For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Monday, 31 July 2006

PRIDE COMES BEFORE A FALL


Canada.com reports that the Canadian gay men and lesbians are not happy about moves by the Vancouver Pride Society to assert rights in the term PRIDE. A transsexual had to take out membership of the society to use the terms ManPride and TrannyPride for her events, and has said that she will protest with a group of others at the Gay Pride event. The leader of the Vancouver Pride Society has responded that the trade mark attempt had been made

‘to protect the trademark against for-profit individuals or companies exploiting it in the queer market…If we don't do that, there's a long line of people who are quite eager to get their hands on that trademark and licence it for thousands and thousands of dollars back to us.’

The IPKat has sympathy with the Society’s position. However, he notes that all the members have a stake in making the event what it is, and so placing it into centralised hands is going to stop, or at least make it difficult, for those who established its popularity from using it.

TOP BRANDS


Top brands announced

The IPKat has been taking a look at the Interbrand/BusinessWeek 100 Top Brands for 2006. The methodology for selecting the 100 Top Brands is as follows:

"Interbrand takes lots of ingredients into account when ranking the world's most valuable brands. To even qualify for the list, each brand must derive about a third of its earnings outside its home country, be recognizable outside of its base of customers, and have publicly available marketing and financial data. One or more of those criteria eliminate such heavyweights as Visa, Wal-Mart, Mars, and CNN. Interbrand doesn't rank parent companies, which explains why Procter & Gamble doesn't show up. And airlines are not ranked because it's too hard to separate their brands' impact on sales from factors such as routes and schedules.

BusinessWeek chose Interbrand's methodology because it evaluates brands much the way analysts value other assets: on the basis of how much they're likely to earn in the future. The projected profits are then discounted to a present value, taking into account the likelihood that those earnings will actually materialize.

The first step is figuring out what percentage of a company's revenues can be credited to a brand. (The brand may be almost the entire company, as with McDonald's Corp., or just a portion, as it is for Marlboro.) Based on reports from analysts at J.P. Morgan Chase, Citigroup, and Morgan Stanley, Interbrand projects five years of earnings and sales for the brand. It then deducts operating costs, taxes, and a charge for the capital employed to arrive at the intangible earnings. The company strips out intangibles such as patents and management strength to assess what portion of those earnings can be attributed to the brand.

Finally, the brand's strength is assessed to determine the risk profile of those earnings forecasts. Considerations include market leadership, stability, and global reach—or the ability to cross both geographic and cultural borders. That generates a discount rate, which is applied to brand earnings to get a net present value. BusinessWeek and Interbrand believe this figure comes closest to representing a brand's true economic worth".

Top five brands are Coca-Cola, Microsoft,IBM, GE and Intel. KFC is at number 60 despite - or perhaps because of - the Avian flu scare (the highest fatal-if-used product, Marlboro, is down to number 12). Avon is in at number 60 even though, the publishers enigmatically comment, "Avon ladies have been struggling". Followers of Greek mythology will be disappointed to note that Hermes, the winged messenger of the gods, comes limping along in 81st place. Number 95 in the list is Italian jeweller Bulgari, thanks to big-spending customer Madonna, it seems.

The IPKat is trying hard to whip up some enthusiasm for this once novel but now somewhat jaded exercise, but is failing miserably - perhaps because the nearest thing to a cat in this year's list is Caterpillar...

Friday, 28 July 2006

SOMETHING TO READ THIS WEEKEND


July-August Copyright World

The current issue of Informa's colourful Copyright World has just reached the IPKat. The cover story is Google v Rest of the World - at least, it must feel that way to the giant moneymaker as it seeks to take on a vast array of vested interests in mature markets and technologies with its controversial Library Project. The IPKat bets that this topic will reach saturation point, replacing even P2P filesharing as the boringly predictable PhD thesis topic that all candidates want to write.

Full list of contents here. Merpel's Must-Read: "Into the Honey Trap?", where the Copyright Terminator meets Winnie the Pooh.


July-August MIP

The July-August issue of Euromoney's Managing Intellectual Property lists the 50 most influential IP personalities of the year. Alas, after the excitement of making the list last time round, the IPKat has been consigned to the gloomy depths of oblivion. The real significance of this list is that most people who appear on it now have an unreal expectation that others will be able to spell their names correctly.

Full list of contents here. Merpel's Must-Read: "Einstein's Lesson in Mediation".


August EIPR

Its cover may not be so sexy, but the European Intellectual Property Review's publishers will tell you that it's what's under the cover that counts. The contents of the August issue - commendably published ahead of the cover date - are not yet readable online. However, the IPKat has been taking a peek and can tell you that Christopher Wadlow is serialising what looks like a magisterial account of the development of unfair competition law in the European Union.

Merpel's Must-Read: Kamiel Koelman's stimulating and provocative Opinion on the repair of deficiencies in the Berne Convention's "three-step" test for defences to copyright infringement.

WHERE IS CANADA, ANYWAY?


Where is Canada, anyway?

Yesterday the IPKat posted an item about the Canadian Mounties' pursuit of infringers of copyright in karaoke in Canada, together with photo bearing the caption "The Mounties enforcing copyright in Canada". He - and other recipients of his email circulars - then received the following note from a reader, Paul Jones (Jones & Co, Bay Street, Toronto):

"The IPKat should consider a refresher course in jurisdiction and geography. The Mounties have never had any jurisdiction in Alaska, which was first a Russian and is now an American territory. Perhaps it meant to write the Yukon or the Rockies?".
Resisting the temptation to sound triumphalist, the IPKat is pleased to inform his readers that Alaska is indeed in Canada: it is a place in Prince Edward Island. You can find it by visiting the Natural Resources of Canada Atlas site here and typing Alaska into the site search box. This Alaska is not to be confused with Alaska Point, up in the snowy reaches of Nunavut.

The Royal Canadian Mounted Police operate both in Prince Edward Island and in Nunavut, the IPKat has learned, though he has his suspicions as to which of the two is more prone to experience outbreaks of illicit karaoke.

Merpel says, what about all the other place names stolen by the Canadians, no doubt to secure advantage when it comes to geographical indications? She's thinking of York, Halifax, Edmonton, Liverpool, Shelbourne, Bridgewater, Airdrie, Surrey, Richmond, Lorraine, Stratford, Peterborough, Pembroke, Pickering ... not to mention London!

Thursday, 27 July 2006

JAPAN AND CANADA


Picture from Tokyo #2



The Mounties always get their man

CNW reports that the Mounties have charged two Toronto businesses and their employees with renting out infringing copies of karaoke under the Canadian Copyright Act.

The Mounties enforcing copyright in Alaska

The IPKat is dreaming of horseback copyright enforcement…How did the GGs get into the karaoke bar though?

Favourite Mountie karaoke tune here

GUATEMALA GOES FOR PCT; WHO CONTROLS THE INTERNET?


Guatemala goes for PCT

The IPKat is delighted to learn from WIPO's PCT Update 277 that Guatemala has now become the 133rd contracting state of the Patent Cooperation Treaty (PCT), having duly deposited its instrument of accession. The Treaty will enter into force for Guatemala on 14 October 2006.

Full list of 133 PCT countries here
PCT official text and data here
Guatemala coffee industry inventions here
Guatemala Baked Bananas here


Who controls the Internet?

Who Controls the Internet? Illusions of a Borderless World is a new book by Jack Goldsmith and Tim Wu, published this summer by Oxford University Press. Both authors are of illustrious pedigree: Jack Goldsmith is Henry L. Shattuck Professor of Law, Harvard University, while Tim Wu is Professor of Law in the Columbia Law School.

The publisher writes:

"Will cyberanarchy rule the net? And if we do find a way to regulate our cyberlife will national borders dissolve as the Internet becomes the first global state? In this provocative new work, Jack L. Goldsmith and Tim Wu dismiss the fashionable talk of both a 'borderless' net and of a single governing 'code'. Territorial governments can and will, they contend, exercise significant control over all aspects of Internet communications. Examining policy puzzles from e-commerce to privacy, speech and pornography, intellectual property, and cybercrime, Who Controls the Internet demonstrates that individual governments rather than private or global bodies will play that dominant role in regulation. Accessible and controversial, this work is bound to stir comment".
The IPKat says: I'm not convinced either that individual governments will dominate the internet, or that private or global bodies will hold the regulatory trump cards. Nor do I subscribe to the global free-for-all position. The IPKat thinks that this book's data and constructive analysis supports an alternative theory: there is a creative tension between (i) governmental forces, (ii) the powers of private enterprise and (iii) the users, which ensures that none of these groups ever actually gains the upper hand over the others.

This book also suffers from the twin curses of all modern internet-related scholarship: first, the subject of study is also the source that provides most of the data relating to it. Secondly much of the source material is inevitably of varied reliability and often unverifiable. Having said this, the authors have done a terrific job of focusing their analysis on a vast, uncooperative and moving target, for which they should be fully congratulated.

Bibliographical data: Price £16.99 (hardback), ISBN-10: 0-19-515266-2, ISBN-13: 978-0-19-515266-1. Publication date 29 June 2006. xii + 226 pages. Rupture factor: not an issue, since the book is of comfy proportions. Cover design -hideous and must have been produced by a professional designer, since no amateur would ever come up with anything so ugly.

Full details of the book here

NO SAFE WAY TO BREAK UP; LATEST ECDR

No safe way to break up

This morning the IPKat carried a note on Scansafe Ltd v Messagelabs Ltd, a Chancery Division decision from Mr Justice Patten which was noted on Lawtel.

The IPKat has since received an email from solicitors acting on behalf of Scansafe, informing him that the Lawtel note erroneously stated that Scansafe's application for injunctive relief was dismissed. Lawtel has since withdrawn its note and the IPKat, not wishing to mislead his readers, has removed his note on the case too.


Latest ECDR

Issue 4 of the Sweet & Maxwell bimonthly European Copyright and Design Reports has now been published. Cases available in English in this issue include

* L'Oréal SA v Bellure NV (Cour d'appel de Paris), on the protection of scents in France as authors' works;

* PlayStation (Tribunal of Bolzano, Italy), on the seizure of mod chips that could adapt computer game consoles for both lawful and unlawful purposes;

* Télévision Français 1 v L'Equipe TV (Cour de Cassation, France), on the extent to which a TV news service could make use of the highlights of broadcasts of football matches without authorisation.
There's also the Zellweger decision from the Invalidity Division of OHIM's Design Department - horror of horrors, a Community registered design rendered invalid by prior art consisting of a registered trade mark.

As usual, if there are any cases you'd like to see reported in the ECDR, email the IPKat here and tell him all about them.

Wednesday, 26 July 2006

DOMAIN NAME DATA; NO NO NOVA ...


Domain name data

www.ipkat.com

After a lot of fiddling and fumbling, caused mainly by his own ineptitude and a paucity (paw-city?) of other people to blame, the IPKat has finally managed to divert www.ipkat.com visitors to the site on http://ipkitten.blogspot.com. This means - at last - that you can use the www.ipkat.com url and get straight through to the blog itself.


www.jeremyphillips.eu

IPKat co-blogmeister Jeremy has also managed to divert his personal pages at http://jeremyphillips.blogspot.com to his new url at www.jeremyphillips.eu (the .com suffix has already been taken by a somewhat more artistic person of the same name). The .eu bit actually seems quite appropriate, given Jeremy's strong European IP connections, notably his work with MARQUES (the Association of European Trade Mark Owners) and his editorship of the European Trade Mark Reports.


No, No, Nova ...

Yesterday in case [2006] EWCA Civ 1044 the Court of Appeal for England and Wales (Lords Justices Waller, Jonathan Parker and Jacob LJ) turned down an application to refer Nova Productions Ltd v Mazooma Games Ltd and others (noted here by the IPKat) to the European Court of Justice for a preliminary ruling. This was because Nova's appeal against the decision of Mr Justice Kitchin could probably be determined without the need for such a ruling.

As Lord Justice Jacob indicated, whichever way a ruling might go, Nova would probably still fail to establish infringement on the facts: either what was taken by the defendant was insubstantial or, if it were substantial, it was the taking of no more than an idea. If, following the hearing, the court did decide to refer anything to the ECJ, it would be able to formulate its question more precisely and give its own opinion on the questions to be referred. In contrast an ECJ reference, while not necessarily being of any assistance, would definitely cause delay and increase costs.

The IPKat thinks this manifestly sensible. While we all enjoy a good ECJ reference from time to time, we must remember that the ECJ is not just some sort of Brains Trust - it must be invoked only where necessary for the resolution of a dispute. Merpel speculates, though, that it would be nice to establish a sort of legal think-tank for deciding questions for which no-one actually needs the answer: it could be a harmless way of keeping academics occupied during those long, hot summers ...

Above, left: once it finishes with Nova v Mazooma, the next copyright case for the Court of Appeal is the Da Vinci Code appeal.

IPKAT IN JAPAN; OHIM OPPOSITION GUIDELINES


Picture from Tokyo #1

Changes to OHIM Opposition Guidelines

The OHIM Examination Guidelines are being revised and OHIM is inviting comments by 30 September 2006. Six main issues are up for discussion:

* procedural matters
* identity
* global assessment
* similarity of goods and services
* similarity of signs
* proof of use.
The IPKat reckons that it’s about time that the Guidelines on dilution were revised too.

WHY COPYRIGHT LASTS SO LONG; LATEST IP&T


So now you know why the copyright term is so long ...

Clarke and another v Artprints UK and another is a Chancery Division decision of Mr Justice Lindsay, handed down last Friday but not yet available from BAILII. This note is taken from the LexisNexis Butterworth subscription service, which supplies so much useful information.

Artprints was involved in the reproduction and distribution of art works, the second defendant being its majority shareholder. Artprints started commercially reproducing works of the artist Francis Bacon under what it said were the terms of a copyright licence. Clarke and others sued Artprints for copyright infringement, claiming that Artprints' licence was invalid because it was they who owned the copyright. On 31 July 2001 interim injunctive relief was ordered and the court gave further directions concerning the conduct of the proceedings, with particular reference to disclosure timetables. For the next five years the case crawled slowly along. After both parties agreed to vacate the first trial date in December 2002, Clarke and his colleagues complained that the second defendant failed to comply with the disclosure requirements. It took till June 2003 for the parties to sort this issue out. Further delay occurred when one of the claimants died in March 2003 and the parties agreed not to seek a re-listing of the main action, pending the outcome of probate proceedings. Clarke wrote to the defendants in April 2004, saying that probate had been granted and again asking the second defendant to comply with the disclosure order. In 9 May 2005 the defendants said that the proceedings had taken far too much time thus far and that they would be taking all steps to bring the proceedings to their conclusion - but then did nothing.

In these proceedings the defendants sought to have the 2001 injunction discharged. They submitted that Clarke and his friends had caused inexcusable and unexplainable delay to the proceedings and that they were happy just to sit back and enjoy the interim injunction.

Left: A Francis Bacon masterpiece. The symbolism is clear: litigation takes forever if there's no "meating" of minds ...

According to the defendants, once an interim injunction was granted it was for the party benefiting from that injunction to enable the case to progress as expeditiously as possible. Since Clarke and Co. hadn't done that, the injunction should be discharged. Clarke and his colleagues disagreed: the delays were mainly caused by the defendants and the second defendant's refusal to comply with the disclosure order prevent the action being taken further. Also, some delays came from circumstances outside the parties' control, while other periods of inaction had actually been agreed.

Lindsay J dismissed the application. It was clear that the proceedings could have been brought to a final hearing earlier but, while Clarke and his colleagues had undoubtedly benefited from the terms of the injunction for five years, they had purposely delayed proceedings in order that they would continue them. It was clear that a large proportion of the delay was caused by the second defendant’s refusal to comply with the disclosure order, notwithstanding repeated requests for compliance, and that the other periods of delay had all been agreed between the parties and were not the claimants' fault. Accordingly there were no grounds upon which the order should be discharged.

The IPKat hates this sort of thing. There's litigation which is caused by the commission of an alleged wrong, which can't be helped. There's litigation which is caused by earlier litigation, which is highly annoying but sometimes necessary. Then there's litigation which is caused by litigants themselves, which is a by-product of dispute resolution that should be stamped out if possible by the use of firm case management with realistic time tables and dire threats as to what happens to those who, without good cause, fail to observe them. Merpel agrees. She vaguely recalls the dispute back in 2001 and had simply assumed that it had all been dealt with by now.

Francis Bacon here.
A different Francis Bacon here
Francis the Pig here


Latest IP&T

The IPKat's July 2006 issue of Butterworths' Intellectual Property & Technology Cases, edited by Michael Silverleaf QC and published by LexisNexis Butterworths, is now available in all its black and glossy splendour. This issue features just two cases, but they're both biggies. The first is McKennitt and others v Ash and another (Queen's Bench Division, Eady J), this being the confidentiality/ privacy suit brought by Loreena McKennitt (right) against a former friend who wrote a kiss-and-tell biography of her. The second is the Chancery Division of Blackburne J in HRH Prince of Wales v Associated Newspapers Ltd (No.2) - the copyright/confidentiality action over Prince Charles's Hong Kong diaries.

Tuesday, 25 July 2006

IT'S ALL WELSH TO ME ...


It's all Welsh to me ...

The IPKat's post here on UK trade mark registration regarding foreign words, including words that sounded exotic to English ears but were descriptive or generic in Welsh, has sparked some response.

Eugene Pienaar (Managing Director, Revomark) wrote:

"One of my clients wanted to register Gwesty Cymru (Hotel Wales) – anyway I was worried about the inherent registrability issues and therefore ordered an official Patent Office search prior to filing. The result of the search was that the mark is regarded as being desciptive (notwithstanding the fact that the majority of English speakers would not understand it) and therefore unregistrable".
Anonymous I added:
"In spite of Y Swyddfa Batentau [Welsh for the Patent Office], which handles UK trade mark applications, being located in the Pricipality, they allowed 2266669 to be registered, this being the word MAWR, which is a widely-used Welsh word for great or big; the applicant was a Welsh firm. They have also registered Aroy-D for foodstuffs. Anyone who knows Thai is aware that this means highly delicious. [Like the Welsh, Thais put the adjective after the noun]".
Anonymous II then chipped in:
"Hold on a minute. MAWR is a device mark rather than word only and it's registered for computer software. True,Aroy-D is registered, but that's because we conscientiously follow the guidance given by the ECJ/CFI - see eg the KIAP MOU case. Diolwch Fawr!".
Then came what appeared to be a rejoinder from Anonymous I:
"It is good to hear that the guidance of ECJ/CFI is conscientiously followed. However in November 1990, when Aroy-D was registered, the guidance did not exist. Perhaps aid was received from dewines [Welsh witches]".
Delicately changing the subject, Anonymous III confessed:
"Two people in this office, myself included, saw Caffe Fresco and thought "coffee outside" not fresh coffee.. obviously we're not average!".
The IPKat is gratified to have kick-started this little string. It shows how passionately people feel about the Welsh trade mark issue. It also shows, as the IPKat's much-respected friend Guy sagely notes: "I think ... you will be happy to have evidence that there is at least one reader in The Patent Office!".

More on dewines here
Welsh Language Society here
Welsh jokes here

IT'S THE WTMR AGAIN


It's the WTMR again

The second issue of Globe Business Publishing's bimonthly World Trademark Review has now arrived through the IPKat-flap, with a giant pixellated apple on the front cover. Sorry, the Kat couldn't find a web page for the new issue, or a picture of the cover to post on this blog, so you'll have to make do with a different apple for the time being.

It's a good issue, though. 68 pages of seriously small-print features on topics as varied as

* the Apple Corps/Apple Computer (non)-coexistence agreement, depending on which way you view it, analysed by Herbert Smith's Joel Smith (any relation, Joel?) and Laura Deacon;

* the continuing obsession in the US with trade mark dilution, by Jeffrey K. Riffer and Brian M. Yates (Jeffer Mangels Butler & Marmaro, Los Angeles);

Left: Globe Publishing Ltd undercover reporters prepare to infiltrate yet another INTA reception in search of business cards ...

* a post-mortem on INTA's Annual Meeting in Toronto by the IPKat's friend Véronique Musson, who must have self-sacrificingly attended every event in person in order to determine its cosmic significance for trade mark practice;

* a feature on India's new aggressive stance towards IP infringers by Keshav S. Dhakad (Anand & Anand).

If the WTMR maintains its present level of quality, says the IPKat, it has a bright future ahead of it.

Monday, 24 July 2006

MONDAY MINIATURES


WTO talks hit the buffers

The BBC reports that G6 talks that were intended to unblock the Doha Round of the World Trade Organization's global trade talks have hit the buffers. Says the US, it's all the fault of the EU, India and Japan - i.e. much of the rest of the world.


Trunature scotches Scotnet

In Trunature Ltd v Scotnet (1974) Ltd, a preliminary hearing on issues of infringement, the Outer House of the Court of Session, Scotland, has ruled that Trunature's patent for an improvement in the manufacture of elasticated tubular netting covered Scotnet's Turbo 98 machine. Subject to any defence under the Patents Act 1977, section 64 (where the infringing act actually started before the patent's priority date), Trunature wins. The IPKat thinks the judge, Lord Glennie, handled both the technology and the evidence pretty neatly; he can see why people say nice things about litigating in Scotland.

THE TASTE THAT DOESN'T REGISTER; IT'S THOSE d*****d FOREIGN WORDS AGAIN


The taste that doesn't register

The IPKat's friend, trade mark trailblazer Ralf Sieckmann, has drawn his attention to In re N. V. Organon, a recent US Trademark Trial and Appeal Board decision of 37 pages which refuses an application to register a taste as a US trade mark - an orange flavour for antidepressant pills and tablets. Ralf says:

"Although the TTAB primarily rejected the application on the argument that the trade mark is functional (pages 15 et seq) and does not function as a trade mark (i.e. as a source indicator: pp 31 et seq), it added (pp 36 to 37) that there are also practical reasons why a flavour trade mark cannot act as a communicating means before it touches the tongue. The TTAB explains:

Although our decision is based on the analysis set forth above, we are not blind to the practical considerations involved in the registration of flavor marks. Flavor perception is very subjective; what applicant considers to be a unique and distinctive orange flavor may be considered by patients as simply an orange flavor. Moreover, the Office’s examination of flavor marks, not to mention litigation at the Board, would be very problematic.

Further, it is not clear how taste would as a practical matter function as a trademark. A consumer generally has no access to the product’s flavor prior to purchase. A trademark is defined as a word, name, symbol, or device that is used by a person “to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods.” Section 45 of the Trademark Act, 15 U.S.C. §1127. Unlike color, sound and smell, there generally is no way for consumers routinely to distinguish products by sampling them before they decide which one to purchase. Generally, it would not be expected that prescribed antidepressants would be tasted prior to purchase so that a consumer, in conjunction with a physician, could distinguish one antidepressant from another on the basis of taste. Thus, the consumer, in making a purchasing decision involving either a prescribed medication or an over-the-counter medication, is unable to distinguish one pharmaceutical from another based on flavor. Consequently, it is difficult to fathom exactly how a flavor could function as a source indicator in the classic sense, unlike the situation with other nontraditional trademarks such as color, sound and smell, to which consumers may be exposed prior to purchase".

Likewise, Organon's parallel BENELUX application 1 018 650 and CTM application 3 065 539 were finally rejected in 2004 for (inter alia) not acting as source indications (in Europe, "lack of distinctiveness"). A further flavour trade mark application of Eli Lilly for the flavour of artifical strawberry was here might be of interest: see footnote 40, which mentions that the use of fruit flavours, including orange in bitter drug pills, has been common practice for years.

The IPKat is sceptical about taste marks. Anyway, he greatly prefers antidepressant Pils to antidepressant pills ...


It's those d*****d foreign words again

Right: Matratzen Concord bears

It's not often the IPKat misses a trick, but this Practice Amendment Notice from the UK Trade Mark Registry might have slipped past him forever, if it were not for its timely appearance in the World Trademark Law Report. It goes something like this:

"Practice Amendment Notice PAN 12/06 Issued 13 June 2006

This notice affects Examination Practice in relation to Non-English words.

Paragraphs 27 to 27.4 of the Work Manual have been replaced by the text below. This amendment represents a redraft of the current Registry practice.

27 Registrability of non-English words

These guidelines indicate how the Registrar is likely to respond to applications to register non-English words as trade marks where, if words with the same meaning were applied for in English, the application would be subject to an objection on the grounds that the words are descriptive and/or non-distinctive.

Following the European Court of Justice’s (ECJ) judgment in case C-421/04, Matratzen Concord AG v Hukla Germany SA, there are no grounds for refusing registration of trade marks on the basis that they are relevantly descriptive or non-distinctive in a language which is unlikely to be understood by the relevant trade in the UK or by the relevant average UK consumer of the goods/services in question.

Consequently, the registrar will only object to the registration of word marks which are likely to be recognised as a description of a characteristic of the goods or services (or otherwise be descriptive of the goods/services) in the application.

The relevant trade in the UK consists of those in the UK who trade in the goods or services in question. This is most likely to be relevant where the goods are traded in by specialists. For example, a pharmacist may recognise the descriptive meaning of a Latin name even though an average consumer of pharmaceuticals may not. Similarly, a trader in wines is likely to have a better understanding of French wine descriptions than the average end consumer of those goods.

27.1 The Most Commonly Understood European Languages

In general, the most widely understood European languages in the UK are French, Spanish, Italian and German. The majority of UK consumers cannot be assumed to be fluent in any of these languages, but most of them will have an appreciation of some of the more common words from these languages, particularly common French words. So it may be assumed that the meaning of ‘Biscuit pour Chien’ (dog biscuits) will be known to the average UK customer for dog biscuits. Similarly, it may be assumed that traders in and/or average UK consumers of cosmetics (who will be accustomed to seeing French descriptions on the packaging of cosmetics) will know the meaning of ‘lait’ (milk) and will be able to decipher the meaning of ‘Lait hydratant’ as being moisturising milk (or similar).

27.2 Non English Descriptions which are most likely to be Understood

Again in general, the average UK consumer is far more likely to be familiar with the non-English name of a product or service, or the local name for its geographical origin, than he is she is with the non-English words which describe other characteristics of the product or service. For example, the average English speaking consumer of wine would know that ‘Bourgogne’ is the French word for the region known in the UK as ‘Burgundy’ and would also be likely to know that ‘vin rouge’ means ‘red wine.’ Similarly, the average consumer of olive oil is likely to know that ‘Toscano’ is the Italian word for the region known in the UK as Tuscany. Consequently, these names are not registrable for wine and olive oil, respectively.

27.3 Non-English Words which resemble English Descriptive Words

The more closely a non-English descriptive word resembles its English equivalent, the more likely it is that its descriptive significance will be understood by the consumer. So, for example, the Italian words ‘Caffe Fresco’ should be rejected as a trade mark for coffee because the average UK consumer of coffee would be likely to see that it simply means ‘fresh coffee’.

27.4 Further Considerations which apply to Non-English Descriptive Marks for Services

Section 3(1)(c) is directed at signs which may serve, in trade, as designations of goods or services. Goods are known to move from one territory to another. Non-English words are therefore inherently more likely to be taken as descriptions used in the UK in relation to imported goods than is the case with most services. Consequently, with certain exceptions, such as travel, transport and language services, non-English words may be registrable for some services even where the meaning of the words would be apparent to the relevant average UK consumer. For example, the use of ‘Pret a Manger’ (ready to eat) in relation to a catering service provided in the UK is unlikely to be regarded by the trade as simply descriptive use, even if they know what the French words mean.

27.5 Goods or Services aimed at Minority Groups

Where by their very nature, the average consumer of end user of the goods in the application is far more likely than the average UK consumer to understand the language of the mark, this should be taken into account in determining whether the mark is caught by Section 3(1)(c) of the Act.

For example, the mark خ IMAR (an Arabic word – YASHMAK is the English) would not be registrable for yashmaks in Class 25 because this would be a normal way for traders of these goods to market them because they are primarily used by the Arabic speaking community. The same would apply if the application includes more general descriptions of the same goods, such as ‘clothing.’ This sort of point is most likely to arise in relation to marks for foodstuffs and drinks in Classes 29-32 and clothing in Class 25.

27.6 Non-English Words which have become customary in the Current Language or in the bona fide and Established Practices of the Trade.

Non-English words which have become generic in the trade in the goods or services (by customers or traders) are excluded from registration under Section 3(1)(d) of the Act. So the German word ‘auto’ is not registrable for motor cars of their parts and fittings, or related services. Nor is the Italian word ‘panini’ for sandwiches.

27.7 Non-English words which are Devoid of any Distinctive Character

The Welsh language has equal status to English in Wales. For the purposes of Section 3(1) of the Act, trade marks consisting of words in the Welsh language will be treated in the same way as trade marks consisting of the equivalent English words. Save for the circumstances described in the paragraph above, it should rarely be necessary to raise an objection to a non-English word under Section 3(1)(b) alone.

Prejudice point 1: The IPKat admires the Trade Mark Registry's penchant for providing apt examples for the benefit of its examiners (and applicants). But he wonders whether a Welsh language word might scrape through to registration where (i) although it is totally descriptive, it is not a word borrowed from English but a genuine Welsh word and (ii) the goods or services for which registration is sought are targeted at English-speakers only.

Prejudice point 2: Merpel wonders why people always go on about dog biscuits (biscuits pour chien) but make so little fuss of cat biscuits (biscuits pour chat) ...

Sunday, 23 July 2006

JERRY SPRINGER GAINS VIEWER


Jerry Springer gains a new viewer

The IPKat wasn't sure what to make of Universal Studios International BV v Flextech Rights Ltd [2006] EWCA Civ 1036, a Court of Appeal decision from last Tuesday which is available on that trusty source of transcripts, BAILII. The composition of the Court was quite IP-rich, Master of the Rolls Sir Anthony Clarke being accompanied by Lord Justice Jacob and Lord Justice Neuberger (who gave the judgment for all three, having been forced to watch the programme himself).

Universal, a Dutch company, was the international licensor of the Jerry Springer TV programme. Flextech, an English company that had acquired broadcasting rights for various satellite TV channels including Living TV, broadcast Jerry Springer on Living TV under a series of one-year agreements, the last of which was known as the 1997 agreement. In 1998 Universal sought a ‘run of series’ deal for Jerry Springer, which would mean that the licensee would acquire rights and pay for them as long as the shows were broadcast nationally in the USA.

Under an agreement made in October 1998 and governed by the Dutch Civil Code, Flextech was licensed to show Jerry Springer programmes from the 1998/1999 US broadcast season and thereafter for as long as the series ran. By clause 4(a) of the agreement, that each episode of Jerry Springer should be ‘similar in content and overall production value’ to the episodes in the 1997/1998 US broadcast season. By rider 8 of the agreement,

* Flextech could make minor cuts in the episodes in order to conform with broadcasting policy on programme content;

* Flextech was not obliged to broadcast any picture that did not conform to such policy and

* Where a programme turned out to be unsuitable, Universal would deliver a substitute film, if available.

When some subsequent episodes contravened the Independent Television Commission's programme code, Flextech wrote to Universal and complained that

* the programme's contents had significantly changed over the years despite the agreement that the programme would remain substantially similar in form and substance to the 1997/1998 US season, in breach of clause 4(a), thus preventing Flextech from broadcasting certain episodes;

* since this change in content was in breach of the 1998 agreement, Flextech was entitled to dissolve the 1998 agreement.

Universal disputed the validity of the dissolution and, maintaining that the 1998 agreement continued in force, sued to enforce it. On a hearing of certain preliminary issues, Mr Justice Cooke found in favour of Flextech's interpretation of the agreement. holding that
* compliance with the ITC Code was admissible and relevant evidence as to similarity of content of the later programmes with the earlier ones;

* on the facts alleged by Flextech, a breach of clause 4(a) would be established and would be sufficient to justify dissolution under Dutch civil law;

* Rider 8 did not effect this interpretation of clause 4(a);

* Nor did Rider 8 permit a substitute episode that was a repeat of an earlier episode.
Universal appealed to the Court of Appeal, which mainly dismissed its appeal but varied it in part:
* Comparison by reference to the compliance, or degree of compliance, with the ITC Code was admissible and relevant evidence as to similarity of content;

* Cooke J's conclusion that, if the facts alleged by Flextech were made out, it would have established a sufficient breach of clause 4(a) to justify the dissolution of the agreement was at best of no use to the parties and the court at the final hearing, and at worst positively unhelpful, since it was based on the assumption that Flextech's allegations would be established but that no other facts, or even glosses on facts alleged by Flextech, would be established. Cooke J should have refused to determine those issues.

* Rider 8 did not impinge on the operation of clause 4(a): the terms of that clause applied to every episode of a series, not just to an episode that could be screened without infringing the ITC Code or other regulations. Nor did the Rider permit a substitute episode which was a repeat of a previous episode.

* Cooke J's decision would be upheld on the two issues in relation to Rider 8 and substantially upheld on the issues relating to clause 4(a), subject to the determination that, on the assumed facts, Flextech was entitled to determine or dissolve the agreement.

The IPKat has some sympathy with the trial judge's position since, had he been in it, he would probably done the same thing. He wonders whether the outcome will now be that the issue which Cooke J should have declined to determine will now end up being separately determined, with exactly the same result but more delay and expense. If Flextech is right in its allegation that
"out of a total of 194 new episodes, 61 episodes had compliance problems in that 15 episodes could not be broadcast at all because of their content (which could not be cured by editing) and 46 episodes could, after a process of editing, be broadcast but only after 2100 hours. A total of 134 episodes were suitable for broadcast at any time. By contrast, in the 2001/2002 season, out of a total of 190 new episodes, 176 episodes had compliance problems in that 41 episodes could not be broadcast at all because of their content (which could not be cured by editing), 102 episodes could, after a process of editing, be broadcast but only after 2100 hours, and 33 episodes could not be broadcast during the school holidays prior to 2100. Only 14 episodes were suitable for broadcast at any time",
then it must have been a nightmare for Flextech to deal with. Merpel is not so sure, though: the value of Jerry Springer programmes lies in their shock content and their ability to tread roughly upon precisely those sensitivities that the ITC code is there to protect. Flextech might have had a bigger objection to the programmes if they all meekly complied with the relevant standards.

Jerry Springer website here
Jerry Springer Show here
Jerry Springer the Opera here
We Hate Jerry Springer here

IPKAT IN JAPAN


IPKat co-blogmeister is heading to Japan on Monday, where she is an invited researcher with the Institute of Intellectual Property until the end of August, researching trade mark function in the EU and Japan. She'll try and keep you posted about her progress (and provide some decent pictures of Tokyo, as soon as she figures out how to use her camera).

IRISH ®; JAPANESE ©


Irish TM case

The IPKat has learnt from the Irish Sunday Business Post that the housing company Shomera has won a trade mark case in the Irish High Court that will allow it to stop a businessman from using the domain name http://www.seomra.com/. Seomra (meaning ‘room’ in Gaelic) is the name of Shomera’s main product, standalone rooms which it builds on to houses.

The IPKat says that it’s not clear from the article what the precise basis of the decision was, but there are strong hints concerning unfair advantage of Shomera’s reputation.


Japan to up copyright term?

The Daily Yomiuri reports that 14 Japanese arts and cultural organisations are calling for the Japanese copyright term to be increased from 50 years post mortem to 70 years post mortem. In response, the Cultural Affairs Agency will seek opinions from an advisory panel. The copyright term for films, animations and cinematographic works has already been upped to 70 years post mortem to enable Japan to compete internationally more effectively, but the term for other types of works has not.

A spokeswoman for the Japanese animation industry (right) gives her response

The IPKat doubts whether increasing the term from 50 to 70 years will provide a greater incentive to create and he doubts whether, in most cases, it will lead to a significantly greater reward for the author. However, he can see the unfairness of giving the authors of one type of primary copyright work greater protection that those of other types of primary works.

Saturday, 22 July 2006

LATEST TRADEMARK WORLD

Latest Trademark World

The July/August 2006 issue of Informa's 10-times a year Trademark World is a real scorcher. The cover story tells us that, if we want to improve our enforcement skills, we must first think like an infringer (this comes from Raymond Castello of IP heavy-hitters Fish & Richardson). There's also a neat note from Paul Joseph (Freshfields Bruckhaus Deringer) on the Advocate General's Opinion in the ECJ's Adam Opel case - another of those delicious instances in which a totally simple dispute appears quite incapable of sensible analysis following several years of (mis)development of clear and simple trade mark rules by an over-conceptualising court (see IPKat comment here). And don't forget the fun piece on registration of offensive marks in South Africa by Wim Alberts (Bowman Gilfillan: "Well groomed minds, elegant solutions"). Merpel says, you can be sure that the article on offensive marks is always the one that gets read first ...

Full list of contents here

Friday, 21 July 2006

SOME SHORTS FOR THE HOT WEATHER


Shameless self-promotion

Under the header "Shameless self promotion" the IPKat's friend Cedric Manara announced, on his excellent Domain Name/Nom de Domain blog:

"I will present a study on Internet-related international trademark disputes on September 1, at the Institute of Intellectual Property in Tokyo.

I am grateful to the Institute of Intellectual Property for sponsoring this study. The objectives of the Institute are to conduct study and research concerning various domestic and overseas issues and to collect and supply information for the purpose of promoting appropriate protection and international harmonization of the intellectual property and thereby contributing to the development of the industry and economy of Japan".
The study has now been published and the IPKat has been enjoying it. The study addresses linguistic issues that arise from the use of words marks in Romaji and in Roman characters, as well as the quest for a language test in UDRL decisions. For those who fancy a change of reading habits this summer, there's a summary of the English text in Japanese. Many thanks, Cedric, for all your efforts.

Left: Roman characters, as depicted in Shakespeare's Julius Caesar

JCL&E

The IPKat's copy of the June 2006 issue of Oxford University Press's quarterly Journal of Competition Law & Economics has just reached him. From an IP reader's point of view, this issue's star article is that of Professor Ariel Katz (Faculty of Law, Toronto), "The Potential Demise of Another Natural Monopoly: New Technologies and the Administration of Performing Right". Legal readers will find that it's more law than economics, but European readers will find it's more North American than EU-ish. Definitely worth a read, though, wherever you come from.

View contents of the current issue here


Call for help I: stay of patent infringement proceedings

IPKat co-bloggie Jeremy edits the Journal of Intellectual Property Law & Practice. In this capacity he is looking for someone who can write a comparative article, reviewing the different approaches taken within European Patent Organisations in the following situation: proprietor X secures a European Patent, designating various countries. Opponent Y files opposition proceedings at the European Patent Office. Opponent Y subsequently works the disputed invention in the various countries and X sues for infringement of the national patent in each case. Y then applies before the national court for a stay of the national infringement proceedings until the European Patent Office rules on the patent's validity.

What's needed is a well-written, well-researched and highly focused review of this topic, preferably taking in at least three significant patent litigation jurisdictions in Europe. Any takers? If you're interested, just email Jeremy here and we can discuss the matter further.

Details of JIPLP here. Guidance for authors here. Editorials currently available for free online here.
"Oh won't you stay?" here


Call for help II: grabbing goods

IPKat co-bloggie Jeremy needs more help for his forthcoming book, The IP Enforcement Directive (details here). In the United Kingdom there are some rather strange self-help provisions, one of which is section 100 of the Copyright, Patents and Designs Act 1988. Briefly stated, this allows a rights owner - having complied with certain conditions - to seize infringing goods where they are being sold and then to walk off with them. Jeremy wants to know: do any other European countries have similar provisions? He also wonders whether the fact that some countries do allow self-help while others don't has any repercussions for the famous level playing field for IP enforcement in the single European market.

If you have any bright ideas, just email Jeremy here. All serious contributions will be acknowledged in the book.

GOOD KNIGHT


The Times reports that Burberry has settled an infringement case with an American company concerning its Prorsum logo and the Burberry check. Marco Leather imported goods from China bearing the logo and the check, and also tried to register a knight logo with the USPTO. Marco’s knight had no banner and faced the other way from the Prorsum knight.

The IPKat says that if you are going to be silly enough as to infringe someone else’s trade mark, for goodness sake don’t bring it to their attention by applying to register the subject-matter of the infringement. He wonders though if consumers really would be confused by a mirror image of a logo. He suspects that consumers would see it rather as an attempt to create an association with Burberry, rather that as a sign that the goods were made by Burberry.

DISCLOSURE WHERE POSSIBLE BREACHES OF LAW LURK


Disclosure where possible breaches of law lurk

The IPKat has been pondering over Hughes v Carratu International plc [2006] EWHC 1791 (QB), a decision of Mr Justice Tugendhat in the Queen’s Bench Division on Wednesday and which you can read on BAILII. It's an application for disclosure prior to a possible action for breach of confidence, invasion of privacy and breach of data protection law.

Hughes obtained a letter from the Information Commissioner’s Office, telling him that some documents had been seized during the execution of a search warrant which related to transactions on his bank account. The ICO subsequently told Hughes that the subject of the search warrant was an enquiry agent, but he was not told the agent's name. Hughes later inspected some of the documents seized by the ICO, one of which had Carratu's name on it (Carratu being a corporate investigation consultancy much used by intellectual property owners in their war on counterfeits).

Hughes asked Carratu to reveal the identity of the party on whose behalf it sought the documents. Carratu refused, but said its principal was a law firm. Hughes then applied for an order that Carratu disclose (i) all documents currently or previously in its possession or control, (ii) the identity of the party or parties for whom the information gathered, and (iii) the identity of the party or parties by whom the information was gathered. He relied on the Civil Procedure Rules, rule 31.16, SI 1998/3132, which say:

"(1) This rule applies where an application is made to the court under any Act for disclosure before proceedings have started. (2) The application must be supported by evidence. (3) The court may make an order under this rule only where— (a) the respondent is likely to be a party to subsequent proceedings; (b) the applicant is also likely to be a party to those proceedings; (c) if proceedings had started, the respondent's duty by way of standard disclosure, set out in rule 31.6, would extend to the documents or classes of documents of which the applicant seeks disclosure; and (d) disclosure before proceedings have started is desirable in order to— (i) dispose fairly of the anticipated proceedings; (ii) assist the dispute to be resolved without proceedings; or (iii) save costs".
Carratu said there should be no such disclosure: there was insufficient material before the court to show that it was likely to be a party to subsequent proceedings, as was required by the Civil Procedure Rules. Nor had a sufficient case of any civil or criminal wrongdoing been made out against either Carratu or its law firm client. Hughes said he planned to sue everyone who had done him a wrong, including Carratu, alleging possible actions for breach of confidence or privacy and under the Data Protection Act 1998.

Tugendhat J allowed Hughes' application. Hughes had passed the threshold test of establishing an arguable cause of action against both Carratu and the law firm. Indeed, arguably Hughes was entitled to the names of the individuals to whom his personal information had been communicated, and to an explanation as to what, if anything, they had done with that information. Right now it was not possible to exclude the possibility that he might be entitled to some remedy by way of injunction or damages or compensation under the Data Protection Act 1998 - any other cause of action.

The IPKat recognises the need to balance the sharply competing interests of individual privacy-protected data subjects and commercial organisations that are involved in the surveillance and information-gathering that is a necessary feature of the fight against IP crime. But, as Merpel notes, the "need to balance" involves the exercise of discretion, which in turn is a polite way of saying the "need to litigate". It's a shame that, while both data protection law and the law of disclosure have succeeded so well in employing helpful guidelines, the point at which the two bodies of law and practice is one where so much attention has to be given to the facts of each case that general guidance is hard to formulate.

Carratu International here
Best kept secrets here, here and here

Thursday, 20 July 2006

GOOGLERS AND WIKIS


Google-eyed

The IPKat thanks Juliet Jenkins of Leeds University for tipping him off about news in ZDNet about Google (or should that be google) becoming a verb.

Merriam-Webster has introduced to ‘google’ as a transitive verb meaning ‘to use the Google search engine to obtain information about (as a person) on the World Wide Web’. Google, noting that the term is being defined specifically by reference to the Google search engine has said that it does not object.

The IPKat wonders whether this combination of descriptive entry into the language and a strong source message is unique.


Patent wiki

David Pearce’s patent wiki site, containing a consolidated and annotated version of the United Kingdom's Patents Act 1977 and the Patents Rules is now up and running – visit it here.

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