Monthly Archives: September 2016

News story: EU consultation on the enforcement of IP rights

In December 2015 the European Commission launched a consultation on the evaluation and modernisation of the legal framework for the enforcement of intellectual property rights. The consultation closed at the end of April 2016.

The Intellectual Property Office sought stakeholders views on the consultation. The outcome of this consultation is set out here
UK government response to EU public consultation on the evaluation of the legal framework for the enforcement of intellectual property rights
(PDF, 3.96MB, 24 pages)

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This response follows the general progression of questions as presented in the Commission questionnaire. However, where questions ask for data that the government does not hold, no answer has been attempted. This document was prepared and submitted to the European Commission in April 2016 and therefore pre-dates the UK referendum on membership of the EU.

Source: UK IPO News

Guidance: Annual IP crime report: 2015 to 2016

The latest IP crime report 2015 to 2016 was published on 28 September 2016. The report highlights current and emerging threats surrounding counterfeiting and piracy, including those conducted via the internet. The report also contains statistical data and enforcement activities from UK law enforcement agencies such as trading standards, police, border force and a number of industry bodies.

Source: UK IPO News

Guidance: Common practice relating to the general indications of the Nice classification headings

Common Practice Notice

This common practice notice is in accordance with European Union Trade Mark Regulation No. 2015/2424. with respect to the use of general indications included in the Class headings (articles 28(5) and 28(8) EUTMR) and gives a common communication on the Implementation of ‘IP Translator’ v1.3.

Network background

The European Trade Mark and Design Network is an initiative to reduce the differences in practices between the national offices and also the European Union Intellectual Property Office. The network provides different options for protecting trade mark and design rights within the EU.

The network has three strands of activity:

  1. Convergence of IT tools through the cooperation fund.
  2. Voluntary convergence of practice via a convergence programme.
  3. A move to further harmonise legislation which is being led by the European Commission.

The convergence work on assessing the general indications of the Nice class headings falls into the second category. It considers a common understanding of the requirements necessary to achieve clarity and precision in the identification of goods and services in an application for registration. The conclusions drawn from this convergence work are set out in the common communication document.

Source: UK IPO News

News story: Filing international trade mark applications

Following feedback from customers, in April 2016, the UK IPO launched an email trial to file international trade mark applications, with the help of some UK attorneys.

We are pleased to confirm the trial has been a success and will be made available to all users from the 26 September 2016. This is an interim measure, whilst work is ongoing, to introduce an e-filing system for international trade mark applications.

International trade mark applications can now be emailed to the UKIPO using the following email address:

Internationaltrademarks@ipo.gov.uk

Please note:

  • we would encourage you to use the UKIPO version of the MM2
  • the MM17/MM18 will be accepted if filed with the MM2
  • no other forms or correspondence should be emailed to this address

An updated version of the UKIPO’s form MM2: Application to register an International trade mark is available.

Source: UK IPO News

Quick Hits – Retiree health, Military leave, Teacher tenure, In the news

Honeywell not obligated to arbitrate termination of retiree health benefits

After Honeywell announced that it would terminate retired employees medical and prescription drug coverage, a group of retirees filed a multi-count complaint challenging that action. One of the counts sought to compel Honeywell to arbitrate their claim that the Company’s action breached the applicable cba. The District Court for the Southern District of Ohio rejected this claim. It noted that the cba limited arbitration to disputes between the Company and the Union, not individual retirees. It also rejected plaintiffs claim that they were entitled to arbitrate the issue as third part beneficiaries to the contract, finding that to the extent that Plaintiffs are seeking to enforce promised made in  the CBA, they are bound by all of its terms, including the scope of the arbitration provisions. Fletcher et al v. Honeywell International, Inc.

Military leave, past practice and arbitrability

The Ohio Court of Appeals, reversing a lower court decision, found that an arbitrator did not exceed his authority when he concluded that the State breached its cba by unilaterally ceasing payment for travel and rest time related to military leave. The lower court found that the cba did not contain a definition of military leave and concluded that the arbitrator had exceeded his authority by independendly construing the term. The Court of Appeals, however, concluded that the arbitrator was authorized to interpreted that term as used in the cba in light of the past practice of the parties. State of Ohio v. Ohio Civil Service Employees Association, Local 11 AFSCME

Unsworn student statements, without testimony, insufficient to support teacher tenure charges

Arbitrator Edmund Gerber rejected teacher tenure charges accusing a teacher of improperly providing answers during a student assessment test. The Schools District’s evidence consisted of the unsworn statements of 27 students, none of whom were called to testify. Arbitrator Gerber dismissed the charges at the conclusion of the School District’s case, finding that this hearsay evidence was insufficient to support the charges. In the Matter of the tenure hearing of Michelle Gates, State-Operated School District of the City of Paterson

Labor Arbitration in the news 

Arbitrator rules Buffalo School Board can’t get rid of cosmetic surgery rider without negotiations

North Jersey teacher should be fired for bullying students, arbitrator rules

NALC: National-level arbitration case decided on ‘Work and Time Standards Video Recording’

Judge orders ex-cop’s reinstatement

Arbitrator Rules Against Itasca County Sheriff’s Department

Source: ADR

Research and analysis: UK intangible investment and growth

This report presents an update on UK Intangible and growth:

  • investment in knowledge/intangibles is 9% greater than tangible investment, in 2014, at £133 billion and £121 billion

  • R&D is about 14% of total intangible investment, software 21%, design 11%, training 20% and organisational capital 16%

  • 53% of total UK investment in intangible assets was in assets protected by IPRs

  • 6% of total UK investment in intangible assets was in assets protected by patent

  • an estimated 11% of total UK investment in intangible assets protected by IPRs was in assets protected by patents

  • 11% of total UK investment in intangible assets was in assets protected by trade marks

  • an estimated 21% of total UK investment in intangible assets protected by IPRs was in assets protected by trade marks

  • 11% of total UK investment in intangible assets was in assets protected by design rights

  • 9% in assets protected by unregistered design rights and 2% in assets protected by design registration; and

  • 25% of total UK investment in intangible assets was in assets protected by copyright

Source: UK IPO News

Press release: UK companies invest record £133bn in intangible assets

UK companies are increasingly spending more on know-how and ideas, with research commissioned by the UK Intellectual Property Office showing that intangible asset investment continues to outstrip traditional “bricks and mortar” investment.

In 2014 intangible investment, which includes spending on R&D, software, and design, hit £133 billion – 9% higher than traditional “tangible” investment such as such as property, machinery and IT.

Since the turn of the century intangible investment by organisations has increased by £45 billion – highlighting the UK’s important role in the global “knowledge economy”. Investment in tangible assets also rose by nearly 38% between 2011 and 2014 – from £87.9 billion to £121 billion.

The report also highlights the importance of manufacturing and financial services to the UK’s innovation economy. These two industries alone account for just 20% of total hours worked but are responsible for 58% of intangible investment.

In 2014 more than half of intangible investments (53%) were protected by Intellectual Property Rights (IPRs) – a 3% increase from 2011. Of these assets:

  • 25% were protected by copyright
  • 11% were protected by trade marks
  • 11% were protected by design rights
  • 6% were protected by patents

Innovation is a major element of the government’s plan to help UK companies drive future economic growth up and down the country, and IP rights play an increasingly important role in delivering this.

Baroness Neville-Rolfe, Minister of State for Energy and Intellectual Property, said:

The UK has an impressive track record when it comes to innovation and creativity. Investment in intangible assets like research and patents helps businesses grow – which is why the UK has a strong system in place to protect their IP rights, and encourage further investment.

Our intellectual property regime has helped create an environment in which innovators and creators can prosper knowing full well that their hard work will be rewarded and rigorously protected.

Tony Rollins, President of the Chartered Institute of Patent Attorneys, said:

Investment in the protection of intellectual property is a vital driver of economic growth: it helps to maximise profits which fund further research and development into new ideas.

CIPA is proud of its excellent relationship with government and innovative business. The IP system encourages investment and research thanks to high quality practices, insightful policy-making and excellent work such as this report.

Notes to editors

  1. The UK Intellectual Property Office is responsible for Intellectual Property (IP) rights in the United Kingdom, including patents, designs, trade marks and copyright.

Source: UK IPO News

5 Reasons You Should Be Negotiating with Brackets in Your Mediation

With a hint of self-mockery, a well-known US mediator declared himself “the master of bracketology.” For those in doubt, you won’t find “bracketology” in the Oxford English Dictionary, but the art and science of deploying brackets in the context of the mediation process is an “ology” worthy of study. 

One might first consider why brackets are helpful in a mediation. A scenario familiar to all mediators is “offer alienation”: offers are made grudgingly in small increments, and a substantial gap between the parties remains. Every offer appears to entrench each side’s view that the other is either not prepared to put up “real money” or is utterly unrealistic.

When the gap remains large and each offer drives resentment, a walk-out by one party becomes an increasing likelihood. Mediators strive to get parties to table reasonable offers, but aren’t always successful, and while much has been written on countering “positional bargaining”, for many users of mediation it’s the negotiation methodology they most trust, and one which has no doubt been used to good effect in other aspects of business. Persuading them to take a different path in dispute resolution can prove unproductive.


Source: JAMS ADR

Guidance: Copyright notice: printed music

Copyright notices are published by the Intellectual Property Office to help explain specific areas of copyright in the UK.

This notice is aimed at individuals or groups who may wish to reproduce printed music in some way. This notice is not meant as a substitute for legal advice on individual cases, but it can help readers understand some of the issues involved. It is not a conclusive view of the law – only a decision of the court can provide that.

Source: UK IPO News

Speech: Baroness Neville-Rolfe speech at the 2016 International Law Enforcement IP Crime Conference

Good morning everybody, and thank you for welcoming me here today.

I’m especially glad to be standing before you all here in London, particularly in this tenth year of the International Law Enforcement Intellectual Property Crime Conference.

Already you have heard some fascinating conversations on the future of intellectual property and the practicalities of cooperation, but there is more to be said. As the Minister responsible for IP I am well aware of the importance of new ideas – and I would like to thank the wonderful speakers who have gone before me and all who have attended this conference from around the world.

In the ten years since our first conference the world has changed significantly, and technology has progressed at an incredible pace. In 2006 all cars needed human drivers, and tweeting was for the birds! But thanks in no small part to Britain’s own Sir Tim Berners-Lee, the globe has become truly connected, with individuals and organisations from all over the world able to reach each other.

This means that products and services of all sizes have access to a far larger market, which has fuelled an explosion in IP-intensive industries. One study has suggested these industries account for some 39% of the European Union’s GDP. Recently published IPO research also shows us that 53% of total UK investment in intangible assets was in assets protected by Intellectual Property Rights.

But as we all know, this level of access is double edged. When an idea or a brand can reach a global audience in minutes, it can be hard to maintain control. IP rights are undermined by infringements. As much as 5% of goods entering the European market are thought to be counterfeit, according to our friends at the EU Intellectual Property Office.

Some people will say that this is “just a headache for big brands.” But this is far from the case. IP crime affects all parts of the supply chain, including manufacturers and retailers. Many small innovators have fallen victim to larger criminal enterprises hijacking their designs. Meanwhile customers find that quality is no longer a guarantee, undermining trust, or, in the worst cases, causing mechanical failures and personal injuries.

I have been working with industry and officials all over the world: here in the UK, throughout Europe and as far away as South-East Asia. Only a few weeks ago I was in China where we discussed how we might work together to reduce both the demand for and the supply of set-top boxes that allow illegal access to subscription services. Much as I’d enjoy a 24 hour cricket channel, this is not the way to view it!!

Again, some might see this as a “victimless” crime; one which only affects abstract broadcasters and content owners, with little impact on “real people.” But think of the support technician whose legitimate employer no longer has enough work for them. Think of the honest tradesman fitting genuine equipment who finds himself threatened and intimidated by a criminal gang.

With IP crime, as with all crime, there are a few criminals who benefit personally, and a far greater number of law-abiding citizens who suffer. Danny Marti spoke very powerfully yesterday about the human cost and child labour. We cannot forget those victims.

This is a serious issue for everyone, with victims and perpetrators of all sizes across the globe. Which is why it’s crucial that we all work together to combat this growing threat, both to stop the criminals involved in IP crime, and to safeguard IP holders and innovators by refusing to let criminality take root.

The British Government have made enforcement of IP rights a priority. Enforcement must be proportionate, and it must be effective, both in terms of convictions and deterrence. Crucially, it must be straight-forward, so that potential victims can easily understand the support on hand. On many measures, Britain is the best place in Europe to innovate, patent new ideas and grow business, and the government is committed to keeping it that way.

When I speak of cooperation I don’t just mean between governments and law enforcement agencies. Suppliers and consumers must be brought on board too. That’s why Internet Service Providers in the UK are required to block sites carrying large amounts of illegal content, as well as their proxy sites, while we work to ensure that search engines do not link to the worst offending sites.

We are also expanding our voluntary anti-piracy projects, which warn internet users when they are breaching copyright. In our IP Enforcement Strategy 2020 I set out my belief that guiding consumers to legal content when they search will help ensure that the vast appetite that exists for new and creative content benefits the legitimate creators, and not those criminals who cynically exploit the hard work of others. An informed public is an essential weapon in this fight.

In our document we set out our plans to support innovation and creativity while remaining a world leader in IP enforcement. I would urge you to take a look at the document, as it covers a large number of commitments covering the full spectrum of IP enforcement.

Our core ambitions are to ensure:

  • that UK companies – including small businesses, which are so important to our economy and around the world – are more confident in operating internationally as a result of better IP protection
  • that rights-owners have straight-forward access to proportionate and effective mechanisms to resolve disputes
  • that consumers are educated in the benefits of respecting IP rights, as well as the possible repercussions of law breaking. Enforcement and education go hand-in-hand

These are, by nature, commitments which will take time to bear fruit. But we have already seen success, and as the theme of this conference is “Celebrating Ten Years of Success” I would like to mention some of our achievements together.

I am immensely proud of the work that the Police Intellectual Property Crime Unit has done within the City of London Police. We would not have anywhere near the level of success we have had were it not for a close working relationship with Interpol. Your international reach and influence has been indispensable.

So too have Interpol’s programmes for developing training and awareness in IP law for law enforcement throughout the world. These programmes have brought together different services from different countries, uniting them in a common purpose to lead a change through operations around the world, in particular in South East Asia, Europe, Africa, South America.

In Britain, we are particularly grateful for the platform Interpol has offered to our excellent IP attachés in India, South East Asia, Brazil and China.

Interpol’s work with Europol through Operation Opson has ensured that food fraud is on the agenda of many countries represented here today, making sure that consumers can trust what they’re eating.

At a more local level, we have also seen some truly game-changing successes. One key decision was the creation of the Police Intellectual Property Crime Unit, or PIPCU, which I mentioned earlier. PIPCU allows us, for the first time ever, to coordinate industry resources which can enable both interventions through intermediaries, and arrests where there is sufficient evidence.

Alongside this, preventative measures have been undertaken to squeeze illegal suppliers out of the digital marketplace. A unique agreement between IP rights holders, legitimate advertisers, the Internet Advertising industry and the police has reduced criminal websites’ advertising business by 73%, a staggering figure.

This conference is rightly focused on the successes of the last ten years, and one of them surely must be the outstanding leadership of Chief Constable Giles York, who has headed up our IP Crime Group since the first conference ten years ago.

It is also time to congratulate Mick Ellis who has headed up Interpol’s Illicit Trade team and someone whom you all know and have worked with. As he moves on to new challenges I am sure you will wish him well and acknowledge his tireless contribution to IP enforcement.

The IP Crime Group was established to bring together any and all interested parties. This group works with the team put together by the Intellectual Property Office, which serves and supports law enforcement and industry. It is a key part of our effort to provide country-wide strategic leadership and coordination across enforcement.

Close to this building, over in Camden Market, concerted efforts have all but eliminated the sale of counterfeit goods, a reduction which an industry-led preventive agreement called ‘Real Deal’ will sustain. This is an agreement between the market operator and local authority. It is spearheaded by our National Markets Group, and is an excellent example of successful cooperation across sectors.

So while we maintain vigilance in our domestic markets, UK Border Force and Her Majesty Revenue and Customs are working closely with the IPO to turn intelligence from seizures into further interventions inland and upstream, extending our ability to disrupt criminality with colleagues abroad.

This work will no doubt be bolstered by the benefit we all get by sharing good practices. We learn much from our colleagues’ initiatives and have adapted them to our laws and practices. Likewise some of our initiatives are influencing them, for example a PIPCU-style team in India and an advertising reduction programme in Southeast Asia.

Across agencies and departments we are seeing a shared commitment to work together to stop IP crime in its tracks. To achieve this we will utilise our combined strengths, methods and resources.
Finally, I should also like to briefly touch on the recent referendum on the UK’s membership of the European Union.

You will all be aware that the British people voted to leave the EU, and that our new Prime Minister is committed to implementing this decision. I want to be clear: the process of negotiation and leaving the EU will take time. There will be no immediate changes.

Today, the UK remains a member of the EU and applications for IP rights giving protection in the UK will continue as usual. The excellent patent and trademark attorneys continue to represent UKIPO, the European Patent Office and the EUIPO. The UK remains a committed partner to Europol, as well as Interpol. IP crime does not respect borders and we will continue to work closely with our European colleagues to tackle IP crime across Europe, just as we will throughout the wider world.

The UK is and will remain: open for business. There will clearly be questions around future IP arrangements, some of which can only be answered as our exit negotiations progress. I know that this will lead to some uncertainty, so let me clarify a few points:

  • firstly, companies operating in the UK can continue to expect outstanding, professional rights-granting services from the UK IPO
  • secondly, the UK will continue to be a world leader in dispute resolution and enforcement
  • thirdly, we will continue to work closely with our valued international partners, many of whom are in this room

Whatever the outcome of our exit negotiations, it’s clear that IP crime is an international problem which will demand an international solution.

On my recent visit to China I had the great pleasure of witnessing the signing of a new Memorandum of Understanding between the China-Britain Business Council and Tencent, who operate WeChat in China. This international agreement builds on the success of the arrangement with AliBaba, and will greatly enhance our ability to remove listings which infringe on IP law in China.

With that in mind, I would like to leave you with a couple of challenges to consider.

The first involves dealing with online IP infringement. Initiatives like Operation Pangea – which removed domains used to host illegal pharmacies, leading to the seizure of over 9.5 million doses of illegal medicines – demonstrate the huge benefits that working together can bring. The challenge is how we make international cooperation the norm.

The second challenge is how we might expand the kind of agreement between the CBBC and Tencent across different platforms to reduce IP crime of all kinds. We need to reduce the amount of counterfeit goods being offered for sale, and identify the individuals and organisations selling them, tackling the whole supply chain.

We have the knowledge we need to achieve this already, but it is in many as-yet unconnected places in the private sector and law enforcement agencies. Europol and Interpol have a vital role to play in achieving this, and I urge you to do all you can to make it happen, adapting to our digital age. The agencies of the UK stand ready to assist.

Over the last ten years we have made fantastic progress, and I applaud each of you for all that you have done to date. If we work as one over the next 10 years, we can shut out criminality, and together we can create a marketplace which benefits our consumers, our businesses, our economies and our communities in more and more countries.

Ladies and gentlemen, thank you for listening.

Source: UK IPO News