From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Thursday, 19 February 2015

Global IP: the British are (almost, sort of) best

The excellent and efficient James Thomson (Head of Stakeholder Engagement [how Merpel loves that job title!] at the United Kingdom's Intellectual Property Office), was first to notify the IPKat of the findings of the US Chamber of Commerce Global IP Center IP Index.  Possibly as excited as a Head of Stakeholder Engagement is allowed to be, he wrote and told us:
The UK is Number one for IP Enforcement! [It is a little-known fact that exclamation marks are in very short supply in the British Civil Service. The fact that James has used one here may mean that someone else has to go without one till replacements can be ordered ...]  And here's a comment from our IP Minister. Commenting on the 2015 GIPC Index, UK IP Minister Baroness Neville-Rolfe said: 
"A strong IP system is key to encouraging innovation and delivering continued economic growth. So I am tremendously pleased that this Global Index (GIPC) views the UK's IP enforcement regime as the best in the world. This is testimony to the joined-up efforts of government agencies, law enforcement, industry and other local and UK and international partners in tackling IP crime. That the UK is also ranked at the top for patents, trade marks, trade secrets and market access, membership of international treaties is further evidence of our world class IP regime". 
Well, the IPKat and Merpel are pleased that the Minister is pleased, though they wonder if they would have expressed their pleasure in quite the same way as the Minister's public sector speech writers.  How many readers, compiling their own list of testimonials, would have placed government agencies at the top of it?  Most of the cost and effort that goes into IP enforcement, including the cost of bringing actions that can't or don't succeed because of the substantive and procedural impediments built into the system, is borne by IP owners who take a risk, sometimes a financially fatal one, every time they decide to enforce or protect an IP right rather than turn a blind eye to infringements and threats to their business that they can't afford to deal with.

Long-time Katfriend Katharine Stephens (Partner, Bird & Bird) has kindly furnished the Kats with some comments, based on her particular field of interest. She writes:
The third edition of the Global Intellectual Property Center's Report (enthusiastically called "Unlimited Potential") places the UK second only to the USA in the strength of its IP laws. We have, according to the report "an advanced and highly sophisticated IP legislative framework, and enforcement levels are high".  Nice.

The points we lost were for:
* Draft plain packaging regulations for tobacco products published, and government moving toward full introduction of standardized packaging [presumably, given the existence of the Tobacco Products Directive in the European Union, the UK is not the only jurisdiction likely to be losing points here -- but see what the Report says below]

* New private-copy exception does not provide rights holders with mechanism of compensation

* Relatively high level of software piracy in comparison with other high-income economies [Merpel wonders if this is because the UK has fared much better economically in the past few years than many other high-income economies, particularly those in the euro-zone, which may mean that consumers have more cash available to spend on software, whether infringing or otherwise]
As you know, the first of these is an area of interest for me – and here I must pin my colours firmly to the mast and tell you that I am instructed on various trade mark issues by PMI. Nevertheless, what the report had to say on plain packaging was interesting. Never a fan of big government, I was struck by the warning against too much government regulation:
"For the European Union as a whole—at both a member state level and a central EU level—there is the separate issue of plain packaging for tobacco products, which a number of member states, including the United Kingdom and France, are considering introducing. The EU Tobacco Product Directive issued April 3, 2014, permits the introduction of plain/standardized packaging for tobacco products (Directive 53), but does not require it, nor does it direct member states to pursue such policies. The Directive also states that such laws need to be compatible with local law and international agreements.

Greg and Gina know all about blanket power 
As has been discussed in previous editions of the GIPC Index, providing blanket “power” to governments to regulate trademarks, trade dress, and brands based on broad objectives of public health could expose a variety of other products in the future to similar regulation, legislation, and de facto prohibition. Many products could be at risk of such regulation (e.g., high sugar/calorie/fat food products and drinks, alcohol and liquor). It is also worth noting that the EU Directive does not require economies to study the potential unintended consequences of such policies, including, for example, the establishment or growth in illicit trade of regulated products and black markets."
As the report was written before the most recent announcement by the UK Government to bring in legislation on plain packaging by 2016, the scores for the UK were unaffected. However, as stated in the country-specific commentary, the coming into force of the proposed regulations would lose the United Kingdom a point from the trade mark score (as happened to Australia), causing a fall in the rankings. The same threat was made to France, South Africa and New Zealand.
Solicitor and Katfriend Gary Moss (Partner,EIP) probably summarised the feelings of many members of the UK professions when he said:
"The good news is that after multiple defeats by Germany on the football field, we have finally managed to beat them at something. The even better news is that we can rely on the integrity of the results, since FIFA had nothing to do with them”.
Noting that this report is actually a bit dense to read, Gary observed that all was not quite perfect in areas other than tobacco product packaging.  For example, the UK did not score very well for pharmaceutical protection -- though that seems more related to EU legislation than anything else (see item 7 on page 146 of the report).  However, all in all, Gary was clearly pleased with the outcome:
 “That the UK has come out so well in this survey is the result of a number of factors including the esteem in which our courts and judges are held [this is certainly true: the quality of the specialist courts and bar is remarkably high -- and the fact that the judges now make themselves so available by attending or participating in public IP events is hugely appreciated], the quality of the advice available and the legislative regime which had ensured full protection for IP rights is available while at the same time enacting checks and balances so that such rights are not abused.” 
This Kat feels that, while it's always nice to be given a pat, especially from an unexpected source, there remains plenty of work to do if the IP regime in the UK is to become even more affordable and effective while ensuring that the IP system remains fair and transparent and that human rights, the dignity and the needs of competitors and the wider public are adequately addressed.  Let's take this as an encouragement for the work that remains to be done and not allow ourselves the luxury of being complacent.


Anonymous said...

We regularly assert our patent rights at exhibitions in DE and FR with great support from the police and customs. Similar support for patent rights is however lacking in the UK.

Anonymous said...

I probably wouldn't be a fan of big government if I was earning vast amounts of cash from a tobacco company, either. I would also, however, admit that my views were wholly biased and not worthy of consideration by those seeking a balanced viewpoint.

Mark Summerfield said...

I see that Australia has once again taken a big hit in the trade marks category for actually having implemented plain packaging rules for tobacco products. So if the UK goes the same way, I imagine it could slip a few places down the rankings.

In my view this is not an issue of IP rights, but of public health. In countries like Australia (and the UK) where the taxpayer largely picks up the tab for treatment of tobacco-related disease, there is an extremely strong case to be made for greater government regulation of tobacco sales. And by all objective accounts, the plain packaging laws are having a positive effect in reducing the numbers of young people taking up smoking.

In any event, however, tobacco makes up a very small part of the overall economic activity of the country. The "floodgates" argument keeps coming up, but is absurd and completely unsupported by any logic or evidence. For this one aspect of government regulation to be given so much prominence (and influence over the score in the trade marks category) when, for example, restrictions on the sale and marketing of prescription pharmaceuticals are, apparently, not of great concern, only serves to highlight the bias of the GIPC and US Chamber of Commerce. This index has little credibility, and is no more than a measure of how close a country's IP system is to the Chamber's "ideal".

Frankly, I don't see that the UK has a great deal to crow about. Congratulations on being the country whose IP environment is most approved of by US corporate interests (other than the US itself)!

Anonymous said...

Hold on. This is the US Chamber of Commerce that rates the US an No 1 and their pet poodle as No 2.

US is best is as good as it gets?We give any credence to this report and analysis?

The UKIPO response just shows how shallow this organisation has become.

Having recently tasted the quality of UK IP justice I wished I could have spat it out.

Being No 2 to the US is very bad news indeed.

Anonymous said...

We are all poodles now.

Anonymous said...

Executive Summary.

"Strong IP rights and innovative activity: Economies with robust IP environments yield 50% more innovative output compared with economies with IP regimes in
need of improvement."

The US being a regime in need of considerable improvement.

When is the UKIPO going to do something about this and put pressure on the US Govt to improve the situation? The USPTO needs to improve quality and value for money and the costs of PTAB and US litigation need to be capped. They need to be pushed away from biased jury trial litigation for example.

MaxDrei said...

Bundle of laughs, I must say. Or else one cries. Great comment thread thus far. From the viewpoint of the American BigCorp lawyers, what jurisdiction other than England is worthy to come 2nd to the USA.

Try asking around the SME patent users of the EU, on the mainland. Then ask BigCorp in Asia, which jurisdiction comes 2nd to their own domestic one. I am very sure it ain't the UK.

Way to go, as the Kat notes.

Nuno Pires de Carvalho said...

Many thanks for this (again) very useful and interesting piece of information.

However, I would like to address what you say on the possibility of the UK losing points in the IP enforcement index because of its upcoming plain packaging scheme.

With all due respect, I don’t agree, unless the UK plain packaging scheme does not follow Australia’s example and does undermine trademark holders’ right to register and have their trademarks protected.

Plain packaging schemes should only affect the right of trademark holders to use the trademarks themselves, but not their right to register and enforce them. So, if someone prints the brand “Marlboro” on cigarette packages in Australia without the permission of the trademark holder, or if someone imports to Australia Marlboro cigarettes without the permission of the trademark owner, the latter has full and unencumbered rights to seek court protection against those acts as well as subsequent acts of commercialization in Australian territory. Moreover, where plain packaging inhibits the use of the trademarks and designs altogether (which is not, in practical terms, the case in Australia), such fact will be taken as sufficient ground to avoid forfeiture on lack of use. The same applies to designs. Only the subject matter of IP is affected by plain packaging schemes, not the IP. This is consistent with Articles 15.4 and 19.1 of the TRIPS Agreement and Article 7 of the Paris Convention, as far as trademarks are concerned, as well as with Article 5 of the Paris Convention, as far as designs are concerned.

In Brazil an even more severe plain packaging scheme has been adopted, in regard of generic pharmaceutical products: no brands may be printed on the packages, only the name of the manufacturer and the Brazilian or International common denominators of the active ingredient.

Interestingly, whereas tobacco plain packaging aims at reducing consumption, pharmaceutical plain packaging aims at increasing consumption…

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