"Smarter than the average number ..."

Julian Gyngell's talk on "Phonewords and Finance", kindly hosted yesterday at the London office of McDermott Emery & Will, was a treat for those who attended. In short,

* Australia has instituted a system by which Smartnumbers, these being the numerical bases for alphanumerical telephone numbers, are auctioned to the highest bidder, subject to minimal conditions and limitations (thus a bid may be made for 13-473462623, which is the numerical equivalent of 13-IPFINANCE);

* the successful bidder for a Smartnumber acquires no more than a licence to use that number in any alphanumerical form, but this licence is transmissible even, it seems, to parties that are disqualified from bidding from it initially;

* there is no clear guidance as to whether the use of a Smartnumber in which the alphanumerical form incorporates a trade mark or trade name constitutes a trade mark use which can be prohibited by the trade mark owner;

* there are no provisions for the interplay between (i) Smartnumbers, (ii) trade marks, (iii) domain names and (iv) company names, though particular problems arise where a word which is a generic term for some products is a well-known trade mark for others (eg APPLE)

* there appears to be no accepted basis for the calculation of the value of a Smartnumber at its point of acquisition or disposition, nor has any practice yet developed with regard to the place of the Smartnumber within the balance sheets.

The event was both pleasant and informative -- and there's more to come. Julian's paper is likely to be published towards the end of this year in the Journal of Intellectual Property Law & Practice (JIPLAP). If you want to be notified when it comes out, email me here and I'll let you know.

Meeting: "Phonewords and Finance"

Next Tuesday [not Wednesday, as previously erroneously stated], 14 July, Australian practitioner Julian Gyngell will be providing us with a great chance for a get-together when he speaks in London on "Phonewords and Finance". Says Julian,

"Organisations pay handsomely (sometimes millions of dollars) for phonewords because they believe that the phoneword will help increase telephone communications with their business (and hence increase sales and their goodwill with customers). However, the rights of use conferred by the issuing authority in the country in question are limited to the specific underlying telephone number itself and the purchaser’s proprietary rights in the phoneword (if any) will depend on the phoneword in question and, in particular, whether

a. the purchaser owns a trade mark (registered or unregistered) which corresponds to the phoneword (or the key word in the phoneword) or

b. conversely, another organisation owns a trade mark (registered or unregistered) that corresponds to the phoneword (or the key word in the phoneword).

I plan to review a number of recent cases, including some very recent WIPO domain name decisions involving phonewords, and advise that a purchaser of a telephone number that is a phoneword needs to be acutely aware of a number of important factors if it is to maximise the potential return on its investment, namely

a. the scope of the rights of use that it has acquired (and those that it hasn’t acquired);

b. the rights of third parties that might conflict with its use of the phoneword and

c. the steps that it should take to further protect its investment".

McDermott Will & Emery have kindly agreed to provide us with a venue in their City office at 7 Bishopsgate (here). If you're coming, please email me here and let me know so I'll have a rough idea of how many bodies will be putting in an appearance.