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.

Tuesday, 25 November 2014

ECR-Award - BGH on the registrability of acronyms

A recently published decision by the German Federal Supreme Court (BGH) concerning the registrability of acronyms as trade marks (case reference I ZB 64/13, "ECR-Award", of 22 May 2014, see here in PDF) was quite widely reported (here, here, here) by German legal commentators since it indicates that the highest German court in civil matters is more generous than both the DPMA and the German Federal Patent Court when it comes to deciding on the registrability of a trade mark.
In its decision, the BGH held that, when deciding whether a trade mark consisting of an acronym lacks distinctiveness and is therefore not registrable as a trade mark, it was crucial to establish whether the relevant consumers regarded the sign itself as a descriptive term or as an acronym.  So far so good. However, now for the more 'contentious' part: when determining the view of the average consumer or the "understanding of the relevant circle" (Verkehrsverständnis), the judges took the view that this could not be determined by reference to the specification covered by the mark, but solely by reference to the sign itself.
Efficient consumer response?!
Applying this to the case and trade mark in question: "ECR-Award" covering services in class 41 (in the German original: "Organisation und Durchführung von Preisverleihungen für Manage-mentleistungen, insbesondere im Bereich Efficient Consumer Response, die intelligente Kooperation zum Nutzen der Konsumenten"), the BGH took the view that (German) consumers would not be in a position to understand the acronym "ECR" as a acronym of the English language term "Efficient Consumer Response" without reference to the class 41 specification covered. The judges explained that the average consumer was usually not aware of scope of a trade mark specification and could therefore not conduct an analysis of the goods and/or services covered. Consequently, the trade mark "ECR-Award" disagreed with the DPMA and T was not lacking distinctiveness for the services covered in class 41 and disagreed with the differing assessment by the DPMA and the German Federal Patent Court, which had both had done exactly that - found that the mark ECR-Award was lacking distinctiveness for the services covered in class 41.
Merpel cannot help but feel for the Examiners. How are they meant to assess distinctiveness if they cannot refer to the specification.  Consumers may not be aware of the exact specification as filed but they are faced with the services in question as offered under the trade mark, which should in an ideal world reflect what is covered by the specification, nein?  Is Merpel overcomplicating things and/or missing the point?

Wah-the-ley on Wah-way: a matter of Opinion

He is Melchior Wathelet
too ...
The Opinion of Advocate General Wathelet  in Case C-170/13 Huawei Technologies Co. Ltd v ZTE Corp., ZTE Deutschland GmbH has already attracted a lot of attention, not least because some good souls have rather forgotten that, while the Advocate General is a member of the Court of Justice of the European Union (CJEU) and his rulings, always influential, are adopted by the CJEU in an estimated 75-80% of intellectual property cases, his Opinions are not actually the rulings of the court. Be that as it may, it's not every day that Europe's senior court takes a look at the enforcement of patents in any situation, let alone when they are in that sensitive area of essential technical standards that all market participants will want, indeed need, to use in order to comply with the standard in question.

The questions before the CJEU are as follows:
"Does the proprietor of a standard-essential patent who informs a standardisation body that he is willing to grant any third party a licence on fair, reasonable and non-discriminatory terms abuse his dominant market position if he brings an action for an injunction against a patent infringer although the infringer has declared that he is willing to negotiate concerning such a licence?

... But this is the actual AG 
or

is an abuse of the dominant market position to be presumed only where the infringer has submitted to the proprietor of a standard-essential patent an acceptable, unconditional offer to conclude a licensing agreement which the patentee cannot refuse without unfairly impeding the infringer or breaching the prohibition of discrimination, and the infringer fulfils his contractual obligations for acts of use already performed in anticipation of the licence to be granted?

If abuse of a dominant market position is already to be presumed as a consequence of the infringer’s willingness to negotiate:

Does Article 102 TFEU [Treaty on the Functioning of the European Union, of which Article 102 deals with abuse of a dominant market position] lay down particular qualitative and/or time requirements in relation to the willingness to negotiate? In particular, can willingness to negotiate be presumed where the patent infringer has merely stated (orally) in a general way that that he is prepared to enter into negotiations, or must the infringer already have entered into negotiations by, for example, submitting specific conditions upon which he is prepared to conclude a licensing agreement?

If the submission of an acceptable, unconditional offer to conclude a licensing agreement is a prerequisite for abuse of a dominant market position:

Does Article 102 TFEU lay down particular qualitative and/or time requirements in relation to that offer? Must the offer contain all the provisions which are normally included in licensing agreements in the field of technology in question? In particular, may the offer be made subject to the condition that the standard-essential patent is actually used and/or is shown to be valid?

If the fulfilment of the infringer’s obligations arising from the licence that is to be granted is a prerequisite for the abuse of a dominant market position:

Does Article 102 TFEU lay down particular requirements with regard to those acts of fulfilment? Is the infringer particularly required to render an account for past acts of use and/or to pay royalties? May an obligation to pay royalties be discharged, if necessary, by depositing a security?

Do the conditions under which the abuse of a dominant position by the proprietor of a standard-essential patent is to be presumed apply also to an action on the ground of other claims (for rendering of accounts, recall of products, damages) arising from a patent infringement?"
The 103 paragraph Opinion is well summarised by the following Curia media release:
According to Advocate General Wathelet [click here for guidance on how to pronounce this name], the proprietor of a standard-essential patent may be required, before seeking an injunction against a company that has infringed that patent, to make that company a specific licensing offer

That applies where the proprietor of the patent is in a dominant position and has made a commitment to the standards body to grant third parties a licence on fair, reasonable and nondiscriminatory terms and where the infringer is ready, willing and able to enter into such a licensing agreement

Huawei [click here for guidance on how to pronounce this name], a Chinese telecommunications company, holds a European patent regarded as ‘essential’ to the ‘Long Term Evolution’ (LTE) standard developed by the European Telecommunications Standards Institute (ETSI). The LTE standard relates to next generation — that is to say, fourth generation — mobile phone communications. Anyone complying with the standard inevitably uses the patent owned by Huawei, which is why that patent is categorised as ‘essential’. Huawei is a member of ETSI and notified the patent to that institute. Huawei also made a commitment to ETSI to grant licences to third parties on fair, reasonable and non-discriminatory (FRAND) terms.

Among the products marketed in Germany by ZTE, a group of Chinese companies, are base stations with LTE software and ZTE is therefore unavoidably making use of Huawei’s patent. Since discussions between Huawei and ZTE regarding the possibility of concluding a licensing agreement on FRAND terms were unsuccessful, Huawei brought an action for infringement against ZTE before the Landgericht Düsseldorf (Düsseldorf Regional Court, Germany). By that action, Huawei seeks an injunction prohibiting continuation of the infringement, an order for the rendering of accounts, recall of products and damages. According to ZTE, the action for a prohibitory injunction constitutes an abuse of a dominant position, since ZTE is willing to negotiate a licence.

The German court has referred a number of questions to the Court of Justice. It is seeking to ascertain whether — and, if so, in what circumstances — an action for infringement brought by the holder of a patent which is ‘essential to a standard developed by a standards body’ (standard essential patent (SEP)) against a manufacturer of products which comply with that standard constitutes an abuse of a dominant position for the purposes of EU competition law where the patent holder has made a commitment to grant licences on FRAND terms.

... Advocate General Melchior Wathelet first notes that the Landgericht Düsseldorf has proceeded on the assumption that Huawei holds a dominant position. However, the Advocate General points out that the fact that a company owns an SEP does not necessarily mean that it holds a dominant position and that it is for the national court to determine, on a case-by-case basis, whether that is indeed so [burden of proof: the AG appears to take the view that there is a rebuttable presumption that the holder of an SEP enjoys a dominant position. Merpel wonders what standard of proof the patent holder will have to achieve in order to rebut a presumption based on a right that excludes others from use of an essential piece of technology].

That said, the Advocate General proposes that the questions referred by the Landgericht Düsseldorf should be answered as follows:
Where the proprietor of a standard-essential patent (SEP) has made a commitment to a standards body to grant third parties a licence on fair, reasonable and non-discriminatory (FRAND) terms, it constitutes an abuse of a dominant position for that proprietor to request corrective measures or to seek an injunction against a company that has infringed the SEP ...  where it is shown that the SEP holder has not honoured its commitment even though the offending company has shown itself to be objectively ready, willing and able to enter into such a licensing agreement [this initiative on the part of the patent proprietor being an action which, if successful, may cause the products and services supplied by the offending company to be excluded from the markets covered by the standard].

Precise amounts only, please
[However, all is not lost for the SEP holder] In order to honour that commitment and to avoid abusing a dominant position, the SEP holder must, before making a request for corrective measures or seeking an injunction, alert the infringer to the infringement at issue in writing, giving reasons, and specifying the SEP concerned and the way in which it has been infringed by that company, unless it has been established that the alleged infringer is fully aware of the infringement [This Kat imagines that these conditions, even cumulatively, won't be much of a burden: the SEP holder is doing this in any event if he is suing]. The SEP holder must, in any event, present the alleged infringer with a written offer of a licence on FRAND terms and that offer must contain all the terms normally included in a licence in the sector in question, including the precise amount of the royalty and the way in which that amount is calculated [Merpel can't imagine that the term "precise amount" is intended to exclude an amount that is contingent on a formula that enables a precise amount to be calculated on the basis of variables that are not quantifiable at the point at which the licence is offered or concluded: is this right?].

The infringer must respond to that offer in a diligent and serious manner. If it does not accept the SEP holder’s offer, it must promptly present the latter with a reasonable counter-offer, in writing, in relation to the clauses with which it disagrees. An application for corrective measures or for an injunction does not constitute an abuse of a dominant position if the conduct of the infringer is purely tactical and/or dilatory and/or not serious [the use of terms such as "purely tactical", "dilatory" and "not serious", if adopted by the CJEU, is likely to attract further references for rulings as to how those terms should be understood and applied, since it is unlikely that national courts will have identical notions as to what they mean].

If negotiations are not commenced or are unsuccessful, the conduct of the alleged infringer cannot be regarded as dilatory or as not serious if it requests that FRAND terms be fixed either by a court or by an arbitration tribunal. In that event, it is legitimate for the SEP holder to ask the infringer either to provide a bank guarantee for the payment of royalties or to deposit a provisional sum at the court or arbitration tribunal in respect of its past and future use of the patent [this seems sensible but begs the question as to what happens when the dispute between SEP holder and would-be licensee relates specifically to the quantum of the royalty and therefore, by implication, to the quantum of the guarantee or sum provisionally deposited].

Nor can an infringer’s conduct be regarded as dilatory or as not serious during negotiations for a licence on FRAND terms if it reserves the right, after entering into an agreement for such a licence, to challenge before a court or arbitration tribunal the validity, use and essential nature of that patent [no surprises there].

In taking legal action to secure the rendering of accounts, the SEP holder does not abuse a dominant position. It is for the national court in question to ensure that the measure is reasonable and proportionate.

In bringing a claim for damages in respect of past use of the patent, for the sole purpose of obtaining compensation for previous infringements of its patent, the SEP holder does not abuse a dominant position [it is difficult to see how this might not be the case, unless the terms deemed to be FRANDly for other licensees include some sort of waiver of the right to collect damages for previous infringements].
How has the Opinion been viewed? According to a Bristows media release, it offers something for everyone:
Advocate General Wathelet has proposed that the European Court adopt a ‘middle-course’ between that taken by the German courts and that of the European Commission. The Advocate General accepts that seeking an injunction on a FRAND-encumbered patent can amount to an abuse of dominance. The Advocate General also made a number of ‘implementer-friendly’ statements in line with the European Commission’s approach. ...

However, Advocate General Wathelet’s approach is more nuanced than that of the European Commission. For example, he recognises that an implementer’s approach to negotiations may be dilatory and that seeking an injunction in such circumstances is legitimate. He also states that it is legitimate for the patentee to ask the implementer either to provide a bank guarantee for the payment of royalties or to deposit a provisional sum at the court or arbitration tribunal in respect of its past and future use of the patent. This requirement will go some way to ensuring that implementers do not abuse the negotiation process. Overall, then, neither Huawei nor ZTE will be too disappointed with the result, given that both companies own technologies and implement them.”
Europe Online magazine regards the Opinion as recommending that Huawei will have to jump through a number of legal hoops if it is to succeed in its action, which sounds a bit melodramatic. Viewed from the US-based Courthouse News, the Opinion is a shot across the bows for "patent trolls and tech inventors", who are warned that a court may not be the first port of call when it comes to pursuing infringers.

The IPKat notes that we are departing from the well-trodden path of essential facilities doctrine, in terms of vocabulary if not also in terms of principle. A word-search of the Opinion shows 34 appearances of the word "essential", while "facilities" gets no mention at all.

Merpel is impressed that both parties to the underlying litigation -- the SEP holder and the defendant in infringement proceedings -- are Chinese. Who says the Chinese aren't taking patents seriously?

The CJEU's ruling usually emerges around six months after the Advocate General's Opinion is published, so we should all know next summer what we can expect.

In a flap about bats: when trade marked chiroptera come home to roost

It is well known to all felines that a bat is nothing other than (i) a flying mouse and (ii) an annoyingly named creature that rhymes with "cat" but precedes it in the alphabet.  So when bats come to blows over their respective intellectual property rights, cats watch with detached amusement. Here, thanks to this short, sweet guest post from Sophie Arrowsmith (an IP solicitor with Hamlins), is an instructive piece of literature on one such scrap:

For many years the humble bat was merely a mammal of the order Chiroptera whose forelimbs form webbed wings, making them the only mammals naturally capable of true and sustained flight. Having come to the rescue of James I of Aragon by intervening at a crucial moment in a 13th century spat with the Saracens, the bat was no longer a figure in the shadows. Instead it became a lauded symbol of eastern Spain, eventually featuring on heraldic shields -- including that of the prize of James I’s battle - the lovely city of Valencia. Many centuries later, the bat was at the centre of another, more modern tiff. This time, the Spanish battle ground was Alicante (which, coincidentally, lies within the autonomous region of Valencia).

Having already successfully registered the bat, illustrated above right, as a trade mark first in 2007, Valencia Club de Fútbol made one trade mark registration too many when it applied to register the bat trade mark on the left as a Community trade mark at the end of 2012. This application left DC Comics with little choice. The New York-based publishing giant’s Batman symbol, illustrated below right, was at risk of being confused by the public with the football club’s mark. Accordingly DC Comics filed an opposition based on this EU registered bat mark.

DC Comic’s trade mark strategy seems simple: bat with wings down is okay, but bat with wings up is a no-no, since the public will be confused by two bats sharing the same wing position.

The story of this dispute has been circulating for a while now, but there has been a renewed flurry of interest in the media (see eg this piece on the BBC).  This may be due to the fact that the Alicante-based Office for Harmonisation in the Internal Market decision is expected soon. Is this opposition a flight of fancy from DC Comics, or will they be able to bat away this threat to their iconic mark? Watch this space ...
Thanks, says the IPKat, who wonders whether the scope for illustrating bats seems to be rather more limited than for many other mammals, given that they have only three basic positions: wings up, wings down and hanging bottom-up by their little paws.

Merpel is concerned about another likelihood of confusion. Sophie's firm Hamlins and her favourite toyshop Hamleys are both based in London's Regent Street. She wonders whether there have been any instances of clients and customers turning up at the wrong place.

Another famous bat logo here

Monday, 24 November 2014

EPO video-conferencing: good for the planet -- but is it good for patent applicants too?

In recent times Merpel has become increasingly interested in the workings of the European Patent Office (EPO). This interest is not, as some might believe, confined to the political and financial dimensions of its operations, since Merpel has also taken quite a fancy to the EPO's functionality. In this context, she has been reflecting on a small but important integer element of the cut-and-thrust of relations between patent applicants and those who stand between them and their desired object: the EPO Examining Division.

In days of old, when examination of a patent application at the EPO became problematic, the European patent attorney would -- like a medieval knight -- need to mount his trusty steed and travel to the EPO’s citadel in Munich, Berlin or the Hague, for face-to-face combat with the Examining Division. This trial by ordeal was popularly known as oral proceedings. In recent times, however, the EPO has embraced video-conferencing for oral proceedings before the Examining Division, a move that has simplified proceedings greatly while also reducing the reduced overall costs for the applicant.

Sage advice from eEtiquette
This is no bad thing.  The choice of video-conferencing for a particular application is something that lies at the discretion of the EPO. Initially it was difficult to arrange, often because of non-availability of video-conferencing facilities at the EPO (though additional facilities are now available and are routinely used for oral proceedings). The experience of some users has been that the Examining Division refused video conferencing for reasons along the lines of "The complexity of the case is such that the presence of the representative in person is required", and this was done with sufficient frequency for them to cease recommending them (it being a huge waste of time to explain to the client the concept of video conferencing, its pros and cons, get them to agree, make the request, and then for that request to be refused (with last-minute travel arrangements then having to be made).

Be that as it may, the facility of video-conferencing exists and it has to be acknowledged that this has improved the EPO's green credentials by reducing the number of flights and other journeys by attorneys to the EPO from locations across Europe, much to the consternation of that dedicated band of air-mile collectors [the obvious solution is to come up with some sort of incentive scheme which gives patent attorneys points, redeemable for rewards, for video-conferencing from far-away locations -- a useful business method if ever there was one ...].

For the attorney, however, there is always the nagging doubt as to whether a face-to-face hearing is likely to produce a better result than a video-conference for the applicant. It is generally assumed that the EPO will treat applicants fairly, irrespective of whether the hearing is held in person or by video-conference, which anecdotally seems to be true. It has however come to Merpel's attention that there are rumours that an examiner has indicated a prejudice against video-conferences on the basis that a request for a video-conference indicates that the applicant does not consider the application to be important and does not therefore warrant the cost of a trip to the EPO -- with the result that video-conference oral proceedings are not nearly as successful for the applicant as one might imagine.

Merpel recognises that, in the absence of data, rumour and anecdote govern our perceptions. This being so, she expects to hear from readers from whose experiences both patent attorneys and the EPO Examining Division can learn.

Never too late! If you missed the IPKat last week

Never too late ...?
In the unlikely sadly all-too-common event that you were so busy last week that the IPKat's output somehow passed you by, you will be relieved that Alberto Bellan's diligent pursuit of the immediate past will help you catch up. Astound your colleagues with your grasp of current IP issues, bewilder your friends and family with your fingertip familiarity with the topics everyone's talking about.  Well, maybe not, but here are last week's Katposts, succinctly summarised by one of Italy's finest sons:
* EPO, SIPO, PEEPO! We take a look at a fascinating event
Peter Arrowsmith (partner in London-based patent attorneys Cleveland) is the IPKat’s special reporter from the event that the EPO and the Chinese SIPO jointly held in Brussels. As he recounts in this post, the event was a high-level discussion in which the heads of the respective offices addressed recent developments, persistent discrepancies between the two systems, and areas of cooperation.

* Taking escorts' photos from a competitor's website without permission? Not a smart idea, rules Birss J
Eleonora reports on Omnibill v Egpsxxx and Carter [2014] EWHC 3762 (IPEC), a spicy case concerning copyright, escort services and pornographic photographs which Birss J had just issued in the IPEC. Among other sexy issues, the ruling considers whether a South African escort website can be deemed to be targeted at the UK public, thus making the infringement an act that takes place in the UK.

* “IP in Transition: Desperately Seeking the Big Picture"
As readers may know, IPKat blogmeister Jeremy has been very busy in the past weeks with this year's Francis Gurry Lecture, "IP in Transition: Desperately Seeking the Big Picture". This post is the final report on what happened in this four-day Australian event. How does the Big Picture of modern IP look like in Jeremy’s view? It’s something quite close to Tracey Emin’s My Bed, our blogmeister explains.

* The finances of the European Patent Office - Merpel takes a look
Merpel sinks her paws in the 2013 financial statements of the European Patent Office. How does the EPO have a balance sheet showing a small profit, larger comprehensive income, assets of nearly €8 bn and liabilities of €12.4 bn?  The answer boils down to its pensions liability, the most famous kitten of the IP blogosphere explains.

* "The claim from Spain is heading down the drain ..." as Bot smacks challenge to unitary patent
In 2013 Spain initiated proceedings before the Court of Justice of the European Union (CJEU), challenging the validity of Regulation 1257/2012 -- which implements enhanced cooperation in the area of the creation of unitary patent protection. The Spain’s action gave birth to Cases C-146/13 and C-147/13 Kingdom of Spain v European Parliament and Council of the European Union. Advocate General Bot’s Opinion in those cases has now been published, and this Jeremy’s post contains everything you need to know about it. 

* Seeing stars and non-dominant rabbits: a couple of trade mark decisions and a rant
Jeremy provides a round-up on two recent trade mark decisions coming from the General Court, these being Case T-342/12Max Fuchs v OHIM, Les Complices and Joined Cases T-122/13, T-123/13 and T-77/13 Laboratoires Polive v OHIM, Arbora & Ausonia SL. The first concerned two trade marks covering a five-pointed star encompassed by a circular device. The second regarded an earlier trade mark “DODOT” opposing the sign “DODIE”, both with and without the image of a nice rabbit. In the first case the opposed CTM application was filed in December 2006. In the second case the opposed application was filed just four and a half years ago. Why don’t we try a fast-track for trade mark cases based on likelihood of confusion, Merpel suggests? 
* Lantana's lament: no technical contribution, no patent Jeremy gives the floor to Paul England (Taylor Wessing LLP), who recounts the tale of Lantana Ltd v The Comptroller General of Patents, Design and Trade Marks [2014] EWCA Civ 1463, a Court of Appeal for England and Wales decision which further explored the oldie-but-goldie issue of software patentability, this time considering a data transfer method.

BREAKING 'GOLDEN BALLS' NEWS: the CJEU sends the case back to OHIM
The CJEU delivered its decision in the GOLDEN BALLS saga [on which see earlier IPKat  posts herehereherehere, here, and here], a 7-year-old trade mark battle between Katfriends Inez and Gus Bodur, owners of the GOLDEN BALLS trade mark, and the French company which holds the trade mark rights on the football award’s name “Ballon D’Or”. The ruling is all about the different similarity test to be applied when it comes to “normal” or reputed trade marks. Whilst the decision is quite depressing, I find this post truly brilliant.

Back in England
Inspired by airports, airplanes and air in general, Jeremy pops up after his Australian trip with this unexpected round-up, recounting of many different things -- movies and music available on in-flight entertainment channels sometimes miss the names of actors and composers; Eleonora does not miss the chance to publish in the prestigious Common Market Law Review; Prof Estelle Derclays joins the group of people exploring the relation between IP and happiness; and many more!

The Consumer Protection Function of Trade Marks: Just so?
Here’s the IPKat weekly appointment with delicious food for thought kindly provided by Neil -- with Jeremy playing a not less than saucy cameo. This time, Neil reflects on trade mark principles and, in particular, on the recurring assertion that consumer protection is a bedrock of trade mark protection. Is this indeed the case and, if so, how does consumer protection fit within the trade mark protection structure, he wonders ...
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 PREVIOUSLY, ON NEVER TOO LATE
Never too late 20 [week ending Sunday 16 November] -- More on Jeremy’s Francis Gurry Lecture "IP in Transition: desperately seeking the Big Picture"  | OHIM and trade marks on 3D and 2D animals’ devices  |  Size of patent drawings matter  |  IPKat e-mails causing problems (but we still love you)  |  Helmut Kohl’s injunction against the “The Kohl Protocols”  |  Ambiguous patent translations  |  IPEC on damages for TM infringement in IPEC’s National Guild of Removers and Storers Ltd v Statham t/a Marrubi's Removals & Storage.

Never too late 19 [week ending Sunday 9 November] -- Copyright over Kim Kardashian’s bottom  |  EPO under EU Parliament’s investigation?  |  Rights on photographs of fake social profiles  |  IPEC hears big claims  |  Spanish copyright reform  |  Court of Appeal for England and Wales’ decision in Interflora v M&S | IPEC on confusing business names in Anglian Windows Ltd v Anglian Roofline Ltd  |  Ford Denied Well-Known Trademark Protection in Russia  |  Crayola suit to prevent genericide and dilution in the US  |  Copyright: monopoly or exclusive right?  |  The 17th draft of UPC Rules of Procedure.

Never too late 18 [week ending Sunday 2 November] -- The Limerick Competition results | More on CJEU in BestWater | The GC in Laguiole | France to review its IP Code | Reports on the “no patents round-up for non-techie people” event | Renting an orphan work in the UK | Aldi and look-alikes | The UK Supreme Court in Servier v Apotex | Are patent trolls really a problem? | Last developments over linking in EU.

Never too late 17 [week ending Sunday 26 October] -- A forthcoming conference on TM agreements | UK Cartier rulings analysed | Obviousness and common general knowledge in the UK | CJEU and registrability of 3D TMs | New EPO Unity Procedural Rules | Patentability of perpetual motion | BGH decision on colour TM | Arnold J's biggest blocking injunction | French Court on Copyright and Free Movement of Goods | Amazon.com and its ancestors | Merpel on EPO strike ballot | CJEU on video framing and copyright | Can pizza flavour be a TM? | Who can use "Duke" as TM in the US?

Monday miscellany

Well done Neil. Fellow Kat and trade mark transactional guru Neil J Wilkof (for it is he) has just been elected to a three-year term of office on the International Trademark Association (INTA) Board of Directors. This is the first occasion on which a Kat has occupied such a position and we are sure that Neil will be a great ambassador for responsible IP blogging as well as a good and loyal servant of the international trade mark community.


Forthcoming events.  Another batch of recently-passed events has been deleted from the IPKat's list on the very sensible ground that they are no longer forthcoming. How many of these events will now be just a warm, happy memory in the minds of those who attended them? Never mind, some fresh events have been added, so do take the effort to check them out here.


Talking of forthcoming events, fellow Kat Eleonora is rustling up plenty of interest in a conference on 17 and 18 September next, down on the south coast of England in the historical town of Southampton, whose university she is presently gracing.  The event in question is the first conference to be held by iCLIC, the university's new interdisciplinary core on law, internet and culture. The event will focus on enrolling internet intermediaries in the enforcement process: if you want to speak, there's a call for papers. Details are available here.


Around the weblogs.  Congratulations to the IP Finance weblog on securing its 1,500th email subscriber.  This blog, founded in January 2008, offers more than 1,200 searchable items on all sorts of money-related topics, not to mention book notices and reports on events.  Well done! Elsewhere, the jiplp weblog carries a Current Intelligence note from Mira T. Sundara Rajan on the Washington Redskins' is-it-offensive-or-not trade mark saga.  Two blogs -- The SPC Blog and the 1709 Blog -- bring news of forthcoming rulings of the Court of Justice of the European Union on supplementary protection certificates for patents and fair compensation for private use of copyright works respectively.


Early Christmas is another of those quaint traditions for which TIPLO -- The Intellectual Property Lawyers Organisation -- is justly noted. TIPLO's Christmas event takes place on Tuesday 2 December (that's next week) and, if there are any turkeys on the menu, there are none on the programme: the star attraction is Mr Justice Birss, speaking on "IP Tales of the Unexpurgated Unexpected".  The venue is the Cholmondeley [here's how you pronounce that name] Room in the House of Lords, Westminster. Full details of the event, how to book for it and all that stuff are here.  Merpel's wondering what the IP Tales of the Unexpected might be: how about (i) US recognises patent trolls as a protected species, (ii) Court of Justice of the European Union issue statement: "We made a mess of the IP TRANSLATOR case", (iii) Google offers to pay for the use of thumbnails on Google Image, (iv) European Patent Office voted "Best Place to Work" or, even more unexpectedly (v) orphan comes forward to claim royalties for use of orphan work. On Scintilla, Joel Barrett's "Brothers in Arms, copyright in photographs" touches on a dispute involving both matters of procedure and principle in a fascinating piece of litigation. Readers' suggestions of further unexpected tales are welcome.

Struggling to understand how to address a copyright infringement issue? Here's my checklist

If you are new to the enchanting world of copyright (say you are a student or a trainee who has just started his/her time in the IP department of a law firm), and you have to deal with issues of alleged infringement (say a problem question in an exam paper or the problem of an actual client), what considerations do you have to undertake?

As some IPKat readers might know, I am now a lecturer in IP law at the University of Southampton. My students and I are just about to conclude the copyright part of the course, ie that moment where all the various copyright issues (should) finally look linked together under the infringement umbrella.

I was looking for some texts/tables that would make clear enough to my students that infringement is not just about derivation and the taking of the whole or a substantial part of a work as per s16 of the Copyright Designs and Patents Act (CDPA). Infringement involves broader considerations, including whether the original work is protected by copyright in the first place, whether there was a licence and what scope this had, whether any defences could apply and, if so, whether the dealing with the original work might be considered fair, etc.

I have been unable to locate any texts/tables that would provide such an overview and bring single topics together in a schematic way [do readers have any suggestions?]

This is why I thought of creating my own personal Copyright Infringement Checklist, ie a list of aspects one should consider when dealing with issues of alleged infringement under UK law. It is by no means authoritative (this is why I named it after myself -- so it was not just out of personal vanity). I thought of sharing it with IP students and trainees who may want to take a look at it. Of course, any suggestions to improve it are more than welcome. 

THE ROSATI CHECKLIST
Aspects to consider when addressing potential copyright infringements under UK law

·        Is the allegedly infringed work protected by copyright in the first place?
·        Does the work belong to one of the categories of works protected under UK copyright?[1] If so, which one?[2]
·        Is the work sufficiently original?[3]
·        Who owns the copyright?[4]

·        What rights have been potentially infringed?
a)      ECONOMIC RIGHTS (test is in s16 CDPA)
·  (What kind of infringement are we talking about here, primary or secondary?)
·  Is/was there a licence – whether express or implied – in place? If so, what is/was its scope?[5]
·  What rights have been potentially infringed?[6]
·  Is there a case of independent creation (no infringement) or rather derivation (this is the causal connection required by s16 CDPA)?
·  Has there been the taking of the work as a whole or a substantial part of it?
·        As to “substantial part”, the question you have to ask yourself is: is this part sufficiently original?

b)      MORAL RIGHTS
·        Never forget that they can be waived under UK law, and that integrity requires a “treatment” (see s80 CDPA)

·        Do any defences (also known as 'permitted acts' and 'exceptions') apply?
a)      Is there any defence available under UK law?[7]
b)      If so, can the dealing at hand be considered fair (matter of fact)? Factors to consider include:
·  Amount and quality of what has been taken
·  Could have the same purpose been achieved otherwise?
·  Use made of the original work, including whether commercial advantage and motives of the dealing
·  Effects on the market for the original work, eg substitution effect
·  Is the original work unpublished?
·  How was the original work obtained?



[1] If not, eg it is an unconventional work, then you should recall potential implications of CJEU decisions in Infopaq, C-5/08 and its progeny, notably BSA, C-393/09 [see here why].
[2] This is key when the economic right that has been potentially infringed is one of those rights, eg adaptation, that are not available to every protected subject-matter.
[3] This may prove tricky when dealing with works which might qualify for copyright protection under the traditional skill, labour or effort approach, but might be considered sub-original if CJEU understanding of originality as author’s own intellectual creation is to be intended as requiring something more than sufficient skill, labour or effort.
[4] This requires consideration of issues such as authorship, joint authorship, works created in the course of employment, copyright assignment, etc.
[5] For instance, you might have granted a licence to reproduce a work, not also to communicate it to the public. If an act of communication to the public takes place, it may be an issue of infringement.
[6] See fn 2 above.
[7] Do not forget that, except Article 5(1), all the exceptions in Article 5 of the InfoSoc Directive are optional for EU Member States to implement into their own national laws. 

Sunday, 23 November 2014

Cats and Bags? The importance of trade secrets protection -- and a conference

Confidentiality is a bit of a delicate issue for felines, since a metaphor that we consistently encounter when dealing with the protection of trade secrets is that of "not letting the cat out of the bag". The metaphor is an apt one, however. As anyone who has had a cat will know, in the unlikely event that you can get a cat into a bag, if it gets out you will find it almost impossible to get back in again. Much the same is true of confidential information. Once out in the open, it is effectively impossible to reinvest it with the property of confidentiality.

This irreversible quality of information -- the facility with which it exits the private domain and becomes shared or public knowledge -- is a danger to which IP practitioners are ever alert (or should be). Even as late as the mid-1980s it was relatively easy to keep confidential information such as technical know-how, ingredient and product formulations and lists of customers and suppliers more or less under lock and key. Employees who had access to such information were watched after leaving a business, to see whether that information had migrated to a new employer to to the employee's own new business initiative. Explicit contractual restraints on post-employment disclosure or use by former licensees were not so difficult to enforce where there was genuinely confidential property to protect, and technology had relatively crude devices for facilitating industrial espionage.

The world is now a very different place. Information stored in digital formats is so easy to copy and to distribute to remote recipients in quantity and in almost no time. The outsourcing of design, product testing and manufacture necessitates the sharing of information that originally would never have left the immediate control of the business generating it. Technical means of securing unauthorised access to third party information are now available in abundance, and much commercially valuable data is stored in the cloud or is transmitted through electronic highways which are insufficiently secure to resist interception. Secret information is also under regular threat from applications for disclosure in legal proceedings and from gaps in the rules regarding professional privilege.

In this new world, businesses have to work closely with their legal advisers and with technical consultancies if they are to devise a workable, affordable strategy for retaining the confidential nature of information that is unavailable to their competitors. They also need to have a Plan B for when all efforts to preserve that confidentiality have failed -- and it might help to have a Plan B that's a bit more subtle than "let's find someone we can sue ..."

Not everyone appreciates how little law exists on the subject.  The Paris Convention on the Protection of Industrial Property contains neither the word "secret" nor the word "confidential" and TRIPS accords it a mention in just Article 39, a curious provision dealing with various species of "undisclosed information". The European Commission has been promoting a Trade Secrets Directive [you can read all about the current state of the proposal and its background here] and that's all very well, but it takes more than legislation to protect trade secrets -- and the reader might get the feeling that the proposed Directive is more about competition and competitiveness in the Single Market than about protecting owners of trade secrets against their theft and wrongful use.

This Kat can't offer any simple solution to the problems surrounding confidential information, but he hopes that some positive and constructive take-aways can be gleaned by anyone attending "Trade Secrets Protection & Enforcement: powering business growth by protecting your confidential data and know-how and enforcing against its misappropriation", a two-day event spanning Monday 26 and Tuesday 27 January 2015 in the congenial and comfy surroundings of the Pullman Brussels Midi Hotel, Brussels [a city associated with the legendary, if fictional, Hercule Poirot]. There are some goodies on display here in terms of performing Katfriends, including John Hull (Of Counsel, Farrer & Co., and author of the 1997 Sweet & Maxwell classic, Commercial Secrecy). John is not the only distinguished author on parade, though. Co-Chair of this event together with Royal Dutch Shell's David Koris is WIPO Deputy Director General James Pooley, author of Trade Secrets, published by Law Journal Press in the United States).

The IPKat weblog is a media partner of conference organisers C5, who are kindly offering readers of this blog a 10% discount if they remember to quote the IPKat's VIP discount code “IPKATTS10” when they register. You can check out the programme, full details of speakers and ancillary attractions by clicking here.

Friday, 21 November 2014

Les Mignardises du Vendredi

Wine and Donuts 

 Yesterday was Beaujolais Nouveau day and the celebrations may have lasted late into the night. Hopefully, the libations will help France forget the issues that the release by ICANN of two new generic top-level domain names (gTLD), .WINE and .VIN, may create. American wine producers are not too thrilled about these two new gTLDs either and neither is the European Commission, which mentioned ICANN’s “unaccountable processes around domain name rights (such as the .wine and .vin issue)” in a memo about its position for the Internet Governance Forum 2014 which took place early last September. These two new gTLDs are both likely to be acquired soon by a registrar, Donuts, which, of course, also owns the .COFFEE gTLD.

It's a gTLD thing

The European Affairs Commission of France’s Chamber of Representatives, the Assemblée Nationale, adopted on November 4th a resolution about these new gTLDs. The rapporteur of this issue, Representative Philippe Armand Martin, gave as an example of possible issues the release could raise the one of the registrar of .VIN, a first level domain name, selling the second level domain name CHAMPAGNE.VIN to a wine maker producing sparkling wines outside of France’s Champagne area.

France is a fierce defender of its geographical indications and the resolution states that “the protection of geographical indications should be integrated into the process of delegation of second level domain names to protect the interests of consumers and producers.” The resolution also alludes to a forthcoming European Commission communication on the issue at the next Council on November 27 and so the arm wrestling between ICANN and the Commission about these two gTLDs may not be quite over.

Rihanna and Topshop, Continued.

I am in the habit to listen to Rihanna in the car when the weekend starts, so it is fitting that I add this information to the mignardises, which I learned reading his tweet published by Goss- IPgirl. Retailer Topshop is appealing the ruling which prevented it from selling tee-shirts bearing RiRi’s image (don’t you love when you get your IP news from Vogue?) You can refresh your memory about the case here.

 It is an interesting case and Rihanna may well be known to future law students as a right of publicity champion. I do not know the laws involved in this case, so I will not comment much further, but in New York, the case would be won by Rihanna without any doubts. Only (IP) Girl (In the World) indeed.

 Fashion and Trade Mark Dilution

I recently experienced a fashion trademark dilution experience I would like to share with you. On weekends, after an appropriate dose of Rihanna’s music, I like to visit a charity shop (thrift store this side of the Pond) and look at the used book section. Then I hit the tee-shirt section to look for shirts bearing amusing, but counterfeit (or counterfeit, but amusing) slogans and images.
One of my earliest  finds 

I stumbled by chance upon a dress which was hanged in front of the changing rooms. As it was hanging at my eye level, I first saw the trade mark stitched on its back: Loulou de la Falaise. Could it be possible that a Loulou de la Falaise dress had made its way to a US thrift shop, bearing a price tag of $7.45?

Haute Couture (Not)
At this time, I had not even looked  at the dress, but vaguely registered that it was made out of turquoise velvet.

After two seconds of complete consumer confusion, I snapped out of it and inspected the dress further: tacky buttons, cheap material and industrial seams, no lining, made in China. Obviously not the real thing. I was able to enter these information in my, hum, database, and compared it with previously gathered information about Loulou de la Falaise. Muse and collaborator to Yves Saint Laurent. Owner of a shop in Paris on the Rue de Bourgogne, where she sold understated yet luxurious accessories and clothes under her own name. This dress could certainly not have been purchased there.

I happened to know about Loulou de la Falaise, but what if another customer does not know her brand, and purchases the dress? Her name would then be associated with a cheaply-made dress: dilution indeed. However, even though Loulou de la Falaise died in November 2011, she is not forgotten, and more people may still learn about her. A book about her life has just been published and the November issue of British Vogue featured several pages on her. Even the Wall Street Journal recently wrote about her.

 During the same visit, I also saw a safari jacket vaguely resembling the famous Yves Saint Laurent model worn by Loulou de la Falaise and Yves Saint Laurent in the photograph published in the Guardian and the jacket bore the label... Yves.

Have a good weekend you all!

Image of wine and donuts courtesy of Flickr user cooklespi, under a CC BY-NC-ND 2.0 license.


The Consumer Protection Function of Trade Marks: Just so?

This Kat been has thinking a lot lately about trade mark first principles in connection with his participation, together with
fellow Kat Jeremy, in a forthcoming program sponsored by the International Trademark Association (INTA) on the subject of trade marks and overlapping IP rights. One such principle is the recurring assertion that consumer protection is a bedrock of trade mark protection. Is this indeed the case and, if so, how does consumer protection fit within the trade mark protection structure?

Consider the observations made by the distinguished chief judge of the U.S. Ninth Circuit Court of Appeals, Judge Alex Kozinski, in his iconic article, “Trademarks Unplugged” (October 1993, 68 N.Y.U.L. Rev. 960), based on the text of his Boal Memorial Lecture. In the piece, Judge Kozinski considered three situations: the trading of Rolex watches, the sale of clothing bearing the marks of the New York Mets baseball team, and a pirated adaptation of Sega's Cool Spot video game. Going beyond the source function of trade marks, he posited four other kinds of interests embodied in the ownership of a trade mark-—moral, utilitarian, goodwill and free expression. Take the ROLEX watch, being for many a quintessential aspirational good. Because of the low price point of a fake watch, no consumer is deceived into thinking that he has purchased a genuine ROLEX product, nor has the purveyor of the branded watch likely lost a customer because of the sale of the fake watch. This is not to say that the brand holder may not have suffered harm. The question is how to understand the property right of the trade mark owner in such a way as to support the grant of relief in such a situation.

Speaking generally about this question, Judge Kozinski concluded as follows:
"We've considered four different kinds of interests implicated by giving trademark owners a more extensive property right in their marks: moral, utilitarian, goodwill, and free expression. How does a court or legislature go about balancing all of these? Well, as I tell my kids when they ask what I'll do if they run away and join the circus, I don't give advisory opinions. In truth, the hypotheticals I've sketched here indicate that results may be case-specific; many of these are close judgment calls, requiring one to balance interests that point in different directions. Applying these considerations to a particular set of facts requires a normative judgment about the relative importance of competing interests.

It is enough for today to recognize that in our culture, trademarks are doing all kinds of work they weren't originally meant to do. As their new functions become more important, so will the need for law to keep up. It's critical that we consider all the interests at stake and weigh those interests by reference to current reality, not according to rules made up at another time to deal with another reality. Trademarks, trade names, logos, and the other symbols of commerce have evolved. The law must evolve with them.”
The focus of Judge Kozinski’s comments is on the proprietary nature of the trade mark right. In so doing, he does not demonstrate any need to also embrace consumer protection as an alternative basis for the expansion of the trade mark right, even in the light of changing commercial circumstances.

Lest Kat readers think that this approach is limited to the American view of the issue, consider as well the pithy observation made recently to this Kat in an exchange with a highly regarded colleague in CTM practice, who put it simply as follows:
“In the EU, the understanding is that trade marks are IP assets, their protection serving their owners' interests. They do NOT protect consumers, we have other laws for achieving that.”
Here, as well, the position is clear. The trade mark right is a propriety right; protection of the consumer with respect to the use of a mark is not the concern of the trade mark laws.

And so the question: how does the consumer protection function fit as part of the trade mark system? After all, and especially so in certain European countries, unfair competition is a distinct statutory right with respect to trade marks, rather than being an element of the trade mark right itself. Is there any reason to treat consumer protection with respect to a trade mark in a different fashion?

KATNOTE from Jeremy, who has a bit of a bee in his bonnet about the consumer protection function of trade mark law: this seems to be a popular debating topic in the US to the point at which it has generated a rich and energetic literature. So influential is this debate that, in his editorial capacity, he sometimes receives articles submitted for publication in JIPLP that state it as being axiomatic that a function of trade mark law (and often the only function of trade mark law) is the protection of the consumer.

It's worth taking a look at the law in wider terms. The word "consumer" is entirely absent from the Paris Convention on the Protection of Industrial Property;  Part II Section 2 of TRIPS, which deals with trade mark law, makes no mention of the word "consumer" except in the tail end of Art.23.3, which deals with extra geographical indication protection for wines and spirits ("Each Member shall determine the practical conditions under which the homonymous indications in question will be differentiated from each other, taking into account the need to ensure equitable treatment of the producers concerned and that consumers are not misled"). The Community Trade Mark Regulation and Harmonisation Directive, which each actually containing the "c" word, do not articulate a notion of a consumer protection function, and no rights or remedies are open to consumers who are unprotected. While the "essential function" of the trade mark in Europe is 
"to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin" (Case C-206/01 Arsenal v Reed)
the protection is given not to the consumer but to the trade mark owner as guarantor of the identity of the origin of the marked goods. 


Consumer protection: are we no more
than canaries in the cage?
As this Kat has remarked on previous occasions, the role of the consumer in European trade mark law is not to be protected but to help the trade mark owner be protected. The consumer is like the canary in the cage which miners used to take underground with them, to detect the presence of poisonous gases. When the canary falls off its perch, dead, the miner carrying the cage knows that it's time to act for his own good. So too, when the consumer falls off his perch, as it were, by being confused, the trade mark owner knows that it's time to act for his own good. In practical terms, neither the canary nor the consumer has much joy in terms of recovery.  

Whether this should be the case is a matter for discussion.  Consumer actions against rogue traders who confuse them, particularly with regard to lookalike packaging, not to mention class actions, might do much to clarify consumer choice in the marketplace and improve its standard of commercial morality.

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