Wider protection for Databases?

The European Court of Justice has, by a recent decision, seemingly given wider protection to the owners of databases.

Databases are big business these days with almost all websites interacting with a database. The European Database Directive was set up to protect these valuable assets based on the existing copyright regime. 'Screen scraping' of website database information is now fairly common and this should assist database owners from protecting their rights.

A person infringes a database right if, without consent, they extract or re-utilise all or a substantial part of the contents of a database. The Directive prevents "extraction" which in this recent decision was interpreted widely. Thus protection can be seen to be wider.

Proving the copying of a database right is always difficult though. There are technical (coding) ways to demonstrate copying but the best and most practical way is to insert "Ghost" (made up) entries or insert deliberate mistakes or grammatical errors that others are unlikely to have made. The chances of two people making the same mistakes and making up the same "Ghost entries" is highly unlikely.

Trade Mark Applications – Faster, Cheaper, More Efficient?

Since October last year there have been numerous changes to the UK rules the govern UK trade mark applications. On 1 October 2008, the next changes came into force.

The main change is the reduction of the opposition period from three months to two. The opposition period is the time allotted for objections to a trade mark application. For example if a brand owner considers that an application is too similar to theirs they may oppose.

This combined with the option of fast tracking an application could mean that trade mark applications could proceed to registration in 4 months. This is great news for businesses looking to protect their brands, especially if they are rushing to protect a new product prior to launch.

Since October 2007 brand owners and not the trade mark registry must ‘police’ applications that they consider are too similar. Consequently, market vigilance will have to be heightened to ensure that oppositions are actioned sooner.

There is some comfort - where a need to oppose an application is identified, it will be simple and free to extend the period to three months. In addition trade marks can still be revoked or invalidated post registration if you miss the opposition period, but this is more costly and difficult.

An opposition requires formal legal proceedings with cost implications should a party lose. From October there are numerous procedural amendments to this system that are designed to streamline the trade mark tribunal system.

It is best to avoid oppositions by drafting the application correctly at the outset and assessing the risk of an opposition by carrying out searches to identify possible conflicting marks.

From October it will also be critical to get your application in order before you file it because the time period to correct application deficiencies and classification will be reduced to one month. If this is exceeded the application will have to be re-filed and a further application fee incurred.

Nominet DRP gets easier and cheaper....

Sorry I have been on my hols - now back and blogging away.

Nominet is the registrar for all domains ending in co.uk. They have the power to order transfers of domain names that are in dispute. This is a large amount of power particularly when domain names can be transfered for a great deal of money on the open market. Recently Tell.com sold for around £200,000.

Understanbly, given the potential value of some domians you get disputes over who should be the proper registrant of the domain name. Many organisations have been frustrated by registrants squatting on their domains and turn to the Nominet Dispute Resolution Procedure for assistance. This policy which provides a formal procedure to resolve ownership disputes changed from August 08. To have a domain name transferred a claimant should prove that the registrant has either abused the registration system or abused the use of the domain following registration. (This is different to ICANN, which regulates top level domains where you have to prove both)

The main change since August is the introduction of a summary decision from an expert where there has been no response from a defendant. This costs £200 plus VAT as opposed to the full mediation cost of £750 plus VAT. In addition much of the dispute resolution procedure can now be followed online including the submission of evidence. www.nominet.org.uk/disputes/drs/policyprocedurechanges

Nominet have also clarified point on what amounts to abusive registration including where are domian name is likely to confuse people that a domian is associated with a brand owner or even threatening the same.

These changes are welcome and the clarification reflects the recent cases.

Weak Trade Marks can leave a sour taste

A recent case (June 2008) has highlighted why you should always assess the strength of your trade mark before enforcing your rights.

Devon County Council were sued for copyright and trade mark infringement by a local businessman. The Businessman had registered "Devonshire Flavour" as a trade mark in relation to certain foods and drinks.

DCC counterclaimed by arguing that the trade mark should not have been registered in the first place and as such was invalid. There argument was that the mark was not distinct as it described the characteristics of the goods that are being supplied under the trade mark. The judge agreed and was particularly damming saying the mark was "hopelessly invalid".

The judge also agreed with the argument that the mark was used by DCC in relation to different goods and services to those registered so that there was no use of the trade mark.

Therefore, the claimant has wasted an application fee for the trade marks and is likely to have a significant costs award against him for losing to DCC.

It shows that you have to think very carefully what mark you are going to use and which classes of goods and services it will be used for.

You may get a trade mark registered but that does not mean it gives you any rights or is enforceable.

Obviously living in Devon this case is of local interest to me and shows the breadth of registrations that a new product or business has to negotiate.

WOW

Look what I stumbled upon......

Google now has a patent search facility

www.google.com/patents

A central and translatable patent search facility could be very useful for companies developing new technologies to check what already exists.

However this is still a 'beta' version and is not in a position to replace Patent Attorney searches.

In my opinion Google's services just keep improving!

ICANN means YOU CAN!

On the 26^th June 2008 ICANN (Internet Corporation for Assigned Names and Numbers) decided that it would open up Top Level Domians (TLDs) so that anyone could apply to operate a TLD. In theory you will be able to have nearly anything as a TLD for example a www.xybc.law domain, .firm or .brand.

The expectation is that the first applications will be received in the second quarter of 2009 and the first sunrise periods will occur at the beginning of 2010.

A sunrise period is the period before a new TLD goes live when Trade Mark owners and well established businesses have a preferential rights to purchase a domain name which incorporates that trade mark/name. However, this is still a first come first served basis. Ie Nestle, Volkswagen and Ralph Lauren all want ‘polo’ domain names.

Most commentators are of the view that .com will remain the TLD of choice and is still the best brand for companies. However, new TLDs will mean there will be further similar domains coming into existence and brand owners should look to acquire new domian names for their brands utilising the Sunrise Periods to prevent others from registering them and thus diluting their brands.

I expect you will have read about the much publicised www.narnia.mobi dispute.

Pro-Patent decision a warm welcome.

The House of Lords has recently passed down a decision that will help UK patent owners. The case has given guidelines on the test for obviousness when the validity of a patent is being attacked.

A quick recap: in the UK something is patentable if it is novel, has an inventive step (ie it is not obvious), is capable of industrial application and is not excluded by law (ie discoveries or games)

In nearly all claims of patent (or other intellectual property for that matter) infringement the defendant will always counter claim with an attack on the validity of a patent. There argument will be that the patent is not new because of the following prior art and that the in any case the patent is obvious and therefore should not have been granted in the first place.

The case in question should mean that it is more difficult to attack a patent on grounds of obviousness which is good news for patent owners. Of course if there is prior art that anticipates the patent then validity will still be attacked.

This is good news as many commentators were questioning the value of patents because they are always attacked in counterclaims.

Any patent litigation is still very expensive.