LICENSING EXECUTIVES SOCIETY

Britain and Ireland

NEWS EXCHANGE
Issue 92: August 2003

(Return to News page)


Top

Developing and Implementing a Brand Protection Strategy

As the globalisation of brands continues so does the requirement for decentralised production networks involving subcontractors, licensees or both. Demands for increased production flexibility and reduced costs has meant that production has often been shifted to low cost regions, and proximity to market is also an issue. This can create complex and highly fragmented supply chains that may be subject to attack from several quarters.

Brand protection is becoming an increasingly used term but what does it mean? Lawyers tend to view it in terms of intellectual property rights, copyright and trademarks. An investigator's focus will be on intelligence gathering. A supplier of security technology will see it in terms of his product range. All are valid aspects, but brand protection is more than any of these single-track approaches.

A comprehensive brand protection strategy may take years to develop; it starts with the identification and definition of the risks to the company or brand, establishing what criminal activity is occurring and where. An audit of the current patent, copyright and trademark situation should indicate where further protection is required. Information from internal and external sources about counterfeits, diverted products, local market product and unauthorised or illegal supply routes should be analysed in order to estimate the nature, scope and potential financial costs of criminal activity. This analysis provides a basis for a specification against which the suitability of potential solutions can be measured. This specification should include consideration of cost restrictions.

Once the nature and scope of the threat is established a team can be assembled, ideally involving all internal stakeholders. Good communication between them is important, as is external communication with law enforcement agencies and trade associations.

Pilot schemes, restricted to a specific geographical area or a particular product, are often useful in establishing the effectiveness of a solution. Monitoring the pilot's progress allows realistic targets to be set and a full roll out of the solution can then be implemented with confidence.

The principal modes of criminal activity are counterfeiting, tampering, diversion and theft, and it is quite common for the initial analysis to reveal that criminal attack is more extensive and more varied than was initially thought. For example, complete counterfeits are often mixed with diverted genuine product, counterfeit product in re-used genuine packaging and out-of-date genuine product. Tampering may be malicious, intended to damage a brand or the consumer, or it may involve the changing of sell-by dates on out-of-date product. Theft can include cargo theft, retail theft and smuggling.

To address these issues there is a wide range of security devices and technologies available. Ideally the solution should be upgradeable, as no feature should be considered "unbeatable". Ongoing monitoring of changes in criminal activity should indicate at what point improved measures are needed.

Tamper-evident technologies involve the incorporation of some deliberate weakness or susceptibility, causing an irreversible and obvious change if fraud is attempted.

Authentication technologies are used to establish that a product is genuine. Tracking technologies provide information about a product's source, history and possibly destination.

Authentication features can operate at different levels:

  • Overt features are obvious and apparent to the general public and are usually discernible to the naked eye. Examples include watermarks in security papers, holograms and optically variable inks (which change colour as viewing angle changes). They can be verified by the untrained user and provide a deterrent to the counterfeiter who cannot ignore them.
  • Covert features are not immediately obvious and often can only be detected with some form of reader or viewer. This may be a simple magnifying glass or the sort of UV banknote testing lamp widely employed in shops and bars, or it may be a sophisticated hand-held instrument able to measure emission responses to specific wavelengths. Examples of covert features include inks that fluoresce under ultraviolet or infrared light, and multi-layered multi-colour particles where the colour sequence denotes a particular batch or supplier.
  • Forensic level features often involve taggant materials that require specialist equipment or laboratory analysis to confirm their presence and information about them is only available on a need-to-know basis. They are often undetectable even with sophisticated analytical equipment unless the analyst knows what to look for. They are used to provide unequivocal proof of authentication in legal actions.

Tracking systems can provide information about an item's source, location and destination. The information carrier may be anything from a simple label with a barcode to an electronic or RFID (Radio Frequency Identification) device, possibly containing a microchip. RFID is a rapidly moving field, with much attention focused on the price of the tags, but it is important to remember that the readers and information management hardware and software are equally important parts of the system. To date, much of the benefit of these systems is in improving supply chain efficiency, with any security enhancements a bonus.

The most effective technology strategies typically use either multiple features or multi-level devices. For example, a hologram may contain overt features such as a brand logo, covert features such as microtext, a forensic level biological taggant in the lacquer layer and a barcode for tracking purposes.

In summary, the key points for a successful brand protection strategy are as follows: identify the risks, define the need, review the technology options and select an appropriate solution. Ensure that progress is monitored and communicated and be prepared to update or upgrade the solution.

Martin Gomme, Technical Solutions Manager. Axess Technologies Ltd. mgomme@axesstechnologies.com


Top

President's AGM Report

I am half way through my term of office and I wish to thank all Council members, including Stephen Powell who takes over the Presidency next year, for their support and challenging guidance. Many other people have been involved in donating their valuable time to LES and we exist with the help of many excellent people giving voluntarily of their time, energy and knowledge in keeping News Exchange and our meetings alive and I thank all these LES supporters.

It takes great effort to maintain this forward momentum and there will be changes ahead as we grow the Society. One aim this year has been to try to encourage a greater participation by industry and to hold meetings that entice industrial licensing executives into LES and to concentrate on specific sector meetings such as Healthcare, which has been revived by Stephen Mansfield and Renate Siebrasse. We intend to run two Healthcare half-day meetings each year and we will facilitate other industry specific meetings.

We would like to enhance our image by building on PR specifically to link LES to specific licensing achievements, to encourage use of LES and LESI web pages as a source of knowledge and communication. Hayley French and Barry Quest have devoted an enormous amount of time and effort over the past year to achieving a first class LES web site and I would encourage everyone to view the site regularly.

To grow the Society, encourage greater industry participation, make LES more visible in the licensing community, and maintain our high standards of meetings and content of News Exchange will be a challenge in the future and we will need to engage more professional help.

We are building a significant licensing tuition programme based on LESI teaching materials and I want to thank Stephen Powell, Chris Goodman and the many others who have dedicated a significant amount of time to creating these educational workshops.

As President, I wish all new members of LES a warm welcome and I hope that you will enjoy and benefit from the Society as so many have done in the past. Please get involved in the Society and its Special Interest Groups as there is always a place for able and willing individuals. We need the members to continue writing articles for News Exchange and Les Nouvelles and to talk at meetings and suggest new speakers.

We are honoured to have Mr Justice Robin Jacob agree to take on the role of Honorary President but as we welcome some we have to say farewell to others. Jeremy Brown, who is long standing member of Council and a past President, retires from Council this year and I wish to thank him for his skill and wisdom that he has brought to us over the years.

We aim to be an open and transparent Council who have the needs of our members and health of the Society at heart and, again, I thank all of you who have contributed to making this Society a worthwhile organisation. Licensing is a rapidly growing market and LES must reach out into this market and service its needs.

Christi Mitchell,
President LES B&I


Top

President's Diary

We held a successful Annual Conference and Licensing Master class at Chelsea Village and I wish to thank all of you who were involved, either as speakers or organisers. We were honored that Jonas Gulliksson, Vice President of LES International joined us to provide the opening plenary session. The reception and conference dinner was held within Chelsea Village and our guest speaker was our recently appointed Honorary President, The Honorable Mr. Justice Jacob. Just before the meeting it was announced that in October Mr. Justice Jacob will become Lord Justice Jacob following his appointment to the Appeal Court.

The meeting also provided us with the opportunity to thank our outgoing Consultant Director of Administration, Renate Siebrasse, for all her dedication and help to the Society. We made a little presentation to Renate and I really hope that the bubbles and music provide hours of enjoyment.

Prior to the Chelsea meeting some of us were able to attend the LESI Annual Conference "Licensing in a Changing World" in Oslo. This is a wonderful location for a meeting in June with the very long warm days and the sun setting at 2 am. We now have our own summer break and will be commencing the London evening meetings again on September 10th.

The LES USA and Canada 39th Annual Meeting will take place in San Diego - September 21-25. These meetings are well attended with a vast range of workshops to choose from and provide an excellent opportunity for both learning and networking.

Christi Mitchell,
President LES B&I


Top

IPR in Trouble?

It wasn't that long ago that our greatest problem was how to make the general public aware of the existence of IPR. Now it is big news - and much of it unfavourable. LES needs to redress this

We no longer see too many encouraging 'rags to riches on the back of an invention' stories. We read about rich corporations vying with each other to get richer - as in the just-started Reuters v. Bloomberg patent action. We are told about the affluent West oppressing the Third World by patenting and overpricing essential drugs and foodstuffs, and big corporations using patents (in some way not made clear) to help introduce Frankenstein products from GM crops to mutant life forms. The developed world is criticised for exploiting poor countries by control of their manufacture of branded goods. Naomi Klein's best-seller "No Logo" blames IPR for many of the world's troubles.

The press seems to have seized on IPR as the new century's bête noir, as part of what seems to be a general distaste of entrepreneurial commercial activity.

The latest big story relates to the Diana Fund/Franklin Mint litigation in the USA. The Fund failed to prevent sale of Princess Diana memorabilia in an action ultimately based on violation of Californian 'Right of Publicity' Law and also trademark infringement. This resulted in hefty costs, which could now be much supplemented by a malicious damage claim, which Franklin Mint is running against the Fund.

The message is simply that a litigant should always be prepared for a possibly horrendous downside, especially in the USA where litigation is treated as a national sport somewhat on a level with Premier League Football!

However, the debate seems to have extended into the wisdom and propriety of decent parties such as charities dirtying their hands on IPR protection and litigation. In the course of the action much was made of the horrors of 'over-protection'. The Times, in an article on 12th July, called it 'a tale of greed, pride and exploitation' leading to 'humiliation', and quoted from a Fund lawyer: "… the word 'brand'…sounds horrible…".

Plus ça change! The Statute of Monopolies of 1624, which launched the world's present patent systems was introduced in response to 'bad press' over abuse of IPR.

IPR is about wealth and knowledge creation, which generally leads to social benefit. In the public interest its effect is moderated which means that properly there will be grey areas of enforcement. But that doesn't undermine its value. The revenue obtained by the Diana Fund from merchandising apparently has significantly exceeded donations to the benefit of many charities, and is likely to continue to do so notwithstanding the litigation. That is the real world of licensing!

Rather than focusing on the problems and demerits, it would be helpful to shift the balance back towards the benefits with more upbeat stories of licensing successes. Aux Armes LES!

Barry Quest, Wilson, Gunn M'Caw


Top

Licensing IPR in Business

  1. Commission report on multi party licensing to assist the Directorate General for Competition in its review of Article 81 (1) and (3) to patent pools and cross-licensing of intellectual property (IP).
  2. Council Directive (EC) 2003/49 on a common system of taxation applicable to interest and royalty payments made between associated companies of different Member States.
  3. DTI consults on Government's proposals for realigning Competition Act 1988 in light of Regulation 1/2003 EC.
  4. Government produces consultation paper on the definition of R&D for tax credits. Closing date 10 October 2003.
  5. Commission adopt proposal of G10 Medicines Group. IPR for biotechnology may be strengthened under the proposal.
  6. FA premier league v Panini Ltd [2003] EWCA Civ 995 CA. Defendant could not rely on incidental inclusion for its unlicensed and unofficial products.
  7. A commitment to royalty-free standards on the web was pledged as the World Wide Web Consortium (W3C) announced approval of its Patent Policy.
  8. Barcelona.com Incorporated v The City Council of Barcelona, Civ No. 02-1396, 4th Circuit, June 2, 2003. Implications for domain name disputes outside US?
  9. Confetti Records & others v Warner Music UK Ltd (2003) Ch.D. To what extent are you bound by something you signed "subject to contract"?
  10. Cyprotex Discovery Ltd v University of Sheffield [2003] All ER (D) 174. Problems relating to ownership of IPR in specifically developed software.

Monitored by Dr Hayley French, TAYLOR WESSING (h.french@taylorwessing.com)
For further information on all of the above and links to specific reports please visit www.bi.les-europe.org


Top

Arsenal v Reed - More Than Just a Question of Trademarks

On 21 May 2003, the Court of Appeal handed down its judgement in the lengthy court struggle between Arsenal Football Club and Matthew Reed. This judgement can be seen as a victory not only for Arsenal but also for brand owners in general (especially those involved in merchandising). However, the issue has now been cast into doubt by the subsequent judgement of the House of Lords in the criminal case of R v Johnstone. This subsequent judgement appears to contradict the Court of Appeal's reasoning in the Arsenal case.

Quite apart from being important in a trademark sense, the Arsenal case also provides an interesting, if slightly worrying, insight into the interrelation between the national and the European courts. Given the moves for increasing harmonisation of intellectual property rights across Europe, such as the proposed European Patent, this is an aspect of our legal system that is of increasing importance.

Background - Arsenal v Reed
For several decades, Mr Reed has sold souvenirs and memorabilia bearing several of Arsenal's trademarks in his stall outside the Arsenal stadium. Eventually, Arsenal sued Reed for trademark infringement and passing off. However, what Arsenal probably thought would be a straightforward claim case against a street trader has dragged on and on, going to the European Court of Justice (ECJ) and to the Court of Appeal in England. It is now being appealed to the House of Lords.

At the first instance trial in the High Court in 2001, Mr Justice Laddie found that Reed's unauthorised use of Arsenal's marks on merchandise would be perceived as badges of support, loyalty or affiliation to Arsenal, as opposed to indications of trade origin. In doing so, Laddie J held that there was no "trademark use" and therefore no trademark infringement. (The Judge also rejected Arsenal's passing off claim.) However, having made this decision, Laddie J then referred to the ECJ the question of whether a third party should have a defence to infringement on the grounds that Reed's use of the trademarks did not indicate trade origin.

On 12 November 2002 the ECJ gave its decision. It stated that the essential function of a trademark is to guarantee the identity of the origin of the marked goods by enabling consumers to distinguish the goods or services in question from others on the market without any risk of confusion. The ECJ pointed out that this protection does not extend to allowing a proprietor to prohibit the use of a mark if its use did not affect the interests of the proprietor. However, in this case it was decided by the ECJ that Reed's use of Arsenal's trademarks was liable to jeopardise the guarantee of origin and that this was the essential function of the mark.

However, this was not the end of the story. Back in the High Court, Laddie J did not go along with this ruling from the ECJ. He held that the ECJ had made findings of fact in deciding that Reed's use of Arsenal's trademarks would be perceived by some customers as a designation of origin. This was contrary to the finding of fact already made by Laddie J and was outside the scope of the ECJ's authority, as only national courts have the right to rule on factual matters. The reference made to the ECJ was one purely on the law. Therefore, Laddie J concluded that his only option was to apply his interpretation of the ECJ's findings of law to the facts of the case before him. Laddie concluded that the public was not confused as to the origin of Reed's goods and that the essential origin function of the trademark had not been affected, and Reed's defence should therefore succeed.

The case then went on to the English Court of Appeal, which overturned Mr Justice Laddie's ruling. In the Court of Appeal's view the ECJ had made it clear that that registration of a trademark gives a trademark proprietor a property right. Therefore, the relevant question is not whether a defendant has used the mark "as a trademark", but rather whether the use complained of is likely to damage the brand owner's property right, by jeopardising the guarantee of origin that constitutes the essential function of the trademark.

The Court of Appeal found that Mr Justice Laddie went wrong because he focused unduly on the "trademark use" point, rather than asking himself the correct question, which was whether Mr Reed's activities were liable to jeopardise the guarantee of origin offered by the Arsenal marks. Had Laddie J asked himself this question, said the Court of Appeal, he would have reached the inevitable conclusion that harm was inevitable to Arsenal's mark.

The Court of Appeal went on to say that Reed's use of the Arsenal marks was not "trademark use". While the Court of Appeal agreed that the Arsenal marks operated as "badges of allegiance", they also served to designate the origin of the merchandise to which they were applied, to a substantial number of consumers.

Mr Reed has now petitioned the House of Lords for leave to appeal.

R v Johnstone
On the following day, 22 May 2003, the House of Lords gave a ruling in the case of R v Johnstone. Here the House of Lords interpreted the ECJ decision in Arsenal exactly as Laddie J did: that is, that only trademark use could effect the essential function of the mark. This is essentially the same conclusion as that reached by Mr Justice Laddie in Arsenal v Reed.

Conclusion
It is hoped that the House of Lords will agree to hear the appeal in the Arsenal case in order to point us to the correct approach and ensure that any similar cases, which come before the courts in the future, do not have to endure a similarly tortuous path through all the courts in the legal system. However, even if the House of Lords does produce a definitive ruling on this point, this case has not shown the interrelation between the national and European courts in a good light. Laddie J criticised the ECJ for ruling on questions of fact to which he had already ruled, but as the Court of Appeal said, it was perhaps inevitable that the ECJ would stray into making findings of fact once it had made clear that the material consideration in the case was to do with whether the use complained of was liable to jeopardise the guarantee of origin.

Mr Justice Laddie's attempt to obtain clarification might be understood in the context of a history whereby the ECJ has failed to satisfactorily answer questions put before it. Therefore, Laddie J's reference in the Arsenal case might have been deliberately narrow in order to give the ECJ little room to stray from the point. Having said that, it was still the opinion of the Court of Appeal that Laddie J should have followed the ECJ's judgement in this case.

The whole case raises questions about the ability of the national courts to receive effective guidance from Europe on technical questions of intellectual property law. The lack of specialist intellectual property judges in the ECJ is of particular concern, particularly in view of potential problems that may arise if a European Patent comes into existence. The thought of even more complex questions of patent law being batted to Europe and back emphasises the even greater potential future importance of this issue.

Piers Strickland,
Charles Russell
piers.strickland@cr-law.co.uk


Top

No Break for KIT KAT!

Nestlé's further attempt to register the slogan HAVE A BREAK has again been rejected by the High Court , following opposition by Mars UK.

Mars' successful opposition to its application under the 1938 Act, prompted Nestlé to re-file an application under the 1994 Trademarks Act for HAVE A BREAK in class 30 for "chocolate; chocolate products; confectionery, candy; biscuits". This, again, faced opposition from Mars on the grounds that the slogan was inherently unregistrable.

The Hearing Officer upheld Mars' opposition on the basis that the mark was devoid of distinctive character under section 3(1)(b) and that the evidence of use claimed by Nestlé was not sufficient to prove the slogan had acquired a distinctive character. Nestlé appealed the decision to the High Court.

Nestlé argued that had the Hearing Officer had the benefit of the decision in Proctor & Gamble v Office for Harmonisation in the Internal Market (BABY-DRY), the opposition would have been ruled in its favour. Nestlé argued that the decision of the ECJ indicated that marks which are not directly descriptive of the relevant products are conferred an inherent distinctiveness, thus merging the hurdles of sections 3(1)(b) and 3(1)(c). The High Court, in line with other recent decisions, dismissed this interpretation of the BABY-DRY decision. Instead, consideration of registrability under section 3(1)(b) is independent of section 3(1)(c). Therefore a mark which is not wholly descriptive under the BABY-DRY guidelines might nevertheless lack distinctive character.

With regard to its claim of acquired distinctive character, Nestlé relied on evidence of use together with survey evidence. The evidence of use consisted almost entirely of material demonstrating use of the well-known slogan HAVE A BREAK-HAVE A KIT KAT. The High Court endorsed the Hearing Officer's decision that Nestlé could not found a claim of acquired distinctiveness in relation to HAVE A BREAK, given that the only use was as an element of a composite slogan.

The survey evidence submitted by Nestlé was as a result of a doorstep survey of over 500 people, from which 30 carefully selected responses were filed in the form of statutory declarations. From this evidence, the Hearing Officer took the view that although a proportion of the public would be likely to suppose that a chocolate bar called HAVE A BREAK originated from the makers of KIT KAT, he did not believe the evidence demonstrated this to be a significant proportion.

In the High Court it was noted that, in any event, the survey was a somewhat pointless exercise - the purpose of a survey is to provide evidence that, as a result of prior use of the mark, a significant proportion of the public regard products bearing the mark as originating from a particular source. In this case, as there was no use of the mark HAVE A BREAK (only use of HAVE A BREAK-HAVE A KIT KAT was adduced), Rimer J was of the view that the survey did not and could not show that HAVE A BREAK had acquired distinctiveness as a result of use.

With regard to the nature of survey evidence, the High Court supported the Hearing Officer's view that oral evidence would be helpful in circumstances where the public are asked to elaborate on their response to survey questions. This avoids standardised declarations which, it was noted in some cases, were somewhat different to the original responses of the interviewee. However, it is hard to imagine circumstances where introducing oral evidence of 30 or more people before the Trademarks Registry is ever likely to happen, given the time and costs this will necessarily incur.

In conclusion, the High Court considered that the Hearing Officer had reviewed the evidence with 'manifest care' and therefore rejected the Appeal.

This decision provides useful guidance in relation to the collation of evidence and registrability. Practitioners should be aware of the reluctance of the courts to give weight to surveys conducted in a manner that could be construed as leading (or misleading) the interviewee in his or her answers. The discussion of the decision in BABY-DRY confirms the approach taken by the UK courts in narrowing the scope of impact that the ECJ's decision was first thought to have.

Lisa-Jane Brown, Wilson Gunn M'Caw


Top

Adidas-Salomon AG and Adidas Benelux BV v Fitnessworld Trading Ltd

The infringement of the Adidas 3-stripe TM by the Fitnessworld 2-stripe decoration.

The ECJ opinion confirms 'dilution' (without confusion) is legitimate ground in assessing likelihood of infringement but puts limits on this. In particular, use as a 'decoration' may not be considered as trademark infringement. This draws attention to the importance, in appropriate cases, of supplementing trademark registration with new-style design registration.

Background
The Dutch Court considered that "on the facts there was (i) no likelihood of confusion given the relevant category of consumers and the difference between the sign and the mark and (ii) no dilution of Adidas' mark since the double-stripe motif was used for embellishment or decoration."

Adidas appealed, arguing in particular that "the Trademarks Directive provides protection, at least as regards marks with a reputation and/or great distinctive character, even where there is no likelihood of confusion, in cases where unfair advantage is taken of, or detriment caused to, the distinctive character or the repute of the trademark."

ECJ Advocate Opinion:
"(1) Article 5(2) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trademarks is not correctly implemented unless the proprietor of a trademark with a reputation in the Member State concerned is entitled to oppose the use of the mark or a similar sign, in the manner and circumstances described in the provision, not only in relation to goods or services which are not similar but also in relation to goods or services which are identical or similar to those for which the trademark is registered.
(2) The notion of similarity between a mark and a sign for the purpose of Article 5(2) of Directive 89/104 is to be assessed on the basis of the degree of sensory or conceptual similarity between them.
(3) The protection conferred by Article 5(2) of Directive 89/104 does not require the existence of a likelihood of confusion between the mark and the sign.
(4) It is a condition of the application of Article 5(2) of Directive 89/104 that the allegedly infringing sign is used as a trademark, that is to say for the purpose of distinguishing goods or services. That will not be case where that sign is viewed purely as a decoration by the relevant section of the public."

Barry Quest, Wilson Gunn M'Caw


Top

WIPO Intellectual Property Organisation Annual Report 2002

The World Intellectual Property Organisation (WIPO) promotes the use of the intellectual property system as a tool for economic growth. Its responsibilities include the Patent Corporation Treaty (PCT) the Madrid System (for trademarks) and the Hague System (for industrial designs). The major part of its income comes from fees gathered from the use of these systems, particularly the PCT. According to the recently published 2002 Annual Report more than 114,000 international patent applications were filed worldwide and more than 22,000 international trademarks registered in that year. The WIPO Worldwide Academy (WWA) is devoted to training, teaching and research in the field of intellectual property through three main programs: Distance, Learning, Professional Training and Policy Development. WIPO takes its role in helping and developing least developed countries to protect their rights particularly seriously. To this end meetings are organised, seminars held and working committees established. In its role as disseminator of information on intellectual property WIPO issues publications on matters of interest in this field. For example, "Intellectual Property on the Internet: A Survey of Issues" was published at the end of 2002. The survey explores inter alia, "the impact of the Internet on copyright and related rights, trademarks, and patents" and examines international responses to these challenges and opportunities. This survey is available through the WIPO website at ecommerce.wipo.int/survey/. Also of interest are a series of helpful, free, booklets on intellectual property which may also be obtained through the website. One of these is entitled "What is Intellectual Property" and gives a broad overview of the various type of right available, why we have them, what they protect and how they are enforced. As practitioners will know, these rights are often confused and the guide provides a readable and useful summary covering patents, trademarks, designs, geographical indications and copyright. General definitions for each are given. This is no easy task in itself for, as the guide makes clear, the meaning of the terminology used may vary from country to country.

Bill Downey, Wilson Gunn M'Caw


Top

News from the Regions

LES - Bio-Indulgence in Scotland

LES Scotland held a very civilised workshop at the stunning Bonham Hotel in Edinburgh on 21 May 2003 - "The BioCream Tea". While allowing everyone the pleasure of utter indulgence in double cream, raspberry jam and crust-less sandwiches, this afternoon programme also provided a fascinating insight into the many different aspects of development and commercialisation in the biosciences field.

Christi Mitchell of Medius Associates (and President of LES B & I) opened with an excellent review of the real reasons for the, often painful, due diligence process, and what should be sought and offered. David McBeath of Scottish Health Innovations Ltd (SHIL) provided an insightful introduction to the establishment of SHIL and the opportunities and challenges ahead for capturing, developing and exploiting IP arising out of the healthcare system and related academic instructions in Scotland. Much discussion followed both of these presentations from an audience which included healthcare workers, lawyers and venture capitalists!

After adjourning for tea, there followed a welcome return to Scotland from former LES Scottish Secretary Monica Flynn, presenting the results of her research into the differing ways in which entrepreneurship is taught, performed and encouraged in three different institutions in the UK (Nottingham), the Netherlands and Portugal. Key points were spin outs from industry rather than universities in the Netherlands, the limited role of privately owned IP in Portuguese institutions, and the recommended model going forward for Nottingham of pre-incubator germinators giving students the early opportunity to acquire the necessary skills and commercial awareness. The meeting concluded with James Browning of GyneIdeas Ltd revealing (with occasional detail into the fascinating and life-improving gynaecological innovations that his company is developing) what it is really like on the coal face of moving from healthcare work to innovation and commercialisation, with particular insights into the pitfalls which may arise, and the key issue of getting, and maintaining, investor involvement.

The committee of the LES (Scottish Branch) were delighted to have received sponsorship in kind from Northern Networking (professional conference organisers), whose excellent organisation and management made the event go so smoothly. The committee are also preparing another exciting programme for the next 12 months - details to follow in the next issue.

Abbe Brown, McGrigor Donald

LES Irish Section - News

Change in Leadership
Yvonne Mcnamara has taken over from Barry Moore as Chair of LES Irish Section. Her email address is: yvonne.mcnamara@mccann-fitzgerald.ie

Mr Arthur B Tomkins, Founder of Tomkins, Celebrates his 103rd Birthday and the 75th Anniversary of Becoming a Chartered Patent Agent

Born in London in 1900 Mr Tomkins came to Dublin in 1930 with his family, where he founded Tomkins and Co.

At a celebratory company dinner Ken Doherty, former Tomkins' employee and World Snooker Championship winner came along, to say "hello" to his one and only employer and to make a presentation to Mr Tomkins as a token of his employees' and friends appreciation and good wishes.

For full details and a report of an interview with Mr Tomkins by Andrew Parkes, see: www.tomkins.ie

LES B&I AGM and Annual Conference,
Chelsea Village

The LES B&I AGM and Annual Conference was a successful and enjoyable event on two very warm days at the end of June. Chelsea Football Club were using the summer break to replace their turf and so we didn't get to stand on the pitch but some of those who took a tour of the ground (and even some of those who did not) were able to spot Chelsea Team members coming and going from the ground. Hayley French, ardent Chelsea supporter, did an excellent job in organising the conference and the programme at Chelsea Village and tried hard to convince LES Conference speakers to support the "boys in blue" by presenting them all with Chelsea T-shirts. Two of the harder nuts to crack, Mr Robin Jacob, Honorary President LES B&I (believed to be an Arsenal supporter) and Barry Quest, Honorary Secretary LESI, (believed to be a Manchester United supporter), were presented with their own named Chelsea T-Shirts!

The theme of the Licensing Masterclass, organised by Jennifer Pierce and Martin Sandford, was a new approach for LES B&I, entitled "We have the answers! Now what's your question?" allowed participants to question the experts on complex licensing issues.

Among the attendees from outside the UK we were delighted to welcome Jonas Gulliksson, Vice President LESI, who gave the conference opening address, Benny Browne, former President of LES Australia and New Zealand, who presented a plenary session entitled, "Protecting Commercialisation" and Luigi.Saglietti, Vice President LESI and lawyer with Gulielmetti e Saglietti, who act for Juventus Football Club, who spoke about licensing experiences in a football club.

It is always a difficult balance to organise workshops of interest to all our members but, judging by the comments of the well over 100 delegates, we believe that we managed to offer an excellent selection of speakers to our attendees.

Christi Mitchell, President LES B&I, started the Annual Report at the AGM by warmly thanking Renate Siebrasse for all the help and commitment she has shown LES B&I over the many years she has been associated with the Society and by making her a presentation on behalf of the Society.

It was announced, just before the AGM, that Mr Robin Jacob, Honorary President LES B&I and conference dinner speaker, has been appointed a Lord Justice of Appeal in succession to Lord Justice Aldous, who will be retiring in October. Sir Robin explained at the conference dinner that prior to his appointment he was called to "No 10" to be given a short intelligence test! The Prime Minister asked him, just to be sure he was the right person for the job, to name three fish beginning and ending with the letter "K". After some consideration he managed to come up with "Killer-shark!" "Yes! Well done!" said the Prime Minister!" After several more minutes he managed to think of "KwikSaveHaddock!" "Excellent!" said the Prime Minister. But no matter how he tried he could not think of a third fish. Eventually he had to admit defeat, " Prime Minister, I am sorry but I just cannot think of another fish, I hope this will not cause a problem." "No indeed," said the PM "You have done exceptionally well." "So" said Sir Robin, "What is the third fish?" "Why Kilmarnock!" replied the PM. "Kilmarnock?!!!!" said Sir Robin. "Yes", said the PM,
"it is a pla(i)ce in Scotland!"


Top

LES INTERNATIONAL

LES Britain & Ireland is the second largest of the 29 societies forming LES International (LESI) and is also one of the most active. For us to be able to use the LES name and logo, our constitution and mode of operation have to comply with the requirements of the parent organisation - LESI.

LESI is responsible for the International Directory, Les Nouvelles, the quarterly journal of the Licensing Executives Society, and the Annual International Conference. It also co-ordinates co-operation between national societies, contact with other bodies, and a range of international licensing projects. This is done through International Committees, which are open to all Society members, and the twice-yearly International Delegates Meetings, open to delegates from national societies (we are entitled to five) and other interested observers - under the guidance of a Board elected by the delegates. Currently, the members of the Board are:

PresidentMel JagerUSA/Canada
Past PresidentThierry SueurFrance
President ElectJonas GullikssonScandinavia
Vice PresidentLuigi SagliettiItaly
Vice President Adam Liberman Australia/New Zealand
Vice President Ron Grudziecki USA/Canada
Honorary Treasurer Willy Manfroy USA/Canada
Honorary Secretary Barry Quest B/I

Worldwide membership continues to grow which suggests that LESI must be doing something right.

The next International Delegates Meeting is in San Diego in September, immediately after the Annual LES USA and Canada Conference. A number of B/I members will be attending. For more information about LESI, see: www.lesi.org. For information about the LES USA and Canada Annual Conference see: www.usa-canada.les.org. Contact LES B/I council (see www.bi.les-europe.org) if you are interested in knowing more or would like to get involved.

Report from Oslo
The first of this year's International Delegates Meetings took place in Oslo, immediately prior to the International Conference, which was held 15th - 18th June. Some 125 delegates attended from most of the national societies around the world. LES B&I was represented by:

Christi MitchellPresident
Stephen PowellVice President
Chris Goodman Immediate Past President
Jeremy Brown Chairman, LES Awards Committee and Past President LESI
Fiona Nicholson Past President LES B&I
Hayley French Chair Website Committee
Renate Siebrasse Consultant Director of Administration
Jennifer Pierce Council Member

Among the issues discussed were forthcoming International Conferences. Paris will host the next International Conference 28 - 31 March 2004. If you are looking to expand your opportunities in licensing then this is the place to go! LES conferences are excellent networking venues.

At the request of some of the smaller national societies, a presentation was made by Adam Liberman, VP LESI, on the possibility of admitting corporate membership. The question was discussed at length but eventually defeated with 33 votes against and 23 in favour. The main argument against the motion was that for a society of individual LES executives, corporate membership would not be appropriate and would, in effect, lose the societies members. If the smaller societies wish to give some of their members a rebate on multiple subscriptions this would be their own national decision and perfectly acceptable.

Aside from mundane administrative matters LESI can present an interesting microcosm of world politics. LES Croatia and LES India were admitted as new societies not without some dissent (are they really ready to join the international community?). Licensing societies in Hong Kong and Taiwan coexist diplomatically with LES China. LES USA/Canada, which once expressed concern at the formation (by B/I) of the informal LES Europe regional group, now use this model to help promote activity in south and central America. LES Colombia, Ecuador and Peru requested permission to change their name to LES Andean Community, the request was agreed by delegates.

Various committee chairmen reported on their activities:

  • The Publications Committee announced that Les Nouvelles would accept advertising, for which a fee would be payable and that Jack Ott, former editor of Les Nouvelles, is preparing a history of LES.
  • The Education Committee reported that various national societies are working on education/training programmes, in particular USA/Canada. As Christi Mitchell has already mentioned in the President's Report, Chris Goodman and Stephen Powell are building an excellent licensing tuition programme for LES B&I based on the LESI teaching materials.
  • The Nominations Committee proposed the following LESI Officers, for 2003 -2004, for election in San Diego in September:

PresidentJonas GullikssonScandinavia
Past PresidentMel JagerUSA/Canada
President ElectWilly ManfroyUSA/Canada
Vice PresidentElisabeth LogeaisFrance
Vice PresidentAdam Liberman Australia/New Zealand
Vice PresidentRon Grudziecki USA/Canada
Honorary TreasurerDavid Braunstain USA/Canada
Honorary Secretary Barry Quest B/I

The host of the Oslo 2003 International Conference, LES Scandinavia, reported a record attendance of 540 registered participants. As an attendee I can also say that is was a very enjoyable and successful event!

Renate Siebrasse
Consultant Director of Administration


Top

New Members

Council has been please to welcome the following new members to the Society:

  • Ms M Bleahene, TM Attorney, FR Kelly;
  • Ms Deborah M Chambers, Senior Lawyer, Royal Mail Gp;
  • Miss Nicola Ham, IP Lawyer, Royal Mail Gp;
  • Mr Tim Heberden, UK. MD. Brand Finance;
  • Dr Judith Hills, Senior Director, Bristol-Myers Squibb;
  • Mr Charles M Howarth, Partner, Gordons Cranswick;
  • Dr Sonja Jonas, Commercialisation Manager, MerseyBio;
  • Mr Ilya Kazi, Partner, Mathys & Squire; ````````, IP Manager, Microscience;
  • Mr Daniel Lord, IP Officer, TWI;
  • Mr Colm D Murphy, Partner, Boult Wade Tennant;
  • Mr Darren T Olivier, TM Practitioner/Attorney, Field Fisher Waterhouse;
  • Mr John R Olsen, Partner, Field Fisher Waterhouse;
  • Mrs Sue Scott, Consultant, Abel & Imray;
  • Mrs Linda J Tigwell, Commercial & Marketing Director, Cranfield University;
  • Dr Sunethra Wimalasundera;
  • Dr Margaret J Woods, Tech. Transfer Manager,


Top

NEWS Exchange is circulated as a service to members of the Society. Editorial contributions and advertising/insert enquiries are welcome and should be addressed in the first instance to the editor.

Editor: The Kudos Partnership Ltd,
Emerson Court, Alderley Road, Wilmslow, Cheshire SK9 1NX
email:s.ireland@kudos-uk.com


(Return to News page)