Chris Hoole of Appleyard Lees: Helping brands protect their creativity with the power of IP
It’s been an interesting year for Chris Hoole.
Becoming a father, moving house and switching offices amid a pandemic, not to mention handling a patent litigation trial, has made 2020 one to remember for sure.
A dual-qualified solicitor and chartered trade mark attorney at Appleyard Lees, Chris has arrived in Cambridge to help clients with their intellectual property (IP) needs.
Aside from a brief hiatus when lockdown hit, the IP world hasn’t slowed down, even if it has had to adapt to a world of video conferencing – court hearings included.
“Trials are like buses, I suppose,” says Chris. “Getting to an actual hearing can take about 18 months. But the firm had three trials in the IPEC – the Intellectual Property Enterprise Court – all between June and July.
“I was handling a patent litigation trial and my colleagues in Leeds and Manchester had ones of their own.”
This threw up some novel questions.
“We were all remote, with clients, solicitors, barristers and witnesses all dialling in from home or the office. Doing virtual hearings was all very new for the court,” recalled Chris.
“They hadn’t decided what platform to use. The test call was the day before and the barrister didn’t know if they needed to wear robes – it can depend on the judge.”
After two long days, the trial was concluded and Chris is awaiting the judgment this month, but his colleagues in Manchester, whose trial was held a month earlier, have already learned they were successful.
The IPEC is a relatively new court, set up in 2013 as part of the High Court.
“The benefit is access to justice,” says Chris. “It is a court that gives access to those trying to protect their IP. Costs recovery is capped at £50,000, but court is never a cheap option – it does however open up the opportunity for not just big, multi-service firms to do IP litigation, but more boutique firms too. Since trials are held only over two days, you don’t need 20 paralegals handling thousands of pages in disclosure documents.”
Chris originally trained and qualified at a major full-service law firm in Leeds called Walker Morris, before moving to Appleyard Lees at the beginning of 2015 as an IP solicitor.
“It was one of the best choices I’ve made,” he said. “At that point there was a move in trade mark and patent attorney firms to do more litigation, mainly because of the new court.
“We built the litigation department, and have had a successful few years.
“While building the disputes practice, I also dual-qualified as a trade mark attorney over the two years. “We now have a few more staff focusing on litigation in Leeds and Manchester.
“We have secured some really good clients.”
Chris’ biggest client win came when he secured Puma.
“It came about because we were acting on the other side in a case. A month later, we got a call to say they liked the way we acted against them and asked if we would like to act for them,” he remembers. “It shows you should never irritate the other side! We have a really good relationship with them.
“We do all their litigation work in the UK, including their anti-counterfeit work and, and even some IP contractual work now.”
Appleyard Lees is more than 100 years old, but until recently it has always been focused on the north – Halifax, Manchester, Leeds.
However, as the Cambridge Independent has covered, it came to Cambridge early in 2017, mindful that if the country had an IP capital, the city would be a good candidate.
More patents are filed in Cambridge per head than anywhere else – 315.7 per 100,000 people in the year that Appleyard Lees arrived in the city. The next highest – Coventry – managed 108.9, and Oxford could only muster 78.
It’s a testament to the city’s innovative, entrepreneurial spirit – something on display every year at the Cambridge Independent Science and Technology Awards , which have been supported by Appleyard Lees ever since the firm arrived in the city.
Chris, who will join the judging panel for this year’s awards, attended one of our previous awards ceremonies and was stunned by what was on show.
“The Science and Technology Awards were, for me, very enlightening. Start-ups have a different definition here. To hear the figures that were being invested in these firms was mind-boggling – stage one, £80million…
“So the opportunity to open a trade mark and dispute division of the Cambridge office makes sense. I also have a focus on design, as well as patent litigation.
“It meant that for local firms we act for in Cambridge and the surrounding areas, we offer the full service of IP.”
Going to trial, of course, is actually quite a rarity, and generally a last resort. Much of what Chris does surrounds IP strategy. Get that right and you have a much better chance of avoiding the need for costly hearings
And it is important to consider it at an early stage in the life of a company.
“This is one of the reasons our business is focused on reaching out to companies at a very early stage. We have a number of articles on our website aimed at start-ups,” notes Chris. “Those who have been around a while who are IP-savvy will know that before you disclose anything, you seek advice.
“Start-ups who come up with new technology – whether it’s biotech or software – and disclose their invention may have issues enforcing it in future. So it’s important to educate start-ups.
“They often work in collaboration with lots of different companies. I focus on informing those businesses, with my specialism in commercial IP, that they want to make sure the design, or know-how, are owned by the company that is commissioning the work.
“As a start-up, you’re excited, you want to show the world, and you might not get everything in writing. You need to get your non-disclosure agreements in place.
“This is one advantage of working in tandem with patent attorneys. I always ask them if they’ve checked with their clients about their commercial contracts. It’s always harder to transfer rights after you’ve paid the money.
“A lot of my work is not just about protecting trade marks, but also those commercial IP elements, and getting in place written agreements, so start-ups can move forward.
“It sets them up for when they come to investment.”
Once introduced to new firms, or recommended by existing clients, Chris finds the relationship often lasts.
“A client is a long-term investment. Any client is for the lifetime of the firm – that’s how I view it,” says Chris.
And he acts on both sides of cases – both defending claims or enforcing rights.
“It helps you know what both parties might be thinking,” he observes. “And we act for a whole range of clients, which helps.
“You may get some litigators that primarily focus on enforcing multinational IP rights. But then you might be missing some of the commercial know-how from acting from smaller companies. I like the range.
“We are not just giving legal advice but commercial advice as well – on strategy, or design, for example.
“I’m a big ambassador of filing designs, especially in the UK. A lot of businesses don’t realise how cost effective it is. If you file enough, each design is the price of a beer…
“If you are in the fashion industry, or jewellery, it makes enforcement a lot easier, especially online. Amazon and eBay and so on like to see registration numbers.
“If a product is not registered, you’ve got an uphill battle to show it’s been copied.”
Online enforcement is another growing area for the firm, protecting clients’ rights against counterfeits or knock-offs.
“We have a big team who are very practised at filing takedowns, which means going on Amazon or eBay and sending them a notice that someone’s listing is infringing,” says Chris. “We also monitor for some clients and find those listings.”
How does this work for international infringements?
“It depends on where you’ve protected your rights,” Chris replies. “If you have a line of copyright, it’s recognised in a lot of countries.
“In China, if you haven’t registered your design or trade mark, and a website is only selling in China, you might have difficulty enforcing.
“But for most of our clients, the majority of their sales are in the EU and UK.
“If you are an IP-focused business, look to register it where you sell and manufacture.
“If you manufacture in China or Taiwan, the factory next door might end up with the same design. And it’s not uncommon for Chinese companies to file trade marks they’ve spotted in the UK or EU that is doing well. So it’s a very interesting area.”
Cases can involve a range of possible infringements.
“It could be product-based – how a product might look, which is why registering a design is always a vital thing to do. That’s the same with copyright too. You can copyright a whole range of things. We’ve had disputes on source code with software developments.
“But most disputes I handle are over trade marks, where a rights holder has registered a trade mark or hasn’t registered it but has been using it for a long time, which makes it harder.
“You need to gather evidence to show they’ve been using it for so long they’ve acquired ‘good will’ and then you enforce that good will under what’s called passing off. That can be a little bit more complex.
“Where disputes tend to go further is where the trade marks have a more descriptive meaning to them. The general rule is that a descriptive trade mark can’t be registered. Or, if they are registered, but have a descriptive element to them, the scope is narrowed.
“For example, WeBuyAnyCar is a registered trade mark now, but it took a while to get there. There could be other parties creating WeBuyAny… something else. So IP can be a grey area.
“One of the good things about being a solicitor and a trade mark attorney is that I also do a lot of the prosecution work. This is where someone files a trade mark but it is opposed.
“Or it could be that a trade mark is registered and your client believes it shouldn’t have been.
“You can use these two aspects hand in hand – make the most of trade mark registry offices but also use the strategy of the court process. It gives an advantage to clients.”
Appleyard Lees has more than 50 IP specialists at its disposal.
And their work can have a significant impact on a company’s bottom line.
“An IP right is like a monopoly. If you maintain it in that area, your revenue should accrue in line. If it is diluted because people are selling the same design or using the same patent, then you might not see the same benefit.
“Likewise, if you are in defence and receiving a claim, you do your utmost to try to resolve it at an early stage.
“Going to court is very expensive. Even going to the IPEC, you are looking at £150,000-plus to get to the first hearing and you can’t recover all of that,” notes Chris, who is now back at the firm’s Cambridge office at Castle Park.
There, he joins Julia Gwilt, a partner in the electronics and software team, Barbara Fleck, a partner in the life science team, and patent attorney Parminda Lally.
When he’s not working, Chris is a keen cyclist, and in the past was a keen rower. He should fit right in here.
Now listen to the podcast
You can hear more from Chris Hoole and his colleagues, Bill Lister and Robert Cumming, on the experience of virtual trials at the Intellectual Property Enterprise Court (IPEC) in an episode of The Greenshoots podcast from Appleyard Lees.
It covers pre-trial case management conferences and the logistics of hearings at homes and, of course, trial attire.
The Greenshoots Podcast was launched in April 2020 by the law firm and gives listeners access to insights from IP specialists. Visit https://podfollow.com/greenshoots.