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

Wednesday, 31 December 2014

Wednesday whimsies

Happy new year!  In the unlikely event that you haven't noticed, the IPKat and Merpel respectfully remind readers that we are moving from the calendar year 2014 to the next numbered year in the sequence, 2015.  In the olden days when everyone used cheques as a way of making payments, errors were common during the first few weeks of the year when people dated January cheques with the year immediately past, since it was common practice for banks to refuse to honour cheques that bore an instruction to pay that was dated more than six months earlier than the date on which they were presented for payment.  Nowadays that's not so much of a problem, but do take care when filling in forms online and selecting the year from a draw-down menu -- particularly if it involves something that might cost you money!

Earlier this month, this weblog hosted a reader's appeal for suggestions for a good read in the area of franchising law. Some readers were kindly able to help.  This Kat has also now received a handsome bound volume of The Franchise Law Review for 2014, edited by his old friend Mark Abell (Bird & Bird). Published by Law Business Research [haven't heard of them? Nor has this Kat], it runs to over 600 pages and, following some good introductory chapters on business format franchising law and strategy, covers over 30 jurisdictions and then adds a couple of bonuses -- a case study and a dispute resolution index -- for good measure. The authors include a number of friends and fellow bloggers too.  High class vanity publishing or valuable source of information? It might be one or the other but, so far as this Kat can tell, it looks like both.  You can check this volume out for yourself here,

Around the weblogs.  There really isn't much to report over the past couple of days, unless you are into supplementary protection certificates for patents in the European Union, in which case The SPC Blog reports that the prolific Mike Snodin has written another article, which you can access from this link, on the Seattle Genetics case and what question the Court of Justice of the European Union should really be answering.  Design law practitioners may by now have discovered that Ireland and South Korea have made their design data more accessible by joining up to OHIM's DesignView service. Pick of the week, though, is fellow Kat Neil's post for IP Finance on the afterlife of the copyright-infringing Aereo business model and why some very big companies are taking such an interest in the disposal of its insolvent assets.

Buzkashi: doesn't take as long as negotiating
WTO entry, and is loads more fun ...
Kazakhstan comes in from the cold.  While the average daily temperature in Kazakhstan's capital Almaty is around minus one degree celsius, the former Soviet satellite state is coming in from the cold in terms of international trade.  According to the latest Petosevic IP News Eastern Europe, the World Trade Organization is expected to announce Kazakhstan's admission to WTO membership at the beginning of 2015.  With WTO membership comes a commitment to the Agreement on Trade-related Intellectual Property Rights, a.k.a. TRIPS.  It has so far taken 18 years for negotiations to reach this stage, which just goes to show that there are some things that take longer than trade mark opposition proceedings in Ireland ...

Putting the boot in?  From Rob White (Avidity IP, katpat!) comes this link to "New Balance sues Converse over trademark actions", the tale of a legal action brought by New Balance on the basis that Converse was being a bit over-vigorous in its efforts to protect the latter's Chuck Taylor All-Star sneakers. Back in October, trade mark owner Converse -- which is owned by Nike -- initiated International Trade Commission proceedings against Walmart, Kmart, Skechers and dozens of other parties for allegedly promoting knock-off copies of its Chuck Taylor design. Says New Balance, which was not on Converse's original litigation hit-list, when it sought assurances that no attempt was being made to sue its own "PF Flyers" sneakers, Converse refused to reassure it and threatened to add it to the list.

When attack is the best form
of defence, bovver boots are
heartily recommended
Converse's "Chucks" go back to the 1940s, displaying a distinctive rubber toe cap and striped midsole. Converse was granted a trade mark on the shoe in 2013. New Balance is now challenging the validity of Converse's mark, which is said to include ornamental or functional features that are not unique to Chuck Taylor sneakers but are common within the trade and could therefore be applied to any number of shoes, including its own ones. Adds New Balance: Converse's “Chucks” and its own allegedly infringing "PF Flyers" are sufficiently different for consumers not to confuse them. What's more, it submits, the PF Flyers brand dates from the 1940s and was even briefly owned by Converse in the 1970s. While he doesn't know the chain of transactions that brought "PF Flyers" from Converse to New Balance in the first place, the thing that interests this Kat is the possibility that, in infringement or declaratory proceedings, New Balance might be able to argue a defence of consent, estoppel or derogation from grant on the bases -- assuming that they can be proved -- that Converse sold "PF Flyers" to New Balance in the first place and that what was sold was sufficiently similar to the "Chucks" to support an infringement claim.

Breaking down Australia's injunctive online copyright enforcement reforms

Over the past several weeks, there have been several developments concerning Australia's recently-proposed online copyright enforcement reforms. Particularly, the Australian government is in the process of adopting reforms that would allow owners of copyright-protected works and other authorized parties (collectively, "Rights Holders") to petition Australian Courts for an injunctive order to directly block foreign-hosted websites from accessing Australia. Although these proposed measures will arguably provide Rights Holders greater means to enforce rights in their works across borders, they pose a number of potentially problematic issues I reported on in my own blog months ago that have yet to be addressed by the Australian government, not only impacting the potential implementation of these measures, but ultimately their effectiveness as a tool to combat online copyright infringement.

So what are these issues? First, it is important to understand the proposed injunctive reforms.

Last July, the Australian Government released for public comment a number of online copyright protection reform proposals in a discussion paper titled Online Copyright Infringement. Included in these proposals were easier requirements to establish contributory online copyright infringement liability, an expansion of entities qualifying for online service provider infringement safe harbors under Sections 116AA and 116AJ of the Australian Copyright Act, as well as others. However, the most internationally impacting and controversial proposal provided in the July paper was Proposal 2 - Extended Injunctive Relief ("Proposal"), which proposed that a Rights Holder be able to petition an Australian court for an injunctive order against an Internet service provider (ISP) to block access to Australia of a foreign-hosted website. To attain such an order, a foreign website's "dominant purpose" must be to infringe copyright, and if granted, a Rights Holder would be required to bear the particular ISP's costs for giving effect to the order, including the ISP's indemnification against damages claimed by third parties.

Inspired by injunctive powers adopted in the European Union under the Directive on the Harmonisation of Certain Aspects of Copyright and Related Rights in the Information Society (Article 8(3) of Directive No. 2001/29/EC), the Proposal would effectively give Rights Holders tools under Australian law to directly enforce right in their works against foreign-based websites. As I reported previously, the Proposal has substantial potential benefits from a cross-border IP protection standpoint. Beyond providing qualifying Rights Holders limited extraterritorial protection for their work(s) outside of Australia by blocking access to foreign websites that are typically subject to the laws of other jurisdictions, the Proposal also provides Rights Holders the ability to stem the international reach of a particular infringing website to a major market such as Australia. Further, the Proposal appears to be a valuable enforcement alternative in instances where a Rights Holder wishes to enforce rights in their work(s) against a non-Australian based website whose ISP host is unresponsive, or hosted in a country whose legislation or judicial system is unable, or in many cases unwilling, to enforce the Rights Holder’s rights short of prolonged litigation.

Despite these perceived benefits, the Proposal's uncertain financial burdens on Rights Holders may jeopardize its desirability as an enforcement tool. The Proposal is judicial enforcement measure, meaning that unlike notice and takedown provisions under Australia's Copyright Regulations (Regulation 20J), and the U.S.' Digital Millennium Copyright Act (17 U.S.C. § 512(c)), where a Rights Holder can submit a relatively simple notice petition to a ISP to temporarily or permanently remove a hosted infringing website, a Rights Holder likely needs to retain qualified Australian counsel to effectively obtain an injunctive order under the Proposal. Further, the Proposal requires that a Rights Holder “meet any reasonable costs associated with an ISP giving effect to an order” and indemnify an ISP against damages claimed by a third party arising out of the ISP’s enforcement of an order under the Proposal. Such legal and procedural costs, as well as indemnification obligations, make the Proposal a financially riskier proposition for Rights Holders than seeking enforcement under Australia or another nation's notice and takedown procedures as neither Australia nor most notice and takedown jurisdictions require that a Rights Holder indemnify an ISP for any enforcement action taken by the ISP on behalf of a Right Holder absent fraudulent statements by the Rights Holder. Although likely a substantial concern for most Rights Holders who seek to utilize injunctive measures provided under the Proposal, the Australian government has yet to provide further details on such Right Holders' financial obligations, through proposed legislation or otherwise.

Beyond uncertain financial obligations, the Proposal has also recently raised freedom of speech concerns that may ultimately impact its potential adoption into the Australia Copyright Act. Spokespersons for Australian Green Party recently characterized the Proposal  as being a "de facto Internet filter" that their party will not support if brought to the Australian Parliament for consideration. Further, public interest groups, such as the Institute of Public Affairs Australia have criticized the Proposal by calling it a "threat to free speech." 

Ida's dominant purpose
was easy to guess ...
Regardless of these concerns and barriers to implementation, the Proposal's success will hinge on whether it can effectively provide balanced online copyright enforcement. Ultimately, this will be determined by the Proposal's evidentiary burden for enforcement. As mentioned, in order for an Australian Court to grant an injunctive under the Proposal, a Rights Holder will need to establish that a foreign website’s “dominant purpose” is to infringe copyright. Again, the Australian government has yet to provide further direction on what constitutes a dominant purpose. Even if interpreted leniently, it will likely be difficult for a Rights Holder to meet this evidentiary threshold as it would require showing that an infringing website’s main purpose is to infringe copyright instead of merely establishing that the website infringes copyright as provided under most national notice and takedown enforcement systems.  

Based on this higher evidentiary burden, obtaining an injunctive order under the Proposal will likely be more difficult for a Rights Holder to obtain than a notice takedown. Coupled with the legal costs and potential indemnification concerns, the Proposal’s evidentiary burden may potentially hinder the Proposal from becoming a commonly-used and effective tool to fight online copyright infringement in Australia and beyond.

Thank you to Merpel, Jeremy, all of the other cats, and of course you, the readers, for the privilege of being a guest contributor to The IPKat over the past six months. It has truly been an honour!

Tuesday, 30 December 2014

"Art is pleasure, invention is treasure, and this nation has got to recognise that": congratulations, Trevor

The Guardian has just (15 minutes ago) posted this year's British New Years Honours List. A swift scan reveals at least one IP personality: it's none other than Trevor Graham Baylis, already a regular OBE, who has now added a CBE ("Commander of the Most Excellent Order of the British Empire"). Described on the list as "Inventor and Founder, Trevor Baylis Brands plc", his honour is for "services to Intellectual Property".  His attitude to intellectual property can best be summarised by this quote:
"As they say, art is pleasure, invention is treasure, and this nation has got to recognise that. If they can spend a fortune on dead sheep and formaldehyde, then it can spend a bit more of that money on inventors".
Best known for his wind-up radios, Trevor is a larger than life character and a person who can be guaranteed to speak his mind.  This Kat congratulates Trevor on his fresh honour and adds that, whatever you may think about him (and whatever you may think about some of the pretty frank criticisms he has made of the IP system over the years), he has the distinction of being a person who cares and who gets up off his backside and actually does things. Well done!

You can read more about Trevor here.

Swedes consider the "penal value" of a trade mark infringement

"Supreme Court sets high threshold for imposing imprisonment in infringement cases", a note by Tom Kronhöffer and Miriam Röstberg Omari (von lode advokat ab, Stockholm) and posted on World Trademark Review earlier this month, raises important matters of principle that are rarely discussed on this weblog in regard to the criminal law dimensions of IP infringement. In particular, when if at all should trade mark infringers be sent to prison and, if they should, how should the duration of their sentences be calculated?

Conditions in Swedish jails
are reputed to be good. Here
Sven tests out the sleeping
arrangements ...
The case in question is Prosecutor General v CS (Case B-5484-13) and it runs like this. TransmissionsTeamet i Stockholm AB (TT) imported, marketed and sold counterfeit ball bearings which bore the Community trade mark SKF. The infringement was discovered when a consumer whose machinery was damaged by a fake ball bearing sought compensation from SKF. The police were called in. When they searched TT's premises, they seized over 6,000 counterfeit ball bearings made in China. A follow-up search-and seize-visit a few months later revealed the presence of further counterfeit goods. While both the Stockholm District Court and the Svea Court of Appeal found TT's owner guilty of trade mark infringement, they disagreed as to the appropriate sentence: the District Court sentenced the owner of the company to one year in prison, but the Court of Appeal reduced this. Intending to bring clarity to the issue of fixing a "penal value" [ie for how much time is it worth imprisoning an offender?] in trade mark infringement cases, the Attorney General appealed to the Supreme Court.

The Supreme Court initially stated that, while the primary objective is to protect the rights of trade mark proprietors, when it comes to assessing a "penal value", third-party interests should also be considered, because trade mark infringement may both mislead and harm consumers. This statement is a positive step in the protection of brands and consumers, since it was previously unclear whether third-party interests had any impact on penal value. The Court added that
  • the infringement was of considerable magnitude, 
  • the defendant had criminal intent, 
  • the defendant was aware of the risk to third parties, and 
  • the defendant's objective was clearly to benefit financially from the infringement. 
Notwithstanding this, the Supreme Court set the penal value at eight months' imprisonment. This is in effect a suspended sentence since the Swedish Criminal Code operates a presumption against imprisonment when the penal value of the sentence is less than 12 months. However, this did not mean that the defendant escaped scot-free, This sentence was combined with a day-fine of Skr 14,000, plus Skr 550,000 in damages, Skr 400,000 in litigation costs, a ban on business activity for three years, a corporate fine of Skr 50,000 and the destruction of the counterfeit products [there are around Skr 9 to the euro at the time of posting. The latest rate can be checked here].

The ultimate penal value: having
to listen to a looped tape of ABBA
singing Fernando ...
Finally, the Supreme Court assessed whether the very nature of trade mark infringement would serve to rebut the presumption against imprisonment. The prosecutor general argued that counterfeiting and piracy represented an increasing cross-border problem that posed a threat to the economy as a whole, as well as to public finances. Easy to carry out and hard to detect, it can also put the lives of consumers at risk: these circumstances, it was argued, were sufficient to rebut the presumption against imprisonment.  The Supreme Court thought otherwise: neither statute nor case law supported the proposition that trade mark infringement should be treated any differently from other criminal activities.  Did the Swedish Supreme Court get it right? Or should it have exercised its power to differentiate trade mark infringement and remove the presumption against prison?

The IPKat would like to believe that, while the presumption against imprisonment should be respected, the courts will be prepared to rebut that presumption whenever the facts of an individual case merit it, for example when the consequence of the infringement is the death or serious injury of one or more consumer.

Merpel disagrees vigorously. In her view criminal law must punish the act, not its consequence: the sale of fake ball bearings is the same act regardless of whether it causes no damage at all, damages a machine or kills a person.

What do readers think?

Why Sweden is closing its prisons here
Why Scandinavian prisons are superior here
10 of the world's most luxurious prisons here

The Naked Truth: use of BARELY THERE wasn't even barely there

HBI's Barely There: this bra
is apparently invisible, which
says much for the power
of imagination ...
"Dunnes rebuked for providing 'weak' excuses in revocation action" is the title of a World Trademark Review post by Ciaran O’Neill (DFMG Solicitors, Dublin) on an interesting Irish Patents Office decision, but one that has not yet been uploaded on to the Trade Marks section of the Office's Written Grounds page. The parties to this trade mark revocation action were HBI Branded Apparel Enterprises LLC (part of US giants Hanesbrands -- think Wonderbra, Playtex and, in jurisdictions other than Ireland, Barely There) and seasoned IP litigators ["are they always defendants?", wonders Merpel] Dunnes Stores Ireland Company; the trade mark was Dunnes' word mark for clothing BARELY THERE (Class 25: clothing, footwear and headgear).  In short, HBI said that, up to three months before they applied for revocation, Dunnes had not put the mark to genuine use in Ireland for any of the goods for which it was registered for a continuous period of five years, there being no proper reasons for non-use. Dunnes conceded that they hadn't used the mark for footwear or headgear, but said they had used it for underwear.

Alas for Dunnes, upon whom the burden of proof of use was placed, the evidence of use of BARELY THERE was, er, barely there.  It consisted of a statutory declaration sworn by Dunnes' company secretary, Thomas Sheridan. Dunnes had used the mark for underwear since 1998, he said, but all tangible evidence to prove this use was destroyed when Dunnes moved its head office premises some years ago. In any event, he said, such documentation would not normally be kept within the retail trade where changeover of products occurs on a regular basis.

Sheridan supported this (absence of) evidence by providing aggregate turnover figures which, he said, showed the value of sales of some 75,000 BARELY THERE products under the mark between 2004 and 2008. However, he said, the Patents Office could see the actual turnover figures: they were “confidential business information”, the disclosure of which could harm the company.

Fergal auditions for his dream job,
keeping business records at Dunnes ...
Unsurprisingly to everyone except, presumably, Dunnes, the hearing officer revoked the mark for non-use. Dunnes had not submitted a single invoice, order, delivery note, label, tag, packaging, advertisement, poster, photograph, in-store display, item of clothing or any other material bearing the mark. He stated that this was “an extraordinary lack of evidence”, which was all the more striking given the level of sales which Dunnes claimed.  What's more, the tax authorities would have required Dunnes to retain copies of invoices and other materials to ensure compliance with proper accounting and financial procedures, and it was highly unlikely that a company the size of Dunnes would not have electronic copies of the documentation [this is true, says this Kat, but Dunnes is an Irish company, the trade mark is an Irish trade mark and, in Ireland, the normal is sometimes a little different ...].

As for the statement that Dunnes' turnover figures were “classified business information”, this was just “too weak an excuse” since full documentation of all sales would not have been required to prove use.

Says Merpel, when footballers tumble to the ground, pretending that they have been tripped up or fouled by players on the opposing team, they can get into big trouble.  Trade mark owners who pretend that they have used their trade marks when there is plainly no evidence to support such use deserve no better treatment.

As bare as you dare here
Bare bear here

Monday, 29 December 2014

Monday miscellany

Do you enjoy classifying patents? And are you tempted to offer some feedback. If so, from our reader Yegor Smurnyy comes the following message:

"I am a machine learning researcher and have created Patent Classifier -- a new patent search tool that automatically suggests an appropriate United States Patent and Trademark Office patent classification based on user's input. I plan to keep the tool free (I earn money by contracting and use it as a portfolio item), I do not store/analyze/sell user input and/or contact details, and there are no ads. I estimate the accuracy to be in the 80-90% range, depending on the subject matter, and the initial feedback from the few patent attorneys I've shown this to has been extremely positive". 
Yegor welcomes more users and some community feedback. If you would like to try Patent Classifier for yourself, feel free to do so. You can post comments below or email Yegur here.

Around the weblogs. Following the Spanish Supreme Court decision in DENSO (noted on the IPKat here and on Class 46 here), Fidel Porcuna has added a further post on Class 46 which looks at some of the facts and issues behind the issues arising from this dispute. Design law Class 99 meanwhile reminds us that the "informed user" of dog biscuits is not the dog but the person who selects the biscuits.  On the 1709 Blog, Ben Challis's awesome review of the copyright year has already attracted oodles of attention, deservedly so.

No guarantee, but a welcome step in the right direction.  The following notice, spotted by Chris Torrero (Katpat!), appears on the website of Spain's IP office which reads as follows:
The Spanish Patent and Trademark Office (SPTO) is offering a new service to citizens and Industrial Property professionals [Miaow, says Merpel: why "citizens" first? And what about people who are not citizens or IP professionals?] that will allow them to easily search for and access recent rulings that meet a set of criteria defined by the user.  
Legal notice  
The Spanish Patent and Trademark Office provides a public database of court rulings related to industrial property. The Spanish Patent and Trademark Office does not guarantee permanent availability or the continuity of the case law database [no, says Merpel, she doesn't suppose that any such guarantee is forthcoming but then, to be honest, she wasn't expecting one ...], and reserves the right to suspend access to same or to part of its contents at any time and without prior notification, whether due to technical, security, maintenance or for any other reason. Nor does the Spanish Patent and Trademark Office guarantee that all the information contained in the case law database is trustworthy, as provision of same on the SPTO website is purely for information purposes [can anyone tell Merpel if, in the absence of all these cautions and disclaimers, the SPTO would actually be legally liable?].
You can do your searching here -- but do remember not to rely on it, just in case ...

Never too late: if you missed the IPKat last week ...

It's now exactly half a year since the IPKat instituted its weekly "Never too late" posts, kindly compiled by Katfriend Alberto Bellan in order to assist readers who were offline or on holiday during the previous week by providing a short note on each of this weblog's substantive blogposts together with a link, to save readers the toil of reading all the way through a large number of blogposts.  In this, the 26th round-up, Alberto records the following:

Darren reports on Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd & Others [2014] EWHC 4242 (Pat), an Arnold J but not-so-Arnoldian decision concerning the design of an ice cream van with a bit of trade mark infringement on top. Tasty!
Katfriends and IP enthusiasts David Pellisé and Juan Carlos Quero explain a revolutionary trade mark decision from the Spanish Supreme Court. Overcoming a traditional idea peculiar to Spanish trade mark law, that court eventually puts an end to the concept of trade marks giving its owner the (positive) right to use the sign protected thereby.

* First confidentiality, now costs: Vestergaard v Bestnet refuses to go away

Vestergaard Fransen S/A & others v Bestnet Europe Ltd and others is a case that simply refuses to go away, writes Jeremy. After a number of earlier decisions [on which see earlier Katposts herehere, and here] this breach of confidence litigation regarding mosquito nets provides for another fresh ruling, this time on costs of an inquiry on damage compensation and usability of “without prejudice” communications. 

* Randoms, leggy chicks and youth culture: ice cream opposition meltdown in Ireland 

Jeremy sinks his paws into Unilever Plc v Société des Produits Nestlé SA, a trade mark decision of Dermot Doyle, on behalf of the Controller of the Irish Patents Office. The decision sees a slogan, ‘RANDOM ACTS OF HAPPINESS’, which encountered another slogan ‘LET YOUR RANDOM SIDE OUT’ and the trade mark ‘RANDOMS’ on its way to the Irish Trade Mark Register. Could those slogans live side by side, or did one prevail over the other?

* What is eating the European Patent Office? Merpel summarises 

Over the past month, this weblog has hosted news and developments of reports of unrest among the workers at the European Patent Office (EPO). The unrest is not, as might have been supposed, only at the level of the Examiners and regular employees, but even within the exalted ranks of the Boards of Appeal and Enlarged Board.  Since news does not develop in a neat and tidy manner, the IPKat has asked Merpel to review the recent events and to summarize them in the brief summary timeline that you may find in this post.

* Out of the frying pan, into the fire: patent infringement by numbers is not allowed

Jeremy reports about Jarden Consumer Solutions (Europe) Ltd v SEB SA & Another [2014] EWCA Civ 1629, a Court of Appeal for England and Wales ruling on a patented electrical appliance for the dry frying of food. In his earlier guest-post on the case [here], Paul England described it as “a textbook obviousness and infringement analysis, and one that would serve as a case study in patent courses for the next few years”. But did the Court of Appeal agree?

* Endoscope and remedial scope: inside view of an application for summary judgment 

Medical Innovations Ltd v Eakins and others is a Chancery Division, England and Wales decision delivered by Richard Meade QC. As Jeremy explains, this case concerns breach of database rights, misuse of confidential information and breach of contract, all coming from a former employee changing his job.

* If China turns inwards on technology, will IP be far behind? 

The whole dynamics of technology transfer between Western companies and Chinese enterprises rests on the assumption that China remains eager to import Western technology and products. What is new, however, is the emergence of early signs that this assumption may not be entirely correct, writes Neil.

* European Copyright Society tells Oettinger that EU should go for full harmonisation of copyright 

The European Copyright Society (ECS) sent Commissioner for Digital Economy and Society, Günther Oettinger, a letter shortly before the holidays. The subject-line? "Unification of copyright law", explains Eleonora -- who wrote a book on that very subject a couple of years ago.

Katfriend Suleman Ali (Holly IP) review Biotechnology and Intellectual Property Rights. Legal and Social Implications, by Kshitij Kumar Singh. Is it a good reading for your seasonal holiday? Find it out in this post.



Never too late 25 [week ending Sunday 21 December] -- Setting aside default judgements at the IPO | 2015, the year of blocking injunctions? | The future of private copy levies in the EU | Kat-tips for IP conferences | Appeals at EPO: beware of what you ask | EPO BoA’s independence | CJEU in International Stem Cell Corporation  | IPKat’s 2014 Copyright Awards | Waze and innovation drawbacks | Battistelli and Kongstad interviewed | Porcelains that copy advertising | Jay-z’s “Oh” sample gets its decision, yo.

Never too late 24 [week ending Sunday 14 December] -- ** INTA’s When Trademarks Overlap With Other IP Rights Special ** | Scottish Law Society misinforms about UPC in Scotland | EPO Enlarged BoA Members’ letter against against President Battistelli’s BoA Member’s house ban | German lititgator writes German delegate to EPO AC | EU Judges join the chorus of condemnation against President Battistelli | EPO replies to multilarelal concerns | Scam letters from EPO | Birss J on process claims in about Hospira v Genentech | End of Google News in Spain | Arnold J and the High Court on using a confusingly similar TM with the owner’s consent in Dalsouple Société Saumuroise Du Caoutchouc v Dalsouple Direct Ltd | Copyright and censorship in Sweden | IPKat’s comment policy | UKIP against a parodistic Twitter account | Oracle v Google on Java’s copyright |

Never too late 23 [week ending Sunday 7 December] -- VOLVO v LOVOL, EU General Court goes Freudian | Oral Hearing on the 17th Draft of the UPC Rules of Procedure | Trolls owing essential patents in Vringo Infrastructure v ZTE | The importance of being Uber before Uber | Merpel and the EPO strike | An Arnoldian patent ruling in Idenix Pharmaceutical v Gilead Sciences | Audit clauses in IP licences | EPO Board of Appeal Member suspended | AG Villalón tells his stake on distribution right and offer for sale in Case C-516/13 Dimensione Direct Sales and Labianca | Post-mortem moral rights in Poland | Second Circuit hears argument in Authors Guild v Google fair use case | EPO and the Swiss-cheese approach in decision T0571/10| The Alicantation of the European Patent Office | Paris Court of Appeal defines third-generation hosting provider in TF1 v Dailymotion | Books review: "The Principle Of National Treatment In International Economic Law Trade, Investment and Intellectual Property" and "The Copyright Wars: Three Centuries of Trans-Atlantic Battle" | Swedish Svensson referral proceedings after Svensson.

Never too late 22 [week ending Sunday 30 November] -- Trade conference and IPKat discount to attend | Eleonora’s copyright infringement checklist | EPO video-conference drawbacks | Bat trade marks | CJEU on essential patents in Case C-170/13 Huawei v ZTE | BGH on acronyms’ registrability | Peppa Pig and Gabriella Capra | Reference to CJEU: copyright infringements through open wi-fi | Court of Appeal for England and Wales on ‘Ideal Home’ trade mark in IPC Media Ltd v Media 10 Ltd [2014] EWCA Civ 1439 | Imitation and lookalike specialists Aldi looses in Case T-240/13 against ‘Alifoods’ |Jeremy’s book review -- Asian IP special | Chancery Division back on Merck v Merck | Trade marks in artistic works | Treatises and indexes.

The SKYVolt's the limit, even if you forget the wind, sun and water ...

You can't get blood from a stone, but you might get a bolt from a SKYVolt. Stone Electrical Ltd v British Sky Broadcasting Group plc is a decision of the Controller of the Irish Patents Office dating back to last August, but again it's one of those somewhat overlooked rulings that is worth bringing to the attention of this weblog's trade mark-oriented readers. You can read the decision in full here.

In short, Stone applied to register the word-and-device mark depicted above, right, containing the text ‘SKYVolt Generators of power by Wind, Sun and Water’ for all goods and services applied for relating to the supply and installation of micro-generators powered by renewable energy in Classes 7, 9 and 37. British Sky Broadcasting Group Plc (BSkyB) opposed, citing a number of earlier Community trade marks, including the word SKY which was registered, although not used, for identical goods and services. Said BSkyB, Stone's sign, which included the word SKY in conjunction with a descriptive word to denote particular services (i) caused a likelihood of confusion and association with its own marks, (ii) took unfair advantage of, or caused detriment to, the distinctive character or reputation of its marks and (iii) amounted to passing off.  What's more, said BSkyB, its earlier marks were entitled to additional protection based on their renown and reputation.

Stone maintained that the parties' respective marks were not similar and that there was no likelihood of confusion. Further, since BSkyB operated in a fundamentally different economic sector (television broadcasting, broadband and phone), it could hardly be allowed to claim a monopoly over the word SKY that extended so far..

Dermot Doyle, for the Controller of Patents, dismissed the opposition and allowed the mark to proceed to registration. In his view:

* when comparing the marks, and even disregarding the purely descriptive phrase ‘Generators of power by Wind, Sun and Water’ element of Stone's mark, the marks were more dissimilar than similar -- particularly on a conceptual level.

* turning to assessment of the likelihood of confusion, post-dated evidence from Stone was admissible on the basis that it was necessary to gain a greater understanding of the context in which the average consumer would view the mark: this evidence was taken to show that the mark would be used in relation to the sale, installation and maintenance of significant pieces of electricity generating infrastructure. The average consumer was therefore someone with little knowledge of the goods, and who would therefore carry out extensive research and be reliant upon the advice of experts before making a purchase.

* the fact that the general public associated the trade mark SKY exclusively with BSkyB did not extend that association to any and all marks beginning with that word. In particular the average consumer would not disregard the ‘Volt’ element of Stone's sign and would understand the mark to relate to a specific brand, SKYVolt. This might mean that SKYVolt causes association in the sense of calling to mind the mark of the brand owners of SKY but not that they would associate it with BSkyB's business.

* no particular level of similarity has to be met in order to establish that a later mark takes unfair advantage of or causes detriment to an earlier mark. Even a link in a consumer's mind that is insufficient to cause confusion may be sufficient, if that link or connection relates to the essential function of a trade mark to act as a guarantee of origin distinguishing the goods or services of one undertaking from those of another. Where there is no such connection, unfair advantage cannot be taken, nor will it cause detriment to the distinctive character or the repute of the earlier mark. Here, while the evidence showed the earlier SKY marks enjoyed a reputation in Ireland that extended beyond the limited class of consumers of BSkyB’s goods, and indeed penetrated the consciousness of the wider public, the low-to-medium level of similarity between the parties' marks was insufficient to cause the relevant section of the public to establish a link or connection in trade between the marks.

* where passing off is raised in opposition proceedings, the Controller does not make a finding of fact but merely determines whether the basic ingredients of a passing-off action would exist if an applied-for sign were registered. Here, though, the basic ingredients of an action for passing off were not established: there was no likelihood of confusion or association between the respective marks, BSkyB lacked goodwill in relation to the goods and services at issue and Stone had due cause to adopt its sign. It was inconceivable that BSkyB could suffer loss or damage if SKYVolt was used in a normal and fair manner as a trade mark for the goods and services for which registration was sought.

Merpel laments the snail's-pace progress of this dispute. Stone's application and BSkyB's opposition both date back to 2009, but the hearing took place only in December 2013, the parties were informed of its outcome in January 2014 and the reasons for the dismissal of the opposition were not published until August 2014. Wouldn't it be lovely, she thinks, if the time-scale for what are, after all, often commercially crucial matters to be settled could be condensed into a far shorter period?

If you are wondering about reliance on post-dated evidence, adds the IPKat, there is good authority for it, albeit not from a court that has normally much to do with evidence-gathering on a direct basis.  Said Dermot Doyle at [44]:

"It is generally accepted that in order for any evidence filed in opposition proceedings to be considered relevant it must pre-date the application date. However, the possibility exists that evidence which post-dates the application date may be taken into account in order to gain a greater understanding of the circumstances surrounding a particular case. The Court [of Justice of the European Union] found in Alcon that it is possible, without inconsistency in reasoning or error of law, for material to be taken into account which, although subsequent to the date of filing the application, enables the drawing of conclusions on the situation as it was on that date".
The notion of post-dated evidence in IP proceedings is not confined to trade mark law. Back in 2012 it was considered in the context of patent law too: see this earlier Katnote here.

Sky Cats here
Skye Cats here

Sunday, 28 December 2014

Biotechnology and Intellectual Property Rights: a book review

Most often, the IPKat and his friends only publish short notes on IP publications, letting readers know of their existence, making some general comments and hoping that they will form their own opinions. But every so often they have the luxury of being able to post a longer, more carefully considered review. Here the Kats host one such review from Katfriend Suleman Ali (Holly IP). The book in question is Biotechnology and Intellectual Property Rights. Legal and Social Implications, by Kshitij Kumar Singh. As the title suggests, this is an important and timely topic. But does the book live up to its title? This is what Suleman has to say:
This book describes itself as providing insights into ‘the interface between law and genetics’. The author, Kshitij Kumar Singh, is an Assistant Professor at the Amity Law School in Noida, India.

The author has the very laudable aims of trying to convey the ethical and economic issues around patenting biotechnology and the ownership of human genetic resources. However he does not succeed. The informed reader would find this book irritating for being incomplete, failing to get to grips with the issues and providing no fresh thinking. While the author provides a sympathetic perspective to those that might be seen as being harmed by the patent system this is undermined by the polemical nature of the book. On important issues only one side of the argument is presented, and at times the book simply reads like a list of complaints against the patent system, without a proper assessment of the available solutions.

Practitioners will find little of direct interest here because this book is about ‘issues’ and not ‘how to patent biotechnology’, and so its content is more suited to policy-makers and academics. The book starts with looking at the patentability criteria for biotech inventions in the US, Europe, Canada and India, with brief discussions of the important cases which established that most biotech inventions are patentable. The author goes on to describe TRIPS and the well-known issues of the anticommons, patent thickets and the Myriad patents which are being used to prevent other companies developing the same diagnostic test for breast cancer susceptibility. Using database rights to protect DNA sequences is discussed and whether open source is appropriate for biotech. The implications of ‘ownership’ of human genetic sequences is presented as an important issue.

This book is badly written. Much more proof-reading and editing needed to be done to improve the language and reduce the level of repetition. A stray paragraph on the need to file sequence listings in Canada gives the impression that of a lot of the content coming from copying and pasting. However, a more serious criticism is that the writing is unfocused and nebulous. A lot of the time one wonders what the real problem is that the author is discussing and who the actual victims are of the policy.

There is an assumption running through the book that the developing world is being harmed by the patent system. However it is not clear exactly how. Important developing world issues like agricultural innovation and technology transfer are not mentioned. Open source innovation is presented as potentially beneficial to the developing world without any explanation of why. It could be argued that there no viable alternative for developing biotech industries other than one based on patents. This central point is not discussed by the author in any meaningful way. Failure to mention the Trans-Pacific Partnership is a glaring omission. India is occasionally mentioned, but the opportunity to discuss how India is acting to protect its national interests in the field of IP is missed.

Unfortunately the book is very much out of date when it comes to the US. It does not cover the Guidance issued by the USPTO in March of 2014 on eligible matter in view of the Myriad and Mayo Supreme Court cases (recently replaced with the new Guidance issued in December of 2014). The Guidance makes fundamental changes to what is patentable in the field of biotech inventions.

The author focuses on the patenting and ownership of human genetic material, but never explains why this is different from patenting other inventions. The patent system is described as being inadequate for dealing with biotech inventions, without proper discussion of why. The author does not explain what the real problem is. Is biotech research being inhibited by patents with claims which are too broad? Are drugs too expensive as a consequence? These issues are hinted at but not properly discussed.

The ethical and economic issues raised by the patent system are complex. So they need complex thinking for solutions to emerge. Unfortunately this book does not tackle, or even describe, those issues adequately enough to provide insights or solutions. It therefore makes little contribution to the debate of how the patent system should be changed.
Bibliographical data: publisher: Springer, ISBN: 9788132220580, Hardcover, 254 pages, Price: £72. Web page here.

This Kat hopes that the author will rise to the challenge of addressing the issues raised by Suleman. The arguments against patent protection, like the arguments in favour of it, are so important that they deserve to be put at their strongest and to be substantiated as far as possible by any available evidence. Only once the arguments on each side are clarified and strengthened can a meaningful debate begin.

European Copyright Society tells Oettinger that EU should go for full harmonisation of copyright

A little bored by all these holidays,
at last Douglas McCarthy's Pushkina
had some fun reading the ECS letter
Via Katfriend Prof Bernt Hugenholtz (University of Amsterdam, IViR) comes the festive news that the ever active European Copyright Society (ECS) - launched in 2012 and composed of leading European copyright scholars with "the aim of creating a platform for independent and critical scholarly thinking on European copyright law" - sent Commissioner for Digital Economy and Society, Günther Oettinger, a letter shortly before the holidays. 

The subject-line? "Unification of copyright law". 

Fans of the recent  Public Consultation on the Review of EU Copyright Rules [herehere, herewill surely remember that the ECS took part in this stakeholder exercise, holding the view that the EU should go for full harmonisation of Member States' copyright laws [incidentally and albeit much more modestly, this is also the position that this Kat advanced, first, in her PhD dissertation and, then, in the book that she derived from her doctoral work].

In its letter to Mr Oettinger, the ECS re-affirmed this view, underscoring "the need for a more forward looking and further reaching reform of copyright in the EU – in the form of actual Union-wide unification (not further harmonization) of copyright. The Members of the European Copyright Society are convinced that the time is now ripe to start work on a European Copyright Law that would apply directly and uniformly across the Union."

And a Happy New Copyright Year as well?
Why is this the case? 

Because "[d]espite almost 25 years of harmonization of copyright in the EU, copyright law in Europe has essentially remained national law. Each Member State still has its own law on copyright and neighbouring (related) rights that applies strictly within its own territory. This territoriality has led to fragmentation of markets along national borderlines, critically impeding the establishment of a Digital Single Market for creative content, and undermining the Union’s international competitiveness."

Initiatives like Licences for Europe [here] and the recent Collective Rights Management Directive [here] (yet the latter only with regard to online uses of music) have focused on multi-territorial or pan-European licensing. Although initiatives of this kind are not a bad idea per se, they are are said to only provide a limited solution to the issues raised by territoriality/fragmentation of copyright laws.

The legal basis for full harmonisation of copyright at the EU level may be Article 118(1) of the Treaty on the Functioning of the European Union, which has been there since the 2009 Lisbon Reform Treaty.

In the view of ECS, a European Copyright Law would:
  1. establish a truly unified legal framework, replacing the multitude of – often opaque and sometimes conflicting – national rules that presently exists;
  2. have instant Union-wide effect, thereby creating a single market for copyrights and related rights, both online and offline;
  3. enhance legal security and transparency, for right owners and users alike, and greatly reduce transaction and enforcement costs, including those resulting from the still pending issues of jurisdiction and applicable law to copyright infringements online [with regard to the latter, this Kat recently had a little contest with her Southampton students which consisted of analysing the decision of Birss J in Omnibill, here. The best entry was by Nedim Malovic and will be published soon in the Journal of Intellectual Property Law & Practice];
  4. enable the EU legislature to reestablish itself as a global leader in copyright norm setting.
Shortly before the December break, Mr Oettinger announced that his first initiative as a Commissioner will be copyright reform [here] ... We'll see if he agrees with the views expressed by the European Copyright Society.

Friday, 26 December 2014

Friday fantasies

A personal thank-you.  This Kat was overwhelmed yesterday by the large number of kind messages sent to him as custodian of this weblog, from people wishing the blog and its team a happy 2015 to those asking for "more of the same" and even one thoughtful soul hoping that we'd get things "a bit more right" than we have in 2014.  This Kat also received many happy birthday greetings from friends, colleagues and readers -- greetings which, had there been fewer, he would have responded to in person. Thanks, all of you, he says, from the bottom of my heart.

Three little kittens with
blogging mittens ... *
New Kats are coming.  This is a reminder that, every six months, the IPKat weblog says "goodbye" to its three guest-Kats-in-residence and welcomes three new guests to join the team for the same duration.  As the clock strikes midnight on Wednesday 31 December we shall be losing Rebecca Gulbul, Lucas Michels and Marie Andrée Weiss, but we will be simultaneously unveiling our three new guest Kats. Who will they be? You won't have long till you find out: a blogpost will go live at 00:01 on Thursday 1 January 2015 with all their details.

Where are they now?  Taking a cybertrip down memory lane, this Kat clicked through to the Intellogist's list of intellectual property blogs.  Visits to this list used to be a regular occurrence when IP blogging was still in its relative infancy, and it was sometimes a salutary experience to check the list and click through to some of the IP weblogs listed there in order to find out (i) who was blogging IP issues at all and (ii) who was doing it better than the Kats and therefore had something to teach them.  Today's visit was a rather sad one since the list now contains many excellent IP weblogs which, for one reason or another, have ceased to function, in some cases several years ago.  The IPKat hopes that when, one day, some lucky PhD student is given funding and time to research into IP literature and its impact in the age of the internet, some good explanations may emerge as to why some blogs died while others thrived.

Great product, but
should we protect
it even when the
child grows up?
Around the weblogs. The 1709 Blog reports on what looks like a major breakthrough in Italy, where the tranquility of SIAE's monopoly as a rights management and collecting society has been shattered by a Court of Milan ruling that, under EU law and notwithstanding anything to the contrary in domestic Italian law, there is no legal way that Soundreef can be blocked from providing competing rights management services. On the jiplp weblog there's an analysis of the Court of Justice of the European Union's latest "clarification" of European law on the registration of product shapes as trade marks in Hauck v Stokke, the "Tripp Trapp" chair case.  Those who subscribe to the Angora Cat theory of patents in Europe [on which see Katposts here and here] may be interested to see that it has an American analogue in the Theory of Malleability of Patent Rights to which Jason Rantanen makes allusion on PatentlyO here, Finally, and particularly if you like something a little different, why not take a look at Dear Rich: An Intellectual Property Blog, which offers to answer readers' questions (these being under US law) but which is useful if you are an IP professor who is running short of good problems to set for your students (see examples here and here).

Red Poppies on Monte Cassino
Not-so-national anthems. From Poland's Bogusław Wieczorek comes a comment on the information, guaranteed to stir the soul of every nationalist and to pique the interest of every copyright enthusiast that "Royalties for Playing Unofficial National Anthem of Poland Go to Germany". You can read Boguslaw's piece on "Red Poppies on Monte Cassino" on his weblog Własność intelektualna w praktyce, here.  This got this Kat thinking.  He recalls that the official national anthem of the United Kingdom (listen to it here) is said by musicologist Percy Scholes to be traceable back to the theme in the "Sarabande" of biological German Georg Friedrich Händel's Suite No.4 in E minor, HWV 429, composed some time before 1720. Not content with taking the tune, the British took Händel as well and then anglicised him by removing his umlaut. However, the tune is so well disguised that this Kat wouldn't have connected it to the version we have today.  England's own unofficial national anthem, in some circles at any rate, is Sir Edward Elgar's Pomp and Circumstance March No.1, matched with lyrics consisting of the chorus of "Land of Hope and Glory" (here). Elgar was greatly inspired by German culture and his work was more warmly appreciated in Germany than on his native soil.  The tune for Germany's own anthem, the Deutschlandlied, originated with an Austrian composer, Joseph Haydn.  All of this leads this Kat to ask: do many countries opt for anthems composed by foreigners and, given the number of nations that have obtained independence in his own lifetime, can anyone point to modern composers who are enjoying a stream of royalty income from the use of their music as anthems in foreign countries?

* Detail from Paul Galdone's "Three Little Kittens" on Read Me a Story

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