Why Refer To IP Experts? 4 Times Detail Made the Difference in 2017
Whilst trade marks, copyright material and patents are very visible in the world around us – the expertise behind the scenes is certainly not as self-evident.
In reality, intellectual property is an incredibly intricate and fast-moving area of law.
More often than not, work matters need to be addressed by IP experts.
As much can be seen in the following 4 intellectual property matters from 2017.
1. Mermeren Kombinat AD v Fox Marble Holdings Plc  EWHC 1409 (IPEC)
There’s no place like Sivec!
99 times out of 100 – registering and enforcing a trade mark based on a location – is not the best idea.
Place names are descriptive; and as a result, lack the required distinctiveness to be registered or enforced.
The case of Meremeren v Fox Marble Holdings Plc was the 1 in 100.
Meremeren are a Macedonian Company who have been extracting marble from a Sivec mountain pass in Macedonia since 1950.
Meremeren had previously registered a trade mark for their marble under “Sivec”, fairly recently, in 2013.
Fox Marble Holdings Plc is a UK company which also quarries from from the same region.
Meremeren made a claim of trade mark infringement against Fox – who had been selling marble under the identical sign “Sivic”.
Fox filed a counterclaim that the trade mark was invalidly registered and should be revoked – as it lacked distinctiveness.
A cursory glance would presume that Fox’s counterclaim would be upheld – as trade marks utilising place names are usually as robust as a wet crisp.
However, the IPEC judge held the trade mark was valid – and that Mermeren’s use of the mark since 1950 had led it to acquire distinctiveness.
This can be considered somewhat of a landmark decision – as place names are usually a lost cause when it comes to enforcement.
Martin v Kogan  EWHC 2927 (IPEC)
No love lost (just copyright…)
One of the most commonly misunderstood aspects of copyright is that it doesn’t protect an idea – but rather it’s expression.
This allows people to write books about students at a wizarding school without fear of a legal letter from J.K. Rowling (unless they decide her characters are part of their story that is…!)
This nuance can also lead to consequences in the courtroom – should this critical point be overlooked.
Florence Foster Jenkins was released in 2016. The film was a fictional story about a New York heiress who became an opera singer (despite having a terrible voice).
Whilst an inspirational tale about overcoming one’s awfulness – behind the scenes, there was an interesting plot twist…
Writer, Nicholas Martin, and his partner at the time had conceived of the film. Martin then put pen to paper producing the screenplay.
After they had split – Martin had then claimed sole authorship over the script that his partner had helped to realise. Naturally his ex-partner counterclaimed for joint authorship.
Sadly there is no happy ending to this tale (depending on your outlook on life). Martin’s partner could not establish ownership over any clear part of the script.
This was because – whilst they had helped develop much of the concept – Martin’s partner had not actually written any of it. As above, you don’t own the concept, you can only claim right in its expression.
As a result, Martin’s partner can claim no lawful ownership of the screenplay – and whilst a major contributor to the idea of the film they are lawfully entitled to nothing.
Jadebay Ltd. Noa v Clarke Coles Ltd.  EWHC 1400 (IPEC)
Getting Technical with Technology
A broader phenomenon that is not limited to IP is the burgeoning role of technology in business.
Whether or not you’re selling a social network or a coffee – the heightened prominence of technology greatly increases both:
- the value of intangible assets in business, and;
- the complexity and diversity of situations that intellectual property is put to use
Consider something as simple as selling flagpoles on Amazon…
In the case of Jadebay v Clarke-Coles, the Defendant had found themselves using the Claimant’s product listing.
On the Amazon platform, a product listing created by one single user can be used by others. The default seller for each listing tends to be the one that sells that product for the cheapest price.
The waters get slightly murky when brands come in to play. The Claimant’s listing had included it’s brand “DESIGNELEMENTS”. The defendant had sold their analogous products for cheaper using the same listing – becoming the default seller. But the Defendant’s flagpoles did not include this brand. The claimant brought an action against the defendant for trade mark infringement and passing off for use of this branded listing.
This claim was successfully upheld – as the HHJ Clarke noted that there was a a high likelihood that customers would believe the defendant’s flagpoles would emanate from the same source as the Claimant. This was because the listing had stated the products were by “DESIGNELEMENTS” (and therefore sourced from the Claimant) when they were not.
This is one example amongst many, where being well-versed in intellectual property rights is vital. New technological contexts for IP infringement emerge every day and whilst this offers abundant opportunity – it equally offers risk for those that operate unknowingly.
Perry v FH Brundle & Ors  EWHC 678 (IPEC)
DIY IP is not A-OK
Finally, in some instances clients take the law into their own hands. (Self-representation rarely ends how business owners imagine it would.)
In the legal sense, intellectual property functions differently than it does as a business asset.
Acting as such in the courts may often lead to more harm than good.
The case history of Perry v FH Brundle is a storied one. The 2017 decision brought against Mr Perry – indicates this clearly.
After many past parries, Brundle had brought a claim against Mr. Perry for unjustified threats of patent infringement. Mr. Perry’s response was to counterclaim for patent infringement; subsequently bringing a Part 20 claim against both defendants.
Prior to this, HHJ Hacon had brought an Extended Civil Restraint Order (ECRO) against Mr. Perry for his energetic approach to litigation.
Upon review of the lawful facts, HHJ Hacon decided to extend the restraint placed upon Mr. Perry to a General Civic Restraint Order (GCRO). This restricts Mr. Perry even further from litigation; as claims made without permission of a judge are automatically struck out or dismissed.
It remains that, Mr. Perry’s concept of the his scope of rights granted by his patent – differed greatly from the court’s judgement. It is unclear whether this might be a consequence of:
- A patent which was registered incorrectly and Mr. Perry’s position had been overstated; or,
- Mr. Perry’s need for an IP professional to represent his interests in correspondence or in court…
It’s clear that when it comes to IP, an informed account of facts is critical before undergoing litigation. The more intricate the claim – the greater the requirement for expertise. (Note: patents are a particularly complicated and technical area of IP law.)
In the case of Mr. Perry – this oversight now means gaining permission from a judge prior to any defence of his IP.
Why IP Experts? Because Detail Always Makes the Difference in IP
Asking for help can be seen as a sign of weakness. And showing weakness in the legal field seems counter-intuitive.
But in the case of these 4 cases, and IP matters in general; pride can lead to big problems (and costs) – that could be easily avoided by consulting IP experts.
Every business needs to protect its: brand, creative ideas, expertise and knowledge. And they do this in a multitude as many unique ways as they operate.
Crucially, the issues that arise from operating with incomplete knowledge of intellectual property can be equally diverse and critical.
An uninformed approach can result in a: weakened stance, lost opportunities or profound consequences e.g. a complete re-brand; or being locked out of a market.
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