Sheffield: venue of Northern conference
A legal technology conference organiser is attempting to crowdfund £5,000 for a challenge to the trademarking of the term ‘legal tech’, after receiving a ‘cease and desist’ letter from a US-based legal publisher.
LegalTech Conference North, which held its inaugural event last month, is being advised by national law firm Freeths after being sent the letter by ALM Media.
The American company, which publishes The American Lawyer in the US and Legal Week in the UK, has more than 20 law-related titles in its stable, including one named Legaltech News, and runs an annual ‘Legaltech’ show in New York as part of its ‘Legalweek’ conference.
According to the Intellectual Property Office, the UK trade mark covers: “Conducting and organizing exhibitions, trade shows, conferences and workshops for public and private organizations, companies, lawyers and law firms for the purpose of exhibiting technical products and services directed to the legal profession, namely, computer hardware and software.”
The US trade mark also covers “newsletters issued periodically, directed to technical products and services for the legal profession”.
An ALM spokeswoman said it does not try to prevent ‘fair uses’ of the term outside of these areas.
Freeths’ associate solicitor Ciaran Dearden said the trade mark was first registered in 1997, before the usage of the term had achieved common currency, but had been re-registered in the US and the EU as recently as last year.
Mr Dearden said: “The existence of this trade mark is really restrictive for a booming legal technology sector.
“When ‘fintech’ is in the dictionary, but ‘legal tech’ is a registered trade mark, there is clearly a problem.
“In our view, ‘legal tech’ should be a term open to all to use to describe what is a transformative movement in the legal sector.”
He added: “The proprietor of a trade mark has to be proactive in protecting its intellectual property, and that simply hasn’t happened here.
“In this instance, the proprietor has allowed ‘legal tech’ to become a generic term for the use of technology in the legal sector and, in doing so, has undermined the basis for the mark’s protection in relation to the proprietor’s services such that the trade mark should be cancelled.”
The northern conference organiser hopes to raise funds to have the trade mark revoked. It launched a Gofundme campaign to raise funds. So far it has only raised £350.
Matthew Pennington, who with Harvey Harding was co-founder of the Sheffield conference, said the existence of the trade mark was “ridiculous”.
Speaking to Legal Futures , Mr Pennington said he was “99%” sure the trade mark would be cancelled.
Just to be safe, when organising the November conference, the company had rebranded as Legal Technology North “to sidestep the legal arguments” temporarily, but always intended to go back and challenge the trade mark later.
“We didn’t want the danger of messing up the conference for other people; to create any reputational damage potentially for sponsors who were involved.”
He added: “You look at the number of companies at Companies House that have got the words ‘legal tech’, let alone the number of conferences… There is no way [ALM have] control over it.
“Now everyone is using the term, you can’t then turn round and say you’ve got to stop using it.
“’Legal tech’ should be free to use to describe any product that works in the legal sector like ‘fintech’ describes any that works in the financial services sector.”
The ALM Media spokeswoman said: “ALM and its predecessors have used the trademark ‘legal tech’ for over 30 years in connection with a leading trade show for the legal industry.
“While the term legal technology, or ‘legal tech’ for short, has a descriptive meaning, by virtue of ALM’s long and successful use, the term has come to identify ALM’s leading conference and has become a trademark.
“Indeed, the US and European trade mark offices recognised these rights when it permitted ALM’s registration of the marks many years ago.
“ALM does not seek to prevent ‘fair uses’ of the legal tech term. However, as a trade mark owner, ALM’s goals are to both protect its longstanding rights and to try and prevent consumers from being confused into believing that another ‘legal tech branded show is affiliated with ALM’s long-standing event.”
We reported last week that an effort to trade mark the term ‘legal engineer’ was largely rejected by the Intellectual Property Office.
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