The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy
InternKats: Rose Hughes, Ieva Giedrimaite, and Cecilia Sbrolli
SpecialKats: Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Wednesday, 31 January 2007


Guidance on TM examination

The IPKat notes that the UK Patent Office has added an addendum to the Examination and Practice section of the Manual of trade mark practice.

Rather sportingly, this provides a list of terms that may commonly be included in trade marks but which may be thought of as suggestive, and indicates what the examiner’s attitude should be to each of them.

The IPKat salutes the Patent Office’s continued attempts to remove the element of surprise from IP law.

Pierre Hugo is miserable

The IPKat reads in The Guardian that Victor Hugo’s great-grandson has failed in an attempt to prevent the circulation of Les Miserables. Pierre Hugo argued that Cosette ou le Temps des Illusions, in which the villain found in Les Miserables is recast as the hero (in the original he drowned in the Sienne), violated the ‘respect of the integrity’ of the original. Pierre Hugo said:

"I don't mind adaptations and many are very good but this book is not an adaptation. I have read it and it is not badly written but the publishers used Victor Hugo's name and the title Les Misérables as a commercial operation ... It was nothing to do with literature, they were just trying to make money."

However the French Court of Cassation said 'non'.

Victor Hugo died in 1885.

The IPKat says that this is clearly the right decision. Any other verdict would leave the public domain depleted, since authors would need to perpetually worry about harming the reputation of authors whose work copyright would otherwise allow them to use.

Have moral rights gone to pot?

While the IPKat is on the subject of French moral rights, he’s grateful to McGill CIPP’s IP News this Week Service for tipping him off that the artist who last year smashed one of Marcel Duchamp’s urinal statutes (blogged by the IPKat here) is claiming that his moral rights have been violated by the Pompidou Centre’s repair of the Duchamp work.

The IPKat is speechless.

Latest JIPLP; Seattle Trademark Lawyer

Latest JIPLP

The January 2007 issue of the Oxford University Press monthly Journal of Intellectual Property Law and Practice has almost been published, alas rather later than usual on account of the time taken for the handsome new red ink to dry on its illustrious newly-freshened cover. This is quite literally the latest issue, in that no previous issue has ever been published quite so very late ...

Particular attractions to be found include

* "The orphan works dilemma and museums: an uncomfortable straitjacket", by aspiring young US commentator Simon Teng (abstract here);

* "Enforcement of Community Designs by Alicante courts: a promising start", by one of the OHIM design gurus, José J. Izquierdo Peris (abstract here);

* "Intellectual property protection and enforcement at major events: Practical lessons learnt from the Melbourne 2006 Commonwealth Games" by Allens Arthur Robinson duo Tim Golder and Wendy Burnett (abstract here).
Full contents here
Free sample issue here
Subscription details here; submit an article here
Read the Editorial (and indeed all Editorials from November 2005) here

Seattle Trademark Lawyer

The IPKat's friend Peter Groves has just drawn his attention to the Seattle Trademark Lawyer blog. Piloted by Michael G. Atkins (left), a lawyer-shareholder at the Seattle law firm of Graham & Dunn, it provides some fairly concise and manageable information on US trade mark, trade dress and copyright-flavoured cases, ever-so-slightly treading on the magisterial toes of the TTABlog. The archives go back to November 2006, so it's a fairly recent addition to the IP bloggie family: the IPKat and Merpel wish it well.

Patenting them darned pesky names again ...; Tell it to the Marines, Part 2

Patenting them darned pesky names again ...

The IPKat thinks that dazzling CNBC business news journalist Maria "Money Honey" Bartiromo should consider changing her lawyers, or at least let them into the secret of trade mark registration: they're advising her to patent her nickname, if the report in today's Telegraph is anything to go by.

Right: Ms Bartiromo, still smiling (presumably this shot was taken before she encountered the patent system ...)

Merpel says, perhaps the Telegraph should change its journalists - or give them better basic training in their use of legal terminology.

Tell it to the Marines ... Part 2

Back in February last year the IPKat posted a short note on
Marine Rescue Technologies v Burchill and another, a case in which the defendants applied unsuccessfully to have various IP infringement and passing off claims struck out for inordinate delay. The post added:

"The IPKat can't help wondering about this. Four and a half years into a dispute, its resolution doesn't seem to have got very far".
The IPKat has since heard from litigant Michael Burchill, who adds:

"Both parties were ordered to comply with standard disclosure by 31 January 2004 in a case which was started by the claimants with an emergency application for an injunction in 2001 served on me at 5:25 on a Thursday night with the hearing set for 10am the following Monday.

I received a list of documents by the deadline and asked for copies of all but a few documents. Despite several letters to the claimants' solicitors, most of which were ignored, I did not receive any documents until July 2006 and most of those were completey unrelated; the important ones were copies with no mention of originals. The standard disclosure form was not even filled in by them. When I raised this with Mr Justice Warren at the strike-out hearing I was told to make an application for specific disclosure even though my point was that the claimants had not complied with standard disclosure and were therefore in breach of that order. My application was made for specific disclosure, but the judge (and I was very pleased) reinstated the previous order, giving them 28 days to comply. They still have not done so and have ignored my last three letters and emails. No order was made in relation to costs for that hearing.

During the course of the case the claimants have taken extraordinary measures to destroy my business and have succeeded.

Although I cannot prove most of the activities were caused by the claimants some clearly were.

1. The police raided my office and home and that of my webmaster, taking all computers and hundreds of documents charging me under the Misuse of Computers Act, based on th fact that I was using email addresses which I claimed belonged to me. This complaint was brought by an ex-employee who was working with the claimants and whom they relied on as a substantial witness. He died last year. The police held all computers and records for 13 months with no charges being made. I incurred tax and VAT surcharges because I had no records of transactions.

2. Letters and faxes were sent to all my clients, stating that the police had seized my computers and that both the police and the trading standards were conducting further investigations. The unsigned, anonymous letters bore the fax number of the claimants daughter in law's home telephone number.

3. A letter was sent by the claimant which ended up in the hands of two parties whom I was working with on a $3m monthly contract stating that they would lose everything under the contract as ALL of my assets including trade contracts were going to be siezed by the court. As a result my company immediately lost the contract.


8. The trading standards investigated me for two years, writing to my suppliers and issuing a directive that I should stop selling the product because the claimants had registered their name as a trade mark AFTER the case had been started. I refused, but had to stop in the end because they raided my supplier.

9. My rubbish bins were regularly raided and on the last occasion documents were found some two miles away scattered in the road. I was interviewed under caution for fly-tipping.


11. I have lost my business, ... my original investment of £60k and $330,000 owed to me by the US partners. I have legal bills of over £50k and have been joined in the action as an individual. The claimant told me he will not be satisfied until he gets my house. I have borrowed some £80k over the past years.

12. The value of the sold goods in question were less than £50,000 and I bought them off the administrator of a previous business. The legal fees for the other side must be in excess of £100k by now.


14. The claimants also caused me an in-depth tax investigation followed by a VAT investigation followed by yet another in-depth investigation which trawled through both the company, my wife's and my own personal finances resulting in three years of hell and - at the end of it - a clean tax certificate.

15. My company which is a defendant and part 20 claimant is being sued by the revenue now and I have been advised to strike it off as it has not traded since 2004. This will end the part 20 claim.

I am now faced with a difficult choice. Do I apply again for specific disclosure? Do I ask the court to consider contempt of court? Or do I apply for another strike out as I now feel my case has been prejudiced? Or wait again and let the issue drag on and on?"
If any reader of this post has any constructive suggestions that might aid or comfort Mr Burchill, can he or she please email him here. More to the point, although he does not have access to the court records and has received no information from the claimants in these proceedings, the IPKat feels that no legal justice system can tolerate an action of this nature, which apparently began in 2001, dragging on in this manner.

Merpel adds, whether it is a matter of poor case management, of dilatory activity on the part of a litigant or anything else, some sort of explanation should be forthcoming, if only to exculpate the innocent and/or to warn prospective litigants of what they might expect if this case is typical of others.

Tuesday, 30 January 2007

INTA and academic involvement

The International Trademark Association (INTA) is compiling a list of intellectual property law academics who have an interest in trade mark law and who would like to become involved in, or at least kept in touch with, INTA's various activities in the field.

If you teach or research trade mark law and would like to be added to the list, email Ian Coates or Jeremy Phillips, giving your name, status, academic affiliation, address, phone, fax and email details. Ian and Jeremy are responsible for building up the UK list, but will forward the particulars of any non-UK scholar to the INTA.

Above, right: scholars attend an INTA roundtable on trade mark registrability

INTA offers reduced-rate membership fees for academics and students. Click here and scroll down for particulars.

World Intellectual Property Day - an update

Own It has announced its World Intellectual Property Day event. "Innovation for Business Growth" is being held on Thursday 26 April 2007, from 6.00pm to 8.00pm, with the promise of some networking to follow. The location is the Students Hub and Bar, University of the Arts London, 65 Davies Street, London, W1K 5DA.

This event costs nothing to attend, but you MUST book online first. The speakers are Harry Karaolou (Bevan Brittan), Mark Sheahan (MD of CompGen Ltd and a serial award-winning inventor), Frederick Mostert (author of From Edison to iPod: Protect Your Ideas and Make Money and serial bagel sampler) and Julie Ray (Microsoft). Partners in the event are Islington Enterprise Action, Ideas 21 and Bevan Brittan LLP.

With the same day in mind, Pinsent Masons' popular website has offers the following:

* Free advice on World Intellectual Property Day: learn more about the day and meet an IP expert ...

* WIPD kit for IP specialists. If your firm gives advice on IP, here are materials to get you started in supporting WIPD.

* WIPD for bloggers and others who want to promote the day: stick a badge on your site (two versions, above left and right, are on offer on terms that make open-source and Creative Commons look positively selfish).
Pinsent Masons' Struan Robertson promises more to come; you can contact him here. The IPKat is already getting excited at the chance to meet an IP expert. Merpel says, but we've already met ...

Copying Without Infringing

Copying Without Infringing

This year's popular one-day Copying Without Infringing conference takes place in London on 13 March 2007. Organised by CLT, it addresses the vexed issue of how far a business can make use of another's IP rights before it finds itself liable for infringing them. Is it "fair dealing" or "fair stealing"? IPKat team member Jeremy will be chairing the day's activity.

Papers on this year's programme include

* "Experimental Use of Another's Patent - How Far Dare One Go?", by Bird & Bird partner Trevor Cook, who has recently written a monograph on this topic that was published by the IPI;

* "Thumbnails, Hotlinks, P2P and Blogging: Non-permitted Use of Copyright Works and the Internet", by King's College London scholar Tanya Aplin;

* "Can You Sell a Smell-alike Scent?" by Addleshaw Goddard partner Richard Kempner.
The IPKat will shortly be announcing a competition to go with this conference, the prize being complimentary admission (and a jolly good lunch). Full programme and booking form here.

Monday, 29 January 2007

Music Trading Online loses its appeal

Music Trading Online loses its appeal

On Friday the Court of Appeal (Mummery, Rix and Lloyd LJJ) gave its ruling in Independiente Ltd and others v Music Trading Online (HK) Ltd, in which MTO appealed against the judgment of Mr Justice Underhill (see IPKat post here) that Independiente was entitled to sue MTO for breach of contract after that company breached its undertakings in a settlement agreement that it would not sell infringing CDs and DVDs online, and not just for contempt of court. This case has been noted on Lawtel but has so far not reached BAILII.

Right: treating the appellant's argument with contempt

According to the Court of Appeal, dismissing MTO's appeal,

* There were no express terms that MTO had given undertakings to Independiente as well as to the court. However, its undertakings had to be taken as a whole, in the contractual context of the case.

* The correct construction of the settlement agreement was that MTO was contractually bound not to do the acts that would breach the undertakings it gave the court. By agreeing to give undertakings to the court, MTO also agreed with Independiente not to do the acts it had undertaken to the court that it wouldn't do.

* Underhill J had found that this obligation was an implied term of the contract and there was nothing wrong in the way he had approached the matter. This was a classic example of the 'officious bystander' test and it made no common sense for one party to agree with another to give undertakings to the court and not at the same time to agree with that party not to do what it said it would not do in its undertakings.
The IPKat isn't surprised by the result. He assumes though that the decision to sue for breach of contract rather than civil contempt is motivated by the chance of securing better and more valuable relief.

Contempt of court here
Contempt by Raymond Watts: the lyrics

Novartis fight for patentability in India

The drug company Novartis are to argue in court today (as reported elsewhere here, here or here) that their anti-cancer drug Glivec (imatinib) should be patentable in India.

Right: Imatinib mesilate

To comply with TRIPs requirements, India modified its patent law in 2005, allowing new chemical entities (post 1995) to be patented. The law was, however, also modified to prevent the practice of 'evergreening', making small modifications to a chemical entity to acquire a new patentable drug, thus extending the patented life of the drug. The amendment to the Indian Patents Act, at section 3, reads:

"The following are not inventions within the meaning of this Act, -


(d) the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant".

The explanation provided in the amendment goes:

"For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy."

This clause therefore effectively prevents drugs that are not new chemical entities from being patentable. Patenting new salts or crystal forms is not possible, unless there is some improved efficacy.

The Indian government's argument is that Glivec is not a new entity because forms of it were known of before 1995, and Glivec does not show any enhancement in efficacy. Novartis, however, argue that Glivec is more easily absorbed by the body and is therefore more effective. More significantly, Novartis also argue that the law as amended is unconstitutional, and does not comply with India's requirements under TRIPs.

The case has prompted a public outcry, including demonstrations in New Delhi. Many people view Novartis' appeal as being an attempt to restrict the availability of medicines to people who may not be able to afford them, because generic manufacturers will not be able to cheaply produce copies of patented drugs to supply the large market in India and elsewhere.

The IPKat is on the fence on this one. If Glivec is really no better in efficacy than previously available drugs, then it shouldn't really matter whether Novartis gets a patent for it or not. Generic suppliers can simply make and sell the old drug, which will work just as well. On the other hand, if Glivec really is substantially better than what was available before, don't Novartis deserve to get a patent for it, in accordance with Indian patent law? Fundamentally, it seems to come down to the old argument of whether new and innovative drugs should be the subject of patent protection at all.

Quiet week in Luxembourg; The Recasting of Copyright

Quiet week in Luxembourg

The IPKat is pleased to note that, after all that frenetic activity from the European Court of Justice in recent weeks, this week will be pretty quiet for IP enthusiasts, giving them a chance to catch up on their reading and - more importantly - their thinking before the next batch of Euro-Super-Cases comes flying in their direction. The only IP action this week on the Curia agenda is Case T-460/05 Bang & Olufsen v OHIM, an appeal to the Court of First Instance against OHIM's refusal to register as a Community trade mark an "haut parleur", which even the Kat can translate into a loudspeaker. The IPKat's preliminary verdict: unregistrable. Merpel agrees, but with the reservation that if anyone asked her to guess who made it, she'd opt for Bang & Olufsen because it's very much the B&O style.

The Recasting of Copyright

The IPKat looks forward to studying The Recasting of Copyright & Related Rights for the Knowledge Economy, a 305 page report by IViR (the Institute for Information Law at the University of Amsterdam), which examines the acquis communautaire on copyright and related rights as well as specific "possibles" including

* the extension of the term of protection for sound recordings and

* the alignment of the term of protection for co-written musical works.
Prepared at the request of the European Commission by a team headed by highly-respected scholar Bernt Hugenholtz, this report has an executive summary (at pages 5 to 13) which ends by laying down the gauntlet to the Commission:
"In the long run, if the Community is serious about creating an internal market for copyright-based goods and services, it must inevitably confront the problem of territoriality in a fundamental way. This would imply the adoption of a Community Copyright Regulation to replace the existing directives and partially pre-empt the national laws on copyright of the Member States. Besides its obvious deregulatory effect, a regulation of this kind might provide a certain ‘rebalancing’ of rights and limitations, in order to rectify the overprotection resulting from 15 years of ‘upwards’ harmonisation".
The IPKat thinks this is right, but wonders whether the Commission has the guts to do the job. Merpel says, it's not so easy. Copyright isn't just an economic tool: its moral rights dimension - if not its weakness as a legal monopoly when compared with patents and trade marks - may argue for more gentle and culture-specific attention.

Right: this handsome copyright notice appears on the Copyright Symbol Webpage

Sunday, 28 January 2007


The Financial Express reports that Pakistan is ready to bring India before the WTO over the issue of the registration of Basmati as a geographical indication for rice. This follows failed plans for India and Pakistan to jointly register Basmati. The joint registration was vetoed by Pakistani rice growers. Meanwhile, the EU sees the two countries as being equally entitled to the term, since it is authentically grown in both areas.

The IPKat reckons that asserting any sort of IP rights over the term Basmati is controversial enough, without bringing supra-national level litigation.

More to read ...

More to read ...

The IPKat has received copies of two more publications emanating from the Intellectual Property Institute. Although both were published late last year, they have so far received little publicity - unfairly, in the Kat's opinion.

Right: The IPKat, watchful for predatory cybersquatters, polices his .eu domain

The first is Domain Name Dispute Resolution, being a report on a seminar last July led by one of the grand-daddies of trade mark and domain name law in Europe, the evergreen David Tatham OBE. This slim title provides some very neat description and analysis of the first batch of 33 .eu domain dispute resolutions, concluding that - whatever one thinks of the system and its mutation of ICANN's .com norms - on the whole they have been handled very well.

The second is Protection of Regulatory Data Under Article 39.3 of TRIPs: the Indian Context, researched by one-time Oxford scholar and now Washington DC spicy blogger Shamnad Basheer. This little book describes the requirement for protecting regulatory data laid down by TRIPs (is it an intellectual property right? That's a good topic for discussion) and explains how current Indian law falls short of fulfilling that requirement.

Further details of each title (they're £20 apiece) and details on how to order them here.

A third text that has fallen into the Kat's paws is Artist's Resale Right (Droit de Suite): Law and Practice, by London solicitor Simon Stokes, a partner in the London office of recently-merged Blake Lapthorn Tarlo Lyons. Published by the Institute of Art and Law, it bears a November 2006 imprint. The reference to 'Practice' needs some explanation. Since the law on resale rights for artists has only recently come into force in the United Kingdom, there is little actual practice as such, and certainly no case law. This does not however mean that there are no practical issues for the artist and his lawyer to address - and that is what this book does. Apart from explaining the legislative, economic and philosophical background to the new right in a direct, intelligent manner, the book prepares the reader for what is to come: issues such as taxation, collection, framing and restoration costs.

Bibliographic details. ISBN 1-903987-15-6. x + 86 pages. Paperback, £17 inc p+p. Rupture factor: non-existent. Full contents here

Saturday, 27 January 2007

Weekend items

Last week was a very good week for the IPKat weblog. The site received 3,564 casual visits, breaking the 3,500 barrier for the first time. Sunday's total of 270 was also a record for a "non-work" day. On that day the IPKat's email circular list reached an all-time high of 729 readers. Thanks, all of you, the Kat says, for your continued interest and support.

Congratulations to Mr Justice Lawrence Collins (left) on being the first solicitor to be elevated to the Court of Appeal for England and Wales. Intellectual property enthusiasts will recall his rulings in Polydor Ltd v Brown [2005] EWHC 3191 (Ch): ignorance no defence to copyright infringement action in respect of connecting a computer to the internet so that others could access audio files; Sawyer v Atari Interactive Inc [2005] EWHC 2351 (Ch) - English courts had jurisdiction to hear software dispute even though claim served in US; General Cigar Co v Partagas [2005] EWHC 1729 (Ch), the nightmare CIFUENTES/CIFUENTES WINKS trade mark infringement case; Sony v Nuplayer Ltd [2005] EWHC 1522 (Ch) - the fact that a trade mark was not visible at the point of sale of goods did not mean that there was no infringement. The IPKat seems to recall that, when still only a Deputy Judge, Lawrence Collins got it right in Design Guild v Russell Williams, a controversial artistic copyright infringement case in which the House of Lords rapped the Court of Appeal over the knuckles for over-interference in the trial judge's findings of fact and reinstated his ruling that the claimant's copyright had been infringed. Good luck, says the Kat.

Another wiki is up and running, this time from veteran IP enthusiast Peter Groves. WikiIP is still in its early stages, consisting at the moment of a basic framework plus a batch of Google-supplied ads. If you'd like to post some copy on it so that everyone else can edit it, or even if you just want to email Peter and let him know your thoughts, feel free to do so. Good luck, Peter, add the Kats - we'll be watching!

Right: "Gotta Keep Searchin' ...". This attractive young lady was thrown up on a Google image search under the term "wiki"

Haikus are coming in thick and fast as the IPKat's latest competition gets more popular. The object of the exercise is to compose, in haiku format, an email disclaimer. If you're planning to enter, you've still got plenty of time - the closing date is 5 February 2007. Best entries will be published, of course.

Friday, 26 January 2007


On Wednesday the Chancellor delivered his decision in Hachette Filipacchi Presse v SIP. The case is an appeal from the hearing officer concerning the registrability of ELLE by SIP for yarns, opposed by the publisher of Elle the magazine. The Chancellor dismissed appeals concerning oppositions based on confusion under s.5(2) and unfair advantage under s.5(3).

More from the IPKat anon, when he’s had the chance to read the case properly.

Sony's metadata structures found not patentable (kind of)

The IPKat has been digesting this recent UK Patent Office decision (BL O/010/07), which has also recently been reported on The Register.

The decision related to refusal of Sony’s patent application GB0207020.9 directed to a data structure for communicating metadata. Sony appealed the examiner’s decision that the application related only to a computer program as such, refusing the application under section 1(2).

Embodiments of the invention included a system for generating video productions, which generated "metadata" describing the content or other attributes of video material shot on a camera. This metadata, arranged in a hierarchical structure, could then be used in processing the video, i.e. storing, navigating and editing, particularly over a network. Such an arrangement would apparently allow large amounts of data, for example in high definition video format, to be manipulated in a more efficient way. The claimed invention, however, was directed only to “a data structure for communicating metadata describing the content of at least one shot or sub-shot of information material between a network of devices...”.

The Hearing Officer (HO) followed the four-step Aerotel/Macrossan test to determine patentability. After construing the main claim, the contribution made by the invention was seen to be the data structure itself. This was viewed by the HO as being “part of the instructions whereby a computer [...] is enabled to retrieve and communicate the metadata”. The contribution therefore constituted a computer program as such. The HO cited a previous decision of Oracle (O/255/05), where an application to a data structure was refused as being nothing more than a development in computer programming technique. Once it was determined that the claim, properly construed, was for nothing more than a program for a computer, the HO reasoned that the remaining steps could not assist.

Responding to arguments that the claimed invention nonetheless provided a “potential for data nodes to more efficiently access metadata”, the HO considered that, while this may foreshadow a technical effect when the data structure was operative to access metadata, it would not make the data structure itself any less a computer program as such.

Although the HO did not consider that any useful purpose would be served by establishing that the data structure provided a technical contribution, he did, after considering the previous EPO decisions of Philips (T 1194/97) and BBC (T 0163/85), and the more recent UKPO decisions of Sun (BL O/057/06) and ARM (BL O/066/06), take the view that if the claims were instead directed to a data communications network, the technical contribution provided would be relevant. In paragraph 28:

  • "Having considered all these arguments I accept that the data structure has the potential to bring about a technical effect but I do not think this is an argument for allowing the claims to the data structure itself, which must in my view remain excluded. However, it seems to me that claims according to either of the auxiliary requests, which require the incorporation of the data structure into a data communications network, would satisfy all the Aerotel/Macrossan steps. The incorporation of a hierarchical database structure into a communications network of data processing devices so that metadata can be communicated between them with the advantages outlined above at paragraph 25 provides in my view a contribution which is not disclosed or foreshadowed by the prior art cited on this application, which is not solely a computer program, and which is technical in nature"

Subsidiary claims to a data communications network were therefore not excluded. The application was remitted to the examining division for further prosecution.

The IPKat is a little puzzled by this decision. While on the one hand the subject matter of the alleged invention is quite clearly, in the Hearing Officer's view, excluded, on the other hand the very same invention in the guise of a physical apparatus is not excluded. Does this tally with the 'substance over form' test we are told should be the way inventions of this genus are to be viewed? If the contribution to the art was indeed only a computer program as such, how does this contribution become "technical" when it is in the form of part of a (presumably otherwise conventional) data communications network? Why, if the data structure has a 'potential' for a technical effect, is it not patentable in itself (see the IBM decision T1173/97)?

Merpel suggests that this decision just emphasises the point that nobody really knows what they are doing in this area, and provocatively asks: just what is that fourth step for anyway, if the Patent Office insist on never using it?

Pipe down, part 2; Ninja Coke settlement; New edition of Goldstein confounds the critics

Pipe down, part 2

Back in November the IPKat reported that the UK parliamentary Bill to ban piped music in hospitals was dropped by the Government - but it has re-emerged as a Private Members' Bill. The new Piped Music etc. (Hospitals) Bill has been introduced in the House of Lords empowers the Secretary of State to draw up plans to prohibit the playing of piped music and the showing of television programmes in the public areas of hospitals, requiring anyone listening to music in such areas to wear headphones.

The IPKat notes that this Bill is narrower than its predecessor, which also covered the playing of piped music and the showing of television programmes on public transport (see Legal update, Private Members' Bill to ban piped background music. This should also provide a further boost for MP3 players, even if it will deprive owners of rights in recordings, performances, musical works and lyrics of an income stream. Merpel says, you could probably get many members of the public to pay not to be subjected to the involuntary pipe.

Piped music here and (alas) here
PipeDown - the campaign for freedom from piped music - here

Ninja Coke settlement

Earlier this month the IPKat noticed that trouble was brewing in the form of a plagiarism claim made by an independent pop group, 7 Seconds of Love, that Coca-Cola had used both their song Ninja and their kitty video without authorisation in a TV ad. Monika Bruss and Jim Davies have been swift to alert the IPKat to the ensuing out-of-court settlement here and here. The animated video originally appeared on MySpace and YouTube, featuring a cat bouncing around in a ninja suit.

The IPKat is sure that image-conscious Coke was quick to settle in order to avoid the adverse publicity that litigation would generate - but bets that some young pup in the advertising department didn't half get his delicate parts rearranged. Adds Merpel: ensuing settlement? Non-suing settlement, more like it.

New edition of Goldstein confounds the critics

The IPKat's good friend and Dutch colleague Piter de Weerd mentions a book review on the IPkat’s dutch equivalent, boek9. The review, by Dirk Visser, is of anIP thriller Errors and Omissions by respected US academician and copyright commentator Paul Goldstein. Hero of the novel is Intellectual Property lawyer Michael Seeley, "defender of artists’ right, take-no-prisoners intellectual property litigator – and a man on the brink of personal and career collapse". If you want to read the plot, it's summarised here on

The IPKat notes that Paul is not the only IP personality to turn his hand to writing IP fiction: patent attorney Kfir Luzzatto has done much the same with his book The Odyssey Gene. Merpel adds, there are quite a few more leading IP personalities who write fiction: the only thing is, they call their stories "judgments" and they apparently have some legal force ...

Thursday, 25 January 2007


The second of today’s ECJ trade mark judgments – this time the fate of Dyson’s application to register the transparent bin of its vacuum cleaner for vacuum cleaners.

The UK court made a reference based on acquired distinctiveness in relation to functional elements of goods, but the ECJ chose to base its decision on whether the mark was in fact a sign.

The ECJ's decision has left the IPKat in a bit of a spin

*The applied for mark was not a sign, as such it failed to satisfy Art.2 and so there was no need to consider the Art.3 grounds. Instead, it was a mere property of the product.
*What was applied for was abstract and general, since it covered all conceivable shapes of transparent collecting bins.
*Consequently, what was applied for was not visually perceptible. Specific examples of such bins could be seen, but the concept of a bin, which was what the application was for, could not.
*Such non-specific subject matter would give Dyson a competitive advantage by excluding competitors from using any form of transparent collecting bin.

The IPKat says that in basing the decision on Art.2, the ECJ has neatly avoided the problem inherent in Art.3(1)(e) that functionality is limited to shapes and doesn’t appear to include colours, while at the same time protecting the public interest of enabling other traders to compete by using technical solutions that underlies both Art.2 and Art.3(1)(e).


The IPKat is busy digesting the first of today’s two big ECJ trade mark cases.

In Adam Opel, questions on trade mark use and the defences were referred by the German court concerning Autec’s use of the Adam Opel logo on the radiator grills of its faithful scale models of the Opel Astra V8 coupe.

Was this trade mark use prohibited under Art.5(1)(a)?

*Clearly the use was in the course of trade and without the use of the proprietor.
*The use was ‘in relation to goods’ as per Art.5(1)(a) since the mark was registered by Adam Opel for toys and affixed to toys by Autec
*Nevertheless, there could only be infringement where the use harmed the functions of the trade mark, in particular, its essential function
*The German court had explained that the average German consumer was used to the use of trade marks on scale models of cars in order to indicate that they were reduced-scale reproductions of the real car. If this meant that the relevant public did not see the sign on Autec’s car as an indication that the products came from Adam Opel, or an undertaking economically linked with it, this would mean that the use did not affect the essential function of the Opel logo as registered for toys. [IPKat comment – this is a very narrow view of the essential function, and what jeopardises it. It’s limited to indicating origin, rather than distinguishing, and as a result seems to seek confusion, rather than harm to distinguishing power as in Arsenal v Reed CA]
*It was ultimately for the referring court to determine if the functions of a trade mark had been jeopardized, though the ECJ noted that Adam Opel had not alleged an effect on any of the other trade mark functions. [IPKat comment – more explicit acknowledgment than in Arsenal v Reed ECJ that a trade mark has functions other than the origin function]

BMW and referential use

*The scenario in BMW v Deenik, where use on services which were different to the goods for which the mark was registered and yet Art.5(1)(a) infringement was found was limited to situations in which the defendant is using the trade mark to identify the subject-matter of the services. It did not introduce a general referential use rule. [IPKat comment - this is a sensible (if somewhat arbitrary) limitation. The referential use rule had potentially horrible consequences for free speech in parodies etc]
*As a result, there could be no infringement case in relation to Opel’s registration for cars. Autec simply did not sell cars.


*It was the ECJ’s duty to provide the national court with all elements that could be useful for judging the case. Here this included Art.5(2).
* It appeared from Davidoff II that Germany had implemented Art.5(2).
*Subject to verification by the German court, it appeared that the mark was well-known in Germany [IPKat comment – this is a matter of fact; the ECJ should NOT be speculating on this]
*Opel had argued that its reputation for motor vehicles would be put in danger if its mark was used on models which were not up to date. However this was an assessment on a factual nature which was for the national court. [IPKat comment – the whole Art.5(2) exercise was an almighty waste of time, bearing in mind that the ECJ was forced to speculate on whether Germany even had Art.5(2) protection and whether the mark was well-known, and then was unprepared to commit on what would constitute one of the types of harms covered by that article.]


*This was not an Art.6(1)(c) case since affixing the trade mark did not indicate the purpose of the toy cars
*This was not an Art.6(1)(b) case either since the use did not intend to provide an indication as to the characteristic of the scale models, but instead was an element in their faithful reproduction of the original vehicles [IPKat comment – there’s some serious hair-splitting going on here – isn’t the fact that the models reproduce the originals their defining characteristic?]
*The primary purpose of Art.6(1)(b) is to prevent the proprietor of a trade mark from stopping competitiors from using descriptive terms which form part of his trade mark in order to indicate certain characteristics of their products [IPKat comment – hang on a sec…if the primary purpose is to keep free terms which are already descriptive, this doesn’t bode well for comparative advertising which seeks to make a comparison by using the trade mark owner’s trade mark to indicate the characteristics of both the mark owner’s and possibly the defendant’s own products]

IPKat overall assessment: glad to see the back of the Advocate General’s convoluted approach to trade mark use in this case. Not so sure about the analysis of the defences though.

Great shakes for published authors

Great shakes for published authors

The IPKat has received an email from Shaker Publishing which reads, in relevant part, as follows:

"Dear Author,

If you published an academic or scientific text in 2006 that was also distributed in Germany you can register this with Verwertungsgesellschaft WORT (royalties collecting society) before 31 January and thus ensure an additional income on your copyrights. Apart from proceeds from sales of actual books, this means you can also profit financially from the secondary use of your works".
Shaker add that they would like to tell you more about what VG WORT actually does and the requirements of its scientific department.

For further details, email Shaker here or visit its website here.


The IPKat learns CBC from that the Scotch Whisky Association has lost an attempt to oppose the registration of GLEN BRETON as a trade mark by a company producing whisky in Canada. The Association considers that the name gives consumers the false impression that the whisky is Scottish. However, the applicant, Glenora, argues that Breton alludes to the fact that the distillery is located in Cape Breton, and the Glen element identifies the fact that it is in a valley, and that water from the Glenora Falls in used. Moreover, it uses a Canadian maple leaf on its bottle. The Canadian Trade-Marks Opposition Board found that the term 'glen' was used by other Canadian producers, and would not lead consumers to believe the goods came from Scotland.

Left: Glen Breton (artwork by Aaron Bihari)

The IPKat understands that Glenora has credible reasons for selecting the elements of its mark but, at the same time, it does sound rather Scottish.

Wednesday, 24 January 2007

Two from the Court of Appeal; Three from Chanel

Knives out for hindsight

In Ferag AG v Muller Martini Ltd [2007] EWCA Civ 15, here on BAILII, the Court of Appeal for England and Wales gave its ruling yesterday on a tricky question relating to hindsight when viewing the prior art. This was an appeal by Ferag against a ruling (see earlier IPKat post here) that its patent was not valid, being obvious, and was not therefore infringed by Muller's Newstrim machine. Muller cross-appealed against the finding that the patent was not also anticipated by prior art.

Claim one was for a method of cutting or trimming continuously conveyed, multilayered printed products in a continuous process in which at least one first knife part was jointly associated with a printed product and at least one first knife part and the printed product were moved at substantially the same velocity, being engaged with one another along at least one cutting edge, with the inventive result that the first knife part and the associated product were moved past a second fixed knife part to be brought into cutting engagement so that the printed product was at least cut along an intended cutting edge. At trial, Mr Justice Lewison held that the word "associated" in claim one required a physical association between the knife part and the printed product, that the association had to last longer than the mere moment of cutting; the essential difference between Ferag's invention and the Newstrim was that the counterknife in Muller's machine did not travel with the printed product but was conveyed by a separate clamp. This invention, he held, was new but nonetheless invalid for obviousness. On appeal, Ferag submitted that no actual physical contact between the knife part and the print product was required by claim one: all that was required was that the first knife be allocated to a particular product as being one of the knife parts destined to cut it.

The Court of Appeal (Lords Justices Mummery, Tuckey and Jacob) allowed Ferag's appeal. In their view

* The 'association' between the first knife and a printed product in claim one was that, during the cutting process, a knife part that was to cut a printed product was allocated to the product and the association had to continue until after the cut. There had to be a period during which the first knife part and the printed product moved at substantially the same velocity and engaged with one another along at least one cutting edge - but that was exactly what the Newstrim did before the moment of cutting. Newstrim accordingly infringed claim one.

* Lewison J was correct to say that Ferag's invention had not been anticipated by the prior art, but he still failed to appreciate that there were more differences between claim one and the prior art than he had spotted. The prior art disclosed a single-knife system rather a two-knife system, and it produced U-shaped trimmings that at best would be a nuisance to get rid of. Unlike Ferag's invention, the prior art did not address the problem of keeping the trimmer up with the speed of delivery from the printer and binder. It was thus unlikely to interest a skilled man concerned with high speed trimming.

* This being so, the person skilled in the art would need a lot of hindsight to start from the prior art and make such variations as would bring it within claim one.
The IPKat (who thought the trial judge's reasoning pretty convincing when he first read it) has vague misgivings about cases like this. The degree of hindsight that is needed is inevitably a matter of evidence rather than law, and it cannot be said with firm conviction that anyone looking at the prior art would (or would not) have drawn a conclusion as to its utility that would have given him the information he needed in order to make the invention covered by a subsequent patent. Can it be said that Lewison J's original finding was so untenable that no reasonable judge could have reached it? Merpel says, but isn't the whole of IP law a set of hindsight responses?

Getting to the Point

A second Court of Appeal ruling posted on BAILII yesterday is Point Solutions Ltd v Focus Solutions Ltd and another [2007] EWCA Civ 14, where a completely different panel of judges (Chadwick, Hallett LJJ and Lindsay J) dismissed Point's appeal against the decision of the trial judge (Judge Frances Kirkham) that it had failed to prove, on the balance of probabilities, that all of the individual literary works comprising its software product had been created without copying or adaptation from any corresponding part of the Focus's product.

The background to the Court of Appeal decision is as follows. Point carried on business as a provider of computer software for the creation and use of electronic application forms in the financial services sector, in which Focus was the dominant software supplier. Under an outsourcing agreement Point took on work for Focus and had access to some of its software products. After termination of this arrangement, Focus asked Point to confirm that it had not used any Focus software in developing its own products. Point denied any copying and offered to make voluntary disclosure to a mutually agreed independent expert, at Focus's expense. Although the parties took steps towards doing this, Point decided that Focus had been procrastinating and went to court, seeking a declaration of non-infringement. Focus was unhappy about this, saying that it had insufficient evidence from which to conclude that Focus's software infringed or not.

The parties having agreed to go to trial without any expert evidence, the judge held that Point had failed to discharge the burden of showing on the balance of probabilities that its software was of independent design. Point appealed.

The Court of Appeal, dismissing Point's appeal, said as follows:
* Judge Kirkham was entitled to take the view, for the reasons she gave, that she should treat the evidence of Point's two main witnesses with caution since she could not be confident that they had presented a full and accurate picture. She was also entitled to conclude that Point had not proved on the balance of probabilities that all its software, whether written by Point or by sub-contractors, was created without copying or adapting any corresponding part of Focus's product.

* Point had not identified all those who had worked on the software and had not called them to give evidence. Nor was there any evidence from some of the people involved in the development of its product. While there was evidence that the contribution of those sub-contractors was substantial, no evidence was offered as to their access to Focus's software.

* By agreement between the parties, there had been no evidence to assist the judge to decide whether the software was written in different languages which would make it difficult or pointless to attempt copying or whether knowledge of the structure of Focus's product could or would be of use as a springboard in the development of P's products.
The IPKat, who is very interested in the availability of declaratory relief for non-infringement (see post here), notes how important it is to sort out the evidential issues before even considering seeking declaratory relief. There is no general presumption of non-infringement that Point can rely on. Merpel adds, with improved hindsight, this is the sort of horrid little dispute that can be eliminated by making specific provision for it in the outsourcing agreement.

Onion smells new Chanel ploy

On of the IPKat's favourite fun-reads, satirical site The Onion, has just conjured up another brand-related spoof. It reads, in relevant part:
"Fashion house and perfumer Chanel, famed for its iconic, $300-an-ounce No. 5 scent, announced that it has created a cost-efficient fragrance for the Third World, one specifically designed for the rigors of dry, dusty, less glamorous environments in the Southern Hemisphere.

"Smelling positively bewitching should be the right of everyone, not just a privileged few", said Chanel CEO Maureen Chiquet at the gala launch for the new scent, Chanel 3rd, in Paris' Centre Georges Pompidou Monday. "It is our hope and belief that this new fragrance will bring much-needed panache to the Third World."

Chiquet said 3rd marks Chanel's first-ever attempt to appeal to a low- or no-income consumer market, and is part of the fashion world's desire to "give something back" to developing countries that have offered much in the way of photo-shoot locales and labor outsourcing. After six years of trial and error, Chanel's 17-member development team was able to bring the perfume's cost down to a more affordable $100-an-ounce. [...]

As for 3rd's scent, Chanel wanted something "clean, youthful, and beguiling," said Chanel chemist Robert Geneau, adding that organically musky, smoky, and earthy tones had been rejected because the scent's intended users most likely had too much musk, earth, and smoke in their lives already. "3rd has a bright, grassy base, like a fresh breeze after a rain—a very exotic scent for our target customer. There are also notes of cocoa, citrus, spices, and other things our customer sometimes raises and harvests for foreign export, but rarely gets to savor herself. Captivating, and for a fraction of the cost of high-end scents available in the West, 3rd is just the economic miracle developing nations need.

The genius of 3rd, Chiquet said, is how "it can go from hut to field to fire circle without losing its potency or charm.[...]".
The IPKat greatly appreciates the way that pieces such as this can focus on the sometimes quite absurd pretensions of brand-oriented consumption. Merpel says, are you sure you'd be chuckling so much if it was your brand?

When is a drink herbal?

When is a drink herbal?

On Monday Mr Justice Warren, of the Chancery Division (England and Wales) heard an appeal against the Trade Mark Registry in Sunrider Corporation (trading as Sunrider International) v VITASOY International Holdings Ltd. This decision is not yet on BAILII: the IPKat found it in a none-too-clearly note on the LexisNexis subscription-only service.

Sunrider owned the trade mark for the word VITALITE, registered for various things including herbal and nutritional supplements and foods. Vitasoy, a Hong Kong company, promoted its VITASOY line of nutritional soybean drink and VITA dairy milk products, juice drinks, teas carbonated drinks and bottled water, for which it held registered trade marks. Vitasoy sought cancellation of Suinrider's mark under section 5(2)(b) of the Trade Marks Act 1994, maintaining that VITALITE was similar to its own marks and was registered for goods that were identical or similar to Vitasoy's goods, there being a resultant likelihood of confusion.

The hearing officer took the view that there was no risk of confusion between the VITALITE and VITASOY marks, but that the use of VITALITE for all class 32 goods was likely to cause confusion with VITA. He considered that, while Sunrider's goods were described as 'herbal drinks' they were not herbal per se, being a beverage that had herbs as a minor ingredient. This being so, they were potentially similar goods to those for which Vitasoy had an earlier registration.

On appeal Warren J, allowing the appeal in part, held as follows:

* 'Herbal drinks' within Sunrider's class 32 specification were not similar goods to those within the VITA class 32 specification. A beverage that was identified primarily as a carbonated and non-alcoholic drink made from or including sugar cane, guava and mango did not become a 'herbal drink' by having a herb added as a minor ingredient. This being so, Sunrider's herbal drink was self-evidently different in nature from Vitasoy's VITA drink.

* It was none too likely that the two drinks would be in competition, since the one was not an alternative to the other. While they might well be considered complementary products, the differences outweighed the similarities.

* There was no reason to upset the hearing officer's conclusion as to similarity of the marks and likelihood of confusion. Accordingly the decision made perfectly good sense and was unimpeachable.
The IPKat hopes he's got this right. Merpel says, it's cases like this that make IP law so interesting. Who else gets so excited about what constitutes a herbal drink?

Herbal recipes here
Become a medical herbalist here

Tuesday, 23 January 2007

Patentophile polyglot wanted

Patentophile polyglot wanted

The Opinion of Advocate-General Ruiz-Jarabo Colomer in the Portuguese patent-term reference for a preliminary ruling in Case C-431/05 Merck Genéricos Produtos Farmacêuticos has now been posted on the Curia website, in seven of the 20-something European Union official languages but ONCE AGAIN NOT IN ENGLISH, rages the IPKat on behalf of all those good people in the world who either speak English as a first language or cope with it as their least inconvenient working language. Sadly the IPKat has no idea what this dispute is about, but he can reliably inform you that the European Court of Justice has been advised that

"L’article 33 de l’accord ADPIC est dépourvu d’effet direct et il ne peut donc pas être invoqué devant les juridictions nationales à l’encontre d’autres particuliers, dans la mesure où il est subordonné à une intervention régulatrice ultérieure du législateur national en vue de fixer la durée exacte de la protection accordée aux brevets".
Or to put it another way, following a Babelfish and a brush-up:
"Article 33 of the TRIPs Agreement is deprived of direct effect and cannot thus be invoked before the national jurisdictions against other private individuals, insofar as it is subordinated to a later regulating intervention of the national legislature with a view to establishing the exact duration of the protection granted to the patents".
If there's anything there that we ought to know about this Opinion, can some patent-loving polyglot come to our rescue?

Do non-traditional marks need non-traditional measures?

Do non-traditional marks need non-traditional measures?

Right: a hologram as art, from

The IPKat's friend, IP practitioner, litigant and provocateur Dr Ralf Sieckmann (Cohausz Dawidowicz Hannig & Sozien, Düsseldorf) writes to tell him the following:

"The 2007 update version of global Non-Traditional Trade Marks Archives (Holograms, Colours, Sounds, Motion) is now available as PDFs for downloading at my account at

Just use this hyperlink to have a look at it".
This is all good news and the IPKat welcomes it. Merpel however says that this is not enough. Now that Dr Sieckmann has done so much diligent work in identifying the marks in question, what we need is a wiki that enables interested parties to update and add links to the PDFs, such as office and judicial decisions, articles and other relevant documents.

Left: a hologram maker

Take holograms, for example. What we have here is currently 25 pages in 2-dimensional format; if we could only link this data to (i) files that show how the holograms 'move', (ii) case law and office rulings, (iii) other related marks filed by the same applicant, and so on, the file would really come to life. This is too much work for any individual, but "many hands make light work". So Merpel wonders, would anyone be willing to help, just as an experiment with holograms first, to build on the functionality of Dr Sieckmann's work by seeing if it could be wiki'd?

Right: a striking hologram from

Wikipedia on holography here
Security holograms here
How to make holograms here
Make holograms at home here
Buy your pink iridescent hologram cowgirl hat here

Monday, 22 January 2007


The IPKat has come across Mrs Hearing Officer Ashworth’s decision in MUSLIMHERITAGE.COM.

The sign was applied for in respect of a website in Class 41 on the subject of Muslim Heritage.

The applicant pointed to its well-established use of the domain name, but Mrs Ashworth was unimpressed. She began by pointing out that arguably this should have been a s.3(1)(c), rather than a s.3(1)(b) objection, since the term described the contents of the website. However, this did not alter the ultimate result.

The average consumer would see the sign as leading to a website about Muslim heritage, rather than as an indication of source. The addition of the ‘.com’ would likewise be seen an internet address, rather than as converting the term into an indication of source. The fact that the applicant had organised an exhibition under the banner “1001 Inventions: Discover the Muslim Heritage of our World” was of no assistance. It was not use in relation to the applied for services, and use in a single exhibition was unlikely to lead to acquired distinctiveness.

The IPKat says this is clearly right. Adding a gTLD to a descriptive term can’t render a sign registrable. He’s appalled though to see a misplaced apostrophe in the decision, where the Hearing Officer says:

The exhibition was very specific in it’s content “1001 inventions” then “Discover the Muslim Heritage of our world".
For shame!

ECJ treats of the week

ECJ treats of the week

Right: interpreting TRIPs Article 33 - is it just a piece of cake?

Tomorrow morning Advocate General Ruiz-Jarabo Colomer treats the Grand Chamber of the ECJ to the benefit of his Opinion in a case that the IPKat didn't see coming: Case C-431/05 Merck Genéricos Produtos Farmacêuticos. This case, on a reference from what the IPKat thinks is probably Portugal since the language of the case is Portuguese, asks just two short questions:

"Does the Court of Justice of the European Communities have jurisdiction to interpret Article 33 of the TRIPs Agreement?

In the event of an affirmative answer to the first question, must national courts apply that Article, on their own initiative or at the request of a party, in proceedings pending before them?".
Article 33 of TRIPs reads as follows:
"Term of Protection

The term of protection available [for a patent] shall not end before the expiration of a period of twenty years counted from the filing date".
The IPKat's curiosity is stimulated by this. The provisions doesn't look like the sort of thing to give a judge a headache, so he suspects something sinister lurking beneath the surface. Indeed, echoes Merpel, it must be something quite Merck-y ...

Reminder: on Thursday 25 January, as previously noted on this blog (see A Tale of Three Thursdays, here), judgment is expected in Cases C-48/05 Adam Opel and C-321/03 Dyson.

International treaty latest

The IPKat has discovered that the Kingdom of Bahrain became the 136th contracting state of the Patent Cooperation Treaty (PCT) when it deposited its instrument of accession at WIPO last December. The PCT enters into force for Bahrain on 18 March 2007. On the same date, the Trademark Law Treaty will enter force there.

Right: the IPKat doesn't know if business methods are patentable in Bahrain, but the Kingdom has invented a Financial Harbour

While on the subject of trade marks, the Republic of Azerbaijan has acceded to the Madrid Protocol, which comes into effect there on 15 April 2007. The Republic of Uzbekistan is denouncing the Madrid Agreement with effect from 1 January 2008 - but don't worry, the Republic remains a member of the Madrid Protocol.

Left: This fine picture turned up when the IPKat conducted a Google search using the terms 'Uzbek' and 'horse'.

Recently the IPKat listed a load of international IP treaties and agreements that the Republic of Montenegro was carrying on with as part of its post-independence legal inheritance from Serbia. Well, one seems to have been accidentally omitted from this list: the Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms. But have no fear: Montenegro has just confirmed that that Convention too remains in force.

Sunday, 21 January 2007

Some Dates for the Diary: EUPACO; Patenting Lives Workshop; SLSA

The European Patent Conference (EUPACO) will be held in Brussels this week, Wednesday 24 January (programme). The Conference is free and open to all, but registration is advised. Speakers from the US and across Europe, including the IPKat's own Johanna Gibson, will present current research, policy, and proposals for reform of the EU patent system.

The Foundation for a Free Information Infrastructure (FFII), which launched the EUPACO, is a not-for-profit civil society organisation concerned particularly with information technology and market competition in this sector. Although FFII is particularly with the impact of patent frameworks on software development, the EUPACO will be examining patent frameworks in diverse fields of technology, with a view to comprehensive debate on future patent policy in Europe.

(Right: Not one of IPKat's favourites)


patentingLIVES. The second free public workshop in the Patenting Lives series will be held in London, 12 February 2007.

The workshop will deal with the potential overlap of protection for signs as both trade marks and designs (although the IPKat is more concerned with the overlap at right). This issue is particularly important because designs give broader protection, while trade marks are potentially protected indefinitely. Therefore, the overlap in rights has generated much concern.

The issue will be addressed by a distinguished panel:

The discussion will be chaired by Simon Malynicz, Intellectual Property Barrister, Hogarth Chambers.

The workshop will be held at 6pm in the Intellectual Property Seminar Room, Charterhouse Square (#1 on the map), and will be followed by drinks.

The workshop is free but numbers are limited, so please register by email to Johanna Gibson. More details will be available soon on Patenting Lives.

The Socio-Legal Studies Association (SLSA) Conference will be held this year at the University of Kent. SLSA 2007 will bring together socio-legal researchers in a range of areas, including medical law. Rena Gertz, a research fellow at the University of Edinburgh has been in touch with the IPKat to let him know that she will be accepting papers for consideration for the medical law stream until 28 February 2007.

The medical law stream invites papers from academics and professionals - with expertise in law, social sciences and other relevant disciplines - on any aspect of medical law and ethics, including but not restricted to issues arising from the interface between criminal law and medical law, issues surrounding genetics and genomics, beginning and end of life and bodies as property. Rena asks that abstracts be sent as a Word attachment directly to both of the following email addresses by 28 February 2007: and

Further news from UNCITRAL

Further news from UNCITRAL

After Thursday's UNCITRAL Colloquium discussions (see the IPKat's note here) it became quite apparent that there were many IP practitioners in attendance who had misgivings about the impact of the draft Legislative Guide on Secured Transactions upon IP rights. After that day's discussions a group of interested attendees got together to focus closely on the issues in terms of chapter-and-verse and to demonstrate why indeed the draft Guide - which is on the whole a remarkable achievement in itself - raises so many anxieties within the IP community. This group has now drafted the following text:


The following lists certain issues raised by IP professionals regarding areas in the draft UNCITRAL Legislative Guide that should be considered for IP. This list is not exhaustive but merely illustrative of areas in the draft Guide that need clarification for IP assets.

1. Article 3(a) &(d) (and implementing provisions): Clarify that standard IP assignments and licenses are not "retention of title" devices that become "security rights" (absent express intent). E.g. any license of IP, or a copyright assignment with right to cancel for nonpayment of royalties, is not per se a "security right."

2. Article 3(p) (and implementing provisions): Clarify that IP licenses with contractual performance terms are not "receivables" and hence treated separately from normallP rules.

3. Article 3(ii) (and implementing provisions): Amend the definition of "intellectual property right" to be consistent with established IP treaties and laws, e.g. TRIPS. Such definition should extend to assignments, exclusive licenses and non-exclusive licenses; it should also include IP royalties, rights of remuneration and compulsory license fees to ensure that the priority systems for dealing with all types of IP interest are consistent.

4. Article 3(ww): Amend "licensee in the ordinary course" to exclude IP. This hurts IP owners and lenders since (a) the licensees will get apparently valid licenses even if this contravenes prior secured rights of the lender; and (b) as a result lenders may be discouraged from lending to IP owners because they may use this loophole to make improvident licenses.

5. Future assignments: Recommendation 22(a) allowing omnibus future assignments should be clarified that such assignments are subject to standard owner protections in IP law.

6. Anti-assignment provisions: Recommendations 23(a) and 24(a) are hard to interpret in the context of standard IP practices. Recommendation 23(a) should be reconsidered in light of contrary policies for IP. (Recommendation 6 is not sufficient for this purpose). Recommendation 24(a) should be clarified that an authorized assignment of royalties does not ipso facto transfer IP rights.

7. Sections VI & VII: Due to the practical issues of searching and priority, both security rights and ownership transfers of IP should be filed in specific IP filing systems where they exist (e.g. Patent Law Treaty, CTM regulation). Further study is needed on the Guide proposals as they relate to IP, along with possible piracy impacts. It also is necessary to study what benefit there is in filing security rights in systems that do not use registries (e.g., German copyright) in light of costs involved.

8. Recommendation 197: This approach is overly simplistic for intellectual property licensing structures due, for example, to numerous competing creditors in the chain of title and multiple owners in different countries, making it difficult to identify the "location" of a debtor. Utilize existing IP priority rules (which have already addressed these issues).

9. Clarify that a security right over goods that embody IP does not create a security right over the IP and vice verse (e.g. software disc).

10. Recommendation 143: Clarify that where a lender enforces its security right in goods that embody IP: lender must comply with all license terms before exhaustion; after exhaustion, lender may dispose of goods but only to the extent of the rights exhausted. Clarify that the Guide expressly takes no position on international exhaustion.
The IPKat is pleased that UNCITRAL remains open to further comments and suggestions and hopes that the serious and responsibly-articulated concerns of IP creators, owners and licensees will be taken fully into account. Meanwhile, if any reader has any further points that they should like to add to this list, or requires any clarification as to their significance, they should contact Lorin Brennan or Ben Goodger and let them know.

Helpful note on gaining access to UNCITRAL documents here

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