The BBC reports that Microsoft is to scrap a controversial clause in its licensing agreements in the wake of a raid on its Tokyo offices by the Japanese fair trading authorities. The Fair Trade Commission had said that the contract term, which stopped hardware manufacturers wanting to pre-install Windows on to their computers from challenging any of Microsoft’s patents, was unfair and restrictive. Nonetheless, Microsoft insists that the clause remains lawful under Japanese, American and EU law and has been removed merely for “customer satisfaction reasons”.
The IPKat welcomes Microsoft’s decision, though he notes that presumably the legality of the clause will not now be tested. He also wonders if Microsoft will extend its new policy to the EU and US.
Another pre-installed Windows story here
More pre-installed windows here, here and here
Sunday, 29 February 2004
The BBC reports that Microsoft is to scrap a controversial clause in its licensing agreements in the wake of a raid on its Tokyo offices by the Japanese fair trading authorities. The Fair Trade Commission had said that the contract term, which stopped hardware manufacturers wanting to pre-install Windows on to their computers from challenging any of Microsoft’s patents, was unfair and restrictive. Nonetheless, Microsoft insists that the clause remains lawful under Japanese, American and EU law and has been removed merely for “customer satisfaction reasons”.
Friday, 27 February 2004
The March issues of two Sweet & Maxwell publications, the European Trade Mark Reports and the Fleet Street Reports, have now been published.
The ETMR contains just three cases this month, but they are all whoppers from the European Court of Justice:
* Budejovicky Budvar Narodni Podnik v Rudolf Ammersin GmbH  ETMR 243: what was the legal effect of pre-EU bilateral treaty between EU Member State and non-Member State concerning non-registrability of beer appellations?
* Ravil Sarl v Bellon  ETMR 274: was the Italian law requiring cheese to be grated in Italy before it could be called GRANA PANADO was contrary to free movement of goods principle?
* Consorzio di Prosciutto di Parma v Asda and others  ETMR 314: was the Italian law which required ham to be sliced and packaged in Parma region before it could be called PARMA ham contrary to free movement of goods principle?
The FSR, unusually, contains a United States case, the celebrated patent decision in Festo. The full list of cases reported in the FSR this month is as follows:
* World Wide Fund v THQ/JAKKS Pacific  FSR 161: Court of Appeal – what is the effect of injunctive relief upon a third party is unable to make effective compliance with the injunction?
* Festo Corp v Shoketsu Kinzuko Kogyo  FSR 186: This is the US Supreme Court ruling on the interrelationship between the doctrine of equivalents and file wrapper estoppel.
* Mattel Inc v Woolbro (Distributors)  FSR 217: In this UK Patents Court decision Laddie J considers, in the context of Community unregistered design right infringement, whether similar fact evidence is of probative value.
A feature in Thursday’s Daily Telegraph draws attention to British TV producers who are finding that the format of their successful programmes is being copied abroad. It focuses in particular on the reality TV show Wife Swap, produced by UK company RDF Media, which has spawned unauthorised imitators in Germany, Hungary and Austria. The Austrian version is particularly controversial since it has dabbled in politics, pairing a family of avowed racists with a Turkish immigrant couple. However, much to the chagrin of producers, it appears that there’s little that they can do about the copycats. This is because the principle that there is no copyright in an idea prevents the idea behind a programme format from being protected by copyright. While programme makers will have copyright in their scripts, this won’t be of much assistance in protecting unscripted reality TV shows. All they can rely on are any trade mark registrations they have for the programme title and the law of passing if the public will be deceived into thinking the programme was made with the original producer’s blessing (but even then there may be tricky territorial issues regarding where the reputation is if the two programmes are shown in different countries). One response taken by producers has been to produce “programme bibles” which give licensees intricate details of how they can achieve the effect of the earlier show.
While the IPKat does feel a bit uncomfortable about the idea of people being able to copy the work of others, he feels that the principles that limit the effects of copyright law are sound, and producers can’t expect a special exception for TV programme formats. Although he understands that people want to see their investments protected, recognising programme formats would entail recognising copyright in ideas to a greater or lesser extent. This would upset the balance that has been struck between IP protection and free competition. Recognising that investment is worthy of protection per se may well involve a more general, anti-misappropriation approach.
Accountants - your number is up here
Catch up with your favourite reality TV programmes here
Unreality TV here
Why wife swapping is a bad idea here
Findlaw reports that US District Judge Dean Whipple has spared Hallmark Cards Inc the need to cough up $8.9 million damages by invalidating the patents of a British company, Group One. Infringement damages were ordered by a jury after it found that Hallmark infringed patents on a machine that curled and cascaded ribbon for decorating gift packages. Group One plans to appeal.
The IPKat notes that non-US litigants often complain that juries have no place in patent trials and that the use of juries in the US causes bias against foreign companies locked in litigation against American ones. This case gives the lie to those allegations, being quite the other way round: it was the all-American jury that found in favour of the foreign patentee while the judge came to the rescue of the US defendant.
Juries in action in US patent trials here, here and here
Alleged anti-foreigner bias of US juries here and here
Other ways of getting $8.9 million here, here and here
Thursday, 26 February 2004
LexisNexis’ All England Direct subscription-only service has thrown up a short and sweet copyright and moral rights dispute, Anya v Wu and others (heard on 25 February by Mr Justice Lewison of the Chancery Division). Anya claimed that Wu and others infringed his moral right to be known as the author of two articles on the basis that, while Anya didn’t actually write those articles, they had nonetheless exploited his ideas. Lewison J struck out Anya’s claim: moral rights were there to benefit the author, not to provide credit for anyone providing an intellectual “assist”.
The IPKat understands that moral rights cases are pretty infrequent events. However, though Lewison J has only been an IP judge for a very short time, this is already the second moral rights case he has adjudicated (the other being the “shizzle my nizzle” rap case, Confetti Records v Warner Bros). So far he seems to have handled this sensitive area well.
Theft of ideas here, here and here
Moral rights here
Moral wrongs here
Users of the European Court of Justice website may have been dismayed, as the IPKat has been, by their failure to access artwork such as images of signs and trade marks. Reports of cases from the Court of First Instance, in particular, on appeals from the OHIM Boards of Appeal, suffer from this blight. The annoyance of ECJ website users is sometimes compounded by the fact that CFI judgments do not always cite an adequate reference to the text of the OHIM Board of Appeal decision from which the relevant artwork can be viewed.
The IPKat thanks Piter de Weerd (NautaDutilh) for telling him that the problem is likely to be resolved in the near future. He wrote to the ECJ’s Press and Information Division, which responded as follows:
“Unfortunately our current system WordPerfect does not allow the conversion of images into HTML which is the format on the internet site. We are however working on a new system (XML) for the internet site which will allow the images to be shown. This system will be introduced shortly, so please have a little patience, and you will soon be able to see the images”.
The IPKat shares Mr de Weerd’s feeling that the ECJ’s continued use of WordPerfect is a little disconcerting and agrees with him that, notwithstanding the criticisms made of it, the ECJ’s normal practice of posting decisions on the internet on the day they are handed down to the parties is one which should be emulated on other international and national court websites.
Is a picture worth a thousand words? Click here, here or here to find out.
Graphic images, symbols and representations
Wednesday, 25 February 2004
In a recent opposition before the UK Trade Marks Registry brought by the fashion designer Elizabeth Emanuel, the Lord Chancellor's Appointed Person (LCAP), David Kitchen QC, has stated his intention to refer various questions that arose in the course of the opposition to the European Court of Justice. To the IPKat's knowledge, this is the first time that an LCAP has made an Article 234 reference. More usually, when such a difficult legal issue arises, the LCAP will refer the case to the High Court, which will refer the question to the ECJ if necessary. However, the LCAP failed to do so in this case because moving the case to the High Court may have made it too expensive for the opponent to pursue and he had hoped that the case could be resolved on the facts without need for any further hearing.
The LCAP hears appeals from the Trade Mark Registry. No appeal lies from cases before the LCAP unless he choses to stay the case and refer it to the High Court.
This guest blog is brought to you by Professor Adrian Sterling, our colleague at the Queen Mary Intellectual Property Research Institute. Adrian is a noted copyright scholar and the author of World Copyright Law, the second edition of which was published last year (reviewed by the IPKat here). Adrian writes:
"NASA sends a robot to Mars. Devices in the robot take a photograph of the Mars landscape and transmit the photograph back to NASA. NASA publishes the photograph. Does copyright subsist in the photograph (a) under the Berne Convention, (b) under the US Copyright Act 1976, (c) under the UK Copyright, Designs and Patents Act 1988? Does author’s right subsist in the photograph in the civil law jurisdictions, e.g. France?
The answers are not as obvious as may at first sight appear. One has first to analyse the making of the photograph. Did the photograph exist in copyright terms before being printed out by NASA? Who is the author of the photograph, or – does it have an author at all? Is it computer-generated? And what about the transmission? Is it a broadcast, and if so, does it come within the Rome Convention 1961?
These and similar questions have led the undersigned to propose a new area of Intellectual Property Law, namely Space Copyright Law, embracing issues (among others) of copyright subsistence (e.g. how do the criteria of the Berne and Rome 1961 Conventions and the TRIPs Agreement apply to material created in Space), and copyright infringement (e.g. what copyright remedies does the copyright owner have when a UK copyright protected work is transmitted without the copyright owner’s authority by an initiating transmission from a vehicle in Space, such transmission being received by the public in the UK).
Come to think of it - nearer home: I build a rowing boat and row out to the high seas: I sing a song: a beautiful performance, captured and broadcast to the world by a microphone held by a journalist in another boat. Is my performance protected under the Rome Convention 1961? Would it be different if I performed on the liner QM2? And is my performance protected if my singing is broadcast from a Space station? And what about the rights of the composer of the song?
If you would like to contribute to the debate on Space Copyright Law, log on to the Queen Mary Intellectual Property Research Institute Research website here and play your part in the construction of the law to apply to the cosmic future of mankind in the field of copyright".
More on space here, here and here
Be spaced-out here, here and here
Get your own personal space here.
Troubled by personal space invaders? Click here
Tuesday, 24 February 2004
Last night the IPKat was fortunate to attend the 7th Annual Burrell Lecture of the Competition Law Association. This year's lecture, "Intellectual Property, Free Movement and Competition: Conflicting of Complimentary?", was delivered by Lord Hoffmann, an active member of the Judicial Committee of the House of Lords and an enthusiastic personality on the intellectual property scene.
Lord Hoffmann started by explaining that the legislature sought to establish a balance between stimulating competition in innovation, on the one hand, and stimulating competition in production and distribution on the other hand. In a magisterial survey of decisions of the House of Lords, the Privy Council and the European Court of Justice, he described the tensions between these competing interests as they applied to copyright, designs, patents and ultimately trade mark rights. This analysis emphasised the contrast between the "structural" nature of IP rights and the "behavioural" nature of competition law: IP rights provide the overall structure for the protection and exploitation of intellectual creations, while competition law addresses individual instances of aberrant market behaviour. He observed that, where the courts regularly seek to restrict or modify the application of IP rights on a case-by-case basis in order to protect the perceived interests of competition policy, this is a signal that the regulatory process has gone wrong. A case in point was the decision in British Leyland v Armstrong Patents, where the House of Lords took it upon itself to create and apply a form of competition policy which was not inherent in the IP right itself. His Lordship also expressed the view that adversarial litigation between an IP owner and his foe was not the best forum for the protection of the perceived public interest, especially since there was no amicus procedure for articulating and representing that interest.
He further emphasised various differences in approach between the ECJ and the UK courts. Of note is his assertion that UK courts tend to nip what they perceive as problematic wide IP rights in the bud before they give rise to competition law issues while the ECJ is prepared to let such wide IP rights continue to exist, entrusting their regulation to free movement and competition law.
Following the lecture the IPKat thoroughly enjoyed an excellent dinner at the Middle Temple, by kind invitation of barrister and guest blogger Ashley Roughton of Hogarth Chambers.
More on Lord Hoffmann here and here
Tales of Hoffmann here and here . Legend of Hoffmann here.
IP case involving Hoffmann here
Professor Ruth Soetendorp of Bournemouth Centre for Intellectual Property Policy & Management has kindly sent this dispatch to the IPKat:
"The Guardian reported last Thursday the sad decline of Kit Kat as the leading light of the UK confectionery market. Kit Kat made its own contribution to intellectual property valuation history. The Kit Kat trade mark was the main incentive in 1989 for Nestle's successful endeavours to take over the well respected confectioners, Rowntree of York. Thereafter, accountants would find it increasingly difficult to ignore the value of a thriving brand on the balance sheet. Kit Kat's contribution to the English language has been the well known phrase 'Have a break ... have a Kit Kat'. And Kit Kat's contribution to trade mark law comes from Nestle's continuing attempt to register 'Have a break' as a trade mark, independent of 'Have a Kit Kat'. Is this prescience on Nestle's part? Are they hoping to secure 'Have a break', before they ditch Kit Kat, in order to use it in connection with a more 21st century product?"
Hershey KitKat here. The KitKat story here
Welcome to the KitKat Club here
Findlaw reports that an American court has found that software that allows consumers to circumvent protection measures that prevent consumers from copying DVDs is in breach of the Digital Millennium Copyright Act (DMCA). The defendant, 321 Studios, had argued that its technology was not in breach because it allowed consumers to make fair use of the material protected by the circumvention protection measures – for example, to make back-ups in case of the original work being damages and for journalistic use. According to Judge Susan Illston though, the software, which contains “keys” to unlock the protection on the DVDs, was illegal. Moreover, the DMCA was found to be compatible with free speech and not to interfere with the free use rights of consumers. 321 has said it will appeal.
While the IPKat doesn’t advocate copyright infringement, he is most definitely in favour of the fair use provisions of copyright works, which strike the balance between the interests of copyright owners and the interest of other actors in having access to copyright works. In so far as this balance is not struck in the DMCA by the absence of fair use exceptions, he is not a happy cat.
DMCA here YMCA here
Monday, 23 February 2004
... after a short break in Prague, attending the Project Teams meeting of MARQUES, the Association of European Trade Mark Proprietors. Normal blogging activities will resume very shortly. so please watch this space!
More on cats in Prague here and here.
Wednesday, 18 February 2004
Another new Sweet & Maxwell title to hit the bookshops this year is the sixth edition of Intellectual Property Law and Taxation, by Nigel A. Eastaway, Richard J. Gallafent and Victor A. F. Dauppe. This hardback edition, consisting of nearly 800 pages, “is addressed primarily to those who wish to use intellectual property law and taxation for legitimate ends”. The IPKat hopes that this honest declaration does not unduly restrict the sales potential of this popular work, which features some enjoyable and highly plausible Case Studies. Anyone whose eyes glaze over on seeing detailed analysis of tax law can thus take refuge in the tales of Albert Potcher, bricklayer extraordinary, the pop group Brighton Rock, the conductor/composer Yuri Rakovsky and Nuttabun “”Fast Food for the Third Millennium”). The authors bring to bear their blend of business nous, intellectual property expertise and accounting skills in a seamless web of valuable tax teaching, current to July 2003.
The price (£160) for a specialist book on a subject of this nature is no longer dear and, for any reader who uses it profitably, the IPKat imagines that it will pay for itself. If you are an IP creator (or advise one) and generate income on which you wish to minimise your tax liability, read it!
Tuesday, 17 February 2004
The Guardian reports that Scottish and Newcastle plc, the brewers of NEWCASTLE BROWN ALE, are considering switching production from Newcastle to Gateshead, a nearby North-Eastern town. The article reports that the Gateshead-based Federation Brewery has been producing trial runs of “broon” (as the ale is known).
The IPKat is detects a storm brewing. NEWCASTLE BROWN ALE is a protected geographical indication that must, according to its specification, be brewed in The City of Newcastle-Upon-Tyne, Tyne and Wear. Gateshead of course is not within Newcastle. Presumably this means that the brewer of broon won’t be able to use the GI that it lovingly cultivated. Moreover, Scottish and Newcastle plc is the proprietor of various NEWCASTLE BROWN ALE trade marks. If they can’t use that name though because it’s a GI, will the trade mark eventually become revocable on non-use grounds. Moreover, will the use of a trade mark containing the word “Newcastle” for a beverage that originates in Gateshead be deceptive.
Find out what’s really inside NEWCASTLE BROWN ALE here and here
Like your beer really cold? Click here and here
Like your beer warm? Click here
The Lawtel subscription service notes a rare decision on database right, Royal Mail Group Plc v I-CD Publishing (UK) Ltd, a Chancery Division decision of Mr Justice Lloyd last Friday. This was the trial of a preliminary issue as to whether I-CD had a licence-based defence to Royal Mail's http://www.royalmail.com/portal/rm allegations of infringement of database rights. Royal Mail had a statutory duty under the Postal Services Act 2000 s.161 (i) to maintain a "postcode address file" (PAF) which included 27 million postal address records and 1.7 million postcodes and (ii) to license it on reasonable terms. I-CD provided "UK info" products, the aim of which was to provide a complete directory of everyone of voting age in the UK. When preparing each version of "UK info", the underlying database was PAF-validated (PAF validation being the comparison and correction of an existing mailing list against the PAF database) by various licensees of Royal Mail who were end users. Royal Mail alleged I-CD infringed its database rights and copyright. I-CD's defence was based upon the proviso to clause 3.1 of Royal Mail's end user licence terms. That clause provided that nothing in it prevented end users using the PAF to modify existing mailing list databases. On this basis, I-CD argued, PAF validation of the electoral roll database included in certain versions of its "UK info" directory was licensed. Royal Mail disagreed and argued that a list created for subsequent processing was not an "existing mailing list" and that, to fall within that phrase, a database had to have been compiled primarily as a mailing list at the time it was provided to the end user, not used for some other purpose. I-CD contended that any database with names and addresses was a mailing list database and that data derived from electoral rolls formed the basis of many address services available.
Lloyd J held that I-CD’s PAF validation was licensed. Clause 3.1 sought to strike a balance between limiting the use that could be made of Royal Mail's IP and allowing that IP to be used so as to encourage the updating of mailing lists. If “mailing list database” was not construed to include all names and addresses, the meaning and ambit of that phrase in the clause would make the proviso unworkable.
The IPKat thinks the basis on which Lloyd J reached his decision is unclear. Was it just because the proviso to Clause 3.1 would be "unworkable" if the opposite conclusion were reached? If so, it is difficult to see why it should be unworkable: all that would be needed to make it work would be the payment of licence fees to Royal Mail. Or was it the result of interpreting the licence provisions contra proferentem? When a transcript of this decision comes to light, we shall all be the wiser for it.
Royal mail here and here
Royal males here and here
The BBC reports that EMI, the record label responsible for the Beatles’ music, has successfully threatened legal action against the DJ, DJ Dangermouse, who has mixed together the music from the Beatles’ White Album with the words of rapper Jay-Z, taken from his Black Album. In response to EMI’s assertion of its copyright, Mr Dangermouse has agreed not to produce, sell or distribute any more copies of the work. However, he is encouraging his fans to do what he can’t and a spokesman has said that he is “just happy for people to burn it, bootleg it and post it on the internet”. This is possible because a number of promotional copies were realsed and are now circulating in the hip-hop community. Their scarcity makes them all the more sought after.
The IPKat is mildly amused by the ironic fact that EMI’s assertion of its copyright has made the potentially infringing materials into valuable commodities. Moreover, there’s not a lot EMI can do to stop the private reproduction of the work, short of tracking down and bringing action against the actual copiers. Additionally, there’s nothing that EMI can do against DJ Dangermouse because there’s no offence of incitement to infringe copyright.
Dangerous mice here
Have a grey day here
Everything’s all white here, here and here
Sunday, 15 February 2004
The Sunday Telegraph reports that UK-based media group Emap is planning to launch a serious new daily newspaper to compete with the quality end of the market. In tabloid form, it is to be modelled on the highly respected French newspaper Le Monde. In a conscious tribute to this source of inspiration, Emap is considering calling it The World.
The IPKat wonders what the publishers of Le Monde (English translation: “The World”) would make of this. It isn’t known whether Emap has a licence to use that name and it’s quite uncertain under English law whether it would require one. In terms of passing off law, Le Monde enjoys goodwill in the UK since many copies of its newspaper are sold here daily. Le Monde’s publishers might worry that its reputation would be affected by the perception of British purchasers that The World was an English version of its own paper rather than an independent publication. A quick search of the UK trade mark register did not reveal a registration for LE MONDE in Class 16 (newspapers). Even if it had done, it is unlikely that the use of the title The World would have infringed that registration. The three criteria for establishing that trade marks are similar are those of (i) visual, (ii) aural and (iii) conceptual similarity, but there has been no case in which trade marks have been found similar on the basis of conceptual similarity alone.
More papers of the World here
World made of paper hereand here
The Beau Monde here
Butterworth’s All England Direct subscription-only service has just turned up Reckitt Benkiser (UK) Ltd v Home Pairfum Ltd and others, a “threats” case heard before Mr Justice Laddie on Friday. Reckitt, who make air fresheners and sell them in specially designed containers, sued Home Pairfum, its owner and managing director for design right and trade mark infringement. The defendants denied the allegations and brought a counterclaim, contending that the claimant had made groundless threats of infringement proceedings contrary to s 21 of the Trade Mark Act 1994 (“‘Where a person threatens another with proceedings for infringement of a registered trade mark other than (a) the application of the mark to goods or their packaging, (b) the importation of goods to which, or to the packaging of which, the mark has been applied, or (c) the supply of services under the mark, any person aggrieved may bring proceedings for relief under this section”). The defendants also applied to have Reckitt’s solicitors joined as defendants to that counterclaim. Reckitt applied for the counterclaim to be struck out on the ground that it gave rise to an abuse of process and was in breach of the court’s case management powers. It argued that the threats provisions forced an IP owner to sue without prior negotiation, since attempts to negotiate with alleged infringers were likely to be construed as threats. This result ran counter to the objective of the Civil Procedure Rules, which sought to promote pre-action settlement.
Laddie J dismissed both Reckitt’s and the defendants’ applications. He said that the court’s powers, which were wide, should be tailored to meet the circumstances of the case. The court could strike out an action where there was an abuse of process, but it was not always correct to do so. If an abuse of process might be addressed in a less draconian manner, the court would take that approach. In this case there was no substantial saving to be made by striking out the counterclaim and it would be convenient to allow all matters to be canvassed at trial.
The IPKat believes that traders should be protected against wrongful threats. However, he wishes that the “threats” provisions in UK intellectual property law were properly rationalised. As it is, threats proceedings can be made against a person who makes wrongful threats of patent, trade mark or design infringement, but not copyright, passing off or breach of confidence. Where the threats action is available, its drafting and its effects are unclear and vary as between different IP rights.
Unusual air fresheners here, here and here
Friday, 13 February 2004
Yesterday the ECJ decided the Henkel case. The IPKat can't tell you much about it though because no English translation has appeared on the ECJ website yet. Nonetheless, the IPKat has managed to ascertain with a combination of his inferior grasp of French and his superior knowledge of the Babel Fish translation website that the mark was for the shape of the packaging of detergent for woolen articles, vis "a lengthened bottle, narrowing to the top, with an integrated handle, a relatively small drain opening and a stopper on two levels, which can also be used as dosing goblet". It seems that the case was decided under Articles 3(1)(b) - distinctiveness, (c) - descriptiveness and (e) - functionality, of Directive 89/104.
Long bottles here and here
Cleaning woolies here
The European Court of Justice delivered two major judgments yesterday on the clarification of the registrability of descriptive signs as trade marks in harmonised EU jurisdictions. Both cases came from the Netherlands: Case C-265/00 Campina Melkunie (BIOMILD for various milk products) and Case C-363/99 Koninklijke KPN Nederland (POSTKANTOOR, the Dutch term for Post Office, for goods and services in various classes). Tobias Cohen Jehoramand Koen Limperg, both of Dutch law firm De Brauw Blackstone Westbroek, acted for KPN in the POSTKANTOOR case. Their firm’s website produced an instant comment on the two ECJ decisions, on which much of this blog is based.
The basic ECJ rule on registration of combinations of descriptive terms as trade marks is found in Case 383/99 BABY-DRY: “any perceptible difference” between descriptive terms as normally used and as they appeared in the trade mark application was sufficient to satisfy the criterion of distinctiveness, even if it was only a syntactically unusual juxtaposition (like BABY-DRY instead of “dry baby”). In the face of criticisms of this decision both within the trade mark professions and by Advocate General Ruiz-Jarabo Colomer, the ECJ restated in Case C191/01 DOUBLEMINT that the BABY-DRY principle is good law and has now, in yesterday’s cases, clarified its application further. The two cases now state as follows:
• a simple combination of descriptive elements remains descriptive and unregistrable unless it acquires a secondary meaning;
• a combination of those same elements becomes registrable when it contains any unusual variation;
• the Benelux practice of requiring the trade mark proprietor to make a disclaimer that the goods for which a mark is granted will not possess a particular characteristic “leads to legal uncertainty”;
• signs that may designate characteristics of goods or services should remain freely available for all.
These principles are not in any sense “new” law. The IPKat awaits with excitement the decisions of the Dutch courts as to whether BIOMILD and POSTKANTOOR will be registrable or not.
Click here for more “bio” products: Biopot yoghurt, Bio cheese, Bio milk, Bio butter, Bio Cream
Click here for more post-related intellectual property: Postman Pat, the Singing Postman, The Night Mail, The Pony Express and the Penny Magenta stamp from British Guyana
Back in September 2003, Lord Justice Jacob delivered a paper(which has recently become available) at the Third European Trade Mark Judges’ Symposium on “Relative grounds for refusal: extent of the trade mark proprietor’s rights”, which he co-wrote with Geoffrey Hobbs QC. The piece contains many insights into the thinking of two of the UK’s most eminent IP specialists. Of note is:
♦ their discussion, and grudging partial dismissal of, a three-layered scheme of infringement protection involving mutually exclusive umbras and penumbras of protection;
♦ the highlighting of the need for their to be an “outer limit” to where unregistrability/infringement can be found under Article 4(1)(b) and 4(1)(b) of Directive 89/104
♦ various suggestions made by them about the desirable scope of Article 5(2) e.g. a need for trade mark use by a defendant and the need to properly substantiate the existence or likelihood of misappropriation or impairment of the earlier mark.
♦ their condemnation of specifications of goods or services that are excessive relative to the commercial interests of the proprietor, including the OHIM practice of allowing registrations of CTMs for whole class heading provided for in the Nice Classification, even if the proprietor will only use the mark for some of the goods/services contained therein.
The IPKat needs some help though. At one stage (para 17), the authors claim:
“Marks which converge upon a particular mode or element of expression may or may not be found upon due consideration to be distinctively similar. The position varies according to the propensity of the particular mode or element of expression to be perceived in the context of the marks as a whole, as origin specific or origin netural.”
Anyone who can explain to the IPKat (i) what this paragraph means and/or (ii) what the term “distinctively similar” means – after all, if something is distinctive from another thing, it usually means that it’s different from it - is in line for the IPKat’s usual lavish yet tasteful prize.
More three-layered schemes here, here and here
Outer limits here
Thursday, 12 February 2004
Ananova reports that visitors to Leiden during the city's annual music festival will gain free entrance to the main car park if they agree to sing. According to Chris Verplancke, director of the 1,200 space car park,
"Everyone who parks in the building will be met by a presenter who will ask him to come to the stage near the bus stop and sing a song. It can be an aria from Carmen or a song from Madonna, but they have to finish the whole song. We don¹t accept just a few lines. We think a lot of choirs will be attending the event, so for them it¹s not difficult to give a performance. We have promised not to be very critical".
The IPKat, who has caterwauled a few melodic numbers in his time, wonders where the owner of the copyright in the song's music and lyrics fits into this scheme. Has the municipality of Leiden procured a blanket licence for the public performance of protected works (the identity of which will presumably be unknown to it until each motorist bursts into song), or is this going to be a glorious celebration of mass infringement? There are two issues to be resolved: the liability of the singer and the liability of the municipal authority both for hosting the event and (in the case of UK law, which of course doesn't apply in the Netherlands) for authorising the doing of infringing acts by third parties.
Free parking here, here and here
More on unauthorised public performances here and here
Historical public performances here, here and here
Sing here for your supper, for your life, for sex (here and here)
Wednesday, 11 February 2004
The IPKat is offering the usual prize for the best response to the following: is there copyright in the totality of the solutions to clues that a person writes on a crossword grid when he's solving a crossword puzzle (i) correctly and (ii) incorrectly -- and why?
Crosswords here, there and everywhere
How to avoid cross words here, here and here
Make your own crosswords, then solve them
Frozen food brand Birds Eye is scrapping its famous gull-shaped logo, The Scotsman reports that parent company Unilever is replacing the bird design with a new eye-shaped logo as part of the biggest overhaul of the brand since it first hit the British freezer market in 1938. The first products carrying the new logo are set to appear in April. Jerry Wright, brand director for Birds Eye, said: "You muck about with the old logo at your peril. You have to have something better in place but we believe we have that".
The IPKat, ever interested in birds, quite fancies moving in on the old gull-shaped logo and using it commercially himself once Unilever hasn't used it for five years. He wonders whether the giant food corporation will be taken the necessary precautions (if indeed there are any possible precautions) to prevent him doing so.
Find out here why the brand is called Birds Eye
Raging at the missing apostrophe in Birds Eye? Click here for consolation
More on birds' eyes here, here and here
Birdseyes here and here
Classic bird's eye joke here (scroll down to joke number 16)
The IPKat has received a review copy of Thomas Hays’ Parallel Importation Under European Law. The European Court of Justice has recently developed a large body of jurisprudence onn this subject, incidentally reaching out towards topics such as the burden of proof in infringement litigation (Van Doren), repackaging (Boehringer Ingelheim), defacement of barcodes (Loendersloot), resale in a downmarket mode (Dior) - the list goes on and on.
Dr Hays' book is the first major account of parallel importation and the grey goods phenomenon since this recent blossoming of the ECJ's case law. In his analysis he brings to bear his enthusiasm for European intellectual property law, eschewing a parochial approach for a more appropriately European panoramic vista. Nor does he confine his discussion to consideration only of the mainstream IP rights: the impact of exhaustion principles upon even such rarely litigated fields as the protection of seeds amd semiconductor topographies is brought to the reader's attention.
Published by Sweet & Maxwell on 31 December 2003, this handsome hardback volume undertakes a wide-ranging consideration of what the author describes as the “agent provocateur of European intellectual property law”, so-called because the concept “tests the reach of exclusive rights and their relationships to overarching needs of Common Market integration”. The comprehensive examination consists of:
1. Introduction (examining commercial and moral aspects of parallel trade, as well its legal nature).
2. Free movement and market integration.
3. Pharmaceuticals, relabelling, repackaging and rebranding
4. Anticompetitive agreements
5. Abuses of dominant positions
6. Royalty collecting societies and trade associations, automobile and film distribution
7. Trade mark harmonisation and the exhaustion of rights
8. Davidoff, consent and the burden of proof
9. Copyrights, designs, patents, seeds and semiconductors
At £175, the IPKat thinks that this work is a worthy addition to the bookshelves of those interested in competition law, as well as mainstream IP enthusiasts.
More parallels here, here and here
Tuesday, 10 February 2004
The February 2004 isue of Sweet & Maxwell's Fleet Street Reports contains reports on five UK intellectual property cases. One of them, Miller Brewing Company v The Mersey Docks and Harbour Company, returns to a topic of practical importance: where a trade mark owner applies for the delivery up of infringing goods (in this case MILLER beer) and serves notice of his application against all parties involved in the infringement including an innocent third party who is storing the goods, who has to pay the costs? Should it be the innocent third party or the equally innocent trade mark owner? Another fascinating case reported in the same issue is Coflexip v Stolt Offshore (No. 2), in which Mr (now Lord) Justice Jacob affirmed that, where an enquiry into damages has been ordered, a patent infringer is estopped from denying the validity of a successful claimant's patent even where that patent has been subsequently held invalid in proceedings, which were under appeal, involving another defendant.
AdAge reports on the “arsenal” of new promotional devices being used by marketers and retailers within supermarkets. The overwhelming choice of TV and print-based fora for advertising products has led to marketers seeking to turn the shopping experience itself into a branded experience. Examples include floors that talk, messages that swoop down from the ceiling and motion sensors that trigger on-shelf light shows, such as those piloted by the drinks brand Mountain Dew, which caused individual containers of the drink to light up bright green as consumers walked past the refrigerator in which they are stored.
This isn’t all good news for brand-owners though. Some shops, keen to promote their own-brands and afraid that an excess in marketing will cause the messages of the promotions to be lost in a form of “instore spam” have implemented “clean store” policies, strictly regulating promotions by brand owners. Nonetheless, such promotions are valued in view of the widely cited fact that 70% of buying decisions are made at the point of purchase which translate into profits not only for the brand owner but also for the retailer. Moreover, promotions that push a particular brand often end up stimulating sales for the product category as a whole.
The IPKat is fascinated by the ever more innovative ways brand-owners find to use their trade marks, though he warns that, as certain supermarkets have recognised, over-promotion could negate the effect a trade mark has if everyone else is using the same methods to promote their goods. The message will simply get lost in a sea of advertising that consumers will just blank out.
Floors that talk here and here
Instore spam here
Some promotion Mountain Dew could do without here
Sunday, 8 February 2004
Reuters reports that Paris Hilton, the hotel heiress and reality TV star, is suing a Panama-based internet company in the Los Angeles Superior Court. The claim arises out of the worldwide circulation of a video of Ms Hilton having sex with her then-boyfriend that has been forwarded to millions of random personal email inboxes. Maintaining that the video was meant for her personal viewing only, she is claiming $15million actual damages and the same amount in punitive damages for violation of privacy, illegal business practices and infliction of emotional distress.
The IPKat says that the genie is out of the bottle. There’s precious little Ms Hilton can do to claw back her privacy. Prevention is the best cure in such situations – if you are going to make videos of yourself doing naughty things, make sure that you don’t entrust them to people who are going to leak them.
Paris Hilton here
Sleep with Paris Hilton here
Is the video all that it seems? Find out here (no – this isn’t a link to the tape – you should be ashamed of yourself!) Sociology of the tape here
Findlaw reports on a Chinese dispute involving the Starbucks coffee-shop chain and a local competitor. The US company is bringing an action against Shanghai Xiangbake, the owner of two outlets. Both use the same Chinese characters in their name: “xiang” meaning star and "bake" (bah-kuh), which is a phonetic rendition of "-bucks." Starbucks has expressed disappointment that the case could not be settled, but has expressed its determination to protect the value of its mark and to protect the public from confusion and deception. However, the Chinese company is fighting back and has claimed that its earlier company name, registered before Starbucks applied for the trade mark, trumps the US company’s trade mark.
The IPKat notes with interest the recent apparent surge in the number of news stories involving China and conflicts with local IP rights. This is set to continue as more multinationals enter the region. He also comments that, much to his unease, the balance to be struck between company names and trade marks is one that has given rise to different solutions in different jurisdictions.
Learn about the stars here, here and here
Chinese coffee here, here and here
Ananova reports that a Beijing businessman by the name of Guo has applied for permission to use the name of US President George W. Bush for his brand of disposable nappies. He has filed an application with the General Administration for Industry and Commerce of China, stating he wants to register the word BUSHI. According to Xinhua Guo said: "I hit upon the idea by chance. Back in my hometown in Henan Province, the pronunciation of BUSHI sounds exactly like 'not wet'". An official at the State Trade Mark Bureau has indicated the application was “very likely” to be rejected "because it may bring about bad social impact if a leader's name is registered as a trade mark". The result of Guo's application will be known in 16 months, following the completion of the rather complex procedure for examination and approval. It has also been reported that the Chinese authorities have recently turned down an application by a costume company, which applied for the use the Chinese translation of "(Monica) Lewinsky" as a trade mark for fashion goods.
The IPKat notes that the registration of names of famous leaders like George W. Bush by third parties is not normally possible in European jurisdictions. However, the registration of BUSH or BUSHI would not be problematic, particularly in English-speaking jurisdictions. “Bush” is just another word for a shrub, while “bushi” just sounds like “bushy”.
Other famous Bushes here, here and here
Bush babies here and here
More on Chinese trade marks here, here and here
Friday, 6 February 2004
The January 2004 issue of Butterworths’ subscription-only Intellectual Property and Technology Cases has finally emerged. Apart from the House of Lords decision in Wainwright v Home Office (no right of privacy even after the coming into force of the Human Rights Act 1998), the issue covers the Court of Appeal decisions in Inter Lotto v Camelot (on the trade mark/passing off interface) and FA Premier League v Panini (whether logos on footballers’ shirts are “incidentally included” in photos of footballers who wear them) and lots more besides. All IP&T cases come fully equipped with comprehensive headnotes; they are available to subscribers both online and in printed form.
An unusual event yesterday was the hearing of a Scottish patent case by the judicial committee of the House of Lords (the appellate tribunal which the British government is set to replace with a Supreme Court). In Buchanan v Alba Diagnostics  UKHL 5 Buchanan, who owned a 1996 patent for a fluid boiling point measuring device, alleged Alba infringed it by making and selling its brake fluid tester. Alba, denying infringement, raised the preliminary point that Buchanan had no title to sue because he had earlier assigned his patent rights to an investor, Mills, who had in turn assigned them to Alba. Mills had invested in Buchanan’s company, Innovations, taking security in the form of a 1993 assignment of intellectual property rights, including improvements and extensions to existing applications and patents. After Buchanan's company went into receivership Mills sold the charged assets, as the deed of assignation permitted him to do, to Alba in 1994. Alba maintained was that Buchanan’s 1996 patent was an improvement on the invention which passed to Mills under the deeds of assignation, with the result that the patent rights also passed under the deeds at the same time as the patent was granted under the doctrine of accretion. The trial judge and the Inner House, Court of Session, held that Buchanan had no title to sue so he appealed to the House of Lords, who dismissed his appeal. Their Lordships considered that, since the doctrine of accretion applied to the disputed invention, it passed under the assignment to Alba. Nor was the assignment of improvements -- a transaction between two experienced businessmen -- void as an unreasonable restraint of trade: any purchaser of patent rights could reasonably protect the commercial value of his purchase by seeking the right to any improvements. There was no public interest in inventors being prevented from borrowing money on the security of future rights.
The IPKat wonders at Mr Buchanan’s industry in getting what appeared on the facts to be a relatively straightforward case all the way to the House of Lords, the highest appellate tribunal in the UK. If the transaction in question in question were against the public interest, small-scale inventors would find it extremely difficult to obtain innovation and development funding at all.
More on brake fluid here, here and here
Other fluids with a Scottish connection here and here
Brake fluid joke here
The IPKat’s friend Gadi Oron has just sent him news of various recent Israeli IP decisions, including Buffalo Boots v Lucassi Shoes (Tel Aviv District Court, 11 January 2004). Buffalo Boots sued Lucasso for selling shoes which looked similar to their own and bore a similar “boomerang” logo. The parties’ shoes were however sold under quite different names. No passing off, said the court. Although Lucasso’s shoes were almost identical to the claimants’ in their appearance, the fact that they bore different names prevented the public from being misled. Buffalo Boots however succeeded on the ground of “false attribution” in that Lucasso described its shoes to potential retailers as being “Buffalo Boots”. Damages were awarded for false attribution and trade mark infringement, even though loss no was proved.
The IPKat, who only knows of “false attribution” as a doctrine under British copyright law, is surprised to see it brought into play on facts in which trade mark infringement and passing off looked to be more promising avenues to pursue.
Find out about Buffalo Bill, buffalo steak with Jack Daniel sauce, buffalo hide and Buffalo University
False attribution syndrome; false attribution in literature and in photography
A Grimm view of Buffalo Boots
Footwear for other animals here, here and here
”Exploiting Images and Protecting Privacy: Has the Time Come for the Law to Recognise Publicity Rights?” This was the name of a talk given on Wednesday by Dr Edgar Forbes (Centre for Intellectual Property Policy & Management, Bournemouth University) at the Queen Mary Intellectual Property Research Institute. Edgar also masterminds the Media Beak weblog, which takes a sharp and critical look at contemporary British media and policy issues
Speaking to an audience of IP enthusiasts in a packed seminar room, Edgar sought to show how an individual’s personal rights might be characterised having either a private or public dimension. He contrasted the protection given to a person’s financial interest in preserving his property-publicity-image-commercial persona with that given to his private-human right persona. At present UK law lacked either a clear-cut right of publicity or a clear-cut right of publicity. Creation of a formal right of publicity would leave the way clear to develop a strong privacy-oriented human right.
Edgar considered important recent cases, including Wainwright and Douglas and Zeta-Jones v Hello!. These decisions suggested that, while some judges may identify privacy as a value and as a justification for the protection of the individual against intrusive raids on the integrity of his private life, that justification does not of itself constitute a legal right. Right now the relationship of the privacy principle to the legal relief granted so as to restrain a breach of confidence created a muddled sort of “prividence”.
Anyone interested in pursuing this topic further is encouraged to contact Edgar direct.
The IPKat muses on the seeming reluctance of British courts to evolve consolidatory rights in the field of intellectual property. The law of passing off continues to spread in all directions. In one direction it has not yet become a law of unfair competition while in another direction it has failed to become a right of publicity. Likewise, the equitable remedy of breach of confidence continues to blossom, but still doesn't metamorphose into a right of privacy. but the law has edged so far in each of these directions that it just needs a tiny nudge to push it over the brink and into the new conceptual labels that lie in wait.
How privacy doctrine works: click here, here and here
Rghts of publicity here, here and here
Unwanted privacy here and here
Unwanted publicity here, here and here
Personal secrets here, here and here
Click for paparazzi here, here and here
The Church has been scandalised by the news on ship-of-fools.com that organists have been sneaking excerpts from television theme tunes and other popular songs into church services. One organist combined "Come Down, O Love Divine" and the theme from TV's Blackadder while another (English) organist played “Swing Low Sweet Chariot” (the English rugby “anthem”) to an Australian congregation after the England team scored a victory over Australia in last year’s Rugby World Cup. Other organists have used the technique to take revenge on practitioners. For example, on played “Roll Out the Barrel” at the funeral of an inveterate drinker.
The IPKat wonders whether the organists have gained permission from the owners of the copyright in the tunes before using them in this fashion. Under s.19 of the CDPA, performance of a musical work in public constitutes infringement and sadly there is no defence (at least under earthly law) for use in the course of divine worship.
Learn to be a church organist here and here
Organ grinders here and here
Thursday, 5 February 2004
The IPKat brings you the chance to impress your friend and relations by deploying the latest linguistic trends. Why not drop the word 'paracopyright' nonchalantly into your next conversation? "But what does it mean?" the IPKat hears you cry. Well, according to Wordspy, it is "A set of non-traditional copyright-related principles, practices, and laws that exist alongside and attempt to extend traditional copyright protection" such as anticircumvention protection.
The IPKat’s masters have been quite productive recently. Apart from Ilanah’s article in the EIPR (see “Far Too Modest”, blogged yesterday), there’s quite a bit of interesting work in the pipeline.
• Jeremy and Ilanah’s paper, “Going Down in History: Does History Have anything to Offer the Intellectual Property Lawyer?” is now finished and awaits publication along with the other papers given in the same seminar series.
• Jeremy and Ilanah have also drafted an article, “No Marks for Hitler: a Radical Reappraisal of Trade Mark Use and Political Sensitivity”, which is currently in search of a journal to publish it.
• Jeremy’s paper, “Databases, the Human rights Act and EU Law”, has now been revised for publication later this year by Oxford University Press in its collection of seminar papers on the Freedom of Expression and Copyright seminar hosted by Queen Mary, University of London, last year.
Any of our readers who would like to see any of these papers should send us an email and we will be pleased to oblige.
Wednesday, 4 February 2004
According to a Press Release dated 2 February, the European Commission has presented proposals for two Council Decisions on the proposed Community patent. The first would confer formal jurisdiction on the European Court of Justice to deal with alleged infringements of Community patents and challenges to the validity of patents. The second would establish (i) the Community Patent Court, whose seven judges would exercise the Court of Justice's jurisdiction on its behalf and (ii) a specialised chamber within the Court of First Instance to hear appeals against the Community Patent Court's judgments, those appeals being subject to review by the Court of Justice. Internal Market Commissioner Frits Bolkestein said:
"To maximise the benefits of the Community patent, we need a single Community Patent Court, under the ultimate jurisdiction of the European Court of Justice, so that disputes are judged with EU-wide effect. I am confident the Council will adopt the necessary decisions quickly, as broad agreement in principle was already reached at the March Competitiveness Council. But of course, setting up the jurisdictional arrangements without finalising adoption of the Community Patent Regulation itself is about as useful as a new pair of skis in the desert. So above all I hope the Council will agree on the final points of detail on the Community patent still at issue and adopt the Regulation. Europe's companies have been crying out for too long for access to pan-European patent protection at reasonable cost with minimum red-tape and maximum legal certainty".
The IPKat thinks this sounds suspiciously like Euro-waffle. All companies, European and otherwise, complain about the cost of patent systems (in many cases with considerable justification). But the IPKat, whose ear is pretty close to the ground, has not heard many of them crying out for a pan-European panacea in the form of the Community patent. This creature is the dreamchild of European Union bureaucrats, who believe that a single territory and a single market demand a single patent. Let’s see how many of these companies actually use the system when it comes into force, applying for a patent which -- depending on whether it is granted -- will protect either all or none of the 25 countries that will constitute the world’s most valuable market. But that’s not all. The Press Release continues:
“To provide a less wasteful and costly system, the Community Patent Court would operate according to a single set of procedural rules, with a uniform case law and with costs affordable for users and in particular for SMEs. Thus, the jurisdiction regime proposed would ensure that disputes over Community Patent rights were judged with EU-wide effect by a single centralised and specialised court. That would provide legal certainty for the protection of inventions throughout the Union”.
What does this mean? The IPKat notes that “legal certainty” is heralded, though the identity of the seven judges (who will be political appointees, nominated by the Council of Ministers) is currently unknown. Also, until the Community Patent Court starts hearing cases, there isn’t going to be any “uniform case law” for the court and litigants to rely on. When the court’s doors open, who will be the first brave guinea pigs to rush in?
More on the Community Patent Regulation 2003 proposal, 2000 proposal, 1997 Green Paper
Comments on the Community Patent Regulation from the ICC, CEFIC, US attorney Edward G. Fiorito and the UK Patent Office
A poor man’s tale of a patent here
Click here for Euro-waffle , Euro-fudge and Euro-guinea pigs
The BBC reports that an American court has dismissed a breach of privacy claim against the rapper Snoop Doggy Dogg. The claimant, identified only as “Jim Bob”, left a message on Mr Dogg’s answerphone supporting the rapper during his contretemps with Marion “Suge” Knight. He was surprised though when he found that his message had found his way on to a song in Snoop Doggy Dogg’s 2002 albumn Paid the Cost to be Tha Boss. The court was not persuaded by “Jim Bob’s” argument that his safety had been endangered by the inclusion of the message, finding that he had no expectation of privacy.
The IPKat thinks that normally people should be entitled to expect that messages left on private answerphones will remain private. However, this expectation is less justified when a person makes unsolicited contact with a public figure and, without being asked for it, offers his or her support.
Snoop Doggy Dogg here
Snoopy Doggy Dogg here
More rapping dogs here
Threaten Jim Bob’s safety here
Equipment to make your next record with here
Tuesday, 3 February 2004
The IPKat has received a review copy of Christopher Wadlow’s The Law of Passing-Off: Unfair Competition by Misrepresentation. Chris Wadlow is a noted scholar in the field of passing off and unfair competition law, as can be seen by this paper on the subject, delivered at the Oxford Intellectual Property Research Centre in 2002.
The third edition, published by Sweet & Maxwell in January 2004, weighs in at 875 pages and is up-to-date to 31 July 2003. New for this edition is a chapter on unfair competition under international law and a consideration of the potential impact of the European Convention on Human Rights on passing-off. Also for the first time, there is coverage of the law of injurious falsehood. Most significantly, the book has acquired a new subtitle, controversially equating passing-off with unfair competition (anyone who doesn't think this is controversial almost certainly has no idea of the argument and speculation resulting from Lord Justice Aldous' throwaway suggestion that the time had come to call a spade a spade and recognise passing off as unfair competition law: see his last words in Arsenal v Reed , paragraph 70 and onwards, last May). The IPKat waits to see if the courts will follow Mr Wadlow’s lead.
The book contains a masterful analysis of the UK case law but at the same time does not neglect the European and international aspects of this aged but still vibrant branch of intellectual property law. Although pricey at £239, this work has more than enough to keep both practitioners and academics happy and contented (not to mention busy) for hours on end.
Passing out here and here
Passing kings here
Passing time here and here
The IPKat's joint master Ilanah is far too modest to tell anyone, but the February 2004 issue of the European Intellectual Property Review has just published a major article by her. Entitled "Dilutive Trade Mark Applications: Trading on Reputations or Just Playing Games?", Ilanah's article examines post-Victoria's Secret dilution- based trade mark opposition practice in the US NASDAQ case and contrasts it with European practice as exemplified by Intel's success in preventing registration of the INTEL-PLAY trade mark for children's construction toy puzzles.
Sunday, 1 February 2004
The BBC reports that leading internet search engine Google is issuing threats against a naughty sound-alike website, Booble, alleging both confusion and dilution of its famous GOOGLE trade mark. The Booble, web page, launched last week, looks fairly similar to Google’s, as a Google search will swiftly reveal. However, anyone probing beneath that website’s surface will discover that its adult content is of a somewhat spicy nature. When the IPKat visited Booble this evening, he found 78 hits for “bosom” and 63 for “bottom” but no hits for “chicken”, “Jeremy” or “Ilanah” or “IPKat” (phew!). Booble insists that its site is nothing but a harmless parody and that, in any event, it has a First Amendment entitlement to use the Booble name. Booble adds: “Only a lawyer could say Booble without smiling”. If this be so, the IPKat’s masters are certainly no lawyers.
The IPKat says this is an acute case of res ipsa loquitur.
The BBC reports that the video rental company Blockbuster is to pull out of Hong Kong and has shelved plans to enter the Chinese market. Top of its list of reasons is that the high incidence of piracy means that it is not profitable for the chain-store to trade there.
The IPKat notes that this is the first example of piracy having an effect on downstream rental markets he has come across. Usually, the argument against piracy is made by the artists themselves or by recording companies.
More Asian pirates here and here
The IPKat brings you tidings of a CFI case concerning the registrability as a trade mark of the 3D shapes of stand-up pouches for drinks, where the court focused particularly on the meaning of Article 7(1)(b) of Community Trade Mark Regulation 40/94. Deutsche SiSi-Werke (DSW) applied to register the 3D shape of various stand-up pouches for packaging drinks. The pouches were convex, were wider at the bottom and, viewed straight on looked, depending on the application concerned, like an elongated triangle, or an oval with concave sides. The examiner rejected the application for goods in Classes 32 and 33, as did the Board of Appeal, which held that the marks applied for were not distinctive as they would not be perceived by consumers as an indication of origin and, in the interests of competitors, there could be no monopoly in this type of packaging.
DSW appealed to the CFI which rejected Deutsche SiSi-Werke’s appeal:
♦ DSW was wrong to say that, by giving as a reason for its decision the necessity of preserving the availability of the sign for other undertakings, the Board of Appeal was basing its decision on Article 7(1)(c). Article 7(1)(b) was the only ground mentioned in the contested decisions. Additionally, the need to avoid the creation of monopolies is not the exclusive preserve of any one of the absolute grounds. Instead, it lay behind all of Articles 7(1)(b) to (e).
♦ DSW was wrong to argue that the Board of Appeal’s assessment under Article 7(1)(b) was incorrect. That article precludes from registration any marks which are incapable of exercising the essential function of a trade mark, which is to identify the commercial origin of the goods or services in question. Marks which are commonly used in the trade for the presentation of the goods or services in question, or for which there is concrete evidence that they could be used in such a way cannot carry out that essential function and are hence excluded from registration by Article 7(1)(b).
♦ The interest of an applicant’s competitors in being able to freely choose shapes and patterns for their own products is not in itself a ground for refusing the registration of a three-dimensional mark consisting of a product’s design, nor is it a criterion sufficient in itself for the assessment of a mark’s distinctive character. This is because Article 7(1)(b) only protects any interest that there may be in keeping such marks available to the extent that they are not capable a priori and irrespective of the use mark of them under Article 7(3) of functioning as a trade mark by enabling the relevant public to distinguish the product concerned from those having a different trade origin.
♦ A sign’s distinctiveness can only be assessed (i) by reference to the goods or services for which registration is sought and (ii) on the basis of the perception of that sign by the relevant public.
♦ Since fruit drinks and juices are intended for everyday consumption, the relevant public consisted of all end consumers. While the public is used to recognising word marks as trade marks, this is not necessarily the case where the sign is indistinguishable from the appearance of the product itself. Since liquids must of necessity be packaged for sale, the average consumer will perceive the packaging mainly as a means for packaging the product for sale.
♦ A sign which fulfils functions other than that of a trade mark can only be distinctive for the purposes of Article 7(1)(b) if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin.
♦ Consideration of internet sites showed that certain beverages were already packaged in stand-up pouches and the practice was likely to become common for all types of beverages. That form of packaging was not therefore unusual and so was not sufficiently unusual for the average consumer to perceive it per se as an indication of the specific commercial origin of a product within that category.
♦ The fact that the type of packaging had been used for the products at issue for a long time without being imitated was only relevant under Article 7(3) and did not make the packaging inherently distinctive.
♦ Most of the design features mentioned by DSW as being distinctive either coincided with the standard shape of stand-up pouches or were too insignificant to be capable of being memorised by the relevant public. Nor did the product features that were significant distinguish DSW’s goods. The basic pouch shape corresponded to the basic geometric shapes that could be used for stand-up pouches and, because of technical constraints, the oval and triangular shapes looked like squares or rectangles. Their concave sides would be seen by the average consumer as making them easier to hold. Their metallic finish would also not be seen as indicating their commercial origin as it would be seen as the result of the play of light on grey, deriving from the constituents of the foil used in the manufacture of the pouches. Finally, taking the appearance of each pouch as a whole, the differences between their appearance and the standard appearance of stand-up pouches constituted mere variations which were too minor to be retained by the average consumer as an indication of the commercial origin of the products concerned.
♦ The Board of Appeal was entitled to mention the risk of a monopoly being created in stand-up pouches since its findings confirmed that the pouches were devoid of distinctive character, reflecting the general interest underlying the absolute ground for refusal founded on Article 7(1)(b). Additionally, the risk of a monopoly being created was greater than usual here because the applications covered a large number of variations of the standard form of stand-up pouch.
The IPKat is confused by this decision. At some points the CFI states that the need to keep marks free for competitors underlies Article 7(1)(b) but elsewhere it says that the interests of competitors under that article are only relevant in so far as the mark is incapable of acting as a trade mark to distinguish the goods of the applicant from those of other undertakings. Can both these propositions be simultaneously true? The IPKat also notices that the same Court, in Nestlé Waters France v OHIM, was prepared to concede that a bottle shape could be inherently distinctive even though each of its component parts was not. Some careful thinking may be needed if these two decisions are to be reconciled.
Diplomatic pouches here; clown pouches here; pouchboats here
How the kangaroo got its pouch here; rat pouch here