For the half-year to 30 June 2015, the IPKat's regular team is supplemented by contributions from guest bloggers Suleman Ali, Tom Ohta and Valentina Torelli.

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

Friday, 17 April 2015

Le Monde parle - article about the unrest at the European Patent Office

Merpel has received word of an article published by the major French newspaper Le Monde on 6 April 2015, reporting on the industrial unrest and social tensions within the European Patent Office (EPO).  The original article linked appears to require a subscription and is naturally in French, but those good people at SUEPO have published a version with a translation in French and German which you can access on their news page (item of 9 April 2015) here.

The specialist IP press has been reporting on the issues at the EPO, as have regional German newspapers such as the Süddeutsche Zeitung, Merpel has not before seen the wider press pick up on the story.  The wider coverage of the European Patent Office has more prominently featured articles paid for by the EPO or the pointless extravagance and meaningless distraction that is the European Inventor Award.

The Le Monde article makes grim reading.  Recent events are reported thus:
But behind this pleasant façade, word has it that now a different reality prevails on the inside. A poisonous atmosphere, people on the edge of a nervous breakdown, under surveillance, their movements recorded, put under pressure, subjected to productivity targets which keep getting higher and higher. Those who don’t toe the line are told by security to pack up their things with an hour’s notice, and then escorted off the premises. Some of them have been pushed to extremes. One 55-year-old man had to be restrained by the other people in the office when he started banging his head against the wall. Another resorted to self-harming. Still more dramatically, at the end of March a German committed suicide in a public garden in the Bavarian capital. He was on sick leave for depression, and had told close friends about his fear of not being able to meet his targets. On 8 July 2013, a Belgian employee jumped out of the window of his office in The Hague. Two others, a Frenchman and a German, committed suicide at their homes in Munich. Before putting an end to himself, in May 2012 the Frenchman had requested a transfer, claiming harassment by his superior. The German, who had criticised the attitude of the management in dealing with his colleague’s distress, had forthwith been suspended and removed from the premises. He killed himself on 3 September 2014, the day on which he received a letter summoning him before the disciplinary committee. 
On these tragic events, Mr Battistelli is quoted thus:
Using suicides against him is indicative of malicious intent: “I am deeply shocked by these attempts to turn these tragedies into instruments of action. It is too serious a subject for them to break into polemics.” 
The current regime is characterised as follows:
According to Suepo, this economic and legal independence has now been perverted by the arrival of Benoît Battistelli, a 64-year-old alumnus of the prestigious École Nationale d’Administration. The new boss is said to have succumbed to a “spiral of authoritarianism” and “dictatorial tactics”. He is surrounded by a Praetorian guard who are devoted to him, made up entirely of French people who, like him, have come from the French National Institute of Intellectual Property (INPI). Benoît Battistelli is accused, by way of his minions, of having turned the tenth floor of the Munich headquarters into a fortress from which he is remoulding the institution. 
The Investigation Unit also features:
Strictly according to the detractors, the management is using and abusing an “investigation unit” which, at each site, is responsible for looking into any shortcomings. At the headquarters in Germany, this internal police force has been given another name – the Stasi. An internal directive makes it obligatory to collaborate with this unit and to denounce the deficiencies of colleagues, on pain of sanctions. “There have been more disciplinary procedures in the last two years than in the thirty years before”, as one staff representative complained. 
On the other hand, Mr Battistelli gives assurance that “the investigation unit acts with total independence.”
Merpel has noted that, in comments on blogposts on this topic, the high salaries enjoyed by Examiners are given as a reason why they should endure the current conditions without complaint.  This issue is also addressed:
We are aware that our remunerations are more than correct. But at what level of income do human rights no longer apply?” asks one Munich employee. “There is a lead weight dragging this organization down”, maintains Philip Cordery, Socialist Deputy for French citizens abroad. “People working at the EPO regularly inform me of their mistreatment. There is abuse of the extra-territorial status, which is not supposed to equate to impunity.”
Finally, the article refers to the appeal made by the Administrative Council at its March meeting for  the “resumption of social dialogue”.  But it concludes:
 It is by no means sure that this attempt at conciliation will be enough to appease some festering hatreds. The violence of the communications exchanges between the President and Suepo prove that this is going to be a fight to the death between them. 
Merpel hopes that this is not the case, but is concerned that the controversial reforms voted on at the March Administrative Council meeting are apparently being implemented immediately. These reforms, relating to the sick leave and invalidity provisions for EPO employees, were apparently passed with no fewer than 10 abstentions -- including the three major delegations (DE, FR, and UK) together with CZ, IE, IT, MT, SE, SI and SK.  They were also the subject of the acrimonious General Consultative Committee meeting that Merpel reported here.  The reforms are apparently to be implemented before the scheduled meeting with SUEPO that may lead to the trade union recognition that the Administrative Council also called for.  If all of the controversial changes are already made, what value will remain in any later union recognition?  Will there be anything left to consult on?

As ever, Merpel welcomes comments, but begs to remind readers of the following:
Henceforth, in respect of all EPO-related blogposts, no comment will be posted if it is merely ascribed to "Anonymous".  Any reader wishing to conceal his or her identity must adopt a pseudonym (which should not be obscene and should not be the name, or the mis-spelling of the name, of a real person).  The pseudonym need not be an actual login name, as long as it is stated clearly at the beginning and/or end of the comment itself. This way, it will be easier for people who post later comments to identify and remember the earlier comment-poster and to recall the discussion string.  Where, as has already happened on occasion, a string carries over from one blogpost to a later one on the same or a related subject, readers will be encouraged to use the same pseudonym for the sake of continuity.

AG Cruz Villalon says that (absolute) banking secrecy prevents effective enforcement of IP rights

Does banking secrecy prevail over IP enforcement?

In a nutshell this is the issue on which the Bundesgerichtshof (German Federal Court of Justice) is seeking guidance from the ever-active Court of Justice of the European Union (CJEU) in Coty Germany, C-580/13

More specifically, the question that the German court referred concerns Article 8(3)(e) of the Enforcement Directive and reads as follows:

Must Article 8(3)(e) of Directive 2004/48/EC be interpreted as precluding a national provision which, in a case such as that in the main proceedings, allows a banking institution to refuse, by invoking banking secrecy, to provide information pursuant to Article 8(1)(c) of that directive concerning the name and address of an account holder?

Yesterday Advocate General (AG) Cruz Villalon issued his Opinion [although unsurprisingly not yet available in English, the Opinion is available in - among other things - Italian]. He first highlighted that this case requires exploring further Article 8 of the Enforcement Directive, which so far has been dealt with mainly in the context of copyright owners seeking to enforce their rights against users who illegally download (and subsequently share) content from the internet.

The AG advised the CJEU to rule that Article 8(3)(e) of the Enforcement Directive is to be interpreted in the sense that - unlike what the situation is currently in Germany, pursuant to Article 19 of the Markengesetz - Member States may not allow banks to invoke banking secrecy unconditionally to refuse information (requested pursuant to Article 8(1)(c) of this directive in the context of civil proceedings to be brought against alleged infringers) regarding the name and address of the holder of an account. 

Background

Coty Germany holds an exclusive licence for the Community trade mark Davidoff Hot Water. In 2011 it purchased a counterfeit bottle of the relevant perfume on sparkasse.de by using a pseudonym, and subsequently asked a bank, Sparkasse, to disclose the bank details of the seller of the allegedly infringing product. Sparkasse refused invoking banking secrecy.

Litigation thus ensued. Following a victory at first instance, Coty lost in appeal. Eventually the case made its way to the German Federal Court of Justice, that decided to stay the proceedings and seek guidance from the CJEU.

Things get invariably
hot at the CJEU
The AG Opinion

The AG began his analysis by observing that what is at stake in this case is the compatibility of German law with Article 8 of the Enforcement Directive. 

As is apparent from Recital 21 in the preamble to this directive, the right of information within Article 8 is instrumental to the guarantee of an effective IP protection. However such right is not absolute, as Member States may pose limitations to its exercise. Although among the possible limitations listed in this provision there is no express mention of banking secrecy, according to the AG this could fall among the relevant limitations for "the processing of personal data" (not protection of confidentiality of information), pursuant to both Article 8(3)(e) and Article 2(3)(a) of the directive.

The AG held the view that a national law like Article 19 of the German Markengesetz has two effects: (1) a direct effect that prevents the effectiveness of the right of information within Article 8 of the Enforcement Directive, and; (2) an indirect effect that adversely affect a fundamental right, this being the effective protection of IP rights as mandated by - among other things - Articles 17, 47 and 52(1) of the Charter of Fundamental Rights of the European Union (Charter).

In turn banking secrecy may fall within acceptable limitations to the right of information, on consideration that the Enforcement Directive is without prejudice to the protection of personal data, whose protection is mandated by - among other things - Article 8 Charter.

To determine whether a national law on banking secrecy is compatible with EU law it is necessary to examine it from a fundamental rights perspective. 

Article 52 Charter provides that any limitation on the exercise of the rights and freedoms recognised therein must be provided for by law and respect the essence of those rights and freedoms. Overall, "[s]ubject to the principle of proportionality, limitations may be made only if they are necessary and genuinely meet objectives of general interest recognised by the Union or the need to protect the rights and freedoms of others."

The latter may be in principle the case of banking secrecy and the protection of personal data of the clients of a bank, pursuant to Article 8 Charter. However, to be legitimate, any limitation to the fundamental right to effective protection of IP rights must meet all the conditions set in Article 52 (and this is for the national court to determine): 

(1) be provided by the law [the AG discussed the meaning of 'law' in his Opinion in Scarlet]
(2) respect the fundamental essence of the rights and freedoms involved [the AG appeared to suggest that this would not be the case of a national law - like the German law - that would make effective enforcement depend exclusively on the waiver - for whatever reason - of banking secrecy]
(3) be adequate and necessary [could Coty Germany obtain the information needed through other means?, wondered the AG] to achieve the achieve the objective pursued; and 
(4) respect the principle of proportionality.

All in all

This yet another interesting case that is likely to have broad implications, considering that the relationship between effective IP protection and protection of alleged infringers' personal data has generated a heated debate in the past few years.

It is also another case in which the CJEU has been called to perform a challenging task, ie provide guidance as to how different fundamental rights should be balanced. In the past the outcome of exercises of this type has been vague statements that have generated more than one headache. 

It is sufficient to recall the 2014 decision in Telekabel [here], in which the Court assessed the compatibility of blocking orders on internet service providers (ISPs) with EU law. While concluding in the sense of their legitimacy, the Court stated that orders must be open-ended (thus disregarding the Opinion of AG Cruz Villalon who had instead taken the view that orders should be specific), and ISPs - while enjoying the fundamental freedom to conduct their business, pursuant to Article 16 Charter - must also adopt the most appropriate measures to bring infringements to an end and prevent new ones from occurring, bearing in mind the need to balance the fundamental rights of copyright owners (within Article 17(2) Charter) with those of users to access information lawfully available on their services (in compliance with Article 11 Charter). 

But how is this to be done in practice? The Court did not provide much guidance. Hopefully things will be different when it decides Coty Germany ... But will they?

Not all creators of musical content are treated equally: the fate of the lyricist?

A devoted reader of this blog wrote to this Kat a month or so ago to observe that we do not pay sufficient attention to the creators of content. I would hope that we Kats are equal opportunity observers of the creative process and those who contribute to it, but I recalled his comments when recently reading a short item in The New Yorker magazine about the then current week’s jazz offerings in New York City (even though this Kat resides about 7,000 miles from Manhattan and had no intention to hop on a plane to the Big Apple). The item began as follows:
“It’s safe to say that millions of individuals around the world are intimately familiar with the work of E.Y. (Yip) Harburg without having a clue who he is.”
To remedy this, a single evening was being devoted in an entertainment hall in Manhattan to showcase his most notable songs. But what songs are we talking about (count this Kat among the millions who had no clue about Harburg or his creative output)? What this Kat found out about Harburg (1896-1981) confirmed what had been written in The New Yorker; he was one of the great lyricists of the 20th century. At the same time, his anonymity is a testament to the ambivalent appreciation that we have for lyricists, even those at the apex of the musical pantheon.

Start from the top—Harburg was the lyricist for all of the songs in that most iconic of film musicals, "The Wizard of Oz". Whether “we’re off to see the Wizard”, ponder “Somewhere, over the rainbow”, or revel in the fact that “Ding dong, the wicked witch is dead”, Harburg’s creative genius had collaborated with Harold Arlen, the composer of these songs, in creating the music for the movie. No less than the American Film Institute rated “Over the Rainbow” as the greatest film song—ever. And yet, Kat readers will forever associate Judy Garland with the film and its music; some might associate Harold Arlen with the music, but hardly anyone will recall Harburg’s equally majestic lyrics.

But Harburg’s lyrical contributions did not end with The Wizard of Oz. He wrote the lyrics for “Brother, Can You Spare a Dime”, which became the unofficial anthem for the unemployed during the Great Depression. He also wrote the words for such song standards as “It’s Only a Paper Moon”, “Last Month When We Were Young”, “Old Devil Moon”, and “April in Paris.” So many of us have listened to or even song these words, unaware who had created them. The supercharged American political climate of the early 1950s found a particularly odious way to thank Harburg for his contributions to the American songbook: Harburg's alleged left-wing political affiliation (he had a long history of social activism) led to his being blocked from working in Hollywood films, television, and radio for twelve years, from 1950 to 1962, as well as having his passport revoked. Dorothy may have paved her way back to the Kansas farm by declaring that “there’s no place like home”, but for Harburg, his 1950s national home was repellent and vindictive.

Given Harburg’s creative contributions, what are we to make of his lack of name recognition? It seems to this Kat that Harburg’s story underscores the precarious place of the lyricist in the music-making progress. When all is said and done, while there is no song without the music and lyrics, there is no public meaning to a song without the performer, to the extent that the performer will typically enjoy in the public’s mind equal or superior footing to the composer and lyricist (we refer to the situation where the creator of the song is not its performer). One might be tempted to liken the mediating role of the performer in such a situation to that of the book publisher, but the analogy does not hold. The publisher provides the tangible medium for the work as well as the commercial wherewithal to make it available to the public, but ultimately the reader engages with the written word as the product of the author, not the publisher.

But even within the creative context of the song itself, the composer usually stands on a higher pedestal than does the lyricist. This seems naturally so, even if there is a certain sense of unfairness about it. A song is first and foremost about music; the two are inextricably connected. Words may serve as the lyrics to a song, but they may also function in a literary form, such as a poem. Lyrics are not unique to a song. Also, music seems to be more easily remembered than lyrics. Like most people, he suspects, this Kat remembers melody more easily than he recalls lyrics, even when he tries to commit the words of a song to memory. How this relates to the processing that the brain carries out when a song is heard versus when the lyrics are read as text (either separate from or in synch with the music) is an interesting question. Circling back to Yip Harburg, his fate of having his creations continue to touch millions of music lovers for generations to come in virtual anonymity is sealed. Indeed, this Kat wonders how many Kat readers, having read this post, will recall Harburg’s name (without waiting for the end-of-movie credits) the next time he or she views "The Wizard of Oz" with the kids.

Friday fantasies

From the ever-welcome pen (well, keyboard) of Katfriend Mike Snodin (Park Grove IP) comes news of a contribution to the slim but growing volume of current literature on the nexus between the risk of being sued for infringing someone else's patent and the likelihood of doing research in areas that cut across other people's patent portfolios. This is what Mike tells us:

"I have published an editorial article in Expert Opinion on Therapeutic Patents (EOTP) entitled “Will changes to patent infringements attract drug research in the UK?” The article was published online on 26 March 2015, and an abstract for the article on PubMed [emphatically not to be confused with Club Med, even though their logos have some similarity] can be found here.


Perhaps unsurprisingly, the article concludes that the answer to the question in the title is “yes” (or at least that the recent changes to UK patent law place the UK on an equal footing with countries such as France and Germany, in the sense of providing a low patent infringement risk environment for conducting clinical trials). 

However, readers of EOTP who can access the full article will note that it contains references to several posts on the IPKat that relate to Unitary Patents (in particular, implementation of the Unified Patent Court as well as uncertainties regarding the infringement laws that will apply to European patents having unitary effect). This is because my article goes on to point out that the manner in which UK patent law has been amended gives rise to uncertainties in connection with the enforcement of European patents having unitary effect, if and when the laws governing such patents come into force. While the editorial nature of the article did not permit detailed discussion of this fascinating topic, it will no doubt be the focus of much detailed scrutiny over the coming months and years – as will the extent to which national laws on infringement are harmonised in the run-up to the possible entry into force of the UPC.

Among the recent arrivals on this Kat's desk is a new book, Intellectual property, Entrepreneurship and Social Justice, edited by Lateef Mtima (Professor of Law, Howard University School of Law) and published by his friends at Edward Elgar Publishing in the Elgar Law and Entrepreneurship series (in which it is the fourth title to emerge so far).  According to the publishers' web-blurb:
Through an exploration of the techniques used in social entrepreneurship, Intellectual Property, Entrepreneurship and Social Justice provides a framework by which historically marginalized communities and developing nations can cooperate with the developed world to establish a socially cohesive global intellectual property order. The knowledgeable contributors discuss, in four parts, topics surrounding entrepreneurship and empowerment, education and advocacy, engagement and activism and, finally, commencement. 
This is another book which takes an encouraging view of what people can do within the existing IP system -- instead of just sitting back and calling for it to be amended, scrapped or to disappear on its own accord.  Even Ann McGeehan's chapter ("Worth more dead than alive: Join the NoCopyright Party and start killing copyrights for their own good") ends on a positive note, conceding that "we can ... use the copyright reward to provide the incentive to create, and then -- when the time is right -- use the power of the crowd and the profit motive of the author to put the copyright out of its misery and release all of its pent-up social value in one blinding flash".  Further information concerning this publication can be obtained from the publisher's website here.



Around the weblogs 1.  Here's a new blog on the block. It's called A View on IP ("Musings on all things Intellectual Property related") and it's written by a young Katfriend, David Eder, an IP enthusiast if ever there was one and evidently a man who enjoys the pursuit of the arts: his maiden substantive post covers Nathan Sawaya's "The Art of the Brick" exhibition, reviewing some legal aspects of a former corporate lawyer's retreat from legal practice to the comfort and security menace and uncertainty of a world comprised of Lego bricks (an example of which is shown on here).  And here's another new blog on the block: PI na Rede ("Um blog dedicado à Propriedade Intelectual no mundo e em como isso influencia o Brasil"). Its author is Brazilian IP enthusiast Lukas Ruthes Gonçalves, who has always been bothered about the lack of good IP blog material for Portuguese readers. Lukas welcomes tips, suggestions and ideas for helping his new baby to grow and flourish so, if you are a Portuguese speaker, do contact him (you can email him at rglukas@gmail.com) and let him know.



"The blog that doesn't
duck the issue ..."
Around the weblogs 2. A very much older weblog than the two above, SOLO IP, which goes all the way back to 2008 and has had a number of fits and starts on the way, has finally reached the welcome milestone of receiving its 300th email subscriber. Congratulations are due, especially to blogmeister Barbara Cookson for her patience, her perseverance -- and her useful Tweets and Retweets. SOLO IP has two new posts this week. One relates the depressing news that most consumers don't use IP lawyers and that, even if they do, they don't want to pay for their services. The other is Sally Cooper's absolutely free and gratuitous advice to small businesses on picking the right name for a business -- or at least for reducing the risk of picking the wrong one.



Around the weblogs 3.  The IP Factor asks some interesting questions about the copyright and policy issues surrounding entitlement to copyright in works that later assume a deeper cultural or iconic status.  Just as the public can genericise a brand name and detach it from trade mark ownership, should they also be able to do so for, eg, the lyrics and music of "Happy Birthday to You" or, in the case in point, the photograph of Mordechai Vanunu's hand.  Another copyright-flavoured post, this time on the 1709 Blog, has the revelation by Ben Challis that copyright collective management societies and Pirate Party members of the European Parliament have yet to agree on how the right balance should be struck between the interests of rights owners and the public.


Searching for a book on patent searching? This Kat learns that Gridlogics' patent search team has put together Guide to Practical Patent Searching and how to use PatSeer for Patent Search and Analysis, this being an ebook on patent searching. Being unfamiliar with both the book and its publishers, this Kat also notes that if you want to download it you will have to submit first to a spot of data capture, since this -- as the title suggests -- is the bait at the end of a promotional exercise

This book is for anyone who understands the fundamental aspects about Intellectual Property. No prior knowledge of patent searching is required. However we recommend that you take any introductory courses on Patents first. Practical examples are provided to assist you in applying what you have learned into real life patent search projects. Of particular importance is the section on how you can map the patent search process to your organizational objective and decision making process.
This Kat is a frequent recipient of promotional materials of all sorts, as are many of his colleagues and readers.  Having amassed an almost unparalleled collection of promotional pens, mouse mats, USB sticks, stress balls and colourful adhesive labels, soon to be augmented by another massive consignment when he attends next month's International Trademark Association Meeting in San Diego, he welcomes promotional ebooks since they take up so very little room and one doesn't ever feel guilt or remorse at popping them into the bin.  More importantly, if any patent-searching reader would like to take a look at this ebook and write a short critical appraisal of it for this weblog, can he or she please email me at jjip@btinternet.com and let me know.  The book can be accessed here.



A popular feature of each year's MTB event
is the Reading of the IP Blogroll ...
Meet the Bloggers, IP-style. It is from one of Barbara Cookson's Retweets that this Kat discovered that this year's Meet the Bloggers (MTB) get-together at the International Trademark Association Meeting in San Diego takes place on Monday 4 May, 8 to 11 pm, and all the details can be found on the MTB website here. A word of reminder: this event isn't just designed to let IP bloggers meet each other (most have already done that on numerous occasions already) but to give readers a chance to meet them, to offer some feedback, encouragement, fawningly fulsome praise and constructive criticism. This Kat looks forward to attending and hopes to see plenty of his friends and readers there. The event is free to attend and the recollection of the pleasure of attending persists long after the last hangover has been survived fond farewells have been said.

Thursday, 16 April 2015

Dior trade mark registration: are you being Sirous?

Spotting a fascinating spat between the proprietor of a well-known name and the owner of an extremely unusual one, occasional guest blogger Kevin Winters has composed the following item for the edification of readers of this weblog. Kevin has done some guest blogging on Art & Artifice in recent times (here and here) as well as an earlier Katpost on US patent law reform (here). This is his first piece in the field of trade marks:

Christian Dior
The New Zealand Herald recently reported that Parisian fashion house Christian Dior is taking action against a New Zealand photographer looking to register his personal and business names as trade marks. Mr Sirous Dior founded his photography company, Dior Fine Art, in New Zealand in 2014. He submitted applications in September 2014 to the Intellectual Property Office of New Zealand (IPONZ) for registration of two trade marks: ‘Sirous Dior’ and ‘Dior Fine Art’. Having been alerted to the applications, Christian Dior, via their lawyers, wrote to Mr Dior, asking him to withdraw them within 14 days lest they challenge the registration and begin legal proceedings.

Sirous Dior
According to the report, IPONZ had already examined and accepted the ‘Sirous Dior’ trade mark, which is now under opposition, while the ‘Dior Fine Art’ mark is currently undergoing examination. The situation presents an interesting question: how is the opposition likely to be handled? The obvious argument by Christian Dior will be based on the concern that the ‘Sirous Dior’ mark will infringe the trade marks it currently holds in New Zealand: that the registration and use of the ‘Sirous Dior’ trade mark would be detrimental to the Dior brand.

New Zealand’s Trade Marks Act 2002 states at section 89(1)(d) that
“A person infringes a registered trade mark if the person does not have the right to use the registered trade mark and uses in the course of trade a sign identical with or similar to the registered trade mark in relation to any goods or services that are not similar to the goods or services in respect of which the trade mark is registered where the trade mark is well known in New Zealand and the use of the sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the mark.”
A trade mark will only be entitled to protection against dilution under the Act where it is ‘well-known’. Since there is no definition for this term, it will be for the trade mark owner to demonstrate this as a matter of fact. It is suggested that it would not be too difficult for Christian Dior to demonstrate how ‘well known’ its brand is, not least because of the firm having two boutique stores in Auckland alone.

It would appear, therefore, that Mr Dior’s chances at successfully using his own name for his business, and enjoying its legal protection depends on successfully relying on the own name defence to a claim of infringement available under section 95(a) of the 2002 Act, where
“A person does not infringe a registered trade mark if, in accordance with honest practices in industrial or commercial matters, the person uses the person’s name or the person’s place of business.”
There may then be hope for the ‘Sirous Dior’ trade mark. There is no evidence to suspect that Mr Dior is lying about his name. Indeed, news reports suggest that Mr Dior changed from his mother’s surname, Badiei, to his father’s, Dior, 15 years ago. The difficulty however is that the 2002 Act is silent as to the meaning of the term ‘honest practices’ under the own name defence. Due attention should be given to the Practice Guidelines of the IPONZ on this point. Section 1.1 provides that UK and European cases which considered questions on wording that is similar to, or the same as that in the 2002 Act will be of some relevance to the NZ legal regime.

The situation under EU law is instructive. Article 6(1) of Directive 2008/95 (the Trade Mark Directive) states that:
“The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade: (a) his own name or address provided he uses them in accordance with honest practices in industrial or commercial matters."
There has been slightly more clarity regarding the use of the own name defence in the European context. In Case C-100/02 Gerolsteiner Brunnen GmbH & Co v Putsch GmbH the Court of Justice of the European Union (CJEU) held:
“The mere fact that there exists a likelihood of … confusion …is… insufficient to conclude that the use of that indication in the course of trade is not in accordance with honest practices.”
Further, in Case C-17/06 Céline Sarl v Céline SA the CJEU elaborated on what must be determined in assessing ‘honest use’ under the ‘own name’ defence:
“…account must be taken first of the extent to which the use of its name is understood by the relevant public, or at least a significant section of that public, as indicating a link between its goods or services and … a person authorised to use the trade mark, and secondly of the extent to which [they] ought to have been aware of that. Another factor to be taken into account when making the assessment is whether the trade mark concerned enjoys a certain reputation in the Member State in which it is registered and its protection is sought, from which a third party might profit in marketing his goods or services.”
The CJEU in Case C-228/03 Gillette Co v LA-Laboratories Ltd Oy made clear that the condition of ‘honest use’:
“…was in substance the expression of a duty to act fairly in relation to the legitimate interests of the trade mark owner.”
The Court then ruled, in dealing with “honest practices in industrial or commercial matters” that a trader will be compliant where
“…if by using a third party's trade mark it does not create the impression that there is a commercial connection between itself and the trade mark proprietor and does not take unfair advantage of the trade mark's distinctive character or repute. The fact that a trader also sells those products and places the third party's trade mark on them does not necessarily mean that it represents that its products are equal in quality to those of the trade mark proprietor. The trader's conduct must therefore be considered on the basis of a global assessment of all the relevant factors.”
One can appreciate the commercial reasons for the house of Dior’s opposition to the ‘Sirous Dior’ trade mark. However, whether these reasons are enough to win a legal battle is something quite different. This is not the first, nor is it likely to be the last time, that fashion houses have opposed the registration of trade marks that concern their brand names: both Chanel and Gucci have aggressively protected their trade marks in respect of their brand names in the past.

Striking a balance ...
The jurisprudence of the CJEU is rich, and could be immensely helpful to the New Zealand courts, if this matter cannot be settled without litigation. This is yet another example of when balance must be struck between affording the necessary protection to businesses that have invested substantial time and effort in developing and protecting a brand, and not stifling innovation and preventing entrepreneurs from developing their own presence in the commercial world.

The IPKat is again Irate - more misinformation about the Unitary Patent Package

Time for rage!
This Kat has posted several times before when politicians, lawyers, and others who should know better, have put out materials about the Unitary Patent Package that are deceptive and misleading.

Today he has seen something that has ignited his ire even further - a post from the European Commission (responsible for initiating the legislation) and tweeted by the European Patent Office (responsible for granting patents and recording their unitary effect) that is simply drivel.  Here it is, with comments interpolated in red.

The Unitary Patent package – better protection for European innovators
[Even the title gets off to a bad start.  There is NOTHING in the Unitary patent that specifically helps European innovators - the advantages will be at least as great for non-European entities, and they will be shielded from some of the adverse effects]

A new agreement has smoothed the way for a truly unitary European patent – it will offer European inventors and innovators the comprehensive cover they need in the Single Market [well, no, at least Spain and Italy will be missing, and many more countries in the early years] at a fraction of the current cost [when will this rubbish idea stop being parroted? Particularly if the renewal fees are those recently suggested by the EPO, then the cost will be the same or higher for most users.  Only for those patentees who validate in nearly all countries, and then probably only if they maintain their patents for full term, is there hope that the cost may be a "fraction"].

“Growth from innovation is sustainable, emerging from organic development within businesses, rather than being created by expensive fiscal support or incentives from outside”, said Elżbieta Bieńkowska, Commissioner for Internal Market, Enterprises, Entrepreneurship and SMEs. As such, innovation and creativity are key to economic success for companies across the EU. Creating the right framework conditions for innovators is a central part of the European Commission’s work in this area and includes support for research and development initiatives and access to finance for newly founded SMEs. But it doesn’t stop there: once a product has been invented, businesses and individuals need access to a clear and affordable patenting process in order to protect it from counterfeiting and exploitation by third parties. That is where the new Unitary Patent package will come into play. [If this is to suggest that the Unitary Patent package will be any more materially "clear and affordable" to SMEs than a current European patent validated in a reasonable number of countries, then it is nonsense.  The process up to grant is identical, and the post-grant costs similar.]

Though European patents currently offer more extensive and better quality protection for inventions than almost any other patenting systems worldwide, the cost and regulatory burden of applying puts many businesses off – and some of these seek to protect their inventions via American patents instead [as though a US patent is somehow an alternative to a European patent.  If a company wants protection in Europe for their invention, a US patent is hardly going to assist - and is there any evidence for this statement?]. The need for a simpler and cheaper procedure has long been evident [here they clearly forgot to add "and the Unitary Patent does not satisfy this need".  The procedure is identical, and the costs for most patentees also similar].

A Unitary Solution
Innovators wishing to apply for a patent in Europe currently have the option of a national patent (valid in one Member State only), or a “European patent”, which nevertheless has to be applied [odd word - we normally use "validated" since you "applied" for the patent to the EPO; and in any case nothing has to be done after grant in non-translation London agreement countries until renewal fees are due] in each Member State separately – at a high cost [well, only high (relative to the Unitary Patent) if you want a large number of states, which many patentees elect not to]. Change is on the horizon, however, in the form of the so-called European unitary patent. In winter 2012/13, the EU introduced a package of regulations and agreements setting up a unitary patent and a centralised jurisdiction dealing with disputes relating to unitary patent but also classical European patents. The agreement is currently being ratified by the 25 Member States in which it will be valid. The unitary patent will exist as a third option alongside the two currently available patenting procedures in the EU, offering more choice for European businesses. Uniform protection for the covered invention will be provided across all 25 countries and the cost of administration – a single payable fee – will be € 5 000 [Where on earth has this come from?  A "single payable fee"?  And what does € 5 000 correspond to? It seems as though it may be something like the official fees for a European patent up to grant - but then "a single payable fee"?  No, a number of fees paid at different stages. And what about the renewal fees?  Are they not a "cost of administration"?]. The European Patent Office will have the authority to grant the new unitary patent as well as the current “classical” European patent. Additionally, the package establishes a Unified Patent Court, with clear [but actually rather complicated, given that it has three central divisions and a further number of local divisions] jurisdiction over infringement disputes. This means that creative European businesses [but disproportionately non-European businesses] will benefit twofold: from the lessened financial and administrative burden [No, again no!] of the patenting procedure and from the certainty regarding jurisdiction. The unitary patent will come into force as soon as 13 of the participating Member States, (including Germany, France and the UK) have ratified the agreement – expected by late 2015 or early 2016. The unitary patent will give businesses across the EU the certainty they need today to make the investments that benefit our economy tomorrow. [At this point, dear readers, your correspondent passed out]

This Kat wishes that if those wishing to foster support for the Unitary Patent Package cannot do it with the truth, they would keep quiet rather than propagating misleading untruths and half-truths.

Wednesday, 15 April 2015

Wednesday whimsies

Forthcoming events. Do please remember to check out the IPKat's list of Forthcoming Events, It's an ever-changing one, with lots of events that are either free to attend or which offer registration fee discounts to blog readers, students or other deserving causes.


One way of enjoying
a spot of privacy ...
Around the weblogs 1. The IP Finance weblog carries a second guest post by Donal O'Connell. The first, on the IP dimensions of selecting a supplier, received a lot of visits. The sequel, on IP risk assessment and management, should be even more popular. Meanwhile the 1709 Blog has been positively bubbling with activity of late. In an unparalleled fit of productivity Ben Challis has written on IFPI's Digital Music Report 2015 and the targeting by PRS for Music of live music and festivals, while Marie-Andrée Weiss, not to be outdone, explains the ramifications of Arne Svenson's controversial commercial exploitation of unauthorised and clandestine photographs of his neighbours [would he be instructing his lawyers if it turned out that his neighbours decided to do the same to him, Merpel wonders].  When is a dominant word element on a garment regarded as a genuine trade mark and when is it nothing but an embellishment? Manos Markakis considers this issue in light of recent Greek litigation on the jiplp weblog here,


Around the weblogs 2. This Kat has recently come across a Spanish IP blog, "Todos los derechos reservados" (here), authored by the enthusiastic Jacobo Santamarta Barral (right). It's not actually a new blog, since its archive stretches back to July 2014, but it may be new to many of this weblog's readers. So, if you enjoy IP and can cope with one of the world's most widely-spoken languages, why not give it a try?


Books books books.  The Journal of Intellectual Property Law & Practice's jiplp weblog is advertising three more intellectual property books for which reviewers are sought. Some years ago, the advent of the internet and its remarkable propensity for helping users store, identify and retrieve information -- whether free or behind paywalls -- was viewed by many as the beginning of the end for traditional paper-based law publishing. The sudden spread of popularity of e-books such as Kindle appeared to confirm this suspicion. However, printed publications have also benefited from the internet revolution. For example, targeted online marketing is far cheaper than old-fashioned envelope-stuffing and the blunderbuss approach of producing vast, heavy catalogues, and search engines guide prospective readers to the books which they might not even have known to exist.  Likewise, specialist websites and blogs can be used for helping to identify and quantify prospective readers and purchasers -- and, in the case of JIPLP -- for matching new titles with suitable reviewers and publishing comments about news titles while they are still fairly current.  So if you like the look and feel of real, three-dimensional IP law books, take heart: the medium is likely to remain with us for some time to come, largely thanks to the medium which has been predicted to kill it.


Google again.  The world's most powerful company has been in the news today on account of the European Commission's surprisingly belated decision to make a complaint against it for abuse of its market power. However, this Kat is concentrating on a smaller, less dramatic but no less interesting matter.  From Katfriend Catherine Pocock comes the following:
"While browsing the web I stumbled upon this new ‘anti-spoilers’ technology which Google is applying to patent. I thought this was an interesting technology in light of Google’s refusal to monitor content when it comes to copyright protection; I wonder where they draw the line in terms of privacy intrusion. ... 
New forms of protection
are needed against digital
age plot-spoilers ...
According to the Patent Application Abstract, the disclosure includes a system and method for processing content spoilers. The system includes a controller, a progress module, a determination module, a warning module and a presentation module. The controller receives activity data describing an activity performed by a first user and content data published by a second user. The progress module determines a first progress stage for a subject associated with the activity based at least in part on the activity data. The determination module determines whether the content data includes a spoiler for the first user based at least in part on the first progress stage. Responsive to the determination that the content data includes the spoiler, the warning module obscures the content data published by the second user from the first user and generates a spoiler warning. The presentation module provides the spoiler warning to the first user". 
For those who want to know more, they can consult Wired and Le Monde (in French). The patent application is here.

The CJEU 'new public' criterion? National judges should not apply it, says Prof Jan Rosen

Last week this Kat was back in beautiful Cambridge to attend yet another excellent Fordham IP Conference [you can see relevant tweets by searching #fordhamip]. There were many thought-provoking presentations, including the very stimulating talk by Prof Lionel Bently (University of Cambridge), who argued that the new UK exception for quotation pursuant to section 30 of the Copyright Designs and Patents Act resembles - to a certain extent - US fair use.

This Kat was part of a panel discussing recent development in the area of EU copyright [the slides are available here].

And - of course - how can a panel on EU copyright not feature at least some discussion of the recent hyperlinking cases, notably the decisions of the Court of Justice of the European Union (CJEU) in Svensson [Katposts here] and BestWater [here]? Not are only things interesting but also get sparkling when the person who discusses all this is someone who has been both really prominent in the post-Svensson debate and is not a huge fan of the 'new public' criterion developed by the CJEU. This is of course Prof Jan Rosen of Stockholm University, among the signatories of the ALAI Opinion on Svensson [ALAI has taken a rather different stance on hyperlinking and copyright from the European Copyright Society].

This Kat found his talk fascinating to say the least, and asked Jan if he could provide a summary for the readers of this blog.

Prof Jan Rosen and Eleonora
at last week's Fordham IP Conference
Jan was so kind to say yes, and this is what he writes:

"The new public criterion developed in recent years in the case law of the CJEU - starting with SGAE/Rafael HotelesDel Corso [here], and TVCatchup [here], eventually more distinctly contoured by the judgments in Svensson and BestWaterand confirmed in CMore Entertainment [here and here- construing the exclusive right of communication to the public, is in conflict with international treaties and EU directives. 

Initially articulated in the offline environment to justify application of the right of communication to the public to certain retransmissions of television broadcasts, the criterion, as also subsequently applied by the Court, is inconsistent with the making available/communication to the public right of the Berne Convention and the WIPO Copyright Treaty (WCT) et al, as well as with the provisions of the 2001 Information Society Directive. It may thus trigger a WTO procedure, since Article 9 of the TRIPS Agreement provides that signatory states shall follow Articles 1 – 21 of the Berne Convention.

As applied in - amongst others - Svensson, the new public criterion has the effect of an inappropriate limitation, a carve out of basic exclusive rights of authors and related rightholders, thus resulting in an an exhaustion of the exclusive right of communication to the public of works, as per Article 3 of the Information Society Directive, which their authors or other rightholders have made available over generally accessible websites. Moreover, to the extent that Svensson indicates that the new public criterion will not apply if restrictions accompany the making available of a certain work, the decision is likely to establish an obligation to reserve rights or protect works etc. by technical protection measures, in violation of the Berne Convention’s prohibition of formalities that condition the exercise of exclusive rights.  

This is so even if the CJEU itself has created a relatively narrow scope of application of this new limitation to the communication to the public right. Not merely because it is just valid for certain linking measures on the internet, as the CJEU’s exceptions to the exception in the Svensson/BestWater cases emanate basically from measures of “restricted access” to a work or protected item posted on the internet. Probably, the Court thought of technical protection measures, excluding the free access to works put on the internet by means of linking, but it may at least be discussed whether such a restriction to the use of the new public criterion would also emanate from explicit reservations on the website, eg in placing a copyright notice (© (P)) on such a site, or a restriction of the right granted by the author to the website’s manager [this was discussed at some length in this earlier Katpost]. One could compare this to the impact of such restrictions on the exhaustion of the distribution right. 

Further, another limitation to the limitation emanates from the TVCatchup decision, saying that if the making of works available through the retransmission of a terrestrial television broadcast over the internet uses a specific technical means different from that of the original communication, that retransmission must be considered to be a ‘communication’ within the meaning of Article 3(1) of the Information Society Directive. Hence, if different technical means are employed that differ from those used for the original communication, there is indeed a new public and the communication/making available to the public right stays intact.

Shakespeare or CJEU?
A more general negative reaction to the CJEU’s new public criterion follows from the fact that the issue of creating new or altered limitations and exceptions to copyright law or related rights within the EU, to have more precise solutions, to make them mandatory etc. are all matters to fall within the precise EU legislative framework, not as an effect of case law. It is not acceptable [what is certain at least is that case law-driven harmonisation in the area of EU copyright is not limited to the new public criterion] that those basic issues of introducing new limitations or framing of fundamental exclusive copyright uses to be accomplished by judgments of an expansive CJEU, and, certainly not, in conflict with international treaties, binding for EU Member States or, needless to say, the EU as such.

From a more strictly legal perspective, as already said, the CJEU’s limitation to the communication to the public right, as achieved by adopting by the new public criterion, is in conflict with the Berne Convention, in particular its Article 11bisFurther, the new public criterion lacks any support from the WCT, WIPO Performances and Phonograms Treaty, the TRIPS Agreement and the Information Society Directive. The EU as such is not a Member of the Berne Union, but individual Member States of the EU are, thus indicating what falls within the frames of EU Member States’ international obligations. However, the EU is actually a signatory to the TRIPS Agreement, and has thus agreed to pay respect, according to Article 9 of the TRIPS  Agreement, to Articles 1-21 of the Berne Convention. In sum, according to its statutes the EU obviously lacks a mandate to render new meanings to the text of the Berne Convention, or offer lofty re-interpretations of it. The same is valid for the CJEU.

Must then a Member State and its national courts adapt its national copyright protection to a preliminary ruling of the CJEU in conflict with international treaties and, hence, the EU Treaties? 

No. From a strictly legal perspective the border of the principle of loyalty for Member States has been crossed, an effect of the CJEU’s introduction of the new public criterion, as the Court has hereby exceeded its powers.


The new public criterion also carries with it a risk that Member States, actually following or applying the new public criterion nationally, may be the target of dispute settlement under the WTO system, allegedly not complying with Article 9 of the TRIPS Agreement, by not offering those rights emanating from Articles 1-21 of the Berne Convention."

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