On 1 October 2017, new EU Trade Mark reforms came into force. The reforms relate to a number of procedural matters, but also include some interesting changes regarding the requirements for registration, and the types of marks that can be protected.
One of the changes coming into effect is the abolition of the requirement for graphical representation. The exclusion of the graphical representation requirement means that the registration of non-traditional marks such as sound, motion, patterns and holograms may become easier and perhaps also more common.
The principal behind the graphical representation requirement is to provide clarity, to both the European Intellectual Property Office (EUIPO) and the public, as to what exactly is registered as a trade mark. Such clarity can be difficult in respect of non-traditional marks. For example, sounds can be represented by means of a musical score, but would be meaningless to anyone who can’t read music.
Although the graphical representation requirement has been removed, going forward, a trade mark still needs to fulfil certain criteria. To be registrable, a trade mark must be “clear, precise, self-contained, easily accessible, intelligible, durable and objective”.
The EUIPO’s embrace of technology and abandonment of the requirement for graphical representation will allow the protection of sound marks via the use of MP3 files, which meets the newly codified requirements for registration, and will provide the necessary clarity to the public. This approach also now provides for the protection of new types of marks, such as multimedia marks, allowing for the combination of images and sounds to be protected by means of an MP4 audio-visual file. The use of MP4 files will also be available for the registration of motion marks.
The reforms also see the introduction of EU certification marks (already available as a UK right). A certification mark differs from a trade mark, which designates the origin of the goods and services being those of a particular company, and instead acts to certify that the goods or services comply with certain standards or are of a certain quality.
The reforms offer businesses and organisations an increased scope for protecting their trade marks in the EU; however, it remains to be seen to what extent businesses and organisations will utilise these changes, and how the EUIPO will examine and interpret the new criteria, particularly in respect of non-traditional trade marks.
We are delighted to introduce Lawrie IP’s two newest recruits.
Kirsten Coetzee is a Chartered Trade Mark Attorney and a European Trade Mark and Design Attorney. He has a MA (Hons.) in Psychology from the University of Dundee, and obtained his Law degree (LLB) from the University of Glasgow. Before joining Lawrie IP in 2017, Kirsten worked for one of the UK and Europe’s largest firms of patent and trade mark attorneys.
Kirsten specialises in advising clients on the protection of their trade marks, as well as the enforcement of their registered and unregistered rights. He has particular experience with clients in the areas of food and drink, software and mobile apps, oil and gas, clothing and accessories, pharmaceuticals, medical apparatus, retail, sport and leisure, marketing and business administration, financial services, design and development services, manufacturing and renewable energy.
Louise Greenshields joins us as Trade Mark Secretary. Louise has extensive PA, marketing, and communications experience. She has worked in a diverse range of industries including legal, asset management and construction consultancy, media, corporate hospitality, and the drinks industry. Before joining Lawrie IP, Louise spent twelve years working for one of the world’s leading asset management and construction consultancies. Louise provides full administrative and secretarial support to the firm’s Trade Mark Attorneys.
We are delighted to introduce three new members of the Lawrie IP team.
Anders Jensen is a qualified European Patent Attorney with a M.Sc. from the Technical University of Denmark. Before joining Lawrie IP, Anders spent seven years working for several of the UK’s largest firms of patent and trade mark attorneys. Prior to that, he worked as a Patent Examiner for the Danish Patent and Trademark Office. Anders works in the fields of electronic and electrical engineering, physics, semiconductors, sensor technologies, optics and imaging, photolithography, wireless network technologies, with particular expertise in software and web-based inventions.
Samantha Moreton is a Trainee Patent Attorney with a BSc. (Hons.) in Chemistry with Medicinal Chemistry from the University of Glasgow and a Ph.D. in Nanochemistry from the University of Strathclyde. Before joining Lawrie IP, Samantha spent two years working as an Analytical Chemist for a contract research organisation specialising in the analysis of pharmaceutical and agrochemical products. Samantha works in the fields of nanochemistry, biotechnology, medical devices, chemistry, formulations, pharmaceuticals, biofuels and renewable energies, organic semi-conductors, polymers and chemical processes.
Flora Hachemi is a Trade Mark Administrator with over three years’ professional experience in the field of Intellectual Property. Before joining Lawrie IP, Flora worked as a Patent Administrator for one of the UK and Europe’s largest firms of patent and trade mark attorneys. Flora also has a Double Masters (LLM) in French and English Law with a speciality in Intellectual Property Law from the University of Glasgow and Université Paris Nanterre, and is currently doing the Bournemouth University Postgraduate Certificate in Intellectual Property.
We are pleased to announce that Chris Martin has passed three of the PEB Examinations for qualification as a UK Registered Patent Attorney, namely the UK Patent Law, International Patent Law, and English Law exams.
Chris specialises in the fields of electronic engineering and mechanical engineering, and is now one step closer to qualifying as a Patent Attorney.
Congratulations to Chris on the successful results!
Managing Intellectual Property (‘MIP’) has released its 2017 rankings of the leading firms for patent and trade mark work in over 70 jurisdictions, and Lawrie IP is delighted to have been highly ranked for both patent and trade mark prosecution work in Scotland.
MIP is a well-established publisher in the IP industry, which has been researching and ranking IP firms since 1996. MIP conducts extensive research over a six month period to produce a list of professionals who are highly-regarded by their peers and clients for the work they do. This research includes surveys, interviews, and independent research. Among the attributes assessed by MIP are: strength of the firm’s IP team, workload, outcomes achieved for clients, and track record.
The IP Stars rankings are widely acknowledged as a list of leading IP firms so we are thrilled to have achieved this recognition.
In response to this accolade, Lawrie IP’s founder, Donald Lawrie commented as follows:
“This is an indicator of the quality and calibre of our work, our client base, and our growing reputation. A fantastic achievement and testament to the work put in by everyone over the last couple of years.”
Thank you to our clients and colleagues who assisted us in achieving this recognition.
We are proud to announce that, following assessments by the British Assessment Bureau, Lawrie IP is ISO 9001:2008 and ISO 27001:2013 certified. In addition to these two internationally recognised accreditations, Lawrie IP has obtained a Cyber Essentials accreditation, and has been certified as a Living Wage Employer.
ISO 9001:2008 Quality Management Standard
We strive to offer our clients the peace of mind normally associated with a larger firm, but coupled with the flexibility of working with a smaller firm. To enable us to provide this service, we have invested significant time and resources in our records management systems and procedures.
We are therefore delighted to have achieved the ISO 9001:2008 certification for Quality Management, as this demonstrates our commitment to providing the highest level of service to our clients, and ensures that we meet best practice for quality management.
ISO 27001:2013 Information Security Management Standard
As Patent and Trade Mark Attorneys we are entrusted with highly confidential information. We recognise our responsibility in maintaining confidentiality and we believe that it is important to give peace of mind to our clients, suppliers and employees that their information will be handled securely.
We are therefore pleased to have achieved the ISO 27001:2013 certification for Information Security Management as it demonstrates our commitment to the security of the information that we hold, and illustrates that we meet best practice standards.
The British Assessment Bureau will carry out annual assessments of our systems and processes to ensure that we continue to meet the requirements of ISO 9001:2008 and ISO 27001:2013.
The Cyber Essentials scheme identifies some fundamental technical security controls that an organisation needs to have in place to help defend against Internet-borne threats. The Cyber Essentials accreditation certifies that Lawrie IP’s information and communications technology defences were assessed as satisfactory against commodity based cyber-attack.
Living Wage Employer
We believe that every employee is entitled to a fair salary. For this reason, Lawrie IP has committed to ensuring that all of our staff, regardless of whether they are permanent employees or third-party contractors, receive at least the Living Wage, which is significantly higher than the national minimum wage. The Living Wage is an hourly rate that is set independently and is calculated according to the basic cost of living using the ‘Minimum Income Standard’ for the UK.
Lawrie IP’s directors, Donald Lawrie and Craig Hutchison will be sleeping outdoors in Edinburgh on a cold winter night to help raise funds for Social Bite’s innovative solutions to Scotland’s homelessness problem.
Social Bite is not just any old sandwich shop, it is a social enterprise that was set up with a specific aim of helping the homeless and gives 100% of its profits to charity. For the last two years Social Bite has worked with itison to feed the homeless on Christmas Day and throughout the following year. Last year 72,900 meals were banked for homeless people in Scotland and refugees overseas. This has allowed Social Bite to feed the homeless in three cities every day for two years!
In addition to using the funds to help maintain Social Bite’s existing support activities, it also plans raise enough money to help build the first Social Bite Village. This village will be built on land obtained from The City of Edinburgh Council and will comprise housing for 20 people. The village will comprise a gym, a chicken coup, a vegetable plot and a support hub for its residents.
Christmas is a time of year where we eat, drink and are merry with our families and friends. However, it is also an incredibly lonely and harsh time for our homeless population.
If you would like to support this truly wonderful event and sponsor Donald and Craig on the 15th of December, please visit their JustGiving page here.
The Institute of Trade Mark Attorneys has been granted a Royal Charter and has today become The Chartered Institute of Trade Mark Attorneys.
CITMA was founded in 1934 and has a long standing history of promoting, supporting, and bringing recognition to the work and role of trade mark attorneys. A Royal Charter is reserved for eminent professional bodies, so this is a momentous event for the trade mark profession in the UK.
As a chartered body, CITMA has an even better platform from which to continue the outstanding work that it does for the trade mark profession.
Our trade mark attorneys are very proud to now have chartered status.
For more information on the creation of CITMA’s Royal Charter, visit https://www.citma.org.uk/about_citma/royal_charter/making_our_royal_charter
We are pleased to share the news that Shirley Collins has passed Nottingham Law School’s Litigation Skills Course and is now entitled to the Intellectual Property Litigation Certificate.
The course covered a range of topics from initial case analysis through to trial, including negotiations and alternative dispute resolution, with a focus on the practice and procedure of the Intellectual Property Enterprise Court (IPEC). With the increasing importance of the IPEC in IP disputes, the skills gained on this course are a beneficial addition to Shirley’s skill set.
We are pleased to introduce the two newest members of the Lawrie IP team.
Chris Martin joined Lawrie IP in January this year as a trainee patent attorney. Chris has a MEng. in Electronic and Electrical Engineering and a Ph.D. in Electronics and Nanoscale Engineering, both from the University of Glasgow. Before joining Lawrie IP, he spent two years working as a Research Associate at the University of Glasgow, where he was part of an inter-disciplinary research project working on a portable electronic sensing platform to detect the metabolites present in human blood. Chris works in the fields of electronic and electrical engineering, biosensors, nanofabrication techniques, mechanical engineering, physics, advanced coated films, sonar imaging, robotics, oil and gas technologies, construction technology, automotive engineering, retinal imaging, and prosthetics.
Rowena Wood joined us in April this year. Rowena has over ten years’ of experience in the field of intellectual property and is a qualified patent administrator, having obtained the CIPA Certificate in Patent Administration. Rowena provides full administrative support to the Directors and attorneys at Lawrie IP. She also provides support to the firm’s Practice and Accounts team. Rowena has extensive experience in patent, trade mark and design administration, formalities throughout the United Kingdom, Europe, United States of America, Australia and New Zealand.
Managing Intellectual Property (‘MIP’) has released its 2016 IP Stars rankings, and we are delighted to announce that Donald Lawrie has been recognised as an ‘IP Star’ in the field of patents.
MIP is an esteemed publisher in the IP industry, which conducts extensive research to produce a list of professionals who are highly-regarded by their peers and clients for the work they do. The research is conducted over a six month period and includes surveys, interviews, and independent research. The IP Stars rankings are widely acknowledged as a list of leading IP practitioners, and so we are thrilled that Donald has been named as a ‘Patent Star’. In response to this achievement, Donald has commented:
“This award is a reflection of our team and highlights our progress since starting out in 2010. The firm also features in the 2016 MIP IP Stars rankings and we aim to continue to climb these rankings as the company continues to grow.”
Donald works in the fields of biotechnology, chemistry, chemical engineering, medical devices, and general mechanical devices. His practice areas include drafting and prosecution of global patent families, preparing and filing of registered designs, due diligence reviews, freedom to operate opinions, infringement opinions, validity opinions, entitlement actions, ownership advice, advising on IP clauses in agreements, IP audits, vendor IP reports and advising on preparation for investment or sale.
As you will be aware, the United Kingdom has voted to leave the European Union (EU).
We understand that you may have some questions regarding the effect that the outcome of the referendum will have on intellectual property rights in Europe.
The UK’s exit from the EU will have no effect on UK patents obtained through the European Patent Office (EPO). European patents are governed by the European Patent Convention (EPC), and membership of the EPC is separate from membership of the EU. Therefore, Lawrie IP will continue to be able to act as representatives at the EPO after the UK’s exit from the EU.
Trade Marks and Designs
There is no need to take any action at present regarding existing EU registered trade marks and designs as these will continue to have effect in the UK until new provisions are in place. It is likely that the new provisions will allow EU registered trade marks and designs to continue to take effect in the UK after the exit, but the way in which such protection will be maintained is still to be determined.
What Happens Next?
Brexit will have no immediate effect on intellectual property rights, and it is likely to take at least two years to negotiate the terms of the exit. For the time being, it is business as usual.
Lawrie IP will be closely monitoring the progress of the exit negotiations and will ensure that clients are informed if and when any action is required to maintain intellectual property rights.
If you have any questions or wish to discuss the effect of Brexit on intellectual property rights in further detail, please speak with your usual contact at Lawrie IP.