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Business brief 2016: United Kingdom

20-05-2016

Alison Simpson and Mark Green

Patents

How do you register or secure patent rights?

National applications are filed at the UK Intellectual Property Office (IPO). European patents filed at the European Patent Office (EPO) can be validated in the UK. The UK and the EPO are members of the Patent Cooperation Treaty, which allows applicants seeking patent protection internationally to consolidate their inventions in one initial filing.

What are the costs of obtaining a patent, and what are the costs of defending it?

A typical UK patent may cost £3,500 ($5,000) to £6,000 from filing to grant. 

Actions for infringement may be brought before the English High Court or the Intellectual Property Enterprise Court (IPEC). Hearings are before a single judge without a jury.

A high court action may cost £175,000 to £350,000 for a full trial. Costs are awarded to the successful party but recovery is limited to costs that are proved to be proportionate to the value of the case. The IPEC is cheaper for smaller claims and has a cap of £50,000 on costs awards and a cap of £500,000 for damages. A special small claims track is available for claims with a value up to £10,000. Costs orders on such small claims are highly restricted.

Where can you find information on existing patents in your jurisdiction?

The IPO’s website and the EPO database.

Is there anything unusual about the UK’s patent law that companies should be aware of, and what are the most common mistakes businesses make?

Publicly disclosing an invention before filing an application is likely to invalidate it.

Businesses should ensure that inventorship and ownership of inventions are determined, with execution of assignments if required, before filing in order to avoid disputes or difficulties with formalities later.

Unjustified threats to bring infringement proceedings in respect of certain acts can be actionable in the UK.

Trademarks

How do you register or secure trademark rights and what protection do they grant?

By filing a trademark application at the IPO, a European Union trademark (EUTM) application at the European Union Intellectual Property Office (EUIPO) or an international trademark designating the UK or EUTM. A registration gives the owner the exclusive right to use the mark for the goods/services applied for. Unregistered marks can be protected under common law subject to the establishment of goodwill and reputation.

What are the costs of registering a trademark and what are the costs of defending it?

A typical UK trademark in one class costs about £675 to £725 from filing to registration. An EUTM application in one class costs about £1,450 to £1,750 from filing to registration.

Actions for infringement or passing off may be brought before the high court or IPEC.

A high court action to full trial may cost £150,000 to £300,000. Costs are awarded to the successful party but recovery is limited to costs that are proved to be proportionate to the value of the case. As with patents, the IPEC is cheaper for smaller claims and has a cap on costs awards and damages.

Is there anything unusual in UK trademark law that foreign companies should be aware of and what are the most common mistakes businesses make?

A person making an unjustified threat to bring infringement proceedings in respect of certain acts can be sued by a person aggrieved by the threat.

Assuming that a registration gives a party the freedom to use the mark rather than the right to stop others using it, failing to police the mark, and failing to keep proper records about how and to what extent the mark has been used are common mistakes. 

Have there been any changes to trademark law in the last 12 months?

A new EU trademark regulation came into effect on March 23, 2016. The main changes are:

•  Change of name

The Office for Harmonization in the Internal Market is now called the EUIPO. Community trademarks are now called EUTMs.

•  Application fees

New fee structure under which each class has an individual fee.

•  Renewal fees

Renewal fees have been reduced but there is a change to the renewal date calculation. Previously the renewal date was treated as the last day of the month in which the renewal was due. Now, the renewal falls on the ten-year anniversary of the filing date of the EUTM application.

•  Use of class headings

Before June 2012, if the specification of goods/services of a trademark application included a class heading, the registration was deemed to cover all goods/services in that class. Following a decision of the Court of Justice of the European Union in 2012, the office required applicants to seek protection for the exact goods/services of interest. This left an unsatisfactory situation where EUTMs filed before June 2012 had to be interpreted differently from those filed after this date.

"Time limits to take action are short so that brand owners need internal procedures to quickly determine whether detained goods are counterfeit."

Under the revised law, all EUTMs will be interpreted using the post-June 2012 practice so that specifications will be given a literal meaning. So that owners do not lose any rights, the regulation allows for a transitional period of six months until September 23, 2016. During this period, proprietors of EUTMs applied for before June 22, 2012 and registered covering the entire heading of a class may declare that their intention on the date of filing had been to seek protection for goods and services beyond those covered by the literal meaning of that heading.

  • Certification marks

 From September 2017, certification marks are being introduced.

  • Enforcement—counterfeits

   New rules will allow the seizure of counterfeit goods in transit through the EU, even if those goods are not to be sold to customers in the EU.

Counterfeiting

How big a problem is counterfeiting in your jurisdiction?

According to the European Commission, in 2014 customs authorities in the EU detained 35.5 million individual fake or counterfeit goods with a total value estimated at more than £487 million.

What sectors are particularly at threat?

Cigarettes represent the most-detained articles, followed by toys and medicines. Foods, beverages, toiletries and household electrical goods are also at risk.

What are the best strategies for dealing with the problem?

Take robust action to maintain the prestige of a brand. File an application to protect the IP rights with customs. The onus is on rights owners to confirm that seized goods are counterfeit. Time limits to take action are short so that brand owners need internal procedures to quickly determine whether detained goods are counterfeit.

Copyright

What are the key challenges for copyright owners in your jurisdiction?

Unauthorised use of content online. Illegal acquisition of content through websites offering direct downloading, file-sharing or streaming is estimated by industry figures to cost the music industry alone more than £7 billion globally.

How should people ensure they are protected against copyright infringement?

Keep accurate, dated records of the development of work and assert copyright on it with the owner’s name and year of creation. There are many specialist organisations representing the rights of copyright owners providing industry-specific advice and assistance, including the Police Intellectual Property Crime Unit.

What is the best way to deal with infringement?

Actions for infringement are brought before the high court or the IPEC. Deliberate infringement of copyright commercially can also be a criminal offence.

Alison Simpson is a partner at Urquhart-Dykes & Lord. She advises clientson all aspects of acquisition, management and exploitation of trademarks. Simpson has particular expertise in trademark availability searching and clearance, overseas filing strategies, oppositions and anti-counterfeiting. She can be contacted at: aefs@udl.co.uk

Mark Green is a partner at Urquhart-Dykes & Lord. Green worked in industry for five years at a multinational company responsible for major consumer products. He spent a year in the US and gained direct experience dealing with the US Patent and Trademark Office. He can be contacted at: mcg@udl.co.uk  

Urquhart-Dykes & Lord, Alison Simpson, Mark Green,

WIPR

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