Wednesday 23 February 2022

Passing off - Philip Warren & Sons Ltd v Lidl


Jane Lambert

Chancery Division (Daniel Alexander QC) Philip Warren & Son Ltd v Lidl Great Britain Ltd and others [2021] EWHC 1097 (Ch) (30 April 2021)

This was an action for damages for passing off by family butchers in Launceston against the Lidl supermarket chain.  The claimant, Philip Warren & Sons Ltd ("Warren"), supplies high-quality meat to restaurants and specialist retailers and has its own retail business in Launceston and online.  Lidl used the mark "Warren & Sons" for its own brand meat products between 2015 and 2020.  Lidl launched a conditional passing off counterclaim alleging that Warren was trading on its goodwill.  

The Trial
The action and counterclaim came on before Mr Daniel Alexander QC sitting as a judge of the High Court between 18 and 25 Feb 2021.  The learned deputy judge delivered his judgment on 30 April 2021 (see Philip Warren & Son Ltd v Lidl Great Britain Ltd and others [2021] EWHC 1097 (Ch) (30 April 2021)).  At para [6] he said that he had found considerable goodwill in the claimant's brand in and around Launceston and in the high-end wholesale trade, but insufficient evidence of a significant level of operative misrepresentation to any category of Warren's customers.   He, therefore, dismissed the claim and counterclaim at [150]. 

The Consequential Hearing
There was a further hearing on 1 June 2021 followed by written submissions on 16 and 26 July 2021  In those proceedings Lidl sought indemnity costs while Warren sought no order. Because of unflattering articles about the case that had appeared in the press, Lidl sought a publicity order.  Warren asked for permission to appeal.  In Philip Warren & Son Ltd v Lidl Great Britain Ltd and others [2021] EWHC 2372 (Ch) which Mr Alexander handed down on 26 Aug 2021, he ordered Warren to pay 90% of Lidl's costs with a summary assessment of £581,785.47. He refused a publicity order and granted permission to appeal on grounds relating to misrepresentation and damage.

Passing Off
It was common ground that the general principles of the law of passing off were set out in Reckitt and Colman Products Ltd. v Borden Inc   [1990] UKHL 12, [1990] RPC 341, [1990] 1 All ER 873, [1990] WLR 491, [1990] 1 WLR 491. Starting from that premises, the learned deputy judge directed himself as follows:
  1. Every passing off case turns on its own facts (para 20-015 of Kerly's Law of Trade Marks and Trade Names 17th ed).
  2. Goodwill may be more or less attractive at bringing in custom in different geographical regions and for particular sectors of the public. The impact of goodwill depends on a wide range of factors such as the degree of attention customers pay, the circumstances of use of the signs and of the trade in general including any factors tending to promote or counter confusion.  
  3. A 'fairly thin spread of goodwill' outside the claimant's main centre of operations may sometimes suffice for nationwide relief.  In Mr Alexander's view, "a claimant must in general show that it has sufficient goodwill which is likely to suffer substantial damage as a result of the defendant's use of the mark in question." 
  4. The alleged misrepresentation must have deceived or be likely to deceive and the claimant must be likely to suffer damage by such deception. Mere confusion which does not lead to a sale is not sufficient but it is sufficient that the defendant misrepresents its goods in such a way that it is a reasonably foreseeable consequence of the misrepresentation that the plaintiff's business or goodwill will be damaged.  
  5. Any misrepresentation must be more than transitory and must be likely to be operative. It is not sufficient that a purchaser may be misled or caused to wonder whether there is a connection with another trader. 
  6. The question of whether there is a misrepresentation and whether it is likely to be significant quantitatively or qualitatively is one for the court.
  7. Passing off is a tort involving deceit of a particular kind. A claim must have at its heart a serious allegation that a defendant has been specifically misleading a significant number of members of the trade or public into believing that its goods are connected with the claimant. It is not enough if a defendant's actions cause limited and/or temporary confusion, frustration or annoyance or if a defendant sells products that appear to be more authentic than they are.
Applying those Principles
At para [118] of his 30 April judgment, Mr Alexander said:
"In this case, the key questions can be answered by considering whether, having regard to the goodwill that existed among particular parts of the public, the sale by Lidl of WARREN & SONS branded meats was likely to have involved an operative misrepresentation to a sufficiently substantial part of the relevant public that those goods were connected with PWS such as to cause [Warren's] goodwill in that part of the public material damage. There are several ways of addressing such an issue. Given the way in which the case was argued on both sides, it is convenient to do so by reference to categories of [Warren's] customers to whom potentially operative misrepresentations are said to have been made: (a) wholesale customers (b) retail customers local to and remote from Launceston. This is not to divide [Warren's] goodwill into 'retail' and 'wholesale' or in different parts of the country, which is somewhat artificial, but is a way of analysing the extent to which misrepresentations are likely to have been made on the basis of how and in what way the respective marks are known and encountered." 

The deputy judge found that Warren had built up a substantial goodwill in the wholesale trade by 2015.  It supplied restaurants and high-end establishments in Southeast England and elsewhere.  Mr Alexander considered it highly unlikely that Lidl's sale of Warren & Sons branded meats would give rise to an operative misrepresentation to a significant number of wholesale traders. There was hardly any evidence of confusion and none of damage to the claimant's goodwill.

Lidl conceded that Warren had goodwill as a retailer of high-quality meat in and around Launceston and Mr Alexander assumed that at least some of its customers would also have shopped at Lidl. However, there was very little evidence of operative misrepresentation. Their respective logos were very different They were sold through different sales outlets. There were very few complaints or other communications to suggest that consumers have been misled. Consequently, there was precious little evidence of confusion or damage.

Mr Alexander found that there was likely to be some goodwill among visitors to Cornwall, mail order and website customers and maybe high-end restaurant diners but there was no evidence as to how many of them were Lidl customers. Even those who were Lidl customers were unlikely to perceive a connection with Lidl's goods. If and insofar as any of them did, their misconceptions were quickly corrected by Warren. 

The Counterclaim
Lidl contended that if it was passing off its goods as Warren's on the basis of Warren's goodwill in Launceston Lidl had goodwill in the Warren and Son mark in the rest of the country with which Warren was misrepresenting a connection. The deputy judge rejected that contention for several reasons. First, Warren had started trading under its mark first. Secondly, there was no evidence that the public outside Launceston connected Warren's goods with Lidl's mark.  Thirdly, there was no likelihood of damage.

The Settlement Offer
At para [138] of the 30 April judgment, Mr Alexander noted that Warren was claiming £38.3 million on an account of profits or £17.7 million on an inquiry as to damages.  The learned deputy judge did not have to consider the pecuniary remedies because the action and counterclaim had failed but he indicated that they were unlikely to have been awarded on that scale.  At para [20] of the 26 Aug judgment, the deputy judge noted that Lidl had offered to pay damages of £230,000 to Warren and all its costs in October 2020. Warren rejected that offer in the hope of recovering more.

"The Mail" Article
After trial, but before judgment, Warren's managing director and its solicitor assisted a journalist from the Mail on Sunday/Mail Online with an article with the headline “Fake Moos?” A copy of that article appears in the annexe to the 26 Aug judgment.  It focused on the case, was given nationwide publicist and was picked up by other papers, including some in Cornwall. The article did not paint a flattering picture of Lidl’s conduct. The company was accused of deliberately taking Warren's brand with a view to using PWS’s good name to sell poorer quality produce. The article resulted in numerous adverse comments including threats never to shop at Lidl again. 

Lidl's Claim for Indemnity Costs
Lidl claimed costs on an indemnity basis on the ground that Warren had failed to beat its Part 36 offer.  Warren argued that any award to Lidl should be reduced because it had rejected an offer to mediate.  

Mr Alexander's starting point was CPR 44.2:

"(2) If the court decides to make an order about costs –
(a) the general rule is that the unsuccessful party will be ordered to pay the costs of the successful party; but
(b) the court may make a different order.


(4) In deciding what order (if any) to make about costs, the court will have regard to all the circumstances, including –
(a) the conduct of all the parties;
(b) whether a party has succeeded on part of its case, even if that party has not been wholly successful; and
(c) any admissible offer to settle made by a party which is drawn to the court’s attention, and which is not an offer to which costs consequences under Part 36 apply."

He also considered CPR36.17 (1):

"(3) Subject to paragraphs (7) and (8), where paragraph (1) (a) applies, the court must, unless it considers it unjust to do so, order that the defendant is entitled to—
(a) costs (including any recoverable pre-action costs) from the date on which the relevant period expired; and
(b) interest on those costs."

He referred to para [43] of Lord Justice Coulson's judgment in Lejonvarn v Burgess [2020] EWCA Civ 114:

"…a defendant (such as the appellant in the present case) who beats his or her own Part 36 offer, is not automatically entitled to indemnity costs. But a defendant can seek an order for indemnity costs if he or she can show that, in all the circumstances of the case, the claimant's refusal to accept that offer was unreasonable such as to be 'out of the norm.' Moreover, if the claimant's refusal to accept the offer comes against the background of a speculative, weak, opportunistic or thin claim, then an order for indemnity costs may very well be made. That is what happened in Excelsior.”
He also mentioned

 para [80] of the same judgment:

"When a defendant beats its own Part 36 offer, the court should always consider whether, in consequence, the claimant's conduct in refusing that offer took the case out of the norm. Sometimes it will; sometimes it won't. Mr Cohen articulated the question that had to be asked in these terms:
'At any stage from the date of the offer to the date of the outcome, was there a point when the reasonable claimant would have concluded that the offer represented a better outcome than the likely outcome at trial?'”

Mr Alexander directed himself as follows at para [31] of his judgment:
"The court is obliged to consider 'all the circumstances of the case' but these fall predominantly into the categories of:-
1. Conduct before and during the proceedings (Part 44.2 (5) (a))
2. The reasonableness of the claimant's decision to pursue a particular allegation or issue (Part 44.2 (5) (b))
3. The manner in which a claimant has pursued its case (Part 44.2 (5) (c))
4. The extent to which a claimant has exaggerated its claim (Part 44.2 (5) (d)),"

The deputy judge considered paras [31] and [32] of the Lord Chief Justice's judgment in  Excelsior Commercial & Industrial Holdings Ltd v Salisbury Hammer Aspden & Johnson and another [2002] EWCA Civ 879:

"[31] … those paragraphs set out the need for there to be something more than merely a non-acceptance of a payment into court, or an offer of payment, by a defendant before it is appropriate to make an indemnity order for costs…However, I would point out the obvious fact that the circumstances with which the courts may be concerned where there is a payment into court may vary considerably. An indemnity order may be justified not only because of the conduct of the parties, but also because of other particular circumstances of the litigation. I give as an example a situation where a party is involved in proceedings as a test case although, so far as that party is concerned, he has no other interest than the issue that arises in that case, but is drawn into expensive litigation. If he is successful, a court may well say that an indemnity order was appropriate, although it could not be suggested that anyone's conduct in the case had been unreasonable. Equally there may be situations where the nature of the litigation means that the parties could not be expected to conduct the litigation in a proportionate manner. Again the conduct would not be unreasonable and it seems to me that the court would be entitled to take into account that sort of situation in deciding that an indemnity order was appropriate.
[32] I take those two examples only for the purpose of illustrating the fact that there is an infinite variety of situations which can come before the courts and which justify the making of an indemnity order…This court can do no more than draw attention to the width of the discretion of the trial judge and re-emphasise the point that has already been made that, before an indemnity order can be made, there must be some conduct or some circumstance which takes the case out of the norm. That is the critical requirement."

Finally, Mr Alexander referred to Lord Justice Christopher-Clarke's judgment in Excalibur Ventures LLC v Texas Keystone Inc and others [2013] EWHC 4278 (Comm) which set out relevant factors when deciding the incidence of costs:

"(a) advances and aggressively pursues serious and wide-ranging allegations of dishonesty or impropriety over an extended period of time.
(b) advances and aggressively pursues such allegations despite the lack of any foundation in the documentary evidence for those allegations and maintains the allegations without apology to the bitter end.
(c) actively seeks to court publicity for its serious allegations both before and during the trial.
(d) turns a case into an unprecedented factual inquiry by the pursuit of an unjustified case.
(e) pursues a claim which is to put it most charitably thin, and in some respects far-fetched.
(f) pursues a claim which is irreconcilable with the contemporaneous documents.
(g) commences and pursues large scale and expensive litigation in circumstances calculated to exert commercial pressure on a defendant and during the course of the trial of the action the claimant resorts to advancing a constantly changing case in order to justify the allegations which it had made, only then to suffer a resounding defeat." (see also European Strategic Fund Limited v Skandinaviska Enskilda Banken AB [2012] EWHC 749 (Comm)).

In deciding whether it had been unreasonable for Warren to have refused Lidl's offer of settlement in Oct 2020 the deputy judge traced the history of the litigation. The action had begun on 22 Nov 2019 with a 400 page letter before claim seeking damages of £47 million more than 4 years had elapsed since the first marketing of meat in the Warren & Sons branding.  Lidl asked for time to consider the letter which Warren refused launching proceedings without further warning, Shortly before Lidl made its offer, Warren offered to settle its claim for just under £28.7 million.  On 29 Jan 2021, Warren made a further offer to settle for £15 million.  

Although he considered it regrettable that Warren did not accept Lidl's offer of settlement, he did not regard Warren's refusal as sufficiently unreasonable to justify an award of costs.  Lidl also relied on 11 other factors which are listed in para [44] of Mr Alexander's judgment. These did not change his assessment whether taken individually or collectively.  The learned deputy judge's reasoning at [46] is instructive:

"First, it may have been better and possibly more productive of an early settlement had the litigation been conducted at lower intensity, including as to choice of court. However, that may be a characteristic of litigation which is conducted by a metaphorical “little person” against a “big corporation” where a claimant feels the need to shout to be heard. Second, until its October 2020 offer, Lidl had not undertaken not to use WARREN & SONS again and had not surrendered the registered trade mark. Third, to some extent, Lidl brought this case upon itself by its branding strategy which involved choosing a fictional brand to make its products more attractive and not troubling too much about whether it might affect the business of an undertaking with a similar name. There is nothing which required Lidl to take that approach to branding and the brand has now changed. Fourth, some (including me and perhaps even Lidl, since they were prepared to make a substantial offer to settle the case in October 2020) thought the case far from hopeless. Fifth, having heard from Mr Ian Warren, I am satisfied that [Warren] had reasonable motives for bringing the case."

Damages Based Agreements ("DBA")
Warren's legal representatives had been retained under an agreement to share any damages that might be recovered from Lidl. Such agreements had been made possible by s.45 of the Legal Aid, Sentencing and Punishment of Offenders Act 2012.  In written submissions after the hearing, Lidl criticized such agreements on the grounds that such funding was capable of creating or increasing incentives to pursue speculative or opportunistic litigation. Lidl argued that the pursuit of litigation on that basis might create scenarios in which cases would become harder to settle because one side was at “no risk of loss on damages while pursuing a claim with the chance of vast winnings”.  

Mr Alexander rejected that argument at para [52] of his judgment:

"I think there is a further factor in play here, as the authorities cited by the parties suggest. Historically, it was regarded as contrary to public policy for lawyers to engage in what are kinds of joint venture to pursue claims, making payment for legal services contingent upon the outcome. However, with diminishing public financing for claims, the approach to financing litigation has liberalized considerably, first to enable cases to be brought using conditional fee agreements and, more recently, permitting certain DBAs. The litigation financing market has also developed, with undertakings using claims as (sort of) investment vehicles. Without getting into the myriad complexities of the justification for these approaches and the, often difficult, economic (including game theoretic) issues which these can raise, there are two broad reasons why that is desirable. First, it can enable access to justice, permitting cases to be brought which would otherwise not be maintainable because of the risks and costs involved. That can ensure that, in particular, smaller litigants which may be less able to bear the risks of uncertain litigation are placed on a more equal footing with larger undertakings. Second, it accords more with principles of freedom of contract."

Warren's Claim to a Reduction of Costs
Warren sought a reduction of costs on the basis that it had succeeded on several issues in the litigation and that Lidl had refused to mediate.  The deputy judge held that Warren was entitled to the costs of the counterclaim which it had won but he did not consider that Lidl had acted unreasonably in refusing to mediate.  His award to Lidl of 90% of its costs on the standard basis reflected his findings.

There is a table at para [108] of Mr Alexander's judgment in which he set out Warren's costs against Lidl's at each stage of the litigation together with his assessment.  Warren's costs of the whole action amounted to £483,057 while Lidl's totalled £777,690. The deputy judge assessed Lidl's costs at £646,428 which he reduced to £581,785 to take account of the 10% reduction for Warren's success on the counterclaim.

Publicity Order
In the letter before claim and subsequent correspondence, Warren's solicitors had warned Lidl of the potential reputational damage that it might incur were it not to settle. They added that they would seek a publicity order were Warren to win. After trial but before judgment a journalist from The Mail on Sunday approached Warren's solicitors to discuss IP litigation in general.  Someone in the firm gave the journalist a copy of the claimant's but not the defendants' skeleton argument. The journalist wrote the article that is annexed to the judgment. Similar articles appeared in the Western Morning News, Cornish and Devon Post, Cornish Herald, Plymouth Herald, Meat Management Magazine, MSN Lifestyle, Cornwall Live, Plymouth Live, Meat Management Magazine Online and the Western Daily Press. The overall impression conveyed by the article was that Lidl’s conduct was much worse than that of other retailers in that it had deliberately targeted the claimant and had done nothing about it. 

Mr Alexander referred to  Samsung Electronics (UK) Ltd v Apple Inc [2013] FSR 9, [2013] EMLR 10, [2013} FSR 9, [2013] ECDR 2, [2012] EWCA Civ 1339 and HRH The Duchess of Sussex v Associated Newspapers Ltd [2021] EWHC 510 (Ch)) from which he discerned the following principles at para [167]:

"a. There is an equitable discretionary power under s.37 of the Senior Courts Act 1981 to make publicity orders in favour of a successful defendant when it is just and convenient to do so.
b. Publicity orders should not be the norm and should only be granted when it is necessary and proportionate.
c. The test in the case of an order sought with respect to a non-infringing product is whether there is a need to dispel commercial uncertainty in the marketplace.
d. The purpose of such an order is not to punish a party, make it “grovel” or lose face. In particular, it is not right to condemn a party to public humiliation before it has had an opportunity to argue its case on appeal.
e. Where the need to do so arises as a result of inaccurate reporting by journalists, a party will only be held responsible for such (and therefore liable to seek and pay for the publicity ordered to be provided) if it contributed to that inaccuracy by inaccurate statements and false innuendo.
f. The effect of the authorities is that the court is also likely to take into account the following factors:
i. The extent of publicity given to the case and its outcome, apart from the publicity order;
ii. Whether any decision the subject of a publicity order may be subject to appeal;
iii. The extent to which there is or may be a dispute or agreement over the terms in which any notice should appear;
iv. Whether the order would involve more than a measured incursion into any publication’s freedom to decide what it publishes and does not publish, and is justified in pursuit of a legitimate aim."

Even though they were not the subject of express prior guidance, he directed himself at [168] that it was appropriate to take the following further factors into account:

"i. Whether it is straightforward adequately to encapsulate the effect of a court decision in a brief notice or whether balance requires more by way of narrative;
ii. The risk that the order may result in an inaccurate impression, including as to whether the court has endorsed or criticized the conduct of the parties or third parties;
iii. The overall effectiveness and impact of a publicity order at remedying the matter said to require such an order;
iv. Whether other practical and legal remedies are or may be available to address the issue;
v. What impact a publicity order may have on third parties;
vi. Whether a publicity order made at a given stage in the proceedings, if they have not reached finality, would risk creating a further issue which may make it harder for the parties to settle a case, especially if the parties have indicated a wish to do."
Lidl submitted that there was a clear case for a publicity order.  The articles had given an unfair impression of Lidl’s conduct which had contributed to significant adverse comment. The outcome of the case had not received widespread publicity. Unless a publicity order was made, the public would be left with an impression that Lidl was guilty as charged. Warren replied that the threshold requirements for making a publicity order against it had not been satisfied.  This was not a case where there had been widespread infringement.  Lidl had stopped using the Warren & Sons mark.  The decision might easily be reversed on appeal.  The press reports may not have been even-handed but they had not been untruthful. 

Mr Alexander said that there were strong arguments in favour of a publicity order even though this was different from the usual case in such orders are made but declined to make one.  It was uncertain that such an order would be effective or benefit the defendants. There was also the possibility that his judgment would be reversed on appeal.  There had been no impropriety on Warren's part or that of its solicitors.  A publicity order might also impede settlement.

Permission to Appeal
The deputy judge has given permission to appeal with some hesitation.  He explained his reasoning at para [196] of his judgment:
"There is, however, in the law of passing off a potential debate as to how serious/intensive/frequent/damaging possible confusion must be before it will be treated as actionable. In my view, the evidence did not show that it was likely to be sufficiently serious/intensive/frequent/damaging but was, at best, limited short-lived, sporadic and with no real impact. However, this is an area of law in which precisely where courts place the lower boundary of seriousness can determine whether claims are plausible or not. That is a legitimate subject of appellate consideration, notwithstanding my view that this case does not get to that level."

Costs of the Conseuentlial Hearing
Mr Alexander departed from the usual practice of including the costs of the consequential hearing in the costs of the trial by ordering each party to bear its own. That was because Warren had successfully resisted the publicity order and the application for indemnity costs.  

The judgement following the consequential hearing is considerably longer than the judgment following the trial. That is not because the issues on passing off had been straightforward.  Mr Alexander has helpfully clarified the substantive law.  The reason why the 26 Aug judgment is so long is because of the multiple points raised on costs and the approach to a publicity order. all of which are set in context.  Anyone wishing to discuss this article may call me on 020 7404 5252 during office hours or send me a message through my contact form.

Tuesday 15 June 2021

IP and Tourism

Standard YouTube Licence

In 10 Opportunities, Towards a Local Industrial Strategy, the Cornwall and Isles of Scilly Local Enterprise Partnership noted:
"Cornwall and the Isles of Scilly are one of the UK’s strongest tourism assets and provide significant opportunities for further export market development. As a leading domestic brand, we attract over four million UK staying trips every year. But the region’s huge potential to draw in holidaymakers from around the world has yet to be fully realised."

The meeting of the heads of government of the Group of Seven industrial nations at Carbis Bay between 11 and 13 June 2021 has provided a golden opportunity for the Cornish tourist industry to promote its services to that international market.

In their joint report Boosting Tourism Development through Intellectual Property, the World Intellectual Property Organization ("WIPO") and the UN World Tourism Organization ("UNWTO") have shown how intellectual property (IP) rights can be powerful tools to boost tourism development and competitiveness.  The study contains 18 case studies and considers how trade marks, geographical indications, copyrights and, in some cases, industrial designs and patents reinforce the competitive advantages of various popular tourist destinations.

Cornwall is famous for surfing, sailing and other water sports. Advances are often made in the design and construction of surfboards, boat hulls, navigation and communication technologies. Unlike many other tourist destinations, Cornwall has thriving aerospace and information technology industries. Businesses in those industries produce materials, electronic equipment and other inventions that can be used in the leisure industries and vice versa.  Patents are therefore more important to the Cornish tourist and leisure industries than they were to the regions in any of the case studies discussed by the WIPO and UNWTO.

Anyone seeking advice on patents for inventions will find patent attorneys in Redruth and Truro.  They may be located through the "Find A Patent Attorney" facility on the Chartered Institute of Patent Attorneys' website.  The nearest Business and IP Centres are in Exeter and Plymouth. Several law firms in Cornwall claims expertise in IP and there are rather more in Plymouth, Exeter and Bristol.  Bristol is a Business and Property Court centre with judges who hear IP cases. There does not appear to be a Cornish inventors club according to the Wessex Round Table of Inventors  That website contains a useful article by Graham Rawlinson on Starting an Inventors' Club.

Anyone wishing to discuss this article can call me on 020 7404 5252 during office hours or send me a message on my contact form.

Monday 14 June 2021

The G7 Communique and IP

Author Andy F Licence CC BY-SA 3.0 Source Wikimedia Commons

Jane Lambert

Although the meeting of the heads of government of the Group of Seven ("G7") industrial nations at Carbis Bay may be remembered for the wrong reasons such as the Foreign Secretary's outburst after the French President gently tried to point out that the customs arrangements that apply to Northern Ireland are different from those in Great Britain which is not the case in France it has drawn the world's press and broadcasters to Cornwall.  That ought to benefit the duchy's tourist industry once the public health emergency is over.

It appears that a lot of work was done in preparation for the meeting and agreement was recorded on a wide range of issues in the Carbis Bay G7 Summit Communiqué.  The document covers the following topics:
  • Health (paras 6 to 18)
  • Economic Recovery and Jobs (paras 19 to 26)
  • Free and Fair Trade (paras 27 to 30)
  • Future Frontiers (paras 31 to 36)
  • Climate and Environment (paras 37 to 43)
  • Gender Equality (paras 44 to 47)
  • Global Responsibility and International Action (paras 48 to 69).
The leaders said that they had revitalized their G7 partnership in Cornwall. They looked forward to working with others and each other at the G20 Summit, COP26, and CBD15 and the UN General Assembly.

In view of the announcement by the US Trade Representative of the US government's intention to enter text-based negotiations on the possible relaxation of intellectual property protection for COVID-19 vaccines on 5 May 2021 which I mentioned in The Patent Waiver Debate in NIPC Law on 8 May 2021, it seemed likely that there would be a statement on the issue in the communiqué.  

The issue was considered in para 12.  The heads of government committed "to an end-to-end approach to boost supply of COVID-19 tools, including vaccines, raw materials, tests, therapeutics, and personal protective equipment (PPE), through more production in more places to sustain a global supply network for this pandemic and the next" based on the principles of open trade and transparency, including through terminating unnecessary trade-restrictive measures and supporting open, diversified, secure and resilient supply chains. It will be backed up by a practical and pragmatic approach to breaking down bottlenecks that are holding back the efficient use of current production capacity, as well as promoting partnerships to increase capacity further.

Rather than amendingTRIPS and national patent laws. the leaders seemed to prefer voluntary licensing and technical transfer:
"Emphasising the need for equitable access to COVID-19 vaccines, we will support manufacturing in low income countries and, noting the importance of intellectual property in this regard, we will engage constructively with discussions at the WTO on the role of intellectual property, including by working consistently within the TRIPS agreement and the 2001 Doha Declaration on the TRIPS agreement and Public Health. We note the positive impact that voluntary licensing and technology transfer on mutually agreed terms have already made to increasing global supply. We note the positive impact that voluntary licensing and technology transfer on mutually agreed terms have already made to increasing global supply. We will explore all options to ensure affordable and accessible COVID-19 tools for the poorest countries, including non-profit production, tiered and transparent pricing, and sharing by manufacturers of a proportion of production with COVAX, noting the previous precedent of the 10 per cent target in relation to influenza."
In other areas such as free trade, the leaders appeared to support a strengthening of IP protection.  For example, in the context of reforming the World Trade Organization at para 30, they called for modernization of the global trade rulebook so that it,,,,, strengthens rules to protect against unfair practices, such as forced technology transfer" and "intellectual property theft......"

Commjuniqués from heads of government meetings are not biding but they are statements of intent. Anyone wishing to discuss this article or any of the topics mentioned in it may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

Thursday 16 April 2020

Online IP Services for Cornish Businesses

Richard Trevithick
Painter John Linnell

Jane Lambert

Considering that its population has only recently exceeded half a million, Cornwall has contributed much to science and technology over the years.  Inventors like Richard Trevithick and Sir Humphry Davy are household names. Innovation continues in Cornwall in all sorts of fields and technologies from aerospace at the Aerohub to wellbeing at the Health and Wellbeing Innovation Centre.

While perhaps not quite as extensive as in other parts of the UK, Cornwall appears to have a reasonably good infrastructure to support innovation in normal times.  There are several university campuses in the Duchy one of which operates the Cornwall Innovation centres.  At least two firms of patent attorneys have offices in Cornwall.  There are maker spaces at Makernow Falmouth and the Plymouth FabLab.  Just outside Cornwall, there is a Patent Information Unit at Plymouth Central Library and Business and IP Centres at Barnstaple and Exeter. 

These are, of course, far from normal times but that does not mean that entrepreneurs, inventors, designers, makers and artists have to put their plans on hold.  There are plenty of good online courses offered by the Business and IP Centre at the British Library in London.  Recently I attended one given by Nigel Spencer entitled Research for New Business which I can thoroughly recommend. There are four today on Launching in Turbulent Times,  Tech startup taster: How to get started as a non-technical founder, Interim and emergency planning for you and your business and How to attract the right investors. There are also many useful articles and videos on-site as well as lively discussion in the Centre's Linkedin and Facebook groups and twitter stream.

For more specific information on intellectual property, the best site in this country is the Intellectual Property Office ("IPO"). They have guides to intellectual property generally and the different types of intellectual property rights, that is to say, patents, trade marks, registered designs, unregistered design rights and copyrights, rights in performances and similar rights.  All relevant Acts of Parliament informally updated and secondary legislation are there.  So, too, are the appropriate forms and databases of previous patent, trade mark or design applications.

Other good sources of information are the World Intellectual Property Organization ("WIPO"), the UN specialist agency for intellectual property, the European Patent Office ("EPO"), an intergovernmental body that grants patents on behalf of the governments of a number of European countries including the United Kingdon and the EU Intellectual Property Office which grants EU trade marks and registered Community designs.  I also like to think my own flagship blog, NIPC Law and its associated blogs some of which cover topics like invention, data protection and brexit and others such as this one that cover IP and tech issues in specific regions.

Of course, online resources will only get an enquirer so far. There will be times when he or she will need to confer with his or her peers through organizations like Software Cornwall. There will also be times when he or she will need to take professional advice.  Questions that arise in the course of business include "How do I stop competitors copying or imitating this product that I spent years and a fortune on developing?", "Someone claims that he can stop me from using my domain name because it is similar to a trade mark that he has registered,  Is he right?", " A businessman has offered to make and sell my invention but he will only pay me a pittance by way of royalty. What should I do?"

I have been answering questions like that in IP clinics in London, the North of England and more recently North Wales since 2004.  I have to make clear that I don't know all the answers. I am a barrister and not a patent attorney or solicitor, much less an accountant, banker, business angel, product designer or venture capitalist. However, I have worked with all those professionals in my time and know what they do.  If I can't answer a question I can direct the enquirer to someone who can.

For the duration of this lockdown and if necessary for longer, I am prepared to offer up to 30 minutes of my time free of charge to anyone from Cornwall who requires advice on intellectual property or technology law.  The consultation can be by Skype, Zoom, Google  Hangouts or phone   I am regulated by the Bar Standards Board, fully insured and am bound by the rules set out in my regulator's Handbook so confidentiality and privacy will be respected.

Anybody who wants to take advantage of that offer should fill in the form below.

Friday 19 July 2019

The Role of Intellectual Property in Space Commerce

Buss Aldrin on the Moon in 1969   Author NASA  Reproduced courtesy of the US Government

Jane Lambert

To celebrate the 50th anniversary of the moon landing, the United States Patent and Trademark Office ("USPTO") will hold an event at its offices in Alexandria, Virginia on 23 July 2019 between 14:00 and 16:30 local time entitled Apollo 50: The role of intellectual property in space commerceSpeakers will include Mr Jim Bridenstine who is the administrator or head of the US space agency (the National Aeronautics and Space Administration (NASA)) and Mr Andrei Iancu who is the director of the USPTO.  According to the Eventbrite card, the event will focus on "space innovation, technology transfer from the Apollo missions, and an overview of the current administration’s policy on space exploration, commerce, and industry."  If I were in the USA next week I would have applied to attend that event and I strongly advise any readers who find themselves in the vicinity of the USPTO to do so.

American industry benefited greatly from the Apollo Programme in many ways.  One example is Black & Decker's handheld vacuum cleaner which is featured on the USPTO's website (see Laura Larrimore's article Moondust and Marketing Magic). That was the result of applying technology to develop cordless power tools that could be used safely by astronauts for everyday tasks in the home.  There are of course many other products that resulted from space exploration from quartz-powered wristwatches to building insulation though apparently not non-stick or Teflon frying pans as polytetrafluoroethylene was discovered in 1938.

Although some British businesses have participated in the US space programme as suppliers or subcontractors, most of the work was done by the US government through various departments and agencies or by American companies.  In the 1960s the only countries that could launch things and people into space were the USA and the Soviet Union.  There are now many other countries with space exploration programmes including the UK (see Wikipedia's List of Government Space Agencies).  Increasingly, space exploration is being undertaken by private companies (see Jason Perlow To the Moon: 50 years after Apollo 11, is SpaceX the new NASA? 17 July 2019 ZDNet).

As a result of those developments, there are now many more opportunities for British businesses (see London Economics Size & Health of the UK Space Industry 2018 A Report to the UK Space Agency January 2019).  Many of those opportunities will arise in Cornwall, particularly if Newquay airport becomes a spaceport for horizontal space launches (see Cornwall and Isles of Scilly press release Cornwall makes case for space to Westminster 20 Nov 2018).  A cluster of businesses to support the spaceport and the earth station at Goonhilly is already gathering.

That brings me to the title of this article.  British companies need to protect their investment in research and development just as much as American ones and we really should have a high-level conference on the role of IP here.  Unless and until we do, here are some pointers:
  • Unless and until they are ready to apply for a patent, they should take great care to keep sensitive documents under lock and key when not in use and to ensure that all staff, collaborators, suppliers and others do the same.
  • Any sensitive information should be disclosed in confidence with the terms of the disclosure set out in writing.
  • Monitor any disclosures and require the return of any documents and copies once the purpose of the disclosure has been met.
  • For suitable inventions, apply for patents not just in the UK but in all important markets and in the countries of your main competitors.
  • Never forget alternatives to patenting such as copyrights for software, database right, unregistered design right and trade marks for brands.
Should anyone wish to discuss this article or any of its contents, call me on +44 (0)20 7404 55252 during office hours or send me a message through my contact form.

Friday 13 April 2018

Enforcing Cornish Intellectual Property Rights

Greenburrow Pumping Engine of Trevithick's Mine
Author Rod Allday
Licence Creative Commons Attribution-Share Alike 2.0
Source Wikipedia

Jane Lambert

In 1797 the famous Cornish mining engineer, Richard Trevithick, was sued for patent infringement by the engineering firm Boulton & Watt. I have tried to find a report or other account of the case.  All I have been able to discover is that an injunction was granted and notice of the order was posted on one of Trevithick's buildings but it does not seem to have been served on Trevithick himself allegedly because the process servers feared they might be thrown down a mine shaft were they to approach him.

Had Trevithinck been sued today the claim would have proceeded in the Patents Court or Intellectual Property Enterprise Court ("IPEC") because CPR 63.2 (2) allocates to those courts actions relating to patents, registered or registered Community designs, semiconductor topographies or plant varieties.  Until 1 Oct 2017 those actions would have been issued out of the Rolls Building in London because that is where those courts are based.  However, paragraph 2.3 (2) of the Practice Direction - Business and Property Courts requires them to be issued out of the Bristol District Registry if they have significant links with Cornwall or some other part of the Western Circuit.   That is because the Bristol District Registry is the only Business and Property Court ("B&PC") district registry on the Western Circuit.

Paragraph 2.3 (3) of the Practice Direction states that a link to a particular circuit is established where:
"(a) one or more of the parties has its address or registered office in the circuit in question (with extra weight given to the address of any non-represented parties);
(b) at least one of the witnesses expected to give oral evidence at trial or other hearing is located in the circuit;
(c) the dispute occurred in a location within the circuit;
(d) the dispute concerns land, goods or other assets located in the circuit; or
(e) the parties’ legal representatives are based in the circuit."
Paragraph 2.3 (4) adds that  a claim which raises significant questions of fact or law in common with another claim already proceeding before a B&PC District Registry may be regarded as having significant links with that  circuit.

All other IP cases with such links to the Western Circuit should be issued out of Bristol if they have significant links with Cornwall or elsewhere on the Western Circuit whether in the High Court, County Court or IPEC. That is because the Bristol District Registry is also the only Chancery district registry on the Western Circuit.  Accordingly, Bristol is the only County Court hearing centre on the Western Circuit with a Chancery district registry attached.

If the case has significant links with another circuit as may have been the case in the claim brought against Trevithick as Boulton and Watt were based in Birmingham, the claim should be brought in another B&PC District Registry.  Alternatively, it can be issued out of the Rolls Building in London.

Paragraph 2.5 (3) of PD-Business and Property Courts warns that:
"A claim in the Intellectual Property List, which includes the Patents Court and the Intellectual Property Enterprise Court (“IPEC”) (and includes the IPEC small claims track to which rule 63.27 applies), may be issued in an appropriate BPCs District Registry. However the case management and/or trial of a claim in the Patents Court or the IPEC in the BPCs District Registry in question will be dependent on an appropriate judge being made available in the district registry in question."
However, both the Patents Court and IPEC guides have stated for many years that assigned and enterprise judges will sit outside London for the purpose of saving time or costs (see paragraph 4 of the Patents Court Guide and paragraph 1.5 of The Intellectual Property Enterprise Court Guide).

Anyone wishing to discuss this article should call me on 020 7404 5252 during office hours or send me a message through my contact form.

Wednesday 11 April 2018

Welcome to NIPC Cornwall

St Piran's Flag
Author Jon Harald Søby
Licence Reproduced with kind permission of the author
Source Wikipedia

Jane Lambert

In Commercial Exploitation of Space: Space Industry Act 2018 10 April 2018 NIPC Law, I discussed the government's aim as set out in its Industrial Strategy white paper for the rapid expansion of the British space industry. If the government succeeds, one of the regions that should benefit more than most will be Cornwall. That is because the Goonhilly earth station is already located in Cornwall and there are advanced plans to develop Cornwall Airport Newquay into a spaceport (see Spaceport Cornwall).

A spaceport is a facility for the launch and/or receiving of spacecraft (see What is a spaceport on the Spaceport Newquay website). S.10 and Schedule 1 to the Space Industry Act 2018 specify a number of requirements for the licensing of spaceports and these are likely to be supplemented by regulations made under the Act. It is therefore likely to be a number of years before a licence can be obtained for space vehicles to be launched from Newquay.  Nevertheless, there is already a cluster of aerospace businesses around the airport according to the Aerohub website and there is plenty of room for expansion after a licence to operate a spaceport is obtained.

Aerospace is not the only advanced technology in Cornwall.  According to Tech Nation a digital cluster has formed in the Redruth and Truro area which is described as "small" but "increasingly mighty".  In addition to such obvious advantages as a relatively mild climate and the outstanding beauty of the coast and countryside offering a high quality of life Cornwall benefits from improving broadband connections delivered by Superfast  Cornwall and a developing educational and research infrastructure provided by the Combined Universities in Cornwall.

Those universities in conjunction with the heritage and tourist industries have also facilitated the development of a strong creative sector in sector covering everything from software development to the performing arts and indeed their interface in the digital arts.  Arts Council England has invested in a number of projects in Cornwall as can be seen from the South West England pages of its website.

Finally, it should not be forgotten that although Cornwall's traditional agricultural, fishing, maritime, mining technology and tourism industries have been challenged over the years never disappeared. Business in those industries continue to innovate and flourish as a result.

All that activity leads to intellectual assets that require legal protection and effective management  and that is where I come in. For most of my career I have advised startups and other small businesses in the North of England how to protect and make money from their investment in branding, design, technology and creative works and represented then in negotiations and proceedings in the courts and Intellectual Property Office. In 2013 I moved to London from where I offer those services to small and medium enterprises everywhere including Cornwall. The purpose of this blog is to advise and assist businesses in Cornwall and their professional advisers on legal issues that may affect them.

Anyone wishing to explore those issues or intellectual property or technology law generally should call me on 020 7404 5252 during office hours or send me a message through my contact form.