For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Wednesday, 30 July 2014

European Patent Reform: a high-power forum may be heading your way ...

MIP: food for thought
While interest in the governance of Eponia (the eponymous Central European fiefdom of the European Patent Office) runs gratifyingly high, as the comments posted to Merpel's Sunday night blogpost testify, a more serious thread of interest in the present and future of the European patent system is not hard to discern either, as it weaves its way through the consciousness of the patent community.  One strand of this thread is an intriguing event hosted in two cities which, between them, hold so much of the fate of the new European patent regime in their hands: it's the Managing Intellectual Property (MIP) magazine-backed European Patent Reform Forum and you can catch it in Munich on 9 September or wait a couple of days and attend it in Paris on 11 September. The significance of the host cities will not be missed on patent practitioners and their clients, or on commentators and lobbyists: the Unified Patent Court, looming large in our minds though not yet in our daily routine, has chosen Paris for the Central Division of its First Instance Court, with  Munich handling mechanical engineering cases.  The "missing" city is London, which will accommodate the court's chemistry and pharma workload -- though it was London that hosted the same organisers' International Patent Forum this March (on which see "A touch of the Waldorfs", here).

Fast food
Having founded MIP back in the early 1990s and then having edited it for some years, this Kat is always happy to see what it's up to, and he's pleased to see that quite a few of his friends, and contributors to his own rival publication, have been pressed into service in the forthcoming Forums. The panel of Munich speakers and participants, which you can see by clicking here, features a convincing blend of in-housers, private practitioners and bureaucrats, as well as a good mix of industrial sectors, and the programme focuses a good deal on the discussion of strategic issues (ie what to do, when and how to do it). A novel feature is what Merpel calls "speed-lunching", since the action-packed morning and afternoon sessions leave just 50 minutes for the traditional mid-day pit-stop and refuelling. The venue for this challenging event is the "Marriott Munich Hotel, Munich" which, from the repetition of the M-word, sounds like an attempt to persuade us that the hotel really and truly is in Munich -- unlike that lovely city's airport, which is actually a short flight away.

Slow food
The Paris line-up (which you can check out here) features many of the same speakers, but with some tactical substitutions to reflect the local terrain: among them is the redoubtable Christophe Geiger, Director of CEIPI in Strasbourg. This day's programme also has the speed-lunching feature, so Merpel hopes there won't be too many escargots on the menu. The venue for the "Paris re-match", as one might describe the second edition of the Forum, is the Paris Marriott Hotel Champs-Élysées, which sounds like a good place for a night out on the town an ideal location for an event of this nature, particularly for some of our American cousins who don't travel too well and like to feel at home wherever they may be ...

Digest the message ...
Now for the nitty-gritty. MIP, out of the kindness of their hearts and notwithstanding their lack of charitable status, are offering FREE attendance for academics and for in-house counsel, patent counsel and R&D professionals. If you don't fall within any of those categories, you're still entitled to a 25% DISCOUNT if you are an IPKat reader who happens to be a private practitioner, consultant or adviser (this works out at €820).  Everyone else -- and there can't be that many "everyone elses" apart from monarchs, footballers and bloggers -- has to pay the full whack, €1,095.

Further information about this useful and highly tempting forum can be obtained by clicking here. To claim your special IPKat reduction, email Alicia Sprott at alicia.sprott@legalmediagroup.com and quote your VIP Katcode IPK25.

Tuesday, 29 July 2014

Kanye West Ain’t No (Crypto) Banker

His Account is Not Likely Overdrawn
One of the defendants in the ‘Coinye West’ trademark infringement suit entered into a consent agreement with Kanye West and his company Mascotte Holdings (Plaintiffs) over the Coinye West crypto-currency. Judge Analisa Torres from the Southern District of New York issued the permanent injunction.

Defendants had launched a crypto-currency, the COINYE WEST, or COINYE, or COYE on the <coinyewest.com> website in December 2013. They redirected the site to <coinyewest.in> after receiving a cease and desist letter from Kanye West’s attorneys. In spite of the letter, their crypto-currency launched in January 2014.

Bitcoin was the first crypto currency to emerge in 2009 and has since been the source of inspiration for many more. As stated in the Plaintiffs’ amended complaint, “[t]here are over 150 new digital currencies attempting to compete with Bitcoin, some in earnest and some as marketing ploys.” A crypto-currency is created (‘mined’) by individuals using open-source software and computers to solve complex math problems. If they solve a math problem, they are rewarded in coins (I will have to find another way to become a millionaire!).The amended complaint explains in detail how such a system works.

Kanye West needs no introduction, but let me refresh your memory. As stated in the amended complaint, “Mr. West is credited with refocusing rap from hardcore gangster themes to more personal messages,” and “Mr. West sets trends for everything he touches.” He is also a member, with Kim Kardashian, of the #WorldsMostTalkedAboutCouple, aka Kimye, which is (not yet?) a trademark.

However, Mascotte Holdings, Inc. owns several KANYE WEST trademarks, such as KANYE WEST in class 41 for music composition and KANYE WEST in class 25 for clothing. Kanye West is quite adept at self-promoting his personal brand, and can boast 10.6 million followers on Twitter, and an April 2014 U.S. Vogue Cover with wife Kim, which has been spoofed many times.

But the Kanye West brand is no joke and the artist is a savvy businessman who indeed seems to have a Midas touch, changing everything he touches into gold. It is not surprising that he would be chosen to adorn the face of a new currency. The first version of the COINYE represented a golden cartoon version of the famous singer, complete with ‘shutter shades sunglasses, and then was changed to represent a cartoon version of Kanye West as a fish.The fish had shutter shades as well.

Alas! Neither the use of Kanye West’s name nor his likeness had been authorized and Plaintiffs had issued a complaint last January. They amended it in March, claiming trademark infringement, trademark dilution, unfair competition and cyber squatting. The complaint mentioned several cases of consumer confusion on Twitter, such as this one or this one. They also claimed that Kanye West’s right of privacy and publicity had been violated under New York Civil Rights Law §50 and §51. This law was also recently the basis for Lindsay Lohan's suit against the makers of the Grand Theft Auto Video Game. It provides a cause of action if the identity of the plaintiff has been used in advertising or commerce without written consent.  

The defendant is permanently enjoined from registering or operating a website using the KANYE WEST mark, the COINYE West mark, the COYE mark or any “colorable imitation” of these marks, to use the mark KANYE WEST, to use Kanye West’s likeness  in any manner likely to cause confusion tor to deceive the public. However, this site is still claiming to offer coinye coins and is using the cartoon of Kanye West as a fish. It states in its FAQs that “the guys who started Coinye are nowhere to be found, but we gladly take it from here” and that “The Original Developers ran off from the lawyers. However, the coin was already unstoppable out, so the community decided to take over and work on it for further development (sic).” Will there also be further legal developments?

Phew, what a scorcher! Police apply Sunblock to red-hot fake sales websites

"Police placing anti-piracy warning ads on illegal sites", by Dave Lee, appears on the BBC website here. This piece reads, in relevant part, as follows:

"The City of London police has started placing banner advertisements on websites believed to be offering pirated content illegally. The messages, which will appear instead of paid-for ads, will ask users to close their web browsers. The move comes as part of a continuing effort to stop piracy sites from earning money through advertising. Police said the ads would make it harder for piracy site owners to make their pages look authentic.

 
"When adverts from well known brands appear on illegal websites, they lend them a look of legitimacy and inadvertently fool consumers into thinking the site is authentic. [said Detective Chief Inspector Andy Fyfe from the City of London Police Intellectual Property Crime Unit , PIPCU]. This new initiative is another step forward for the unit in tackling IP crime and disrupting criminal profits. Copyright infringing websites are making huge sums of money though advert placement, therefore disrupting advertising on these sites is crucial and this is why it is an integral part of Operation Creative."

The initiative will make use of technology provided by Project Sunblock [whose domain name projectsunblock.com, Merpel notes, can be also be read as "projects unblock"] -- a firm used by major brands to stop adverts appearing alongside questionable content such as pirated material or pornography.  ... 
In the past, some have raised concerns about Pipcu's process in adding a website to the IWL [that's "Infringing Website List"]. Ernesto Van Der Sar is the editor of TorrentFreak, a news site that covers issues around online piracy. When Pipcu announced its intentions in March this year, Mr Van Der Sar said he worried about the implications.
"As with all blocklists there is a serious risk of overblocking. Without proper oversight, perfectly legal sites may end up losing good advertising opportunities if they are wrongfully included." 
Sunblock? I grow my own, says Stanford
The battle against online piracy has seen content creators attempt many different strategies in order to stem the flow of illegal downloading. In the UK, the courts have ordered internet service providers to block almost 50 different websites offering pirated content, either by direct download or through peer-to-peer sharing. While effective in lowering the traffic of these sites, filtering is a flawed prevention method - many internet users are adept in using different technologies to circumvent the court-imposed restrictions. This latest attempt looks to hit the owners of these websites in a more painful way - by stopping advertising revenues from coming in".
Says the IPKat, this seems a novel and imaginative way to alert consumers that they may be about to purchase counterfeit or otherwise infringing goods. He's not too familiar with the technology, but he recalls that those who run offending sites often have whole sequences of pages that link to one another, sometimes from those that offer genuine goods and services but which click through to more dubious delights. How easy is it for target websites to circumvent this initiative? Do readers know?

Merpel is quite fascinated with this. On one level she'd love to know what might happen if the message on the PIPCU banner read, somewhat untruthfully: "It is an offence to purchase pirate and infringing goods -- and we know who you are, so you'd better close this browser page pretty fast". On another level she speculates that some of the more retaliatory site owners might perpetrate much the same trick on the police themselves, telling internet users that they had reached a fake police site and redirecting them to a "real" site of their own.

Phew, what a scorcher here
Sunblock here

The heart of the matter: one patent, two views

This guest blogpost comes courtesy of Katfriend and occasional contributor Suleman Ali (Holly IP), a patent attorney whose interest lies mainly in the biotech and medical fields --an interest that is quite germane to the case he writes about here about a patent for a collapsible device for filling holes in the heart and how a trial judge and an EPO Opposition Division could reach quite different conclusions when confronted with essentially the same evidence:

AGA Medical Corporation v Occlutech (UK) Limited [2014] EWHC 2506 (Pat) is a decision by Mr Justice Roth in the Patents Court, England and Wales. AGA Medical claimed that Occlutech had infringed its patent EP (UK) No. 0,957,773 to a medical device for occluding defects in the atrial septum of the heart. Occlutech responded that the patent was invalid on the basis of a prior disclosure in a clinical trial and on other grounds. An EPO Opposition Division had revoked the same patent last year, and is in appeal from that decision. 
Issues of Interest 
 This judgment has the following interesting points:
* a discussion of the case law on confidentiality.
* a finding that a clinical trial did constitute novelty-destroying disclosure. The EPO Opposition Division found the same clinical trial to be confidential and thus not novelty-destroying.
* a discussion of when an ‘intermediate generalisation’ adds matter, in particular where features which are not presented as ‘inventively distinct’ and are disclosed in a particular context are used as the basis of amendment. In the present case Mr Justice Roth held that the amendments did not add matter, but the EPO opposition division held that they did. 
The technology 
The patent concerns a device which can be used to fill a ‘hole in the heart’, i.e. a hole in the wall (the septum) between the two parts of the heart. The device is collapsible and in its collapsed form can be passed to the heart through a blood vessel using a catheter, thus avoiding the need for open heart surgery. The device is shown in the adjoining figure in the form it adopts to seal the hole in the septum. It is formed of two discs joined by a thinner cylindrical waist and is made of woven strands of a ‘memory metal’ which resumes its shape after being compressed. When inserted into the hole the discs occupy a position on either side of the wall keeping it in place. At least one of the discs is ‘cupped’ (rather than flat) which means only the perimeter of the disc contacts the septum, and this allows a tight join. 
Claim 1 of the patent as presented in the decision is as follows:
"A collapsible medical device, comprising
(1) a plurality of metal strands forming a tubular braided metal fabric having an expanded preset configuration,
(2) the ends of the strands of the tubular braid being secured in order to prevent the strands from unravelling,
(3) wherein said medical device is shaped to create an occlusion of an abnormal opening in a cardiac septal wall,
(4) whereby said expanded preset configuration is deformable to a lesser cross-sectional dimension for delivery through a channel in a patient's body,
(5) the woven metal fabric having a memory property such that the medical device tends to return to said expanded preset configuration when unconstrained,
(6) the expanded preset configuration comprising first and second expanded diameter portions respectively at distal and proximal ends of the device and a reduced diameter portion disposed between the two expanded diameter portions, said reduced diameter portion having a length dimension which approximates a thickness of the septal wall at the abnormal opening,
(7) wherein at least one of said first and second expanded diameter portions is cupped towards the other of the expanded diameter portions causing, in use, the perimeter edge of the cupped expanded diameter portion to fully engage the sidewall of the septum,
(8) the collapsible medical device further including an occluding fiber retained within said tubular woven fabric."
Other Proceedings 
The parties have been in litigation before in the UK over an earlier patent (see Occlutech GmbH v AGA Medical Corporation [2009] EWHC 2013(Ch), upheld on appeal [2010] EWCA Civ 702, reported by the IPKat [see here and here]. The IPKat has also previously reported litigation between the parties in Sweden [see guest post by Peter Kenamets, here]In the case of the present patent there is ongoing litigation between the parties in a number of jurisdictions, including the Netherlands. As mentioned above, the patent is in appeal at the EPO from a decision of the Opposition Division. 
Prior Use In A Clinical Trial 
Before the priority date a clinical trial was carried out using AGA devices in three children in the Bratislava Children’s University Hospital. Two important issues arose from this:
* did the devices that were used have at least one or two ‘cupped’ discs (rather than flat discs)?
* was the trial confidential?
The doctors that had taken part in the trial gave evidence. Dr Gougen’s evidence indicated none of the devices was cupped, though he admitted this was something he might not have noticed. Professor Masura's recollection was clearer: he said that two of the devices had cupped discs. Mr Justice Roth found him to be ‘a very clear witness’ and ‘found his evidence convincing’. Dr Gavora said all three of the devices had cupped discs. However his evidence was less convincing and it was noted that he had previously given contradictory answers on the same issue before a Dutch Court. Clearly there were significant discrepancies between the evidence of the witnesses, but Mr Justice Roth came the conclusion that ‘at least some of the three devices’ used in the trial had cupped discs. 
The Opposition Division was much more critical of the evidence given by the same witnesses and decided that it was ‘not convinced’ that any of the devices used in the clinical trial had a cupped disc. 
Were the Trials Confidential? 
Mr Justice Roth gave emphasis to the following paragraph from Coco v AN Clark (Engineers) Ltd [1969] RPC 41 on the circumstances in which confidentiality is imposed:
"It seems to me that if the circumstances are such that any reasonable man standing in the shoes of the recipient of the information would have realised that upon reasonable grounds the information was being given to him in confidence, then this should suffice to impose upon him the equitable obligation of confidence. In particular, where information of commercial or industrial value is given on a business-like basis and with some avowed common object in mind, such as a joint venture or the manufacture of articles by one party for the other, I would regard the recipient as carrying a heavy burden if he seeks to repel a contention that he was bound by an obligation of confidence"
He noted that none of the doctors involved in the clinical trial had been asked to sign a confidentiality or non-disclosure agreement. They gave evidence that they had never been given the impression that the devices were confidential. In addition he felt that ‘there is no presumption of confidentiality simply because this was a clinical trial. Everything depends on the facts’. Professor Masura had spoken about the devices in briefing sessions to other doctors at the hospital and had described the device and clinical trials at a presentation at a conference. He had acted in a way that he did not seem to perceive himself to be under a duty of confidence. It was also clear that the doctors were not embarking on a commercial venture, so the disclosure of the devices was not done in a ‘business-like’ way that may have led to an assumption of confidentiality. 
Mr Justice Roth also considered Carflow Products (UK) Ltd v Linwood Securities (B’ham) Ltd [1996] FSR 447 as to the circumstances in which an equitable obligation of confidence arose. In that case Jacob had said that, on an objective basis, an obligation of confidence is not imposed merely because a prototype is being offered for sale. 
Mr Justice Roth concluded the clinical trial had not been confidential and that it therefore destroyed the novelty of the patent. However he added that the EPO's Opposition Division had reached the opposite conclusion: the fact it was a clinical trial gave rise to a prima facie assumption of confidentiality which had not been rebutted. The Opposition Division had based its view on decisions T906/01, T152/03 and T229/06. However, I believe there are EPO decisions that would have supported Mr Justice Roth’s position on whether a clinical trial per se is confidential, such as T158/96 and T7/07.
Obviousness Over an Earlier Prototype 
Dr Gu of AGA had disclosed an earlier prototype of the device in a presentation at a medical congress before the priority date. That device had two flat discs, i.e. no cupped discs. In the present case the obviousness analysis was essentially to determine whether a device with one or two cupped discs was obvious from the disclosure of the earlier prototype by Gu. On this question Mr Justice Roth accepted the view of one of the expert witnesses, Professor Gewillig, that the skilled person presented with the earlier prototype would know that a flat disc device would lead to a serious risk of clotting due to thrombus formation in areas where the flat disc did not fully contact the septum. The skilled person would seek ways to avoid this risk, and adapting the earlier prototype to introduce cupped discs was an obvious modification that could be derived from prior art devices. One of AGA’s expert witnesses had argued that the alternative solution of shortening the waist would be adopted instead. In response Mr Justice Roth pointed out that the fact there may be a number of other obvious modifications did not mean the modification at issue (introducing cupped discs) was not obvious. 
Insufficiency 
Occlutech’s argument on insufficiency was based on the fact that claim 1 required the disc edge to ‘fully engage with the sidewall of the septum’. They submitted this meant there could be no gaps all the way round the disc edge. That was difficult to achieve and impossible to measure. Mr Justice Roth said the skilled person would not read this feature literally, realising that the septum is not completely flat and there will be points of no contact. Thus ‘full engagement’ does not require ‘perfect engagement’ and any gaps would be ‘insignificant and unintentional’. Construing the feature in this way led to the insufficiency attack failing. 
Added Matter 
Two of the four added matter attacks are discussed here. The first attack alleged that claim 1 added matter because the requirement of each end being ‘contained by means for securing each end’ had been deleted from the claim as filed. The arguments were lengthy and complex on this point, but ultimately Mr Justice Roth found the amendment did not add matter because the application taught a method which could be used to produce a device a device according to claim 1 where one end was not secured. 
The EPO Opposition Division had taken the opposite view. It applied the 3-part test described in the Guidelines at Part H, Chapter V-3.1: 
The replacement or removal of a feature from a claim does not violate Art. 123(2) if the skilled person would directly and unambiguously recognise that: 
(i) the feature was not explained as essential in the disclosure; (ii) the feature is not, as such, indispensable for the function of the invention in the light of the technical problem the invention serves to solve; and (iii) the replacement or removal requires no real modification of other features to compensate for the change.
The EPO found the amendment to fall foul of all 3 limbs of the test and therefore to add matter. 
The second added matter attack of interest was based on introduction of the feature of one or both discs being ‘cupped’. While this feature became important in determination of novelty and inventive step it was not in the claims of the application as filed and is essentially only disclosed as part of specific embodiments shown in the Figures. 
Adding the feature to claim 1 was an ‘intermediate generalisation’. Mr Justice Roth noted from Palmaz’s European Patents (UK) [1999] RPC 47 that:
"If the specification discloses distinct sub-classes of the overall inventive concept, then it should be possible to amend down to one or other of those sub-classes, whether or not they are presented as inventively distinct in the specification before amendment. The difficulty comes when it is sought to take features which are only disclosed in a particular context and which are not disclosed as having any inventive significance and introduce them into the claim deprived of that context. This is a process sometimes called 'intermediate generalisation'."
The application did have some discussion of the cupped feature, describing how it ensured complete contact with the septum and the fact that this would reduce the chance of bacterial endocarditis. Mr Justice Roth felt this made it clear to the skilled person that the feature was not tied to other features of the specific embodiments, and so could be added to claim 1 without adding matter. 
Again the EPO Opposition Division had taken the opposite view, holding that the feature of the discs being cupped was tied to the feature of the discs being of different sizes, and therefore generalising the feature to the device of claim 1 added matter. 
Infringement 
It was decided that, if the patent were valid, Occlutech’s devices would have infringed. 
Occultech had also asked for a declaration of non-infringement for a specific device which did not have fabric within the hollows of the disc. Mr Justice Roth indicated that such a declaration would have been given if the patent had been found to be valid. 
Conclusions


It is striking that Mr Justice Roth and an EPO Opposition Division managed to reach such different conclusions on every point that was being decided on this case, though they had substantially the same evidence in front of them. It is not unexpected that the Opposition Division was stricter on evidence relating to a prior use disclosure and on added matter. However it does lead one to question whether more could be done to achieve harmony between national courts and the EPO.
Thanks so much, Suleman! Readers: could more have been done to achieve harmony between national courts and the EPO?

Monday, 28 July 2014

Whac-A-Mole Trade Mark Litigation: Using U.S. Trade Mark Litigation to Combat Foreign Counterfeiters

Beats By Dre
Over the past month, a number of well-known global brands have filed U.S. lawsuits against foreign  (predominately Chinese) online businesses for the sale of counterfeit products to U.S. consumers. Beats Electronics, LLC (dba Beats By Dre; “Beats”), the audio product manufacturer and online music provider, filed a lawsuit in the U.S. Federal District Court of Northern Illinois (Case No. 14-cv-5209) on July 9th against several foreign counterfeiters alleged to have sold counterfeit Beats products to U.S. consumers. Their complaint claimed that such acts constituted federal trade mark infringement, and violations of federal and state unfair competition laws. Similarly, Lululemon Athletica Canada, Inc. (“Lululemon”), the popular Canadian producer of yoga clothing and other sportwear, filed an almost identical lawsuit on July 17th in the same U.S. District Court (Case No. 14-cv-5478) against similar foreign online counterfeiters who allegedly sold knock off-versions of their apparel to U.S. consumers.

In both of their complaints, Beats and Lululemon claimed that foreign-based counterfeiters are increasingly damaging their U.S. market sales through direct sales to U.S. consumers that bypass traditional counterfeit import safeguards. Particularly, they claim that the named counterfeiters established deceptively similar websites to Beats and Lululemon’s own sale sites, and that they utilized search engine optimization tactics to increase their website rank on sites such as Google in order to directly market their counterfeit goods to U.S. consumers. Such counterfeiters are also claimed to be increasingly able to evade detection by U.S. Customs and Border Protection when exporting their goods to the U.S. by utilizing third-party payment systems such as PayPal and Western Union, and using small quantity direct mail to ship their products to U.S. purchasers.


Although these cases were only filed days ago and show how foreign counterfeiters have recently been adjusting their tactics to sell their counterfeit goods to U.S. consumers, they are by no means new and have become common means for global brands to seek U.S. enforcement against foreign counterfeiters. Beats sued several similar foreign counterfeiters last September (Case No. 13-cv-6724) based on the same claims in their current suit and prevailed in a default judgment, resulting in the seizure of nearly 1,500 domain names, 50 PayPal accounts, and statutory damages totaling $2 million per infringement. Lululemon prevailed in a similar lawsuit brought in the U.S. Federal District Court in Southern New York in June last year (Case No. 13-cv-4385-KPF) against a group of foreign counterfeiters who had established confusingly similar fake websites to sell counterfeit Lululemon products. Like Beats, Lululemon was victorious in a default judgment, resulting in $23.3 million in damages and injunctive relief including transferring counterfeit domains to Lululemon and restraining the named foreign counterfeiters from utilizing third-party U.S. payment and service providers who facilitated their U.S. counterfeit sales. Additionally, other well-known global brands such are Hermes and The North Face have sought and succeeded in similar actions in the U.S.

At face value, these U.S. based trade mark cases against foreign counterfeiters appear to be effective in providing compensation to damaged brands and helping to dismantle the U.S. instrumentality such counterfeiters use to sell their fake goods in the U.S. Yet a further examination shows that the redress obtained from these cases is incomplete and even ineffective at deterring repeat infringements by such counterfeiters. First, commentators have validly questioned the ability of a global brand to obtain actual monetary recovery from these foreign counterfeiters once they receive a U.S. judgment in their favor. China, home to an estimated 80-90% of the world’s counterfeiters and many of the counterfeiters identified in Beats and Lululemon’s lawsuits, will not honor a U.S. judicial judgment in their Courts. This makes it unlikely that any global brand could effectively enforce their U.S. judgment against a Chinese counterfeiter’s assets in China. Further, as such foreign counterfeiters are reported to be notoriously careful to ensure that their third-party U.S. payments accounts have low balances, it is unlikely that the large damages awarded from these recent U.S. cases will be recovered in the U.S.



The lack of enforceability of these U.S. judgments also makes them less likely to dissuade repeat infringement. Without the ability to enforce such judgments from a monetary standpoint, they provide no effective legal deterrent to repeat action, meaning that there is nothing to stop foreign counterfeiters from reestablishing their online markets through different domain names and locations once they are shut down. These deficiencies coupled with the sheer number of similar U.S. lawsuits increasingly make such cross-border enforcement actions, by themselves, an expensive and time-consuming Whack-a-Mole exercise (a futile repetitive act for those who did not have the pleasure to play Whac-a-Mole as a child).

Although these recent cases highlight the ineffectiveness of combating foreign counterfeiters by U.S. trade mark litigation alone, complementing such efforts with enforcement actions in the countries where the counterfeiters reside may be a more effective solution. For example, both Beats and Lululemon have many of the same trade marks registered in China that they claim rights to in their U.S. lawsuits. This gives both brands legal rights under Article 52(3) of the Trade Mark Law of the People’s Republic of China (CN 026) against parties who create counterfeit versions of their products utilizing their registered Chinese marks. The enforcement of such trade mark rights in China has numerous challenges and costs, but it is arguably improving as the U.S. Trade Representatives Office reported this year on better access to redress in Chinese civil courts as well as improved cooperation between Chinese and U.S. law enforcement on deterring the cross-border flow of counterfeit products.


As online marketplaces are now the main sales point for imported counterfeit goods, it is likely that global brands will increasingly need to focus their enforcement efforts both in the originating and the export sale markets in order to enforce their trade mark rights effectively. Only conducting both types of enforcement actions can better guarantee that global brands can effectively prevent the cross-border trade of counterfeit versions of their products. 

Never too late! If you missed the IPKat last week ...

Here is the fourth in our weekly series of compilations by our good friend and former guest Kat Alberto who is currently endearing himself to all of us and incidentally making himself indispensable by summarising the feature posts (excluding the regular around-ups) that  appeared on this weblog over the previous week. Newcomers to this blog (welcome!) and those who were busy last week can see what they missed and decide conveniently for themselves what they want to chase up.  Last week's features are as follows:

Some weeks ago this weblog reported the first episode of the legal battle between YouTube and Delta TV, which owns copyright over a number of South American soap operas that were uploaded on the popular video platform without its authorisation. The First Court of Turin’s interim decision dismissed Delta TV’s claims. Here Eleonora tells how the interim appeal went, with the Italian court discussing the relationship between Enforcement and E-Commerce Directives, shields from liability available for new generation providers (once known as “active”) and, most importantly, a rather innovative approach to ISPs’ filtering duties under the E-Commerce Directive regime.


A modest celebration after the IPKat's page-view counter reached the stunning figure of 10,000,000. Merpel, Jeremy and all the present and past bloggers have a deep respect and affection for their readers -- and how sweet it is when their affection is reciprocated.


This is the third and perhaps final episode of Darren’s series on the role of “precedent” in the European Patent Office (‘EPO’) [the previous two posts are here and here]. This time Darren focuses on the issue of res judicata and how it differs from precedent, both from a common and civil law perspective. If you have not yet taken a look at this essential trilogy, here's your chance to do so.


Last week Jeremy broke the news of AG Cruz Villalon providing his Opinion in Case C‑364/13, International Stem Cell Corporation v Comptroller General of Patents, concerning the concept of “human embryos” under Article 6(2)(c) of Directive 98/44 on the legal protection of biotechnological inventions and, in particular, of whether “unfertilised human ova whose division and further development have been stimulated by parthenogenesis” fall into that category. In this post Annsley leaves the floor to the in-depth analysis of Shohta Ueno, an Associate in Allen & Overy's IP Litigation team in London, who helpfully summarizes the key points of the AG's Opinion and place his bets on whether the CJEU will follow suit.


Should the US have resale royalty (droit de suit) and generalised moral rights? Starting from the hearing held on 15 July in the U.S. House of Representatives Subcommittee on Courts, IP and the Internet, Marie Andrée portrays the colourful state of law and case-law concerning these two typically French non-economic rights -- the right of artists to profit financially from the subsequent resale of their work and “moral rights”, by which is meant here the rights of attribution and right of integrity for all works protected under US copyright law.


Eleonora covers a recent decision by the District Court of Rome, considering Wikimedia’s nature as hosting provider and its liability for alleged defamatory content appearing on the world's most famous open encyclopaedia.  


This is a hard-to-believe story about some Belize-based company attempting to register trade marks for the flight numbers of the two ill-fated Malaysian Airlines jets -- the recent MH17 downed in Ukraine and MH370, which mysteriously disappeared somewhere in the Pacific Ocean on 8 March. Jeremy considers this difficult story in light of the EU TM Directive and US Lanham Act’s provisions dealing with trade marks contrary to public morality. This post also concerns the very role of the IP professional when asked to deal with clients’ requests. Would you file an application for those unlucky flights’ numbers? And for “Titanic”? Do participate in this discussion, which has already attracted a significant number of comments.


After the Directorate General (DG) for Internal Market and Services of the European Commission released its much-awaited Report on the 9,500 responses to the Public Consultation on the Review of EU Copyright Rules, Eleonora launches a series of posts delving into what the respondents said. This first episode explains who participated to the consultation and their takes upon cross-border access to online content and the ‘making available’ and the ‘reproduction’ rights within the context of digital transmission.


The second episode of Eleonora’s series on Public Consultation on the Review of EU Copyright Rules’ addresses respondents’ takes on browsing and linking, particularly in the field of news. Eleonora explores the relation between the Consultation’s outcome and the CJEU’s landmark decisions in Svensson and PRCA, as well of ancillary rights over on-line news that is being discussed a bit all over Europe.


Here’s another ruling in the famous saga of Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2014] EWHC 2286 (Ch), concerning the alleged infringement of the UK club-operator Comic’s “The Glee Club” trade mark by the producers of the “glee” TV series [previous episodes here and here]. Earlier decision held TCF’s infringement of Comic’s trade marks, and Roger Wyand QC is now called to decide whether and how the claimant's requests for injunction, destruction of infringing materials, account of profits, disclosure of information, publicity order, and interim payment should be granted. He did so in a very proportional way, Jeremy thinks.


Rebecca writes about a professional YouTuber, Ms Phan, using other people’s songs in her videos and being sued by a label owning copyright on those works. Some time later, one of the artists who composed the allegedly infringed song pops up and endorsed Ms Phan’s activity against his own label, calling copyright a “dinosaur”. That’s evolution, baby.


Katfriend Aaron Wood (Swindell & Pearson) reports a recent decision in Enterprise Holdings v Europcar Group UK Limited & Another [2014] EWHC 2498 (Ch), where the Community Trade Mark Court, England and Wales, addressed the long-debated issue of surveys in IP proceedings of a trade mark.


Blackberry’s past misfortunes and Microsoft’s intention to eliminate 18,000 employment positions have diverging effects on brand image. This is not only as the vast majority of laptops have Microsoft’s operating system installed, but also because the company formerly led by Bill Gates justifies the lay-off with promises to expand into new business fields. What if those promises are not delivered, Neil wonders?


Merpel is a kitten that everybody in the IP Community knows, but this familiarity does not in any sense lessen her ability to spring a surprise. This time, she shows this weblog’s readers a bit of her knowledge of modern and medieval geo-politics, penning a most learned article on the curious little fiefdom of Eponia. with blurred borders and a buoyant economy based on IP tourism, Eponia is populated by restless inhabitants linked to their Leader through vows of stability and obedience. More or less like Game of Thrones, but without mass murders. So far. 

Daylight robbery, value for money and patent renewals: it's time to talk

The IPKat and Merpel regularly receive vast quantities of marketing literature. Much of it is plainly irrelevant to the content of an IP weblog and some of it, while relevant to the subject, is of insufficient interest or significance to mention to our readership. However, the following piece of marketing literature is not only relevant but a little cheeky, if not perhaps a bit offensive.  In relevant part it runs like this:

Daylight Robbery: the hidden fees charged for annual patent renewals
This is how the usual patent
renewal businesses are portrayed
Over eight million patents are held worldwide by many thousands of businesses. All have to pay regular renewal fees, usually every year, to the Patent Office for each country to keep their patents in force.

The amount payable is usually modest (£100 or so) – varying from country to country and with the age of the patent. But you can be charged up to 4 times the actual cost to make these payments! [Goodness! Merpel exclaims: but where does this assertion come from?] This extra cost quickly mounts up when multiple patents are involved in many countries.

How does this happen? Initially patent agents (or the specialist renewals companies like CPA Global, Dennemeyer and Patrafee that they appoint) assume responsibility for making these payments – often without explaining what they are about.

Fees charged for everything in the patent world are high – in most cases justifiably because patent laws are complex. As a patent owner you get used to regular bills – and they are difficult to challenge because of this complexity.

But making renewal payments is essentially a straight forward and recurring exercise and does not justify the charges currently being levied.

Why do most businesses put up with this situation? For two reasons, firstly because it is difficult to find out exactly how much is payable and secondly because they do not trust themselves to make this important payment on time each year.

So RenewalsDesk.com has come up with a simple solution. It has collated all of the information about these renewal costs on a freely accessible website.

And if you wish, you can set up an auto-pay arrangement to ensure the payments are made every year until you decide to stop them. The charges levied for this service are a fraction of the current costs and are clearly shown.

You would not normally accept paying up to 4 times the true cost of your bills. Why put up with it any longer for your patent renewal charges? ...
RenewalsDesk.com is run by RenewalsDesk Ltd, a company based in London. The website does not lead visitors in the direction of any particular named individual, but the email received by this Kat offers an interview with Katherine Hedley, with whom this Kat thinks he has yet to be acquainted.

This Kat is not in a position to make a value-for-money comparison of specialist renewals companies like CPA Global, Dennemeyer and Patrafee with each other or with web-based systems such as RenewalsDesk (though his sure that many of his readers will have plenty to say on the subject). He is however decidedly uncomfortable with the designation of their services and pricing as being "daylight robbery", or indeed any other kind of robbery, in what had struck him as being a genuinely competitive market for services that patent owner are quite welcome to dispense with.

Merpel notes the covering email which introduces the text quoted above, in which the author writes:
"In the UK, businesses hold onto their patents for less time than in almost any other part of the world (according to research by the WIPO) and that may be due to these fees which are plagued with hidden fees often resulting in patent holders paying 4x more than they need to for each patent they hold". 
She suspects that there may be other, more cogent reasons and, again, would love to hear from readers on this issue.

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