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

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

Thursday, 31 May 2007

A moving experience

Today has been IPKat team member Jeremy's last day at Slaughter and May, where he has been Intellectual Property Consultant for the past 13 years. It was also the day he washed his coffee mugs. On Monday he begins his new role as Intellectual Property Consultant at Olswang. Jeremy would like to say "goodbye and thanks" to his many friends at Slaughter and May, with whom he felt privileged to work.

Right: waving bye-bye ...

Jeremy also looks forward to saying a warm "hello" to his new colleagues and friends at Olswang, who will have no idea what colour the inside of his coffee mugs was before they received their wash (or how many years it took them to get that colour, says Merpel).

On a practical note, if you are used to contacting Jeremy at Slaughter and May on a one-off basis or through email circulars, please note his new email address as from Monday -- jeremy.phillips@olswang.com -- and amend your records accordingly. His other coordinates can be found on his personal website here.

The long goodbye here
Hello goodbye here
Hello hello hello here

Wednesday, 30 May 2007

Raytheon loses patentability appeal



Recently decided by Mr Justice Kitchin at the Patents Court for England and Wales (and reported on BAILII here), Raytheon's appeal against a decision by the Comptroller General of Patents, Designs and Trade Marks (to give him his full title), refusing their patent application (GB2381614A) under section 1(2), has been unsuccessful.

The decision at the Office in February 2006 (published as BL O/047/06) had been made based on the law at the time, being a collection of recently decided High Court cases and older Court of Appeal decisions. The parties agreed in June 2006 that the appeal should not be heard until the Court of Appeal had considered the then pending Aerotel case, which then arrived at the end of October 2006.

For the appeal, the Comptroller maintained his objection that the invention related to excluded subject matter, in particular that of being a computer program as such, under section 1(2)(c), which was the basis for the Office decision. The Comptroller submitted that the appeal could also be dismissed on other grounds including a method for doing business or the presentation of information. Raytheon argued that the Comptroller was wrong in his decision, and that objections not maintained at the hearing were not open to be raised on appeal.

Kitchin J therefore had to decide whether the Comptroller was to be allowed to raise further objections, as well as whether the previous decision was correct. Objections relating to methods of doing business or presentation of information, although raised by the examiner, were not pursued during prosection of the application. Raytheon argued that the Comptroller could and should have raised all his grounds of objection at the first hearing, since they were entitled to know where they stood. In relation to this point, Kitchin J stated (at paragraphs 25-31):

"[I]f it appears to the Comptroller that he has failed to take a proper objection then I believe he has an obligation to seek to raise it on appeal consistent with his statutory duty to refuse applications which do not comply with the requirements of the Act. Similarly, the court must take into account the public interest in not allowing a defective application to proceed to grant.
[...]
I believe the statutory obligation on the Comptroller, the public interest in ensuring that defective applications do not proceed to grant, the nature of the proceedings, the nature of the new objections and the fact that Raytheon has now had ample notice of them do constitute special circumstances which justify allowing them to be taken at this stage."
He then went on to find that the application was not patentable, following the four-step test from Aerotel, and further commented (at para 34):
"In considering step iii) I would make the following preliminary observations. First, a convenient way of approaching the step is to ask whether there is any aspect of the contribution which does not fall within any of the exclusions. If there is then the invention does not relate to any excluded subject matter as such and is potentially patentable. Second, it is possible that the technical contribution does not fall wholly within any one of the exclusions but does fall wholly within two or more. [...] In such a case the contribution would still fall wholly within excluded subject matter. It would not be an invention within the meaning of Art. 52 of the EPC or s.l of the Act."
The IPKat thinks that this decision is a sensible one, and must be correct (barring an apparent slip in the paragraph above: if the contribution is technical in nature, it would presumably not be excluded). An applicant who has already had their application refused should not be allowed to get away on appeal just because a different ground for exclusion was not raised. Also, if an invention is excluded from patentability for falling within one category under section 1(2), it will still be excluded if it falls within more than one category.

Australia lowers the bar


As reported by the IPKat's friend and antipodean IP lawyer Duncan Bucknell, the Australian High Court has made the task of proving the obviousness of a patented invention more difficult. According to the Court, the previous 'threshold test' is a myth, and the merest scintilla of invention is all that is required to establish an inventive step sufficient to get and keep an Australian patent. The Court also compares the standard European problem-solution approach and takes the view that, while this may be useful, it is not determinative of obviousness under Australian law.

Right: If an Australian were to invent an animal, they couldn't get much less obvious than this.

For more information on the case, the IPKat recommends his readers to Duncan's site.

More Australian inventions here, here and here.

SA trade mark case is eerily familiar (sort of)

The IPKat is grateful to Professor Roshana Kelbrick of UNISA for tipping him off about a recent trade mark decision of the South African Supreme Court of Appeal. The key issues: the need for trade mark use and dilution will provoke a strange feeling of déjà vu among European readers (as in fact with the South African legislation, which is pretty similar to our own).

Also familiar is the factual background - the use of a car logo on a representation of the car, but without intention to suggest that the user is in any way responsible for the car or associated with the car maker. Here the defendant advertised car polish. In one of its adverts, a BMW car was shown being treated with the polish, the car was then set alight, but it was shown that there was no damage to the car’s paintwork. In another, an older car is shown as being treated with the polish and consequently metamorphosing into a shining BMW. In both cases, the BMW logo is clearly visible.

BMW argued identical marks/identical goods infringement (BMW holds South African registrations for car polish) and dilution. BMW failed on both counts.

Citing copiously from European and UK case law, the court required trade mark use, holding that what is needed is ‘an interpretation of the mark through the eyes of the consumers as used by the alleged infringer…[which] creates an impression of a material link between the product and the owner of the mark…use of the mark for purely descriptive purposes will not create that impression’.

Here consumers would see the logo as being part of the car, rather than being used as a trade mark. Consumers would not see it as indicating a material link between the two companies, nor would they see the logo as performing any guarantee of origin function.
[It rather amuses the IPKat that the SA court has cited most of the relevant European case law, but has come to an answer that is probably different to the position that the ECJ would take. The Kat reckons it’s a weakness in the ECJ’s jurisprudence if it is so open to interpretation].

On the dilution issue, Harms ADP said that the issue here was whether there would be unfair advantage ‘in other words, whether there is the likelihood of dilution through an unfair blurring of BMW’s logo’. However, it was said to be accepted that the defendant’s use was ‘not detrimental, nor [did] it tarnish BMW’s logo’.
[The IPKat says that there’s some serious conflating of dilution/blurring and unfair advantage going on here]

The court confirmed that trade mark use is not needed under the dilution provision, since the aim of the provision is to do more than just protect the source-denoting function. However, the way in which the mark has been used may be relevant more broadly to establishing this time of infringement.
[The IPKat wonders what the position is on this under UK law. Harms ADP cited Johnstone as authority for the fact that trade mark use is required under s.10(3) in the UK, but the IPKat suspects that this was a throwaway comment by the House of Lords]

Here, although the defendant may have been taking advantage of the BMW logo, it was not doing so in a way that was unfair. The defendant’s focus was on the properties of its own goods, and it would be unreasonable to either not use any type of car, or to avoid showing the car’s logo. The judge concluded ‘…I fail to see how the use of the logo can affect the advertising value of the logo detrimentally. A mental association does not necessarily lead either to blurring or tarnishing’.
[The IPKat is happy to see the judge paying due attention to the fairness element of unfair advantage but, again, his final comments display a confusion between dilution and unfair advantage.]

Continued use of a trade mark: any ideas?

One of the IPKat's friends, a practitioner in a distant jurisdiction where there is relatively little reported case law, has emailed him with this query:

"Our client, a global player in the broadcasting sector, has a national trade mark which is being challenged by a local company that seeks revocation for non-use. The client does indeed appear to have ceased direct use of its mark in this country for more than five years, so it may be subject to such action. However, its TV programmes and channels may quite easily be viewed in this country either via TV or online, by those who have satellite connections or who use the internet. Neither statute law nor case law to date has given any guidance as to whether the continued availability of our client's broadcasting services constitutes continued use. ...

In my opinion, as broadcasting is a borderless service, the understanding of what constitutes use should be viewed in a fairly broad manner".

The gallant Kat has already mentioned a case or two to his friend, but he thought he'd give his readers a chance to express their thoughts on the subject. If replying by email, please tell the IPKat if you'd like your ideas to be published later on this blog or whether they are only intended to be forwarded to his friend.

Tuesday, 29 May 2007

Now Americans can stop w(h)ining


The IPKat must have been sleeping on the job. Kitaspsun reports that last week Napa Valley Vintners, which represents the wine makers of California’s Napa Valley, was awarded EU geographical indication status. The move is particularly significant because this is the first European geographical indication to be granted to an undertaking situated outside the EU. Formerly, European GIs were only granted to undertakings situated in the EU, but the EU was forced to change this following an adverse WTO decision. The vintners are happy that they will now be able to take action against Clos du Napa in the United Kingdom and Varon du Napa in Spain and say that they next plan to target China.

The IPKat is generally happy at this development. If European GIs are worth protecting then there can be no principled reason why extra-European GIs should not benefit from similar protection. He wonders though what will happen to those European who have an established usage of extra-European terms which, at the time use began, would not have infringed because the terms were not protected.

WOW, what a scorcher - record damages for record companies

The BBC has just posted news that British Phonographic Industry, which represents the interests of recording companies in the UK, has secured a whopping total of £41 million damages against CD-Wow, following proceedings in which the Hong Kong-based web retailer was found both to have infringed copyright and to have broken contractual undertakings it gave to cease infringing. The quantum works out as £37 million in damages plus interest to the British Phonographic Industry (BPI). Offhand the IPKat suspects that this may be a new British Record for Copyright Damages. Can anyone confirm?

Meanwhile the war for the hearts and minds of the British public goes on. CD-Wow vows to carry on selling cheap CDs and may appeal: "We are the little guys selling CDs to the UK market and they (the BPI) have picked on us for that reason", says its boss Henrik Wesslen. For BPI, Geoff Taylor disagrees: "CD-Wow is no consumer champion. ... The vibrancy of British music depends on a fair return on the investments that allow British talent to shine. This decision is an important step in ensuring that British music has a bright future".

With UK retail sales of £21.7 million in 2005, CD-Wow was the third largest online music retailer there after Amazon and Play. The company blamed its copyright infringements on "human error", which seems to the IPKat a curious basis upon which to champion the public's right to buy cheap recordings. Merpel is glad to see CD-Wow nailed, since it hasn't exactly done much to boost the local British economy in terms of job-creation or subsidising creativity, but she can't help thinking that British consumers wouldn't have been so keen to shop at CD-Wow if the retail price of CDs in the UK had been as cheap as it was in some other jurisdictions where the same goods were lawfully marketed, such as the US.

Earlier IPKat posts here, here and here

Calling all WIPO-watchers; Trade mark attorneys to be certified? And will TRADEMARK be registered?

If you want observer status with the World Intellectual Property Organization (WIPO), you'd better get a move on - the closing date for current requests for observer status is this Thursday, 31 May.

Right: cat enjoying observer status (via catalley.net)

Full details of observer status are available here from the WIPO website (kindly sent by the IPKat's Dutch friend Angela) which states, in relevant part:

"WIPO welcomes the inclusion of stakeholder organizations and interest groups as observers at the formal meetings of Member States. WIPO also seeks to involve NGOs, IGOs, industry groups and all other stakeholders as widely as possible in consultation processes and debates about current issues.

Some 250 organizations are currently accredited as observers at WIPO meetings. ...

Any organization wishing to apply for permanent observer status should submit a request to the WIPO Secretariat. The Secretariat then presents the request to the Assemblies of the Member States for approval. To do so, the Secretariat requires the following information from the applicant organization:

For an Intergovernmental Organization (IGO)

(i) Information on the organization’s structure and objectives,
(ii) a copy of its constituent instruments,
(iii) a list of its officers,
(iv) a list of its members,
(v) the composition of the governing body of the organization and
(vi) information on its activities and interests, particularly those related to the protection of intellectual property.

For an International or National Non-Governmental Organization (NGO)

(i) The text of its constituent instrument (articles of incorporation, bylaws, etc);
(ii) an indication of the date and place where it was established;
(iii) a list of its officers (showing their nationality in the case of an international NGO);
(iv) a complete list of its national groups or members (showing their country of origin in the case of an international NGO);
(v) a description of the composition of the members of its governing body or bodies (including geographical distribution in the case of an international NGO);
(vi) a statement of its objectives;
(vii) an indication of the field or fields of intellectual property (e.g. copyright and related rights) of interest to it.

The following principles are observed in extending invitations to national NGOs, as observers:

Below: some NGOs have been around for a long time. Do they,the IPKat wonders, address modern needs?

(a) The organization shall be essentially concerned with intellectual property matters within the competence of WIPO and shall, in the view of the Director General, be able to offer constructive, substantive contributions to the deliberations of the Assemblies of WIPO;

(b) The aims and purposes of the organization shall be in conformity with the spirit, purposes and principles of WIPO and the United Nations;

(c) The organization shall have an established headquarters. It shall have democratically adopted statutes, adopted in conformity with the legislation of the Member State from which the NGO originates. One copy of the statutes shall be submitted to WIPO;

(d) The organization shall have authority to speak for its members through its authorized representatives and in accordance with the rules governing observer status; and

(e) The admission of national NGOs to observer status shall be the subject of prior consultations between Member States and the Secretariat".

The IPKat wonders why an organization that fulfils all the other criteria "shall have an established headquarters" - would that requirement exclude, for example, the (yet-to-be-formed) Intellectual Property Blogmeisters and Wikipersons International, an organisation that - for all its deep knowledge of IP matters and genuine concern about both IP policy and legal detail - can function quite well with a headquarters in cyberspace. Merpel says, hey, this is a good idea, but you'll need a more attractive name. In any event, if you blog and/or write wikis in the IP field and are interested in setting up such an organisation, email the IPKat here and let him know.


A discreetly anonymous but sincerely concerned friend of the IPKat has asked him to draw attention to two curious trade mark applications.

Right: ITMA, which has often cherished lofty ambitions, is now keen to put them into practice

The first is an application by ITMA, the then Institute of Trade Mark Agents (now Attorneys) in the UK, to register the words TRADE MARK ATTORNEY as a certification mark in Class 42 for
professional, legal and research services relating to industrial and intellectual property; name creation services; searching services; trade mark and design filing and prosecution services; advisory and consultancy services in the field of industrial and intellectual property; maintenance and renewal services; trade mark watch services; trade mark and design services.
This application is subject to the limitations that the mark
"... shall not prevent a person who is entered on the list of professional representatives before the Office of Harmonisation in the Internal Market (OHIM) in pursuance of the Community Trade Mark from using the title "European Trade Mark Attorney".

... Nothing in these regulations shall prevent the use of the title "Trade Mark Attorney" by any person who is a registered trade mark agent".
Having heard that the application, which was published in November 2006, is opposed by the Law Society and the Chartered Institute of Patent Attorneys, the Kat is passing no comment at this stage - though as usual he welcomes his readers to do so, and suspects they will.

The second is Priams Sarl's application to register the word TRADEMARK as a Community trade mark for various goods in Classes 14 and 25 and goods in Class 36, filed earlier this month but with priority from a French filing late last year. The IPKat foresees problems getting this one to stick as a CTM, though Merpel reminds him that it may well sneak home as a national mark in any non-English-speaking country: there are many examiners in such locations who will be easily convinced that no relevant consumer will have even the faintest notion that the word is not a completely arbitrary, invented sign - like DONUT.

A plug for Tommy Tutone; Only a dope would sue ...; PIIPA seeks a new CEO

Squirrels, rather than Kats, are known for their diligent stockpiling - but on this occasion it is the IPKat himself who has been hoarding some choice delicacies for the delectation of his readers, both of which come from the ever-helpful Miri Frankel (it should be explained here that the word 'Beanstalk', which often follows her name in postings on this weblog, is neither her nickname nor a descriptive term but the name of the company for which she works).
The first item is all about US one-hit wonder Tommy Tutone, whose band popularised the telephone number 867-5309 in a 1982 hit single, in which that number was repeated extensively in its refrain (lyrics here). Gem Plumbing & Heating of Lincoln, Rhode Island, acquired trade mark rights to the number after its original owner ditched it, tired of prank callers. Gem’s number works in the 401 area code in Rhode Island and the 617 area code in southern Massachusetts. It faces direct competition from another plumbing business, Florida-based Clockwork Home Services, which uses a toll-free version of the same number in New England. A federal judge in Boston has barred Clockwork from using the number in Rhode Island and Massachusetts, but Clockwork’s lawyers said they would fight on; their take on the legal issue is that the only telephone numbers that should be registrable as trade marks are 'vanity numbers' like 1-800-FLOWERS. Tommy Tutone (real name Tommy Heath) is reported as saying that he’d prefer neither company to use the number. The IPKat isn't qualified to pass judgment on US trade marks, but he likes to believe that any sequence of numbers can be validly registered as a trade mark, so long as they can distinguish goods and/or services and the relevant consumer knows that it's a trade mark. Merpel is stressing over the problems of non-identical infringement, though. Could use of 867-5310 be stopped by the trade mark owner, or would only the right number be covered?

The second item concerns one Kenneth Affolter, who was sentenced to more than five years in prison for making pot-laced treats and soft drinks. He apparently faces legal proceedings from US confectionery giant Hershey after giving his marijuana-based products names like Stoney Rancher, Rasta Reese's and Keef Kat, each in packaging allegedly similar to Hershey's Jolly Rancher, Reese's Peanut Butter Cups and Kit Kat products. Alleging trade mark infringement, trade mark dilution and unfair competition, the company is seeking a mere $100,000 in damages. The IPKat thinks this is just a gesture - though it's one which will buy a lot of publicity for the brand. Merpel adds, I always wondered why the Rancher was so jolly.


The IPKat has recently received a circular email from Michael Gollin of Public Interest Intellectual Property Advisors Inc (a.k.a.PIIPA). It reads, in relevant part:

"... over the past five years, through the help of the IP Corps, PIIPA has provided pro bono services in response to more than 100 requests for assistance in 20 countries, making a difference in the lives of people living there. For example, we just received word from our friends at the Haitian Intellectual Property Association that as a direct result of PIIPA's support and involvement in Haiti in 2006, Haiti has officially opened its Copyright Office, which can help protect the creative works of local artists and musicians. With your help we can double the number of projects PIIPA handles over the next 18 months, and carry out PIIPA's strategic plan for expanded public interest impact.

In order to accomplish our goals, PIIPA will need financial strength, more volunteers and widespread exposure. First, we are asking every one to consider how they can help financially, either by making a financial contribution, having an employer contribute, or suggesting other donors. To see who else is supporting PIIPA, and to make a contribution, go to www.PIIPA.org and select the SUPPORT icon.

Second, PIIPA's greatest strength is its international volunteer network, which provides the ability to help developing countries enjoy the benefits and avoid the burdens of intellectual property. If you are willing to volunteer, please do so at ... http://www.piipa.org.

Third, we also need help spreading the word about PIIPA. In addition to telling colleagues and others, we need your recommendations on how to publicize and advertise PIIPA's services to reach more people in need of assistance. Specifically, we are seeking professional newsletters, bulletins, websites, etc., that would allow PIIPA to post items about the organization's services and successes. Please send your recommendations to info@piipa.org. And of course we welcome your continued volunteer involvement with PIIPA.

... As PIIPA begins the search for a new chief executive, I ask for your help in this matter as well. If you are aware of any individuals with the desire to work in the public interest, the experience required to raise funds and manage an international non-profit organization, and a zeal for PIIPA's mission, please have them use the info@piipa.org address, or contact me directly at MAGollin@venable.com".

Says the IPKat, what PIIPA does is this, according to its website:

"What can PIIPA's IP Corps do to help?

PIIPA is building a network linking people who need help with IP professionals who can represent them. This establishes a framework for action. PIIPA's global approach can be scaled up as needed and ensures that IP professional resources are the right size, available at the right time, and in the right place

PIIPA's IP Corps can take the following specific types of actions for developing country organizations:
file patent applications
file trademark application
attack and invalidate patents
attack and invalidate trademark registrations
search and analyze patent portfolios to determine freedom to operate
negotiate bioprospecting access and benefit sharing agreements
negotiate agreements providing access to medicine
counsel governments on legislative initiatives involving IP protection, e.g. genetic resources, traditional knowledge, and access to medicine
help governments and NGOs involved in treaty negotiation
litigate patent and trademark infringement and compulsory license cases".

So if you're feeling bright, enthusiastic and idealistic, PIIPA may be just the place for you. Merpel notes: this also reads a bit like the brochure of a full-service IP law firm, doesn't it?

Monday, 28 May 2007

Recent books on trade marks and TRIPs

The third edition of Jessie N. Roberts' International Trademark Classification: a Guide to the Nice Agreement has now been published by Oxford University Press. The IPKat has been giving it his usual purr-usal and he can testify that, for anyone who enjoys reading books of lists, this book is un-put-downable. The hard work has all been done by Jessie, who has the grand title of Administrator of Trademark Identification, Classification and Practice, Office of the Assistant Commissioner for Trademarks, United States Patent and Trademark Office (the acronym, ATICPOACTUSPTO, sounds like a remote volcanic resort in Central America, the IPKat thinks).

What's in this book? OUP describe it as a handy desk reference for proper classification of goods and services in trade mark applications, incorporating and highlighting recent changes under the 9th Edition of the Nice Agreement Classification, effective from 1 January 2007. The web-blurb continues

"This book explains the forty-five Classes of goods and services that were adopted under the Nice Agreement, a worldwide classification system for trademark registration that is adhered to by more than seventy countries. It sets forth the Official Text of Class Headings and the Explanatory Notes of which goods and services are included or excluded from each Class. This is followed by the Authors examination of each item within the Class, including those items for which there are no official explanations.

The Third Edition incorporates the changes brought about by the 9th Edition of the Nice Agreement Classification, which is effective as of 1 January 2007. The specific changes from the 8th edition are separately explained, so that the reader can quickly grasp what those changes are".
The IPKat, who was brought up on only 34 classes, still has to struggle with the addition of classes for service marks and the subsequent expansion of service classes from 8 to 11. Indeed, when he wakes up from his night-time nap, the first thing he has to do every morning before emerging from his basket is to remember that Class 42 is for sci-tech and related services and is not just a general miscellaneous catch-all. For this reason he paid particular attention to the bits towards the rear of this book - and he has to say he found them pretty helpful: the text is clear and focuses well upon the many grey areas in which one might regard a product or service as falling within one of two or more classes. The only criticism he has is that the index contains no entry under "cat" at all, while birds, bees, dogs, fish, horses, lobsters, mice, mussels and rats are all represented. He hopes that his representations to the author and the publisher will result in a much-needed rectification of this omission in the Fourth Edition.

Bibliographical details: Price £76.00 (paperback). ISBNs 10: 0-19-532315-7 and 13: 978-0-19-532315-3. Publication date 3 May 2007. xiii and 288 pages. Rupture factor: negligible - though the cover is very smooth and can easily slip through your paws. Curious feature: the author is Jessie in the book but Jesse on the OUP website.


While some of us have embraced it with open minds and others of us have pretended it just doesn't exist, the TRIPs Agreement continues to grow in significance as the battleground in the fight to secure a balance between the haves and the have-nots of the intellectual property world shifts from the docks and the markets where illicit goods are traded to the polished tables over which the world's diplomats exchange their views. This being so, Carlos M. Correa's Trade Related Aspects of Intellectual Property Rights: a Commentary on the TRIPs Agreement provides much valuable material to read and consider - whether you agree with it or not (the author, Director of the Centre for Interdisciplinary Studies on Industrial Property Law and Economics at the University of Buenos Aires, is a man who prefers to do his own thinking). Another Oxford University Press publication, this work offers a comprehensive and accessible analysis of TRIPs, taking in (i) examination of the rights and duties of WTO members in implementing it, (ii) a forward-looking analysis of the developments in digital copyright as well as (iii) discussion of TRIPs' crucial enforcement provisions. Adds the publisher's website:
"... This volume provides a detailed legal analysis of the provisions of the TRIPS Agreement, as well as elements to consider their economic implications in different legal and socio-economic contexts.

This book ... discusses the interpretation of the Agreement's provisions and the WTO jurisprudence already developed on certain aspects of the Agreement. It also includes a brief discussion on emerging issues such as protection of traditional knowledge, and on options for further developments e.g. copyright in a digital environment, and the relationship with competition law. It also takes into account recent developments in bilateral agreements and free trade agreements that contain TRIPS-plus standards of protection.

The Preamble and general provisions of the TRIPS Agreement are addressed, as well as the substantive rules on copyright and related rights, trademarks, geographical indications, industrial designs, patents, integrated circuits, trade secrets and test data. The controversies about the implementation and interpretation of these provisions are highlighted, including the content an implications of the Doha Declaration on the TRIPS Agreement and Public Health of November 2001, and of the WTO Decision of August 30, 2003 relating to access to medicines. ...
The IPKat is hugely relieved that the bit on designs law is quite short, since team blogger Jeremy has recently written a chapter on TRIPs and designs for a rival publication and was worried that he might have missed something. Another thing that appeals to him is the author's way of reading TRIPs in the light of the rules of interpretation in the Vienna Convention on the Law of Treaties - a provision that rarely gets a mention in intellectual property circles, at least where common law interpretational technques hold sway. Anyway, congratulations to the author on putting together a well-written and helpfully-referenced work - and to the publishers for keeping the price tag below the psychologically significant £100 mark.

Bibliographical details: price £95.00 (Hardback). ISBNs 10: 0-19-927128-3 and 3: 978-0-19-927128-3. Publication date: 29 March 2007. xxxv + 573 pages. Rupture factor: low to medium. Absolutely free download of a 53 page sample here.

Who is Audace? Teknek mystery explained

The IPKat has recently stumbled across an organisation called Audace. Billing itself as the "Pan-european association of farmers and distributors of plant health products and veterinary medicines working together against dysfunctional factors adversely affecting the market", it issued on 10 May a statement that reads as follows:

"PLANT PROTECTION PRODUCTS: PARALLEL IMPORTS AND PIRATING

In all committees and working groups competent authorities and industry consider that parallel import (PI) is the exclusive cause of frauds in plant protection products (PPP).
It is time to react to such a sophism.
First of all it is not PI which are the cause of frauds but indeed the national, and more particularly French, competent authorities’ remissness relating to the lack of implementation of an adapted regulation framing the legitimate and duly motivated repackaging of imported products sought many times by AUDACE over the past 7 years.
Secondly frauds are not the privilege of parallel import marketing authorisations (MA) such as it was again very recently highlighted in the United Kingdom by a case involving a major manufacturer whose European subsidiaries are all members of national trade associations set up by the industry under a community umbrella organisation based in Brussels ECPA.
In the same way as it would not be acceptable to consider that all the holders of MA obtained through the elaborate procedure contravene the law, nor is it acceptable to link systematically PI to a risk of fraud.
So, the national competent authorities ought to be equally committed to controlling all the products put in the market and all the marketers without distinction of MA.
It’s the same of the industry’s intense lobbying of the European parliament aiming at discrediting importers in the context of the revision of directive 91/414/CE and the numerous communications revealing alleged figures of counterfeit or illegally traded products".
Other than the fact that it functions in five official languages (English, French, German and - is this significant? - Russian and Arabic), the IPKat knows nothing of this organisation. Can any reader of this weblog please advise?


That Scottish case which the IPKat couldn't understand a word of (see post last week) - a kindly Scot from Maclay Murray Spens has come to his rescue with some words of explanation:

"... it is not really an IP case and has not been raised as an IP action. I can see how the confusion could have arisen, given that the case ultimately deals with the enforcement of a US Court judgment for patent infringement and a large damages award!

This was a purely preliminary decision on whether on the dependence/security of the Scottish action to enforce the US decision and award the US claimant (Systems Division) was entitled to arrest/freeze assets of the 2two Scottish companies who interestingly were added in to the US case after judgement had been given, on the basis that they had allegedly been set up to remove assets from the US and avoid the damages award. The two Scottish companies were challenging such allegations as well as complaining about the basis upon which the US court sought to add them in post-judgment.

The Scottish court was not looking at any aspect of IP law here but whether on the basis of Scots Law on what assets can be arrested/frozen on the dependence of the wider action, the arrestments could be maintained or not. Lady Smith did not consider that the arrestments were justified applying the relevant Scots law and so recalled the arrestments. The question of enforcing the US decision in Scotland could be more interesting and we will keep our eyes peeled for that".
Thanks, says the IPKat. Mystery solved. Merpel adds, adding extra defendants post-judgment sounds like fun. Presumably it saves time and effort and avoids those nasty irritants like defences ...

Sunday, 27 May 2007

Grüne Punkt loses appeal in logo-fixing claim

The Court of First Instance handed down its decision in Case T-151/01 Der Grüne Punkt-Duales System Deutschland GmbH v European Commission, supported by Vfw AG, Landbell AG and BellandVision GmbH on Thursday 24 May 2007.

The German government passed a law to reduce the impact of packaging waste on the environment. This law required manufacturers and distributors to take back and recover used sales packaging outside the public waste disposal system in one of two ways: (i) they could take back the used sales packaging free of charge at or near the point of sale and recover it ('self-management') or (ii) they could guarantee the regular collection of used sales packaging from the final consumer or in the vicinity of the final consumer (an 'exemption system').

Grüne Punkt was the only undertaking which operated a Germany-wide exemption system, although other undertakings did so regionally. By an agreement with contracting manufacturers and distributors it was provided that (i) those participating undertakings should affix Grüne Punkt's logo on all pieces of packaging that were notified as being capable of recovery under the system and intended for domestic consumption in Germany and (ii) a fee would be charged for all packaging bearing its logo. This fee, which served to cover the costs of collecting, sorting and recovering the packaging, was charged irrespective of whether the packaging was in fact recovered through Grüne Punkt's system, through some other exemption system or through a self-management solution.

The Commission ruled that Grüne Punkt had abused its dominant position in the market by requiring payment of a fee for the total quantity of packaging bearing its logo and put into circulation in Germany, even though there was evidence that other exemption systems or self-management solutions were used. In the Commission's opinion Grüne Punkt was exploiting its customers by (i) charging for services that were not provided and (ii) obstructing the entry on to the market of competitors, in the light of the costs related to the linked use of a system other than Grüne Punkt's. The Commission decision did not criticise the fact that Grüne Punkt's customers were required to affix its logo to each piece of packaging intended for domestic consumption, but it did object to the requirement of payment for the total quantity of packaging carrying that logo. In its view no fee could be required, despite the affixing of the Grüne Punkt logo, where the customer had shown it had fulfilled its obligations under domestic law through some other exemption system or self-management solution.

Above left: waste packaging in Europe - a major environmental issue

Grüne Punkt brought an action before the CFI to annul that decision, arguing that the decision was disproportionate in preventing it from levying a fee on each package bearing its logo. In any event, it claimed, the abuse could be remedied through the selective marking of packages to signify which exemption system or self-management solution they were intended for. The CFI dismissed the action. In its opinion

* the Commission's measures were not disproportionate. They only required Grüne Punkt not to charge a fee on the total amount of packaging marked with its logo where it was shown that some of that packaging had been taken back and recovered through another system.

* Competition between systems took place on the basis of the quantities of material to be recovered and not on the basis of predetermined quantities of packaging which fell exclusively, in particular by means of selective marking, within one or other of the systems used.

* The requirement that Grüne Punkt not charge a fee based on all packaging marked with its logo did not disproportionately impair its interests, since it was still remunerated for the service which it provided - the taking back and recovery of quantities of material entrusted to it by the manufacturers and distributors of packaging which participated in its system.

* Even if it were theoretically possible to affix the logo to packaging selectively, that solution was more expensive and difficult for manufacturers and distributors of packaging to implement than limiting Grüne Punkt's the remuneration to cover only the service actually provided by its system.

* For the Commission to accept the principle of selective marking would be akin to permitting Grüne Punkt to continue to abuse its dominant position: the costs related to selective marketing and the practical difficulties involved in its implementation were likely to dissuade Grüne Punkt customers from using any alternative system to take back and recover some or all of their packaging in Germany.
The IPKat is a little puzzled. He thought this decision must be pretty important as it deals with how traders may use their trade marks and also touches on trade mark uses that are anticompetitive. Yet it appears to have received so little attention so far. Visits to his regular web-haunts and news sources have however revealed nothing. Is he missing the point here, or is everyone else? Merpel says: I've formulated an alternative explanation. This decision was posted late and this happens to be a holiday week(end) in much of the civilised European world. Perhaps no-one has read it yet!

A second decision involving the same parties on the same day was Case T-289/01 Der Grüne Punkt-Duales System Deutschland GmbH v European Commission, also before the CFI. This case involved competition law issues only and not the exercise of Grüne Punkt's rights in its logo.

Right: waste disposal is an issue on which the IPKat and the enforcement authorities have occasionally clashed

Grüne Punkt home page here
More on the trade mark here

ZADNA in action; Latest IP&T

The IPKat's IP/IT savvy friend Daniel Greenberg (daniel@greenberg.co.za) writes:

"I wanted to bring to your attention the implementation of the ADR for .co.za domain names. The link to the administrative body ZADNA is http://www.zadna.org.za/adr/. Ironically ZADNA have not registered zadna.co.za. It is available at present but I am sure its registration has been blocked by Uniforum (http://co.za), the Registry for co.za.

The ADR is unique in that is defines "rights" and "registered rights" to include IPR, commercial, cultural, linguistic, religious and personal rights protected under SA Law, but is not limited thereto. It appears at first glance that they have incorporated constitutional elements into the ADR".
Thanks, Daniel, for keeping the IPKat informed. And well done, ZADNA (says Merpel), in coming up with such a bright, cheerful and seriously effective logo.


The May 2007 issue of the IPKat's black and shiny Intellectual Property and Technology Cases, published by LexisNexis Butterworths as a paper-based handmaiden to its electronic service, has now reached his rain-saturated letterbox. There are five cases in this issue, drawn from a wide range of topics. They include
* Northern Foods plc v DEFRA (Queen's Bench Division, England and Wales), a 2005 decision of Mr Justice Crane on an application for judicial review of the government's designation of a disputed territory as the sole zone within which pork pies might be termed "Melton Mowbray".

* Phones 4U Ltd v Phone4u.co.uk Internet Ltd, an extremely confusing Court of Appeal decision in a passing-off action that (among other things) clarified the scope of the One in a Million "instrument fraud" doctrine that has enabled trade mark owners to pounce on (mainly but by no means always) naughty aliens registering those marks as parts of domain names. The court also affirmed the limits to trade mark protection where the owner has limited its registration to a specific set of colours only.

* Nokia Corporation v InterDigital Technology Corporation, a more recent Court of Appeal decision relating to the jurisdiction of the courts to entertain an application for a declaration that certain patent licences were not essential for compliance with internationally-agreed technical standards.

Saturday, 26 May 2007

Latest ETMR; Latest ECDR; Trade mark fees - a lawyer writes

The June 2007 issue of Sweet & Maxwell's European Trade Mark Reports - published ahead of its cover date as usual - carries a fascinating selection of cases. These include

* Maynards Confectionery BV v Nestle (Irish Patents Office) - the battle between CARAMAC and CARAMBAR for the hearts and souls of the sweet-toothed Irish;

* Beckwith-Moore v Novak - the first decision from the ADR.eu Centre in the Czech Republic, concerning a bizarre attempt to unseat a domain name based on a thoroughly spurious set of earlier registered trade mark and design rights;

* Trilux Trade Mark, a ruling of the Polish Supreme Administrative Court on the interplay of trade marks and company names;

* Lavalife's application - an OHIM Board of Appeal decision concerning the punning mark WHERE SINGLES CLICK, which answers the oft-posed question "does OHIM have a sense of humour?"
As usual, if you know of any interesting European decision that you'd like to see reported in the ETMR, email the IPKat here and he'll see what he can do to bring that about.


The May 2007 issue of the same publisher's bimonthly European Copyright and Design Reports should not go unnoticed either. This issue leads with Google Inc v Copiepresse SCRL (Court of First Instance of Brussels, Belgium) on the tribulations faced by Google when caching copyright-protected newspaper contents for the benefit of the copyright owners and the convenience of web searchers. It also carries the European Court of Human Rights' split decision in Vereinigung Bildender Kunstler v Austria, on the freedom of artists (in this case Otto Muehl) to depict public figures in sexual positions.


A distinguished London-based lawyer, somewhat out of sympathy with the IPKat's rant against the siphoning-off of hard-earned trade mark applicants' money by the reluctant Office for Harmonisation in the Internal Market (see post here), has called him to say:

"Why do trade marks as an asset class deserve any different treatment to spectrum? In both cases, the state creates a monopoly right over something otherwise available to the masses (especially as the business asset with trade marks is protectable by passing off, so the registration system is a state-awarded bonus created by impinging on public freedom). Telecoms companies are used to the idea that there is a limited spectrum available and that economically efficient allocation is going to be achieved by auctioning. Gordon Brown raised billions this way. Why should trade marks expect a free ride? Recognising that auctions are unlikely to be viable where the freedom to use a mark may be affected by pre-existing rights, and where asset value is small, the alternative of a trade mark poll tax seems entirely logical. The success of the trade mark system speaks for itself; the cost does not significantly deter applicants and if anything there is a case for making the costs higher.

Or, as an alternative, the excess could be spent on improving the system. Perhaps it could be diverted into funding a no-win, no-fee system for trade mark cancellation for dodgy marks. That would effectively privatise the examination system and introduce some free market discipline into it too".
The IPKat is not impressed by this argument. Spectrum is an exploitable, money-generating and limited resource that is indeed open to all - and auctioning it off or selling it at a premium is a good way of raising the odds that, once sold, it will be (i) used rather than left fallow and (ii) used profitably. Spectrum is also an essential facility, without which it is not possible to broadcast within a range of frequencies at all. A trade mark is an entirely different commodity: when separated from its goodwill it has no value to speak of at all and the vast majority of registered trade marks are probably worth little even when attached to their goodwill. Trade mark registration saves the state the cost of protecting and educating confused and deceived consumers, as well as the cost of educating them to the point at which they can make better-informed decisions in the exercise of their choice within an efficient, competitive market.

Friday, 25 May 2007

Friday favourites

Many thanks to Justin Watts (Freshfields Bruckhaus Deringer) for letting the IPKat know all about Leo O. Voelker's 1979-published US patent for a Bird Trap and Cat Feeder. According to the abstract, the invention consists of

"a bird trap and cat feeder for catching birds and feeding the birds to a cat. The trap designed to catch birds the size of a sparrow while releasing smaller song birds, wrens, swallows, or the like. The feeder providing means for continuously supplying a cat or neighborhood cats with sparrows to eat".
The IPKat is most gratified, but notes with disappointment that the claimed device does not appear to have been put into manufacture.


If you're thinking of taking a few days' holiday, this week is a good time to do so. The European Court of Justice will be closed till Tuesday 5 June, when it hears arguments on Case C-275/06 Promusicae ("Does Community law ... permit Member States to limit the duty of operators of electronic communications networks and services, providers of telecommunications network access and providers of data storage services to retain and make available connection and traffic information generated during the supply of an information society service to where it is required in connection with a criminal investigation or the need to protect public safety and national defence, thus excluding civil proceedings?").


Many thanks to Michelle Jones (Astex Therapeutics) for picking up this piece on The Times Online. [Eagle-eyed readers will notice that another of the Kat's emanations has commented on the same item, via the BBC website, just a short while ago]. To recap, this item concerns an ex-Coca-Cola employee and her colleague who were sentenced to eight and five years imprisonment respectively for seeking to sell secret recipes to arch-rivals Pepsi for $1.5 million.

Right: Coke scientists whispering about their latest formulae in case they should be overheard ...

Michelle particularly notes the following:
"The judge felt the beverage felony was so serious that he ignored the sentencing guidelines and imposed an eight-year custodial sentence for Williams and a five-year jail term for Dimson. This is the kind of offence that cannot be tolerated in our society,” said J. Owen Forrester, US District Judge. “I can’t think of another case in 25 years that there’s been so much obstruction of justice.”
What caught the Kat's eye was the bottom line:
"Coca-Cola thanked Pepsi for its help. The company said that its secret formula, containing the ingredient “7X”, was never at risk".
Above, left: a volunteer tests a prototype of Coca-Cola's new bottle-opener

How good to know that 7X was never at risk. Now we can all sleep at night (unless 7X is the bit with caffeine, in which case none of us will sleep at night ...). You've missed the point again, says Merpel: in Europe, the Commission would probably launch an investigation into the collusion of Coke and Pepsi and demand the open licensing of the secret formula in line with essential facility doctrine.


Once again, the IPKat is humbled by the magnificent viewing figures his weblog has recently recorded. The site received 6,119 casual visits last week - a new record. On the Wednesday of that week the site counter notched up 1,264 visitors, another record. And by the end of May the list of gmail subscribers should top the 1,000 mark. Thank you, say the IPKat and Merpel, not just for visiting but for starting to post more Comments - your input (and your output!) are very much appreciated.

Left: gratitude - with Katitude (textile cat from www.asianaccents.net)

Coca Cola secrets 'theft' woman jailed

The IPKat is grateful to Patricia Covarrubia for pointing him in the direction of news from the BBC that Joya Williams, the secretary at Coca Cola who offered the recipe for, and samples of, a new product and on to Pepsi, has been jailed for 8 years. Pepsi refused to bite, and alerted Coca Cola and subsequently cooperated with the FBI. In sentencing Williams, District Judge J Owen Forrester said ‘This is the kind of offence that cannot be tolerated in our society’.

The IPKat’s initial response to this comment was incredulity, but thinking about it a bit more carefully, the IPKat notes that the rate sought for these trade secrets was $1.5m. A theft of similarity valued tangible property would most likely attract similar condemnation and a similar sentence.

Beyond the Myth; Judges star in Hendrix performance

Well done, LexisNexis Butterworths, for unearthing Knight v Beyond Properties Pty Ltd and others [2007] EWHC 1251 (Ch), an obscure ruling by Mr Justice David Richards in the Chancery Division yesterday on a neat little passing-off point.

Knight, a British citizen who lived in Australia, published three books in the UK between 1991 and 1996; each had the word 'Mythbusters' in its title. After the first book was published he promoted his books and related activities under the name Mythbusters in different parts of the world, principally the UK, Australia and South East Asia. However, he had not engaged in any significant promotion in the UK since 1996.

Beyond was a group of three companies, the first two being Australian companies and the third English, all being engaged in the production and distribution of TV programmes and related IP rights. The fourth defendant was the Discovery Channel, which broadcast programmes in the UK and elsewhere. In 2002 Beyond piloted a series of three programmes under the name Mythbusters (illustrated above, right), the first being transmitted in the UK in November 2003.

Knight sued for passing off and argued that, by reason of his use made of the word Mythbusters, members of the relevant UK public had come to understand the name - when used for books and TV programmes concerning the investigation of myths - to mean his products exclusively. Beyond and Discovery disagreed: they said Mythbusters was descriptive and could not, in the absence of special facts, generate goodwill for passing off purposes. In these proceedings the court had to decide whether, in November 2003, Knight had a reputation in the name Mythbusters which could reasonably be regarded as more than trivial in relation to books and TV programmes concerning the investigation of myths.

David Richards J dismissed Knight's claim. He explained:

* To succeed in an action for passing off, any claimant must establish the three basic elements of passing off, goodwill, misrepresentation and damage. In this context a word or other mark that was basically descriptive would only be protected if it could be shown to have become distinctive of the claimant's goods or services: this secondary meaning had to be real, not trivial.

* Despite its descriptive quality, 'Mythbusters' could be distinctive. True, it described the books in question, but it was not a word which would be used in ordinary speech to describe a book, person or activity. Rather, it was adopted as a distinctive title for the series, used in a way which would readily lead to the series being associated in the public mind as the work of a particular author.

* The good news for Knight was that, on the evidence, he had indeed established a reputation in Mythbusters by 1993. Though this was on a very minor scale, it was still sufficient to attract protection. The bad news was that, by November 2003, no more than a trivial reputation, if any, remained in the Mythbusters name and he had insufficient goodwill upon which to launch a passing-off action.
The IPKat is enchanted by this. There are plenty of cases that show that goodwill persists after a business stops trading, since it is sustained in the mind of the relevant consumer and may be turned into real business again at a later stage - but it's unusual to find real goodwill evaporating totally into the ether. Merpel adds, will the increasing use of the internet, with the facility to link to products and their suppliers years after they've ceased actively marketing themselves, make any difference when cases like this are brought in the future?

Mythbusters here (Discovery Channel)
Ghostbusters here
Dustbusters here and here


Jimi Hendrix may be long dead, but his copyright affairs continue to exercise the minds of our greatest lawyers and, the IPKat imagines, will continue to do so for a long time to come. This week saw the ruling of the Court of Appeal for England and Wales in Experience Hendrix LLC v Purple Haze Records Ltd and others [2007] EWCA Civ 501, a decision of Lords Justices Keene, Jacob and Toulson on Thursday 24 May 2007.

Musical megastar Jimi Hendrix (left), a US citizen, gave performances between 1967 and his death in 1970 in (among other places) the UK, Sweden and the USA. Part II of the UK's Copyright, Designs and Patents Act 1988, which came into effect in August 1989, created rights in the performances of performers: s.180 actually said: "this Part confers rights on a performer".

The parties in dispute in these proceedings agreed that (i) if performer's rights did subsist in the performances in question Experience Hendrix owned them amd that (ii) the Act created performer's rights in the case of performers who were still alive when the Act came into force. What was however in dispute was (i) the position where the performer had died by the time of the commencement of the Act (the "dead performer" issue), and (ii) the status of a performance where the place of performance was in a country that only became a qualifying country for reciprocal protection after the date of the performance, even though it was a qualifying country at the time of an alleged infringement (the "qualifying country" point). According to Purple Haze the 1988 Act did not confer performer's rights upon a performer who had died before its commencement and the performances given in Sweden and the USA were not protected under the Act. At trial Mr Justice Park rejected those submissions. One of the three defendants appealed.

The Court of Appeal dismissed the appeals. In their Lordships' view
* Even before the enactment of the Act, a performer had a civilly enforceable right to protect his economic interests: if he were dead, that right would have devolved on his personal representatives and it was unlikely that Parliament had intended to take away the rights of performers who had died, given that Parliament had expressly considered the period during which such rights should subsist, namely 50 years from the year of the performance.

* If the rights were to subsist only in respect of performers who were still alive when the Act came into force, the Act would have said so.

* The Act was expressly retrospective and, while the whole of Part II of the Act was expressed in the present tense, the Act applied to what "was" a performance. It was thus sensible to recognise that the past was also being referred to where the context so required.

* If the rights were conferred retrospectively on a "person" and that person died, the rights simply transferred to the person's personal representatives by operation of law. Where the estate had been wound up and no one could be found for the purpose of obtaining clearances for use of performances, permission could be obtained from the Copyright Tribunal.

* The unamended Act protected the economic interests of performers and their estates, whether the performers were alive or dead and the amended Act, construed in accordance with Council Directive 92/100, Directive 93/98 and the TRIPs Agreement, did not take away the rights conferred in respect of performers who had died before the Act came into force: it was after all unlikely that Parliament had intended to cater only for performances of those who had died between coming into force and amendment of the Act.

* Before the Act no country was a "qualifying country" as defined in the Act save for the UK and the then existing members of the European Economic Community.

* Both the US and Sweden had become qualifying countries by the time the infringement took place.
The IPKat admires their Lordships' careful reading of Part II of the Act, which is persuasive, in the face of what Toulson LJ calls the "seductively simple" submissions on behalf of the appellants. However he regrets that UK legislation should be drafted in terms so convoluted and opaque as to require even major points of policy to be teased out of the statutory thicket rather than stating them openly and concisely upfront. Merpel adds, it's good to see the court taking such a close look at international conventions as an aid to the construction of domestic law: it almost makes one feel part of an international community.

Keep taking the tablets ...

The Court of First Instance of the European Communities handed down its judgment in Joined Cases T-241/05, T-262/05 to T-264/05, T-346/05, T-347/05, T-29/06 to T-31/06 Procter & Gamble Company v Office
for Harmonisation in the Internal Market
on Wednesday 23 May 2007. P&G applied to register as Community trade marks no fewer than nine three-dimensional shapes, each consisting of a thick rectangular white washing tablet bearing a coloured floral design (all nine are illustrated here). The applications were dismissed, as were P&G's appeals to the Board of Appeal. The latter found that (i) the level of attention paid by the average consumer to the shape and design of a washing tablet was not high, (ii) the combination of the shape, colours and design in respect of each tablet was a variation of the normal presentation of the product concerned which was not suitable for identifying that product as coming from a specific undertaking and that (iii) given the small amount of attention paid by the relevant consumer and the relative unsuitability of the combination to serve as a trade mark, the marks were devoid of any distinctive character. P&G then sought to annul those decisions in the Court of First Instance. According to P&G the goods were aimed at consumers doing their daily shopping and who would pay a high level of attention to the shape and size of the washing tablets. The company also maintained that the Board of Appeal had erred in its assessment of the overall impression produced by the combination of the shape, colours and design of each mark.

The Court of First Instance had little trouble in dismissing P&G's case. In the CFI's opinion

* the well-established criteria for assessing the distinctive character of three-dimensional trade marks consisting of the appearance of the product itself were no different from those applicable to any other category of trade mark.

* Even so, when applying those criteria, OHIM has to take account of the fact that the perception of the average consumer is not necessarily the same in relation to a three-dimensional mark consisting of the appearance of the product itself as it is in relation to a word or figurative mark consisting of a sign which is independent of the appearance of the products it denotes.

* Since the average consumer is not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element, it could prove harder to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark. This being so, only a mark which departs significantly from the norm or customs of the sector and thus fulfils its essential function of indicating origin is not devoid of any distinctive character.

* In this case, P&G's evidence was insufficient to establish that the average consumer paid particular attention to the appearance of the washing tablet or that he was accustomed to perceiving it as an indication of its commercial origin.
The IPKat is not surprised at this decision. He does however note with pleasure the following paragraph:
"... as regards the criticism which the applicant levels at the findings relating to the need to keep basic geometric forms available, contained in seven of the nine contested decisions ... it must be observed that that argument, while being undoubtedly unfounded in law, is mentioned explicitly in the decisions only for the sake of completeness and therefore cannot justify annulment of those decisions" (para.89).
He adds, I had quite enough difficulty telling some of these tablet shapes from one another - though I suppose that wouldn't matter if they all belonged to the same trade mark owner anyway. Merpel says, what's the betting that there will be a further appeal? There's soooo much money at stake - and who would ever have given P&G a chance of getting BABY-DRY registered as a Community trade mark for disposable paper nappies/diapers if, having lost every hearing, they hadn't persisted in their appeal to the full ECJ?

Hit-list of all Procter & Gamble litigation before the European Court of Justice here
More on tablets here

Thursday, 24 May 2007

UK-IPO Welsh Language Scheme


The UK-IPO has announced an "informal consultation" on a proposed Welsh language scheme, as promised in the recent consultation on the new Patent Rules (see previous IPKat posts here and here). Views on the consultation are invited, and should be sent to the Office by 14 August 2007. Of particular relevance to IP practitioners are the following paragraphs:

49. We accept applications in Welsh for patents, trademarks and designs, and we will make the relevant forms and guidance available in Welsh on our website.

50. The Trade Mark and Design Registrar will commission a translation of filings in Welsh into English for placing on the public record alongside the original. This translation will be agreed with the applicant in advance of publication, as will any subsequent amendments made. The agreed translation will be considered by the Registrar to be equivalent to the Welsh filed.

51. Welsh patent applications will be processed in the same way as soon as the necessary changes to the Patents Rules come into effect. These changes are in hand and are likely to take effect during late 2007. Until then, any applicant who files a patent application in Welsh must subsequently provide a translation into English and any subsequent correspondence must also be in English.

52. In our capacity as a Receiving Office under the European and international Patent systems and for the Community Trade Mark and Design System, applications must be in one of a limited number of official languages, of which English is one but Welsh is not. However, international patent applications in Welsh are likely to be permitted by the changes to the Patents Rules mentioned in paragraph 51. European applications in Welsh will be permitted by the coming into force of the revised European Patent Convention, EPC 2000, no later than 13 December 2007. In both cases it will be necessary to file a translation in one of the official languages within a set time period so that all further processing can be performed in an official language, as required by the relevant international agreements.

The IPKat's previous fears of patents being granted in Welsh appear to have been allayed by the UK-IPO's generous offer to "commission a translation" of Welsh applications, presumably for the benefit of the majority of UK subjects not familiar with the language. It will therefore apparently be possible to prosecute and grant a UK patent application in Welsh. Whether this will be of use to any serious applicants is yet to be determined.

Wednesday, 23 May 2007

More EPO technical thoughts

The IPKat is a little puzzled by a recent decision of the EPO Technical Appeal Board. Published as T 1284/04, the decision relates to a refusal of an application (published as EP0818015) regarding a method of "creating a financial instrument and administering an adjustable rate loan system".

The Board refused the appeal, finding that the application lacked an inventive step under Article 56 EPC. The main reason appears to be that a particular feature of the financial algorithm in the application (that of periodically adjusting the level of compensation on financial contracts), performed on a computer, was "a non-technical constraint as explained in decision T 641/00" (point 3.3 of the reasons).

In their reasons, the Board made the following comments,

"According to the approach defined in decision T 641/00 - Two identities/COMVIK (OJ EPO 2003, 352), an inventive step can result only from claim features contributing to a technical character. The Board regards this approach, which has been applied explicitly or implicitly by the Boards of Appeal for a long time (for references see T 764/02 - Banking services/ONLINE RESOURCES, point 11, not published in the OJ EPO), as well-established case law.

The Board would nevertheless like to add that the COMVIK approach does not consider the non-technical constraints as belonging to the prior art, but rather as belonging to the conception or motivation phase normally preceding an invention since they may lead to a technical problem without contributing to its solution. Such aspects have never been taken into account for assessing inventive step, irrespective of whether or not they were known from the prior art (cf also the decisions cited in 'Case Law of the Boards of Appeal of the European Patent Office', 5th edition December 2006, chapter I.D.8.4)"
(point 3.1 of reasons).

What the IPKat would like to know is how this can be squared with other decisions on 'excluded' subject matter, such as that of T 471/05 (reported and discussed on the IPKat here). Is it as simple as saying that methods for doing business can never contribute to a technical problem-solution analysis, whereas mathematical methods can? Or is it more complicated than that? Is the term 'technical character', which was used in this decision and in T 471/05, being used in the same way? What has happened to 'further technical effect' arguments, and are they still applicable? The IPKat would be interested to see if anyone can enlighten him.

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