The Law is an App.

At least, trade mark law now is…

Three days ago, we launched our first mobile application for iPhone and Blackberry:  NameSearch TM Legal.

If you are reading this on an iPhone or BB, you can download the App free from the above link.

You can also read the review in the AppStore.

NameSearch TM Legal helps you protect your trade marks, business names, product names, logos and brands and is designed as a resource tool for brand consultants, creative agencies, designers, NPD specialists, marketing executives and entrepreneurs.

In addition to a constantly-updated feed on what’s happening in the world of brands and marks, you can also request free trade mark search reports on the legal availability of business and product names and free legal advice on names, logos, trade marks and brands from the IP Team at Silverman Sherliker LLP.

You also have the full text of the UK Trade Marks Act 1994 at your fingertips.

The journey from the dawn of the initial idea to its eventual launch in the Appstore has been a long and formative one and, like most journeys, it has taught me quite a lot.

This is what I have learned.

Lesson 1: When you want to generate a new idea …go large.

There are a lot of iPhone applications about trade marks and ‘matters legal’ but a lot of them just replicate legal statutes and provide very limited functionality. They are stuffy. They are basically just adverts.

I wanted to create a really useful tool for anyone involved in branding, trade marks, name creation, design, NPD or business start-ups. Something that would enable busy creatives and entrepreneurs to clarify the legal availablity of new trade marks, brands and designs ‘on the hoof’, as it were …in a taxi, at the water-cooler, from the white-hot centre of the brain-storming session. In short, I wanted it to deliver  something of real value for the creative and entrepreneurial community.

So what about an app that enables anyone in the world to request a free trade mark search and get an initial professional assessment of the results from their iPhone or Blackberry?

Okay. That’s not bad.

But what if people could also request free legal advice on branding and trade marks as well and request a fee quote for the registration of their chosen mark at the same time?

Better.

What about logos, graphics and designs? Could people take a quick snap of the logo or graphic with the iPhone camera and upload it from the app into our CRM database for immediate legal evaluation? ……er, yes….

So I think this is the most important part of the process.

Get excited. Ask yourself what would be the best thing you could possibly create…and then keep adding stuff.

Be demanding of yourself …and keep demanding.

Keep on asking yourself …. ‘Why not?’ …and ‘What if?’

So could we have improved on the first version of the app that we submitted to Apple?

Yes, we most definitely could. In fact, it was the initial and disappointing rebuff from Apple (more below) that drove us on to produce what we now think is a really fantastic application.

We hope that you will agree.

Lesson 2: Choose a good, professional iPhone App developer

Come on, guys! …We are lawyers, not tekkies!

Don’t skimp on the choice of a good developer.

Don’t just settle for the cheapest offer on eLance from Timbuktoo.

It makes much more sense, in my opinion, to pay the premium for having a good local developer who you can brief face-to-face and who is reasonably near to home when a few home-truths need to be shared. They will have a better understanding of your business and what you are trying to do if you can discuss the project with them across a table and they will probably come up with a much better look-and-feel for the new application as a result.

Include them in the conversation right from the beginning. What seems impossible and expensive to a work-a-day lawyer suddenly appears to be do-able.

I can whole-heartedly recommend my friends Ankush and Jason at PolydiamInfosoft. They are extremely dedicated and client-centric folk and showed great patience and fortitude in bringing this new app into being.

Great guys.

Lesson 3: (the big one) Never Give Up.

My Twitter friends know that this is a recurring Churchillian theme of mine and will forgive me. But there will be bumps in the road in any project. Sometimes they are big bumps that throw you off the road completely. We ended up in the proverbial ditch in March on this one:

The gestation period of this app has been 6 long months rather than the intended 2 months. The idea was conceived early one morning in December 2009, whilst shaving. I get a lot of good ideas whilst shaving. Developers were appointed and briefed in late December and we anticipated a launch in February. In fact, it was March 2010 before we were first in a position to submit the fledgling app to Apple Inc for assessment for inclusion in the AppStore.

Now, Apple Inc became very skittish in March 2010 for some unknown reason and suddenly started rejecting perfectly good applications on the flimsiest of pretexts, at least this is what I have managed to glean from various sources.

In short, our application was rejected because it, and I quote, ‘did not make full use of the available iPhone functionality’.

Well, stuff you, Duckie!

We found ourselves in the proverbial ditch.

So we went back to the drawing board with our developers, who were as frustrated as were we, and we started to build an even better application.

We incorporated the full text of the UK Trade Marks Act 1994.

We built in an RSS blog feed so that we could now offer bloggers on branding and design a further outlet for their blog-posts. We included a Twitterfeed.

We refined the back-end CRM databases to enable us to communicate with our enquirers by email and by SMS.

We upgraded the graphics and revisited the screen designs and the copy.

We resubmitted on June 9th and were notified of the inclusion of Namesearch TM Legal in the AppStore on June 15th….and great was the celebration.

In its first 3 days, and without any advertising apart from a few tentative tweets on Twitter, we have scored 164 downloads of our new application worldwide.

Interestingly, many of the initial enquiries are from Canada and the US so we will immediately be setting up a  referral conduit to our trade mark affiliates in those countries to handle those enquiries effectively.

NB: Don’t Miss Your Blog Opportunity

We are also looking for relevant blogs on marketing, branding and design to include in the application’s RSS feed so if you would like your blog included please do get in touch with me as soon as possible and we can help get you an increasing, targetted readership for all of your blog-posts.

Just email me at cjs@silvermansherliker.co.uk. We can include your blog in the Namesearch application within a few seconds and would be delighted to extend this courtesy to you. Don’t be shy!

May all your ideas be big ones.

I look forward to meeting you in the ditch.

Chris Sherliker

@London_Law_Firm
cjs@silvermansherliker.co.uk
Tel:  +44  (0)20 7749 2700

Silverman Sherliker LLP, 7 Bath Place, London EC2A 3DR

Picture the Scene

Our defendant clients had been involved in long-running proceedings involving complex copyright issues.  There were 10 parties involved in the proceedings some with cross claims against each other.

The legal issues were numerous and complex and the contentions that would have to be determined in court included: Who was the true copyright owner? Had there been joint authorship? Had there been copying? If so, what was the precise extent of the copying? Was similar ‘look and feel’ enough to establish copying? To what extent did the judgment in Navitaire Inc –v- Easyjet (No3) 1725 (Ch) (2005) ECC30 impact on the issues? The question of the personal liability of directors for any infringements by their companies would also have to be adjudicated as well as some very opaque issues of fact.

The parties had been in battle for 5 years and the proceedings on going for approximately 18 months. The proceedings had reached a critical point and it was expected that in 12 to 18 months time there would be a 10 to 15 day trial.

The High Court granted a stay of proceedings to permit the parties to try to resolve their differences by mediation.

The Outcome

At the outset, the Mediator (himself a highly-respected copyright barrister) commented that it was impossible to predict the outcome if the case went to trial as there were at least 64 possible permutations.

It was a long and difficult mediation lasting 15 hours and at which, it can be reliably said, the parties aired their views, and it in the end it produced a resolution that all of the parties could live with.

Had the matter gone to trial, there would probably have been a judgment in favour of some and against others, but it is unlikely that there would have been any clear outright winners.

A little bit of “thinking out of the box” at the mediation meant that the solutions adopted by the parties resulted in a settlement agreement that gave something to everyone. Most importantly from our clients’ point of view, there was no longer a threat of an injunction that might have constrained their business and overall the parties came out of the mediation with honours shared.

The estimated costs to the parties to take the proceedings from the point they were at to trial, £250,000 to £300,000. The cost of the mediation was somewhat less than one-tenth of this figure.

It was a “no brainer” as they say.

The Dispute Resolution Team:

John Abbott:   jca@silvermansherliker.co.uk    
Richard Pearlman: rhp@silvermansherliker.co.uk
James Robertson:  jvar@silvermansherliker.co.uk
Stefan Arestis:  sa@silvermansherliker.co.uk
Asil Albayaty  aa@silvermansherliker.co.uk

This is a non-exhaustive 50 point checklist designed to help you avoid some very common legal pitfalls and maximise the legal security of your business.

1. Make sure that legal ownership assets used in the business are actually owned by the business.
2. Get written copyright assignments from designers, authors, software and web developers and appropriate warranties of originality.
3. Check the terms and conditions of third party suppliers of services to ensure you legally own any deliverables they create.
4. Do not rely on a terminable licence for key business assets; take an assignment or a perpetual royalty-free licence.
5. Always negotiate when taking or granting a licence (term, option to renew, notice period, warranties, conditions etc).
6. Make sure new shareholders assign the assets that they are bringing to the party to the business as a condition of the issue of their shares.
7. Check every name, trademark, slogan and design you use to ensure it does not infringe any third-party rights.
8. Do not use a name, slogan or logo without filing a registered trademark application.
9. Check the patentability of your inventions before disclosure or marketing.
10. Patent your novel inventions if patentable.
11. Register your designs as UK or EU Registered Designs.
12. Insist on non-disclosure agreements as prelude to deal negotiations.
13. When buying, consider milestone payments and a retention.
14. When buying, obtain contractual warranties and indemnities from sellers.
15. When buying, carry out as much due diligence as is possible.
16. When selling, get deferred payments guaranteed or secured.
17. Agree terms of ’soft’ loan capital up-front to avoid sudden repayment demands by investors.
18. Consider weighted voting rights for business founders who go below 50%.
19. Ensure shareholders, employees and consultants agree non-compete obligations.
20. Ensure post-termination non-competes are reasonable and enforceable.
21. Protect customer-base and goodwill by including non-solicitation obligations in employee contracts.
22. Protect investment in staff by including non-poaching obligations in employee contracts.
23. Impose strict confidentiality obligations on people involved in the business.
24. Ensure confidentiality obligations continue after termination of involvement.
25. Draw up an appropriate Shareholders Agreement for multiple shareholders.
26. Consider list of ‘reserved issues’ requiring unanimous shareholder consent to implement.
27. Do business under your own clearly-drafted standard terms and conditions of business.
28. Bring your terms and conditions to the attention of customers before they commit to buy.
29. Make share ownership by partners and staff subject to performance criteria.
30. Provide that employee shares vest over a reasonable period of time.
31. Make employee shares subject to sell-back obligation if they leave for any reason.
32. Provide a procedure for the fair valuation of shares of leaving employee.
33. Encourage employee loyalty by providing for nil value on share buy-back in first 2-3 years.
34. Consider discounted (or nil) value for shareholder employees dismissed for breach or wrongdoing.
35. Control the ability to sell the business by imposing ‘drag-along’ terms on minority shareholders.
36. Consider share purchase assurance to buy back shares of deceased shareholder from the estate.
37. Consider a contractual dispute resolution procedure to avoid dead-lock or formal proceedings.
38. Build business value by obtaining written contracts with customers and clients.
39. Consider minimum term commitments from customers and clients and long notice period.
40. Register under the Data Protection Act if applicable.
41. Negotiate favourable written agreements with all suppliers.
42. In supplier contracts, seek exclusivity, initial minimum term, renewal rights and long notice period.
43. When granting exclusivity ensure minimum performance criteria as a condition of such exclusivity.
44. Consider legal expenses insurance and After the Event Insurance when engaging in legal proceedings.
45. Ensure your business operates within its industry standards and applicable statutory framework.
46. Agree an appropriate Grievance and Disciplinary Procedure and stick to it.
47. Do not terminate any contract of employment without taking legal advice.
48. Never rely on a calculation or valuation carried out by accountants that are being instructed or paid by someone else.
49. Always seek a personal guarantee of payment or performance from principals of an SME business.
50. When dealing with a group of companies, seek guarantee of payment or performance by holding company.

              …..and never give anyone a signed, blank cheque.

 Email to discuss any of this: cjs@silvermansherliker.co.uk

Well?  What is one to think?

“Pitcher’s, Pimms, Passing Off…” –  sounds like a hopscotch chant!

Sainsbury’s takes on major supplier Diageo with what might be considered to be a knock-off copy of its iconic Pimms’ brand and at the height of the thirsty Britsh summer. Same bottle shape, same label silhouette, same label lay-out same ’san serif’ font, same colour….same ‘get-up’?

Archbishop Passing Off is already robing up behind the drinks counter to enter the unholy fray with his ‘holy trinity’ of Reputation, Confusion and Damage but who will survive the refining fire of this test?

Is Sainsbury’s passing off its Pitcher’s product as that of Diageo? Is there a trade mark infringement?

Surely, no problem with Reputation. Pimm’s has established itself globally as an iconic brand, synonymous with Wimbledon, Henley, May Balls, picnics (see Twitter #VTPP) and all that is sacred about the British Summer.

And, surely, no issue with Damage. One can almost see the out-stretched hand of the thirsty British consumer waivering and submitting momentarily to curiousity and the lower price tag of the Sainsbury’s ‘equivalent’ with huge consequential loss for Diageo.

So the legal armies must face each other on the uncertain legal battle-field of Confusion. But is there really any Confusion? The name is similar and the

Same difference?

The Sainsbury’s product clearly echoes (deafeningly!) the Pimm’s brand ..but we are not talking puffins and penguins here. The product is pretty obviously not the original although it is clearly trading off its reputation.

It is to be hoped that the tort of passing off is sufficiently flexible to achieve the only just result.

The ‘Jif Lemon’ case historically established that an iconic ‘get-up’ will be protected in passing off. Misrepresentation can be imputed by similarity regardless of difference. The likelihood of some confusion is surely enough.

So what do you think?

Pitcher’s or Pimm’s …Who will take Match Point?