Tuesday, 11 October 2016

IP and Hair and Beauty

L'Academie de Coiffure
French satirical print from the 18th century
Source Wikipedia

Jane Lambert

I found rather more materials on IP and hair and beauty industry than I had expected when I started to read the trade literature. Sabrina Tozzi and Rachel Boakes of Baker & McKenzie LLP have contributed IP and the beauty industry: cosmetic concerns? to Issue 50 of IP Pro Life Sciences (12 Aug 2015). Elaine Eggington of IP Pragmatics Ltd, has posted an interesting presentation entitled Innovation in the cosmetics industry to her company's website.

There are also articles about free wifi with its implications for copyright and data protection in a discussion on free wifi in the Legal Lifeline section of the National Hairdressers Federation website.There are links to the PRS for Music and Phonographic Performance Limited websites on the Hair Council links page.

All of this suggests a wider than average interest in, and understanding of, IP in the hair and beauty industry. That is consistent with my experience as a practitioner as I have recently advised a cosmetics supplier on a trade mark issue, drafted licensing and distribution agreements for a perfumier and represented a design consultancy in a dispute over who was entitled to a patent for equipment used in hairdressing.

Such interest in IP is explained by the economic importance of the hair and beauty industry. According to HABIA (the Hair and Beauty Industry Authority) some 245,795 people working for over 35,704 hairdressers, 13,107 beauty salons, 2,967 barbers, 1,512 nail bars and sundry other establishments generated £6.2 billion of revenue in 2012 which is the last year for which statistics are available. Tozzi and Boakes estimated that the beauty industry was worth £17 billion for the UK alone though they seem to have included the cosmetics industry in their figures.

Tozzi and Boakes identified
"myriad issues of relevance to the beauty industry, from parallel imports to commercial transaction considerations, but we have picked three subjects which are particularly topical in the digital age: counterfeits, lookalikes and online advertising."
 HABIA, however, considered the impact of globalization and technology to be
"muted and limited to use of ICT in the management of bookings, relationships with consumers and global trends in image and fashion.
Also, the Authority expected innovation rates
"to be slight, with some innovation in products but with most hairdressing and beauty treatments remaining essentially the same."
The difference between HABIA and Tozzi and Boakes can probably be explained by the latter's including the cosmetics industry into their study.  Although there is some overlap between cosmetics and other products manufacturers and the salons and other businesses that apply or distribute them it is probably better to consider them separately.  The former supply goods and the latter services. It is hairdressers and beauticians who have contact with consumers. They are much more likely to be small and medium enterprises.  For that reason this article will concentrate on matters that would concern a salon owner - particularly one starting out in business.

The name by which a business is known is particularly important since reputation is spread by word of mouth. It is much easier to remember the name of a business than its postal address or even the name of its proprietor. Wherever practicable, salon owners should  register registering their business names as trade marks for the services and any products that they supply or intend to supply over the next 5 years. Trade mark registration is essential should they ever wish to franchise their business. It is also helpful should their domain name be challenged under the Uniform Domain Name Dispute Resolution Policy or Nominet's Dispute Resolution Service. For more information about trade marks, see the Trade Marks FAQ,

As customers often develop a relationship with stylists it is important to protect the business's goodwill by including a restrictive covenant in each stylist's employment contract. A restrictive covenant is an agreement between an employer and employee that the employee will not work within a specified area, in a particular capacity or for a certain period of time after leaving the employer's business. The purpose of the covenant is to give the departing employee's successor a reasonable opportunity to make him or herself known to the customers who dealt with the departing employee. Very great care should be taken with drawing up the covenant because a restrictive covenant is illegal and thus void unless it is reasonable having regard to the interests of the parties and the public interest. If, for example, a geographical restriction is too wide or the time is too long the covenant will be unreasonable and thus void.

Salon owners are likely to hold customer lists and other sensitive business information on computer. The use of such information by departing employees or others has always been prevented by the law of confidence (see Trade Secrets FAQ). Any information that is arranged in a systematic or methodical way that is individually accessible is now protected from extraction or re-utilization by a new IP right known as database right pursuant to The Copyrights and Rights in Database Regulations 1997.

The rights mentioned above are enforced by proceedings in the civil courts, The courts will grant injunctions (order to do or refrain from doing something on pain of imprisonment or other penalty for disobedience) and award compensation ("damages") for any loss sustained or make the infrnger account for and surrender any moneys or other benefits that he or she has gained from any wrongdoing. Proceedings in England and Wales may be brought in the Chancery Division of the High Court or the County Court either in London or in Birmingham, Bristol, Cardiff, Caernarfon, Leeds, Liverpool, Manchester, Mold, Newcastle upon Tyne or Preston. Claims under £500,000 that can be tried within 2 days can be brought in the Intellectual Property Enterprise Court ("IPEC"). Claims for less than £10,000 can be brought in the small claims track of IPEC.

Salon owners need to be mindful of the IP rights of third parties. The software they use in their businesses is likely to be copyright works. They can  only be loaded and run only  with the permission of the copyright owner which is usually set out in their end user licences. Similarly, any recorded music they play in their salons must be licensed by the PRS for Music or other collecting society, They must not allow their wifi services to be used for downloading infringing copied of films, sound recordings or other copyright works. They must take care not to use counterfeit cosmetics or other products,

IP litigation is expensive and is not usually covered by most legal insurance policies. Unless other funding is in place it is prudent to obtain cover against for claims against infringers as well as claims by third parties for infringing their IP rights.

Anyone wishing to discuss this article or IP and hair and beauty generally should call me during office hours on +44 (0)20 7404 5252 or send me a message through my contact form.

Friday, 7 October 2016

IP and Agriculture in the UK

Combine Harvester
Author Brian Forbes
Source Wikipedia
 Creative Commons Licence

Jane Lambert

According to the Department for Environment, Food and Rural Affairs ("DEFRA"), some 476,000 individuals in the UK were employed or engaged in agriculture contributing £9.9 billion to the country's gross value added in 2014 (see Agriculture in the United Kingdom 2014 DEFRA and devolved administrations).

As most consumers purchase their food from intermediaries there are limited opportunities for farmers who supply those intermediaries to distinguish their produce from those of their competitors. The position is, of course, different if they market directly to the public through their own farm shops or other retail outlets that they control or influence. If they can build up reputation or goodwill it makes sense to register the name, logo or other sign by which they are identified in the market as a UK trade mark.

If goods are produced in a particular manner or meet a specified standard it may be advantageous to use a special type of trade mark known as a certification mark. s.50 (1) of the Trade Marks Act 1994 defines a "certification mark" as:
"a mark indicating that the goods and services in connection with which it is used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.”
Such marks are usually registered by trade associations, government departments, technical institutes and similar bodies and applications for a licence to use those marks must be made to such users.

If a farmer belongs to, or is eligible to join, a trade association that produces a distinctive beverage or foodstuff, he or she may be entitled to use a collective mark.  A "collective mark" is defined by s.49 (1) of the Act as:
"a mark distinguishing the goods or services of members of the association which is the proprietor of the mark from those of other undertakings.” 
Further information about certification and collective marks can be obtained in the Intellectual Property Office's  Guidance on collective and certification trade marks

Certification and collective marks are examples of geographical indications. The European Union operates three schemes to promote and protect names of quality agricultural products and foodstuffs known as protected designations of origin, protected geographical indication and traditional speciality guaranteed. These schemes restrict the use of geographical indications to producers in designated regions who use specified production methods. British products that are protected in this way include Stilton  cheese (blue and white) which is protected as a protected designation of origin and Cornish pasties which are protected as protected geographical origins.

Design can be important for packaging. One of the leading cases on copyright in product designs before the law was reformed concerned kiwi fruit containers (see Frank M Winstone (Merchants) Ltd, and others v Plix Products Ltd. 5 IPR 156).  Product designs in the UK are protected by unregistered design right under Part III of the Copyright, Designs and Patents Act 1988.

It is possible for those working in agriculture to invent products or processes for use in farming, Such inventions may be patentable  if they are new, inventive, useful and fall outside the statutory exclusions provided by s.1 (2) of the Patents Act 1977 or arts 52 (2) and 53 of the European Patent Convention,  Equipment and other product designs may also be protected by s.213 (1) of the Copyright, Designs and Patents Act 1988 or as trade secrets by the law of confidence.

Farmers should also be aware of the intellectual property rights of others. Much of the latest equipment, fertilizers, pesticides, veterinary supplies and other technology used in agriculture may be patented. New plant and seed varieties are likely to be protected under the Plant Varieties Act 1997 or Council Regulation (EC) No 2100/94 of 27 July 1994 on Community plant variety rights (OJ L 227 of 01.09.94 p.1) as amended.

Copyright Works
The source code for computer programs used in agriculture is likely to be protected as original literary works by s.1 (1) (a) of the Copyright, Designs and Patents Act 1988.

Patents, copyrights, trade marks, unregistered design rights and other intellectual property rights are enforced by proceedings in the civil courts.

Actions to enforce or revoke patents and plant breeders' rights have to be brought in the Patents Court or the multitrack of the Intellectual Property Enterprise Court (IPEC").

All other claims may be brought in the Chancery Division (including IPEC if they can be disposed at a hearing of no more than 2 days) or the Manchester, Leeds, Liverpool, Preston, Newcastle, Birmingham, Bristol, Mold, Caernarfon and Cardiff hearing centres of the County Court.

Claims below £10,000 may be brought in IPEC's small claims track.

IP litigation can be expensive and is not usually covered by most legal indemnity policies.  Thought should be given to funding enforcement or revocation proceedings in the course of business planning. Further guidance on this matter can be found in  How Small Business can Fund IP Advice and Representation 3 Sept 2016,

Further Information
Anyone wishing to discuss this article or intellectual property and agriculture generally should call me during office hours on +44 (0)20 7404 5252 or send me a message through my contact form.

Further Reading

European Commission Intellectual Property Agriculture and Rural Development

Michael Kock  Adapting IP to an evolving agricultural innovation landscape WIPO April 2013

Hartmut Meyer and others The role of intellectual property rights in agriculture  Deutsche Gesellschaft für Internationale Zusammenarbeit (GIZ) GmbH

Jayashree Watal Intellectual Property Rights and Agriculture: Interests of Developing Countries World Bank


UC Davis  Public Intellectual Property Resource for Agriculture