Enforcing Intellectual Property Rights

A Concise Guide for Businesses, Innovative and Creative Individuals

Jane Lambert

• Publisher: Routledge
• Year: 2016
• ISBN:
  9781317143529
• Edition: 1
• Topic: Law
• Subtopic: Intellectual Property Law
• Index: Law

What do you do if... you need to seek a court order against a former employee who has set up in competition with you, having first helped themselves to your customer database?... Or if you are deluged with complainants who have bought products they thought were yours, but turn out to have been made from inferior materials and without your knowledge or consent?... Or if you receive a solicitor's letter complaining that a product you are about to launch infringes their client's trade mark or registered design? Jane Lambert's concise and practical guide gives you the knowledge that you need to make crucial decisions to protect your intellectual assets before it is too late. It should be kept close at hand for use in emergencies, just like a first aid manual. Its purpose is to alert you to problems so that you can take the right steps to manage them, in consultation with your professional advisors, before they develop into crises. And, if the worst does happen and you need to go to law, the guide provides you with the information you need to understand the process, the risks and how to prepare effectively. If you are planning an enforcement strategy, looking for the optimum patent or registered trade mark or design protection and to secure the appropriate insurance to make sure you have a fund available to enforce these, then this book is for you. If you're already in hot water, someone with an intellectual property problem who needs to make fast decisions in very little time, then this book is for you too. It could help you avoid the most expensive mistake of your life.

CHAPTER 1
Setting the Scene

How this book came to be written

This book has been a real pain to write. It should have been easy enough. I earn my living from advising on IP (intellectual property) law and have done for more than 20 years. It is something I do almost every day whether as counsel,¹ mediator, domain name panellist, patent clinic advisor, inventors’ club organizer, blogger or otherwise. Yet although I know something about the topic, I have started and abandoned this chapter no less than 17 times and trashed hundreds of pages in the process. More than once I thought of returning the publisher’s advance. If this was a book that was easy or even possible to write – I have said to myself – someone else would have written it.

There is no shortage of well written books on patents, designs, trade marks, copyrights, passing off and other intellectual property rights. Most of them have at least a chapter on enforcement. Why another? Yet almost every day, whenever I have a conference like the one that I am about to describe, I am reminded why a book like this has to be written. Sometimes I am consulted after thousands of pounds have been wasted on actions that should never have started. Other times I am approached after years of investment in research and development have been lost through inadequate legal protection or, more frequently, through bungled attempts to enforce such protection as did exist.

The reason that I have started and abandoned this book so many times is that it has been very difficult to pitch it at the right level. My early drafts were written in the style that I write opinions. Fine for lawyers but terribly dull for everyone else. Later drafts went to the other extreme so that they read like school civics. Throughout these struggles with writers’ block my spouse has been powering ahead with a riveting tale about a gender dysphoric barristers’ clerk. ‘If only this were a novel,’ I thought. And then it dawned on me: ‘why not write it like a novel?’ It is, after all, the fascinating detail of reported cases that enables lawyers to discern legal principle. Indeed, it is such detail that makes the study of law bearable. Detail such as the incredulity of anyone, even in the late 19^th century, who would seriously believe that sniffing fumes from a hollow rubber ball containing a powder treated with carbolic acid would actually ward off a particularly virulent strain of influenza. Or, indeed, that its supplier was serious in offering to pay £100 to anyone who caught flu after such sniffing.² So let’s see what can be learned from a typical conference in chambers.

A typical client

Mr. Aardvark – or rather his company – imports to the UK a range of external wall mounted ornaments that he markets as ‘distelfinks’ which are made in China to his order. ‘Fink’ means ‘finch’ in Old Dutch so each of those plaques bears a stylized image of a finch – chaffinch, greenfinch, bullfinch and so on. Distelfinks are new to Britain but they are very common in parts of Pennsylvania where they have appeared on the walls of Dutch settlers’ houses for centuries. Mr. Aardvark’s distelfinks have been something of a craze. Featured in the style pages of the qualities, they have sold like hot cakes in retail establishments throughout the land and over the internet. So popular had they become – particularly in the North of England – that rural parts of the county of Lancaster began to resemble faintly parts of Lancaster County.³

A typical problem

It was to be expected that anything as popular and profitable as Mr. Aardvark’s distelfinks would spawn plenty of cheap and nasty imitations and so there were. The finches on some of them looked nothing like Mr. Aardvark’s or, indeed, any finch that has ever flown into my garden. Others were made of inferior materials so that the colours began to run whenever it rained – which happens occasionally in Manchester. But what stung Mr. Aardvark particularly was a range of distelfinks that seemed to resemble his in every detail even down to their four layers of packaging and the wording of the mounting instructions.

Enquiries made by his agent in China revealed that they had actually come from a subcontractor to one of Mr Aardvark’s manufacturers. Harsh words had apparently been said but the sub-contractor stood his ground. He replied, not unreasonably, that the foreigner’s design did not appear to be protected in China. Nobody had ever told him that there was anything special about the design or that there was any reason to query the subsequent order. He was just a small factory owner trying to earn an honest living to educate his children so that they could enjoy better opportunities in life than he had had. So what was all the fuss? The agent said he could stop placing orders with the offending contractor, but did Mr. Aardvark really want him to do that. That particular contractor was very good and it would be difficult to find anyone else whose quality came close. And there was nothing that he could do to prevent the sub-contractor selling distelfinks to other customers. Indeed, he was doing a roaring trade right now because a craze for distelfinks had begun to take hold in some of the smarter suburbs of Chongqing.

A typical conference

So my clerk, Fred, had booked in Mr. Aardvark in for a 9 am conference in my chambers in Central Manchester, together with his solicitor, Samuel Pepys, knowing that I would have to traipse across the Pennines on a frosty morning and that I am not the world’s best timekeeper. Bundling into the lift of our office block at about 9:07 am our fees clerk, Susie, called me on my mobile to tell me that ‘Mr Peppies’ (sic) and ‘Mr Hard Work’ (sic) had been pacing the clerks’ room since 8:25 that morning and what could she tell them. Nobody ignores Susie because she has a particularly whiney voice which comes in very useful for chasing fees. Susie even managed to collect from Mary Burke, a lady solicitor in one of the better firms in Liverpool, full of her sense of self-importance, who was always far too busy to attend to the trivial matter of paying counsel ‘who were already grossly overpaid as it was’.⁴ She achieved that by calling Mrs Burke on her direct line at the start of every day as soon as the fee note was due with her usual greeting: ‘Mrs Burke, it’s Su-u-u-u-sie from Mr. A’s’ or Ms. B’s chambers in Manchester.’ Mary was pretty good at standing up to most people but not to Susie, and not at 9:30 am every morning. She tried diverting her phone to Emma, her secretary, but that was fatal because Emma could put up with the whine for just three consecutive calls. She intervened with her boss: ‘Look couldn’t you just pay this fee and go to other chambers in future.’ ‘I’m on my way Susie,’ I replied, ‘I’m in the lift as we speak.’ ‘Which lift, Mr Lammburrt?’ asked Susie before the signal was lost. She really ought to have been a cross-examiner.

Mr. Aardvark, whose DNA would have been coded with almost religious respect for punctuality inherited from 200 years of the factory system, and Mr Pepys who was given to panic, must have been fuming like the smoke ball while waiting for me to arrive. They had nothing to read save one of Fred’s discarded motoring magazines, an out of date chambers brochure and a well-thumbed, 2 year old edition of Cheshire Life, and nothing to consume save Justin the junior’s very weak tea in a plastic cup with a stained spoon complete with tea bag served with two unappetizing digestive biscuits. But whatever their frustration they greeted me cordially enough.

‘Very nice to see you, Mr. Lambert’, fawned Mr. Pepys, ‘so good of you to make the time. I’ve told Mr Aardvark how busy you are.’

‘Not from your work, Samuel’, I felt like saying, but instead what came out with something vaguely like a smile was: ‘Oh that’s alright, Mr. Pepys. I understand how important this is to your client. Have you had tea or coffee? Have you tried one of Susie’s home-baked pastries?⁵ No, well, never mind, that’s a pleasure to come. Shall we make a start?’

Typical instructions

Once in my room in chambers (out of which Justin had ejected Sally, a family practitioner, who was much more accustomed to kicking me out for her conferences) I opened the conference after making sure that everyone was seated and that Justin had taken everyone’s coats, no doubt to be draped over a towel rail in the gents.

‘Now, Mr Pepys’, I began, ‘I have read your instructions.’

That was not strictly true as Mr Pepys’s instructions tended to be over 20 pages long of which no more than 5 lines were ever relevant. As usual they comprised an ample description of every letter, fax, email and other document in his file, whether enclosed with his instructions or not, together with a regurgitation of his notes on the law of copyright gleaned from a one-day seminar on intellectual property that he had attended to get his points many years ago. But I had at least spotted quite quickly and read those relevant 5 lines.

Some typical misconceptions

‘I see you want me to get an “Anton Piller Order” to close down the importers of the product that has been sourced from one of Mr Aardvark’s manufacturers?’

‘Yes, that’s quite right, Mr Lambert.’ replied Mr. Pepys. ‘My client also wants you to get additional and conversion damages for breach of copyright and costs on the indemnity basis too. And I have already prepared letters to go off to all the retailers warning them that we will go after them too unless they give us undertakings and offer us damages.’

‘Well steady on, Mr Pepys,’ I said, ‘you haven’t sent any of those out, I hope.’

‘Not ye...