Author: regine_mfpq35j8

After a 4-week whirlwind at Burley Law, a law firm in Birmingham specialising in commercial, IP law, and employment law, I have completed my internship. However, rather than an ending, I came out with an overwhelming feeling of a new beginning to my legal career. But the journey has not been easy.

As a recent law graduate, textbooks, lectures and 9 am Tesco meal deals are all I have known. While I worked on the side, education gave me a structured routine to rely on. Facing the inevitable cycle of rejection in the exhausting search for work experience felt better when I had my education to rely on. I still had classes and lectures to attend. However, upon the completion of my degree, there is a creeping hint of doom, uncertainty and self-doubt that I see every graduate endure.

In reality, no one has their plans set in stone in their 20s. Funny enough, I didn’t have ‘Intern at an IP law firm in September’ on my bingo card this year. Constantly receiving rejections on applications I spent days working on, attending networking events and law fairs to no avail felt useless at times. But little did I know, I was building resilience, connections and knowledge that would help me refine myself as a young professional. Before I knew it, I was accepting my first interview, attending my first assessment day and accepting my first internship.

Interning at Burley Law has helped me grow such an exclusive perspective on the legal industry and the daily operations of a business. With the intimate office environment, I was able to engage in both administrative and legal work. This is something I now acknowledge is a privilege for a young legal professional.

Throughout the weeks, I had the pleasure of attending client meetings with Des, who focuses on the commercial and IP law side of the business, and then drafting engagement letters and proposals following those meetings. On the administrative side, I learned how to schedule meetings, create new jobs, diarise tasks and keep organised daily. These are just a short list of experiences that will undoubtedly help me grow stronger in my employability. Additionally, the unpredictable and ever-alternating nature of the law firm challenged me to adapt to changes in the office as no 2 days were the same. Interestingly enough, although some moments were intense, having work every day left me feeling accomplished by the end. Above all, having a constant point of contact virtually and in person allowed me to feel supported at all times during my internship. Especially as a newbie in the office, it is very easy to feel incompetent, but I can confidently say that I had constant reassurance! 

As my internship in IP Law drew to a close, I had a better understanding of my potential and what I could do to enhance my skills. I now have better direction and a vision of where I see myself fit in the legal profession as a Birmingham-raised young black woman.

Thank you for opening your doors to me!

Fabio Vincenti, owner of Fabio’s Gelato, an independent ice cream parlour based in Hertfordshire has been catapulted into the headlines after recently adding a new flavour to their offering: Percy Pig ice cream.  

To the delight of his ice cream business, the flavour was a success amongst new and old customers.  However, the excitement melted away when a letter arrived on their doorstep from Percy’s owners with a packet of the same iconic pink Percy Pig sweets from British retail giant, Marks & Spencer (M&S).  Much to his surprise, far from squealing about the use of the Percy brand, the contents of the letter were most cordial. 

The letter explained how M&S were flattered that Percy Pig had inspired their new gelato, however, as it is one of their hero brands (M&S are the proud owners of 7 ‘Percy Pig’ trade marks), they could not allow the ice cream parlour to use the name. 

The letter went on to say that to protect the brand, the company must stop others from using it without their permission.  This is so they could continue to have ownership of those trade marks, but most importantly, their consumers would be confident that Percy Pig branded products originate from M&S. 

The friendly advice M&S had for Mr Vincenti was to change the name of the ice cream to something that was not specific to the Percy Pig brand.  They are however happy for the frozen sweet treat to be decorated with Percies (supplied by M&S of course).

Big brands have big reputations and stories like this attract attention.  Some brand owners opt for a more aggressive approach.  Others, perhaps with an awareness of how they may appear to their customer audience, go carefully.  M&S have scored some PR points here whilst asserting their rights – and even Fabio’s Gelato have had some extra exposure.  Anyone for a Neopigletan?  

Written by Reccy Midigo

It’s the holidays which means Maria Carey’s ‘All I want for Christmas’ has become a staple on people’s Christmas playlists.  However, last month, the notable Christmas singer found herself on the losing end of a bid to trade mark the title ‘Queen of Christmas.’  While Mariah Carey may not be the first person that comes to mind when one thinks about trade marks, there are some important lessons which can be learnt from her attempt to become the official ‘Queen of Christmas.’ 

What happened?

Mariah Carey, whose 1994 Christmas song ‘All I want from Christmas’ has been a chart topper in recent years, filed a petition in the US for several trade marks which included ‘Queen of Christmas,’ and ‘Princess Christmas.’  The trade marks were filed to allow her company, Lotion LLC, to use the names for branding some of their beauty products.  If these trade marks were granted, her company would have had the right to stop and/or seek damages from anyone attempting to use the title ‘Queen of Christmas,’ and ‘Princess Christmas.’ 

In response to her trade mark applications, Christmas singer and song-writer Elizabeth Chan, filed a notice of opposition to the United States Patent and Trademark Office arguing that she is the true ‘Queen of Christmas’ having ‘used the title, designation, brand and mark commercially for years.’  She further argued that because she calls her daughter Noelle the ‘Princess of Christmas’ granting Mariah Carey the trade mark ‘Princess Christmas’ was likely to cause confusion to the public.  Due to a lack of response to the opposition by Mariah Carey’s legal team, Trademark Trial and Appeal Board made a ‘judgement by default’ rejecting Mariah Carey’s trade mark application for ‘Queen of Christmas,’ and ‘Princess Christmas.’

Louis Tompros who led Chan’s legal team argued that ‘Mariah Carey’s company was engaged in classic trademark bullying; trying to monopolize the title ‘Queen of Christmas’ with a trademark registration.’  He further argued that ‘It’s important to stand up to bullies. That’s what we helped do here.  Now, because of what Elizabeth did, nobody can claim exclusive and permanent rights to the ‘Queen of Christmas’ title.’ 

What lessons can be learned from Chan’s trade mark opposition?

Although the application and opposition were filed in the US, there are some important lessons for UK business owners.  This situation highlights the importance of seeking legal advice before filing an application for a trade mark.  In the UK, section 3 of the Trade Marks Act (TMA) 1994 outlines a list of things which cannot be registered as trade marks, one of which is descriptive marks: marks which describe the goods and services the trade mark covers. While naming a product after the goods and services being marketed doesn’t seem like a big deal, this practice is not allowed by the UKIPO to prevent businesses from claiming a monopoly over certain products and markets which sell every day products and services. Therefore, a good legal advisor should advise you about the challenges of filing a descriptive mark such as ‘Queen of Christmas’ before you file a UK trade mark application. 

Equally important is conducting trade mark searches to see if identical or similar marks exist. Even if a trade mark is not registered, parties can bring a claim in the law of tort for passing off and argue, as Chan’s legal team did, that if the trade mark is granted it could result in a likelihood of confusion to the public with an existing brand.  As Christmas is a common word, you should conduct a search for existing Christmas trade marks to ensure that you are not applying for a trade mark name which is similar or identical to one which already exists. 

While not being granted the trade mark ‘Queen of Christmas’ is unlikely to affect Mariah Carey being synonymous with Christmas, the money and time which was spent on the ‘Queen of Christmas’ marketing strategy and money spent paying her trade mark attorneys to file the applications has been wasted.  While someone as well off as Mariah Carey may be able to afford this wasted business expense, many start-ups and scale ups can’t afford to make this type of costly mistake. 

Not sure if you should file a trade mark for your business? Get in touch with our IP and trade mark expert @Des Burley. 

The 15^th of November marks 1 year since Reccy started at Burley Law. In this blog she details how she came to work as a Paralegal (SQE Trainee) in an IP, Tech, HR & Employment law firm, how the role has helped her with her personal and professional development, and advice for others starting their legal career.  

How did you end up at Burley Law?

I found out about Burley Law while working as a Consultant Paralegal with Flex Legal. I had never worked in an IP or Employment law firm, so when Flex put me forward for the role, I honestly didn’t think I would get the job. However, after researching the firm and finding out about its work culture and values, I decided to go ahead with the interview. As part of my interview, I was asked to do a short presentation on ‘Why IP is important for any business.’ I did some research on the topic and tied it to the knowledge and experience I had from previous roles and used this information to put together my presentation. While I didn’t have a strong background in either IP and Employment law, Des and Liz felt my soft skills and experience in other areas of law would allow me to support them with client work and business development. I originally worked at Burley law as a Consultant Paralegal on a 3-6 month contract but was offered a full time role as a Paralegal (SQE Trainee) in September 2022, after returning from working in Saint Lucia for 2 ½ months.  

How has working as a paralegal at Burley Law helped with your personal and professional development?

I’ve seen a lot of professional growth since working here thanks to support and guidance from Des and Liz. When I first started, my Intellectual Property and Employment Law knowledge and experience was limited. One of the benefits of working in a small firm, is that we get to work closely with the firm’s partners who have over 20 years of professional and legal experience. Being able to attend client meetings, handle client work and contribute to the firm’s business development has allowed me to develop knowledge and skills which I usually wouldn’t have learned at a junior level. Des and Liz have a ‘people first’ approach when it comes to their staff and clients. They are always happy to explain things and provide me with one-to-one feedback on client work and projects. As a result, I am now comfortable with IP work such as the filing and administration of trade marks, I can review and draft a wide variety of IP, Commercial, and Employment contracts and know how to provide legal support to start up and scale up businesses.

Working at Burley Law has also been great for my personal development.  Des and Liz are supportive and care about our mental and physical wellbeing and provide professional support based on our personal and career goals. This includes regular personal development meetings and providing us with mentorship and training opportunities. As a result of their support, I was able to go to Saint Lucia and launch Caribbean Elective’s Law Program, an opportunity which led to me being awarded Birmingham Black Lawyer’s Junior Legal Professional of the Year. Liz has been an incredible sponsor and connected me to other professionals such as Denise Morris who invited me to share my personal and professional journey in TAG Network’s Documentary, Making Waves: Voices of Young Leaders.  None of these achievements would have been possible without Des and Liz’s continued support.

What advice would you give to someone starting their legal career?

Be open minded. Unfortunately starting your legal career can be challenging. Some people struggle to get a training contract, others are forced into areas of law they may not be interested or passionate about, and others may not have the financial means to fund the LPC or SQE on their own. Having faced some of these challenges myself, I have had to learn to be open minded and flexible. A year ago, I had never even considered working in an IP or Employment law firm. However, working at Burley Law has developed my legal knowledge and skills in these areas and helped me discover a passion for IP law. Had I not challenged myself to try a new area of law or only applied to big traditional law firms, I would have missed out on the opportunity to work at a firm with people who are willing to support me on my personal and professional journey. 

Be Discerning. While a good job and salary are important, a firm or company’s work culture is something you should research before applying for a job. Having a toxic work environment can cause serious physical or mental health issues, lead to burnout, or destroy your passion or interest in law. It is therefore important to do your research (e.g., Company website, Glassdoor, speak with current or former employees, etc.) and consider whether the values and culture of a law firm or company you are applying to aligns with your values. It is also important to research and/or ask whether they offer support and resources for personal and professional growth.  While there is no perfect work place, applying to companies and firms which prioritise their staff’s wellbeing can help prevent you from falling out of love with the legal profession and spare you from unnecessary physical and mental burnout. 

Be Creative.  For those who are struggling to get vacation schemes and training contracts there are other amazing opportunities to gain legal experience.  I was able to gain Civil and Family law experience volunteering with Birmingham Support Through Court where I supported litigants in person with drafting documents and attending court. I joined the European Law Students Association (ELSA) while I was in Uni and was able to gain Criminal and Human Rights law experience as a STEP Trainee in Greece. The University of Birmingham (UoB) and other organisations also offer bursaries which can fund local and global work experience. By applying for and being awarded the Gateway Bursary, I was able to fund 1-month of legal work experience in Saint Lucia in 2019 where I gained Constitutional and Commercial legal experience.  Volunteering as a Coordinator for UoB’s Pro Bono Group taught me the organisation and team work skills which I use every day at Burley Law.  All these opportunities helped me develop legal skills while supporting some amazing local and global pro bono initiatives. 

At the end of the day, everyone’s journey into the legal profession is different. However, whether you qualify via the traditional route or forge your own path to qualifying as a solicitor, finding a good work environment with people who are invested in your personal and professional development can greatly improve your experience. I am incredibly grateful to everyone at Burley Law who has fostered an environment which has helped me thrive and look forward to qualifying as a solicitor with the firm. 

Businesses looking to launch a new brand focus, rightly, on potential perception, recognition and impact in the market.  Some apply for registered trade mark protection without any prior searches.  An internet search is simple and easy – and most businesses do this, but searches of the trade mark register can be critical since they can also reveal rights that are not in use, but can still torpedo a newly-minted brand.  Register searches can help avoid challenges to trade marks registration – known as an opposition – or infringement claims which can stop a business using a trade mark altogether and result in monetary compensation.  

Where marks and the products applied for, or used are identical to a prior trademark, then the cases tend to be straightforward.  Often, they aren’t identical and the issues are more complex and difficult to predict.  Any new trade marks are advertised for a few weeks and during this time they can be opposed.  The UK Intellectual Property Office writes to owners of similar rights and larger brands tend to actively survey new applications.  New entrants should not expect to sneak through unnoticed.  

The difficulty in predicting the outcome of these cases was highlighted in the recent opposition against HOUSE OF ZANA by the owners of ZARA who both have clothing brands.  Surprising to some, the applicants for HOUSE OF ZANA resisted the challenge at a hearing at the UKIPO.  Regardless of the outcome, and the publicity gained for HOUSE OF ZANA, most small businesses would prefer to avoid disputes like this.  The consequences of a loss may have been substantial – and sometimes, even a ‘win’ can be costly in tying up management time, as well as unrecoverable legal costs.  Uncertainty around use of a brand can also impact on investment decisions and stifle growth opportunities.  Who would open and market new stores where there is a chance that they will have to be re-branded soon after?  Resolution can take months – 12 to 24 months is typical.  Few fledging businesses are comfortable pushing forward with marketing a brand which is under threat.  

A small investment in searches at the conception stage can save so much effort later.  Contact us for more information on this. Watch our video about the subject:

There is also some more detailed advice for early-stage business on our ‘We think’ page here https://burleylaw.co.uk/tech-wednesday-summary. You may also find this article on trademark searches of interest.

On Wednesday 5 October 2022, Burley law hosted its quarterly University Round Table.  This event’s focus was around:

·       Improving the disclosure of IP created within the university;

·       Managing IP when academics move between institutions; and

·       Confidentiality agreements.

Burley Law were joined by our regular attendees and a couple of new faces, and it was extremely interesting hearing a vast range of thoughts and expertise from across the board.

We would like to thank all of our attendees for coming along and sharing their insights – the round table wouldn’t be the same without them!

If you are involved in university innovation and collaboration and would like to attend our next virtual round table or suggest topics for future events, please contact us.