delivered a highly personal view of the processes at OHIM for comparing trademarks. Before proceeding to study some recent cases, he told us that all opposition decisions were unpredictable - protection was simply a lottery so largely independent of professional skill. In his opinion and mine four legal instances for making an abstract assessment of likelihood of confusion that might have no impact on commercial reality was "over the top". Even so ITMA is unlikely to destroy its own members businesses by lobbying to correct this but if you are a business reader you might want to consider your motives and objectives carefully before being dragged into the net.
One of the cases discussed was Nasdaq, which is covered in my recent review. David was a member of the Board of Appeal in that case and naturally supported the European Court'sd decision. He did not expect quite so much hostility from the audience many of whom felt that if Antartica were taking advantage it might not be unfair. David himself said that he believed that the appellant was the New York Stock Exchange rather than simply an exchange based in New York. This may well not matter as trademarks may be badges of origin and dont require the consumer to know the origin as the mark stands for it.
Another decision that David was proud of was the recent board decision in Coca-Cola v Rewe R1145/2006-2 sent to the parties on 15 May 2007 in which they had confirmed the registration of the blue shape alongside. Coca-Cola's trademark, which had already achieved registration is shown in the line drawing below. Its quite well known now as the fanta bottle. The opposition decision from June 2006 does not appear to have relied on that reputation and likewise found that there were enough differences for the consumer to notice.
Want to find out more ..listen or watch the whole lecture.
What are Philips doing with their patent portfolio? Tony Tangena came over from the Netherlands to explain to the UK Group of AIPPI how they managed their 80,000 strong patent holding and decided what to include in the two thousand odd applications they add to the patent registers of the world every year. Apparently only a small minority are there to maintain exclusivity over their own products - but be warned if you want to encroach on their shaving technology, that's where they are. The rest are for exchange, pro-active licensing such as next generation Blu-ray video discs, or as assets for use in building joint ventures and spin outs. The "Exchange" group sounds very ominous. This philosophy applies to those businesses where are a limited number of competitive peers. These businesses apparently have medium sized portfolios designed for posturing and exchange in cross-licenses. These perhaps are the ones where inventive step is not the most significant consideration in the filing decision.
Tony was followed by John Nevard of Inverness Medical Innovations. John emphasised that he was blessed with a Chairman and CEO, Ron Zwanziger that not only understood the relevance of intellectual partner but also set the IP strategy for their businesses in an extremely active way. Like Tony, he emphasised the common thread of the evening that whether you are talking policy, strategy or tactics, it is the specific circumstances of the business that determine what you need to do. John also had numerous businesses but at least in the same sector. Even so his 500 patent families perform differing functions for their businesses. He gave examples of various products IMI had acquired in patent infringement settlements from those who ignored their patents. Creative infringement settlements meant that it was important for John to have enforceable patents so perhaps theirs will have inventions and sufficient descriptions. Drafting though is still seen as an outsourced commodity. His model is more like that encountered by start up entrepreneurs and it was interesting to hear that his team also supported the R&D function with overviews of the technology map as they began designing products that would meet the identified market needs.
Surprisingly neither speaker was looking for any political change in the patent system.
After the festive night of celebration on Monday that was the Finalist's Dinner, it was back to the classroom on Saturday for a day of presentations on what the competition plans should contain and what was needed to prove pleasing to the investors. During the day, teams were able to spend confidential sessions with Dave Morgan from the Patent Office to receive individual advice. Dave was kept very busy in his confessional upstairs. The day began with a presentation from Martin Rigby of ET Capital - the last venture capital fund based in Cambridge. He pointed out the dire performance of technology start-ups relative to other available investments. He stressed that it was necessary to show that the business was market- driven not technology-driven, but as he still wanted to invest in global market leaders that could dominate their market his investee might still need a little help from intellectual property. He thinks that the model being followed by IP Group plc and Angle plc will fail. An interesting point among the many valuable insights was the importance of communication and how it could impact on value regardless of the underlying assets. Jack Lang's presentation on how angel's work was not any more patent friendly. In his opinion most patents could be fairly easily evaded, but nevertheless he wanted to invest in defensible technology.
Neither stayed for the Filemot presentation (you can download the paper here and the slides here) so I was unable to discover whether they would have disagreed with my "balanced" approach to the use of patents within a business model. Hopefully some of the entrepreneur's present will find themselves better prepared to spin those illusions that Martin Rigby believed in based on enforceable patents. One of the challenges for any entrepreneur is to distil the advice from various sources into something likely to be beneficial and often there is no right answer. The art is to select a course to steer without too much prevarication. We all left the day enthused with plans for global domination and hopefully to write improved plans.
A senior delegation from OHIM led by Peter Lawrence, Vice President accompanied by Gordon Humphreys from the Boards of Appeal and Vincent O'Reilly now in a new post as Head of IP Policy and co-ordination of Practice amongst other stars of the multi-cultural management team. They explained the technical reason why UK attorneys were less satisfied with OHIM than representatives from other major jurisdictions. They are simply frustrated by the halting e-business interface that we encounter at busy times. Apparently OHIM's Internet servers which we access to do e-filings are physically located in Alicante on a bit of the cloud that is more readily accessed from mainland Europe. The figures developed by independently contracted testers showed stark differences. All contractors were required to use a standard 1MB designated connection but also asked to report the actual rate which due to the magic of contention ratios or contract drafting were also markedly different. There was a certain amount of bemusement about why this should be so amongst management and at present OHIM gave the impression it was probably our fault and that of the devious UK ISP providers and nothing to do with server location. Nevertheless a European organisation has an obligation to provide the same level of service to all its members and if that means relocating servers to a more accessible internet hub, so be it.
We can expect a full report of the meeting on the UK Patent Office website and in the CIPA journal.
Although Filemot is not based in the South East when it comes to regional development I was delighted to be invited by one of my clients who was being "showcased" to attend this prestige event on entrepreneurship. The morning gave us a discussion on what it takes to be an entrepreneur. It came dangerously close to advocating investment only in dyslexia! but Luke Johnson brought us back to earth by drawing attention to the causes of disaster in some of his business investments, which proved to be more to do with prosaic accounting issues or failing to recognise failing employees.
The South East has a network of hubs which support local entrepreneurs. They also produce rather amazing promotional material. Six of their supported businesses gave elevator pitches to compete for a £25k prize. It was all just too glossy and slick - each team has been profiled in a professional 2 minute video. These businesses had been polished up for display. You desperately wanted to know what flaws were under the skin. Sadly only one of the hubs had realised that, with SEEDA emphasising women entrepreneurs, it was a dandy move to field a woman in the business team. The only woman presenting won. I left feeling that the South East was not helping its fledgling businesses enough in that crucial team creation exercise. Several hub mentors seemed to be in the headhunting business for their day jobs but did not use those skills for mentees.
Even a fire evacuation in the rain just before the start of this seminar at QMW's historic Charterhouse Square could not dampen the enthusiasm of this select group of IP students and professionals who gathered to discuss the effect of a provision in the Community Design Regulation (Article 25 (1) e) that allows a design to be declared invalid if if a distinctive sign is used in a subsequent design, and Community law or the law of the Member State governing that sign confers on the right holder of the sign the right to prohibit such use. . Here's a case that was decided earlier on this ground. The danone logo appeared as a minor element of a packaging design but this was enough for the entire design to be held invalid. It was a harsh result but the moral for practitioners is to obliterate all trademark material other than your own from a design application. It does get more interesting if the trademark that appears in the design is only similar to rather than a representation of the earlier trademark.
Understanding how Intellectual Property law can provide a competitive advantage to your business model is key to economic success. The Patent Office is running a series of educational seminars around the country and they are well worth attending. In London we were lucky enough to have a presentation from Mandy Haberman on her experiences of using IP law to help her become a multi-millionaire. It was not just an inspirational address, but she also focussed on her own experiences and linked them back to the initial factual presentation from Miles Rees of the Patent Office about the various types of IP beginning with trademarks and progressing through copyright and design to patents. As well as her well known litigation experiences, she also stressed the importance of design and an issue on filing strategy and priority dates. It is one thing to explain to an inventor that anything published before the priority date is prior art to your invention, but it is much clearer when Mandy explains that after filing her first patent application for the AnywayUpCup® (Find out where to buy it here) complete with non-return valve and finding that she was still short of development funds she took the easy (but as it turned out unwise) option suggested by her patent attorney of withdrawing the first application and starting again with a later priority date in April 1992. All was fine because she had made no disclosure of her idea but unknown to her someone had in the meantime published a design that was a solution to the same problem.
Since 1992 it has become a lot easier to find out what has been published using free patent resources. Since most patent applications are only published at 18 months from first filing, there is still scope for hidden surprises. Clicking on the bicycle opposite will give you a short guide to print off and keep to hand while you hit the Internet in search of knowledge. It uses the example of a biometric bike lock to illustrate how to use the search resources. If you can email me with the earliest patent that discloses that idea before 11 June 2007 there's a small prize but it won't be a biometric bike lock, because I have not solved the technical problems of making one for less than $500 yet.
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09 June 2007