BUSINESS BRIEF: UK
total freedom to use the mark rather than the right to stop others using the mark. Failure to police the mark actively is quite common as is failing to keep proper records, particularly in relation to how and to what extent a mark has been used.
Owners are also oſten reluctant to spend money on routine ‘housekeeping’ matters such as keeping the registers up to date, eg, with changes of name, address or changes of ownership.
Have there been any changes to the trademark law(s) in the last 12 months?
A fast-track opposition procedure was introduced which is cheaper and faster. Only straightforward cases are suitable because the grounds are limited. Proof of use of earlier marks registered for more than five years must be submitted when filing the opposition. Further evidence requires leave. Te decision will be based on a comparison of the marks and goods/services. Tere is no automatic right to a hearing.
Counterfeiting
How big a problem is counterfeiting in your jurisdiction? Te import of counterfeit goods is an ongoing problem in the UK and the EU. Trade in counterfeit goods is estimated to cost the UK economy about £1.3 billion a year with about £900 million flowing to organised crime. In 2012 Customs enforcement in the EU resulted in almost 40 million articles detained.
What industries are particularly at threat? Te top categories of detained goods are cigarettes, alcohol, packaging materials, medicines, clothing, footwear, perfumes, cosmetics and electrical goods but products in every sector have been detained.
What are the best strategies for dealing with the problem?
Swiſt and robust action must be taken to maintain the prestige of a brand. Customs need the assistance of rights holders to police trade effectively. We recommend that an application to protect the
www.worldipreview.com
client’s IP rights be filed with Customs. Tis ensures Customs notifies the rights holder of any detentions without delay.
Te burden of proof rests with the rights holder to confirm that the seized goods are counterfeit and the time limits to take action are very short. It is important to have a technical contact who can quickly determine whether detained goods are counterfeit and a legal contact who can promptly communicate with Customs and the consignee. Unless the consignee responds, Customs will treat the goods as abandoned for destruction.
Copyright
What are the key challenges to copyright holders in your jurisdiction? Unauthorised use of content online remains a major challenge to copyright holders. For example, illegal acquisition of infringing content through websites offering direct downloading, file-sharing or streaming is estimated to cost the UK audiovisual industries about £500 million a year in lost revenue.
How should people ensure they are protected against copyright infringement?
Keep accurate, dated records of the development of the work and assert copyright on it with the owner’s name and year of creation. Tere are many specialist organisations representing the rights of copyright holders who provide industry-specific advice and assistance.
What is the best way to deal with infringement?
Actions for infringement may be brought before the High Court or the IPEC. Hearings are before a single judge sitting without a jury. Remedies available include injunctions, damages and giving up of infringing goods. Deliberate infringement of copyright on a commercial scale can also be a criminal offence. Customs, the police and Trading Standards can investigate.
Mark Green is a strong believer in bringing a commercial view to intellectual property to assist companies to grow their assets. Qualified as both a patent and trademark attorney, he can assist in overviewing a company's whole IP portfolio, including designs and copyright.
World Intellectual Property Review Annual 2014 141
Have there been any changes to copyright law in the last 12 months?
No, but a number of changes to copyright law intended to make it better suited for the digital age will come into force on June 1, 2014. Information is available through the UK IPO website.
Alison Simpson is a partner at Urquhart-Dykes & Lord LLP. She can be contacted at:
aefs@udl.co.uk
Mark Green is a partner at Urquhart-Dykes & Lord LLP. He can be contacted at:
mcg@udl.co.uk
Alison Simpson is qualified as a patent attorney
and trademark attorney, and
advises client on all aspects of acquisition, management and exploitation of trademarks. She specialises in commercial and strategic advice on brand development including clearance searching, filing strategies, enforcement and anti-counterfeiting.
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