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.

Monday, 29 September 2003

EU SOFTWARE PATENTS COME A STEP CLOSER

Last week, the European Parliament approved a proposal allowing for the patentability of computer-implemented inventions. However, it added 72 amendments to the original draft, limiting the proposed directive’s scope. The highlights according to the IPKat are as follows:

 The proposed directive is not meant to alter the existing provisions on the patentability of computer-related inventions under the European Patent Convention (EPC). Instead, it aims to provide guidance to the EU Member States in interpreting the EPC.
 In accordance with the EPC, computer programs “as such” remain unpatentable (see Article 5(1)(a)). The proposal also emphasises that computer-implemented inventions do not get special treatment and are still subject to the normal criteria of patentability. The proposed directive just gives guidance on how to apply those criteria.
 The Parliament has deleted a recital stating that the EU and its Member States are bound by TRIPs and that Article 27(1) of TRIPs calls for patent rights to be available for all inventions, including, by implications, computer-implemented inventions. (Amendment 31 deleting what was previously Recital 6).
 The amendments introduce a number of defences, including one where use of the protected material is necessary to ensure interoperability and to allow different computer networks to communicate (Articles 6 and 6a),
 Recital 14 will reiterate that business methods remain unpatentable.
 The EU has expressed its exasperation at the European Patent Office’s lack of transparency and its practice of obtaining payments for the patents that it grants, which, according to the newly introduced and strongly worded Recital 7(1)(b), “harms the public nature of the institution.”

The Commission is unhappy with the extent of the amendments and Commissioner Bolkestein threatened, ahead of the vote, that if the amendments were passed the Commission may withdraw the directive and instead push directly for the EPC to be renegotiated.

The IPKat, in welcoming the draft directive, makes the following comments:

 This directive is a strange exercise in harmonisation. Usually it’s the substantive law that gets harmonised. This time round the substantive law is already harmonised but its mode of interpretation and application to the facts differs from country to country. If this “second tier” of harmonisation succeeds for patents, will it also be used for reinforcing the harmonisation of other IP rights, notably trade marks?

 Recital 6 of the previous draft affirmed the European Union’s commitment to implementing Article 27(1) of TRIPs. Since this provision contained no excuse for omitting any software-related inventions from patentability, it could hardly be expected to survive to the final version of a directive which provides only limited patentability for such inventions. The decision to scrap it was therefore a sensible one.

 The old version of Recital 18 promised that the “interoperability” defence to copyright infringement under the 1991 Software Directive would remain. The new version goes further and confirms that acts permitted under that directive will not infringe a software patent either. This is welcomed in that it fosters the development of new and interoperable software while still protecting a software patent owner against serious unauthorised commercial exploitation of his invention.

 We appear to have a curious situation in which the European Commission is telling Member States how to interpret domestic laws which they adopted in implementing the non-EU European Patent Convention. The reality is not however a problem. What we have is the main power-house states of the EU using the Commission as a mouthpiece for articulating demands to all the other EU Member States that they harmonise the way they apply their laws.

 The deletion of Recital 13 -- which stated that algorithms that do not have a “physical environment” are unpatentable as being non-technical -- does not necessarily mean that suddenly all algorithms are patentable. The basic criteria of patentability still (i) exclude mathematical formulae and (ii) demand industrial applicability. However, if an algorithm can satisfy that criterion, there is no reason why it should be excluded from being patented.

 It is as plain as a pikestaff that business method patents are regarded by most Europeans as a pain in the proverbial and they appear to have left a trail of misery and uncertainty behind them in the US. The IPKat is happy to see them remain out in the cold until a serious case for patenting them can be raised.

Against software patents? Click here
If you really enjoyed this blog you might want to click here or here
All this software stuff too high-tech for you? Why not try softwear instead?


OCLC THROWS THE BOOK AT LIBRARY HOTEL

The Chicago Sun-Times reports on an unusual trade mark infringement suit. The Online Computer Library Center (OCLC) -- the body that owns trade mark registrations for the Dewey Decimal library classification system -- is suing New York’s The Library Hotel for failing to credit the OCLC as the owner of the Dewey trade marks. The hotel contains some 6,000 books, ranged across its ten floors, each of which is dedicated to one of the Dewey system’s main categories. Thus room 800.001 on the literature floor, for example, features a collection of erotica, while Room 1000.003 on the general knowledge floor pays homage to the encyclopedia.

The OCLC is claiming permanent injunctive relief and triple profits by way of damages. Said Joe Dreitler, acting for OCLC:

"This is a cooperative of libraries, a nonprofit organisation. The last thing they wanted to do was have lawyers get involved in filing a lawsuit. But they also recognise that one of their crown jewels, as an asset, is Dewey Decimal".

Craig Spitzer, the Library Hotel's general manager, responded: "We are not a library lending books, but rather we have created a unique hotel experience for booklovers to enjoy. We do not believe that our guests or other consumers are confused into thinking that the Library Hotel's hospitality services and the OCLC's information services come from the same source”.

The IPKat quietly ponders on whether there is any way of referring to the Dewey Decimal classification system other than by using its trade mark, as all good librarians appear to do. It would be nice to see whether courts on both sides of the Atlantic would regard the word DEWEY as being not a little generic.

Check out the Dewey Decimal System here and compare it with the Library of Congress Classification
Dewey classification for Gideon’s (and other) bibles here
Discover Melville Dewey here
Other thematic hotels here, here, here, here and here


A WORD IN YOUR SHELL-LIKE

The civil rights organisation, Liberty, has raised concerns about privacy implications of Transport for London’s Oyster smart card scheme. The cards allow journeys and season-tickets to be paid for in advance and can be easily swiped over ticket-gates without being put into the machine. However, they also have an individual ID number and record the contact details of the owner and all of the journeys he or she has made. Although London Transport has said that the information about journeys made will be stored for planning purposes only, Liberty remains unconvinced, fearing the onslaught of “function creep.” According to its campaigns director, Mark Littlewood: “All too often we have seen data collected for one apparent purpose, only for it to end up being used for something entirely different.” In fact, John Monk, of the Oyster Project has admitted that the information could be used as evidence in criminal trials.

The IPKat will keep a watching brief on this story. If the information genuinely is only used anonymously for planning purposes, its collection and retention is unobjectionable. There may be more serious concerns it is used for other purposes but in that case there will be Data Protection Act implications.

Invade an oyster’s privacy here or here
Grow your own oysters here
Have fun eating oysters here


Friday, 26 September 2003

A HAPPY NEW YEAR

This evening sees the commencement of Rosh Hashonoh, the Jewish New Year. The IPKat would like to take this opportunity of wishing a Happy New Year to all its readers, whether they are Jewish or not, and to offer his hope that we all will enjoy together a year of peace, of friendship and cooperation, of respect and tolerance, and of truly enjoyable developments in the field of intellectual property.

COUNCIL'S DISCLOSURE NOT ANTI-SOCIAL

An unusual slant on the protection of confidentiality cropped up in Maddock v Devon County Council, a mid-August out-of-term case before Judge Rich (a Deputy Judge) which has somewhat belatedly come to light through the subscription-only Lawtel service. What happened was this. Maddock wanted to become a social worker and obtained a university place to study that subject. The council subsequently disclosed information on its files to the university concerning Maddock's fitness to be a social worker, following which the university withdrew Maddock's place. Maddock then sued the council for damages for breach of confidence, for making allegedly negligent misstatements and for infringement of Art.8 of the European Convention on Human Rights. The council conceded that there was an obligation of confidentiality in respect of its files, but argued that the disclosure of the information was necessary in the public interest, claiming that its social services had been involved in the upbringing of Maddock's son almost since his birth, that Maddock had refused to accept any responsibility for his difficulties and that his name was eventually placed on the child protection register on the ground of emotional abuse. The council later refused to withdraw its communications. As a result of the council's disclosure, the university removed Maddock from the course after conducting its own inquiry, having given Maddock an opportunity to put her case.

Judge Rich QC dismissed all Maddock's claims. In doing so he observed that it was for the council to decide whether to make the disclosure since there was no requirement for it to obtain a court ruling before doing so. He added that in general, as a matter of good practice, a party in the council's position, in a case such as this, should inform the subject of the disclosure of that intention in enough time to enable that person to seek an injunction from the courts before the intended disclosure takes place. In this case, though, the council's decision not to do so was justifiable.

The IPKat is unaware of other cases in which a party considering the communication of confidential information would be expected by a court to let the subject of that information know first. He notes that the other party of one's intentions before committing a potentially wrongful act is however a concept well known in European trade mark law, where the European Court of Justice has said that parallel importers should notify trade mark owners before importing repackaged goods into countries within the European Economic Area.

Thinking of not keeping a secret? Read here, here and here
Best secrets revealed here, here and here


WOMEN: GET BACK TO YOUR KITCHENS!

An article in today’s New York Times draws attention to the scale of music piracy occurring outside the USA. Asia (particularly China) is identified as a hotspot, but so is Europe, even though downloading is not on the same scale as in the US because fewer people in Europe have internet access. Two “problems” are identified: (1) the weakness of national copyright laws in these areas and (2) the ubiquity of the activity. According to the author:

“In truth, the real impediment to legal action is not public opinion, but Europe's crazy quilt of laws. The European Union passed a uniform copyright protection law similar to that in the United States. Now, it is up for ratification in each member state — a process that has bogged down.”[sic]

The IPKat thinks that the author has misunderstood the way Europe works. The “crazy quilt” is the result of a carefully crafted political balance between the Member States of the EU that recognises that each is independent and sovereign. In any event, despite the existence of common basic norms created by treaties, it does not necessarily follow that every other country in the world should follow the lead of the US and its rather heavy-handed approach to combating music piracy.

However, the prize for quote of the week must go to Gerd Gebhardt, chairman of the German Phonographic Industry Association, who complained: "People in their 60's are burning CD's at home…Housewives, who should be cooking, are burning."

Is a woman’s place really in the home? Click here, here, here, here and here for some modern perspectives
Click here, here and here for further views



THE IPKAT BOOK OF THE MONTH: SEPTEMBER 2003

Ian Cram is a Lecturer in Law at the University of Leeds, England. His book, A Virtue Less Cloistered: Courts, Speech and Constitutions, addresses the issues raised by the conflict between, on the one hand, “open justice” -- the media’s right to report and comment on litigation -- and, on the other hand, the administration of justice and the privacy of the individual. Cram’s approach is to compare the constitutional treatment of this conflict by contrasting the position taken in four common law jurisdictions: the US, the UK, Australia and Canada. The author does not however neglect civil law jurisdictions, paying particular attention to the experiences of Spain. Published by Hart Publishing (Oxford and Portland, Oregon), the book is short by modern legal standards, with only around 220 pages of substantive text. Yet it is strong on detail and analysis. What’s more, its conclusions address court-related speech in the electronic age, dealing with the role which the Internet has come to play in the provision of access to, and dissemination of, information which it was once -- in practical terms -- quite straightforward for courts to control.

The IPKat enjoyed reading this book. As well as providing a narrow case-and-statute based legal analysis, the author looks closely and thoughtfully at the contribution of thinkers such as Mill, Bickel, Dworkin and Scanlon as well. It is definitely a thinking cat’s book, well worth the effort of reading.

ROLLING BACK IP RIGHTS?

Yesterday the IPKat attended Peter Maggs’ seminar at the Queen Mary, University of London, Intellectual Property Research Institute. Professor Maggs took as his theme the question of whether intellectual property rights are being “rolled back” (i.e. limited) in the US and used the previous year’s case law to prove his point.

There was a definite “roll back” in trade mark law. This could be seen from the Victoria’s Secret case (requiring actual dilution rather than a likelihood of dilution to succeed in a federal dilution claim) and Dastar (placing the focus of an enquiry into confusion under §43a of the Lanham Act, which is the unfair competition provision, on deception as to the physical source of goods, rather the source of ideas contained within those goods). Also, in barcelona.com the court refused to apply Spanish trade mark law that may have granted the city of Barcelona trade mark rights in Barcelona, instead applying US law, which emphatically did not grant such rights. The only exception was California Innovations, where the court widened the conditions under which geographically misdescriptive marks can be registered.

Copyright however was more of a mixed bag. Eldred v Ashcroft (where the Supreme Court upheld the Sonny Bono Act, which extends the term of copyright in the US to 70 years) definitely “rolled forward” IP rights, as did Verizon Internet Services (where the ability of RIAA to get the details of downloaders from ISPs on demand was upheld). However, a “roll back” was visible in Veek, where it was held that a privately written model building code that was subsequently passed into state law was freed of its copyright and could be posted on the defendant’s website without giving rise to copyright infringement. He also pointed to 2 conflicting Digital Millennium Copyright Act (DMCA) anti-circumvention cases. In Chamberlain, generic garage door openers that circumvented access controls to a computer program in the plaintiff’s opener were found not to infringe the DMCA. However, a violation of the DMCA was found in Lexmark where the defendant, in order to make his refilled computer cartridges work with Lexmark’s printers circumvented programming in the printers that enabled them to only work with Lexmark cartridges. He pointed out that a different result was likely in the EU because of the directive that bans non-refillable cartridges.

The IPKat notes that while these cases suggest that there has been something of a judicial “roll back” of IP rights, the trend has been for the US legislature to “roll forward” IP rights, with the Federal Trademark Dilution Act, the Anticyberpiracy Consumer Protection Act, the DMCA and the Sonny Bono Act being a few prominent examples from the last decade. In the EU, the “roll forward” has been judicial as well as legislative with a number of ECJ decisions (all available here) that have pushed IP rights forward – take for example the wide definition of “trade mark use” in Arsenal v Reed, the favouring of regional rather than international exhaustion in Levis v Tesco, and the extension of dilution-style protection to similar and identical goods in Davidoff II and the Advocate General’s decision in Adidas v Fitnessworld. The position in the US is somewhat different to that in the EU because the Supreme Court and the lower courts do not rely on IP rights as a source of their jurisdiction, whereas in the EU, if the case in question is outside the scope of IP rights, jurisdiction defaults back to the Member States and the ECJ is deprived of its role.

The cases Professor Maggs referred to are available here
See some other “roll back” attempts here, here , here and here
An attempt to “roll forward” here


Thursday, 25 September 2003

SPANISH SET TO BECOME OFFICIAL LANGUAGE OF MADRID

A WIPO Press Release today announced that, from 1 April 2004, applicants for trade marks in a multiplicity of countries will be able to file their Madrid Protocol applications in Spanish as an alternative to the current English and French. This move is seen as offering an incentive to Spanish-speaking countries to sign up for the Madrid Protocol. At present many Spanish-speaking countries lie outside the scope of the international filing systems offered by the Madrid Protocol and the French-only Madrid Agreement, including Argentina, Bolivia, Colombia, Ecuador, Mexico, Peru, Uruguay and Venezuela.

Text of Madrid Protocol here
Countries operating the Madrid system here
Other languages spoken in Spain here, here and here


RESTITUTIO IN INTEGRUM GUIDANCE

Last week, the CFI decided the case of Beckett Expression, providing guidance on the circumstances in which a restitutio in integrum claim can be successful. This doctrine allows people having dealings with OHIM who have missed their deadlines through circumstances beyond their control to file the relevant documents outside the deadline within two months on payment of the relevant fee. Here the appellant had missed his deadline because he was ill on the day the document had to be sent in and this had escaped his secretary’s attention because of her heavy workload. The appeallant also did not file his restitutio in integrum claim until after the two month deadline. According to the CFI:

 The cause of the non-compliance upon which the restitutio in integrum claim could be based (OHIM had not denied that the appellant’s illness was an acceptable reasons for non-compliance) was removed once the director returned to work and at that point he could have discovered that the written statement was late. The fact that the secretary had a complex system for monitoring deadlines which she continually checked also militated against the success of the claim.

 The two-month period for lodging the restitutio in integrum claim begins to run from the date at which the impediment to compliance is removed, and not from when OHIM notifies that applicant that his appeal is late because such an interpretation would be manifestly contrary to Article 78(2) and because the CTMR does not oblige OHIM to send the letters.

 It is clear from the wording of Articles 78(1) and (3) of the CTMR that an application for restitutio in integrum must be made by a separate act, distinct from the act by which the appeal is brought. Additionally, an application for restitutio in integrum is deemed to only be filed once the separate fee for re-establishment of rights is paid. Therefore, there can be no restitutio in integrum claim implicit in a statement of appeal to OHIM.

The IPKat says: “If you’re responsible for filing documents with OHIM, for goodness sake, keep an eye on your deadlines and don’t leave it to the last minute. It seems strange though that the secretary’s system for monitoring deadlines actually worked against her and was one of the bars to a successful restitutio in integrum claim.”

Some Beckett expressions here and here


Wednesday, 24 September 2003

INTA TRADE MARK MEDIATION ROUNDTABLE

Yesterday evening the IPKat attended the INTA roundtable on Alternative Dispute Resolution in Trade Mark Disputes, hosted in the scenic London offices of Howrey Simon Arnold & White, with panoramic views overlooking St Paul’s Cathedral. The discussion was led by Piet Schalkwijk (Akzo Nobel’s Director of Intellectual Property) and Sir Robin Jacob, shortly to take his place in the Court of Appeal.

Since INTA has established an international Panel of Neutrals for the purpose of encouraging its members to turn to alternatives to straight litigation, it was not surprising that the two leaders of the discussion strongly supported greater use of ADR, particularly mediation. Piet Schalkwijk described legal disputes as “not a battle to be won but a problem to be solved”, drawing attention to the level of emotional involvement of parties involved in litigation which makes settlement difficult, quite apart from the financial cost. Where straight mediation between the parties failed, “facilitated negotiation” through a trained mediator could often bring about excellent results. Even where it did not, the mediation process could have a highly beneficial effect upon any ensuing litigation by sharpening the issues which remained to be tried.

The IPKat makes the following observations:

(1) While ADR has much to commend it, many trade mark disputes may be less suited to it - and particularly to mediation - than disputes in other areas. For example, in actions against counterfeiters and other infringers, where there is no previous commercial relationship and no trust exists between the parties, it may be unreasonable to expect a mediated settlement to result.

(2) Some trade mark owners rely on an aggressive litigation policy as a way of deterring actual or potential competitors from coming too close to their trade marks or trade dress. The MACDONALD’S policy of taking legal action against almost every third party use of the MAC- prefix, irrespective of the strength of the trade mark owner’s case, is an example of this policy. Where such a policy is commercially successful it is unlikely that the trade mark owner will trade it in for a commitment to mediation.

(3) Many trade mark disputes (for example opposition hearings) are simply too small for the savings which mediation produces over litigation to add up to much.

(4) Failed or successful but protracted mediation may itself add to the overall cost of dispute resolution.

(5) To work properly, mediations should conclude with a proper binding contract which determines the terms of the settlement. Failure to do so can leave the parties with big problems, as happened in the battle between the World Wide Fund and the World Wrestling Federation for control of the WWF trade mark.

More on mediation: INTA Alternative Dispute Resolution here; Centre for Effective Dispute Resolution here; International Court of Arbitration here
Less orthodox ADR here, here, here (rule 7, bullet point 8) and here


SCARY COPYRIGHT NOTICE

The current issue of New Scientist reproduces a warning found on a website offering graphics and photos. At the foot of the usual legal boilerplate, the rubric runs: "My intellectual property attorney is a scary-smart guy. He was the youngest person to ever pass the bar exam in his state. Plus he put himself through law school by working as a professional wrestler. I am not making this up".

The IPKat would like to hear from anyone who has come across any interesting or original threats in copyright notices. Just post your comment below or email it to The IPKat.

Lawyers who wrestle here, here and here
Unusual copyright notices here (at p. 2), here and here (review by the reader from Ithaca)


PEACE, HARMONY, TRADE MARKS

This Thursday and Friday (25 and 26 September) sees the Third European Trade Mark Judges Symposium in Alicante. Approximately 75 judges from the 15 Member States of the EU and the accession countries, together with representatives from OHIM, the CFI, the ECJ, the European Commission and the European Patent Office will gather at this biennial event. Its stated purpose is “to favour the necessary harmonisation in the application of the Community Trade Mark Regulation throughout the legal establishment and in particular by the Community trade mark courts.” The judges will be treated to a programme including:

 Registrability of work, 3D and colour marks
 Scope of trade mark proprietors’ rights
 The concept of genuine use
 The position of candidate countries
 Developments in the proceedings of CTM courts
 The effects of trade mark case law on EU industry
 The relationship between OHIM and the CTM courts

The IPKat notes that following a number of high-profile ECJ cases, many of these points are a good deal less uncertain than they must have been two years ago at the previous symposium in Luxembourg. He trusts that getting the judges together will allow them to exchange ideas, potentially leading to greater uniformity in the application and interpretation of trade mark law across the EU. While the symposium is aimed at CTM law, it is also likely to impact on national trade mark law, considering the great similarity between the CTM Regulation and the Harmonisation Directive on which all the Member States’ trade mark laws are based. The IPKat hopes that such harmonisation will be given a push in the right direction by the fact that OHIM has now posted a copy of the national trade mark legislation of each EU Member State on its website. Although the IPKat welcomes this development, he is unhappy that the provision of translations is patchy. For example, the Spanish legislation is only available in Spanish and less popular EU languages are not represented at all.

Inspired by the judges’ example? Bring a bit of harmonisation into your life here, here, here and here


Tuesday, 23 September 2003

EMPLOYEE’S DECLARATION OF TRADE MARK USE SHOULD NOT BE IGNORED

This morning the Court of First Instance of the European Communities gave judgment in Henkel v OHIM . When a Community trade mark application was filed for KLEENCARE for various chemicals, abrasives and detergents in Classes 1 and 3, Henkel opposed, alleging a likelihood of confusion with its own earlier German-registered CARCLIN mark for the same products. The applicant demanded evidence that Henkel had used CARCLIN in Germany in the previous five years. Henkel submitted, among other things, a declaration made by its industrial manager to the effect that Henkel had used CARCLIN for cleaning motor bikes and that he knew that the making of a false declaration could subject him to penalties. The Opposition Division dismissed the opposition and disregarded the employee’s declaration, holding that statements made by an employee of a party to the proceedings were of less probative value than those made by third parties. The Board of Appeal upheld the Opposition Division’s decision, refusing either to reconsider the substance of the employee’s statement or to admit fresh evidence.

The Court of First Instance allowed Henkel’s appeal. Under the CTM Regulation the Board of Appeal has power to determine the issue before it on the basis of previous and fresh evidence or to remit it to the examiner or Opposition Division for reconsideration. Since the Opposition Division had the power to consider the substance of the employee’s declaration, the Board did too, even if the notice of appeal did not specifically demand that it do so. The Board of Appeal’s decision was therefore nullified.

The IPKat notes that the Boards of Appeal have made it plain in the past that they are reluctant to decide issues on the basis of evidence which should have been put before the examiner or Opposition Division in the first place. But the consideration of evidence already submitted does not come into that category, even if it may be of relatively little probative value.

Do you need KLEENCARE or CARCLIN? To get your motorbike really dirty click here , here or here


NAVITAIRE CLAIM CAN GO TO TRIAL, RULES JUDGE

After cut-price airline easyJet dumped Navitaire’s internet booking system for a software package supplied by Navitaire’s rival BulletProof Technologies, Navitaire claimed its copyright was infringed and sought to sue easyJet for infringement. A spokesman for easyJet described the claim as “complete nonsense motivated by commercial jealousy”. The Lawyer however reports that specialist IP judge Pumfrey J did not agree and that the application to have the claim struck out was rejected. London solicitors Herbert Smith act for easyJet, while Field Fisher Waterhouse represent Navitaire.

The IPKat observes that it is too early for Navitaire to uncork the Champagne, despite its victory. There is all the difference in the world between persuading the court that you do indeed have an arguable case (as happened here) and subsequently winning that argument.

Click here for bulletproof monks, music, comics and penguins
Bulletproof vests for Batman and for dogs


IS THE NEW GERMAN COPYRIGHT LAW A BASKET CASE?

The Register reports that Germany’s plans to implement the EU Copyright Directive have met with considerable domestic criticism. Legislation concerning the first part of the Directive was recently enacted in order to comply with the EU deadline for implementation; however the controversial issue of anticircumvention mechanisms was left out. This is to be addressed in the forthcoming “second basket” of copyright laws. The fear though is that the anticircumvention provisions will rule out the current right to make private copies and to make other uses that would be considered fair use under traditional copyright law, such as use by journalists. As the proposal currently stands, rights-holders also will not need to provide access to schools, libraries and the disabled for one year.

The IPKat is worried by the lack of mandatory fair-use type provisions in the circumvention sections of the EU Copyright Directive. The effects of this will be felt in all the Member States of the EU. Particularly worrying is the impact that this will have on educational use – a much relied-upon but seldom litigated copyright defence . The IPKat notes that all of the Member States of the EU are signatories to the Berne Convention, which expressly calls for specific fair use exceptions to copyright and wonders whether the Copyright Directive is in compliance.

Baskets here, here, here and here


LAURA ASHLEY FAILS ACID TEST

London-based design trade association ACID (Anti Copying in Design) has reportedly helped design house Designer 12 (trading as Kandola Silks) secure nearly £50,000 in damages and costs against clothes and fabric retailers Laura Ashley for selling a cushion featuring a fabric which was “virtually identical” to a fabric of its own design. Once famed for its distinctive floral patterns, Laura Ashley has since fallen on hard times. The company did not admit to the infringement. ACID members currently enjoy the support of solicitors Addleshaw Goddard, whose London address they share.

The IPKat notes ACID’s achievement. Founded in 1996, ACID has carved a niche for itself in the protection of designers’ IP rights. Relatively few design infringement cases are fought in the UK and designers’ rights are often regarded as the poor relation of patents and trade marks. But ACID’s lobbying, monitoring and litigation support gives design right owners the confident belief that rights in designs are worth having after all.

Is your copyright under threat? Click here for the Federation Against Copyright Theft
Don’t confuse ACID with AcidDesign or ACIDesign
Acid tests here, here and here


THE IPKAT RIDDLE NO. 5

Sports activities are (at least in theory) clean and wholesome and alcohol is harmful and sordid (at least when taken in excess). This is why it makes sense for owners of alcohol brands to give their products an uplift by sponsoring football teams. If you believe that the sight of a team of obviously healthy footballers running round for 90 minutes with beer brands on their shirts might encourage an impressionable supporter to drink the sponsoring brew, it is logical to regulate or indeed prohibit the display of beer brands on team kit. The IPKat's riddle is this: in what circumstances may a ban on displaying beer brands on sports equipment be exercised in such a manner as to prevent the display of the name of even a non-alcoholic product? A small prize is offered to the first person to post the correct answer below.


Monday, 22 September 2003

ADVERTISING: THE WRITING'S ON THE WALL

Wooster Collective draws attention to a graffiti mural that has appeared in SoHo, New York, publicising Jennifer Lopez’s http://www.jenniferlopez.com/ fragrance, Glow. It is the work of TatsCru, a collective of graffiti and mural artists who employ “graffiti mural art as commercially viable art form and markets customized aeresol art to businesses” [sic]. TatsCru has an impressive list of clients including Coca Cola, Reebok and House of Seagrams (makers of inter alia, Chiva Regal).

The IPKat says: “This could be an effective way of bringing a brand onto the streets and causing it to become engrained in the everyday environment of the community. At the same time, this approach could backfire, as can be seen from the comments on the Wooster Collective site, condemning TatsCru for ‘selling out.’ Such negative feelings don’t just reflect badly on the artists – they can also rub off on the brand-owners who commission them and could be accused of commercialising an art-form that relies on subversiveness for its authenticity.”

Graffiti not your style? Join a more suitable cru here, here, or here


Sunday, 21 September 2003

BRAND NAME SACRIFICED TO SPARE MEN’S BLUSHES

The Sunday Telegraph reports that FAIRYDOWN, the mountaineering equipment brand used by Sir Edmund Hillary when he became the first person to ascend Everest, will be dropped because it is seen as having homosexual connotations. Although FAIRYDOWN sleeping bags and outdoor clothing and equipment have been made in Christchurch, New Zealand since 1930, the name is proving too sensitive for overseas markets, particularly in London and Sydney. Sir Edmund Hillary and Tenzing Norgay both used FAIRYDOWN products during their ascent of the world's highest peak in 1953. Said Sir Edmund, with typical British understatement: "At our highest camp at 28,000ft it was a bit on the chilly side". Added Hugo Venter, of brand owners Arthur Ellis & Co., "Australian men particularly don't want to have FAIRYDOWN on their shirts". The products will now be marketed under the name ZONE, although the word FAIRYDOWN may still appear in small print on the label.

The IPKat regrets that Australian mountaineers have so little confidence in their sexuality that they can’t bring themselves to use FAIRYDOWN clothes and equipment.

More brands to tempt the pink purse here, here, here and here.


IPKAT RIDDLE NO. 4

While at the MARQUES conference, the IPKat attended a session on digital rights management (DRM). Although the session contained a detailed and considered analysis of the law in this area, the focus was primarily on how the laws in the EU preventing the circumvention of DRM measures can be used to protection copyright-type works, rather than for the protection of trade marks. Kirsi Ekström, (TeliaSonera OY, Finland) suggested that it could be used to prevent the sharing of downloadable mobile phone logos that also happen to be trade marks. However, the IPKat suspects that DRM will be of limited application to trade marks because mark-holders wish their marks to be exposed to the public for advertising purposes and so have little interest in “locking” them up through DRM. In any event, many marks, unlike complex copyright-type works, are easy to copy and so it may not be worth an infringer’s while to circumvent DRM measures.

Once again, the IPKat offers a small prize to anyone who can tell him (by e-mail, or in the comment box below) how DRM can be used to protect trade marks.


MORE FROM MARQUES IN ISTANBUL

Problematic internet connections kept this report from hitting the blog before now, but the IPKat is determined not to disappoint his readers. So here are some of the highlights from the rest of the MARQUES conference.

Marcel Beerthuizen (TWBA/Brand Experience) gave an impassioned account of the advantages of both event sponsorship and ambush marketing (here and here), showing first how maximum publicity can be leveraged from becoming an official sponsor and then how cunning planning can undermine or completely scuttle the official sponsor’s position. One good example was Amstel’s hijacking of a Carlsberg-sponsored football event by giving out its distinctive hats to thousands of spectators. In this context he revealed that only 36% of sponsorships were undertaken on the basis of any planning. The IPKat, who enjoys cat-and-mouse games, has weighed the evidence and concludes that ambush marketers hold all the trump cards.

Following on from Marcel, Sven Klos (Klos Morel Vos & Schaap) had some practical things to say about protecting sponsors against ambush marketing. The crudest forms of ambush marketing are actionable as infringements of trade mark rights or other IP rights; the problem lies with more subtle approaches, which manage to infiltrate a competitor’s brand name into the heart of a sponsored event before the ambush can be detected. In some cases it’s not clear whether IP rights are infringed at all. This was the case when Telecom New Zealand replaced the five interlocked Olympic rings with the strategically placed words “ring” “ring” “ring” “ring” “ring” (click here and scroll down to paragraph 50). But are ambushes even wrong, the IPKat muses. Normal principles of competition still apply even when a business has spent a lot of money on a high-profile sponsorship deal. Besides, the ambush marketing is usually much more fun for viewers than the unending torrent of official advertising that accompanies the Olympics and other events.

In his workshop session, Massimo Sterpi (Jacobacci, Turin) detailed the many ways in which a brand can court unpopularity in the marketplace or beyond it. This unpopularity may reveal itself in the brand being parodied, defamed or attacked in more subtle ways. Massimo listed three types of hatred: that which attaches to the mark itself, that which points to the company behind the mark and that which points at the country with which the brand is associated. There was then some lively debate on overbranding, viral marketing and whether there should be public spaces from which brand advertising should be excluded. The IPKat enjoyed the cut-and-thrust of debate, noting that MARQUES participants seemed to have softened their previously antagonistic views on Naomi Klein’s vigorous criticisms of bad behaviour by big brand-owners.

The IPKat is home again now, licking the last of his Turkish Delight off his paws and happily contemplating next year’s MARQUES conference in Rome.


Friday, 19 September 2003

THE IPKAT HAS LANDED

The IPKat has safely returned from the 2003 MARQUES conference in Istanbul and will be bringing you the highlights of the programme over the coming days.

Some friends the IPKat made on his travels here

Wednesday, 17 September 2003

THE IPKAT - LIVE FROM ISTANBUL

Having arrived safely in Istanbul, the IPKat joined the ranks of 400 trade mark enthusiasts, owners, practitioners and experts attending this year's MARQUES conference at the Ceylan Inter*Continental Hotel. After Day 1, the IPKat, inspired by the excellence of the presentations, offers you the following points for consideration:

(1) Wim Holterman (PwC) mentioned that business to business brands will always be valued lower than brands aimed directly at consumers because B2B brands don't reach out and directly address the consumer. This problem can be resolved, according to Katherine Basile (Howrey Simon) by 'ingredient branding' where a branded product manufacturer promotes the brand of a manufacturer of a constituent of its product (e.g. where branded computers are advertised by reference to the INTEL microprocessor).

(2) On the issue of tax and transfer pricing, Arnout van der Reste (also PwC) raised issues concerning the split between legal and beneficial ownership of trade marks, where the beneficial ownership is held in a lower tax regime. Questions were asked as to whether the split ownership could jeopardize the trade mark registration.

(3) Sheila Henderson (Reckitt Benckiser) and Ben Goodger (Rouse & Co. International) both emphasised the danger of showing in-house counsel just the IP bits of a proposed M & A transaction which give counsel no chance of advising on the IP-related terms within the context of the deal as a whole. This is important, given that the IP terms can make or break the whole deal, depending on how central they are to it.

(4) In the session on the legal aspects of brand extension, Annelise van Zoest (Bockel de Neree) drew attention to the difficulties of showing reputation where the owner of a mark which has been extensively used on one product and then applied to a range of different goods wished to combat its use by a third party on unrelated products.

(5) Ozlem Futman (OFO Ventura) drew attention to the difficulties of registering packaging and slogans in Turkey. While the Turkish trade mark law parallels that of the EU, the Turkish Patent Institute is sometimes liable to reject applications for subject-matter which is registrable elsewhere in Europe.

(6) The conference was treated to a tour de force by Muhtar Kent (CEO, Efes Breweries) who told of the remarkable rise of the EFES brand, which now enjoys more than 75% of the Turkish beer market, and of its Russian subsidiary, which in only 4 years had become one the top Russian beer brands. The IPKat, after sampling more than one glass, can see why...


Monday, 15 September 2003

IMPORT-ANT EFTA CASE

In a rare ruling given earlier this summer but virtually ignored by the legal press, the EFTA Court has advised the Norwegian Supreme Court that the trade mark rights of a original drugs manufacturer were not exhausted by first sale to the point that those rights could not be enforced against an importer of branded goods who used the colours of the original trade mark in stripes along the edges of its repackaged versions of the trade mark owner’s products. The case was referred to the EFTA Court after Panarova started employing tributary colour schemes on its repackaged versions of RENITEC, SINEMET and other Merck products.

Citing the ECJ’s decision in Case C-143/00 Boehringer Ingelheim v Swingward, the EFTA Court advised that derogations from the principle of free movement of goods are justifiable only to the extent permitted to enable a trade mark owner to safeguard rights that form part of the specific subject-matter of the mark, as understood in the light of its “essential function”. This means that, once products are marketed with his blessing, the trade mark owner has to show the necessity for exhaustion doctrine not to apply to subsequent sales within the EEA. The way to do this, under Article 7(2) of Directive 89/104, is to show “legitimate reasons” for being able to enforce his trade mark.

The generic importer/repackager is allowed to fix the original manufacturer’s products where there is a necessity for it to do so, following the ECJ’s case law in Case C- Bristol-Myers Squibb v Paranova [1996] ETMR 1 as long as the other factors mentioned in that case’s 4 factor test (para. 32) are also satisfied. However the EFTA Court advised that the necessity for the original manufacturer, as trade mark owner, to protect his trade mark where he has a “legitimate reason” to do so trumps the repackager’s necessity to repackage goods and resell them in the single European market.

Even where the four Bristol Myers requirements are met, the EFTA Court confirmed, following previous ECJ case law, that a trade mark owner can also oppose further commercialisation of his goods that take place in a way that is likely to damage his reputation, for example, if the repackager uses untidy new packaging or unsuitable advertising methods with regard to the trade mark owner’s product. In particular, the national court should take into account whether there is inappropriate presentation of the repackaged product. Additionally, following the ECJ’s judgment in BMW v Deenik, the EFTA Court held that a trade mark owner can also oppose the use of his trade mark in the further commercialisation of his product by third parties where the mark is used in such a way that it may give rise to the impression that there is a commercial connection between the reseller and the trade mark proprietor. The use of coloured stripes on pharmaceutical packaging though would neither damage the trade mark owner’s reputation nor cause confusion as to a commercial link between the repackager and the mark owner. Any confusion would be dispelled by the requirement that the names of the parallel importer and the manufacturer be clearly stated on the new packaging.

Finally, the EFTA Court agreed with the trade mark owner that repackaging that causes “degeneration” of the trade mark because the trade marked goods are sold in different packaging by different repackagers could also constitute a legitimate reason to oppose repackaging. At the same time though, it was recognised that common use of one trade mark by more than one repackager was an inevitable result of allowing parallel importers to take advantage of exhaustion.

The IPKat welcomes the EFTA Court’s careful consideration of the interests of both trade mark owners and repackagers and consequently of the availability reliable indications of origin and the principle of the free movement of goods. He is also intrigued by the “degeneration” of trade marks ground for opposing repackaging. This will require further development because a degree of degeneration is a price that we pay for allowing repackaging, though this could be combated if repackagers had to use repackaging that was as close as possible to the goods’ original packaging. The IPKat notes that the EFTA Court used the term “blurring” in this case, but not in the dilution sense. Instead, it was referring to confusion between the manufacturer and the repackager that could be prevented by clearly stating the name of the two parties on the new packaging.

Imports to Norway here and here
Norwegian exports here, here and here


AN APPLE A DAY

It came to light at the end of last week that Apple Corp, the Beatles’ record company, has lodged papers in the High Court, accusing Apple Computers of breaching an agreement made in 1991 to settle a dispute over the Apple trade mark. According to apple-history.com, Apple was chosen as the name of the computer company because the managing director admired the Apple Corp record company:

“Steve Jobs [co-founder of the computer company] had worked during the summer at an apple farm, and admired the Beatles' record label, Apple. He also believed Apples to be the most perfect fruit. He and Steve Wozniak were trying to figure out a name for their new company, and they decided that if they couldn't think of one by the end of the day that was better than Apple, they would choose Apple. They couldn't think of anything better, so on April 1, 1976, Apple Computer, Inc. was born.”

The computer company’s choice of name came to the attention of Apple Corp and in 1981 the computer company signed an agreement undertaking not to go into the music business in order to safeguard Apple Corp’s trade mark rights in the name and logo. By the mid-eighties though, the computer company had started producing music files and software for its machines, much to Apple Corp’s displeasure and in 1991 the computer company once again agreed not to involve itself with music, paying Apple Corp $26million along the way. The latest court action pertains to this agreement and the computer company’s decision to launch iTunes, a music download service service that allows consumers to download songs for 99 cents each onto their computer or iPod person music systems. The computer company blames the action on “differing interpretations” of the 1991 agreement.

The IPKat notes that in 1981, when Apple Computers was producing this rather lovely specimen, computers with the ability to play or manipulate music must have seemed a long way off. However, multimedia and downloading facilities are the norm for computers and it would seriously damage Apple’s competitive abilities if it was completely excluded from that market because of a trade mark delimitation agreement entered into more than two decades ago. Having said that, presumably the computer company entered the agreement voluntarily and the need for it to be able to enter the download business is not as pressing as its need to be able to bundle multimedia features into its computers.

This case also highlights the difficulties that occur when two companies simultaneously build their brands around an everyday idea such as an apple. Finally, the IPKat wonders whether choosing your mark because you “admire” another company with the same mark (as Steve Jobs, co-founder of the computer company did) where there’s no prospect of confusion between the two parties’ goods counts as unfair advantage of the admired mark’s distinctive character or repute under Article 5(2) of the Trade Mark Directive.

Read Fox New’s prophetic article about the case (published in June) here
Apple record labels here
Bad apples here and here
Good apples here
Mushy apples here
Make sure your nearest and dearest eats an apple a day



Sunday, 14 September 2003

THE SINGER, NOT THE SONG

Ananova reports that a poll commissioned by the British Hungry Horse pub chain to launch its new Karaoke Krazy competition has named the Monkees’ “Daydream Believer” as Britain’s favourite karaoke tune. The Monkees’ infectious ditty came in just ahead of two songs which remain popular despite the treatment they have received from cohorts of karaoke aspirants over the years: Frank Sinatra’s “My Way” and Gloria Gaynor’s “I Will Survive”. Aqua’s “Barbie Girl” was named the most hated singalong, just ahead of Meatloaf’s “Bat Out of Hell”.

The Karaoke Krazy contest is raising money for the charity Cancer BACUP and the winning singer will get a £10,000 prize.

The IPKat is pleased that the organisers of the Karaoke Krazy competition are raising cash for a most deserving charity and notes that Karaoke Krazy will incidentally be raising cash for composers who receive public performance royalties from karaoke events (the Performing Right Society’s licence schemes include terms for public performances of karaoke here). A further legal side issue is the scant protection given to composers and original performers against people who rejoice in murdering their songs in the name of karaoke: the IPKat would like to hear from anyone who has successfully launched such an action.

“Daydream Believer” -- read the words, hear the song here; misheard lyrics here and here
Click here for “Barbie Girl” download, lyrics and legal status
Karaoke disasters here, and here
Interpret your daydreams here, here and here. Interpret your dreams and nightmares here, here and here
If you liked this blog, you can contribute to Cancer BACUP here


PACKING OUR BAGS FOR ISTANBUL

“Successful Brand Growth”, this year’s conference of MARQUES, the association of European trade mark proprietors, starts this Tuesday. The IPKat, busily packing his bag, looks forward to blogging the event for his dedicated readers. If you are attending the MARQUES conference and would like to meet the IPKat, please email us as soon as possible.

Friday, 12 September 2003

JUST UNDO IT!

Attacks on the phenomenally successful Nike brand are nothing new – witness anti-globalist brand warrior Naomi Klein’s account of the stylish sportswear empire in her best-selling manifesto No Logo . As a result the Nike swoosh, once associated with cool, street cred, technical excellence and human achievement (“Just do it”), is now seen by many as a target of culture jam (click here and here) and a symbol of sweatshop labour.

Now, following a year’s patient R&D, Adbusters has entered the fray with what it regards as the killer blow: the launch of a new campaign based around the launch of “the unswoosher”, the blackSpot sneaker. This product, a good-quality, fair-priced Korean union-shop manufactured shoe, is planned to take on Nike in the streets. BlackSpot is billed as “the world’s first grassroots antibrand”.

Adbusters has formulated a marketing strategy designed to use the momentum of Nike’s advertising against it. The organisation predicts that within 3 years, the blackSpot sneaker will overtake New Balance, gaining a market share of 10%. It suggests five ways the public can help:

1. Pre-order a pair of the sneakers for $60 – they need 5,000 orders before they can pay for the shoes to be manufactured.
2. Sell the shoes in your shop.
3. Start a jamming group and jam Nike spreading the word in high schools, adbusting Nike billboards and jamming Niketown stores with blackSpot stickers. A jamming kit is available from Adbusters. Also, you’re urged to put a red dot on your sneakers “for kicking Phil’s [Phil Knight of Nike] ass.”
4. Investing in the blackSpot sneakers campaign.
5. Donate to the campaign.

The IPKat is a fashionable feline but even he has problems seeing where a “cool brand” such as NIKE stops and a “cool antibrand” such as the blackSpot sneaker starts. Both involve the affixing of a mark that results in the products that bear it attracting a price-premium because of the message associated with the mark. The blackSpot could become the next fashion trend – where would Adbuster’s anti-consumption, individualist message be then? Perhaps the difference comes in the way the two types of brands are marketed: a brand markets itself by highlighting its good points whereas an antibrand markets itself by contrasting itself with another brand’s bad points. However, even an antibrand can develop its own momentum and consumers may seek it out if it becomes “cool” in itself.

The IPKat adds that free speech and the right to communicate information will aid blackSpot, but billboards and Niketown stores are private property and Nike has plenty of cash to spend on enforcing its own rights. Finally it’s not clear whether trade mark law on either side of the Atlantic can aid Nike when the powerful visual images generated by its ads are deluged with black spots, particularly if Nike’s trade marks remain untouched and there is no confusion as to the source of the respective products. The proposed Directive on Unfair Commercial Practice (blogged by IPKat on 20 August) might be “persistent and aggressive advertising”, but the directive is a long way from being law. So far as is known, this is an untested area of law: tarnishment, unfair advantage and even trade mark use may be arguable, although the application of these doctrines would be controversial.

How Nike swallowed antibrand Converse here
Find out about Nike head Phil Knight here
More about Blackspot here, here and here


THE IPKAT BOOK OF THE MONTH: SEPTEMBER 2003

We all have them -- objects of desire, choice items of personal property which we savour and enjoy. Be it a fine bottle of single malt whisky, an elegant piece of jewellery or a state-of-the-art camcorder. The IPKat's current pet object desire is the new edition of Bill Cornish's classic, Intellectual Property. Patents, Copyright, Trade Marks and Allied Rights , the fifth edition of which has just been published by Sweet & Maxwell. This new edition, extending to nearly 900 pages, has been co-authored by London solicitor David Llewelyn of White & Case, who has taken responsibility for this tome's four chapters on trade marks.

Having sampled various segments of the new Cornish, the IPKat is pleased to pronounce it excellent. Tightly written, it provides a review of UK and much European IP law which is as remarkable for its depth of analysis as for its breadth of subject-matter. As it travels the years the work also seems to have become increasingly navigable (though this is possibly at least a by-product of the IPKat's increasing familiarity with it). Although the work was originally written for students, practitioners and academics will greatly appreciate it. The text is current to spring 2003. The paperback retails at £32 for the benefit of students, but the real object of desire -- the handsome, solid hardback edition in its smart black binding with green and gold title box -- is a snip at the mere £80 asked for it.

Thursday, 11 September 2003

BRUSSELS GETS CLOSER TO MADRID

In the bad old days, if you wanted international trade mark protection you had to file a separate trade mark application in each country in which you wanted protection. The Madrid Agreement, the prototype scheme for facilitating international protection via a single international application, made things slightly easier. Now the Madrid Protocol has provided a comparatively attractive and easy-to-use system for international trade mark filing. Between the Agreement and the Protocol it is now possible, through a single application, to designate up to 71 countries in which protection is sought. The EU's Community trade mark (CTM), introduced in 1996, also makes it easier to get international protection since a single application can lead to the grant of a unitary trade mark covering 13 jurisdictions and 15 countries (next year 25 countries, after the new batch of entrants gains admittance to the EU. Up to now it has not been possible for a Madrid Protocol applicant to designate the EU and thus secure a CTM through the Protocol route, though the European Commission has proposed to amend the Community Trade Mark Regulation so as to make it Madrid-compatible.

This week UNICE (the Union of Industrial and Employers' Confederations of Europe), AIM (the European Brands Association) and MARQUES (the Association of European Trade Mark Owners) have jointly affirmed their support for the European Commission's proposal, which will enable the EU to accede to the Madrid Protocol. The three organisations are also pressing for full "opt back" provisions to provide that, where an international application that designates the EU fails, the trade mark applicant will be able to convert the failed application into separate national applications that enjoy the same priority date as the original international application.

The IPKat welcomes the European Commission's proposal (which has been on the agenda for years) and looks forward to the EU joining the United States as a fully functional participant in the Madrid Protocol.

Current list of countries adhering to the Madrid Agreement and/or Madrid Protocol here
Madrid Protocol Implementation Act (United States) here
File your Madrid trade mark application here


THE BIG SNAPPLE?

Snapple, owned by Cadbury Schweppes, has been awarded the exclusive 5 year contract to supply New York City's schools with beverages, beating competition from Coca-Cola and PepsiCo. It is to develop a new range of 100% juice drinks in Green Apple, Orange Mango, Grape and Fruit Punch flavours, enriched with vitamins and calcium, but will also sell bottled water. All the drinks will sell at $1 each. Snapple will also invest at least $3million a year in sponsoring sporting equipment and playgrounds and materials encouraging a healthy diet and physical activity. Cadbury Schweppes' press release says that such vending machines will only be provided with the consent of the individual schools involved but the New York City press release says that the intention is to allow the NYC Department of Education to centrally manage vending needs.

Snapple has also been awarded a separate contract to vend iced-tea, chocolate drinks and water at city-controlled properties, in return for which Snapple will give New York City $66million and "an annual marketing commitment for use of city-owned media (outdoor, television, online) city-run promotions, the sponsorship of events and concerts" etc. Snapple and New York City will also work together to promote the link between New York and Snapple -- attracting tourists and benefiting Snapple at the same time.

The IPKat as a rule favours competition and thus is somewhat perturbed. He is uneasy about the idea of eliminating competition where there is a captive market such as school children. A lot will depend on the way in which the $3million pound investment in sporting facilities and equipment is spent --“ the IPKat would be disturbed if the sponsorship scheme was just a way of marketing Snapple to school children e.g. if the healthy diet education took the form of "drink Snapple for all your nutritional needs" and if the sports equipment provided prominently bears the indicia of the Snapple brand. While this solution is preferable to giving the contract to a fizzy-drinks manufacturer (although of course, Snapple's parent company is Cadbury Schweppes of chocolate and drinks fame), it seems just a little strange that the contract has been awarded to a company that does not currently produce pure juice products. The IPKat also hopes that the fact that Snapple has a contract to provide water will not lead to schools limiting the availability of fresh water.

Read the Cadbury Schweppes and New York City press releases here
Meanwhile, the good people of Snappleton are oblivious to the controversy
Why fruit juice is bad for children here
Why fruit juice isn't bad for children here
Fun things to do with Snapple here
Make your own Snapple-alike with this recipe



Wednesday, 10 September 2003

ECJ GIVES KIK THE ORDER OF THE BOOT

The beaches of Alicante were heaving with sighs of relief after the European Court of Justice (ECJ) gave its ruling yesterday in Case T-120/99 (Christina Kik v OHIM) that the Community trade mark (CTM) system was not contrary to EU law even though it may prejudice the interests of speakers of minority European languages. In 1996 Dutch lawyer and trade mark attorney Christina Kik applied to register a CTM for the word KIK. In her application form, which was in Dutch, she also nominated Dutch as the "second language" of the application, in which proceedings might be heard if Dutch were not the appropriate language for them. In 1998 OHIM dismissed the application on the grounds that she had failed to nominate as the second language one of the five languages of the Office (English, French, German, Italian, Spanish). Kik appealed, claiming that OHIM’s decision was unlawful. After the OHIM Board of Appeal dismissed Kik’s appeal she applied to the Court of First Instance (CFI) and claiming that, in applying the CTM Regulation, OHIM had infringed the principle of non-discrimination under Art.12 of the EC Treaty. The CFI dismissed the action, finding that the OHIM could not choose for itself not to apply Art.115(3) of Regulation 40/94 and Kik appealed to the ECJ.

Yesterday the ECJ dismissed Kik’s appeal. The ECJ said the option of using a second language for written communications was an exception to the principle that the language of the original proceedings be used but noted that the CTM Regulation did guarantee use of the language of the original application filed as the language of the basic proceedings. As to the claim that the entire language regime was unlawful, the ECJ ruled that the Regulation sought to achieve the necessary balance between the competing interests of applicants and third parties affected by their applications. Where the parties could not agree on which language to use, it was legitimate to seek an appropriate solution. Even if official languages of the EU were treated differently, limiting OHIM to those that were most widely used in the EU was appropriate and proportionate.

The IPKat notes that, according to Alta Vista’s Babel Fish translation service, “miaow” comes out as “miaow” in all five official languages of OHIM.

KIK in a crowded marketplace: klik here for Kwik Kik, Kik Wear, Kik It computer products, Kik Consulting and Kik-It games
More on official languages here, here and here
Make English the official language? Click here, here and here
Unofficial languages here, here and here
Listen to Unofficial Language here


Tuesday, 9 September 2003

BRINGING UP THE RIAA

RIAA, the US recording industry interest group, is once again flexing its muscles (RIAA press release here). Yesterday it filed papers bringing actions against 261 individuals accused of downloading on average more than 1,000 songs each and said that it would bring further actions against thousands more. This is a new development. Previously RIAA has only gone after the networks that facilitate peer-to-peer file sharing such as Napster and, more recently, Grokster. RIAA president Cary Sherman showed he was all heart, saying "We expect people to say 'It isn't me, it was my kid,' but someone has to take responsibility.” True to his word, among those names in the actions is Texas grandfather Durwood Pickle, who claims his grandchildren performed the downloads when they visited him.

Meanwhile, RIAA has also offered an amnesty (known as the “Clean Slate Program”) to anyone willing to sign an affidavit promising to stop using P2P networks for illegal downloading, not to allow others to use their computers for that purpose and to delete all illegally downloaded files from their machines. Those against whom court actions have already been brought will not be able to rely on the amnesty, nor will those for whom RIAA has requested details from their internet service providers. It seems this is a slightly devious way of getting downloaders to come forward voluntarily – something downloaders may seriously consider in the light of the recent actions. The affidavits would also allow RIAA to argue that any subsequent downloads by people who have signed them constitutes wilful copyright infringement, which carries criminal penalties in the US.

RIAA could still be stopped in its tracks though. A woman known only by her online nickname of nycfashiongirl has challenged the constitutionality of a subpoena ordering her internet service provider to disclose her details, arguing that RIAA is not entitled to take that step because it is not affiliated with any government organisation.

While the IPKat does not condone copyright infringement, he is disturbed by the climate of fear that RIAA seems to be creating by its two-pronged approach. The implication is, you too could be on the receiving end of a court summons unless you voluntarily expose yourself as a P2P user. While it is now fairly clear that firm action will be taken against P2P users, this was not always the case. The IPKat notes that many people who started using them are not hardened criminals and thought that there was a degree of acquiescence for the millions of people using them. To bring actions against such users who arguably did not have fair notice of the consequences of their action would be callous and would achieve nothing. He also notes that the “Clean Slate” affidavit has a space allowing for the signature of those who are under 18 and their parents – does this mean that RIAA plans to bring court actions against those of that age group?

UPDATE: The "Clean Slate Programme" has been challenged in a California court by Eric Parke.

Have you been a naughty boy or girl? Then take this affidavit to your local notary public immediately
View the latest peer-to-peer developments here
If you’re an NYC Fashion Girl click here


BEWARE OF BADDIES ASKING FOR MONEY

The UK Patent Office has just issued a fresh warning against companies that write to patent and trade mark applicants, offering services of dubious value or making what appear to be misleading requests for fees. These companies mail applicants whose patent or trade mark applications have been published in the bulletins of the European Patent Office, the World Intellectual Property Organization and OHIM, the European Community's trade mark office. They usually invite payment of a fee to put the patent or trade mark application on a spurious register which, it transpires, is not connected with any IP rights granting authority and has no legal significance.

Three companies that have been doing this are the Institut (sic) of Commerce, Trade and Commerce (Switzerland), ZDR-Datenregister GmbH (Frankfurt) and the Company for Publications and Information Anstalt, Liechtenstein. The UK Patent Office says: if you get one of these demands email Ceri Carter (patents) or Joan Hopkins (trade marks) or phone them on +44 (0)1633 814557 or +44 1633 811050. The IPKat says: "Small and medium-sized inventors and trade mark owners have quite enough to worry about without being ripped off by these scams".

For non-official and misleading IP registration and protection companies click here, here and here
For fraudulent invention promotion businesses click here and here
Think you're being set up for a scam? Contact Scambusters or the National Inventor Fraud Center


NODDY LEADS CHORION'S RUSH TO BANK PROFITS

London-based brand management group Chorion has announced that increased demand for the formerly controversial children's character Noddy will drive a substantial increase in its annual profits, following the UK and overseas success of its computer-generated TV animation series Make Way for Noddy. The company has also signed a deal with independent London TV company London Weekend Television for four new Agatha Christie dramas a year for at least four years. As well as owning the Noddy and Agatha Christie brands (including Miss Marple and Hercule Poirot) Chorion has the TV and film rights to a portfolio of star literary names, including Maigret author Georges Simenon, Margery Allingham, Edmund Crispin and screenwriter Robert Bolt.
Make Way for Noddy was the UK's most highly rated pre-school programme among three to five-year-olds in June, attracting more than 30% viewing share against rivals Bob the Builder, Tweenies and Teletubbies. It also has an average 34% rating among the 4-10 year-old audience in France.

Noddy is a perfect example of a leading brand keeping its competitive edge by changing with the times. The IPKat recalls the dawn of consciousness in the 1960s when the formerly popular Noddy was reviled as a racist (following his sharp encounters with those emblems of Toy Town black street cred, the Golliwogs), a homosexual (he shared a bed with Big Ears) and a rapacious capitalist (he had the exclusive right to operate a taxi in Toy Town). The original Enid Blyton stories were banned from schools, from public libraries and from the bookshelves of all responsible parents. But for small children Noddy's socio-political outlook was not part of the brand's core value: they were more interested in Noddy's friendly, open facial features and tinkling hat. The old Enid Blyton tales were bowdlerised or replaced completely. The rest, as they say, is history.

Noddy as an icon of political incorrectness here
Avoid being politically incorrect: Modern Newspeak here
The new politically correct Noddy here, here and here
Noddy the new radical here
Another reformed Noddy here and here


KEEP UP2SPEED WITH THE TRADE MARK REGISTER

One of the IPKat’s favourite websites, Up2Speed (as it was) has changed its name to MarketingWonk. This could be a wee bit confusing for readers since the site only recently changed to Up2Speed from MarketingFix. A press release appearing on the site gives a rundown of the top 10 reasons, some serious, some not so serious, for the name change, including to avoid spam, because “it's the next big trend in marketing: temporary branding” and because they “knew a kid in high school named Mark Etingwonk who was really cool.” The real reason, and number one of the top 10 was that they forgot to check the trade mark register before changing their name to Up2Speed – Up2Speed is registered in the name of SBC Communication Services for online newsletters with the USPTO.

The IPKat says: “For goodness sake CHECK THE TRADE MARK REGISTER BEFORE CHOOSING YOUR COMPANY NAME. (Especially if your specialism is marketing, in which case you’ll look extra-silly if you don’t)".

What’s a wonk? Find out here and here
Meet a wonk here
Learn Wonk Language here




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