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, 28 February 2005

VIVA LOS LLAMAS!


The IPKat wishes to draw your attention to a new blog, written by Andrés Guadamuz González of Edinburgh University. Technollama promises lots of technology-related fun from the point of view of an IP lawyer, as well as cute pictures of llamas.

Llamas - they get everywhere. See the evidence here, here here and here

ORLOWSKI ON DOONSBURY ON CREATIVE COMMONS


The IPKat found this on The Register, by Andrew Orlowski (with the IPKat's links added):

"As anyone involved with the original Apple Newton project knows only too well, when Garry Trudeau's satirical eye engages a target, there's only one winner. The Doonesbury cartoonist has a gift for holding up a mirror to bad ideas so they collapse under the weight of their own absurdities. This week Trudeau has turned his attention to the "Creative Commons" project.

The first Apple Newton project

Beginning with Monday's comic, radio interviewer Mark questions aging rock star Jim Thudpucker about "free music". Thudpucker returns with a barrage of techno utopian babble that suggests he's been inhaling the heady vapors of the blogosphere.

Jim Thudpucker: fan bases will be stored in Palm Pilots

"There are no rock stars any more!" insists Thudpucker. "With file sharing, we're being liberated from the hierarchical tyranny of record sales… Careers henceforth will be concert-driven, fragmented, and small!"

"And fan bases?" asks Mark.

"Will be kept in Palm Pilots!" replies the blog-brained Thudpucker.

This brilliant satire of the belief that technology can by itself topple entrenched institutions will be familiar to anyone who's picked up a copy of Wired in the last decade. Thudpucker is an ever-present type at any blogging convention. The conversation continued throughout the week, and we won't spoil any more of Trudeau's punchlines, except to note that he captures the other worldliness of this strand of techno utopian idiocy very sweetly.

What's wrong with this picture?

Well, there's nothing wrong with utopianism in itself: it's simply a wish for a better world, and we should all be able to imagine something better. But when utopianism becomes a denial and a retreat from the real world, it serves no useful purpose. It becomes a distraction, draining time and energy from what can be achievable. And like fringe political activism, it can eventually become no more than a psychological crutch for its advocates.

Creative Commons - launched by Professor Lawrence Lessig after a catastrophic Supreme Court defeat two years ago, which set back the copyright reform cause by many years - is one such noble idea.

But there are reasons why the campaign - widely blogged, but even more widely ignored - has failed to gain much traction.

Broadcaster Bill Thompson picked on one reason why the campaign has got nowhere fast. (Try calling the Creative Commons office in the hope of finding a human on the other end of the line and you'll realize another - there's no one home.)

But Thompson highlights the legalistic, American-centric basis of the campaign.

"Lessig doesn't understand why people in Europe care about an author's moral rights, which are inalienable in European law. And because he doesn't understand, he dismisses it. To an American constitutional lawyer copyright is simply an economic matter," Thompson told us.

"I have an objection to the British National Party using something I wrote in their party political broadcasts. That's my right."

"I'm a critical supporter of Creative Commons, but I don't accept US hegemony in this or any other area."

So Creative Commons is emblematic of how even the best of the US fails to understand how the rest of the world works. Is this a failure of empathy? Or a deeper philosophical failure which places too much emphasis on the law, and therefore "hacking" the law? ...

Fortunately we have more practical remedies to such escapist fantasies to hand. We only need to put them to work

The IPKat welcomes refreshing debate on the Holy Cow of Creative Commons, which has become, as much as anything else, an attitude which is de rigeur in academic copyright circles. Let's keep the debate alive! Merpel adds

Lessig on Orlowski here

Sunday, 27 February 2005

FEBRUARY IP&T NOW OUT


The paper copy of the February issue of Butterworths' Intellectual Property & Technology Cases, published by LexisNexis, has just come out (IP&T is an internet-based subscription-only law report that features cases on a rolling basis, but the electronic version is followed by hard copy for those people who enjoy reading law reports in places where electricity is a problem, such as the bathtub). This issue contains four recent cases:

* Cream Holdings Ltd v Banerjee, in which the House of Lords more or less says that, if you want to stop a breach of confidential information and the other party says he's acting in accordance with principles of freedom of expression, you've pretty well always got to go to court to find out whether you're entitled to do so because there aren't really any guidelines to enable you to know in advance whether you're entitled to succeed or not.

BOSTONGURKA: an ECJ reference was needed after the Swedish
courts got into a pickle over trade mark validity

* BOSTONGURKA, alias European Court of Justice case C-371/02 on how to assess whether a trade mark is distinctive when it was originally clearly distinctive but has since been regarded by many consumers (but not trade circles) as being a generic term for a type of pickled cucumber.

* Electrocoin Automatics Ltd v Coinworld Ltd, a fascinating case involving issues of trade mark validity and infringement, determined by Deputy Judge Geoffrey Hobbs QC.

* Nichols plc v Registrar of Trade Marks, alias Case C-404/02 from the European Court of Justice on how you know whether a common surname is a sufficiently distinctive sign for trade mark registration purposes. This ruling has resulted in a change in UK Registry practice and the casting aside of the practice of counting surnames in telephone directories in order to establish how likely they were to be distinctive.

ARTICLE ANYONE?


IPKat co-master Ilanah has written a note on the Lord Chancellor's Appointed Person's recent LINKIN PARK decision. If anybody would like a copy to read and comment on, please email i.r.simon@qmul.ac.uk.

Saturday, 26 February 2005

PUT THIS IN YOUR PIPE - BUT DON'T CORRODE IT


Here's a decision from the Court of Appeal on Friday, in Saint-Gobain PAM SA v Fusion Provida Ltd and another [2005] EWCA Civ 177.

St Gobain, a large company that made underground pipes for sewage and water supply, owned a patent for a method of coating buried iron-based pipes which made them resistant to corrosion. The invention was described in claim 1 of the patent as comprising a first porous layer of zinc/aluminium alloy, in place of zinc, and a second porous layer, the pore-sealing layer, based on organic or inorganic binder in aqueous, solvent or powder phase. St Gobain sued FP, a small competitor, for infringement proceedings in which it was accepted that, if the patent was valid, FP infringed it.

As to validity FP contended that the invention was obvious, having regard to disclosure in a paper published by the Swedish Corrosion Institute just before the priority date. That paper, entitled ‘Corrosion resistance coatings of aluminium, zinc and their alloys’, concerned testing of differently coated steel plates. No pipes were tested, nor was there testing of any samples which had a porous second layer – what the patent called a ‘pore sealing layer’. The paper did not mention any observation of zinc corrosion products and there was no attempt to observe what happened to small areas of exposed steel, which was an important aspect of buried pipe protection. In approaching the question of obviousness, Mr Justice Pumfrey found that the inventive concept was black pipe, but made with aluminium/zinc alloy instead of zinc. He found that the case was evenly balanced, as there were strong technical reasons for supposing that the case was, in fact, one of simple substitution of one known protective layer for another, as suggested in the Swedish paper. He was ultimately swayed, however, by historical considerations and held the step to be non-obvious and the patent therefore valid.

FP appealed, arguing that the trial judge had erred and that the historical considerations which tipped the balance were irrelevant. They submitted that, since the Swedish paper had been published only just before the priority date, there was simply no room for historical considerations and that the judge’s view, apart from historical consideration, that the case was one of substituting one protective layer for another, as suggested by the paper, should prevail.

St Gobain: Court of Appeal affirms the validity of its patent

The Court of Appeal, Civil Division (for whom Lord Justice Jacob as usual gave the judgment) dismissed FP's appeal. The reason why historical reasons were important when the Swedish paper came to be considered was simple: the use of zinc/aluminium in place of zinc as an anti-corrosion coating for above ground and marine anti-corrosion coatings had been known for some years. One might well think, in the absence of the history, that it was self-evident that simple substitution would work or might very well work for buried pipes too. However, no-one had actually taken that step and there was nothing in the Swedish paper to galvanise the skilled man into action. Nothing in the paper had made the idea of using zinc/aluminium for pipes obvious.

The IPKat was intrigued by this historical approach, which hadn't really occurred to him before.

Rusty pipes here and here

OHIM MAKES TELEPHONE DIRECTORY AVAILABLE


OHIM, the body responsible for registering Community trade marks and designs, has made the direct dial numbers of staff available online.

The IPKat congratulates OHIM on its admirable openness. He's sure that making the numbers available will save a lot of time and effort amongst those who use the Office.

Friday, 25 February 2005

HENDRIX CUTS THROUGH THE HAZE


Another decision of Mr Justice Hart yesterday has come to the attention of the IPKat via LexisNexis' All England Direct subscription service and is now available in full on BAILII. It's Experience Hendrix LLC v Purple Haze Records Ltd [2005] EWHC 249 (Ch) and this is how it went:

In January 1969 Jimi Hendrix and two other performers gave certain performances in Sweden. A sound recording and/or film and sound recording of them was made by a Swedish broadcasting organisation. In September 1970 Hendrix died intestate in London. Thirty years later, in November 2000, a deed of assignment and assent was executed which transferred to Experience Hendrix the whole of Hendrix's estate.

When the Swedish performances were given, private law rights and remedies in respect of the unauthorised exploitation of their performances had not yet been invented (they were first expressly provided for in Pt II of the Copyright Designs and Patents Act 1988, as of 1 August 1989). Those rights were conferred retrospectively, but they only subsisted in ‘qualifying performances’. Sweden joined the European Economic Community in January 1995. The provisions of the Act were substantially amended and expanded by the Copyright and Related Rights Regulations 1996, SI 1996/2967, which came into force on 1 December 1996. The Regulations introduced new sections 182, 182A and 182B into the Act. Article 26(1) provided that its provisions applied to copyright works made, and to performances given, before or after commencement.

Purple Haze later made and sold copies of a recording of the Stockholm performances in the United Kingdom. Experience Hendrix sued, claiming that the Stockholm performances were qualifying performances and that Purple Haze had infringed Hendrix's performer’s rights under secctions 182A and 182B of the Act. It also claimed that the second defendant, as the allegedly controlling mind of Purple Haze, was also liable for the infringements. Experience Hendrix applied for summary judgment, but Purple Haze denied liability. They said that (i) the performances were not qualifying performances, (ii) the Swedish performances were not by Hendrix alone, but by Hendrix together with the other performers, with the result that the Act bestowed only a single right on the three of them jointly, and (iii) their acts could not be infringing acts since they were based on an agreement made between Purple Haze and another company, under which Purple Haze had become entitled either in law or equity to all the rights appertaining to performances by Hendrix.

Mr Justice Hart allowed the application since Purple Haze had no prospect of successfully defending the action.

* The Stockholm performances were qualifying performances. It was difficult to see how it was possible to draw a distinction either between countries which were members of the EEC as at 1 August 1989, and those which joined after 1 August 1989 and before 1 December 1996, or between the last mentioned category and countries which might hereafter join.

Jimi Hendrix: pleased the fans during his life, pleased the lawyers after his death

* The springing interest problem was simply a consequence of the way in which the Act had been drafted and, whatever the solution might be -- if indeed there was one -- it was not to be found by interpolating an artificial temporal restriction into the definition of a qualifying country.

* The proposition that an individual who participated in a group performance did not enjoy, in his own individual right, performer’s rights was not sustainable.

* On its true construction, the agreement between YH Ltd and Hendrix contained no assignment of, or agreement to assign, the relevant rights, and it was unnecessary to imply a term to that effect in order to give the contract business efficacy.

The IPKat believes this is the correct result, though he is disappointed that so simple a set of facts (man performs; man is recorded; recording is exploited without permisssion; man sues ...) could not be resolved without the need to hack through a thicket of well-nigh impenetrable legislation.

Purple Haze sues Hendrix here and here

COMPARATIVE ADS: A CASE OF MIXED MESSAGES


Lawtel's subscription-only service brings news of IPC Media Ltd v News Group Newspapers Ltd, a Chancery Division of Mr Justice Hart which he delivered extempore yesterday.

IPC published the weekly magazineWhat's on TV and owned the copyright in the magazine's logo and layout. The Sun, one of the papers in the News Group's stable, ran an advertisement that reproduced the front cover of an edition of What's on TVtogether with the front cover of another magazine, TV Choice, plus the front cover from The Sun's own new magazine. IPC contended that reproduction of its logo and front covers infringed its copyright and that The Sun's use of its material was not fair dealing under the Copyright, Designs and Patents Act 1988 sections 30(1) and s.30(2) as its purpose was to reduce sales of IPC's magazine, which could have been achieved without reproducing IPC's copyright material. News Group argued that it had a fair dealing defence under sections 30(1) and s.30(2) as it was merely engaged in comparative advertising and that its use of IPC's material was for the purpose of criticism or review not of the work itself but of IPC's product.

Mr Justice Hart gave summary judgment in favour of IPC. He held that

* "Criticism", as alleged by News Group, did not fall within the meaning of section 30(1). All News Group needed, it it wanted to make the desired criticism of What's on TV, was to identify the product, which it could have achieved without infringing IPC's copyright.

The Sun: unprincipled opportunist or tireless fighter for freedom of commercial speech?

* News Group's argument ignored the fact that the principal function of the copyright work in IPC's trade was to identify its product for its benefit. In copying the work to advance its own competing purposes at IPC's expense, News Group was advancing its own work, which did not amount to fair dealing within sections 30(1) or s.30(2).

The IPKat hasn't seen the judgment, but he has serious misgivings about the decision here. This appears to be a case of comparative advertising which is, both in the United Kingdom and in the European Union, reckoned to be lawful; the parameters of trade mark infringement have been pegged back so as to accommodate it (see for example the Misleading Advertising Directive). It seems wrong in principle that the same use of a logo should be permitted in so far as the trade mark rights in it are concerned, but prohibited in so far as the logo is also protected by copyright. We have a mixed message here, which will do nothing to clarify the issue as to what constitutes permissible commercial free speech. Merpel says she's not sure whether The Sun and its owners are champions of freedom of commercial speech or a bunch of unprincipled opportunists, though she has her suspicions ...

"Hold the front page!" here, here and here

Thursday, 24 February 2005

ECTA PANIC ATTACK


IPkat co-author Jeremy is speaking at this year's ECTA Conference in London (ECTA is the European Communities Trade Mark Association). Grandly entitled Past, Present and the Future: the development of trade marks, designs and related rights in Europe, it runs from 8 to 11 June and incidentally celebrates ECTA's silver jubilee.

Jeremy's problem is this: he is speaking for 20 minutes in a session on "Could any external non-European features be imported into the European system?" and he could do with some ideas (apart from some intergalactic humour that will need to be curbed if the paper is to remain respectable). If any reader has any good ideas, can he please mail Jeremy here and let him know. All suggestions that get used will be gratefully acknowledged in the paper.

More on (non-trade mark) good ideas here, here and here

DOES BAGPUSS KILL KIDS?


The Telegraph reports that the UK food industry has been accused of using children's characters such as Bagpuss, Shrek and Scooby Doo to promote foods high in salt, sugar and fat. A study by the consumer group Which? found that 18 popular characters from film and television were being used to market sugary snacks, crisps and processed food. Which? accused food manufacturers of manipulating parents and encouraging "pester power" and called for a review into the way children's characters were licensed.

Bagpuss: looks harmless enough, beware the salty pasta

According to the Which? survey of 2,000 people, more than three quarters said the use of cartoon figures on junk food made it harder for parents to say no to their children. Nick Stace, of Which?, said:
"Licensing companies and food manufacturers have to take responsibility to tackle the diet and health crisis. The Food Standards Agency needs to develop a standard setting out nutritional criteria for when these characters can be used."
The childhood obesity epidemic of the past few decades has triggered concerns at the influence of junk food advertising. Nearly a third of children are overweight, while 16 per cent of two- to 15-year-olds are clinically obese. Food campaigners are also concerned at levels of salt in children's processed foods. One of the products highlighted - a small tin of HP's Bagpuss pasta shapes in tomato sauce - contained 3.75g of salt, almost double the 2g of salt a child aged between one and three should consume in a day and more than the 3g recommended for a child aged four to six.

The food and advertising industries said that they were working with the Government to tackle childhood obesity. The Advertising Association said its code of advertising was under review but it believed more could be achieved if the industry helped the Government and food companies to "educate and motivate" people into improving their diets.

The Advertising Association: occasional roars from a toothless tiger?

Industry responses:
* Kellogg's: "We are committed to responsibly marketing our brands and communicating their intrinsic qualities so that our customers can make informed choices".

* Nestlé: "We work closely with industry and government bodies and this includes the review of our own and industry practices and guidelines".
The Government wants restrictions on advertising and promotion to children of foods and drinks high in fat, salt and sugar. It hopes this will be done through voluntary agreements, but has given the industry a deadline of 2007 to act.

The IPKat wonders whether danger-foods should carry government health warnings, just like cigarettes. Merpel asks why the papers ever bother publishing the manufacturers' comments. They only ever say how wonderful and responsible they are.

Really dangerous foods here and here
Safe food kills too: see here and here

EMERGENT TRADE MARKS


The IPKat received this yesterday from his friend Piter de Weerd of leading Dutch law firm De Postkantoor decision he suggests that: "It might be an idea to borrow some terminology from the field of academic metaphysics and label the Postkantoor doctine as trade mark emergentism. If a mark meets the Court´s criterion and consists of a word composed of elements, each of which is descriptive and there is a perceptible difference between the word and the mere sum of its parts, one could speak of an emergent trade mark". It is hard to say whether the term will sink in, but metaphysician Schmutzer at least does show that trade mark law goes much deeper than is sometimes believed.


No, we're not too sure about what this is either -- but the IPKat
found it on a Google Image search of the term "emergent trademark"

The IPKat, never one to duck even a metaphysical issue, is nonetheless not too sure what this is all about. What, if anything, does a mark's being described as an "emergent trade mark" when the criterion for being one is already coexistent with the criterion of registrability? Comments, please!

Wednesday, 23 February 2005

CAN BAND NAMES BE REGISTERED AS TRADE MARKS?


The IPKat has finally come to grips with a decision by Richard Arnold QC (sitting in his capacity of Lord Chancellor’s Appointed Person) that is a “must-read” for all those who are involved or interested in the legal aspects of merchandising.

Poster poser

The rock band Linkin Park applied to register the words LINKIN PARK as a trade mark in the UK in Class 16 for printed matter, posters and books. During the examination the examiner took objection to the mark under ss 3(1)(b) and (c) of the Trade Marks Act 1994. No evidence of acquired distinctive character was produced. These objections were upheld by the hearing office. Linkin Park appealed to the LCAP, who dismissed the appeal. Here are the highlights:

* Although passing off was not raised by Linkin Park’s trade mark attorney, it was appropriate to refer to recent developments in the law of passing off. Following Irvine v Talksport, the UK position is that a performer whose name and/or likeness is used in is used in merchandising, advertising or other commercial activities in such a manner as to suggest that he or she has licensed or endorsed those activities contrary to the fact is likely to have a remedy in passing off. However, the performer has no remedy in passing off if his or her name or likeness is used in manner which does not mislead members of the public into believing that he or she has licensed or endorsed the use. This brings the law in the UK into line with the law in Australia, as stated in Henderson v Radio Corporation.

* Although the word LINKIN and the phrase LINKIN PARK were invented by the group and were meaningless at the point at which they were coined by the group, it is the meaning of the mark at the application date that is decisive. At the application date, this mark was no longer meaningless. Instead it denoted the group. Even though this did not make LINKIN PARK a dictionary term, it is clear from the ECJ that signs need not be dictionary terms in order to be considered descriptive. This did not though put the group in a worse position once it was well-known.

* It was not the case that, in order to be a characteristic of the goods, the thing denoted by the sign has to be a measurable property of goods rather than information content of the goods. In fact, the information content is a critical characteristic of many goods, particularly computer programs.

* In order to fall within s.3(1)(c), the sign does not have to fall within one of the types described in that section.

* The fact that there was no better way of describing a poster of the group than as “a LINKIN PARK” poster mean that the application of s.3(1)(c) could not be avoided. A consumer who wanted to ask a shop assistant whether the shop stocked posters depicting the group would most likely ask “Do you have any LINKIN PARK posters?” In this question, the applied for mark was clearly being used to describe a characteristic of the goods being sought, namely their subject matter.

* It would be impossible for those wishing to trade in posters of the group to market their products without using the LINKIN PARK mark. The group could not be denoted in any other way (such as their image).

* Linkin Park’s argument that performers should be able to stop the use of their names without consent in relation to any goods or services without exception was without authority.

* As the law presently stands, the starting point of any consideration of the distinctiveness and hence descriptiveness of a mark is the essential function of a trade mark, which is basically to denote the origin of the goods. The name of a performer, like the name of an author, undoubtedly identifies the origin of the performance or work. However, it does not follow that the name of the performer or author acts as an indication of the trade origin of a product (e.g. a CD, book or MP3 file) which embodies the performance or work. Even where the performance or work is protected by copyright or performers’ rights, consumers are aware of the existence of unauthorised reproductions. Where consumers have obtained unauthorised copies of performances or works, the name of the performer continues to accurately designate a characteristic of the music track, namely the origin of the performance, even though the consumer has infringed various IP rights and the consumer will probably be aware that he has committed an infringing act. Moreover, copyright and performers’ rights are of finite duration. Once the rights have expired, the author can no longer control the work and so the author’s name cannot function on a trade mark even on the basis that his consent is required for the work to be reproduced and distributed..

* Whether the public will expect the goods to be authorised will depend on the types of goods in question, but no clear line can be drawn on the basis of some goods being “media” and others being “mere image carriers”.

* The copyright position was at odds with the proposition that consumers would expect merchandise pertaining to the group to be authorised by the group. The first owner of copyright in photographs of the group would be the photographer or his employer and so the photographs would be exploitable without the group’s consent.

* Even if the authors’ names were registered for CDs and books because of consumer expectation about authorization, that would not mean that the mark was registrable for posters. In so far as applicants rely on consumer expectations about authorization, it is for the applicants to show evidence of these expectations.

* Comments on the status of Arsenal v Reed (at all levels), the Scottish case of Bravado v Mainstream and R v Johnstone were also made.

The IPKat notes that this case appears to severely limit, and possibly eliminate, the ability of musicians to gain registration in the UK of marks to be used on their merchandise. Their ability to gain registration for recordings of their performances also appears to be threatened. Merpel wonders why the LCAP prefaced his decision with comments on passing off, even though this cause of action was not raised by Linkin Park. She suspects that the LCAP may have been reassuring performers that, even though their ability to obtain trade mark registrations for merchandise and even records has been cut to the quick, the can still protect themselves by recourse to unregistered trade mark law.

Lincoln Park here
Linking parks here

SHOULD WE, SHOULDN'T WE?


The IPKat has been pondering whether it's worth opting for Google's AdSense scheme, which causes small advertisements to appear on his hallowed pages on the basis that each click-through will earn him a small sum of money. The advertisements are chosen by a computer program which looks at the text of each blog and then "guesses" that a particular ad is in some way relevant to it.


Ads on the IPKat: at last some well-earned income,
or a sell-out for the sake of filthy lucre?

One half of the IPKat is quite keen to do this, at least for a trial period. Blogging is tough, life is short and the IPkat provides a free service that others can capitalise on (if they so wish). The other half is not so keen: the blog likes to see itself as independent, expressing opinions that can't be bought. Would all this change if ads suddenly appeared? It's a hard one to call -- and Merpel can't make her mind up either. So please tell us: should we, shouldn't we -- or does it really not matter?

Money is evil: Francisco's "money speech" from Atlas Shrugged.
"There is nothing quite so wonderful as money" -- the Monty Python view

SHADES OF GREY? ENGLISH REGISTERED DESIGN LAW JUST ABOUT CONSTITUTIONAL


From BAILII the IPKat brings you a remarkable constitutional law case involving design registration, Oakley Inc v Animal Ltd and others [2005] EWHC 210 (Ch), a decision of Deputy Chancery Judge Peter Prescott QC, 18 February 2005.

Oakley and Animal were rival makers of designer sunglasses. Back in May 1996 Oakley sold sunglasses made according to their design, applying a month later for registered design protection. Animal later brought out its own competing product, following which Oakley sued for design infringement. Animal, relying on the prior publication provisions of the Registered Designs Act 1949, said Oakley's design was invalid because Oakley publishing its design before it applied to register it. Oakley admitted the prior publication but said it didn't matter since the currently applicable law of prior publication, under EC Directive 98/71, provided a post-publication grace period of 12 months for filing an application.

The UK, being required to implement the Directive into national law by 28 October 2001, had two options with regard to the validity of the design regulations which were in force on that date. It could either adopt the law of validity prescribed by the Directive or it could keep its old national law. On 9 December 2001, in reliance on s.2 of the European Communities Act 1972, the UK enacted the Registered Design Regulations 2001, SI 2001/3949, which implemented effect to the Directive. By reg.12 the UK purported to avail itself of the derogation,which enabled the validity of existing registrations to continue to be governed by the 1949 Act. This favoured the position of Animal.

Oakley maintained that, (i) if the option to derogate was to be exercised at all, it should have been done by Act of Parliament and not by subordinate legislation made by the Executive, (ii) reg.12 was contrary to the constitution of the UK and thus ultra vires, (iii) if the option to derogate were to be exercised, it had to have been exercised by 28 October 2001, with the result that the purported exercise of derogation was contrary to the law of the European Union and therefore ultra vires. The court was asked to consider, as a preliminary point, infringement the validity of reg.12. This in turn depended on whether the Secretary of State had power to make it and the true construction of s.2 of the 1972 Act.

Specifically, two issues for the determination of the court were (i) whether a government minister or department could use the powers under s.2(2) to make regulations that brought about a result that was not mandated by a European obligation and, if such a power existed, how far did it go, and (ii) to what extent (if at all) might a Member State avail itself of a derogation after the final date by when a directive was supposed to have transposed the directive into its internal law as a matter of urgency.

Peter Prescott QC upheld the validity of the subordinate legislation and ruled in favour of Animal.

* Reg.12, as currently worded, would be ultra vires because the Secretary of State had no power under s.2(2) of the European Communities Act to make regulations that breached Community obligations. Parliament itself could do it, but only by expressly defying the 1972 Act or by repealing it. However, because of the doctrine of substantial severability, reg.12 took effect subject to the revision the court adumbrated and was thus valid.

* The combined effect of sections 2(2) and 2(4) was to enable the Executive, in appropriate circumstances, to legislate with all the force of an Act of Parliament and even to amend an existing or future Acts of Parliament. Thus s.2(2), combined with s.2(4), was an instance of what was known as a ‘King Henry VIII clause’, a power granted by Parliament to the Executive to make subordinate legislation which itself counted as if it were primary legislation.

* The general purpose of the 2001 Regulations to implement a Community obligation. However, reg.12 was not made for the purpose of fulfilling a Community obligation and, if anything, was for the opposite purpose.

* Section 2(2)(b) did not enable the Executive to make secondary legislation, with the potential to amend or repeal even an Act of Parliament, and to achieve a result not required by a Community obligation, merely because its purpose was in some way related to or arose out of that obligation. In short, if s.2(2) was given a narrow but purposive construction, as it had to be, it did not enable the attainment of a substantive result that was required neither by the Community nor by Parliament itself.

* The effect of reg.12 was to retain the old (1949 Act) law of validity in respect of registrations in existence at the time the Directive was implemented. Since this decision was a significant policy choice and had to be implemented by primary legislation, the Secretary of State had no power to make that decision and to implement it by secondary legislation: such a legislative act would be ultra vires.

* The purpose of the secondary legislator in this situation was to transpose a European directive. Even if he had exceeded his powers in one respect, such as by mistaking the true scope of the directive, or by legislating contrary to the directive, or by attempting to produce a substantive result required neither by the Community nor by Parliament, it would normally be clear that the substantial purpose of the rest of the instrument was to implement a Community obligation. That being in any event compulsory, it would be strange if the court felt obliged to cut down the whole. It could instead delete the offending part or even rewrite it so as to make it conform to the directive.

* Whether the UK was to avail itself of the derogation or not was clearly a significant policy choice. The power to make that choice and implement it in national law might have lain with Parliament alone, or it might have been available to the Secretary of State. But what was clear was that it did not lie with the courts. Were the court to accede to Oakley's submissions, the result would be that the UK would have a law of registered designs which, as regards the validity of existing regulations, was chosen neither by Parliament or (if that were relevant) the Secretary of State, nor required by the European Community. The 2001 Regulations purported to amend the text of the 1949 Act. That text was passed and amended by Parliament, and by Parliament alone. Thus Parliament enacted a particular legislative scheme which was to govern at least the validity of existing regulations.

* The somewhat paradoxical consequence of this was that the old law of validity, as defined by the 1949 Act, continued to apply to existing registrations, because that was what Parliament provided, just as it would have continued to apply if, instead of purporting to adopt the derogation, the Secretary of State had purported to eschew it.

* As to Oakley's point that, under the directive, the existence of the option to exercise the derogation disappeared on 28 October 2001 and that, once the deadline had expired, the opportunity to exercise the derogation had ceased to exist as a matter of Community law, this was not acte claire. If Oakley wanted to press that point, the court would refer the question to the European Court of Justice for a preliminary ruling.

Peter Prescott: has raised fundamental questions
relating to UK implementation of European IP rules

The IPKat marvels once again on Peter Prescott's scholarship and erudition (see his second judgment in Griggs v Evans for another example). He is however quite surprised that this issue has not been argued before and he's also a little shocked at the apparently fragile legal basis of existing UK design law. Merpel says, if Parliament can do what it wants and the courts can do what they want, why can't the poor old Executive do what they want too?"

PRESIDENT DE BOER REAPPOINTED


Wubbo de Boer, President of the Office for Harmonisaton in the Internal Market, has been reappointed for a further term,which expires on 30 September 2010. First appointed to the Presidency in 2000, Wubbo previously held a succession of positions in the Dutch civil service. A little known fact is that Wubbo is a cricket enthusiast, having served as president of the Amsterdam Cricket Club.

Wubbo de Boer: a cricket enthusiast who is never stumped by trade mark and design problems

The IPKat wishes President de Boer the best of luck in the continued discharge of his official functions.

Tuesday, 22 February 2005

IPKAT JOBWATCH


There's a mystery vacancy advertised in The Times today for an assistant to a trade mark formality clerk. The employer is unspecified.

Assistant to a trade mark formality clerk: working
with trade marks can be full of surprises

The IPKat says, whoever could it be?

IT'S THAT MAN LLOYD AGAIN


Paperback books make less of an impact on the foot of the unwary reader who drops them on to his unprotected toes, but the fourth edition of Ian Lloyd's excellent Information Technology Law (published by Oxford University Press) is quite heavy enough to make itself felt. Weighing in at 735 pages, the new edition (at a very reasonable £29.99) has done more than almost any other book to give the impression that IT law -- a ragbag of discrete legal topics as diverse as surveillance, defamation, copyright and e-commerce -- possesses an overriding cohesive unity. The exclusion of the regulation of the telecommunications and broadcasting sectors has made this job easier but, let's face it, this is a student text and anyone who has ever taught Information Technology Law at university level will know that it is easier to persuade children to eat spinach than to persuade students to immerse themselves in the vast, expanding constellation of rules that govern the telecoms and broadcasting sectors.

OUP haven't got the new cover on their website yet, but this
is what the third edition looked like when Butterworths still published it

Since the book is more closely themed around the control of information than aimed at the control of the infrastructure within which it may be conveyed, its content addresses correspondingly more of the interesting and controversial political pressure points in IT law (the individual versus the state, the right to know versus the right to suppress) rather than the law's merely regulatory aspects (however commercially important they may be to clients who are governed by them). Its author presents his analysis in a reasoned and open-handed manner and does not tell readers what to think. All in all, a good buy, particularly if -- as the IPKat suspects will be the case -- we have seen the end of a particularly tumultuous decade of legislative upheaval and can now focus on relatively minor fine-tuning of this fascinating area of law.

"GOOD FAITH" DEFENCE NOT OPEN TO TRADER WHO CLAIMED NOT TO KNOW WHAT A TRADE MARK WAS


In R v Rachel McCrudden, decided yesterday but not yet available on BAILII, the Criminal Division of the Court of Appeal added further judicial gloss to the statutory defence to trade mark infringement in the UK under the Trade Marks Act 1994 s.92(1). McCrudden, a market trader, had been offering for sale a large quantity of clothing bearing designer labels. Following a test purchase by trading standards the stock was seized and most of it discovered to be counterfeit. She said she knew the goods were designer labels but did not know what a registered trade mark was and had no reason to believe the goods were not genuine. At the close of her defence submissions the trial judge ruled that, on the evidence before the court, McCrudden could not rely on the statutory defence under s.92(5) so she changed her plea to guilty. She then contended on appeal that the judge was wrong to rule the statutory defence was not available to her.

The Court of Appeal upheld the conviction, holding that the judge's ruling was correct. Section 92(5) of the Act provided a positive and specific defence to a person who knew of the trade mark but did not regard its use as infringing: it did not however provide a general defence that the accused acted in good faith. The Court added that Section 92 had been devised to constitute a rigorous statutory code, of almost strict liability, for the plain policy reason that there was very considerable public importance in preventing the selling of counterfeit goods.

The IPKat marvels that anyone who sells designer goods in a market can keep a straight face long enough to tell the judge she doesn't know what a trade mark is.

Great excuses here and here
No excuses here

THE FUTURE'S ORANGE FOR BRITISH IP LITIGATORS


The Register reports that mobile operator Orange is suing easyGroup to stop it using the colour orange when it launches its easyMobile mobile phone services next month. Ironically Stelios Stelios Haji-Ioannou, who founded easyGroup with its bright orange livery, is himself an enthusiastic litigator, having sued numerous enterprises that employed the word "easy" in their names. They were accused of passing off or of confusing customers into thinking they were dealing with part of the easyGroup. Companies accused included easyprotest, easyart, easirent and easyrentaped. But this time Stelios will be at the receiving end. Orange believes easyMobile's logo and colour, both orange, are likely to confuse customers. Despite a series of meetings since August the two have failed to find a mutually acceptable solution. Orange said:

"Our brand, and the rights associated with it are extremely important to us. In the absence of any firm commitment from Easy, we have been left with no choice but to start an action for trade mark infringement and passing off."
Stelios responded:
"I will see them in court. It is our right to use our own corporate colour for which we have become famous during the last 10 years...They are clearly worried about the competion."
T-Mobile is providing the network for easyMobile. It is based on the "Telmore concept" - a low cost, web-based business model described as "the Easyjet of telecoms".



Orange phone's orange



easyGroup's orange



Real orange
The IPKat says this illustrates beautifully the problem of allowing monopolies in the use of colours where businesses converge. Merpel says it's tough being a cat when you can't rely on your colour vision -- but doesn't that apply to plenty of humans too?

It's not so easy to monopolise the colour orange, according to the European Court of Justice here
The need to keep colours free for all to use here

PARLIAMENT NOT SOFT ON SOFTWARE PATENTS


The European Parliament rejected the Computer Implemented Inventions Directive on Thursday, calling for it to be started again from scratch. Meanwhile, Microsoft has denied claims that it threated the Danish Prime-Minister than jobs would be taken away from Denmark if the Danes did not back the CII Directive says CNet.

AUSTRALIAN COPYRIGHT LAW AMENDMENTS


Smh.com.au reports that Australia is in the process of reviewing its copyright law and the federal Attorney-General Phillip Ruddock is contemplating a change in the law that would allow time-shifting and space-shifting by permitting private copies of legitimately obtained works to be made in other media for private use.

"There's a reasonable argument for putting forward the opinion that when someone has bought something in one format and has acquired the copyright for it in that particular format then there is a fair use for them to take it to another format. I think it's a strong argument" ,
said the Attorney-General.

However, in accordance with the US-Australia trade agreement, Australia is to implement digital rights management legislation that will make it an offence punishable by up to two years in prison to decrypt copy-protection software. The fear is that the proposed new right to make private copies will be taken away by this DRM protection.


Infringers may face up to two years' prison: but will Australia have the courage of its convictions?

The IPKat notes that the Australians are taking a different attitude to the Norwegians, who intend to make copying on to different media a copyright infringement.

Everything you ever wanted to know about Australian copyright here

Monday, 21 February 2005

LOVELY GRUBB


The IPKat has just enjoyed purr-using the fourth and most recent edition of Philip Grubb's book Patents for Chemicals, Pharmaceuticals and Biotechnology (published by Oxford University Press and available in hardback for £59). Coming five years after the well-regarded third edition, this book is current to May 2004. Accordingly in its text one can still see the impending clouds of the Community patent which have since been dispelled. One of the nice things about this book is that it has kept its sense of proportion. Rather than seek to cram its pages with reference to large numbers of ephemeral decisions from the courts and granting authorities, the author -- a consultant to pharma giant Novartis -- sensibly focuses on the overall shape and structure of his subject, homing in on the main principles and neatly emphasising their centrality. It is easy for a reader, on completing this work, to feel that he is a lot more knowledgeable than he probably is, since its pages have a somewhat empowering and confidence-building effect -- but the author, in keeping with good patent practice, does not allow himself to make any claims that exceed the substance of his invention (even the book's subtitle, "Fundamentals of Global Law, Practice and Strategy", contains no overstatement: the book is exactly that). Incidentally, at £59 for a hardback book of over 500 pages which is devoid of the usual statutory appendices, this work can scarcely be bettered in terms of punch per penny.

Philip Grubb (right) tells Khama Rogo (Chairman of the Kenya
Medical Association) how to do neat tricks with pharma patents

Visit Philip Grubb's website here

Sunday, 20 February 2005

ART SALE TAX IS ON ITS WAY


According to a UK Patent Office press release the artists' resale right will come into effect in the UK next year, once details of its implementation have been finalised, following consultations launched on Friday 18 February. The new right will benefit producers of paintings, photographs, sculptures and other unique works of art. In France and many other European countries, artists are paid a percentage of the resale proceeds under a "droit de suite" for as long as copyright protects the work: up to seventy years after the death of the artist. The UK has no such right, but must now introduce it in line with Directive 2001/84 or risk the ire of the Commission and the European Court of Justice. For many European countries, which already had schemes to remunerate artists when their works were resold, the Directive makes little difference. For other countries like the UK, where no such right has previously existed, the Directive will have a significant impact on the local art trade. It has been a consistent goal of the government to ensure that any negative effects on the art trade itself are kept to an absolute minimum. Peter Lawrence, Director of Intellectual Property & Innovation at the Patent Office says:

"Britain has an art-trading tradition which is the envy of the world. We also have world-class artisans who deserve fair reward for their creativity. This new "Artists Resale Right" must balance the needs of artists with the concerns of the art trade, and that is why its implementation must be done transparently and sensitively".
The consultation asks artists and art dealers to express their views as to the precise form UK law should take in implementing our obligations under the Directive. In particular it asks:

* What should be the lower limit on the resale price below which the artist will not enjoy a resale royalty?

* How should any collective management of the resale royalties be administered?

* Should non-EU nationals resident in the UK enjoy resale royalties?
The consultation document is available on the Patent Office website. You've got till 16 May 2005 to make your feelings felt, with implementing regulations expected this autumn.

The IPKat has his doubts, not least because he still doesn't know what a work of art is. If a shark in formaldehyde is bought by art collector Charles Saatchi for £50,000 and then sold for £6.2 million, should its alleged artist Damien Hirst going to scoop a proportion of the resale price when, arguably, the thing that made the shark so valuable was the fact that Saatchi bought it in the first place?
Merpel says, they shouldn't put fish in formaldehyde -- it makes them taste awful.

Is the shark a work of art? Ask the Stuckists

DECISON SHOWS BOARD OF APPEAL A LOOSE CANON


Some iconoclasm from OHIM, at least as far as the UK is concerned. Tiffany & Co applied to register the shape of its blue box bearing the words TIFFANY & CO as a CTM for various items of fine tableware. It was opposed by the French owners of the tifany [sic] figurative mark for disposable tableware.

Merpel says, surely it's what's inside that counts?

In a decision that barely disguises the Board’s scorn for those who shop at Tiffany & Co, the Board of Appeal found that there was a likelihood of confusion. What will come as a surprise to English trade mark lawyers is that the ECJ’s Canon case has been mistranslated. In the Canon test for similarity of goods, the word “Vermendungszweck” has been translated as “end user” in English . In fact though, it means “purpose of use” of the goods. The purpose of use factor allowed the Board to find the disposable plates and fine tableware to be similar because the purpose of both is to serve and eat food and drink.

The signs were also similar. Even though the sign applied for by Tiffany & Co was a 3-D blue box and not a figurative mark, blue boxes were common and so the element of the mark that was really distinctive was the term TIFFANY & CO on top, which was visually and phonetically similar to the earlier tifany mark. The reputation of the Tiffany box was not well-known in France where the earlier mark was registered, in spite of the “Breakfast at Tiffany’s” film and book.

The IPKat says, he’d always wondered why OHIM has always taken it upon themselves to look at the purpose of goods when considering their similarity. Now he knows the reason why.

Tiffany’s box here
Breakfast at Tiffany’s here
Breakfast of Champions here
Breakfast in bed here
Mr Breakfast here

IAM WHAT IAM ...


The tenth issue of Globe White Page's Intellectual Asset Management has now been published. IAM's been given a slight makeover, to enhance its eye-appeal.

IAM: "the first and only magazine to address IP as a fundamental business issue"

Features in this issue include:
* "Why directors must take responsibility for intellectual property", a meaty piece by US experts Robert Greene Sterne and Trevor J. Chaplick (Sterne, Kessler, Goldstein & Fox, Washington DC);

* A neat note by Bruce Berman (Brody Berman Associates, NY) on the threat/nuisance caused to big IP portfolio owners by "small, independent asserters";

* A positive piece by Isla Grant on the enigma that is China.
The IPKat enjoys reading his IAM, which really does treat IP as a valuable commodity in its own right and not just as a minor pawn in a large corporate strategy.

Saturday, 19 February 2005

FAKIN' IT: NEW BMW MARKETING PLOY


The Counter Counterfeit Commission (CCC) has launched a website for the apparent purpose of enabling motorists to detect fake MINI Coopers. The CCC say:

"At the CCC, we're dedicated to putting an end to the victimization associated with purchasing a counterfeit MINI Cooper. We cooperate with MINI and international law enforcement to pursue criminals. But there's one other crucial partner we need to recruit: YOU. We can't do this without YOU. Educate yourself about the problem. Learn how to detect a fake. Know when you're being hoodwinked. Together, we can put an end to this appalling injustice. Together, we can make our streets genuine once again".
Adrants (scroll to Friday 18 February) has outed this earnest effort as a marketing ploy, designed for car makers BMW by Crispin Porter + Bogusky:
"The site has a photo collection of tricked out vehicles purported to be fake Minis. It also has video footage of a police dogs sniffing out fake Minis trying to make their way into the country, a $19.99 consumer alert DVD detailing the apparent underworld of counterfeit Minis and even a phone number answered with a message machine by a guy code named "Bosco" claiming to be doing undercover work in Brazil and Copacabana".
The IPKat loves the idea. If a marketing ploy can have some educative or practical function, so much the better for consumers.

MINI Cooper: the car that's a film star
MINI Cooper here
Minnie Driver here
Baby Driver here

Friday, 18 February 2005

IS NEW SHAPE A SMART(IE) MOVE?


The Guardian (and about every other British newspaper) is fuming with rage over Nestle’s decision to abandon the SMARTIES cylindrical tube in favour of the “hexatube” – a long hexagonal container with a flip-top lid

The change, which is said to have “taken a fresh and funky approach to the redesign" is “part of our ongoing programme of product innovation and the result of in-depth research carried out with our consumers", said Nestle-Rowntree’s marketing manager.

The IPKat, ever a cynical beastie, wonders whether the change of shape has anything to do with Nestle’s failure to stop Mars (here) registering its M&M cylindrical container as a CTM.

Smarties here and here

PERU MOVES TO LISBON IN MAY


The World Intellectual Property Organization (WIPO) has told the IPKat that the Republic of Peru has deposited its instrument of accession to the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration. This Agreement will enter into force in Peru on 16 May 2005.

One of Peru's best-known products, but Paddington is not known by a Peruvian appellation of origin

Lisbon Agreement members here
More facts about Peru here and here

EIPR FEBRUARY 2005


The February issue of Sweet & Maxwell's European Intellectual Property Review has now been published. It contains some good stuff. For example:

* Olivier Lemaire (NautaDutilh's Brussels office) writes on parallel trade in pharma products in the recently enlarged European Union;

* Philippe de Jong (Altius) explains the role and future prospects of the Belgian torpedo as a means of slowing down unwanted patent litigation;

* IPKat co-author Ilanah explains why it's no fun being a Community trade mark examiner, reviewing the OHIM Board of Appeal decision in Whitening Multi-Action;

Lambretta tracktops: colourways can't be protected in the UK

* Roland Mallison and Claire Young (Linklaters) wax lyrical on the lacunae in design protection that were so clearly revealed in the recent UK Lambretta case.

MAYNE WINS PATENT CLAIM ON APPEAL


In Mayne Pharma Pty Ltd v Pharmacia Italia SpA [2005] EWCA Civ 137 the Court of Appeal yesterday allowed Mayne's appeal against the trial judge's ruling of non-infringement.

Mayne's patent was for an injectable ready-to-use anthracycline glycoside solution "which has not been reconstituted from a lyophilisate". Italia made its own solution from an anthracycline glycoside hydrochloride which had been subjected to a lyophilisation process. At first instance Roger Wyand QC said there was no infringement: the essence of Mayne's invention was the manufacture of a ready-to-use solution which did not involve the previously essential lyophilisation stage. On a purposive construction of the claim, the solution itself had not to be made by reconstitution and it was irrelevant that the starting raw material had been lyophilised. Mayne appealed, arguing that the main thrust of the patent lay in the formulation of the ready-to-use solution. The invention was an injectable ready-to-use solution and the starting materials for the formulation were not part of the invention. According to Mayne, the whole teaching of the patent was about the complete avoidance of lyophilisation, which was not needed at any stage.

Allowing the appeal, the Court of Appeal (whose judgment was given by Lord Justice Jacob, as usual) held as follows:

* the notional person skilled in the art, being a pharmaceutical manufacturer and not just a hospital pharmacist, would know not only how the end product was to be used but also how to make it. He would see the real point of the teaching in the description as being the provision of a stable, ready-to-use solution. This substance was not previously available and he could now make it without having to lyophilise the material in the vials. He knew that he would have to start his formulation with active ingredient raw material but he would not regard the nature of that as part of the formulation process: the patent taught him how to do away with a previously essential lyophilisation.

Mayne Pharma: their success on appeal shows that British courts are not so hostile to patents

* When the skilled person came to read the claim, knowing that its legal functions was to set out a monopoly, he would see that it was the ready-to-use solution which must not "have been reconstituted from a lyophilisate". With the understanding of the purpose and teaching of the description he would read it as meaning that the solution itself had not been made by reconstitution: it was avoidance of that which fulfilled the purpose of doing away with the previously essential step. If he considered the nature of the starting raw material, lyophilised or not, he would see that it made no real difference. That construction was consistent with the inventor's purpose as disclosed in his specification: the manufacture of a ready-to-use solution which did not involve the previously essential lyophilisation stage.

The IPKat is pleased to see a nice short Court of Appeal judgment on patent interpretation (this one's only 10 pages in length) which doesn't go back into the realms of prehistory on the law of claim construction. This means that Kirin-Amgen is finally providing a level of predictability as the test for whether non-exact copying constitutes infringement or not. Not so short was the volume of evidence submitted. Lord Justice Jacob bemoaned:
"I was most disappointed to see the quite extraordinary number of files of paper produced, quite unnecessarily, for this appeal. We were only referred to two pages not included in the one main file. They were obviously not wanted on voyage or to put it more formally not "relevant to proceedings in the Court of Appeal" ..."
How to dispose of waste paper here and here

Thursday, 17 February 2005

NIGERIA ACCEDES TO PCT


PCT Notification No. 169 informs the IPKat that the Federal Republic of Nigeria has deposited its instrument of accession to the Patent Cooperation Treaty, which will enter into force there on 8 May 2005.

Nigeria's oil industry: a sure target for patentable innovations

Notable inventions that have passed through the PCT system here
Encouraging young Nigerian inventors here

REDEEMING FEATURE?


Sweet & Maxwell's Entertainment Law Review is getting desperately thin. With two issues out of this year's eight already accounted for, it's only up to page 41. The IPKat thinks that anyone paying £546 for a year's subscription (more if you're outside the UK) is entitled to a lot more for his money.

Still, this issue has some interesting content. For example:

* Mark Fox and Tracey Anderson (Indiana University South Bend) write on unpaid and underpaid royalties -- a subject that doesn't get much treatment in British law publishing circles;

Getting thinner. Won't someone feed this cute little journal?

* Registered mediator and private practitioner Sean McTernan contributes an enjoyable, if not altogether useful, souffle on format rights.

IS GI-PROTECTED CHEESE A FETA COMPLI?


The Daily Telegraph reports that Shepherd’s Purse, the maker of YORKSHIRE FETA, is taking the European Commission to the ECJ over its decision to designate FETA as a protected designation of origin. In the case which was heard by the ECJ on Tuesday, Yorkshire Cheese pointed to the fact that it had been using the name since 1987. If the decision goes against it, the company will have to foot the bill for a new marketing campaign.

Who’d have thought such cuddly creatures could cause so much trouble?

The IPKat notes that cheese is a tricky product – unlike other PGIs such as NEWCASTLE BROWN ALE, the name of the place a cheese comes from often designates the variety of cheese as well. He can’t see an alternative useful shorthand way of saying FETA. Thanks to his Greek mole, he observes that FETA literally means “slice” in Greek.

Say cheese here, here and here

Wednesday, 16 February 2005

TM FILINGS 2004 - NOW THE TRUTH CAN BE TOLD ...


At last, the IPKat can reveal the content of WIPO's formerly embargoed and now amended Press Release. In short:

* Use of Madrid international trade mark registration system reached a record level last year. 29,459 international applications were filed. That's up 23.5% over 2003.

* For the twelfth consecutive year Germany tops the list of biggest users with 5,393 Madrid applications (18.3%), followed by France with 3,503 (11.9%), Italy 2,499 (8.5%), Benelux 2,482 (8.4%) and Switzerland 2,133 (7.2%). Within 12 months of signing up to the Madrid Protocol - one of two treaties that govern the system - the USA filed 1,734 (5.9%) applications to rank sixth among the biggest users of the Madrid system.

* Fast risers include China (+115%), Australia (+100.9%), Republic of Korea (+86.8%), Bulgaria (+82.5%), Japan (+75.6%), Slovenia (64.8%), Latvia (62.7%), Hungary (+47.4%), Austria (+36.8%), Turkey (+36.4%), United Kingdom (+36.1%), Italy (+30.5%), Norway (+29.8%), Slovakia (+27.7%), Singapore (+25.7%), Czech Republic (+24.7%), Sweden (+24.3%), Denmark (+17.9%) and Croatia (+15.4%).

* Top twenty users of the Madrid system in 2004 were Henkel (Germany), Hofer (Austria), Richter Gedeon (Austria), Janssen Pharmaceutica (Belgium), Beiersdorf AG (Germany), Siemens (Germany), Novartis (Switzerland), Philips Electronics (Netherlands), Aldi (Germany), Lidl Stifnung & Co (Germany), Deutsche Postbank AG (Germany), L’Oréal (France), Altana Pharma AG (Germany), Nestlé (Switzerland), Unilever (Netherlands), Volkswagen AG (Germany), Mip Metro Group Intellectual Property GmbH & Co. (Germany), Akzo Nobel Coatings International BV (Netherlands), Merck (France), and Biofarma (France).
The IPKat notes that these figures reflect the increasing globalisation of branding and marketing policies in our increasingly shrinking world.

Amended version of the WIPO press release here; original version here

HUMAN-ANIMAL HYBRID REFUSED US PATENT

The Washington Post reports that the USPTO has turned down an application for a patent for a human-animal hybrid. The application is for a technique for combining human embryo cells with cells from the embryo of a monkey, ape or other animal to create a blend of the two. The invention, applied for by Stuart Newman of New York Medical College in Valhalla, N.Y., is meant for medical research, but it has not yet been created. This decision was said by officials to be an easy one to make because the invention was much more human than animal but questions have been raised about where the line can be drawn between what is and is not to be considered human for these purposes. Newman in fact wished to fail in his application, since his aim was to establish the precedent that such living things cannot be patented.


The IPKat thinks he may have found the world’s first cat-human hybrid

The IPKat isn’t entirely sure that Newman has been successful in his objective. Now that it’s shown that such an invention isn’t patentable, it’s theoretically free for everyone to make.

More on human-animal hybrids here, here and here

Tuesday, 15 February 2005

CALLING ALL MOTHERS OF INVENTION


The Times is running an IP-related competition. The aim is to find “mothers of invention” – mothers or primary care-givers who have had an idea for an invention that would make life easier for parents. The winner will have the fees for her patent application paid by The Times and a patent attorney will be paid to draft her application.

…but is she the cat’s mother?

The IPKat is glad to see that unsuccessful entrants to the competition won’t have their potential patents jeopardised – The Times undertakes to keep all entries confidential and to destroy them once the competition is over.

More mothers of invention here and here

TODAY'S NEWS FROM LUXEMBOURG


The Court of First Instance (CFI) of the European Court of Justice has just handed down two new decisions in appeals from the Office for Harmonisation in the Internal Market (OHIM) today. Both appeals were dismissed.

* Case T-169/02 Cervecería Modelo, SA de CV v OHIM: an application to register a figurative mark contianing the words NEGRA MODELO for beers was correctly refused on the ground of likelihood of confusion with an earlier national registration of a figurative mark consisting of the word MODELO for the same product. The CFI held that the OHIM Board of Appeal was right to hold that, though the marks were different, the dominant element of each of them was the word MODELO.

* Case T-296/02 Lidl Stiftung & Co. KG v OHIM: this was an application to register LINDENHOF for beer and other beverages which succeeded despite an opposition filed by the owner of an earlier national trade mark LINDERHOF for sparkling wines. On the question of comparison of goods the CFI said:
"54 Sparkling wines are alcoholic drinks and, as such, clearly distinct from non-alcoholic drinks such as the drinks covered by the trade mark application, both in shops and on drinks menus. The average consumer, deemed to be reasonably well-informed and reasonably observant and circumspect, is used to and aware of that distinction between alcoholic and non-alcoholic drinks, which is, moreover, necessary, since some consumers do not wish to or cannot consume alcohol.

55 Furthermore, if the drinks covered by the trade mark application are drunk on special occasions and for enjoyment, they are also consumed, if not substantially, on other occasions and for relaxation. Thus they are rather everyday consumer items. Sparkling wines, on the other hand, are drunk almost solely, if not solely, on special occasions and for enjoyment and much less frequently than the goods covered by the trade mark application. They are in a much higher price bracket than are the drinks covered by the trade mark application.

56 Finally, sparkling wines are no more than an atypical replacement for the drinks covered by the trade mark application. The goods in question cannot therefore be considered to be in competition with each other.

57 The fact referred to by the applicant that the goods in question may be consumed one after the other or even mixed is not such as to alter the findings set out in the preceding paragraphs. It is true of many drinks which are not, however, similar (for example rum and cola).

58 The same is true of the fact referred to by the applicant that the advertising for the goods in question always shows a person who enjoys a moment of happiness whilst drinking the beverage concerned, inasmuch as that fact applies to almost all drinks, even the most varied.

59 In view of the above, it must be concluded that the goods in question are more dissimilar than they are similar. However, the differences between them are not sufficient of themselves to exclude the possibility of a likelihood of confusion, in particular where the mark applied for is identical to an earlier mark which is particularly distinctive ...".
The IPKat wrote these notes in a bit of a hurry and will revisit them tomorrow to see if he got them right or not ...

UZBEKISTAN SIGNS UP WITH BERNE


Back in January the Republic of Uzbekistan notified the World Intellectual Property Organization of its intention to sign up to the Berne Convention on the Protection of Litarary and Artistic Works. The instrument of accession states:

"The Republic of Uzbekistan declares that the above mentioned Convention shall not apply to the literary and artistic works which on the date of entering into force of this Convention for the Republic of Uzbekistan are already public domain on its territory".
The Convention will enter into force on 19 April 2005.


Maps such as this are part of the copyright-protected
subject-matter that will benefit from accession

The IPKat says "welcome to the club". He remembers the dim and distant days when copyright protection in the former Soviet Union was an impossible dream. Now it's a possible dream but, until law enforcement improves in the Caucasus, it tends to be a pretty improbable one. Merpel says "don't be so cynical -- every great journey on the long and winding road to decent copyright protection must start with one small step".

Uzbekistan art and culture links here
Academy of Arts of Uzbekistan here
Why protection of foreign copyright works in Uzbekistan may become a hot topic here

MULTIPLE COPIES FOR THE VISUALLY IMPAIRED: NEW UK ORDER


The Copyright (Educational Establishments) Order 2005 (SI 2005 No. 223) was laid before the United Kingdom Parliament on 8 February and comes into force on 1 April (seriously).

This Order, made under section 174(1)(b) of the 1988 Act, lists those educational establishments that can take advantage of certain exceptions to copyright for the purpose of

* making multiple copies for visually impaired persons;

* performing, playing or showing work in course of activities of
educational establishments

* recording of broadcasts by educational establishments

* reprographic copying of passages from published works by educational establishments

* lending of copies by educational establishments.

British educational establishments continue to benefit from various
permissions to carry out what would otherwise be infringing acts

According to the accompanying memorandum, it does not expand the number or type of educational establishments that are entitled to take advantage of it.

THe IPKat says, please amend your records accordingly.

BOOBLE: THE SEARCH ISN'T OVER


Useful information gained via the jgeek listserv: the booble.com adult search engine (don't all rush at once IP lawyers - you don't want to crash the site do you?) which, as the IPKat noted, was thought by Google to be too similar to its search engine, is alive and well. However, its format and the typeface of its logo have been altered so that they looks less like the Google site.

The IPKat, in a moment of idle speculation, wonders why we don't follow up on the practical outcomes of more threatened and actual IP litigation.

Monday, 14 February 2005

NEW-STYLE MIP


The 88-page February issue of Euromoney's Managing Intellectual Property has a fresh feel about it, since the title has just been given something of a makeover. The paper's got a different feel to it and there are more words per page: this makes the new MIP better value for money (that's $790 a year, or 611 euro, or £421). Features include the following:

* "The claim game", a good critique of differences in patent claim construction that takes in the US (via Japan), Germany and the UK;

* "Alicante Answers" - Fabrizio Miazzetto argues that the choice of Alicante for the seat of Spain's Community design and Community trade mark courts will result in those courts becoming an important international forum;

The real reason why Alicante is likely to be a popular forum for international litigation ...

* A note by Jonathan Moskin on the recent US Supreme Court decision in KP Permanent Make-Up v Lasting Impression.

There's also another popularity survey, this time of patent practices in some 60 or so countries or zones, lavishly garlanded with profitable advertisements from firms that have received the most votes.

UP-TO-THE-MINUTE TM CONFERENCE


Here's news of a trade mark conference organised for 6 April 2005 by CLT Conferences. It's called "Trade Marks: Up-to-the-Minute Legal and Practical Issues". Speakers include Katharine Stephens (Bird & Bird, who is also the chairman), her colleage Jane Mutimear, Jan Vleck (Reddie & Grose) and Gill Grassie from leading Scottish practice Maclay Murray & Spens.

Jane Mutimear will be speaking on a trade mark strategy for domain names

IPkat joint master Jeremy will be there too, speaking on recent trade mark infringement cases. See you there?

Sunday, 13 February 2005

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NORWAY CONSIDERS DIGITAL COPYRIGHT LAW UPDATE


Findlaw reports that Norway is considering a new digital copyright law. The law would make it illegal to decode copy protection on CDs or DVDs, or to provide software for doing so. This would make it illegal to copy the contents of CDs on to MP3 players, but it would remain legal to make copies of CDs and DVDs on to the same medium (i.e. on to another CD or DVD) for personal use.

Gisle Hannemyr, of the University of Oslo's Department of Informatics has condemned the law as being unclear and unenforceable. "We are going to be a nation of lawbreakers if this law is passed in its current form," he has said.

The IPKat listens to his CD collection while he still can

The IPKat isn’t sure that the type of medium in question is a principled way of sorting out what is and is not copyright infringement. Surely gaining a licence to listen to a copyright work should be about getting the right to hear the work itself, rather than to only hear the work in one form. A cynical IPKat suspects that this is a great money-maker for the industry. People who’ve bought CDs will have to pay again to get their music collections upgraded to MP3 format.

Things to convert to MP3s here, here and here

Friday, 11 February 2005

DO YOU WANNA KNOW A SECRET?


Well, the IPKat can’t tell it to you. He received an embargoed notice sent by WIPO in error this afternoon. The notice reads:

"Press Release 402: Double Digit Growth Marks Record Year for International Trademark System" which was sent earlier today is under embargo until February 15, 2005 at 14h30 (Geneva time)".
The IPKat’s lips (and whiskers) are sealed until it becomes public knowledge on Tuesday.

More cat secrets here, here and here

TRADE MARKS GET POLITICAL


The Independent reports that backup software company Veritas is none too happy with television presenter turned politician Robert Kilroy-Silk. The software company has instructed its lawyers to consider whether Kilroy-Silk’s decision to call his right-wing political part Veritas infringes its trade mark. The software company is particularly concerned that an association with any political party, let alone a right-wing one, will tarnish its brand values. It fears that one of the effects of such an association would be to have a detrimental effect on the business it does with the government.

Robert Kilroy-Silk
The IPKat is rather worried at the thought that an association with any political party would be considered detrimental. What does this say for the state of British politics? More fundamentally, he’s uncomfortable at the idea of one company being able to control a word as basic as Veritas, which is Latin for “truth” with respect to goods and services that it does not provide.

More on Veritas the political party here
In vino veritas here
Some VERITAS trade marks here

CFI FORTHCOMING TRADE MARK ATTRACTIONS


Here are some forthcoming trade mark treats from the Court of First Instance, listed on the European Court of Judgment's diary. The CFI will give its decisions this coming Tuesday, 15 February.

* Case T-169/02 Cervecería Modelo v OHIM - Modelo Continente Hipermercados, in which a Community trade mark applicant is appealing against at decision of the OHIM Third Board of Appeal to allow in part an opposition on the basis of a likelihood of confusion.

The mark applied for was a figurative mark featuring a bottle of beer containing the words NEGRA MODELO for products in Classes 25, 32 and 42. The opponent already held a national registration for the word mark MODELO for goods in Classes 25 and 32.

* Case T-296/02 Lidl Stiftung v OHIM - REWE-Zentral, in which the owner of a national registration of the national figurative trade mark LINDERHOF for products in Class 33 appealed against the Third Board of Appeal's dismissal of his appeal against the Opposition Division's rejection of his opposition to an application to register as a Community trademark the word LINDENHOF for products in Class 32.

The IPKat looks forward to sharing these goodies with you once the rulings are posted.

US v CHINA BEFORE WTO?


The New York Times reports that the US Chamber of Commerce is calling on Robert B. Zoellick, the United States trade representative, to bring China before the WTO. The Chamber of Commerce is arguing that by failing to crack down on counterfeiting and piracy, China is not meeting its international obligations and is renaging on commitments it made last year.

Said Myron A. Brilliant, vice president for Asia at the Chamber of Commerce, "China is public enemy No. 1 when it comes to theft of intellectual property rights…The Chinese made some great promises last year but the situation has only worsened."



This move marks an about face for the Chamber of Commerce, which has previously resisted moves to bring China before the WTO regarding currency practices and labour practices.

A cynical IPKat suspects that China’s failure to enforce IP rights means that the companies that make up the Chamber of Commerce lose out financially, while poor labour standards may work to the financial benefit of those companies.

Chinese piracy here
Chinese counterfeits here

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