For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Thursday, 2 October 2014

Two new ways to file at the EPO

The current EPO online filing software, whose days are numbered...
The European Patent Office) EPO has publicly launched two new filing systems, which were in pilot testing until now. In due course these systems will replace the EPOline filing software currently used by most European patent attorneys (shown right). The first is called the case management system (“CMS”) and the second is the web-form filing service (which the IPKat will refer to as “WFS” for brevity).
Both new systems, CMS and WFS, are accessed via the web. However, they differ in two main respects, at least according to the respective Decisions of the President governing their use, found here and here.
  1. CMS requires an EPO smart card. Your current smart card will work, once it has been activated for use with CMS. WFS requires registration via the website, but no smart card, and relies on a secure http connection.
  2. CMS allows filing of a broader range of documents than WFS. The only documents excluded from filing with CMS are priority documents and documents relating to appeal proceedings or Enlarged Board review proceedings. WFS cannot be used for these documents or for filing documents in opposition, limitation or revocation proceedings, or for filing authorisations. Both systems can be used to file PCT applications and subsequent documents also.
This Kat has used CMS in a pilot version, but not WFS and so cannot compare the two directly, but it looks like CMS will be the preferred option for the more frequent user, due to its integration with the mailbox linked to the smart card, the wider range of documents that can be filed and the more secure and robust filing and confirmation process. Nevertheless, if one is working remotely from one’s smart card (or a computer lacking the not-very-friendly card reader software), it is reassuring to know that there is a web-based filing service that will allow most documents to be accepted.

Since you ask, the pilot testing suggested to this Kat at least that the CMS system is stable, easy to use, and a promising replacement for the existing software. (Merpel says, if only OHIM had taken time to check these basics before inflicting its web filing system on users last year... By the way, is OHIM's interface working 100% reliably for everyone yet?)

The ultimate goal of the EPO is to phase out the existing EPOline filing software and replace it entirely with the web-based solutions of CMS and WFS. As far as the IPKat is aware -- and he will be happy to correct this information if it is outdated -- the plan is to release CMS version 2 in the middle of 2015 and this will trigger a two-year countdown to withdrawing support for the existing software.

Web-form filing system
Since no launch would be complete without an accompanying press release, here’s what the EPO has to say about the new services:
Continuing to improve the quality of services to its users by establishing a one-stop shop for applicants, the European Patent Office (EPO) today launched a new system for the online filing of patent applications.

The launch marks a new and important step forward to reducing the amount of paper handling by increasing electronic communication between the applicant and the EPO. It opens the way to further minimising human interaction in administrative handling of patent applications with the aim of improving the quality of data used and services offered by the EPO and to enhancing the efficiency and timeliness of the procedure.

"The launch of the new online filing system version 1.8 today constitutes a further significant move on the way to modernising the EPO's IT services as agreed with our member states," said EPO President Benoît Battistelli (presenting the new system for the first time to users yesterday in Stockholm). . "Following on to the successful launch of the mailbox, the new system supports the overall strategy of the Office to equip the European patent system with the best possible IT environment in order to reduce administrative costs for applicants. It also helps to align the European and PCT procedures under the same tool," he added.

Accessible through a browser interface, the new online filing system is web-based and does not require any installations or security updates by the user, which responds directly to a long-standing request of patent applicants. It fully supports patent applications filed both under the European Patent Convention and the Patent Cooperation Treaty, also including subsequently filed documents for both procedures. The new system includes two new online services: new online filing (CMS), which allows you to file applications in a Web-based application accessible from your browser; and web-form filing, which allows you to upload and submit Annex F-compliant PDF documents.

The modernisation of the EPO's granting process is a pillar of the Office's "IT Roadmap" adopted in 2011. The introduction of new tools at the EPO became necessary as the current systems used in the process were reaching the end of their economic shelf live and needed to be replaced by a new generation of technologies which will also help to better align the European and PCT application procedures. The aim of the roadmap is to improve the EPO's services for its users, and minimise manual intervention for the benefit of a higher patent quality through better patent data and greater timeliness of the procedure. The new online filing system will be gradually enhanced with additional services over the coming months.

Wednesday, 1 October 2014

The Great British Vanishing Act Part 2: where has home-grown patent filing gone?

Last month, in "The Great British Vanishing Act: where has home-grown patent filing gone?", Peter Arrowsmith (partner in London-based patent attorneys Cleveland) opened what turned out to be a lively debate as to whether current statistical trends are describing the end of the British inventor or can be explained by other, less depressing reasons.  In the post below, Peter responds to some of the hypotheses that have been offered for an apparent decline in UK patent filings by UK applicants that does not seem to be reflected by filing figures for some of the UK's closest trading partners.  This is what he says:

In my recent post I shared my discovery of an apparent decline in the number of UK patent applications filed by UK companies.  This article provoked some stimulating debate and interesting comments, some of which is set out below.

The key trend can be understood with reference to the graph below, which shows the number of patent applications filed by UK applicants in the last ten years.  
The graph reveals a steady year-on-year reduction in the number of UK patent applications filed by UK applicants.  In fact, the figures for 2013 are around 25% less than those of 2003.  However, the figures for European and Patent Cooperation Treaty (PCT) applications filed by UK applicants remain reasonably stable over the same period. 

The reason for the decline is not immediately apparent, and it is likely that a number of factors will be influential.  It could be an interesting area of study to analyse the relevant applicants on a case-by-case basis and investigate the pressures causing a change in patent filing behaviour.  In the absence of this research we can only speculate on possible causes, and I provided a number of possibilities in my previous post.  Some contributors have suggested further possible explanations, which are outlined below. 

Security Provisions – Section 23 of the Patents Act 
Many practitioners will recall that Section 23 of the Patents Act 1977 was amended on 1 January 2005 as part of the Patents Act 2004.  The amendments relaxed the restrictions on filing patent applications abroad by UK residents.  Before 2005 all patent applications made by UK residents had to be filed first in the UK, or else a foreign filing licence was required.  In practice, foreign filing licences were rarely obtained because it was easier simply to file applications first in the UK and then file other applications if no secrecy order was issued within six weeks.  
After 2005 the foreign filing restrictions applied only to patent applications containing information relating to military technology, or for patent applications the publication of which might be prejudicial to national security or public safety.  Although there is some vagueness in the extent of these restrictions, it is clear that they should not apply to the majority of patent applications.  The amendments therefore enable direct foreign filing for many patent applications. 

The relaxation of Section 23 of the Patents Act could have some influence on the reduction in the number of UK patent applications.  In particular, some applicants may file applications directly in the US and/or at the European Patent Office (EPO).  One advantage in filing early at the EPO is to receive an early European search.  However, other applicants may still prefer to file first in the UK in order to maximise the potential term of their European patents. 
A Shrinking UK Industrial Base and/or Transition to a “Knowledge Economy” 
Some commenters have suggested that the reduction in UK patent filings could be related to a shrinking industrial base.  It is debatable whether this change in the UK economy has actually occurred in the period under consideration (2004-2013).  In addition, even if it has occurred then it fails to explain why the number of European and PCT applications has remained stable.  In my view, this suggestion cannot be a complete answer. 

Another suggestion has been a change in focus in the UK economy from traditional industry towards software.  In this case one may not observe a shift in the technological areas in which patent applications are filed because of the difficulty in obtaining UK and European patent protection for software inventions.  It is certainly true that some of these inventions are filed as patent applications only in the US, especially since the amendments to Section 23 of the Act relax the requirement for filing first in the UK. 

It has also been suggested that technology cycles are shorter in software industries, which drives up the cost of patent applications in relative terms, and therefore reduces their number.  This may be true, but the proliferation of software patents in the US demonstrates that there is still commercial value in protecting these types of invention. 
A European malaise?  
Other commenters have questioned whether the statistics for the UK are symptomatic of a general decline in patent applications by European countries.  An analysis of data from the EPO suggests that this is not the case.  The graph below shows the number of European patent applications (direct European applications + PCT applications entering the European regional phase) filed by applicants from the UK, France and Germany.  
Applications from the UK appear to be stable, whereas applications from French and German applicants have increased.  The absolute number of applications is also significantly lower from UK applicants, especially in comparison with Germany.  

None of this seems like good news from a UK perspective.
This blogger suspects that the debate is far from over. For one thing, it might be worth taking a look at grants. If the overall figure for applications is continuing to slide but granted patents are on the increase or holding their own, for example, the decline might be attributable to better filtering out of likely unsuccessful application by the aspiring applicant's professional representative.  And while there are no handy statistics available, might it be that some British businesses -- anecdotally less averse to risk than some of their competitors elsewhere in Europe -- are viewing features such as first-to-market, strong trade mark protection or confidentiality as offering better returns on their investment of limited resources?

The IPKat and his friends: time for an update

Every three months, the IPKat and Merpel give an update of the goings-on both on this weblog and on other IP-flavoured blogs to which members of this blog team also contribute.  This time round, the Kats welcome a large contingent of newly-enrolled postgraduate and undergraduate students of intellectual property law, as well as trainee attorneys and solicitors who may be experiencing it for the first time. In welcoming you, we hope that you will gain a well-based appreciation of intellectual property and the laws that affect it. We also hope that this appreciation will embrace both the strong points of IP law and practice and those areas in which it is deficient, needing legislative amendment or, in less serious cases, a double dose of common sense on the part of the system's users.


This weblog has now received over 10.7 million page views and -- unless it suddenly becomes highly unpopular -- should break the 11 million barrier this month. Nearly 8,800 individual blogposts are online and can be searched via the blog's search box at the top left hand corner of its home page.  The number of readers receiving Katposts by email is, at the time of writing, 10,541, and this blog is pursued by over 9,100 followers on Twitter at @Ipkat. The most frequently-visited blogpost remains Catherine Lee's June 2011 item, "Goodbye Cathy: Hello Kitty and Miffy settle copycat case", here, which has been visited more than 239,000 times.

Kat team  news

All regular team members and guest Kats are currently fully functional, which is good news since the period leading up to the end of the calendar year is traditionally a very busy one.

We already have a shortlist of six potential guest Kats for the period 1 January to 30 June 2015, from which three candidates will be chosen to join the team for a six-month period.


The Kat's blog friends. Every few months this weblog lists, in no particular order, a number of IP -flavoured weblogs with which members of the IPKat's blogging team are associated. If you've not yet come across them -- and many of our more recent readers probably have not -- we hope that you will find some merit in them. For the avoidance of doubt, this list only relates to IP blogs to which Kat team members contribute: it is not intended as an exhaustive list of intellectual property blogs, or of blogs that have received our personal blessing. That's why there are plenty of IP blogs that are not listed, even though we know about them, like them and often read them!

At the top of the list, let's mention t wo blogs that are solely written by our current guest Kats.  One is The IP Exporter (Protecting Intellectual Property Rights in a Globalized Market) by Lucas S. Michels; the other is Maw-Law, by Marie-Andrée Weiss.

Class 46, founded by friends of European trade mark organisation MARQUES and driven by a big team of international contributors, delivers trade mark and brand-related news and developments from across Europe ( As of today, this blog has no fewer than 4,106 email subscribers and a searchable database of over 3,800 items -- mainly relating to European case law and office practice but with coverage of plenty of other themes too, including plain packaging of tobacco products and the latest WIPO and OHIM initiatives for assisting users of the international and Community trade mark systems. Kats Jeremy and Birgit both contribute to this blog, as do former guest Kat Laetitia and emeritus Kat Mark Schweizer.  
Class 99, founded by patent and trade mark attorney and blogmeister David Musker, is dedicated to design law and practice in the UK, in Europe and beyond ( This weblog is now part of the MARQUES social media family along with Class 46. It has 1,304 email subscribers and a searchable database of nearly 600 items.  New blog team contributors are earnestly sought from among the ranks of those who are either MARQUES members or work for a company or firm that belongs to MARQUES.
Incidentally, Class 46 and Class 99 are just one small but significant part of MARQUES's social media presence. Posts on both blogs are usually recorded on MARQUES's Twitter account at and all sorts of items concerning trade marks, brands and designs are likely to end up on MARQUES's Facebook page at MARQUES also has a very busy and carefully moderated LinkedIn discussion group, with well over 3,000 members.

The 1709 Blog, which caters for the copyright enthusiast and seeks to cover all aspects of copyright law and practice in all its rich and varied glory ( As of today, this blog has 2,218 email subscribers and a searchable database of over 1,850 items. It has a large and international team of contributors: Glastonbury Festival's Ben Challis, IPKat bloggers Eleonora and Jeremy and recent guest Kat Alberto Bellan, Professor Mira T. Sundara Rajan, John Enser (Olswang), Patrick Goold, Iona Silverman (Baker & McKenzie) and our man in Paris, Asim Singh. You can follow this blog on Twitter, here.
The SPC Blog is a handy information source for anyone who is involved in the tiny but controversial and highly lucrative world of supplementary protection certificates (SPCs) for pharmaceutical and plant protection patents, as well as other forms of patent term extension ( As of today, this blog has 1,935  email subscribers, many of whom have enriched the content of this weblog with their comments and through the provision of information concerning SPCs. This blog contains over 560 items, including English translations of some European national decisions that are not available elsewhere.  Incidentally, The SPC Blog organises an annual seminar, which is free to all comers and provides a great opportunity for pharma patent-owning companies, generics, private practitioners and patent office functionaries to get together and compare notes.
PatLit tackles patent dispute resolution topics -- principally litigation -- not just from the UK but from wherever interesting news and comments emerge. As of today this blog, whose contributors include Michael Thesen, former guest Kat Stefano Barazza and David Berry, has just under 1,400 email subscribers and a searchable database of over 860 items.
IP Finance, which was launched in January 2008 in response to the UNCITRAL initiative on security interests in intangibles, touches that delicate interface between intellectual property and the world of finance, addressing securitisation, valuation, royalty rates, assessment of damages and the evolution of new business plans ( As of today, this blog has 1,479 email subscribers and a searchable database of nearly 1,200 items. Kats Neil and Jeremy write for this blog, which is also garnished with content from academics Mike Mireles, Andrea Tosato and (F)RAND expert Keith Mallinson (WiseHarbor).
jiplp is the blog of the leading Oxford University Press monthly publication, The Journal of Intellectual Property Law and Practice (JIPLP), which IPKat team member Jeremy (, with assistance from Deputy Editor Eleonora. As of today, this blog has 926 email subscribers and a searchable database of over 500 items. This blog's content includes Current Intelligence notes, book reviews, requests for articles on specific topics and occasional guidance as to how to write (or not to write) good IP articles. There's an active and carefully moderated LinkedIn Group for JIPLP contributors and readers with over 230 members, which you can see here.  You can also follow this blog on Twitter here.
Afro-IP (, for which the blogmeister is Darren Olivier, deals with the IP scene in Africa. As of today, this blog has 842 email subscribers and a searchable database of nearly 1,700 items. This blog, which offers the largest single searchable online source of recent African IP news, features Caroline Ncube, Jeremy Speres, Isaac Rutenberg and Chijioke Ifeoma Okorie within its blog-squad.  Afro-IP can be followed on Twitter here.
IP Tango (, which is a bilingual blog with contributions both in Spanish and English, covers the increasingly important developments for IP in Latin America. As of today, this blog has 506 email subscribers and a searchable database of over 1,350 items. Like Afro-IP, IP Tango is a major source of intellectual property information and comment in its increasingly important area of focus.
Art & Artifice ( As of today, this international weblog, which includes Simone BlakeneyRosie BurbidgeRachel BukerAngela Saltarelli and Elizabeth Emerson, has 527 email subscribers and a searchable database of 436 items. Its scope is broad enough to cover not merely intellectual property law but other areas of legal concern for artists and the art-driven industries. Art & Artifice recently launched a Twitter presence that is followed by nearly 200 readers.
Recently revitalised and still picking up momentum is SOLO IP, which reflects some of the interests, and the anguish, of those who practise IP by themselves or in small groups, or who work in environments in which they are the only IP people ( As of today, this blog -- which is driven by blogmeister Barbara Cookson (Filemot Technology Law Ltd), has 259 email subscribers and a searchable database of 400 items. This blog warmly invites expressions of interest from would-be bloggers (on which see 'Would you like to be an IP Blogger' below)

Would you like to be an IP blogger? Most of the weblogs listed above are still hoping to recruit some fresh talent into their blogging teams, as well as to host more good guest items from occasional writers. If you (i) have something valuable to say about IP, (ii) have some experience of IP in one form or another and (iii) think that you may be able to turn your hand at blogging (or already have some experience), do email Jeremy at, attaching or linking to your CV, and explain why you think you might be a good blogger.

Tuesday, 30 September 2014

That IPEC book: a review

This review of Intellectual Property Enterprise Court: Practice and Procedure is brought to you by Katfriend, fellow blogger and IP enthusiast Kingsley Egbuonu, who tweets at @KingsleyEgbuonu.

Kngsley first became fascinated by this court's predecessor, the Patents County Court (PCC), in 2011 when he assisted a private individual facing a copyright claim (the book reviewed here would have been useful to him back then: you can read his cry for help here).  Then, in 2013, he spent half a year researching into the effects of the Jackson Review of Civil Litigation Costs on litigation on the PCC, seeking to ascertain whether the reforms achieved the key objectives. This research also included the gathering of empirical evidence (via a survey) from IP practitioners who had conducted litigation before the court. The survey (which gathered 30 responses) was supported by the IPKat here.

This is what Kingsley writes:
To know how to conduct effective litigation in the Intellectual Property Enterprise Court (IPEC) for England and Wales, parties and/or their legal representatives need to consult a number of primary and secondary sources including various parts of the Civil Procedure Rules (CPR) and case law, particularly that of IPEC's predecessor, the Patents County Court (PCC). For a busy IP practitioner, this arduous task has now been made more comfortable with the publication of Angela Fox's Intellectual Property Enterprise Court: Practice and Procedure.
First, the book’s delightful and luxurious colour would brighten up your bookshelf, and it has a somewhat feel-good vibe to it. A busy practitioner would be very pleased to see that the Table of Contents and Index are both functional. The book is divided into ten seamless chapters, each of which comes with headings, subheadings and numbered paragraphs for added ease of navigation and reference. The spacing between paragraphs makes the each page readable and the footnotes are concise. There are 14 appendices at the back of the book.


There is no better way to start a book on the IPEC than to feature forewords by Mr Justice Birss and Judge Hacon, both of whom were also present at the book launch.

Left to right (above): Judge Hacon and Mr Justice Birss;
(below): Angela Fox and Judge Fysh, both of whom are standing
Moving beyond the forewords, the main content of the book is packed in 392 pages, or less, if one wants to strictly focus on the practitioner. Each chapter, save for chapter 1 which deals with IPEC’s history, begins with a brief introduction of its subject matter before dealing with common issues addressed within it. Chapters 2 and 3 guide the reader on how to plan a case, leaving chapters 4 to 9 to focus on covering all the common procedures and issues in a multi-track case in the IPEC. Chapter 10 is dedicated to the special procedures of the small claims track (SCT).

Restricted costs recovery and tighter judicial case management are the two most important features of the IPEC which are of the greatest concern to parties and/or their legal representatives. This book deals generously with them, particularly in chapters 5 (case management); 7 (evidence, experiment and disclosure); and 9 (costs).

There are many things that I admire in this book, but I will just state two. The first is that it makes use of examples such as draft Orders and statements of case. It also tells the reader which forms to use for applications (chapter 6), how to assist the court in managing the case, and how to minimise the risks of costs consequences; it also notes in various places the similarities and differences between the IPEC and other units within the High Court: the Patents Court and, generally, the Chancery Division.

The second, and more important, is that it explains the court’s approach on all the issues covered. For example, under the chapters for case management and applications, the reader will understand the importance of the case management conference; under the costs chapter, the reader will learn that the court will closely scrutinise costs incurred in case under each stage at summary assessment. Generally, the book offers clear practical guidance and commentary rather than merely regurgitating case law and/or rules. Where there is little or no guidance, the book cautiously offers a practical solution to the problem or issue. In some ways, the book can be described as expanding on or filling the void left by the IPEC Guides. The section on Norwich Pharmacal orders (see paragraphs 3 – 051 to 3 - 052) reminded me of Wilko Retail Ltd v Buyology Ltd [2014] EWHC 2221 (IPEC), 7 July 2014 [noted by the IPKat here].
The book is up-to-date as there have not been any significant changes or developments in law or rules since 22 April 2014. 
 Perhaps, the only real criticism, if one is to be pedantic, is that there are a few overlaps in various parts of the book, though this could be due to the interlocking nature of the IPEC regime. 

The book is written in a clear, concise and functional style which gives it a wide appeal. Aside from the obvious readership of IP practitioners, litigants in person -- especially those in the SCT -- should find this book incredibly helpful in handling very low value matters themselves. Law schools and legal advice clinics should also get a copy. Finally, this book would also serve as a blueprint for foreign Ministry of Justice officials or policy makers interested in adopting the IPEC model.

The bottom line

Angela Fox’s main mission was to explain the practice and procedures of the IPEC; she accomplished this task brilliantly using, among others, her experience as a practitioner, case law authorities and relevant parts of the CPR. Reasonable care was taken to remain within scope and, where necessary, reference is made to other texts for guidance. As she rightly points out on the first page, the book is designed to be used in combination with the current version of other sources including the IPEC Guides.

For a busy IP practitioner conducting litigation before the IPEC or one intending to do so for the first time, this book is the ideal reference handbook. At the moment, ‘Fox on IPEC’ is undoubtedly the seminal work on how the IPEC works.

Warning for Amazon purchasers: the best piece of advice I took away from the book launch is to search for “intellectual property enterprise court” instead of “Angela Fox”. Fail to heed this warning and you will encounter some titles with a less rigorous legal content (e.g. here and here) ....
Publisher: Sweet & Maxwell, ISBN: 9780414028685, Hardcover, 545 pages, Price: £175). No serious rupture risk.  Web page here.

Trademark Infringement Plaintiff Sees Red (Gold), Defendants Claim Genericness

Compatriot, fellow member of the New York Bar, and, last but not least, former Kat, Laetitia Lagarde kindly pointed out to me this very interesting case. Thank you very much Laetitia, as, thanks to you, I keep building my case to be exclusively known as the “Bling Kat”!

Indeed, we are back in the glamorous world of jewelry and trade marks. In this case, Plaintiff Solid 21 owns the registered trade mark RED GOLD® for, inter alia, fine jewelry and watches “made out of a special alloying of gold with a distinct color.” Plaintiff has used this trade mark in commerce in connection with the design, manufacture, marketing and advertising of fine jewelry since 1996. The RED GOLD® trade mark is incontestable since August 2009.

Plaintiff first filed suit against Louis Vuitton and several of its subsidiaries in 2011, claiming that they knowingly, or alternatively, negligently, used “red gold” in their marketing, advertising and sales of their product line of fine jewelry.

Plaintiff filed an amended complaint on January 13 of this year, alleging trademark Infringement, unfair competition and false description in violation of both the Lanham Act and California law. Defendants moved for summary judgment, but Judge Dolly Gee from the Central District of California denied it on September 29. The case is Solid 21 Inc. v. Hublot of America, et al., cv 11-00468.

Defendants argued that “red gold” is generic and thus cannot be a trade mark. The Ninth Circuit defines generic terms as “names which describe the genus of goods being sold.” Some trade marks become generic when the public no longer recognize them as an origin of goods, such as “aspirin,” which used to be a Bayer Co.’s trade mark, while others should not have been registered as a trade mark in the first place, as Defendants claim in our case. Plaintiff argued that the genus of the goods in this case was “watches” but Defendants argued it was “jewelry” and the Court agreed with Defendants.
This Red and Gold Cat Does
Not Like to be Called "Generic"

Defendants bear the burden of proving that a registered trade mark is generic, and the Ninth Circuit applies the “who-are-you/what-are-you” test to find out whether a particular mark is generic or not. Under that test, a mark answers the consumers’ questions “Who are you” “Where do you come from?” “Who vouches for you?” whereas the generic name of a product answers the question “What are you?”

Judge Gee noted in a foot note that in cases such as this one “where there is undisputed evidence of generic use of the term for decades before it was trademarked and no evidence of a non-generic meaning before the trademark holder entered the market,” the date when the trade mark holder entered the market is the date which must be considered to determine whether the mark is indeed generic. Therefore, the Court looked for evidence of use for “red gold” for jewelry in dictionaries, media, and industry.

The Ninth Circuit gives “significant but not controlling weight “to dictionaries when analyzing genericness of a trade mark and both parties argued over the admission of several particular British and American dictionaries as evidence that “red gold” is generic or not, as some provided a definition for “red gold” while others did not. The Court concluded that such evidence did not weigh in favor of Defendants.

Defendants also provided numerous examples of the use of “red gold“ by other jewelry companies, jewelry trade journalists, and jewelry trade associations, to describe reddish-colored gold, even as early as the late 19th Century. They also argued that at least ten patents which have been filed in the U.S from 1919 to 2003 use the term “red gold” to refer to a type of gold used in jewelry or watches.

A Plaintiff’s industry expert testified that she had never bought or sold a watch or a piece of jewelry described by the customer as “red gold” and the Court concluded that this testimony gave some support “albeit weak” to Plaintiff’s argument that consumers do not use “red gold” as a generic term.

Judge Gee concluded that there is a triable issue of fact regarding genericness based on the testimony of Plaintiffs’ experts and evidence of media usage of the term red gold in a non-generic manner, even though such evidence amounts “to slightly more than a “scintilla.””

The case will now likely go to trial.

A new website for UK IPO, and an event to explain everything

With autumn already among us, it is time for a general season makeover. While embracing the new beauty trends, you may also want to embrace the idea that, starting 6 October, the UK Intellectual Property Office (IPO) will have a new website.

First launched in the same year when Blur released Song 2 and Tony Blair became the youngest Prime Minister since Lord Liverpool in 1812, the IPO website has seen many changes over the years and has become an invaluable resource for all those working in or just interested in UK IP.
To help its customers with the move, the IPO has produced a short video to outline the main changes.
In addition, on 2 October [that is on Thursday] the IPO will hold 30 minute awareness sessions to demonstrate the new website and its key features, with Transition Team being on hand to answer any questions you have. The event will be held at 88 Kingsway, London WC2B 6AA, and will have 4 sessions at 10am, 11:30am, 1.30pm and 3pm.
To register your interest in attending, please email  stating your preferred session time. Ideally, please include the number of people you expect to attend from your organisation.

Monday, 29 September 2014

Never too late: if you missed the IPKat last week

Last week was a little quieter than usual in terms of quantities of Katposts, as can be seen from the relatively short list compiled by the unceasingly diligent Alberto Bellan.  So here's the thirteenth in our series of weekly round-ups, designed to help you spot the most important posts for you if you were away from your computer last week but want to know which items are still worth your while to pursue:

Statistics from the UK Intellectual Property Office reveal a downward trend in the number of patent applications filed by UK applicants, while corresponding numbers of European and PCT applications remain relatively stable. Jeremy gives the floor to Katfriend Peter Arrowsmith (a partner in London-based patent attorneys Cleveland), who investigates the reasons for this diminished appetite, while readers enthusiastically participate with their comments.

* Towards an Electronic Devices Flea Market in the Cloud? YODA says…YES!

U.S. Representative Blake Farenthold has introduced a bill in Congress, the Your Own Devices Act (YODA), which would amend Section 109 of the Copyright Act by providing that the first sale doctrine applies to any computer program enabling a machine or another product to operate. Marie-Andreé explains what the possible enactment of YODA would entail for the US digital market and consumers, also in light of relevant US case law upon digital goods exhaustion. 

* Would you believe? A view of what innovation will look like in 2025

On the basis of scientific literature and published patents, drafted a report called “The World in 2025—10 Predictions of Innovation”, listing 10 innovative tendencies that could characterize our future. Neil seizes the chance to reflect upon the role of patents and trade secrets in providing information about cutting-edge developments -- are they more teleporting than scientific literature?

* 5 seconds of contact time is sufficient, says Arnold J

David reports on Compactgtl Ltd v Velocys Plc & Others [2014] EWHC 2951 (Pat), an Arnoldian decision of the Patents Court, England and Wales. This case concerns patent infringement and validity in the field of catalysts for hydrocarbon conversion and contains couple of interesting points on correction and amendment.

* Cigarette Trade Marks and Logos May Go Up in Smoke in France

The shameful and illiberal crusade against those who freely decide to smoke and lawfully sell smoking products continues. In this episode of the series [which Alberto suggests rebranding “The Smoky Decline of Western Liberties”] Marie-Andreé reports that the French Health Minister intends to order that all the cigarette packages must have the same shape, size, colour and typography. Steps toward neutral packages have been made in the UK and EU, and IP is as involved in this issue as constitutional freedom of choice. 

* (Red Nose) Day In Court

In some countries, Red Nose Day is an annual telethon to raise money for charity. Some people wear the red nose as a sign of their support of the charity. Similar initiatives take place in other parts of the world. In Australia, the “Red Nose” trade mark is being litigated in proceedings concerning, among other things, non-use. Rebecca tells us how it is going.

* Private copying levies in Spain and that new CJEU reference

As reported by this blog, last week the Spanish Supreme Court referred two questions to the Court of Justice of the European Union, asking whether fair compensation for private copying secured through annual public grants via the State budget complies with Article 5(2)(b) of the InfoSoc Directive. Eleonora leaves the floor to Katfriend Javier Ramirez, who explains the preliminary views expressed by the Spanish Supreme Court at the time of making this reference.

* Scientology controversy

In Australia and New Zealand, the word ‘ANZAC’ refers to the Australian New Zealand Army Corps, and specifically to the soldiers who served in World War I. That term is also protected under an Australian law, which is something that Scientology most likely did not know when its devotees decided to use the very same term ‘ANZAC’ for one of its fundraising campaigns to build a Scientology centre in Auckland. Rebecca gives us the details. 

Monday miscellany

New team at the top for WIPO. The member states of the World Intellectual Property Organization (WIPO) have given their blessing to the new senior management team proposed by Katfriend and Director General Francis Gurry. According to a WIPO media release, they take up their three-year tenures on 1 December, three calendar months after Francis begins his own second six-year term this Wednesday.  The new appointees and their roles are as follows:
  • Anne Leer (Norway), Deputy Director General, Culture and Creative Industries Sector.
  • Mario Matus (Chile), Deputy Director General, Development Sector.
  • John Sandage (United States of America), Deputy Director General, Patents and Technology Sector.
  • Wang Binying (China), Deputy Director General, Brands and Designs Sector.
  • Minelik Getahun (Ethiopia), Assistant Director General, Global Issues Sector.
  • Naresh Prasad (India), Assistant Director General, Chief of Staff.
  • Ramanathan Ambi Sundaram (Sri Lanka), Assistant Director General, Administration and Management Sector.
  • Yoshiyuki Takagi (Japan), Assistant Director General, Global Infrastructure Sector.
This Kat wishes the new team the best of luck and hopes, for all our sakes, that they do a good job.  He also wonders if this team has been picked with a view to pressing the case for IP reform at truly international level in preference to the plethora of bilateral and plurilateral agreements that nations have struck (or been pressed to strike) outside the framework of global deals. Merpel notes that, if it wasn't for the Arctic fringe region of Norway, Europe would be entirely unrepresented at the top of the WIPO tree ...

New man at the top for GRUR. It is with a mixture of pleasure and excitement that this Kat welcomes the news that his friend Gert Würtenberger, founding parter of the law firm WürtenbergerKunze, Munich, has been elected as the new President of the Deutsche Vereinigung für gewerblichen Rechtsschutz und Urheberrecht e.V. -- the German Association for the protection of Intellectual Property (better known by its acronym GRUR).  In recent years GRUR has become a much more outgoing organisation, in particular supporting the shared seminars in which its GRUR Int publication and Oxford University Press's Journal of Intellectual Property Law & Practice (of which Gert is a founder member of the Editorial Board and a valued contributor) have provided a platform for airing different legal and cultural perspectives. Gert takes over from another friend, the delightful and scholarly Hans Peter Kunz-Hallstein, and this weblog wishes them both the very best for the future.

Media in the Courtroom.  There's a new publication from the European Audiovisual Observatory, Media in the Courtroom, the details of which you can obtain from the Council of Europe's website here.   While the focus of this short (44 page) report is not on the intellectual property aspects of the subject, it nonetheless remains a relevant issue as the need to provide a neutral forum for the administration of justice must be balanced with the individual litigant's right to privacy or, at his option, publicity and the public's interest in being kept informed on matters of public interest. Given its brevity, this work can only skim the surface of this subject -- but it spans both East and West by looking at specific problems that have arisen in Russia, Serbia, Hungary, France and the United Kingdom.

Around the weblogs. Katfriend Alberto Bellan, making his blogging debut for the 1709 Blog team, investigates the constitutionality of blocking injunctions to stop online copyright infringement in Italy, while veteran commentator Ben Challis touches on a surprising subject for rampant copyright infringement: insect photography [Merpel wishes to clarify, after all the fuss about portrait photographs taken by black-crested macaques, that "insect photography" refers to photography of insects, not by them].  On PatLit, Stefano Barazza's thoughtful post on the invalidation of a patent for lip and facial synchronisation of animated characters gives us an insight into life in the United States after Alice v CLS Bank revived the old-fashioned notion that patents are for inventive concepts and not for abstract ideas. On SOLO IP, Barbara Cookson reflects on another fun notion -- the contrast (or is it contradiction?) between ideas being protected and their light inspiring others.  On Class 46, Edith Van den Eede reports on an Italian decision in which the now ubiquitous HAVAIANAS flip-flops give the boot to a figuarative mark bearing the legend HAV@NA CUBA for the same products.

Cometh the patent conference, cometh the discount ...  Back at the beginning of September this Kat spotted that there were two big patent conferences coming up on the same dates: 4 and 5 December.   One is a heavily practice-oriented and truly international event, the 6th International Patent Litigation Conference which was the subject of this Katpost last week. While naturally showcasing the latest European developments, his event takes in patent litigation issues in the United States, China, India, Brazil and the geographically strategic jurisdiction of Turkey.  The other, “Preparing for the Unitary Patent Package”, is a different kettle of fish. Run by the Academy of European Law (ERA) in cooperation with Queen Mary, University of London, it has a focus that is narrower in geographical scope than the IBC eventm being specifically directed to the new patent regime in Europe, but which is not limited to patent litigation since it also addresses the mechanisms for operating the unitary patent system within the European Patent Office, the legal position of supplementary protection certificates and the Spanish challenge to the validity of the system itself.  Like the IBC event, ERA's also offers reductions on the cost of registration: in addition to the 10% early booking discount (for bookings before 4 November) ERA is also offering a special discount of 25% to readers who quote the VIP KatCode 214R06 IPkat. For details of the programme, click here.

Latest WIPO Magazine. Even though it is still September, the October issue of the WIPO Magazine is now available online: you can view it here.  It also comes in French and Spanish [Merpel thinks that this is because the English, the French and the Spanish are the three languages whose speakers are most reluctant to master any other languages, but that's another matter]. Of particular interest to this Kat is the piece by Randy Michels (co-founder of his firm's Trademarkology weblog) on branded hashtags.  This Kat speculates that, once it ceases to be a novelty, the prefix "#" will end up being treated by trade mark granting authorities much the same way as the prefix "www". However, he is happy to hear readers' thoughts on this topic.  There's also a feature of the prospects of a single trade mark law to cover the Gulf Cooperation Council States. The authors, Saba Al Sultani and Rob Deans (both of Clyde & Co LLP) state that this legislation was initially scheduled for enactment in 2006 but was delayed by a spot of  renegotiation. This Kat vaguely recalls it first being mooted back in the late 1980s. Who can come up with the earliest date that this law was proposed?

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