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LICENSING EXECUTIVES SOCIETY
Britain and Ireland
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Plans are now well ahead for a one-day advanced licensing course specially designed to bring practitioners in all fields and at all levels of experience right up to date with most aspects of the business of licensing. "There is a great demand for such an event," said course organiser and LES Council member P Michael Connor. "Over the years LES has provided a number of basic licensing courses, all successful in their own way, but to meet the needs of members a more advanced and concentrated event is called for. "There will be seven speakers, each with an outstanding record of success in his own field of licensing and well able to handle subjects of real topical interest – burning issues, in many cases. "We are also adopting a parallel workshop format designed to enable participants to interact closely with these specialists. Case studies, case law and specific problems will be used in the workshops to facilitate the understanding of the licensing process." The programme has been devised to give each participant an opportunity to attend 15-minute presentations by seven speakers and then explore each subject further at speaker-led half-hour workshops throughout the day. Commenting on the course, LES Britain and Ireland President Fiona MM Nicolson, said: "We are fortunate in being able to gather together a panel comprising the most experienced speakers on licensing. "The planned inter-active nature of the workshops will enable attendees to contribute and learn from their collective experience, just one of many reasons why everyone in the business of licensing, whether a holder of intellectual property or a professional adviser, should make a point of taking part". The course is to be held at the well-appointed Royal Over-Seas League, London on 20 November. The full programme with booking form will be despatched to all members. Top
Rodney De Boos, President of LES International, can expect a warm welcome when he and Fiona Nicolson, President of LES Britain and Ireland, attend a reception for members and guests in London on Wednesday 23 September. Fiona will be joined by members of Council, chairmen and other officers of the regions, and chairmen and leaders of committees and special interest groups. Rodney plans to outline the role and composition of LES International, and in dealing with the importance of the international annual conference will doubtless be commenting favourably on the recent event in Edinburgh. In a report for les Nouvelles, he refers to this as "a great success" and continues: "The facility in which it was held was ideal. The main auditorium and the break out rooms for workshops worked magnificently and I doubt that LES International has ever held a conference in a better facility. "The attendance made the international conference the largest outside the United States, thus eclipsing the magnificent result achieved at Cannes some years ago. "I would like to congratulate Ben Goodger as the then President of LES Britain and Ireland on an outstanding meeting. I would also like to congratulate and thank Fiona Nicolson, her committee and the conference organisers for their hard work, attention to detail and hospitality both before, during and after the conference." Rodney will then talk informally on the successful commercialisation of intellectual property. He will use four case studies to illustrate the variety of commercial arrangements which licensing executives must deal with, and the need for a holistic approach. And as a visiting Aussie, he is unlikely to turn down the chance of extolling the wonders of Melbourne in the Autumn and the delights awaiting members taking a trip for the LES International conference there in April next year, As Rodney will explain, international and Australasian speakers will be exploring Licensing in the 21st century – the big picture. When not at conference sessions, participants can play downunder golf, tennis and cricket, meet up with Aussie animals, sort out the origin of the 170 languages spoken, and sample the diversity of restaurants in what is often called The Paris of the South. For a copy of the registration brochure, either tackle Rodney on the night or contact the conference organiser on fax +61 3 9380 2722.
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Healthcare on the move The European healthcare directory listing LES members associated with healthcare and biotechnology is now well under way. This will provide a much needed guide indicating areas of specific interest for our members throughout Europe. There have been a number of Healthcare committee changes and we are now pleased to welcome two new members. Firstly, Ritchie Sharp, who is business development manager at 3M Healthcare in Loughborough and is also a member of the Pharmaceutical Licensing Group Committee with responsibility for PLG Communication issues. Secondly, Alison Hood, a solicitor with Freshfields in London. Alison has a strong healthcare licensing background. As chair of the LES Britain and Ireland Healthcare committee, I have accepted the position of co-chairperson on the LESI Healthcare Products committee for 1999. I can be reached by telephone on 01462 436894 and fax 01462 442647, or by email christimitchell@compuserve.com. There have also been some recent changes within the committee. Sharon Finch has moved office and is now at the new Medius office, tel 0181 654 6040, fax 0181 654 6046. Philip Ledger (formerly of Peptech) has established Syren Pharmaceuticals and you can now reach him at the Cirencester office, tel 01285 643666, fax 01285 644328. We are in the process of organising further healthcare meetings and would welcome any ideas from members on appropriate licensing subjects for evening talks and workshops. Top
Profitable meetings in Scotland Members of the Scotland region are reported to be basking in the success of the 1997-98 session. The meetings covered a wide variety of topics, speakers were excellent and the venues were unusual. But what is more, each meeting made a profit and attracted a minimum of 40 attendees. What’s on for the future? Regional secretary Caroline Sincock says the new session is already off to a flying start. She writes: "We have extended our discussion group for event planning, welcoming Monica Flynn of The Centre for Innovation in Healthcare Technology and Ian Doig of The Royal Bank of Scotland." As the Events column (page 8) reveals, the first meeting will be in late October on the valuation of IP. In February members will explore the different requirements of multinationals, SMEs and academia in the biotechnology and healthcare field. And in April two brilliant speakers will discuss character merchandising and branding. Caroline writes: "All visitors are welcome. Arrange your next trip to Scotland to coincide with one of our meetings and we would be delighted to welcome you on the evening." Genetic engineering under the microscope in the Midlands Dr Mike Davey, a lecturer in Biosciences at the University of Nottingham, put forward the view that genetic engineering techniques should continue to be used as an adjunct to conventional plant breeding when speaking at a recent meeting of members in the Midlands region. In a talk on research developments in plant biotechnology, he provided some background about the origins of genetic engineering and comprehensive explanations of a number of biotechnological processes. These ranged from the relatively basic methods of micro-propagation (the mass production of plants) used extensively by plant breeders to the use of "naked cells" to produce hybrid plant-types and hi-tech transformation processes constructing specific DNA sequences. Dr Davey suggested that the biotechnological industry’s focus was developing plant types which had resistance to such things as viruses, herbicides and insects and which produced constantly improving produce of consistent quality. On the other hand there were, he conceded, a number of public concerns relating to genetic engineering, for example that insecticidal genes incorporated within new strains of plants could adversely affect non-pest animal species. There was also the risk of a release of genes in the field from genetically engineered crops to wild varieties. Amongst consumers, there was a widespread view that genetically engineered produce had "perfect looks, no taste". Copyright concerns in Ireland Chair of the LES Ireland region Mary Swords reports that she and her colleagues are actively considering a number of proposals for the Autumn/Winter programme and hope to have information about speakers, subjects and venues by the end of September. She writes: "It is anticipated that there should be quite a lot of intellectual property-related matters of interest during the next year, as the Irish government is due to publish a Bill on copyright and related rights in the Autumn. This Bill concerns a radical overhaul of the existing copyright legislation, an area of law of great interest to many aspects of Irish industry, principally the very significant software industry located in Ireland." Competition time for North West diners The North West region committee plans to run an extensive programme of talks and discussions over the next year, and will be returning to the idea of holding several of them in local restaurants. The first of these will be an evening meeting on 10 November and the venue is to be an old favourite, the 39 Steps restaurant in South King Street, Manchester. Members and guests will meet as usual at 18.00 for 18.30 hours. The speaker will be Jonathan Davey, a partner in Addleshaw Booth, whose subject will be the new Competition Bill/Act. Jonathan can be expected to outline and encourage discussion on the effect this measure will have on licences and licensing practice, especially those practices with strong UK market positions. He will deal with the position of intellectual property agreements in general, the Block Exemptions and the status of agreements that should have been but have not been submitted to the UK competition authorities. Recruitment drive in the North East An all-out effort to recruit members by making direct approaches to companies and practices and by planning a series of attractive meetings with good speakers is now under way in the North East region, the newly elected chair Patrick Cantrill reports. He has high hopes of being able to produce a full action-packed report for the next issue. Meantime, members able to support those already at work on the project or able to provide leads, information or encouragement should contact Patrick on his direct line 0113 2832591. Papers received Brands Bulletin, Summer 1998, Cameron McKenna, Mitre House, 160 Aldersgate, London EC1A 4DD Maximising the Value of Intellectual Property, Coopers & Lybrand, 203 North La Salle Street, Chicago, Illinois, USA Bookshelf Licensing Technology: Drafting and Negotiating Agreements, 2nd Edition, by Dr Noel Byrne, Jordan Publishing Ltd. ISBN 0 85308 482 3. Written in an easily accessible and understandable style, this new and fully revised edition of the best-selling title takes full account of important case law developments over the last few years. It covers the full range of topics involved in licensing from the commercial and contractual background up to the pending UK Competition Act 1998. The author is a Senior Fellow with the IP Law Unit, Centre for Commercial Law Studies, Queen Mary and Westfield College, University of London. Contact Sue Cam on tel 0117 923 0600. When you have a product of great success and popularity, there is a strong temptation for entrepreneurs in other countries to counterfeit it. Hugh Morison, Director General of the Scotch Whisky Association, entertained Edinburgh conference delegates with a brilliant after-lunch discourse on whisky marketing techniques throughout the world. Here are some extracts. Top
– and some of it distinctly Royal… or nearly so! There seems to be a habit of associating counterfeit whiskies with members of our Royal family. A friend of mine in the Foreign Service was being entertained by a Bedouin sheikh in a tent somewhere in the Arabian desert. After the usual courtesies, his host produced a bottle with which to seal their friendship. It said in French on the label:
Here is a Royal example from Taiwan. The neck label reads:
The French, it has to be said, are quite subtle, as you would expect from the country which produced Voltaire, Rousseau, Descartes and the Marquis de Sade. What they tend to do is to use Scottish words and Scottish icons to convey to you as the consumer that what you are buying is Scotch Whisky. We have many such icons, such as kilts and Highland terriers. We also have tartan, thistles, romantic lochs brooded over by grim looking castles, and words peculiarly associated with Scotland such as glen (which is a narrow valley), strath (which is a wide glen), loch (which is a body of water bounded on two or more sides by land), and ben (which is a big mountain. The label of one French product carried a drawing of a Scotsman in a kilt, tartan, a thistle, a dark loch over which brooded a gloomy castle mounted on a ben, and the name ‘Loch Nest’. Written in very small print on the bottom of the back label were the words ‘2% Scotch malt Whisky. 90% alcohol of agricultural origin. Guaranteed not more than ten days old for freshness.’ One misleading brand sold in India was a spirit produced in Goa called Scotch Terrier, quite clearly something that the consumer would think was Scotch Whisky. When we challenged the brand in the Indian Courts, the producer claimed that the name was not in the slightest intended to convey the impression that the contents were Scotch Whisky. The brand name referred to his pet dog, of which he was extremely fond. Another Indian brand was Drumbeater which had on the label a picture of a man in a kilt, quite clearly a native of the Highlands of Scotland. The defendant claimed in the court that the picture was not of a Highlander at all – it was a resident of Mohammed Ali Road, Bombay wearing a traditional Indian lunghi. We pursue these cases for hard commercial and aesthetic reasons. We don’t think it right for others to trade on our hard won reputation for quality. We consider Scotch to be a wonderful drink, with a great subtlety and variety, with regional variations, and with a splendid tradition and heritage. When the consumer buys a bottle of Scotch, we want him to be confident that he is acquiring part of that heritage. Top
"Silhouette" decision changes trade marks law Parallel imports have been the subject of considerable publicity in recent months. The keenly awaited decision of the European Court of Justice in the "Silhouette" case* will have wide ranging consequences for both business and consumers, particularly as it will apply to all types of goods which are protected by a registered trade mark Robin Nott of Cameron McKenna writes that in essence it means that the owner of a registered trade mark in the UK, or other European Economic Area (EEA) country, can now prevent the sale of parallel imports from outside the EEA into the UK or other EEA country. This changes English law which had allowed the sale of parallel imports from any country unless there was a material difference in the specification of the product in question from the product intended for the UK market. The decision does not address the position where goods are imported into an EEA country where there is no trade mark protection and thereafter move between Member States. The Court has decided that Member States do not have the option of adopting their own laws relating to exhaustion of trade mark rights and that exhaustion of trade mark rights applies only across the EEA. In other words, there is regional exhaustion across Europe but not international exhaustion outside the EEA. In its decision the Court considered international exhaustion to be incompatible with European law, not only on the basis that it is contrary to the literal meaning of the Trade Mark Harmonisation Directive, but because it would give rise to distortions within the internal market. * Silhouette International Schmied GmbH & Co KG v Hartlauer Handelsgesellschaft Need for continued development at the European Patent Office The number of European patent applications at 99,764 was more than three times the annual maximum assumed when the European Patent Office (EPO) was founded 20 years ago, writes Stephen Powell of Williams, Powell & Associates. Fortunately for the administration of the Office, the number of oppositions (at only 6.2%) and appeals remained low. Despite these successes, the EPO 1997 Annual Report acknowledges the need for continued development, in particular the reduction of costs and other points covered in the European Commission’s Green Paper. The ‘package solution’ advocated by the EPO would cut costs by 80%, it is claimed. Just over half the European patent applications originated in member states (19% Germany, 7% France, 5.5% the UK and 4.5% Netherlands) with 28.1% from the USA, 17.6% from Japan, and 1% from Canada. Copies of the Report are available from the European Patent Office, D5.0.1, D-80298 Munich, Germany. Major price reductions at the UK Patent Office As from 1 October, the UK Patent Office will be introducing dramatic reductions in official fees. The fee for filing a patent application is to be reduced from £25 to nil. Reporting on this, Barry Quest of Wilson Gunn M’Caw says renewal fees on granted patents are down 18%. There are also reductions in other patent, trade mark and registered design fees. This is attributed to cost savings, following relocation of the Office from London to Wales in 1991. The reductions are said to provide a ‘significant contribution to enhancing the competitiveness of British industry and commerce’. Barry writes: "Whilst reductions are always welcome, could not the surplus have been put to some better promotional use – or is British industry in such a bad way that it needs £25 off to survive?" Spare parts issue resolved The Department of Trade and Industry reports that an EC Directive on the Legal Protection of Designs has been agreed. Commenting on this Lord Simon, Chair of the Internal Market Council, said: "I am pleased that we were able in conciliation to break through the technical spare parts issues which has held up the Directive. In doing so, we have maintained consumer choice, preserved competition as it exists, with the likelihood of enhancing it in the near future." The text, which is subject to confirmation by both the Council of Ministers and the full European Parliament, covers amongst other issues the vexed question of the protection that should be given to the designs of visible parts, such as body panels, of motor vehicles. Competition Bill New competition law would benefit business and consumers, says the Director General of Fair Trading John Bridgeman in his Annual Report. He argues that the proposed legislation, due to come into effect in the Autumn of 1999, would bring "much-needed reform". Work is already in hand on draft guidelines on the application and enforcement of prohibitions as well as on the statutory rules of procedure. Time to get updated by the web by Barry Quest. There are two important web (Internet) sites which should be consulted regularly – even by the older members of LES. These are the LES International site at http://lesi.org and the joint LES European site at http://les-europe.org which includes Britain and Ireland. Britain and Ireland has been much involved in the origination of both of these, and web page construction and administration is the responsibility of Roger Tully of Cumbria-based Inglewood Computer Services. Roger is the archetypal new-age worker having transferred from scientific research in the pharmaceutical industry to running an international web authoring and computer services firm from an idyllic Lake District base. These sites act to provide information for members and also promote the Society to non-members. I am involved with the LESI site and acts as a contact for the LES Europe and Britain and Ireland site, and can report that e-mail enquiries average several per week. These are usually from non-members who have found the site by searching under ‘licensing’ and want membership information. Clearly, the sites are providing a valuable promotional service. They are also capable of being useful to members in the following respects: • news – particularly up to date details of meetings • information – e.g. back copies of News Exchange are now on the Britain and Ireland web pages • bulletin board – information exchange between members, already available on the LES International site Whilst the promotional aspects is already paying dividends, the service to members is developing only slowly. The site needs a greater input and use of the bulletin board. The European site, which is currently jointly funded by a group of the European societies, may soon be self-financing in terms of new members obtained and revenue from members’ links (discussed in the last issue of News Exchange). The possibility of carrying commercial advertisements, e.g. for law publishers, seminars and all who would benefit commercially is also under review. Comments on this are invited.
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