street retailers and internet distributors. They all have different concerns and are often interested in a different IP issues.

I have structured the course around three themes:

  • Advising the designer;
  • Advising the manufacturer; and 
  • Advising the retailer.
I introduce each topic with a general summary of the law and then offer questions for discussion such as "What are the IP issues in selling on line?" and "How (if at all) does the Supreme Court's decision in Trunki affect textile, garment, jewellery and accessory designers?" That enables delegates to learn from each other as well as from me and I've learned from attendees too.

I have now run two courses on IP for the fashion industry for MBL. One at the Novotel where I found out what worked (see IP and Fashion Law 12 Sept 2015) and what did not and another in Leeds where everything seemed to go like clockwork. My third talk at the Novotel will follow the formula that worked in Leeds. 

I am looking forward to this course very much and I hope that my attendees enjoy the day too. If you want to find out more about this seminar call me on 020 7404 5252 or contact me on message form.

Wednesday, 23 March 2016

You wouldn't use a wood to get out of a bunker: seeking and using IP advice

A Set of Clubs
Author Post406
Source Wikipedia
Creative Commons Licence

Jane Lambert

On 23 Feb 2016 the Intellectual Property Office ("IPO") updated its guidance Seeking intellectual property advice. In its passage on Invention Promotion Companies it warns:
"Some unreliable firms promise to evaluate your invention for a fee of a few hundred pounds. They then tell you that your invention has great market potential. They may offer to promote your invention to manufacturers if you pay a fee of several thousand pounds up front. Once you have paid up, they may do little or nothing for you."
"If an invention promotion firm approaches you", it urges, "take great care." Very good advice which us repeated frequently by patent offices, consumer protection organizations, inventors' clubs and IP professionals the world over.

Yet despite those warnings more and more people fall for the promises of such companies and find themselves seriously out of pocket as a result. "Why is that?" one might ask. Part of the answer is that innovation companies offer a simple solution to the question how do I get my new product or business to market without anyone else nicking my idea.

Unfortunately, protecting a new  idea long enough for it to make a reasonable return for its creators is not usually a straightforward matter because the law favours competition and freedom to carry on business. The world's very first intellectual property legislation, The Statute of Monopolies 1623, was in fact a statute to abolish monopolies and restraints of trade. Parliament recognized, however, that it is expensive and risky to develop new products and processes and that businesses need some respite from unbridled competition as an incentive to invest in new inventions.

For that reason there is no one stop intellectual property shop. You need all the professionals mentioned in the IPO's guidance to get the right legal protection for your business idea. 

You need a patent attorney to apply on your behalf for a British or European patent for your invention in the United Kingdom and he or she should also be able to help you get one for other countries. If you have a trade name or logo that needs protecting a trade mark attorney can make an application to the IPO or European Intellectual Property Office for British or European Union trade mark.  Patent and trade mark attorneys should also be able to help you get registered and registered Community designs from the IPO or EUIPO. 

If you need a licence from a third party to make a product, use a process or carry on business under a franchise a specialist solicitor or barrister can help you negotiate one. Such a solicitor or barrister can also draw up terms upon which others can use your invention, design or other intellectual asset.  If you believe that your intellectual property right has been infringed or if you are accused of infringing someone else's rights he or she should help you resolve your dispute satisfactorily.

Each of those professionals has his or her own special skills and training for a particular job. In that way thet are rather like the woods and irons in your golf bag. There was a time when you had to instruct a solicitor or patent or trade mark attorney in order to consult a barrister but you can now instruct many of them directly under the Public Access scheme

Instructing a public access barrister is often a good way of finding other professionals that you may need such as patent or trade mark attorneys, solicitors or foreign lawyers. Through our work we get to know a lot of those professionals and what they can do. Although there is now plenty of overlap between our work and the work of other professionals we have a professional duty to refer a client to a solicitor. patent or trade mark attorney or other intermediary if that is in the client's best interests. As our core work is advice on difficult points of law, drafting complex legal instruments and oral and written advocacy we tend to refer patent and trade mark prosecution to patent and trade mark attorneys and litigation to solicitors. Our relationship with those other professionals is in that regard rather like the relationship that subsists between a consultant surgeon or physician and general medical practitioner. 

I am often asked whether there is a duplication of effort or additional expense in instructing different professionals. Sometimes that happens where for example a litigator attempts to do work that is better left to an advocate but it should not. Indeed, it should actually save time and costs.

If you want to discuss this article or IP advice in general call me on 020 7404 5252 during office hours or send me a message through my contact form.