Patents and Trade Marks: Perils of not Using a Filing Watch Service
I mention this cautionary tale partly because I have just written the chapter on sensible precautions for my book on Enforcement (the manuscript of which should have been with the publisher a week ago) and partly to celebrate Leeds Patent Library's new website "Business and Patents" since Leeds Patent Information Unit provides a filing watch service. This is an entirely fictitious case but it is based on the facts of two real ones in which I have had to advertise.
In the mid-1980s, a small furniture manufacturer from High Wycombe designed a chair which it marketed to a number of local education authorities in the North of England as “The Wilkes” in tribute to John Wilkes, the famous radical politician who had represented the borough in the House of Commons in the 18th century. The company never saw the need to register the sign as a trade mark. The local authorities had been in the habit of placing repeat orders for the chair nearly every year until 2004 when they dried up inexplicably. Thinking that there might be a funding problem the company waited to see what would happen the next year. No orders came in 2005 so the managing director decided to investigate. He contacted the procurement officer and was told that the local authority had a new anti-counterfeiting policy that required it to buy “only genuine goods”.
The managing director was bemused by that response and pointed out that his company had designed “The Wilkes” 20 years earlier. They had copyright in the chairs and the brand and still had the drawings to prove it. They had sold hundreds of “Wilkes” chairs to that particular customer and others in the area. Anyone else making the product must be “breaching their copyright” and “stealing their brand”. The procurement officer agreed that he had personally authorized the purchase of Wilkes chairs for over 20 years. Nevertheless, he was adamant that he could not buy any more from that source. He had received been told by the authority’s solicitor that those were not genuine Wilkes chairs and that he was not to purchase any more. The managing director asked who had supplied the authority in 2004 and 2005. He was given the name of a large distributor of educational equipment.
The managing director obtained the distributor’s catalogue and saw that one of the products was imported from a company called Wilke Meubelen GmbH & Co. of Baden Baden. He asked his solicitors to investigate. They found that the German company had applied to register WILKE as a British trade mark in class 20 and that the application has been granted because nobody had opposed the grant. More recently, the German company had also applied to register the word WILKE as a Community trade mark in various other classes relating to educational equipment.
The managing director asked how they could do that in view of the fact that his company owned the copyright in the chair and brand and still had the drawings and catalogues to prove it. Not being quite sure of the answer, the solicitors consulted patent counsel who had told them that
(1) It had ceased to be an infringement of copyright to make an article from a design drawing since the Copyright, Designs and Patents Act 1988 came into force on 1 August 1999.
(2) The effect of the provision excepting the manufacture of an article from copyright had been suspended for 10 years but that period had expired on 31 July 1999 and there was no longer any protection for the company’s designs.
(3) It had never been possible to claim literary copyright in a one word trade mark.
(4) It might have been possible to prevent the application for the trade mark by making representations under s.38 (3) of the Trade Marks Act 1994 at virtually nil risk.
(4) That moment had now passed and all that could be done at this stage was to apply to the Trade Marks Registry or the court for a declaration of invalidity or perhaps counterclaim for such a declaration in any trade mark infringement proceedings that the German company might launch against them but the prospects of success of such a claim or counterclaim were uncertain.
(5) Though it lay outsider his instructions, counsel reminded his instructing solicitors of the risk of a threats action under either s.21 of the Trade Marks Act or s.253 of the Copyright Designs and Patents Act 1988.
To add insult to injury, counsel presented a hefty fee note for his advice and the solicitors an even bigger bill of costs.
The managing director asked how he could have found out about the German company’s application. He was told that all applications are published in the Trade Marks Journal which is now available on the internet and that there are a number of filing watch services that check the Journal and databases around the world for a modest fee. He was not entirely mollified by gratuitous observations from his graduate trainee about saving ships for a halfpenny worth of tar.
In the mid-1980s, a small furniture manufacturer from High Wycombe designed a chair which it marketed to a number of local education authorities in the North of England as “The Wilkes” in tribute to John Wilkes, the famous radical politician who had represented the borough in the House of Commons in the 18th century. The company never saw the need to register the sign as a trade mark. The local authorities had been in the habit of placing repeat orders for the chair nearly every year until 2004 when they dried up inexplicably. Thinking that there might be a funding problem the company waited to see what would happen the next year. No orders came in 2005 so the managing director decided to investigate. He contacted the procurement officer and was told that the local authority had a new anti-counterfeiting policy that required it to buy “only genuine goods”.
The managing director was bemused by that response and pointed out that his company had designed “The Wilkes” 20 years earlier. They had copyright in the chairs and the brand and still had the drawings to prove it. They had sold hundreds of “Wilkes” chairs to that particular customer and others in the area. Anyone else making the product must be “breaching their copyright” and “stealing their brand”. The procurement officer agreed that he had personally authorized the purchase of Wilkes chairs for over 20 years. Nevertheless, he was adamant that he could not buy any more from that source. He had received been told by the authority’s solicitor that those were not genuine Wilkes chairs and that he was not to purchase any more. The managing director asked who had supplied the authority in 2004 and 2005. He was given the name of a large distributor of educational equipment.
The managing director obtained the distributor’s catalogue and saw that one of the products was imported from a company called Wilke Meubelen GmbH & Co. of Baden Baden. He asked his solicitors to investigate. They found that the German company had applied to register WILKE as a British trade mark in class 20 and that the application has been granted because nobody had opposed the grant. More recently, the German company had also applied to register the word WILKE as a Community trade mark in various other classes relating to educational equipment.
The managing director asked how they could do that in view of the fact that his company owned the copyright in the chair and brand and still had the drawings and catalogues to prove it. Not being quite sure of the answer, the solicitors consulted patent counsel who had told them that
(1) It had ceased to be an infringement of copyright to make an article from a design drawing since the Copyright, Designs and Patents Act 1988 came into force on 1 August 1999.
(2) The effect of the provision excepting the manufacture of an article from copyright had been suspended for 10 years but that period had expired on 31 July 1999 and there was no longer any protection for the company’s designs.
(3) It had never been possible to claim literary copyright in a one word trade mark.
(4) It might have been possible to prevent the application for the trade mark by making representations under s.38 (3) of the Trade Marks Act 1994 at virtually nil risk.
(4) That moment had now passed and all that could be done at this stage was to apply to the Trade Marks Registry or the court for a declaration of invalidity or perhaps counterclaim for such a declaration in any trade mark infringement proceedings that the German company might launch against them but the prospects of success of such a claim or counterclaim were uncertain.
(5) Though it lay outsider his instructions, counsel reminded his instructing solicitors of the risk of a threats action under either s.21 of the Trade Marks Act or s.253 of the Copyright Designs and Patents Act 1988.
To add insult to injury, counsel presented a hefty fee note for his advice and the solicitors an even bigger bill of costs.
The managing director asked how he could have found out about the German company’s application. He was told that all applications are published in the Trade Marks Journal which is now available on the internet and that there are a number of filing watch services that check the Journal and databases around the world for a modest fee. He was not entirely mollified by gratuitous observations from his graduate trainee about saving ships for a halfpenny worth of tar.
Leeds City Library Business and Patents section offers a very inexpensive filing watch service for patents. Customers are charged by the page for any relevant specification which usually works out a few pounds a month. Stef Stephenson, who runs the patent library with Ged Doonan, told me on Thursday that she intends to offer trade mark and later perhaps design registration searches at the same rate. Another good service is, of course, the British Library's "Currentscan" which I mentioned on Monday.
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