Intellectual Property and the Footwear and Textile Industries

Nottingham Lace Market

Author Allan Murray-Rust

Source Wikipedia

Creative Commons Licence

Jane Lambert


According to the East Midlands Textile Association ("Emtex") the East Midlands has the highest concentration of clothing and textile companies in the UK. Nottingham lace, Leicester knitwear, Northampton shoes have an enormous international reputation founded on branding, craftsmanship and design.

These intellectual assets that are protected by registered trade marks, registered designs and other intellectual property laws and on the 10 Sept and 7 Oct 2915 I shall explore such legal protection in a seminar for MBL entitled Intellectual Property and the Fashion Industry.  In this seminar I will cover the following topics:

• What sort of IP protection does my employer or client require for his business and where?
• What provisions should I insert in my employer or client's licence or manufacturing agreement?
• What should I do if I find copies or lookalikes of my products in competitors' shops?
• What's Hot? The implementation of s.74 of the Enterprise and Regulatory Reform Act 2013 - John Kaldor v Lee Ann/Specsavers vASDA/Thomas Pink v Victoria's Secrets
• IP basics; terminology, intellectual assets (brands, designs, technology and works of art and literature), intellectual property (trade marks, registered designs and unregistered design rights, patents, trade marks, law of confidence and action for passing off), institutions (Intellectual Property Office, Office for Harmonization in the Internal Market, European Patent Office, World Intellectual Property Organization), Sources of law (treaties and conventions (TRIPs, Paris and Berne), EU legislation, statutes), enforcement. remedies, licensing
• Advising the designer: types of design, aesthetic design, functional design, design registration and equivalent regimes, TRIPS, Paris and Rome Conventions, Designs Directive, Community Design Regulation, Copyright, Designs and Patents Act 1988, Registered Designs Act 1949, licensing, enforcement
• Advising the manufacturer; patents, trade marks, designs, licensing, cabbage, summary of laws in China, Egypt, India, Indonesia, Morocco, Pakistan, Thailand and Turkey
• Advising the retailer: trade marks, passing off, searches, agreements with designers and manufacturers
• Dispute resolution: High Court, Patent Court, IPEC (multi track and small claims), IPO examiners' opinions, appointed person
• IP strategy: identifying appropriate rights for particular jurisdictions, selecting and instructing foreign attorneys, watch services.

My seminar in London will take place on 10 Sept 2015 and my seminar in Leeds on 7 Oct 2015. Both will start at 09:30 and end at 17:15 and will earn 6 hours CPD. The standard cost is £480 but there will discounts for season ticket and smart plan subscribers. Register on-line or call  MBL on 0161 793 0984.

Northampton Business and IP Centre

Library card index

In Enterprising Licences 25 July 2915 NIPC Inventors Club I mentioned that Northamptonshire had received funding from the Arts Council to develop a Business & IP Centre at Northampton. I had noted that Northampton Central Library had joined the PatLib Network on 29 Jan 2015 so I checked the County Council's website to see whether there had been any change since then.

There has in fact been a workshop on intellectual property basics on 22 July 2015. Also, intellectual property advice sessions are available on the 1st and 3rd Thursday mornings of the month at Northampton Central Library and on the 2nd and 4th Tuesday afternoons of the month at Wellingborough Library. Anyone wanting to book a slot at one of those sessions should email answersplus@northamptonshire.gov.uk or call 01604 361447.

There is also an organization called Creative Northamptonshire which offers one-to-one advice services to businesses in the creative sector and publishes a newsletter from time to time.

Although it is not connected directly to the  Business and IP Centre, Northamptonshire Chamber of Commerce will hold a business exhibition and lunch on 11 Sept 2015 at the Park Inn Northampton, Silver Street, Northampton NN1 2TA.

So maybe Grantham really is interested in IP Law

Rabbit food produced by Henry Bell of
Granthan

Jane Lambert

Last September I tried to run a seminar on IP law as part of the Gravity Fields science and arts festival. To promote the seminar I wrote What has intellectual property got to do with Grantham? 4 Sept 2015 and an introduction to patent law as a Socratic dialogue in The Beehive pub. Try as I might I just couldn't raise any interest in IP and I had to cancel the seminar.

But a case that came before Mr Justice Arnold a few weeks ago shows that that there is at least one Grantham business that is interested in IP for it has contributed to the development of trade mark law. In Supreme Petfoods Ltd v Henry Bell & Co (Grantham) Ltd [2015] EWHC 256 (Ch) (12 Feb 2015) the Grantham pet food producer Henry Ball & Co. successfully resisted a claim by Ipswich based Supreme Petfoods Ltd. for trade infringement and passing off.  It is a very long, and unless you are a trade mark geek, difficult to follow, judgment but I have analysed it in my case note Trade Marks and Passing Off: Supreme Petfoods Ltd v Henry Bell & Co (Grantham) Ltd. 28 Feb 2915 which appears in my NIPC Law blog.

Basically, Supreme Petfoods objected to the packaging of Henry Ball's products because they had registered the word SUPREME as a word mark and various signs that incorporated the word SUPREME as device marks for various types of animals food.  The judge characterized their claim as an attempt "to monopolise use of the word SUPREME as a trade mark for animal food." He didn't let them do it.  He invalidated several of Supreme Petfoods' registrations except for small animal foods and held that Henry Ball did not infringe the trade marks that remained.

This is an important case for several reasons.

First, Mr Justice Arnold stressed that EU and hence UK trade mark law must be consistent with an annexe to the agreement that established the World Trade Organization called TRIPS (The Agreement on Trade-Related Aspects of Intellectual Property Rights) wherever possible. That is because it is an international agreement which HM government and the governments of all the other member states of the EU signed with most of the rest of the world's governments and pacta sunt servanda (promises need to be kept).

Secondly, the judge explored what makes a trade mark distinctive. It can be inherently distinctive simply because of its uniqueness or in the case of common English words like SUPREME it can acquire distinctiveness through making lots of sales and clever marketing. His lordship focussed on acquired distinctiveness.

Thirdly, the judge laid down six conditions that must be satisfied for a claim under s.10 (1) of the Trade Marks Act 1994 and art 9 (1) (a) of the  Community Trade Mark Regulation which he claimed to have been established by a long line of cases in the Court of Justice of the European Union. Though Mr Justice Arnold made no claim as to originality in respect of this analysis I think he is way too modest because I have never seen them anywhere else.  In Enterprise Holdings, Inc v Europcar Group UK Ltd and another [2015] EWHC 17 (Ch) (13 Jan 2015) which he decided a month earlier he made a similar analysis of the case law for claims under s.10 (2) and (3) of the Act or arts 9 (1) (b) and (c) of the Regulation. When read together Europcar and Supreme set out almost everything you need to know about trade mark law.

Fourthly, his lordship analysed in detail the last two of the six conditions for a successful suit under s.10 (1) or art 9 (1) (a), namely the use of the defendant's sign

"(v) .... must be in relation to goods or services which are identical to those for which the trade mark is registered; and
(vi) it must affect, or be liable to affect, one of the functions of the trade mark."

Most of Mr Justice Arnold's judgment was on those two points. He decided them in the defendant's favour at paragraph [165] because

"Henry Bell's use of the sign SUPREME would be understood by the average consumer as being purely descriptive."

In other words Henry Bell's packaging suggested that its food was of supreme quality and not that it came from Supreme Petfoods Ltd.

Fifthly, he made a very pithy comparison of mark and sign and specified goods and goods in use at paragraph [185] before throwing out the claim under s.10 (2) and art 9 (1) (b).

Sixthly, he did the same for the claim under s.10 (3) and art 9 (1) (c).

So this is a great case if you are a litigation solicitor in Lincoln or commercial lawyer in Spalding and your client walks into your office with a trade mark problem. Instead of thinking of learning curves and what they will do to your profits - or worse what patent counsel will do to those profits - you should read this case with my analyses and all will become clear I promise you.

Now I know this has nothing to do with intellectual property law but I am a ballet nut and the only other person I know who is crazier about ballet than me is called Michelle and she also comes from Linconshire. Your great county, oh Yellow Bellies, happens to host one of the best little dance companies in England called Chantry Dance Company which you really should support with your patronage. Last year they ran a workshop at the Drill Hall in Lincoln.  Here is the video of the show that put together with the help of two folks from Yorkshire and two from Coventry.  Can you identify the dancer stage right in the second row?

'Dream Dance' workshop from Rae Piper on Vimeo.

If you can I will buy you a pint next time we are both in The Beehive. If you want to discuss Supreme Petfoods and Bell or trade mark law in general give me a ring on 020 7404 5252 during normal office hours or message me through my contact form. Hasta luego amigos.

Northamptonshire Central Library joins the PatLib Network

Northamptonshire Central Library

Photo Wikipedia

The PatLib network is a European network of libraries providing information on patents and other intellectual property rights to their local communities. I have written extensively about the PatLib network and you will find basic information and links to my other articles in PatLib Libraries in the UK 29 Jan 2015 Inventors Club blog, There are 15 PatLib libraries in the UK and Northamptonshire Central Library is one of the latest to join the network.

The Library offers a variety of business support and IP services in association with Northamptonshire Enterprise Partnership. These include:

• information on IP, copies of IPO and EPO literature
• enquiry service by appointment
• advice on searching
• free public access to internet, IP information resources, databases
• commissioned IP searches
• bespoke training sessions
• business information advice sessions
• referrals to other advice/service providers
• workshops and seminars.

More information about these and other services can be obtained from the Northamptonshire Enterprise Hub Facebook page.

Leicester Business sued for Copyright Infringement: McCormack Training Ltd v Goldmark Training Services Ltd and Another

Jane Lambert

In McCormack Training Ltd v Goldmark Training Services Ltd and Others [2015] EWHC 41 (IPEC) McCormack Training Ltd of Birmingham sued Goldmark Training Ltd and its director Ruth Goldsworthy ("Mrs Goldsworthy") of Leicester for copying a training manual used to teach nightclub bouncers and other security personnel how to exert physical restraint. The alleged copy was a manual used by the defendants called the "HZL Hostile and Hazardous Environment Training".  The claimant company was represented by Gateley LLP who instructed Charlotte Scott as counsel. The defendants were represented by Mr Scott Farmsworth who appears to have acted as both litigator and advocate.

The McCormack manual consisted of text and photos of individuals carrying out various physical restraints. The photos had been taken at an hotel in Birmingham in 2009 at the instigation and under the direction of one Andy McCormack ("Mr McCormack") who was the sole shareholder and director of the claimant company. There was no dispute that copyright subsisted in those photos and that those copyrights had been assigned to McCormack Training Ltd. The defendants claimed to have been licensed by the claimant to use those photos. The text was created after the photos and the parties disputed w hether it was written by Mr McCormack or Mrs Goldsworthy. The claimant company also argued that the combination of words and photos created a dramatic work.  Mrs Goldsworthy and Goldmark Trading denied copying and argued that dramatic copyright could not subsist in those works as a matter of law.

This case turned on its facts but the problem for Judge Hacon who tried the case was that he could not rely on either Mr McCormack or Mrs Goldsworthy and her brother Ian Fox who was also a director of the defendant company. He described Mr McCormack as "a garrulous witness who was often imprecise about dates and other details and was inclined to respond to questions by delivering argument rather than answering the question put to him." He found "Mr Fox and Mrs Goldsworthy were more self-controlled, but equally unsatisfactory as witnesses."

Relying largely on extrinsic evidence the judge concluded that there was no licence to copy the photos but that Mrs Goldsworthy was the author of the text. As McCormack's could not claim copyright in the text any claim for infringement of dramatic copyright had to refer to the photographs. Because one photograph of a dramatic work in progress could not constitute a record of that work such as to give rise to copyright in it as a dramatic work, copyright could not subsist in any of the sequences. His Honour added at paragraph [90]:

"Since one photograph of a physical restraint technique does not record the technique as a dramatic work, a collection of such photographs cannot record a sequence of techniques such as to create copyright in the sequence as an overall dramatic work. Moreover, there was no suggestion that the techniques had to be 'performed' in any fixed sequence. In my view an arbitrary sequence of physical restraint techniques, one possible sequence in many, could not collectively constitute a dramatic work."

The upshot was that the claim succeeded in respect of the photos but failed in respect of the literary and dramatic works.

The claimant had sought additional damages under s.97 (2) of the Copyright, Designs and Patents Act 1988. Referring to his decisions in Henderson v All Around The World Recordings Limited [2014] EWHC 2087 (IPEC) and DKH Retail Limited v H. Young (Operations) Limited [2014] EWHC 4034 (IPEC) which I discussed in Inquiries as to Damages in the Intellectual Property Enterprise Court: Henderson v All Around the World Recordings Ltd. 6 Nov 2014 NIPC Law and What is the definition of "design" in s.213 (2) of the Copyright, Designs and Patents Act 1988 following the deletion of "any aspect of" from the sub-section 13 Dec 2014 the judge held that additional damages were available only in accordance with art.13 (1) of Directive 2004/48/EC on the enforcement of intellectual property rights. In his judgment none of the circumstances for awarding additional damages applied to this case.

Should anyone wish to discuss this note or copyright in general he or she should call me on 0115 824 9090 during normal office hours or use my contact form.

Hinckley company wins copyrights and unregistered Community design action

Jane Lambert

Fashion and textiles are an important industry in the East Midlands. According to Wikipedia

"Hinckley is a traditional centre of the hosiery industry. The first framework knitting machine was brought here by Joseph Iliffe in the 17th century and by the 19th century Hinckley was responsible for a large proportion of Britain's hosiery production. Since the Second World War the hosiery industry has steadily shrunk in size although several textile firms remain in the area."

Perhaps because of its connection with fashion and textiles Wikipedia also reports that Hinckley is home to the creative industries with up and coming graphic designers.

In John Kaldor Fabricmaker UK Ltd v Lee Ann Fashions Ltd [2014] EWHC 3779 (IPEC) (21 Nov 2014) a Hinckley clothing manufacturer successfully resisted a claim for copyright and unregistered Community design infringement by a London design house because it was able to show that its fabrics, though similar to the claimant's, had been designed independently. For those who want to know details of the case I have written the following article Is this a copy? John Kaldor Fabricmaker UK Ltd v Lee Ann Fashions Ltd 11 Dec 2014 NIPC Law.

There are a couple of important lessons from this case.

The first is that the claimant would have won had it registered its design as a registered design in the UK under the Registered Designs Act 1949 or as a registered Community design for the whole UK under the Community Design Regulation as you don't need to prove copying for registered or registered Community design infringement - only that the defendant's design does not produce on an informed user a different overall impression. As there is no examination of for registered or registered Community designs it is a lot cheaper and more straightforward to apply for a design or Community design registration than it is to apply for a patent or even a trade mark.  Many businesses do it for themselves.

The second is that IP litigation is no longer something to be feared as there are now limits to the costs that can be incurred and courts focus on the important issues so that trials are finished within a day.

If anyone wants to discuss this case or indeed copyright and Community designs in general he or she should call me on 0115 824 9090 or 020 7404 5252 during office hours or use my contact form.

Launch48 Leicester

National Space Centre, Leicester

Photo Wikipedia

Jane Lambert


Launch48 Leicester is described as "a high energy weekend to pitch, build and launch a start-up in 48 hours". It will take place at Dock which is next door to the National Space Centre in Leicester between 18:00 on 21 and 22:00 on 23 Nov 2014.

The programme is offered by Oxygen Enterprise Partners Ltd ("Oxygen") in conjunction with the Leicester and Leicestershire Local Enterprise Partnership. Oxygen delivers a series of programmes that invest in, support and bring to life early stage and growth businesses.  In this video Oxygen explains what happens in during these weekends. At a cost of £39.95 (or £29.95 if you are a student) it seems very good value.

If you want to attend this event here is the link to Oxygen's Eventbrite page.