Intellectual Property Matters – February 2014
Print newsletter04/02/2014

Beer glass designs and the difference between registered and unregistered designs
The Intellectual Property Enterprise Court – formerly the Patents County Court – has ruled that […]
The Intellectual Property Enterprise Court – formerly the Patents County Court – has ruled that a UK registered design for a beer glass was valid and infringed by the defendants’ glass [1]. It also found that the unregistered design right in the design was infringed by one of the rival’s design features.
Registered designs: a reminder
Registered designs – governed by the Registered Designs Act 1949, as amended – confer on the owner of a registered design a monopoly right to make articles incorporating that design for up to 25 years from the date of registration. A design will be capable of registration if it is new and has individual character. This means that the design must not be identical or differ only in immaterial details to a prior design, and it must produce a different overall impression on the informed user.
Unregistered design right: a reminder
Unregistered design right, which is governed by provisions of the Copyright, Designs and Patents Act 1988, subsists in an original design of any aspect of the shape or configuration of the whole or any part of an article. A design will not benefit from unregistered design right where it is “commonplace” in the design field at the time of its creation. The right confers a monopoly right to reproduce the design for commercial purposes, such as by making articles to that design.
Facts of the case
The design in question was owned by Utopia Tableware Ltd and was for a tall beer glass, sold under the name Aspen”. The allegedly infringing glass was sold by the defendants under the name “Aspire”.
The defendants admitted to having copied the exterior dimensions of the Aspen glass but maintained that neither the internal dimensions nor the wall thickness of the design had been copied. They submitted that the registered design was invalid for lacking individual character and that the Aspen design was commonplace and could not therefore benefit from unregistered design right either. They relied upon the prior art designs for Peroni, Amstel, Cobra and Carlsberg – all tall, slender, waisted glasses. Notably, in the trial, it became apparent that the Cobra glass – as well as being further away than any of the other three designs – was not made available to the public until after the application for registered design was filed, so this “prior art” was dropped.
Judgment
As regards the unregistered design right, the judge considered that the relevant design field was the wider field of beer glasses, not high-waisted beer glasses [2]. The judge considered the prior art designs put forward by the defendants and considered that while some features of the Aspen design were commonplace, one – the girth of the waist of the glass – was not and that that one element had been infringed by the defendants’ product. It is noted that, although the claimant defined its design right by reference to four particular features, the claimant was not prevented from relying on merely one feature where the rest were found to be commonplace.
On the question of the validity and infringement of the registered design, the judge considered that the informed user was a user of beer glasses and that such an individual would be interested in the design of the glass.
An important element in assessing whether a design has individual character is the degree of design freedom available to the designer. In this case, this was limited – the glass had to be tall and it had to have a waist. Consequently, minor differences in the design could be sufficient to bestow an individual character on the Aspen design. By the same token, minor differences could mean that the Aspire design was not infringing.
Assessing the Aspen design, the judge found that the Aspen design would create a strong visual impact on beer drinkers, sufficient to distinguish it from the prior art. The same could not be said of the defendants’ design which made no different overall impression from the Aspen design. The Aspen design was therefore valid and had been infringed.
Points to consider
Apart from the pleasing notion of the beer drinker as the informed user, this case is interesting for highlighting the distinction between registered design protection and unregistered design right. Specifically with regard to registered designs, it shows how limitations on design freedom can help rights holders to overcome a challenge to validity.
The Intellectual Property Bill, currently working its way through Parliament, contains important changes to the law on both registered and unregistered designs, in particular making the registered designs regime more attractive for rights owners. The Bill reflects the growing importance that designs are assuming for business. Click here to read our earlier summary of the Bill’s provisions regarding designs.
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[1] Utopia Tableware Ltd v BBP Marketing Ltd and another [2013] EWHC 3483 (IPEC)
[2] Although this was not particularly relevant in this case as the only prior art relied upon by the defendants was in terms of high-waisted beer glasses, given that the judge stated that a broad approach and interpretation would be preferred in such cases, it may be that far more prior art could (and possibly should) have been introduced and/or relied upon.

Concurrent patent proceedings: to stay or not to stay?
The issue before the Court of Appeal in IPCom GmbH & Co Ltd v HTC […]
The issue before the Court of Appeal in IPCom GmbH & Co Ltd v HTC Europe Ltd and others [1] was the approach to be taken by national courts in patent proceedings where the validity of the same patent was also being considered at the European Patent Office (EPO).
EPO decisions take precedence over national decisions where the two conflict. National proceedings are often completed before EPO proceedings. Where this happens, and the EPO decision is at odds with the earlier national decision, the national decision is undermined – defeating the purpose of the proceedings. Logically therefore, staying the national proceedings pending the EPO decision makes sense – save that EPO proceedings can be very long, and parties will often not have the luxury of time to play with.
In this case, the UK court had upheld the validity of the patent in issue. After the UK decision, the EPO ruled that the patent was invalid for added matter (i.e. the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent). The patentee, IPCom, appealed. Almost two years later, the EPO Board of Appeal held that the objections to validity were overcome by amendments to the claims and referred the amended claims back for consideration of novelty and inventive step. HTC applied for IPCom’s UK action against it for infringement (and its counterclaim for revocation) to be stayed pending the outcome of the EPO proceedings. The application was refused.
HTC’s appeal was dismissed and the Court of Appeal took the opportunity to recast the guidance it had given previously, in Glaxo Group Ltd v Genentech Inc [2], on the question of whether UK national revocation proceedings should be stayed pending the outcome of EPO opposition proceedings. The guidance may be summarised thus:
- the discretion to order a stay is “very wide indeed” but must be exercised with reference to the specific facts of the case
- the discretion belonged to the Patents Court not the Court of Appeal and the appeal court should be slow to interfere with the judgment of the Patents Court
- there was an inherent tension, and possibility of concurrent proceedings, within the European patent system
- the default option was to order a stay and it was for the party opposing the stay to show why it should not be granted
- an important factor affecting the exercise of discretion was the extent to which the refusal of a stay would irrevocably deprive a party of any part of the benefit which the concurrent jurisdiction of the EPO and the national court intended to confer. For instance, if allowing the national court to proceed might allow the patentee to obtain monetary compensation which would not then be repayable if the patent were revoked, this would be a factor militating in favour of the grant of a stay. This could, however, be overcome if the patentee were prepared to given an undertaking to return any such money if the patent were later revoked
- a stay could be refused where there was evidence that commercial certainty could be achieved at a considerably earlier date in the UK proceedings than in the EPO proceedings
- it was also relevant to take into account that resolution of the UK proceedings might promote settlement
- consideration should be given to the length of time it would take each set of proceedings to reach a conclusion, and the prejudice that would be suffered by the parties from delay. The public interest in achieving prompt resolution of the dispute was also relevant.
Whilst granting a stay will be the default option, the Court of Appeal is clearly well aware of the problems caused to business by protracted EPO proceedings and this is a factor that will weigh significantly for the Patents Court when considering an application for a stay. However, perhaps the single most important element to take from the guidelines is that patentees seeking to resist a stay may find their prospects of succeeding in doing so enhanced by the giving of an undertaking to repay any compensation should the patent later be revoked in the EPO proceedings.
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[1] [2013] EWCA Civ 1496
[2] [2008] EWCA Civ 23

Could you benefit from the patent box?
Businesses do not always apply to patent their inventions. They may consider the cost to […]
Businesses do not always apply to patent their inventions. They may consider the cost to be prohibitive and trust to their ability to keep the invention secret. Alternatively, they may consider technological developments in their sector to be so fast-moving that there is no point in patenting. Or reliance may be placed on other intellectual property rights, such as copyright (common in the software industry). Many businesses may not even appreciate that they have created a patent or process that is potentially patentable. As a result, the UK “underpatents”. The advent of the patent box – which came into effect last April but has so far had a low profile – should prompt a re-think. Even if the commercial benefits of patenting may be marginal, the tax break should incentivise businesses to start patenting. It is important to emphasise that the invention need not be world-changing, a new generation of smartphone for instance, or a pharmaceutical wonder drug. A new brew basket for an espresso machine, for instance, might be eligible, or the process for creating a new type of drink.
The reduced rate
The patent box enables companies with qualifying patents to tax the profits arising from those patents at an elective reduced corporation tax rate of 10 per cent. The regime is being phased in so that the full reduction will not be available until 2017. Until then companies seeking the reduction must apply an appropriate percentage to the profits earned from its patented inventions at a transitional rate. For the period 1 April 2014 to 31 March 2015, the rate is 70 per cent; it will 80 per cent from 1 April 2015 to 31 March 2016.
Are you eligible?
To be eligible the company must own or exclusively license-in patents granted by:
- the UK Intellectual Property Office
- the European Patent Office
- the following countries in the European Economic Area: Austria, Bulgaria, the Czech Republic, Denmark, Estonia, Finland, Germany, Hungary, Poland, Portugal, Romania, Slovakia, Sweden.
The company or another company in the group must also have undertaken qualifying development for the patent by making a significant contribution to either:
- the creation or development of the patented invention
- a product incorporating the patented invention
In addition to patents, the patent box may be available in respect of certain other medicinal or botanic innovation rights.
Group companies may be eligible for the patent box, provided they “actively own” the patented invention by taking a significant role in managing its whole portfolio of eligible patents – passive intellectual holding property companies will therefore not qualify for the regime. So, where a fellow group company has developed the intellectual property, the patent box company must be actively managing that IP.
Where the IP is licensed-in rather than owned the requirement is for an exclusive licence over at least an entire national territory – a part only of a country would be insufficient to entitle qualification. In addition, the licensee must either be able to bring infringement proceedings to defend its rights or be entitled to most of the damages awarded in successful proceedings relating to its rights.
The income must derive from one of the following sources:
- sales of the patented product(s) incorporating the patented invention or bespoke spare parts
- licensing of patent rights
- selling patented rights
- infringement income
- damages, insurance or other compensation related to patented rights.
This is very broad and means that anyone with a patent should be able to benefit from the patent box, if the is invention is any way attractive to third parties.
Making the election
In order to benefit from the reduced rate available for the patent box, it is necessary to make a formal election to HMRC, either in your tax computations or separately in writing. The election must be made within two years of the end of the accounting period in which the relevant income arose.
Criticisms of the patent box
The patent box has been the subject of some criticism since its introduction. Whilst the Government has stated that the objective of the patent box is to help stimulate innovation, critics, including the Chair of the parliamentary Public Accounts Committee, have criticised it as tax avoidance. The German finance minister has said he thinks it represents unfair tax competition, Germany not having anything similar. The EU Code of Conduct Group has suggested that it considers that the patent box contravenes the code of conduct for business taxation.
This criticism, even if it were merited, is unlikely to warrant a change in course. The Government has rejected the criticism and pointed out that the qualification criteria are stringent – this article has done no more than summarise what is in fact complex legislation. It would be a big surprise if the patent box were not here to stay. Accordingly, it is worth considering whether you might be eligible for what is a significant tax reduction.
Please contact us if you would like to know more about how your company might benefit from the patent box.

Customs enforcement of intellectual property rights
A new Customs Regulation came into effect on 1 January 2014, which strengthens the powers […]
A new Customs Regulation came into effect on 1 January 2014, which strengthens the powers of Customs officials to detain suspected counterfeit and pirated goods at EU borders. It also introduces a new procedure for the treatment of “small consignments”. There are important differences from the previous regime, which rights holders need to be aware of.
How the regime works
As previously, the new Customs Regulation [1] (the Regulation) applies to infringing goods being imported or exported across the external borders of the European Economic Association (EEA). Customs check for potential infringements by comparing the information provided by the rights holder with that provided by the importer. Where they suspect an infringement, Customs will detain the goods. Customs will invite the rights holder to inspect the detained goods and to provide a written opinion as to whether the goods are counterfeit or pirated and the reasons why they infringe.
In common with most EU Member States the UK operates a “simplified procedure” as an alternative to infringement proceedings. By this procedure the rights holder may secure consent for destruction of the goods from the declarant. There is a presumption of consent if the declarant fails to respond to such a request. Customs will release the goods if proceedings have not been initiated or a settlement reached within 10 days.
The principal changes
The principal changes introduced by the Regulation are:
- the “simplified procedure”, whereby the destruction of goods can be brought about without the need to initiate proceedings provided there is express or deemed consent from the declarant or holder, will no longer be a discretionary procedure that member states can choose to adopt – i.e. it will be standard procedure throughout the EU
- the Regulation extends the categories of IP rights that are covered by the above procedure – this now includes rights in trade names, semiconductor topographies, utility models and devices designed to circumvent technological measures
- applications by rights owners to Customs to take action to detain suspected counterfeit or pirated goods will be made on a single new form (the AFA Form). The AFA Form gives rights owners the option to choose to request national or EU-wide Customs action. The AFA Form includes undertakings by the rights owner regarding the costs incurred by Customs, including as to storage, handling and destruction, and undertakings regarding the costs of samples not returned or damaged (where they are found not to infringe)
Customs will be able to take ex officio action, i.e. even where there is no AFA Form in respect of an IP right. Customs will give written notification to both the rights owner and the declarant or holder in such cases - the Regulation introduces a procedure allowing “small consignments” of counterfeit or pirated goods to be destroyed without the need for the explicit agreement of the applicant in each case, provided the applicant has made a general request for destruction, by opting on the new AFA Form. This is an EU-wide procedure, i.e. it cannot be used in respect of one or a handful of Member States only. A “small consignment” is a postal or express courier consignment which contains 3 units or less or which has a gross weight of less than 2 kilograms, although this does not cover perishable goods. If the rights owner opts in to this procedure, Customs will notify the declarant or holder only of the fact of detention. The declarant or holder will then have 10 days in which to object to or consent to destruction. Silence will be deemed to constitute consent. Customs will then invoice the rights owner for the costs of destruction
The Regulation does not apply to goods in transit within the EU, between non-EU countries. Nor are grey market goods covered by the Regulation. The EU Parliament is considering proposals to amend the position so that goods in transit may, at least in certain circumstances, fall within the Regulation. Any such amendment is not, however, imminent.
Finally, a new EU-wide centralised database called COPIS has come into operation (from 1 January 2014). COPIS will handle and record all AFAs and renewals of AFAs and retain data on infringements.
The Walker Morris Intellectual Property Group would be happy to advise you further in how to make the most of the Regulation and help you manage your anti-counterfeit/piracy systems.
[1] Regulation No 608/2013

Riding on the coattails of the Tour de France
It is not just cycling enthusiasts that are counting the days until the Tour de […]
It is not just cycling enthusiasts that are counting the days until the Tour de France rolls into Yorkshire this summer. Local retailers are eagerly anticipating the arrival of thousands of potential new customers and it is already common knowledge that hoteliers have upped their prices. However, businesses looking to cash in on the Tour need to be mindful of the lessons from the Olympics two years ago and bear in mind that the Tour’s intellectual property rights are likely to be zealously protected.
Le Tour’s IP Rights
The name “Tour de France” and the well-known logo are registered trade marks owned by the Societe du Tour de France. The use of these marks, or marks which are confusingly similar, or which imply an association with the Tour without authorisation from The Amaury Sport Organisation (ASO) – the Tour’s organiser – and Welcome to Yorkshire may result in infringement proceedings. Enforcement action may include a claim for damages, injunctions or orders to deliver up infringing goods or materials.
Companies wishing to use the Tour’s trade marks should also be mindful of ambush marketing which is often rigorously enforced by large sporting event organisers. Ambush marketing is the practice of riding on the coattails of a major sporting event, without paying sponsorship or licensing fees, in order to obtain free promotion for a brand. The organisers of sporting events are heavily dependent on sponsorship money to run their events and ambush marketing may undermine the value of the sponsor’s investment. This, in turn, makes it more difficult to attract future sponsorship. We saw this in 2012 when the organisers of the London Olympics attracted some criticism for the zeal with which they approached the task of preventing ambush marketing of the Olympics, the most notorious instance of which was of a cafe manager who was required to remove a display of five bagels in the style of Olympic rings. Probably the best known instance of ambush marketing at a sports event was during the 2010 World Cup in South Africa, when 36 orange-clad women were ejected from a match – they had been taking part in an ambush marketing stunt to promote “Bavaria” beer. The Tour is particularly well known for its cavalcade of sponsors’ vehicles which adorn the Tour route ahead of the peloton. As such, the Tour’s organisers will no doubt seek to “clean” the route of non-sponsored advertising.
Tour Best Practice
Businesses should avoid using Tour logos and slogans and from suggesting an association with the Tour unless they are licensed to do. If you are looking to use the Tour’s logos, or similar (i.e. as part of a corporate cycling team), you should first contact the ASO and Welcome to Yorkshire for permission. Think twice therefore being promoting a “Tour de Blubberhouses”!

The benefits of Protected Food Name status
Question: What do the following have in common? Cumberland Sausage, Melton Mowbray Pork Pie, Arbroath […]
Question: What do the following have in common?
Cumberland Sausage, Melton Mowbray Pork Pie, Arbroath Smokies, Cornish Clotted Cream, Jersey Royal Potatoes, Rutland Bitter, Blue Stilton Cheese, Yorkshire Forced Rhubarb
Answer: They all benefit from Protected Food Name status. (The clue was in the title of the article.)
2014 has seen the addition of Anglesey sea salt and West Country beef and lamb to the growing list – an achievement which attracted some coverage in the press. Last year Pembrokeshire potatoes won the status and we understand that the growers of Denbigh plums have applied for recognition as well.
Protected Food Name status is awarded by the European Commission. The relevant EU legislation has been around since 1993. The objective is to highlight regional and traditional foods whose authenticity and origin can be guaranteed. The scheme recognises three classes of protection:
- Traditional Speciality Guaranteed (TSG) – this protects the recipe and ingredients in a product, i.e. how the product is made. TSG status is open to products that have traditional or customary names and which have a set of features that distinguish them from other similar products. These unique features must not be attributable to geographical location nor be based on technical advances in production
Protected Geographical Indication (PGI) – this stipulates that part of the production must occur within a defined geographical area. The product must have a reputation, features or quality attributable to that area - Protected Designation of Origin (PDO) – in this case, as well satisfying the above requirements, the product must be wholly made or processed in the area and from ingredients originating from the area. Anglesey Sea Salt, for instance, has PDO status so that consumers will know that it has been harvested in Anglesey
The benefits for producers are essentially twofold. The first is defensive – Protected Name Status affords legal protection against imitation throughout the European Union. The second is in terms of branding – Protected Name Status confers heightened brand awareness throughout the EU. Parma Ham, for example, is very well-known and sought after in this country.
Defra is keen to encourage further applications from producers in the hope that this will encourage exports as well as foster overseas interest in regions of the UK.

Trade mark toolbox: Colours
Colours can be registered as trade marks. Under the Trade Marks Act 1994 and the […]
Colours can be registered as trade marks. Under the Trade Marks Act 1994 and the Community Trade Mark Regulation, any sign which can be represented graphically and which is capable of distinguishing the goods or services of one undertaking from those of another is prima facie registrable as a trade mark.
For example, Heinz has successfully registered the turquoise colour used on its baked bean tins.
Registering a colour as a trade mark is not straightforward; last October, the Court of Appeal gave judgment for Nestlé in its challenge to Cadbury’s attempt to register the purple colour of its chocolate bars. The Court said that the application lacked clarity because it used the words “The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods”. This opened up the possibility of a number of colour combinations which Nestle argued was too vague. Cadbury filed a more suitably worded application which is currently pending and uses the simpler description “The colour purple (Pantone 2685C), shown on the form of application”. Also on colours, the UK Intellectual Property Office published a practice note on 21 January 2014 confirming that, where a mark registered in black and white form has been extensively used in a particular colour or colours, the court can take this into account when it is considering issues of likelihood of confusion, detriment and unfair advantage. It also says that in infringement proceedings, it may be relevant that the later mark has been used in particular colours.
The Walker Morris Trade Marks and Designs Unit has a wealth of experience in handling trade mark applications, including “non-traditional” marks, such as colours, where very particular attention needs to be paid to the framing of the application.