FIA International Court of Appeal success for Czech member, PELIKAN KROFTA KOHOUTEK
Matej Vácha, partner and associate Jan Krabec of PELIKAN KROFTA KOHOUTEK advokátní kancelář s.r.o. law firm enjoyed recent success at the Federation Internationale de l’Automobile (FIA). As a result of their work, the FIA International Court of Appeal finally confirmed Swiss driver, Markus Bösiger of the Czech team Buggyra International Racing System as 2007 European Truck Racing Champion.The Czech team successfully appealed through the Autoklub of the Czech Republic against a decision made by the Spanish National Court of Appeal. The decision dealt with the dramatic final grand prix race that took place on October 7, 2007 in Spanish Jarama where the Czech team Buggyra International Racing System and Spanish team Equipo CEPSA vied for overall victory in the Championship.
The same Court had to rule on the recent Formula 1 McLaren appeal. Whereas the McLaren appeal was rejected as inadmissible, the Czech case proved a resounding success!
National Award Success for UK member firm
David Pester of TLT Solicitors has been named Managing Partner of the Year in the prestigious 2007 British Legal Awards. The national awards are held in association with Legal Week magazine* and recognise excellence in the legal sector. TLT was also a finalist in the Regional Law Firm and Employment, Pensions, Benefits and Tax Team of the Year categories.The Managing Partner of the Year award was presented to David in recognition of his strong leadership, management skills and strategic vision, contributing to the success of TLT. He won the award against stiff competition from an impressive list of partners heading up national and London-based firms including Eversheds, Field Fisher Waterhouse, Hammonds, Mischon de Reya and Pannone. The award recognised strong leadership, management skills and strategic vision, contributing to the success of the firm.
The heavyweight judging panel of senior business figures included Mark Harding, group general counsel at Barclays; Sir Martin Sorrell, chief executive of WPP; Guy Dawson, founding partner of investment banking boutique Tricorn Partners; and Jeremy Hand, vice chairman of the British Venture Capital Association.
The award ceremony was attended by about 1100 representatives of the legal profession including large City firms and regional firms.
December 2007
* Legal Week is a weekly magazine for the legal profession in the UK and parts of Europe.
EU patent court comes closer
A Europe-wide patent litigation system is firmly back on the EU agenda following a meeting of the Competitiveness Council last week and the elusive Community patent is also up for discussion again.According to the official summary of the meeting, there was “an exchange of views” on a future unified and integrated patent litigation system, and the ministers present “agreed on the need to continue work towards finding solutions” for both the Community patent and litigation system.
They also agreed on the need to “establish an efficient litigation system which ensures legal certainty and which is capable of reducing costs for users, especially for SMEs”. The report added: “Such a system would also be an important element for a future common patent system.”
But the Council added that certain issues will require “further in-depth discussions within the Council preparatory bodies”.
The discussion was based on a working document prepared by the Portuguese Presidency, which followed the Commission’s April 2007 paper on “Enhancing the patent system in Europe” and working party meetings on July 20, October 17 and November 7.
The document, and a shorter progress report, spell out how a single European patent jurisdiction would be structured and how it would work in practice. The ideas proposed combine elements of the European Patent Litigation Agreement, backed by EU patent judges, with a Community framework, which is favoured by member states such as France.
In particular, the document says that an EU patent court should deal with validity, infringement and related issues concerning European patents and future Community patents, and that it should be a Community jurisdiction effective in all member states.
The court should have a first instance with local and regional divisions as well as one central division, a second instance and a registry. These would have uniform procedures and would be specialized and distinct bodies, but would be “linked” with the European Court of Justice.
However, the progress report adds that some issues need to be discussed further: “This concerns, in particular, the so-called split agreement between infringement and invalidity actions at first instance level, and the language arrangements in judicial proceedings.”
It also says that, once further consensus has been reached on the jurisdictional system, the Community patent will be further explored as some member states consider that the two systems should form a package.
Further discussions are expected to take place during the next two EU presidencies, with concrete proposals likely in the second half of next year.
The European Commission is also expected to publish its IPR strategy document, which will cover all areas of IP, early next year.
Source: MIP Week, November 2007
Author: James Nurton, London
Making A Mark May Be Easier
UK Trademark law changed yesterday morning. Given the importance of brands, this development could be significant.UK enterprise yesterday lost one of its traditional defences against potential rip-off. In a nutshell, the UK Intellectual Property Office, which has the responsibility for registering patents and trademarks, will no longer refuse a new trademark application on the ground that it might pose a commercial conflict with an existing trademark. Instead, the UK IPO will examine UK trademarks on the basis of “absolute” grounds only. This assesses whether they are distinctive and fitting for a trademark (so that, for example, a company cannot be allowed to trademark the name “soap” for soap) but will not delve into whether there is an overlap with someone else’s trademark. The responsibility for that, Brownlow explains, lies with the existing owners.
For some intellectual property lawyers, this move represents a profound dilution of the traditional strength and credibility of the UK trademark system. Simon Smith, of Blake Lapthorn Tarlo Lyons, says: “I feel very strongly about the changes. It’s a shame and I’m really troubled by them. In the past a UK trademark was a designation of origin and was a form of consumer protection. Now, though, it has been reduced to little more than a piece of commercial property. It undermines the presumption of strength and validity of the UK trademark and that is going in the wrong direction.”
But it is not only consumers who need to be concerned. Even more so, maybe, should be established brand owners. Daniel Alexander, QC, of the Chancery Bar Association, explains: “From now on trademark owners who want to prevent someone else from registering a similar mark will have to take active steps to oppose registration. They won’t be able to rely on the registry to do the job for them.”
Mike Lynd, of the trademark attorney Marks & Clerk, agrees that the changes mean that businesses will need to be more vigilant and more proactive to prevent new and similar trademarks being registered in the UK. “Although existing UK trademark holders will be warned of a new trademark application – which will give them time to lodge an opposition – it is not yet clear how thorough this service will be,” he says.
According to some lawyers, however, the “writing has been on the wall for some time” about the demise of the copper-bottomed UK trademark. There is now, effectively competition for registrations among the various national and international intellectual property offices. In particular, the introduction of the Community Trade Mark that prevails across all European Union member states gave businesses coverage across more than 25 territories at one stroke. However, investigations by the authorities into the validity of the mark took account only of its capability of being registered. There was no “relative” examination (that is, cross-checking for conflict). And once that precedent had been set it was always going to be difficult for the UK to adhere to its traditional approach.
According to Sarah Wright, of Olswang, there was no way that the Community Trade Mark registration process could have included the “relative examination”. “Europe is just too big to make this workable,” she says. “To remain competitive the UK IPO almost had to follow suit.” And as Lynd observes, there was also a view among some of the trademark bodies wondering “why should we be doing the trademark owners’ work for them?”
Some businesses will believe that the slimmed-down service is a significant advance – at least in the short term. “Overall, it should speed up the process of trademark registration,” says Alexander, although the silk adds that it may lead to more disputes.
Wright points out that the new approach will start to loosen up clogging. “There are lots of ‘dead’ trademarks out there that are not being used and unless they expire, the only way to remove them is to seek revocation. Under the current system, these marks could block a new trademark. The reforms will help to free up the system.”
By and large the bigger businesses will be able to cope with the changes by employing watching services to check up on the weekly TM Journal that lists all the new applications. However, smaller and medium-sized businesses may suffer by lacking the resources to remain vigilant against possible threats.
Moreover, we are only just at the start of a bigger challenge to work out how trademarks can be protected on the internet. The grey areas of law are considerable and all the signs are that the more important trademarks become, the more owners will have to take action to protect them.
Source: Times Online, 2.10.2007
Author: Edward Fennell
Polish reforms risk driving out foreign lawyers
Poland's position as one of Eastern Europe's fastest growing economies could be under threat following a "disastrous" Government crackdown on expensive foreign lawyers.The country's coalition regime, led by twins Lech and Jaroslaw Kaczynski, has introduced draft legislation capping lawyers' fees at just £40 an hour, a fraction of the amount international lawyers typically charge.
Foreign commercial lawyers - who have flocked into eastern Europe since the fall of Communism - believe the Government is serious about pushing the legislation through in its current form.
A senior Warsaw-based partner at an international law firm told The Times Online that he had spoken to members of the Polish Government who refused to compromise on what he called the "asinine" £40 an hour figure.
Lawyers are outraged because the figure was calculated using a formula based on standard, un-skilled Polish hourly wages, which they say bear no comparison to complex international legal work.
International firms with a fixed presence in Poland include Clifford Chance, Allen & Overy, Linklaters and CMS Cameron Mckenna.
Nicholas Fletcher, managing partner of Clifford Chance's 94 lawyer Warsaw office, said international firms typically charge up to €450 (£304) per hour for complex work.
"We've got 90 polish lawyers who are paid close to UK rates, we simply could not offer the same service for £40 an hour," Mr Fletcher said.
The Law Society of England and Wales, which is meeting with the Polish Government this week, predicts that the move could precipitate a mass exodus of foreign firms to the detriment of Poland's economy.
Des Brown, Law Society chief executive, warned that cutting off the supply of high-quality legal advice could have "dire consequences" for Polish business.
Peter Farren, executive partner of Linklaters' 250 lawyer Central and Eastern European practice, added that the moves would also harm foreign businesses looking to invest in Poland.
Polish companies were involved in $16 billion of mergers and acquisitions (M&A) last year, according to Thomson Financial, double the amount in 2005.
Eight of the ten biggest Polish M&A deals since 2000 relied on international law firms for advice, Thomson said.
Source: Times Online, 9 July 2007
Author: Michael Herman