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).

Friday, 30 March 2007

Friday flagrancies

Don't forget to give your responses to the INTA/Managing Intellectual Property trade mark poll. It might be absolutely harmless and entirely non-binding, but at least your opinion might cancel out the opinions of someone you disagree with ... and don't forget, MIP is publishing the results at the INTA Meeting in Chicago this April/May.

Talking of polls, it takes guts to expose your own business to the criticism of your clients - which is what corporate investigation outfit and counterfeit-hunters Carratu International has done. The survey responses (left) show that their clients rate them between outstanding (that's 54% of the turn-out), down to poor (3%) and very poor (1%). The IPKat notes that, with the company donating 50 pence to charity for every reply, the 671 respondents cost Carratu £335.50p. Merpel says, I hope they're remembering to use Gift Aid.

"Bridgeman versus Corel: Copyrighted Creativity or Commerce?" is the title of a conference held by Queen Mary, University of London, in conjunction with the Bridgeman Institute. The date is 3 May 2007. The programme is here. It's good value for money at just £50, inclusive of lunch. Don't miss it.

Quite out of the blue, the IPKat received an email from a German enterprise, Brandstock, claiming to offer the best way of finding out how much your professional IP fees are likely to be. Says the email:

"... the program is ... the best way for IP managers to get in touch with the world of IP service providers.

It also works the other way. To date, more than 1500 of these providers have registered with IP-CostCalculator's listing of associates, so as to get access to Brandstock's world-best IP customer base ...".
The IPKat is always suspicious of people who offer him benefits at no apparent cost, so he wonders if any of his readers have experiences of Brandstock that they would like him to publish on this weblog. If so, please send your comments here. To use the cost calculator, or to be added to the database, click here.

World Intellectual Property Day - NODUS

Freeth Cartwright, a firm of solicitors based in Nottingham (East Midlands, England), is getting quite excited about World Intellectual Property Day. A notice on its IMPACT IP weblog states, in relevant part:

"If you are an IP or IT law professional based in the East Midlands make sure you are free on the afternoon of 26 April 2007. If you think that date rings a bell, it should - it's World Intellectual Property Day. We're using that day to launch NODUS, a forum for East Midlands IP and IT professionals.

NODUS means "bond" and that's exactly what we want people to do at NODUS events. The idea behind the branding is that NODUS can run independently of any one law firm. NODUS is intended to bring IP and IT professionals in our region together and by doing so give us a louder voice about the issues that concern us. We will be arranging for fellow professionals to speak on a variety of IP and IT law subjects, possibly arrange sector specific training sessions where there is demand and publishing articles on a NODUS blog. The driving force of these events is, however, to raise the profile of East Midlands IP and IT professionals.

Whilst the IP & Technology team at Freeth Cartwright is setting up NODUS, make no mistake this is a collaborative forum. We need you to make it work and our aim is to see East Midlands IP and IT professionals from other firms involved in the running of the forum. It's in all our interests to promote our particular areas of expertise to a wider audience and together we present a much stronger offering.

We have in mind 4 NODUS events per year, but who knows, if this takes off we could arrange training sessions and focus groups on topics relevant to our area of law. We have lots of exciting ideas about the progression of NODUS, but now the donkey work has been done, we want to hear what you think.

At the inaugural event, Andrew Mills of Freeth Cartwright will be giving a brief talk about our ideas for NODUS and we are also going to have Andrew Mainz of Forensic Accounting LLP giving an interesting, enlightening and amusing talk about damages from a forensic accountant's perspective.

Most important of all, there's going to be time to talk to each other, have a drink and nibble on a twiglet or two.

We will be posting details of how to book your place in the next week, we hope you will join us and help us to take this project forward".
If you'd like to attend, contact the organisers here. The IPKat calls upon all IP enthusiasts in the region to turn up in force. Whether your interest is in patents, copyright, trade marks or merely twiglets, your support can help change the IP profile of the East Midlands forever. Merpel says, don't forget to check for existing Community and UK trade mark registrations and applications for NODUS ...

Famous local intellectual property here, here, here and here

No rabbits, promises McCreevy

The IPKat's friend Stephanie Bodoni tells him that European Union Internal Commissioner Charlie McCreevy has been speaking out again on unifying Europe's fragmented patent system. Speaking at a conference in Berlin yesterday, he says the "time has now come" to make it easier for companies to defend their intellectual property rights in Europe.

Right: something the Commissioner will NOT be doing next week

The European Commission is now expected to publish its proposals by 4 April at the latest. Said McCreevy:

"When I took over as commissioner, I promised to make one attempt at the Community patent. That time has now come".
Disappointing the IPKat, who loves party tricks, the Commissioner contained:

"I will not be pulling a rabbit out of a hat next week, but I will be putting forward some constructive suggestions on the way forward".
The Commission is known to favour the creation of a European patent judiciary whose decisions would be subject to rulings of the European Court of Justice.

Left: Apart from European patent unification, Commissioner McCreecy has other pet projects

The IPKat says, let's wait and see if something workable is proposed before we howl it down. Merpel says, I may be imagining things but I have this feline feeling that the ECJ doesn't really have a great deal of experience dealing with patent law. Why not appeal to a panel of London black taxi-drivers? They know the answers to everything.

Some rabbit patents: inflatable Easter Bunny; Bunny baking pan; device for teaching children to make bunny ears when learning to tie shoe-laces; kit for supplying food to the Easter bunny

4 April update: The Commission have now issued a press release, setting out their "vision for improving [the] patent system in Europe". No rabbits, unfortunately.

Thursday, 29 March 2007

Big Brother

Another IP dispute from the US Presidential primaries, reported by ComputerWorld. The dispute surrounds a YouTube clip which shows Hilary Clinton as Big Brother and is based on a previous Apple advert, which showed Apple smashing IBM’s totalitarian Big Brother. The owner of the copyright in George Orwell’s novel Big Brother is making angry noises saying:

"We recognize the legal issues inherent under the First Amendment and the copyright law as to political expression of opinion, but we want the world at large to know that we take our copyright ownership of one of the world's great novels very seriously."
The Apple advert was only shown once during the 1984 Super Bowl. Likewise, CBS and Viacom settled a case concerning the television show Big Brother.

The IPKat notes that, although George Orwell coined the term Big Brother and put the concept down on paper, it has entered the language and culture so thoroughly that perhaps it should be treated as the copyright version of a generic term.

Get your hands off Earth, says Mars; Paris Hilton in Dwarf Cat Storm

All the way from New Zealand comes this delicious news item from Stuff, via Rachel Dawson of IPONZ. In short, food giant Cadbury has been told it does not own "Earth", and cannot claim it just to defend it against a takeover from Mars. Says the news item (in relevant part):

"It may not be the war of the worlds, but confectionery makers Cadbury and Effem Foods, which makes Mars bars, have once again tried to take a bite out of each other's trademark intentions.

The pair have previously tangled over who gets to use the colour purple and Effem has now successfully challenged a decision that would have allowed Cadbury to register "Earth" as a trademark. High Court judge Forrie Miller ... said that to secure the trademark Cadbury needed to show it intended to use it. Usually just applying for the trademark showed that intention, but in Cadbury's case, its own evidence displaced the intention by saying it was a purely defensive move.

The judge said Cadbury's application should have been rejected, and he allowed Effem's appeal. However, he upheld the decision that Effem had not established a use, for trademark purposes, of Earth in an Mars bar advertisement".
The IPKat observes that use by Cadbury's of the word 'Earth' as part of MOTHER EARTH didn't count as evidence of intention to use EARTH as an independent trade mark. For a contrasting European view (admittedly on a different issue under different law) see the ruling of the European Court of Justice in Case C-353/03 Société des produits Nestlé SA v Mars UK Ltd (use of HAVE A BREAK ... HAVE A KIT KAT can count towards acquired distinctiveness of HAVE A BREAK by itself), noted briefly here by the IPKat.

Merpel says, I was intrigued by the judge's forename (Forrie), so I thought I'd search for it on Google. And this (left) is what I found!

Cadbury's and Mother Earth here
Cadbury's attacked by Friends of the Earth here
How close can MARS get to EARTH? Find out here
Ziggy Stardust and the Spiders from Mars here; the Man Who Fell to Earth here

While perusing Stuff (see above), the IPKat found this horror-story about the overexposed socialite Paris Hilton getting into trouble for buying a dwarf cat. According to the article
"Although Paris, 26, is delighted with her new pet, she has been slammed for purchasing the unusual cat because the specialist breed has numerous health problems. The cats are said not to be able to function like normal sized felines, and cannot jump properly because their bow legs are too short. They can also break the bones in their limbs when landing because their legs aren't long enough to absorb the shock".

Above, right: "Vengeance is mine" - a giant cat stalks Ms Hilton

This goes to show, the IPKat says, that measures such as the banning the patenting of pointless and morally dubious inventions are never going to be adequate to stop the expenditure of time, money and technique in creating them. He expects that, now the poor beast has become a fashion accessory, dwarf cats will be coming off the production line pretty quickly to keep up with demand. Merpel adds, it's strange that plant breeders' rights have been around for so long now, but no-one seems to be lobbying for animal breeders' rights. Does that mean that the patent system and trade secrecy are sufficient between them, or have I missed something?

Paris Hilton, without any clothes on, here

Ahead, but carefully; Syria prepares for invasion of GIs ...

"Ahead, but carefully" is the theme of a notice received by the IPKat from his Italian cousins, gatti Stefano Sandri and Lorenzo Litta from the Catch Us If You Can!!! IP weblog. Say the Italians:

"Sponsored by OHIM and CSM (Consiglio Superiore della Magistratura: the Superior Judicial Council), in collaboration with UIBM (Ufficio Italiano Marchi e Brevetti - the Italian Trade Mark and Patent Office), the judges of the Italians Community’s Courts met in Venice on 21-22 March 2007 to discuss Community Trade Marks and Designs.

In spite of some communication and logistic problems in planning the seminar, the venue raised great interest on the part of the judges who gathered from the four corner of Italy. More than 50 judges, representing the 12 Community Courts set up under the name Sezioni Specializzate, attended the seminar which was devoted the first day to an illustration of OHIM’s experience of the CTM and CD systems. On the next day, after a report on non-conventional trade marks and the presentation of the TADOR website, six judges were involved in discussing the cases submitted to their court and other six were engaged in a mock trial prepared by OHIM. The seminar was directed by
Stefano Sandri, Special Adviser to OHIM, and Marina Tavassi, Court of Cassation. All the reports delivered at the conference are available on the OHIM website. From the debate it was apparent that the Community Courts are in Italy progressively moving towards Community trade ark and design law. At present there are not so many pending cases and more attention is given to procedural aspects than to the substantive law. The impact of the harmonisation process, however, is clearly under review and the seminar met the expectations of those who attended that they would receive useful information and updating on industrial property law in Europe".
The IPKat is delighted to see how seriously the Italians are addressing the need to train IP judges and, as importantly, to give them a chance to share one another's experiences. Judicial competence and consistency doesn't grow on trees - it has to be worked at - and events like this are just what's needed. Merpel adds, given the significance of Venice in the development of the printing industry and also in passing the world's first formal patent law, the venue seems highly appropriate.

Cats in Venice (illustrated, above right) here and here
Venetian patent law of 1474 here

A circular from Abu-Ghazaleh Intellectual Property (AGIP) has just informed the IPKat that the new Syrian Law No.8 on Distinctive Marks, Geographical Indications and Industrial Designs and Models will come into force 30 days after its publication in the Official Gazette. This Law, endorsed by the Syrian People’s Assembly on 6 March, was approved by President Assad on 12 March.

Left: Grape-vine carving, Bel

According to AGIP, quoting SANA as its source, the new law provides protection for collective, certification and service marks, and recognizes well-known international trade marks even if they are not registered in Syria. A 90 day period is provided for third party oppositions. Other changes include improved customs measures, a specialised court to settle IP cases and the regulation of IP agents in Syria. New office fees and increased punishments for criminal infringements are also being introduced. Implementing Regulations will be issued in the near future by the Syrian Minister of Economy and Trade.

The IPKat welcomes these developments. Syria is a signatory to ten WIPO-administered treaties, seven of these commitments having been made since June 2003. Let's hope the trend continues.

Syrian cuisine here and here

Wednesday, 28 March 2007

Superfast patent

ThomasNet reports that the USPTO has granted its first patent under the expedited review process, whereby the application in processed in 6 months, rather than the usual 24. Although this patent was granted in 6 months, the stated duration of the new process is 12 months. In order to qualify, applicants must provide more detailed information than usual to the USPTO.

The IPKat watches with interest at a time when Andrew Gowers has recommended that the UK Patent Office offer expedited services.

What about design rights?

Following the recent post about Trading Standards now being given free rein to go after criminal copyright infringers, Dids Macdonald of ACID (Anti-Copying in Design) would like to know why similar help isn't available for when design rights (whether registered or unregistered) are blatantly infringed. She says:

"Whilst ACID welcomes the latest Government order (the Criminal Justice and Public Order Act 1994 (Commencement No. 14) Order 2007, C.27 after a staggering 13 year delay to give Trading Standards "powers and duties" by including copyright infringement within their remit, interestingly, design right holders are still sidelined despite the reference to the Copyright, DESIGNS and Patents Act 1988. If it took this long (and an enormous amount of intense lobbying by groups such as the Alliance Against IP Theft) to improve the position for copyright holders - will it be another 13 years before Government decides to support innovators by including design right infringement?

What is the difference between between making it a criminal offence to make, distribute or sell such items as CD's, DVD's etc but not to make, distribute or sell knock off furniture, for example?"

To illustrate the point, the picture above shows a recent haul demonstrating blatant design right infringement of Villeroy & Boch china (very nice it is too; this Kat paid full price for some lovely cups). However, even with the recent change in the law, Trading Standards would not be able to help if the same thing occurred again. Something is clearly not quite right.

The IPKat doesn't have a simple answer to this, merely noting that the criminal measures of the CDPA (section 107 et seq) only relate to infringement of a copyright work, and that the Registered Designs Act doesn't have any criminal measures in it. However, he does suspect that the strong lobbying powers of the recording industry probably have something to do with the emphasis on copyright at the expense of designs.

Do any readers have any answers or suggestions?

Da Vinci Code newsflash

In case you missed this morning's update on the IPKat's post on Monday, the Court of Appeal for England and Wales has today dismissed the appeal of Michael Baigent and Richard Leigh against the decision of Mr Justice Peter Smith to dismiss their copyright infringement claim against Random House in the Da Vinci Code case (see earlier IPKat posts here , here , here and here). The ruling in full, leading with the judgment of Lord Justice Lloyd, is available on BAILII [2007] EWCA Civ 247.

More comment on this lengthy decision will follow. This note confines itself to citing, without further discussion, the words spoken by Lord Justice Mummery at paragraphs 131 and 132 in his concurring judgment:

"As Lord Reid observed in Ladbroke (Football) Ltd v. William Hill (Football) Ltd [1964] 1 WLR 273 at 277, you can reach a wrong result in a copyright case by dividing up the original copyright work into separate parts and then asking whether the separate parts standing on their own could be the subject of copyright. In my judgment, this criticism of the destructive dissection of the original copyright work is as valid when considering the issue of infringement as it is when considering the issue of subsistence of copyright discussed by Lord Reid in that part of his opinion.

The point is so fundamental to the proper conduct of copyright litigation that it needs to be spelt out. On the issue of subsistence it is wrong to divide up the whole copyright work into parts and to destroy the copyright in the whole work by concluding that there is no copyright in the individual segments. Similarly, on the issue of infringement, it is wrong to take the parts of the original copyright work that have been copied in the alleged infringing work, to isolate them from the whole original copyright work and then to conclude that "a substantial part" of the original copyright work has not been copied because there was no copyright in the copied parts on their own".

Boehringer bans adverts till trial; Cablevision hit by US ruling

Another little IP gem from online subscription service LexisNexis Butterworths is the Chancery Division for England and Wales decision on Monday of Mr Justice Patten in Boehringer Ingelheim Ltd v Vetplus Ltd, so far unreported on BAILII.

This was an application by Boehringer for ex parte interim injunctive relief to stop Vetplus publishing an advertisement and a press release in various journals relating to one of its products. The press release in cited Boehringer's own test results, which the company had handed over to Vetplus on the basis that they were not to be disclosed. According to Boehringer, publication would denigrate its product. In support of its application, Boehringer produced a list of test results it had carried out and other results carried out by others, all of which were designed to indicate that the test results which formed the basis for the press release were scientifically unreliable.

Patten J granted Boehringer's application on the basis that, under the circumstances, it was appropriate to ban publication until trial. The scientific evidence pointed only one way, showing that Vetplus's own scientific evidence was unreliable and wrong. Even if there was room for legitimate doubt, the status quo should be preserved, subject to Vetplus being given liberty to apply to discharge or vary the order before trial.

The IPKat is fascinated by scientific evidence: whether in the hands of lawyers or scientists it seems almost endlessly open to interpretations and methodological objections and its veracity is certainly not an ideal issue for determination in interim proceedings. Merpel adds, it's not surprising that Boehringer's evidence only supported Boehringer's case - but Boehringer would be duty-bound to disclose adverse evidence too. If it became apparent that contrary evidence existed, to Boehringer's knowledge, but was not produced at the interim stage, one imagines that the court would have something pretty pungent to say about it.

It's been too long since the IPKat's friend Miri Frankel sent him this link to the New York Times, "Cablevision Loses Suit on Network DVRs". This tells of the Federal Court ruling that Cablevision Systems Corp.'s network digital video recorder experiment was a mega-infringement of copyright law. The standard set-top digital video recorder with a built-in hard drive lets TV viewers store and replay shows when they like while skipping commercials. The network DVR would let any customer with a digital set-top box record and replay back shows in the same way, while storing the programmes in Cablevision's remote computer servers.

Several studios and cable networks sued, since they had not given their permission for the rebroadcast of the programmes. Cablevision said that, since the control of the recording and playback was in the hands of the consumer, not itself, the devices were compliant with copyright law on an application of the Sony v Universal City Studios doctrine (the Betamax case). Judge Denny Chin disagreed and this dispute is now likely to ascend the judicial ladder in the form of an appeal.

The IPKat thinks this was an accident waiting to happen. The studios are always going to sue and there must be an argument for getting them onside at the beginning of a project like network DVRs rather than making them your enemies from Day One.

Right: Catatonia caused by too much TV viewing

Merpel says, you forget that the US is a litigation-oriented culture. Suing someone in these circumstances can be seen as a prelude to a warm and loving business relationship ...

Copyright suit here
Cat suit here

Who says patents are a licence to print money?

So far the IPKat has only found a note on European Central Bank v Document Security Systems Inc [2007] EWHC 600 (Ch) on LexisNexis Butterworth's subscription-only service. It's a Patents Court decision from Mr Justice Kitchin and Monday's ruling goes like this:

Right: the European Central Bank

DSS owned a European patent for a method of making a document incapable of replication by a scanning type copying device. The patent was particularly relevant for security documents like banknotes and travellers' cheques. Claim 1 of the patent provided for

"a method of making a document that is not faithfully replicable by scanning-type copying devices, the document using a visible original image comprising art, pictures and/or image forms made of curvilinear lines, dots and/or swirls, the method comprising the steps of ... ".
Integer D 1 of this claim described the process of
"overlaying the grid pattern on the original image to produce on the document a printed image which comprises the original image having a superimposed transmitted or obstructed print pattern conforming to the grid pattern ... ".
The patent application had been filed on 16 January 1990, claiming priority from a US application. Following a long period of gestation in which various amendments were incorporated, an EPO Board of Appeal finally allowed the application in 5 February 1999. By then, claim 1 was significantly different, although the specifications of the application and the patent were framed in virtually identical terms.

DSS later sued the ECB - a European instition - for patent infringement before the Court of First Instance, alleging that Euro banknotes were made by an infringing process. While those infringement proceedings were pending, the ECB applied to revoke DSS's patent on the ground of added matter, contrary to section 72(1)(d) of the Patents Act 1977. According to the ECB, the feature described by integer D 1 of claim 1 was not disclosed in DSS's patent application. DSS argued that, while integer D 1 might not have been explicitly disclosed in the application, its disclosure was implicit if you looked at the specification of the application rather than of the granted patent.

Kitchin J revoked the patent. He held that it was settled law that matter would be found to have been wrongfully added unless it was clearly and unambiguously disclosed in the application, whether explicitly or implicitly. In this case, however, the application was not merely silent on the point that was now said to be implicit: it actually contradicted the patent by describing a method that was different from that which was now said to be implicit. This being so, the patent was invalid.

The IPKat thinks this must be right in principle, even though he's not had a chance to read the text of the decision. The notion of the constantly-evolving patent claim, honed and crafted over the years in order to incorporate art rather than stake an initial entitlement to it, is something he associates more with US submarine patents than with the European species.

Right: The IPKat, not trusting the banks, prints his own money ...

Merpel wonders why the revocation proceedings were brought in England and Wales, when presumably it was open to the ECB to attack the validity of the patent elsewhere - or are there parallel proceedings in other countries? Can anyone tell her?

European Central Bank here
Print your own money here and here

Tuesday, 27 March 2007

UKIPO + JPO = faster patents?

Following a collaboration between the Japanese and US Patent Offices, which started in July last year, the UK Intellectual Property Office will be starting a similar "Patent Prosecution Highway" pilot programme with the JPO for one year as from July 2007.

The stated aim of the project is to "improve the quality of patents and the efficiency of processing applications at both offices". Applicants who have received an examination report from either office will be able to request accelerated examination for a corresponding application at the other office, provided they submit search and examination reports. For UK applicants, this may result in grant typically two years earlier than would normally be the case.

The IPKat wonders how many applicants will actually be wanting to take part in this worthwhile project. In his limited experience, applicants tend to want to delay the expensive process of getting a Japanese patent for as long as possible, not to do both at once. We shall wait and see what happens.

Does anyone know how the USPTO/JPO project is going?

More information is available from the UKIPO, JPO and USPTO.

Trade mark poll: now's the chance

Have you ever longed for a chance to say what you really think about trade marks? Well, now's your golden opportunity. Managing Intellectual Property magazine is running a trade mark practitioners' poll here. There are 14 topics on which YOUR opinion is sought. As MIP editor James Nurton says:

"It's very simple, all automated and anonymous. We will publish the results in the INTA Daily News at INTA in Chicago and also on our website. We want to make it a truly global, comprehensive survey of what people interested in trade marks really think so anyone is welcome to fill it in".
Adds James:
"We want to make this poll the biggest-ever survey of opinions about trade marks and brands. So anyone who is interested in trade marks/trademarks/ trade-marks is invited to spend two minutes giving us their views - that includes trade mark owners, attorneys, lawyers, teachers, students, examiners, judges, cats ... "
The IPKat can't resist the opportunity to express an opinion. Even the thought that it might (temporarily) be anonymised won't deter him.

Better late than never?

Pirates beware: an obscure recently made government order (the Criminal Justice and Public Order Act 1994 (Commencement No. 14) Order 2007, C.27) will effectively finally give "local weights and measures authorities" (in the form of Trading Standards officers) the powers and duties under sections 107A and 198A of the Copyright Designs and Patents Act 1988 they have been promised ever since the Criminal Justice and Public Order Act 1994 inserted these provisions 13 years ago. The government has apparently also promised Trading Standards some money to help them get on with it.

At the moment, only the police have the power to enforce offences under the CDPA. Trading Standards will, as from 6 April 2007, also have powers to enforce copyright offences, including the power to make test purchases and to enter premises to inspect and seize goods or documents. Obstructing them will be an offence.

Expect to see squads of suitably armed TS officers swarming around car boot sales and markets in search of bootleg videos as from next month.

Guidance on the new powers is available from the Patent Office here.

Adidas v H&M - the official questions

At last, the official English version! In a dispute that concerns all stripe-wearing kats, Case C-102/07 is a reference for a preliminary ruling from the Hoge Raad der Nederlanden in the exciting contest of Adidas AG and Adidas Benelux BV v Marca Mode, C&A Nederland, H&M Hennes & Mauritz Netherlands BV and Vendex KBB Nederland BV. The issue at the heart of this dispute is the scope of protection that Adidas is entitled to enjoy in its three-stripe motif against a trader that insists on using two stripes for what are apparently decorative purposes. The IPKat's friend Gino van Roeyen sent him a rough and ready version of the questions when the reference was made (see earlier IPKat posts here and here), but the official English version of the questions referred by the Hoge Raad is now available:

"In the determination of the extent to which protection should be given to a trade mark formed by a sign which does not in itself have any distinctive character or by a designation which corresponds to the description in Article 3(1)(c) of Directive 89/104 but which has become a trade mark through the process of becoming customary and has been registered, should account be taken of the general interest in ensuring that the availability of given signs is not unduly restricted for other traders offering the goods or services concerned (the requirement of availability)?

If the answer to Question 1 is in the affirmative: does it make any difference whether the signs which are referred to therein and which are to be held available are seen by the relevant public as being signs used to distinguish goods or merely to embellish them?

If the answer to Question 1 is in the affirmative: does it, further, make any difference whether the sign contested by the holder of a trade mark is devoid of distinctive character, within the terms of Article 3(1)(b) of Directive 89/104, or contains a designation, within the terms of Article 3(1)(c) of the Directive?".
To remind readers, Articles 3(1)(b) and (c) of Directive 89/104 say
"The following shall not be registered or if registered shall be liable to be declared invalid: [...]

(b) trade marks which are devoid of any distinctive character;

(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods".
The bit of the IPKat that is posting this blog (i.e. Jeremy) says he thinks that, if a sign - however inherently undistinctive it may be when it starts its life - has become truly distinctive for particular goods or services, there's a general interest in making sure that it jolly well ISN'T used by others if it's going to confuse the poor old consumer. But, if the consumer views a third party's use as a genuine embellishment and not as a trade mark, the trade mark owner should have nothing to complain about. The third question looks like a bit of a conceptual red herring and he hopes the ECJ will manage not to answer it.

© cricket; academic settled copyright case

Cricket on YouTube
Cricinfo reports that YouTube is in trouble with the august institution that is the International Cricket Council. The ICC has instructed YouTube to remove clips of the cricket World Cup which it claims infringes its copyright. The ICC has said that, while it wants people to enjoy the games, it has to protect the interests of those who have taken licences to broadcast the games and provide mobile content pertaining to them.

The IPKat wonders precisely what the clips are. Are people uploading segments of content already broadcast by the licensed authorities, or are we talking about spectators who have furtively recorded parts of the games on their mobile phones? If it’s the latter, the IPKat can’t see what remedy there would be in copyright law.

Joyce copyright case settled

The Belfast Telegraph reports that American academic Carol Loeb Schloss has settled her dispute with the estate of James Joyce. Professor Schloss wrote a book about Lucia Joyce, James Joyce’s daughter in 2003, but was forced to cut out some of the footnotes. Critics claimed that the book lacked evidence, and so Schloss sued the James Joyce estate for permission to publicise the material in question. Now the parties have agreed that the material can be published – but only in America. The estate had previously withheld permission in order to "protect the privacy and memory" of Joyce’s daughter. Now however the material will be published on a password protected website and in an appendix to the US edition of her book.

The IPKat says that obviously the parties can do what they want through a settlement, but he’s never comfortable with arbitrary geographical restrictions on the flow of ideas.

Monday, 26 March 2007

Singapore signs up ... for Singapore; Latest ETMR

Singapore is first off the mark to ratify its eponymous treaty - the Singapore Treaty on the Law of Trademarks - according to WIPO Press Release PR/2007/484 (emailed today and yet on its Press Room website at the time of posting this blog). another nine adherents are needed before the Treaty has legal effect. The ratification is apposite since it's virtually a year to the day since the Treaty was agreed, following a highly successful international conference. The general thrust of this Treaty is that it is intended to streamline official procedures and reduce red tape in the digital era, making it quicker, cheaper and less painful for trade mark applicants (and their representatives) to deal with officialdom.

So far, over 50 countries have signed the Treaty, but it was up to plucky Singapore to take the plunge (metaphors about 'breaking the ice' seem inappropriate in a location that is so, well, warm and moist).

Right: ABSOLUT - a trade mark that already receives the benefit of Singapore's strongly pro-IP rights stance
Full text and all other available details here

Comfortably ahead of schedule, the April 2007 issue of the Sweet & Maxwell's monthly European Trade Mark Reports has arrived. Cases reported this time round include

* The ETERNA trade mark dispute from Germany, on whether shirts bearing that trade mark and handed over to a forwarding agent in the European Union, in the false expectation that they would be exported outside the European Economic Area, have been first marketed in the European Union by the trade mark owner or with its consent;

* The recent European Court of Human Rights decision that trade mark applications are protectable possessions, in Anheuser-Busch v Portugal (noted here by the IPKat);

* Zockoll (formerly Phonenames Ltd) v Controller of Patents (Irish High Court), which raises a fascinating selection of issues concerning a franchisor's attempts to register 800 FLOWERS and 800 FLORISTS as trade marks in Ireland in the teeth of vigorous US opposition.
As usual, if you have any suggestions concerning important European trade mark cases that you'd like to see reported in the ETMR, let the IPKat know here (since two members of the IPKat blog team are responsible for the ETMR's editorial content).

Da Vinci Code judgment this week

The IPKat has learnt that the Court of Appeal's judgment in the Da Vinci Code case (Baigent & Leigh v Random House) is due out at 10am this Wednesday. The IPKat will bring you coverage ASAP.

His money is on the same result as at first instance, but hopefully with clearer reasoning and no secret code.

28 March update: the judgment has now been made available here on BAILII. More to follow.

Can you help?

Many and varied are the emails the IPKat receives - but he's never had one quite like this before. It's from a young mum who works at home, writing patents and, it seems, some pretty neat poetry too. The email reads reads:

"Dear IPKat,

You daily scan the IP world,
Instead of in your basket curled,
Looking out so far and wide
What's new, what's wrong, or should be tried.

While you tread your intrepid walk
I wonder whether you ever talk
To an IP firm that needs personnel
To write patents and write them well!

Right: this is about as close as the IPKat ever gets to being intrepid (Cat by Gary Patterson, Buffalo Games)

I am currently available to accept
A patent, or technical writing project
I like to rewrite complicated creations
Into clear instructions and explanations

I work from home because I'm a Mum
My hours are not the same as some!
Yet standards meet your top expectations
When writing claims or specifications!

Ten years experience and attention
To details in all fields of invention,
Computer savvy, patently aware
UK, PCT, US, or anywhere.

Whoever reads this IPKat feed
And has any sort of patent writing need
Please send a message to the IPKat
He'll pass it on, at the drop of a hat!"

Right: a typical working mum preparing a patent at home

Needless to say, the IPKat, quite charmed by this rhyme and delighted about the 'intrepid' bit, is more than happy to help. So, if you've looking for someone who is literate, talented and possessed of a good sense of humour to write your patents, email the IPKat here and he'll put you into contact with the mum in question.

Sunday, 25 March 2007

Latest JIPLP - and a new kid on the block

The March 2007 issue of Oxford University Press's glossy quality IP monthly Journal of Intellectual Property Law and Practice is now hitting the streets. Features include

* Roya Ghafele, who works for WIPO but speaks for herself, discusses what trade mark applicants actually say about the Madrid System and contrasts it with the official view (abstract here);

* "Patents for perpetual motion machines", a delightful, practical but whimsical view of the age-old quest to patent the impossible, in the light of some dramatic recent case law, by Chris Wadlow of the University of East Anglia (abstract here);

* Richard Howson, "Points and prizes, or how to play your cards right at the European Patent Office" - a sharp insight on how users of the EPO can use the points system for the evaluation of examiners for their own benefit (abstract here);

* The IPKat's Polish blogger-friend Tomasz Rychlicki, currently in Chicago, reviews a recent Polish Supreme Court case on how to calculate damages for trade mark infringement (abstract here).
Details of full contents of this issue here
Most popular articles in JIPLP so far here
Subscription details here
Read the editorial to this issue - and every JIPLP issue - absolutely free here

A couple of weeks ago the IPKat stumbled across the first issue of a new quarterly journal, the Bloomberg European Business Law Journal. It's a heavy read, written for serious thinkers, and the first issue carries two IP contributions:
* "Is Europe in a Mess Over Patents for Business Methods and Software?", asks Simmons & Simmons partner Jeremy Morton. This is really more of an extended editorial than a short article, taking a pretty accurate shot at a fast-moving subject - though Merpel says you can probably guess from the title what the author's conclusion is, since no-one bothers writing about subjects that aren't in a mess ...;

* "Creating Computer Games Under German Law", by academician Georgios Zagouras and Thomas Koerber,a lawyer in the Frankfurt office of international law firm Mayer Brown Rowe & Maw, an article that suggests to this reader at any rate that there is quite a good case to be argued for creating your computer games in a country that is a little less legally rigorous than Germany.
The accompanying promotional letter from Kirsten Lapham states: "We hope you come to think of it as an indispensable resource that enables you to better serve your clients and your company". No, says the IPKat, however good it is, it's never going to be indispensable if it only comes out four times a year ...

Saturday, 24 March 2007

Dach chi'n siarad Cymraeg?

If the answer to the above is 'ydw', or perhaps 'tipyn bach' (rather than 'eh?'), you may be interested to know that the new name of the place in Wales to get patents and trade marks is to be 'Swyddfa Eiddo Deallusol y Deyrnas Gyfunol (DG)'

Thanks go to Guy Selby-Lowndes for this, who also says:

"It makes sense if you remember that in Welsh the adjective follows the noun. For basic details of the language the best site is that of the North Wales Police. Click on "Recruitment" and then scroll down to "Welcome to Welsh". Many years ago I had a letter published in CIPA speculating on the acceptability of a Welsh language patent application following the passing of the Welsh Language Act 1967. There were a few humorous responses and the matter died. I tried to persuade a military friend who was Vice Chancellor of Swansea University to use one of his Welsh speaking students for the task but they were all too busy with their theses. However a mole in DG5 at the EPO told me that an ad hoc committee was set up in Munich in case a Welsh priority document was submitted.

It looks like, with the recently proposed new Rules, the long wait for Welsh patent fans may soon be over.

Friday, 23 March 2007

Friday flurry

If you were ever thinking of using the name "Lithuania", think again. According to an article for International Law Office by Inga Lukauskiene (METIDA Law Firm of Reda Zaboliene), Decision 587/2004 provides that the word 'Lithuania' may not be used in the names of legal entities in languages other than Lithuanian and that permission to use the word 'Lithuania' may be granted only to existing legal entities, except in the case of branches or representative offices of well-known foreign legal entities or legal entities using the names of well-known foreign legal entities. Everyone else, the IPKat guesses, has to use 'L********'.

Following Lithuania's lead, global burger barons McDonald's are seeking not so much to prohibit use of the word 'McJob' as to change its meaning instead. The BBC, with an assist from Simon Haslam (Abel & Imray), reports that the target of its corporate diplomatic offensive is the Oxford English Dictionary, which currently defines the word as

"An unstimulating, low-paid job with few prospects, esp. one created by the expansion of the service sector."
The fast food chain is planning a public petition to try to change the definition. The word, first used in the US in the 1980s, was popularised by Douglas Coupland's 1991 book Generation X and entered the online version of the Oxford Engish Dictionary in March 2001. Says Merpel, this must be part of an overarching plan ...

From exactly the same source comes this bit of forthcoming litigation: 1970s tartan band Bay City Rollers are suing their record company Arista (now part of Sony) before a New York court for millions of dollars in unpaid royalties. The band complains that Arista Records withheld payments from album sales, merchandise, commercials, film rights and ringtones during the last 25 years. The IPKat, who was not a fan, recalls the band's popularity during the early 1970s and wonders if their unpaid royalties add up to as much money as their detractors would pay as the price of their silence. Merpel says, no royalties to speak of for 25 years ... and they've only just noticed?

Bye Bye Baby here; Give a Little Love here; Saturday Night here

Chuffies in Court

In a decision most law students are likely to want to read, the dispute between "Pull My Finger Fred" and "Fartman" is now resolved. It certainly brings the tone of copyright discussions down a meaningful peg.

The appeal of JCW Investments Inc v Novelty Inc was decided Wednesday by the US Court of Appeals for the 7th Circuit. The original dispute was provoked by what the Plaintiff, Tekky Toys, perceived to be an alarming similarity between their star flatulist, "Pull My Finger Fred," in the product of Novelty Toys. Tekky Toys produces the charismatic "Pull My Finger Fred," while Novelty Toys produces the less subtle "high street" version, "Fartman." As Wood J stated, "Fartman could be Fred's twin."

Fred's repertoire, when one pulls his finger, includes, "Did somebody step on a duck?", "Silent but deadly", and other oldies but goodies. Fartman's slightly more limited repertoire included two of Fred's jokes.

After the success in the district court of the claims for copyright and trade mark infringement, as well as unfair competition, the 7th Circuit affirmed: "it turns out that there is a niche market for farting dolls, and it is quite lucrative," stated Wood J. Apparently Tekky Toys produces a whole line of farting dolls, "Fred was just the beginning."

One wonders if there is more litigation to come (see right).

Did somebody step on a duck?

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