Additional Terms

These terms apply in addition to the firm’s Terms of Business which accompany any Engagement Letter and form part of our contract for services between Wiggin LLP (Wiggin, we or us) and each of our clients (the client or you as appropriate), unless we specifically agree otherwise in writing.

1.1  These terms (Additional Terms) are in addition to Wiggin’s Terms of Business and will apply to any trade mark or design search, prosecution, registry dispute and portfolio management matter on which you instruct us from time to time.

1.2  Our work for you is likely to involve dealing with trade mark and design registries which impose strict time limits. Failure to meet those time limits can often be fatal to the rights in question.

1.3  We therefore require timely, complete and accurate information and instructions from you. We will endeavour to inform you of time limits and actions or instructions required, but we do not undertake to provide reminders or incur costs on your behalf or to take any action in the absence of your instructions to do so.

1.4  In the absence of your specific instructions, we will assume that we are instructed to take the minimum steps necessary to maintain pending rights (but not including renewal or maintenance of registered rights) and will be entitled to charge you accordingly. However, we reserve the right not to incur expense in taking such minimum steps.

1.5  We do not accept any liability in respect of instructions not received or confirmed by us in writing, or which are late, incomplete, incomprehensible or inaccurate.

1.6  It is important that you ensure that we are notified promptly of specific changes including to: (i) our primary contact for instructions; (ii) contact information; or (iii) ownership or granted rights such as licences or security. Such changes often require official registration in order to be legally recognised and we accept no liability for any loss of your rights as a consequence of your failure to inform us of such changes or to instruct us to record them at the relevant official registries.

2.1 During our work for you, we will normally need to instruct third parties (for example, foreign lawyers, search providers, investigators or translators) to perform the required work. You authorise us to instruct such third parties directly. These third parties are independent practitioners or service providers and are not agents of Wiggin. Whilst we select them with care and believe they can deliver the advice and work required of them, we will not be liable for any omission or negligence by such third parties.

2.2 With foreign rights, we will rely on the information provided by the local attorney firm instructed on the case. You may also be required to sign powers of attorney or provide other similar documentation in order to secure such services and meet local requirements (including notarisation and legalisation where required) and which may involve additional fees for us to manage that process, as well as for the local attorney or firm. Failure to do so promptly may result in loss of rights or incur additional fees for which we will not be liable.

3.1 Searches may be carried out by us, by local intellectual property offices, by independent specialist searching firms or foreign law firms. There are inherent uncertainties in conducting searches and providing opinions. In particular, due to the occasional errors in classifications, indices, computer databases and official records, searches cannot be guaranteed for comprehensiveness or accuracy. In addition to any search scope and limitations which we may advise you of at the time of providing you with a specific trade mark or design search report, we also draw to your attention the following general limitations:

3.1.1  Searching for prior rights involves considerable human input and there are many factors that affect the thoroughness of a search. Further searching might increase confidence in the results of a search, but it is normally impossible for any given search to be completely exhaustive, no matter how much searching is conducted;

3.1.2  Searches are limited to certain countries or regions. Typically, such searches are carried out using commercial databases compiled from various trade mark and design registers, which are specific to the territories of the registers searched and are only as reliable as the databases and registers themselves. The accuracy of such databases is subject to the availability of published information which may be delayed or limited to certain periods of time and may contain inaccuracies and omissions for which we accept no liability;

3.1.3  Where a proprietorship or designer name search has been undertaken, only records including names identical to those searched will be revealed. Thus, any of the following may result in relevant records not being revealed: misspellings, different transliterations (of foreign names into the Roman alphabet), name changes, changes in ownership and ownership by related (e.g. parent) companies;

3.1.4  Trade mark and design applications may, in certain countries, be backdated by up to 6 months, to take the filing date of a prior application. Such rights would not yet appear on databases and therefore will not be raised by searches or taken into account; and

3.1.5  In the UK and EU, at least, adopting a particular trade mark or design may infringe unregistered rights, such as passing off, copyright, or unregistered design rights . Obtaining a registered trade mark or design does not provide any protection from such a claim. There is no way of searching exhaustively for such unregistered rights but if you wish us to make further investigations in this respect, please discuss this with us. Other possible relevant earlier rights, such as patents and utility models, will not be searched, unless otherwise indicated in the search report. Where in use element is included in a search report, these searches are by their nature reliant upon third party source material which cannot be guaranteed for completeness or accuracy.

3.2 In particular, with respect to trade mark searches:

3.2.1  Trade mark registry searches concentrate on locating identical/similar marks registered or applied for in respect of identical/similar goods or services, depending on the search parameters. However, a registration may still be infringed by using a similar mark on goods or services which are dissimilar to those registered, if the mark has sufficient reputation. Marks registered in respect of dissimilar goods or services may not be raised by searches, even though evidence of reputation of the mark may allow an infringement claim to be brought;

3.2.2  The proprietor of a trade mark which is “well known” in the UK and/or the EU (i.e. which has a high recognition) may be able to prevent use of an identical or similar mark even if the “well known” mark is not registered or used in the UK and/or EU respectively. Such “well known” marks would not be raised in searches and we accept no liability where a relevant “well known” mark does not appear in those search results; and

3.2.3  Moreover, the individual(s) involved in carrying out a trade mark search may not be aware that a particular trade mark has a reputation or is “well known” and we cannot accept liability in respect of an omission of advice that would depend on such knowledge.

3.3  In addition, with respect to design searches:

3.3.1  Design rights relating to unpublished design applications will, unless otherwise stated, not be revealed by the search. For example, in the UK publication of a design can be deliberately deferred by up to 12 months and in the EU publication of design may be deliberately deferred by up to 30 months;

3.3.2  Material made available to the public (including any design that may not be registered at any registry) by any means can be relevant to the validity of a design registration. Unless otherwise indicated only registered designs and published applications at specific registers and in specific Locarno classes, as set out in our search report will be searched;

3.3.3  Unless stated otherwise in the search report, we have not performed a search for earlier rights relating only to part of the subject design. Such earlier rights, if any exist, relating to only a part of a product could be infringed by the subject design; and

3.3.4  Many design documents are classified by subject matter according to an international classification system, which may be used to narrow the scope of a search but does not limit the scope of protection of that design. The classification system is relatively complicated and some designs may be classified in more than one part of the classification system or incorrectly classified (either inadvertently or deliberately) and will not be identified by our searches. As such, there is a risk that the search has not covered a part of the classification system where relevant documents are classified. Also, if the search involves searching products by keywords, only those records including identical keywords will be revealed.

4.1  We will notify you of the renewal deadline upon registration of your right and will endeavour to remind you of renewal deadlines and provide fee estimates as the deadline approaches using contact details last available to us.

4.2  We will enter into our database the renewal deadlines of any rights acquired through us for maintenance purposes and will directly request the UKIPO (UK), BOIP (Benelux), EUIPO (pan-EU) or WIPO to renew your rights, should you instruct us to do so. If you instruct a third party to make renewal or maintenance payments on your behalf, we will not monitor those deadlines or payments. Nor do we accept liability in respect of any failure to forward such renewal reminders or notices to you (although we will generally do so as a matter of courtesy).

4.3  We will not renew or maintain any rights without your specific instructions to do so and our agreement to renew or maintain any rights may be subject to receipt by us of a new engagement letter with updated terms and/or cleared funds from you sufficient to cover the renewal or maintenance fees in advance of them falling due for payment.

5.1  We do not retain trade mark and design files and papers in hard copy. However, we retain a digital copy of those files for such time as we consider reasonable in accordance with our Terms of Business.

5.2  In the event that you wish to transfer your work to other professional advisors, assuming that your account with us is up to date, we will provide in a timely manner the following:

5.2.1  copy of the WebTMS portfolio via Excel;

5.2.2  diary report via Excel;

5.2.3  brief and high-level summaries of any pending applications which have encountered registry objections;

5.2.4  brief and high-level summaries of any live contentious disputes; and

5.2.5  electronic transfer of key documents for live matters.

5.3  We reserve the right to charge for our costs for any further steps, data, or information or in creating paper files that may subsequently be required by you or your new advisors. In the event that you transfer your portfolio to new advisors within 24 months of our initial instruction in relation to that portfolio, we reserve the right to charge an administrative fee to cover our costs incurred for the steps at 5.2 along with any further steps required by you or your new advisors.

5.4  We do not retain original documents such as registration and renewal certificates, assignments and licences, and evidence and, instead, will send these to you for safekeeping. Where we agree that we will arrange for third party storage of original documents the costs of doing so will be invoiced to you and we cannot accept any liability for the loss or destruction of original documents by that third party.

5.5  In the event that our bills remain unpaid after due, we are unable to obtain instructions from you, or we are not instructed in any matter for a period of months, we reserve the right to write to you using contact details last available to us, to explain that we are withdrawing from providing services and to write to any applicable registry to remove Wiggin from the register as representative on record, and/or in any event to take no further action in relation to any matter or deadline, including but not limited to renewal deadlines. In such circumstances, and where we have managed or instructed any overseas trade mark filings or activity, we also reserve the right to communicate the same to any local counsel in any relevant jurisdiction.