For the half-year to 31 December 2015, the IPKat's regular team is supplemented by contributions from guest bloggers Jani Ihalainen, Nikos Prentoulis and Mark Schweizer.

Birgit Clark is on Sabbatical till the end of the year

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

Thursday, 26 November 2015

Goodbye, good luck!

Saying goodbye is never easy, and this is particularly so in the case of my stepping down from the IPKat blogteam in order to sample the hitherto forbidden fruits of retirement.   My fellow Kats have been a wonderful resource for me -- full of ideas, endeavours and unexpected perspectives on topics on which I have pondered so often that they were in danger of becoming part of my intellectual furniture.  I shall miss their camaraderie, their sparkle, their wit and their carefully crafted rage.  I know that they will carry on our collective work and feel sure that they will lift the blog to new levels of excellence (or indeed, a cynic might say, to any level of excellence).

I shall miss our readers too.  Many have posted comments, in their own names, under cover of anonymity or though the assumption of pseudonyms.  Others have engaged me in correspondence, whether to share their fears and secrets, to inform me of forthcoming legal rulings, to ask a variety of favours or, worst of all, to crow triumphantly over the discovery of an error or – perish the thought – a spelling or grammatical error. 

But most of all I shall miss Merpel …


Down the Tubes: H&M Breached Settlement Agreement by Infringing Patent

Cats are not known for their adherence to agreements, especially when their pet humans neglect their basic needs, such a belly rubs and the distribution of dry foodstuffs. Clearly, this bubble of contractual disregard only extends so far, and plays a big part in the expedient and less expensive rectification of any legal disputes between parties. When you agree to something, you should stick to it, but there are some grey areas and possible (unintentional) overlap post-settlement of any disputes. H&M were faced with such a scenario after an earlier settlement of a legal kerfuffle, decided by the High Court only last week.

The case of Stretchline Intellectual Properties Ltd v H&M Hennes & Mauritz UK Ltd [2015] EWHC 3298 (Pat) dealt with a UK patent concerning the tubular fabric in underwired garments such as brassieres [patent no. GB2309038], owned by the claimant Stretchline. They had brought a claim against H&M in 2010 for infringement of the patent, and after some judicial give-and-take the matter was settled in late 2011. Nearly two years later Stretchline initiated these proceedings, alleging that H&M were, yet again, selling infringing brassieres, including a claim for breach of contract in relation to the aforementioned settlement agreement. H&M alleged that the garments sold were not infringing, and that the patent was invalid. This defence was quickly struck out on the basis that the settlement agreement precluded them from pursuing such a claim, which lead to Stretchline only continuing with a claim for breach of contract.

Some penetration barriers cannot
prevent creatures with claws...

The focus of the patent was its first claim: "a method for making a tubular fabric comprising providing a support yarn and an elastomeric yarn; characterised in that a fusible yarn is also provided and in that the yarns are formed into a tubular fabric whereby the fusible yarn is arranged within the fabric tube so that it is capable of forming a penetration barrier." (emphasis added)

As highlighted, Stretchline alleged that the garments sold by H&M (bras called Devsel, Rimteks and Takefast) incorporated this feature, while H&M contended they did not, and what a 'penetration barrier' actually meant under claim construction. 
Per the precedent set in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2004] UKHL 46 (and other cases since), the question is "...what the person skilled in the art would have understood the Patentee to be using the language of the claim to mean"

Justice Carr, handing down the High Court's judgment, quickly set out that, as there was no contention between the parties as to who the 'skilled person' in the art would be, that it would encompass an individual who has undergone technical education and training in the field of textile technology, additionally understanding the subject matter dealt with in the patent in question.

H&M argued that, in the light of common general knowledge at the priority, the patent would be held invalid. Two expert witnesses were brought forth to discuss what was common general knowledge at the time, and although they both disagreed as to opinion, their differences were seen as minor. Justice Carr finally settled that "...[the] skilled person would have known at the priority date that it would not be practical to form a discrete layer from fusible yarn in a woven fabric", especially since it was 10 times more expensive than the patented counterpart used by Stretchline.

...although they can add some desired comfort

Ultimately, this argument was reject by the judge, as "...the Settlement Agreement precluded H&M from raising the issue of invalidity. It is clear from the judgment of Kitchin LJ... that H&M is precluded from raising, in its defence, a squeeze between non-infringement and invalidity"

After her contemplation on the common general knowledge of the material subject matter, H&M's alleged reliance on that knowledge, and the process and product descriptions (PPDs) provided by both parties, Justice Carr moved onto the question of infringement. In her mind, on the balance of probabilities, H&M's garments would infringe the patent. Their inclusion of fusible yarn to bond fabric together, which, if subsequently heated and cooled, would bond the filaments and yarn to form a resistive fabric layer against penetration within the meaning of claim 1. Images of H&M's garments confirmed this, although not for 100% of the included fabric. She
 saw therefore that H&M had infringed the patent, and subsequently breached the settlement agreement. 

One can have sympathy for H&M, as from a more positive stand-point, the inclusion of the fabric layer could have been a matter of omission or carelessness, but this only highlights the need to keep any agreements in mind in the production of future products incorporating or needing similar functionality. Nevertheless, the case is an interesting one, and for many of us male Kats, at least shows some insight into the world of women's garments in more depth.

Wednesday, 25 November 2015

Wednesday whimsies

Today the Kats, aided and abetted by the hospitality of law firm Veale Wasbrough Vizards in their London office, held this year's IP  Publishers and Editors Meeting. A gathering of around 50 good souls assembled to hear keynote Peter Groves' opinions on various issues including accuracy in expressing oneself (he's in favour), split infinitives (he's against) and subjunctives (he's a recent convert, it seems). Peter ended with a stirring plea for clearer and more generous contracts for authors, whose remuneration -- at least when writing IP articles and case notes -- is not what one might call generous.  More interesting than the end of Peter's talk was, for this Kat, the beginning, when he observed that he is descended on the paternal line from Matthew Groves.  Was this the Matty Groves, this Kat wondered, his mind instantly homing on on the 1969 Fairport Convention version of this epic song, with vocals by the late lamented Sandy Denny (which you can enjoy here on YouTube).

Tomorrow's JIPLP Conference. If you are not attending the sell-out Journal of Intellectual Property Law & Practice 10th Anniversary conference (programme here), there;s some good news.  The event's hosts, Freshfields Bruckhaus Deringer, have kindly organised a live link which you can enjoy by clicking and deploying the password JIPLP10.  This link is expected to go live at 9.30 am GMT on Thursday 26 November.  Accessing this link via Google Chome is recommended, especially if you are hoping to enjoy the 'full screen' facility.  For those who are attending, here's a reminder that there's a Twitter hashtag of #jiplp10.

Around the weblogs If you are a UK tax-payer, business or prospective inward investor, the contents of today's "UK Spending Review" (a.k.a. the "Autumn Statement") are bound to be of concern.  Over on the IP Finance weblog intellectual property taxation specialist Anne Fairpo gives a swift and simple account of it. A day earlier on the same weblog, Rob Harrison invited readers to participate in the World Intellectual Property Review survey of FRAND licensing.  Ben Challis, on the 1709 Blog, writes up a potentially depressing decision for US internet service providers on the possible scope of their liability in the BMG v Cox litigation. The jiplp weblog lists the contents of this December's JIPLP and also hosts founder editor and IPKat blogmeister Jeremy's Farewell Editorial.  Finally, if you have ever wondered what a MARQUES "meet the trade mark judges" event is like, Christian Tenkhoff's report on a recent one in Munich is worth taking a look at. Over on the Aistemos blog, there's a most informative piece of fact-and-figure work on the apparent disjunction between the IP portfolio holdings of Nasdaq-listed companies and their capitalisation.

Some end-of-year reading ...

In case you were wondering what to do with your precious leisure time over the end-of-year period when things get a bit quiet, here are some recent intellectual property publications that might take your fancy ...

US Patent Law for European Patent Professionals, by Audrey Nemeth, is an extremely handy volume for those of us who, being based in Europe, are obliged to keep an eye on developments in the United States on a piecemeal basis but who do not have the luxury of the time to gain a proper appreciation of this complex, important patent culture -- a culture that is so alien and out-of-step in the eyes of those from that small insignificant domain called The Rest of the World.

This is what the publishers say about the book:
This is the first book that has been designed to make communication between European and US patent law professionals more comprehensible.

It explains exactly what is required at every stage of a patent proceeding in the United States, helping European patent professionals understand and act upon the facts. It ensures that both parties have a common understanding of basic US legal terms, and that you – a EU practitioner – will understand the available courses of action for the most common procedural scenarios.

United States patent law, like the European Patent Convention (EPC), is based on a hierarchical code of statutes, regulations and administrative guidelines. However, there are numerous important distinctions, which you’ll need to know if you are looking to successfully protect and leverage intellectual property in the United States.

This highly practical and detailed work is divided into five main parts, covering the basics of US patent law, prosecution of US applications, US patent and post grant proceedings, procedural elements, and advanced topics.
The author, who is Europe-based herself, does not merely describe the framework of the US system and its manner of operation; she leads readers towards the US from the elements of the European system which she can rely on as being familiar to readers, or at least resonating with them. That is not to say that this book is of no value to non-Europeans, since its clear, concise and undramatic description and explanations will benefit anyone who wants an overview of the US law -- especially in its post America Invents Act phase -- and who can set aside a relatively modest amount of time to sit down and read it.  The text is nearly devoid of footnotes, but references to the patent statute (35 USC) are more than adequate for anyone who wants to measure the author's text against the primary legal source.  By the way, it's not a formal comparative analysis of US and European law; that would require a far longer book, one which would not match the author's self-declared target.  Nor is it, or does it seek to be, an infringement litigation manual.

The chapters on “Responding to Office Actions” and “What Is a Final Rejection and How to Respond” are particularly handy, as are the bits that tackle procedural rules and practice and all that nerdy detail of how time limits are calculated, how you can file by fax and post and how to pay fees by credit card.

Bibliographic data: hardback, xxviii + 215 pages. ISBN 9789041160447. Rupture factor: low. Book's web page here

You can also read Audrey Nemeth's blogpost introducing this book on the Kluwer Patent Blog here.


IP and Other Things: a Collection of Essays and Speeches, by Katfriend and judge-turned-academic Sir Robin Jacob, is evidently not the author's last word on the subject since the book's web page describes it as the "First Edition". Considering the vast number of occasions on which this popular and approachable personality has essayed and speeched, it may be expected that there are many further editions to come.  It's a handsome volume but one which will inevitably disappoint any of its readers who have had the opportunity of listening to Sir Robin in person. This because the medium of print cannot capture the wit, the spontaneity, the force and the sense of being utterly and unchallengeably right which have characterised so many of Sir Robin's finest performances over the years. It is hardly the fault of either the author or the publisher, but the evidence is there for all to see.  With all this attractions, this well-produced volume just sits on the desk and waits for something to happen.  It doesn't argue; it doesn't fight; it doesn't let slip the occasional word that you might prefer your aged and saintly grandmother not to hear.  It doesn't do anything unless you turn the pages -- and to enjoy it at its best you have to read the purple passages as Robin would have delivered them in the first place: with power and with passion.

According to the publishers (Bloomsbury, who also publish Harry Potter):
The Rt Hon Professor Sir Robin Jacob has been variously a leading member of the Intellectual Property Bar, a High Court judge and, as Lord Justice Jacob, a judge in the Court of Appeal of England and Wales [but don't let this put you off, says Merpel]. His primary area of expertise is intellectual property (IP) rights. He chose to leave the Court of Appeal in March 2011 to take up his current position as the Sir Hugh Laddie Chair in intellectual property at University College London. He still sits occasionally in the Court of Appeal and is a door tenant at 8 New Square. These essays, selected from his published and unpublished writings and lectures, illustrate the breadth of his learning in IP and other matters. They are written in typically straightforward and entertaining style and, in the case of the older essays, a commentary of what has happened since they were first published. They will be of interest to any lawyer, law student or scholar interested in the development of IP law in the past quarter century.
Definitely worth taking a peep!

Bibliographic data: x and 523pp, hardback. ISBN 9781849465953. Price £65. Rupture factor: medium [though there might be occasional grounds for apoplexy ...] Book's web page here.


Owning the World of Ideas: Intellectual Property and Global Network Capitalism by Matthew David (Durham University, UK) and Debora Halbert (University of Hawaii at Manoa, USA) is, as one might imagine from the title, a book that is addressed at the more radical end of the market.  The book's web-blurb explains:
Formally, ownership of ideas is legally impossible, and can never be globally secured. Yet, in very real and significant ways these limits have been undone. In principle, ideas cannot be owned, yet, undoing the distinction between ideas and tangible manifestations, the distinction which underpins the principle, allows the principle to hold even whilst its meaning is hollowed out.

Post-Cold War global network capitalism is premised upon regulatory structures designed to enforce deregulation in global markets and production, but at the same time to enforce global regulation of property and intellectual property in particular. However, this roll-out has not been without resistance and limitations. Globalization, the affordances of digital networks, and contradiction within capitalism itself - between private property and free markets - promote and undo global IP expansion [if you, like this Kat, have not previously encountered the word "affordance", it means "a relation between an object or an environment and an organism that, through a collection of stimuli, affords the opportunity for that organism to perform an action. For example, a knob affords twisting, and perhaps pushing, while a cord affords pulling"].

In this book David and Halbert map the rise of global IP protectionism, debunk the key justifications given for IPRs [or at least make an effort to do so: not every reader of this weblog may agree], dismiss the arguments put forward for global extension and harmonization; and suggest that roll-back, suspension, and even simply the bi-passing of IP in practice offer better solutions for promoting innovation and meeting human needs.
This book is a must-read for anyone who thinks that there is a meeting of minds in the great debates over the justification and functional utility of intellectual property rights.  Read the text, look at the premises, run your eyes over the extensive bibliography and you will soon see that those who love IP rights and those who see them as a threat are arguing about a different IP and a different reality.

Bibliographic data: xv + 118 pp. Hardback. ISBN 9781473915763. Price £45. Rupture factor: minimal. Book's web page here. Oh, and if you're wondering, the book does have a copyright notice ...


MindWealth, by William A. Jones, is a book written by a true and dedicated IP enthusiast. Again, the title tells you as much about the writer as it does about his subject, since it bears the small-print subtitle "Building Personal Wealth from Intellectual Property Rights".
Intellectual property rights (IPR) are a force for good. People could harness their power more. The book describes the UK and global environment in which people can build personal wealth from IP. At its core is the statistic that approximately 70 per cent of a firm’s value is in its IP, which is generated by people. Changing the environment would help more people build personal wealth from IPR. That includes a better industrialization environment that delivers national competitive advantage through IPR. Author William Jones describes the ecosystem within which people generate and exploit IPR, using many examples, snapshots, and observations, as well as structured disciplines. The book takes a look at this ecosystem through the lens of the individual and IPR – and more specifically, the underpinning idea is that people can build their wealth by ensuring that IP works for them. It highlights factors that can influence an individual’s ability to be successful. It suggests new ideas to provide a better platform for building personal wealth. 
The book doesn’t fall neatly into any genre of, for example, investment, economics, law, or politics [you can say that again, says Merpel! It is a text with many strands: there's legal and commercial advice, war stories, personal reflections and the wisdom that can only be distilled from years of experience in the field]. Rather, it integrates or synthesizes a different position and new genre which exists above or to one side of these.
If you love, or merely like, IP, and if you want a comforting read that will reinforce most of your cherished opinions and beliefs rather than threaten them -- and if you want a tome that will last you right through the quiet end-of-year period, this book, published by AuthorHouse, could be the book for you.

Bibliographic data: xxxv + 576 pp. ISBN 978 1 5049 4120 4. Paperback. Rupture factor: considering that this is a paperback, not inconsiderable. Book's web page here.

YouTube to defend clear examples of fair use, even in court

Nedim Malovic
YouTube to litigate copyright infringement/fair use actions on behalf of users harassed by subject to inappropriate DMCA takedown requests?

This is apparently what is going to happen soon, as IP enthusiast Nedim Malovic (Stockholm University) explains.

Here’s what Nedim writes:

“Over the past few days there have been interesting copyright-related developments taking place in the YouTube world. In particular, Google Director of Copyright, Fred von Lohmann, wrote a post published on the Google Public Policy Blog, in which he announced that YouTube will now take action to defend (in court if necessary) what he called “some of the best examples of fair use on YouTube”.

Developed via case law, the fair use doctrine is enshrined in §107 of the US Copyright Act, and provides that:

“the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—
Fred von Lohmann
(1) the purpose and character of the use [with a relevant consideration being whether the use at hand is transformative], including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.
The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.”

Besides the possibilities offered by joining the ContentID programme developed by YouTube itself, similarly to other Google products relevant rightholders can seek removal of content from YouTube on copyright grounds by submitting a DMCA takedown request [if one takes a look at the Google Transparency Report, the numbers are impressive: overall Google appears to receive approximately 1,500 takedown requests each and every minute].

According to Mr von Lohmann, in some instances DMCA takedown requests have been
YouTube feline sensation
submitted in relation to videos that made use of existing content in new and transformative ways, and amounted for instance to a parody or critique. In other words, these requests related to videos that were protected as fair use under §107.

Google’s announcement that it will defend content uploaded onto YouTube by users/creators is rooted within the idea that “creators can be intimidated by the DMCA’s counter notification process, and the potential for litigation that comes with it ... In addition to protecting the individual creator, this program could, over time, create a “demo reel” that will help the YouTube community and copyright owners alike better understand what fair use looks like online and develop best practices as a community.”

In any case, the territorial scope of Google’s initiative will be limited to the US. It will be interesting to see when – and perhaps even more relevant: how frequently – Google takes action to defend its user’s rights under §107.” 

Yet another pregabalin decision - application to amend struck out as abuse of process

The pregabalin litigation is very far from over.  As blogmeister Jeremy reported earlier this month, Mr Justice Arnold granted an injunction against Sandoz who were launching a full-label product, notwithstanding that he had considered the patent invalid in the decision now known as Warner-Lambert V (see posts here, here and here), because he had given permission to appeal and so there was a possibility that the Court of Appeal would find the patent valid.

That decision contained two other interesting pieces of information, as the judge reported:

The first is that on 16 October 2015 I gave both Mylan and Actavis on the one hand and Warner-Lambert on the other hand permission to appeal against my decisions with respect to insufficiency and I gave Warner-Lambert permission to appeal against my decision with respect to infringement under section 60(1)(c) (but not section 60(2)), subject to the qualification that I refused permission to appeal against my findings of fact. I gave the parties permission to appeal because I was satisfied that those appeals had a real prospect of success. Mylan has stated that it intends to seek expedition of its appeal. Actavis does not support expedition of the appeals, but Warner-Lambert does. It remains to be seen whether the Court of Appeal will order expedition, and when the hearing of the appeals will be fixed for.
The second development is that, in case both appeals on validity are unsuccessful, Warner-Lambert has launched a conditional application to amend the Patent. The proposed amendments fall into two categories. The first category consists of simple deletion of claims which were held to be invalid. Those proposed amendments are, as I understand it, uncontroversial. The second category consists of an amendment which does not amount to a simple deletion, but on the contrary, amounts to a re-writing of one of the existing claims. The proposed amendment is to what was claim 3 of the Patent and, following deletion of old claim 1, will become new claim 2. The amendment consists of adding to the end of the claim the words "caused by injury or infection of peripheral sensory nerves". The basis for that amendment is said to be the statement in [0006] of the Patent that "Neuropathic pain is caused by injury or infection of peripheral sensory nerves".
Now, just out, is the decision on the second development above - the conditional application to amend the patent, Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Company LLC [2015] EWHC 3370 (Pat).  Presumably the Sandoz decision does not come under this numbering, so we can call the latest decision Warner-Lambert VI.

In a nutshell, Arnold J considered that there was no problem with the deletion of the invalid claims, but that the amendment to re-write claim 3 (relating to neuropathic pain) was an abuse of process.  It would require a new trial to consider the allowability of the amendment.  Therefore, the application was struck out as an abuse of the process of the court because because it could and should have been made prior to the original trial.  He rejected Pfizer's argument that it was the victim of procedural unfairness on the part of Mylan and Actavis in not raising the point about central neuropathic pain earlier than they did.  The judge noted:

It is true that the consequence (subject to the outcome of the appeals) will be that claim 3 is invalid and must be deleted, but that consequence is attributable to Warner-Lambert electing to defend the insufficiency attack on claim 3 in the way in which it did, which proved unsuccessful (subject to the outcome of the appeals), and not making a conditional application to amend before trial. As the cases show, Warner-Lambert is not the first patentee to have made that mistake. 

What is interesting to this Kat is that of course it would have been open to Pfizer/Warner-Lambert to go to the EPO and seek the same amendment using the central limitation procedure.  The patent was already amended using central limitation on 22 September 2014 to restrict to pregabalin only, the claims previously having recited a larger group of compounds.  However, a limitation application cannot be conditional - if the limitation application is accepted, the patent will be amended.  Also, limitation would have effect for all designated contracting states, not just the UK.  So this would not give Pfizer the same procedural flexibility.  What happens if an unconditional limitation application is now made before the appeal is over is not clear to this Kat - something similar happened in Samsung Electronics Co LTD v Apple Retail UK LTD & Anor [2014] EWCA Civ 250 (reported by IPKat here), which made it clear that the central limitation route was permissible, but left it open to the Court of Appeal, once the limitation proceedings were concluded, to decide that the appeal proceedings might constitute an abuse of process.  So probably one way or another the central limitation route cannot circumvent the current strike-out decision.

The first development reported above in the decision against Sandoz is the appeal and cross-appeal in the main case.  This is referred to in [145] of the latest judgment, and this Kat, hoping for news of the appeal, was disappointed - Arnold J reports "I do not know when the appeals from Warner-Lambert V will be heard, and in particular whether they will be expedited by the Court of Appeal".  This Kat very much looks forward to news of whether expedition is ordered.

Tuesday, 24 November 2015

No safe harbour for PORT CHARLOTTE trade mark registration, as GI storm brews

From Katfriend Nuno Sousa e Silva who teaches in the Law School of the Portuguese Catholic University, Porto (Portugal), comes an analysis of an issue that is not only sensitive within Europe in general but which may divide the Portuguese from the Scots: the interaction of Europe's laws on the protection of geographical indications with those which allow for the registration of trade marks.  Nuno writes as follows:

National GIs for wines can be invoked to invalidate trade marks; OHIM must change its practice.

Geographical Indications (GIs) are often regarded as an enigmatic, rural, and rather bizarre intellectual property rights.  Art. 22(1) TRIPS defines them as “indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin”. However, GIs do not need be geographical in name (FETA and BASMATI are two notable examples).

In the EU the rules on GIs are spread across three different Regulations:

Regulation 1151/2012 concerning certain foodstuffs and certain non-food agricultural products (the ‘Foodstuffs Regulation’);

Regulation 1308/2013 concerning wines and sparkling wines (this extensive piece of legislation establishes a common organisation of the markets in agricultural products.  The part concerning GIs is found on Arts 93–111);

Regulation 110/2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks.

These regulations, which are actually quite alike, were preceded by several other Regulations with similar content.

One should also bear in mind the Rules on labelling and presentation for aromatised wines (Regulation 1601/91) and the ongoing debate about the possibility of extending the EU system of GI protection to non-agricultural GIs.

Under EU Law GIs are protected against:
  • consumer deception (Arts 13(c) and (d) of the Foodstuffs Regulation and corresponding provisions in the other regulations)
  • commercial use in comparable products (Art 13(a) of the Foodstuffs Regulation and corresponding provisions in the other regulations)
  • commercial use exploiting reputation (Art 13(a) of the Foodstuffs Regulation and corresponding provisions in the other regulations)
  • misuse, imitation or evocation (Art 13(b) of the Foodstuffs Regulation and corresponding provisions in the other regulations)
GIs cannot become generic (Art 13(2) of the Foodstuffs Regulation and corresponding provisions in the other regulations)

The co-existence of national systems of protection for GIs with protection existing at EU level has been controversial. In 2009 the CJEU confirmed in Case C-478/07 Budĕjovický Budvar (the BUD case) at para 114 that the aim of Regulation 510/2006 [replaced by Regulation 1151/2012]
“is not to establish, alongside national rules which may continue to exist, an additional system of protection for qualified geographical indications, like, for example, that … on the Community trade mark … but to provide a uniform and exhaustive system of protection for such indications” (emphasis added).
It was however unclear whether this reasoning extended to EU-level protection of GIs for wines and for spirits. On 18 November the General Court issued a decision which shows that it does not: at least for wine, GIs national rules apply and must be taken into account by OHIM.

Background to the dispute

In October 2006, Bruichladdich Distillery Co. applied to register the words PORT CHARLOTTE as a trade mark for “alcoholic beverages” (class 33), later restricted to “whisky”. In 2011 Instituto dos Vinhos do Douro e do Porto, IP (IVDP) — a public body responsible for the protection of the GI PORTO/PORT — filed an application for invalidity under Art 8(4)of the Community Trade Mark Regulation (CTMR) based on EU law and Portuguese law.

Under Art 312(4) of the Portuguese Industrial Property Code:
“The use of an appellation of origin or geographical indication with a reputation in Portugal, or in the European Community, in products that are not identical or similar, whenever its use aims at, without due cause, exploiting the distinctive character or reputation of the appellation of origin or might harm them [the distinctive character or reputation] is forbidden.”
This provision mirrors the protection against dilution established for trade marks, applying without regard to the principle of speciality. There is a considerable amount of case law that protects the Appellation of Origin PORTO under Art 312(4) of the Portuguese Industrial Property Code.  To give but a few examples: PORTO7 for cinemas, shows & exhibitions, PORTO BRASA for restaurants, GPORT for meat, fruits, and olive oil, and PORTO ORIENTE for tapestry were all refused in 2014 under this Article.

IVDP argued that the trade mark PORT CHARLOTTE would not be admissible under the provision of Portuguese law cited above should therefore be invalidated under Article 53(2)(c) CTMR.

It is clear that the OHIM must take into account GI protection (Art 14 of the Foodstuffs Regulation and corresponding provisions in the other Regulations). As the General Court held in Case T-291/03 Grana Biraghi §55-56:
“...OHIM is bound to apply [the CTMR] in such a way as not to affect the protection granted to PDOs .... Consequently, OHIM must refuse to register any mark which is covered by one of the situations described in Article 13 [now Reglation 1151/2012]... and if the mark has already been registered, must declare that registration to be invalid.”
However, up until now, following the BUD decision mentioned above, OHIM considered that the wine and spirit regulations established a uniform and exhaustive system of protection and that, therefore, national laws on GIs could not be invoked against a trade mark registration. That principle is found on p.11 of this section of the official guidelines.

The Board of Appeal (Case R 946/2013-4) followed this understanding and rejected the application for invalidity.  IVDP then appealed to the General Court on several grounds.

The decision

In Case T‑659/14 IVDP v OHIM (PORT CHARLOTTE) General Court held:
“…it is clear that neither the provisions of Regulation No 491/2009, nor those of Regulation No 207/2009, state that the protection under the former must be construed as being exhaustive in the sense that that protection cannot be supplemented, beyond its particular scope, by another system of protection. On the contrary, it follows from the unequivocal wording of Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) thereof, and from that of Article 53(2)(d) of that regulation, that the grounds for invalidity may be based, individually or cumulatively, on earlier rights ‘under the [EU] legislation or national law governing [their] protection’. It follows that the protection conferred on (protected) designations of origin and geographical indications under Regulation No 491/2009, provided that they are ‘earlier rights’ within the meaning of the abovementioned provisions of Regulation No 207/2009, may be supplemented by the relevant national law granting additional protection.” (para 44).  
That means:
“…The question of the extent to which a sign which is protected in a Member State confers the right to prohibit the use of a subsequent trade mark must be examined in the light of the applicable national law. In this connection, account must be taken, in particular, of the national legislation relied on and the judicial decisions delivered in the Member State concerned….”(para 47).
“...the Board of Appeal was not entitled to dismiss that evidence and fail to apply the Portuguese legislation in question, on the ground that the protection of those designations of origin or geographical indications fell within Regulation No 491/2009 exclusively, and indeed the exclusive competence of the European Union” (para 48) … “Consequently, the Board of Appeal’s approach proceeds from a manifest misinterpretation of the scope of Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) thereof, and of Article 53(2)(d) of that regulation, which vitiates the legality of the contested decision” (para 49).
The second part of the decision analysed the claimed violation of Art 118m(2) of Regulation 491/2009 (now Art 103/2 Regulation 1308/2013) and found that the trade mark PORT CHARLOTTE neither used nor evoked the GI PORTO/ PORT.

The Court also rejected the absolute grounds of Arts 7(1)(c) and 7(1)(g), invoked under Arts 52(1)(a) CTMR. It did not consider the trade mark descriptive nor deceptive.

What does this mean?

Unless reversed on appeal, this decision is a departure from established practice and means that national laws on GIs can make a significant difference in the possibility to register some CTMs. The possibility of extended protection against dilution for famous GIs can be regarded as justified or as an undue burden on free commerce. That is up for debate.
This Kat agrees that national laws can't be ignored or swept under the carpet unless there is some explicit legal statement -- or an extremely strong implication -- that can serve to disapply them.  Merpel however wonders what good can come from this decision. As a seasoned drinker, she struggles to see how her drinks cabinet could not be cosmopolitan enough to hold both PORTO wine and PORT CHARLOTTE whisky.  What, from PORTO's point of view, is there to be lost or needs to be protected?  Both Kats fancy that there will be an appeal ...

How to pronounce Bruichladdich here and here

Before you circumvent, circumspect! Nintendo TPM triumphs in Italy

This Kat is from a bygone generation in which games and playing were rarely associated with anything electrical. Crossword puzzles, chess, bridge, football, tennis -- all of these were "contact sports" in the sense that some form of human contact (including asking a friend for advice when stuck for a cryptic crossword clue) was generally required. Special treats, like battery-operated cars, were only treats for as long as the batteries lasted -- which in his case was not usually very long.  He therefore marvels not only at the sophistication and excellent graphic quality of video games but also at the ability of people who are approximately one-tenth his age to master them so speedily and with to acquire such proficiency in beating him at them.

Be this as it may, here's a guest post from Katfriends Ray Black and Mary Guinness (Mishcon de Reya) which touches not only the profile of the lucrative game market today but also on the outcome of an exciting piece of Italian litigation involving game-related technology. This is what they tell us:

Nintendo wins Italian case against mod chip seller after CJEU’s ruling on security in its consoles and games

Nintendo has recently obtained a positive ruling from the Italian courts, in relation to PC Box's sale of mod chips and game copier devices that are capable of being used to circumvent the technological protection measures (TPMs) on Nintendo's DS and Wii Consoles and authentic video games.  This decision was keenly-awaited since it was the first interpretation of the CJEU's ruling in January 2014 in Case C-355-12 Nintendo v PC Box [on which see Katpost here and links to earlier comments; one R Black appeared for Nintendo in this reference ...] on the effectiveness of TPMs and enforceability of rights against those who seek to circumvent them. 


Piracy is a major threat to the videogame industry, costing hundreds of millions of euros in lost sales every year.  One of the tools the video game industry can deploy to protect its games against the threat of piracy is to implement TPMs which prevent unauthorised copies predominantly downloaded from the internet by consumer from being played on a genuine video games console.  Article 6 of Directive 2001/29 (the InfoSoc Directive) gives rights holders the right to take action against the circumvention of any effective TPMs.

Nintendo had implemented a system of TPMs on its products to prevent the play of unauthorised copies of Nintendo video games developed by Nintendo and third parties (SEGA, Ubisoft etc.). PC Box were selling 'mod chips' and game copier devices which, once installed on the respective console, circumvented this protection system. Nintendo commenced proceedings under Article 102c of Law No 633 as amended by Legislative Decree No 68 which transposes the InfoSoc Directive into Italian law and gives rights holders the ability to take action against any person manufacturing and/or distributing equipment which circumvents TPMs. 

PC Box claimed that Nintendo were not entitled to challenge their circumvention of Nintendo's TPMs for a number of reasons. In particular:

·        Nintendo had not only implemented the TPM in the product protected as a copyright work (i.e. the game itself) but also in the games console. This meant that it not only prevented use of pirated video games but also prevented the use of any legitimate third party games from operating on Nintendo's consoles. On this basis the TPM went beyond merely preventing the use of unauthorised copies; and
·         The PC Box equipment had a legitimate commercial use, in that it enabled the use of 'homebrew' – applications from independent manufacturers created specifically to be used on Nintendo's consoles. 

The Italian Court sought a preliminary ruling from the CJEU on the interpretation of Article 6 of the InfoSoc Directive.    

The Law

Article 6 of the InfoSoc Directive states:

Obligations as to technological measures

1. Member States shall provide adequate legal protection against the circumvention of any effective technological measures, which the person concerned carries out in the knowledge, or with reasonable grounds to know, that he or she is pursuing that objective.

2. Member States shall provide adequate legal protection against the manufacture, import, distribution, sale, rental, advertisement for sale or rental, or possession for commercial purposes of devices, products or components or the provision of services which: 
(a) are promoted, advertised or marketed for the purpose of circumvention of, or
(b) have only a limited commercially significant purpose or use other than to circumvent, or 
(c) are primarily designed, produced, adapted or performed for the purpose of enabling or facilitating the circumvention of, any effective technological measures.

Article 6 must be read in the context of the recitals to the InfoSoc Directive, which state:

(47) Technological development will allow rightholders to make use of technological measures designed to prevent or restrict acts not authorised by the rightholders of any copyright, rights related to copyright or the sui generis right in databases. The danger, however, exists that illegal activities might be carried out in order to enable or facilitate the circumvention of the technical protection provided by these measures. In order to avoid fragmented legal approaches that could potentially hinder the functioning of the internal market, there is a need to provide for harmonised legal protection against circumvention of effective technological measures and against provision of devices and products or services to this effect.

The IPKat's favourite PC
Box ("public call box") ...
(48) Such legal protection should be provided in respect of technological measures that effectively restrict acts not authorised by the rightholders of any copyright, rights related to copyright or the sui generis right in databases without, however, preventing the normal operation of electronic equipment and its technological development. Such legal protection implies no obligation to design devices, products, components or services to correspond to technological measures, so long as such device, product, component or service does not otherwise fall under the prohibition of Article 6. Such legal protection should respect proportionality and should not prohibit those devices or activities which have a commercially significant purpose or use other than to circumvent the technical protection. In particular, this protection should not hinder research into cryptography.

(49) The legal protection of technological measures is without prejudice to the application of any national provisions which may prohibit the private possession of devices, products or components for the circumvention of technological measures.

... though other PC Boxes
are more functional
(50) Such a harmonised legal protection does not affect the specific provisions on protection provided for by Directive 91/250/EEC. In particular, it should not apply to the protection of technological measures used in connection with computer programs, which is exclusively addressed in that Directive. It should neither inhibit nor prevent the development or use of any means of circumventing a technological measure that is necessary to enable acts to be undertaken in accordance with the terms of Article 5(3) or Article 6 of Directive 91/250/EEC. Articles 5 and 6 of that Directive exclusively determine exceptions to the exclusive rights applicable to computer programs.

Preliminary ruling of the CJEU

In January 2014, the CJEU ruled that:

(1) a video game is not just a computer program but includes other creative elements and so falls under the scope of InfoSoc Directive and is not excluded from protection under that Directive by virtue of the Software Directive 2009/24.  
(2) Protection granted to TPMs under Article 6 of the Directive include measures which are incorporated partly in the video game itself and partly in the console, and which interact to allow a videogame to be played on the console.    
(3) In order to be entitled to protection under the InfoSoc Directive, the TPM must be proportionate and suitable for the achieving the objective of protecting copyright works.  They must not go beyond what is necessary to achieve that objective.  
(4) it is for the national court to determine whether the TPM are proportionate and this should involve the examination of:

(i) the actual use of the circumvention devices – to see how often they are in fact used to allow unauthorised copies of video games and how often they are used for purposes which do not infringe copyright; 
(ii) whether other measures or measures which are not installed in consoles could cause less interference with the activities of third parties, while still providing comparable level of protection of the rights holder's rights; and 
(iii) the relative costs of different types of TPMs, and the technological and practical aspects of their implementation.

The Italian decision

So what about the decision of the First Instance Tribunal of Milan [it’s No. 12508/2015, published on Nov. 6, 2015 - General Case Roll No. 11739/2009, in case you were wondering]?

Following the CJEU ruling, the Italian court first addressed the CJEU's finding that videogames were indeed more than just computer programs and ruled that Nintendo's video games fell within the scope of protection provided by the InfoSoc Directive.   

The Court then considered whether Nintendo's TPMs were in fact proportionate, taking into account the factors identified by the CJEU.  Nintendo had filed an expert report specifically dealing with the technical description of its TPMs, illustrating the advantages in terms of costs, ease of use and security.  The expert report also compared the TPMs with the known alternatives. With respect to the actual uses of the circumvention devices sold by PC Box, again Nintendo filed evidence. 

The Court made it clear that it was for the defendant (ie PC Box) to bear the burden of proof in establishing whether TPMs could have been deployed which could cause less interference while providing comparable protection was placed on the defendant; the same applied to proof of the actual uses of the circumvention devices.  Since, PC Box filed no evidence and raised no adequate arguments to counter these points, the Court accepted the evidence on its face value and concluded that PC Box breached the lawful TPMs installed on Nintendo's devices.   As well as orders for destruction of the PC Box equipment, the Court awarded significant damages to Nintendo together with reimbursement of its costs of the proceedings. 

No window for Box

While for many, after the CJEU decision, the Italian Court's judgment will not come as a surprise, some commentators had felt that the CJEU had left a window open for PC Box and similar suppliers of circumvention measures where there is legitimate non-infringing commercial use of their equipment. 

We now have our first indication of how national courts will be interpreting this decision and this is in line with previous decisions before the High Court, England and Wales (e.g. Nintendo v Playables [2010] EWHC 1932 (Ch) [noted by the IPKat here]).
Thanks for this update, says the IPKat!

Monday, 23 November 2015

Monday miscellany

In "Jumpin' through hoops? A copyright claim that never got off the ground", this Kat hosted a guest contribution from Kevin Winters on a copyright infringement action brought by Jacobus Rentmeester against Nike on the basis that its iconic Michael Jordan "Jumpman" logo (left) infringed his copyright. Now there is a sequel. This Kat has been advised that the trade mark on the right, owned by Oxfordshire-based Orthomobility Ltd -- a company that makes prosthetic devices -- has been registered in Germany.  Thank you Edward Humphrey-Evans (Katpat!) for keeping us informed.

Around the weblogs 1.  One of the most entertaining items to appear on the copyright-focused 1709 Blog for a while is quite an unexpected one: Amanda Harcourt's review of Matthew Billy's podcast about ASCAP, the BMI and Sharkey the seal.  The same weblog carries an obituary for the United Kingdom's private copying exception, solemnly penned by Andy Johnstone.  IP Draughts' Mark Anderson voices some well-aimed criticism at a futile appeal in respect of an agreement governing a selection of Bob Marley works including No Woman, No Cry: "the court at first instance and the Court of Appeal had a relatively straightforward task to interpret the 1992 agreement, and they performed it well. No new point of law arises from the case. There is no guidance that needs to be given to drafters in light of the case. It is an illustration of how far a party is prepared to go to try to protect its business interests, by pursuing a dud case all the way to the Court of Appeal".

Around the weblogs 2. On the Class 46 European trade mark blog, Laetitia Lagarde writes up a neat little decision of the General Court to the effect that earlier MUSTANG word and figurative (right)marks for clothing would not be tarnished by the negative association of a later figurative mark containing the word MUSTANG for cigarettes. The Selvam and Selvam blog has drawn attention to the intention of the Indian Government to amend the Trade Mark Rules 2002 via  the Trade Mark Amendment Rules 2015. These propose, inter alia, to hike filing and prosecution fees by 100% and to empower the Registrar to determine certain marks as being well-known trade marks. Raja Selvam's post is here: objections and suggestions should be sent to the Additional Secretary to the Government of India at sahni.palka at by 18 December 2015.

UCL, on the road again ...
Homeless faculty teaches copyright, offers 29 CPD points.   Convened by the ever-excellent Amanda Harcourt, "Copyright Law: Meeting the Legal Needs of the Creative Industries in the 21st Century" is the title of a forthcoming course at University College London (UCL). Running from Monday 18 to Friday 22 January 2016, its aim is to help young practitioners, advising in accordance with current statutes and existing contracts, to look to the future and explore copyright and related laws in a digital context together with imminent legal developments. The Faculty includes fellow Kat Eleonora, 1709 Blogger John Enser (Olswang LLP), not to mention a healthy pawful of Katfriends.  Indeed, this Kat can vouch for the fact that the other speakers in this stellar faculty are very much worth hearing, too.  There's just one detail to bear in mind: if you are going to commit yourself, it's best not to delay too long since there's a deadline for registration. As the college explains:
As the UCL Law Faculty is currently virtually “homeless” because of building works, the Faculty will be securing an outside venue for this conference. Choice of venue will, naturally, be dependent upon numbers. As a consequence applications for entry from attendees will close on Wednesday 16 December 2015.
You can read more about the course content and download the brochure by simply clicking here.

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