'Law & Practice'

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Unjustified Threats Bill receives royal assent

Date: 03/05/2017

The Intellectual Property (Unjustified Threats) Bill has received royal assent as is expected to commence in October 2017.

Below, Design and Copyright Working Group member Simon Miles (Edwin Coe LLP) looks at the changes to the law which the Bill will bring about when it comes into force.

Unjustified threats bill

UK law provides a statutory right of redress against unjustified (or groundless) threats to sue for infringement of a patent, trade mark or design right. Threats to sue for ...

Unjustified Threats Bill awaits royal assent

Date: 10/04/2017

The Intellectual Property (Unjustified Threats) Bill has passed the report stage and third reading, and is now awaiting Royal Assent.

Below, Design and Copyright Working Group member Simon Miles (Edwin Coe LLP) looks at the changes to the law which the Bill will bring about when it comes into force.

Unjustified threats bill

UK law provides a statutory right of redress against unjustified (or groundless) threats to sue for infringement of a patent, trade mark or design right. Threats to sue ...

UK set to ratify Unified Patent Court

Date: 29/11/2016

The UK Government has confirmed it is proceeding with preparations to ratify the Unified Patent Court Agreement.

The announcement is the next step towards realising the Unitary Patent and Unified Patent Court. The new system would enable businesses to protect and enforce their patent rights across Europe with a single patent and through a single patent court.

UK Minister of State for Intellectual Property, Baroness Neville Rolfe said: "The new system will provide an option for businesses ...

Government responds to proposed changes in design fees

Date: 10/06/2016

The cost to register designs in the UK is coming down, with the proposed changes likely to come into effect from October 2016. 

ITMA submitted a response to the original proposals, and the Government has recently published its official response to the ‘Proposal for Changes to Registered Design Fees’. 

In its latest publication the Government said it will “take steps to amend the relevant UK designs legislation at the next suitable opportunity so as to change the ...

EU copyright consultations

Date: 08/06/2016

The European Commission is currently conducting public consultations on two aspects of EU copyright law, namely whether there should be an EU “neighbouring right” for publishers, as well as the operation of the “panorama exception” across the EU, which allows people to photograph or film certain publicly located artistic works, without infringing copyright in them.

The Commission website says: “Have your say on the possible extension to publishers of the ...

IPO publishes guidance on registered designs post-Trunki

Date: 01/06/2016

The UK Intellectual Property Office (IPO) has today (1 June) published guidance on filing UK registered designs following the Supreme Court decision on the Trunki suitcase.

There were a number of issues discussed by the Supreme Court during the Trunki judgement, not all of which were answered. Many of these were left for the registries, such as the IPO, to determine as they related to filing practice rather than how the law should be interpreted.

The note gives advice for designers, ...

India Trade Mark Registry: mass abandonments: official decision

Date: 16/04/2016

Following a proposal by the Indian Trade Mark Registry to mark a large number of Trade Mark applications as "abandoned", which decision has been stayed by the High Court in Delhi, ITMA advises you urgently to contact local attorneys in relation to all pending applications in India to seek confirmation of the applications' status and to request the attorneys' diligent attention.  Matters are ongoing and the decision of 11 April 2016 can be seen here.

Trunki loses at the Supreme Court: practical guidance for designers

Date: 09/03/2016

The Supreme Court has today (9 March) handed down its judgment, unanimously upholding the Court of Appeal's decision: PMS did not infringe Trunki's registered design. This article offers practical guidance on what the decision means for designers, and also looks at the judgment itself in detail.

If you are interested in learning more about this judgment and its implications, John Coldham is chairing an event organised by ITMA on 27 April, in his capacity as a member of the Designs and ...

OHIM Article 28(8) consultation

Date: 09/12/2015

The Office for Harmonization in the Internal Market (OHIM) is consulting its stakeholders on changes brought about by legislative reform and the impact on the implementation of Article 28(8) European Union Trade Mark Regulation (EUTMR) on the classification of goods and services.

Article 28(8) EUTMR introduces a transitional period during which proprietors of EU trade marks applied for before 22/06/2012 and registered for the entire heading of a Nice class may declare that their ...

Proposal to bring forward repeal of s.52 CDPA 1988 to April 2016

Date: 11/11/2015

The Copyright, Designs and Patents Act 1988 currently provides, in section 52, that artistic works which are exploited by an industrial process (that is, more than 50 articles being produced) have their copyright protection limited to a duration of 25 years (i.e. in line with the maximum available for registered designs). This period of protection is significantly less than the duration of copyright protection afforded to other artistic works, which is the period of the author's life, plus ...

Not so Safe Harbor?

Date: 08/10/2015

Associate member of ITMA Nick Phillips explores the procedures in place to protect data.

On 6th October 2015 the Court of Justice of the European Union (“CJEU”) has declared the US “Safe Harbor” scheme to be invalid.

Safe Harbor was used by many companies including Google, Facebook (about which this case was brought) and Amazon and it allowed personal data to be transferred, in compliance with EU data protection rules, from the European Economic Area (EEA) to the US.


The Intellectual Property (unjustified threats) Bill: an update

Date: 21/09/2015

When a trader is threatened with an IP infringement action (whether under trade marks, patents or designs) they may capitulate in the face of such a threat thus causing damage to their business even where the IP right in issue may be invalid. Threats of such litigation against a competitor’s retailers or distributors can be a productive tactic because such non “primary” infringers will usually have less invested in the product being sold and may well be able to simply ...

KitKat trade mark registration still possible

Date: 16/09/2015

Following the ruling by the Court of Justice of the European Union (CJEU) on Nestlé's application to register KitKat's four-fingered bar as a trade mark  President of The Institute of Trade Mark Attorneys Chris McLeod has suggested if Nestlé can prove public recognition for the KitKat shape a registration could be possible. 

Chris McLeod said: “The ruling of the CJEU provides a degree of clarity which will assist the High Court in making its judgment. ...

IPO publish Tribunal Practice Notice (2/2015) - Introduction of a costs cap for Fast Track Oppositions

Date: 26/08/2015

The Intellectual Property Office (IPO) has published a Tribunal Practice Notice (TPN) which introduces a cost cap for fast track opposition proceedings. This practice change will apply to fast track oppositions filed on and after 1 October 2015. Further information about TPN 2/2015 can be found here.

South Africa Copyright Amendment Bill

Date: 19/08/2015


South Africa's Department of Trade and Industry has published a "Copyright Amendment Bill 2015" and is inviting interested parties to comment to Dr Rob Davies, the South African Minister of Trade and Industry.

ITMA members who act for clients with an interest in copyright law in South Africa are invited to comment.

Click here for the document

The deadline for comment to the Department of Trade and Industry is Wednesday 26 August 2015

Lego figures remain community trade mark

Date: 18/06/2015

Lego recently had the decisions to register the shape of Lego figures as a community trade mark upheld in the General Court of the European Union after a challenge from rival Best-Lock. 

President of The Institute of Trade Mark Attorneys Chris McLeod said: “This is all about what can and cannot be registered as a trade mark. The shape of Lego figurines does not result from the need for them to be connected with other Lego products. This is why it is possible to register and ...

IPO publish Tribunal Practice Notice (TPN 1/2015) on Evidence filing

Date: 03/03/2015

The Intellectual Property Office (IPO) has published a Tribunal Practice Notice (TPN 1/2015) which sets out a new practice in relation to the filing of evidience, placing some restrictions on the volume of evidence that can be submitted in trade mark proceedings before the IPO, without seeking permission from the registrar’s hearing officer. The TPN can be viewed here.

UK government to improve protection for businesses against groundless IP threats

Date: 26/02/2015

The UK government will improve protection to make sure businesses are not exposed to unnecessary and baseless accusations. See the full press release here.

Government Response to consultation - appealing to the Appointed Person on designs issues

Date: 10/02/2015

The Government has issued a formal response to the consultation on the proposed Rules and associated forms for appealing to the Appointed Person on designs issues.

The associated legislation has been finalised and will shortly be laid in Parliament, and subject to no objections being raised, is due to come into effect on 6 April 2015.

The full Government Response can be found here.