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

Saturday, 13 February 2016

Mr Justice Arnold foresees no infringing saline use in Actavis' pemetrexed future

The AmeriKat taking a much needed
nap in preparation for opening all those
Valentine's Day cards...
If you were at a loss as to what to get that special patent litigator in your life this Valentine's Day, look no further.  Mr Justice Arnold seems to have heard your cries for help in handing down his decision in the latest Eli Lilly and Actavis battle concerning lung cancer treatment pemetrexed disodium.  Read with a plummy Joanna Lumley voice, Mr Arnold's decision in Actavis v Lilly [2016] EWHC 234 may be just the thing to set the mood for a romantic candlelight dinner (although, some may say it is a mood killer depending what side you are on).  Although the AmeriKat has not had a chance to fully digest each and every word of the mere 58 page judgment, she sets out a skeleton summary of the decision below:

The product

Lilly's pemetrexed disodium - a chemotherapeutic treatment for lung cancer.  Marketed under the brand name Alimta as a freeze-dried powder, it contains instructions as to how to reconstitute and then dilute it in a 0.9% solution of sodium chloride (saline).

The patent

European Patent No 1 313 508 protects the use of pemetrexed disodium in combination with vitamin B12 or a pharmaceutical derivative thereof and optionally a folic protein binding agent.  The patent expires on 15 June 2021.

The background

The case is the latest installment in the long-running dispute,which started in July 2012 when Actavis sought declarations for non-infringement (DNIs) in respect of the French, German, Italian, Spanish and UK designations of the patent. The DNIs were sought initially in respect of the dipotassium version of the product, then later diacid and ditromethamine.  This was in advance of the planned launch of their generic pemetrexed product.

Following a dispute as to the jurisdiction of the DNIs (see High Court and Court of Appeal decisions here and here), Lilly counterclaimed for infringement of the UK designation.   At the time, Actavis's product was planned to be reconstituted and/or diluted with sodium chloride (saline), but they didn't raise an issue with B12.  Two years later in May 2014, Arnold J held that Actavis's proposed dealings would not amount to direct or indirect infringement (see here).  The Court of Appeal upheld the decision in respect of direct infringement, but reversed the indirect infringement finding on the basis that if the products were reconstituted/diluted the saline solution would contain sodium ions and pemetrexed ions in a ratio of at least 2:1.  This would fall within the claims and thus the supply of Actavis's products would amount to indirect infringement.   Both sides have appealed to the Supreme Court.  In the meantime, the Court of Appeal's judgment is binding.

This action

Following the Court of Appeal's judgment, Actavis requested and the Court Appeal allowed to remit back to the Patents Court a new issue as to whether the supply of their products would constitute indirect infringement of the Patent if marketed with instructions to reconstitute and/or dilute the products with 5% dextrose solution instead of saline (the Dextrose Remission Issue).  Actavis therefore requested DNIs in respect of the UK, French, Italian and Spanish designations of the patent.
Actavis subsequently launched a pemetrexed diacid product which does not require reconstitution.  The Summary of Product Characteristics (SmPC) which forms part of Actavis's marketing authorization states that the product is only to be diluted with dextrose solution (not saline).  Lilly argued that it is foreseeable that the Actavis product will be diluted with saline by some customers  in light of concerns about the use of dextrose (glucose) in diabetic patients.  As soon as the stability data for Actavis's products with saline became available this switch will be foreseeable.  Lilly therefore resisted the DNI sought by Actavis in respect of the Dextrose Remission Issue.  It did not counterclaim for infringement.

Besides the Destrose Remission Issue, there was the so-called Letters Issue, relating to the effect of two letters written by Actavis's solicitors to Lilly's solicitors.  The issue was whether the letters were legally binding undertakings.  The judge held they were not (which will be subject to another post).

The question

Do Actavis know, or it would be obvious to a reasonable person in the circumstances, that the Actavis product is likely to be diluted at least in some cases by some of Actavis' customers?  Is it foreseeable?

The answer

No, because:

  • Pharmacists will follow Actavis's SmPC which states that the product must be diluted with dextrose.  The likelihood of pharmacists departing from the SmPC depends on when the saline stability data becomes available and whether it would motivate a pharmacist to actually use saline in light of the steps Actavis has taken to prevent the use of saline (including product labels, leaflets, letters and calls to hospitals, etc).  None of this was foreseeable, held Arnold J.
Lilly's Alimta
  • First, the stability data is unlikely to become available.  Actavis had undertaken not to make such data available and confirmed that they were willing to continue the undertaking.  Stability data would have to be obtained somewhere other than from Actavis.  It was unlikely that a third party would carry out further stability studies, especially given that the SmPC stated that the dextrose solution was stable for 14 days.  One of Actavis's experts stated that in he was not aware of any hospital storing Alimta for more than 24 hours.  It was further unlikely that a third party would carry out stability studies with saline (whether as a comparison with dextrose, or not).  Even if a third party carried out saline stability studies and the reliability of the study was confirmed, there would be concerns as to the potential for the formation of microparticles and bacterial growth.  If such data was published, it would be 2-3 years from Actavis' launch (meaning 2-3 years until the expiry of the patent).  
  • Second, even if the stability data was available there would be no motivation to use the saline rather than the dextrose solution.  There were no issues with dextrose (potential for phlebitis, saline being the default dilutant, risk of bacterial growth) that were significant enough to motivate the use of another dilutant.  Even if the saline stability data was available, this does not necessarily lead hospitals to change dilutants.  Case and point was the fact that although there was stability data available for Alimta with dextrose, hospitals still diluted it with saline.  The only plausible motivation for departing from the SmPC would be in respect of diabetic (or pre-diabetic) patients.  However, the expert evidence was that because 5mg of glucose (the amount to be administered) was so small (equivalent of one jelly baby - for non-UK readers these are tiny creepy fruit-flavored gelatin candies in the mold of a baby), an endocrinologist would not be concerned.  Other chemotherapy drugs, including carboplatin and oxaliplatin, are also routinely administered at 5% dextrose solutions and do not cause problems for diabetic patients.  The addition of dexamethasone (which is known to cause significant increases in blood sugar levels) to the treatment would not be an issue, as diabetic patients would be advised to monitor their glucose levels more frequently and adjust their medication accordingly.  None of pharmacists' evidence suggested that they were ever concerned about the use of dextrose in diabetic patients.  However, Mr Justice Arnold noted that he could not exclude the possibility that in a few years some pharmacists will decide to switch to saline.  
  • Third, even if the stability data was present that would motivate the use of saline, Actavis's safeguards would be effective in preventing such use.  

Lilly's potential appellant's notice re-imagined in
love hearts....
Mr Justice Arnold held that it was not foreseeable that Actavis's product would be diluted with saline.  Their product, for the foreseeable future, will not infringe Eli Lilly's patent.  He therefore granted the DNIs, but gave the parties liberty to apply in the event that at some point in the future should saline be used Lilly would be able to seek appropriate relief.

Although Mr Justice Arnold could not foresee the use of saline in the future, the AmeriKat can easily foresee one future event - an appeal to the Court of Appeal.  With the parties clashing since 2012 and the first round subject to at least three appeals (including a potential Supreme Court outing), the evidence points to another appellate visit.   Well, what could be more romantic than an appellant's notice this Valentine's Day...?

Friday, 12 February 2016

Why it may not be possible to provide a comprehensive explanation of trademarks

Fellow Kat Eleonora asked in her post of yesterday-- “Is trademark law difficult?”, focusing on the complexity of the trademark
registration process. A similar question recently occurred to this Kat, but from a different direction. True, the trademark registration process can be complex, but with enough persistence, one can usually navigate through it. What is more intractable is trying to put together the building blocks of trademark law that have developed over the years. For this Kat, therefore, here is the central question— “Is it possible to talk about in an analytically coherent fashion?” He is not sure that he can give a thumbs-up response.

Let me suggest that there are three principle lines of inquiry that have been brought to bear on trademarks. The first is determining exactly what and whom are being protected—the trademark owner against a trader using a confusingly similar mark or the consumer from being deceived? Are trademarks a property right or a deception right? Let’s assume the answer is that it depends—the EU approach tends towards the former while the US approach tilts towards the latter. If so, considerations of consumer protection are more likely to find their way into US trademark law as compared with its EU counterpart. But these are tendencies rather than black and white distinctions, and the resolution to the question can play out differently, depending upon the jurisdiction.

The second is to ask to what extent trademarks are economically beneficial. The 20th century witnessed two principal approaches to the question. The earlier approach took a relatively negative view of trademarks, arguing that they have the effect of creating artificial distinctions between roughly similar products. If you, as a trademark owner, hit the trademark jackpot and succeed in nurturing a trademark that can command a premium price, you become better off, even if there is no enhancement of consumer welfare in the form of obtaining a premium product in exchange for paying a premium price. Advertising is held to play a key role in creating these artificial distinctions and generating the requisite demand. For Kat readers with an historical bent, it is fascinating to see how this approach folded into the debates within the US Department of Justice in the 1930’s and 1940’s during the process of enacting the Lanham Act of 1946.

Towards the latter part of the 20th century, a the neoliberal economic approach (think Adam Smith) gained ascendancy, emphasizing the role that trademarks play in providing useful information about the goods or services to the consumer. Trademarks are perceived as an efficient means for providing useful commercial information. A so-called strong mark is viewed as more successful in providing this information, rather than as an instrument for consumer exploitation. What is common to both these approaches is that they are driven by economic analysis. As such, they are not directly part of trademark law, although since they are often part of a law school education, at least in the U.S., as well as providing the foundation for many a scholarly article, they serve as the basis for arguments about whether there is too much or too little trademark protection.

The third centers on identifying the function(s) of a trademark. Everyone agrees that a trademark is first and foremost an indication of source, which serves a fundamental component of trademark law. But additional functions can be to be recognized, most notably the quality function of a mark, which was seen to derive from the origin function and, in the US at least, provided the basis for giving legal recognition to licensing. Various jurisdictions have gone further, affording recognitioninter alia to the advertising function (positive and negative) and to an information function. The extent to which these additional functions are merely variants or the origin function, or are sui generis (as Eleonora wrote that some claim it is "...because of the Court of Justice of the European Union that has added all those trade mark functions"), or are not really functions at all from the legal perspective, is not settled. And then there is that category of marks that are so strong that do not merely serve as an indication of source, but become their own asset. Do such marks constitute an exception from the source indication function, or do they amount to another function for trademarks for a select number of well-positioned marks?

And so the question—how are we meant to interweave these various analytical moving parts? Are they meant to be interwoven as components of an overarching whole, or is each of them a separate and distinct inquiry about how to
understand trademarks and trademark law? If the former, as a profession, both in practice and in academia, we are far from explaining these interconnections and for good reason, because any attempt to join together so many elements into a single coherent legal framework seems especially daunting. If the latter, there is the relief of not having to show these interconnections, but at the price of dooming any analysis of trademark law to a series of partial explanations. Perhaps that is why it is so challenging to talk about trademarks.

Thursday, 11 February 2016

Life of a national/EU trade mark ... in a map

Is trade mark law difficult? 

Usually, the response that one gets (with a serious/defeated tone) when asking this question is: "Yes because of the Court of Justice of the European Union that has added all those trade mark functions".

But apparently trade mark law is difficult in general, and many students (undergraduate law students I have at Southampton) confess that they find it challenging to get an idea of what, in general and at the very outset, the "life" of a trade mark law may be about.

I thus thought of preparing a conceptual map that could help my students get a clearer picture of what events may occur in the life of a national EU trade mark, starting from the notion of "sign" to registration and anything after that, ie infringement, invalidity, revocation, etc.

The map is of course a general one, and any feedback from IPKat readers on how to improve it is very welcome!


* Vd Article 3 of Directive 2015/2436 (deadline for national transpositions of this provision is 14 January 2019) and Article 4 of the EU Trade Mark Regulation as amended by Regulation 2015/2424 (this provision will enter into force on 1 October 2017).

** These can consist of attempts to register:
  • Identical signs for identical goods/services;
  • Identical signs for similar goods/services where there is a likelihood of confusion, including association;
  • Similar signs for identical/similar goods/services where there is a likelihood of confusion, including association;
  • Identical/similar signs for dissimilar goods/services where earlier mark has a reputation and registration of the later mark would take unfair advantage of its repute/tarnish its repute/dilute (blur) its distinctive character.

*** See here.

**** Due to:
  • Non-use within 5 years’ limit;
  • Use suspended for non-interrupted period of 5 years;
  • TM has become generic;
  • TM used to mislead consumers.

Thursday Thingies

The cat as patent star--It is rare that the IPKat and its ilk find themselves part of a patent appeal. For that reason, the IPKat thanks Kat friend Sam Adams of Müller-Boré & Partner for bringing to our attention
paragraph 18 of EPO Technical Board of Appeal 3.5.06, given on November 17, 2015, which reads as follows:
“The independent claims of the auxiliary request specify, in addition to those of the main request, that the user interacting with the virtual electronic pet moves a cursor back and forth over the display of the virtual pet and, in response to this movement and varying with it, receives as haptic sensation a periodic vibration. The claim further specifies that the virtual pet in question is meant to "be" a cat and the haptic feedback to evoke a "purring sensation".”
Apparently, the question of “to be or not to be” is not limited to Shakespeare. Kat readers who wish to find out more are invited to read the entire decision.

Berenika Depo Prize--An IP story of a somewhat different kind has reached the IPKat from Mr. Justyn Depo, whose daughter and IKat friend, Berenika Depo, passed away suddenly in 2010, as reported by the IPKat. The Berenika family together with the Nyatri Foundation in Poland decided to honor her memory by establishing the Berenika Depo prize for talented children at the Bon Children’s Home, located in Dolanji, India. The Bon Children's Home is described on its web site as follows:
"The Bön Children’s Home provides housing, food, clothing, medical care and education to approximately 300 Bön children, aged 4 – 19 years. The Bon Children’s Home has a staff of twelve to care for the children.The children study at the local school made available by the Indian government. The children receive cultural education in their native Bon culture and Tibetan language, and also study Hindi, English, and general education courses."
Mr. Depo reports that the two winners of the first Berenika Depo Prize are Mr. Nyima Tsering (first prize) and Miss Bhirikuti Sheesh (second prize). The IPKat congratulates the winners.

Wednesday, 10 February 2016

Wednesday Whimsies

IP educational initiative--The Intellectual Property Office and Baroness Neville-Rolfe, Minister for Intellectual Property, announced today a new government initiative to help UK schools promote what the initiative
calls "vital Intellectual Property education.” The announcement states that--
From today GCSE and NQ students across the country will be given access to specialised intellectual property (IP) training, preparing them for the future and ensuring they understand how to protect their creative works.‘ Think Kit’ lesson plans, designed by the Intellectual Property Office (IPO) and launched today by the Government, will give teachers of Business Studies, Media Studies, PHSE and Music access to brand new online resources and toolkits designed to improve the next generation’s understanding of IP. The lesson plans and online courses are the result of extensive qualitative research by the IPO involving hundreds of teachers across the UK which found that teachers and students wanted to improve their IP knowledge. The lesson plans have been funded by The Office for Harmonization in the Internal Market (OHIM).”
The full text of the press release is attached. The IPKat certainly welcomes any initiative to raise the awareness and understanding of IP among students.

Conferences near and far--Two IP conferences, one to take place next week and the other to occur at the end of 2016, are worthy of a Kat mention.

As for the program around the corner, all Spanish speakers take note: IPKat friend Mariona Baldo has informed us that the annual conference of the Spanish Group of AIPPI will take place next week, February 18th and 19th, at the Meliá Hotel in Madrid.There is still time to register for what looks like a most interesting two-day program.

As for the second program, fellow Kat Nicola recently reported on the growing interest in quantitative analysis of IP. In that connection, the OECD has announced that its 2016 IP Statistics for Decision Makers (IPSMD) conference will be hosted by IP Australia and will take place in Sydney, Australia, November 15th-16th.The IPKat will endeavor to bring further information about this event as they become known.

Tuesday, 9 February 2016

Arnold J's latest judgment flags down the iconic (but not distinctive) London black cab

In warmer times, the AmeriKat can be found on Broadway
hailing the iconic yellow cabs to take her to Bloomingdales
for some light shopping.
Outside her window this morning, the AmeriKat is watching the iconic yellow cabs of New York racing workers and tourists up and down the island.  The New York yellow cab's equally iconic cousin is the black cab of London.  Its color and shape is as familiar and iconically British as beefeaters and Big Ben and far more useful than either when the London skies are pouring with rain. But would your average Londoner hailing a taxi know (or care) if it was a TX1or a Metrocab? More importantly, is such a Londoner the "average consumer" of the taxis for the purposes of trade mark law? This was just one of the many questions dealt with by Mr Justice Arnold in The London Taxi Corporation Limited trading as the London Taxi Company v (1) Frazer-Nash Research Limited and (2) Ecotive Limited [2016] EWHC 52 (Ch). The AmeriKat thanks up and coming IP enthusiast, Jemma Trainor, for the full story:
Background: The TX models v the Metrocab  
In typical fashion, Mr Justice Arnold's decision provides a colourful and detailed history of the London cab (from 1621 to the present no less).  The important point for these purposes is that, by 2015, the licensed London taxi fleet was dominated by certain models of taxis manufactured by the claimant. These were the TX4, the TXII and the TX1. In contrast, the humble old Metrocabs manufactured by the defendants, made up only 1.7% of the London fleet.  

FNR, one of the defendants, had been trying to design a new Metrocab (without much success) since the early 2000s. By 2010 it had settled on a design vision - to produce a car which was both recognisable as a licensed London cab but distinct from the LTC cabs that were widely used in the market. The design process culminated in a new model of Metrocab which had certain distinguishing features (a large “M” on the front and sides, a panoramic glass roof affording views of the city to passengers) but was also “instantly recognisable as an iconic London Hackney Cab”. See the picture below for a comparison – the new Metrocab is on the right, with LTC’s TX4 on the left.  
LTC's TX4 (left) and Metrocab (right)
The claimant, LTC held three-dimensional trade marks for the shapes of the Fairway (an old model it stopped producing in 1997) and the TX1/TXII taxis. The Fairway trade mark was a CTM registered for motor vehicles, accessories and parts. The TX1/TXII mark was a UKTM registered for cars, the shape which was its subject was also protected as a registered design. In addition LTC claimed goodwill in these models, as well as the TX4.  
LTC argued that the defendants intended to deceive the public as to the origin of the new Metrocab by adopting a shape which closely resembled LTC taxis and that, by marketing the Metrocab, they would commit trademark infringement and passing off. The defendants counterclaimed for invalidity of LTC’s trade marks.  
Deception as to origin  
Knocking the first argument on its head, Arnold J had “no hesitation” in rejecting the allegation of fraud made against the defendants in that they had adopted a shape which closely resembled the LTC taxis in an attempt to deceive the public as to the origin of the new Metrocab. Although it was found that images of certain LTC models were used in specific, but limited, ways in the Metrocab design process, Arnold J had not been satisfied that the defendants had instructed its designers to update or face-lift LTC’s TX4 model. The design of the new Metrocab differed in many respects from the LTC taxis and the intention imputed to the defendants was “deeply implausible”.  
The average consumer 
Arnold J agreed with LTC that the reasonably well informed, reasonably observant and circumspect average consumer of taxis for the purposes of assessing validity and infringement of the marks would be taxi drivers – the persons who actually purchased the goods in question. However, he rejected its submission that members of the public would also be considered average consumers of taxis for these purposes. Whilst taxi drivers would be careful and knowledgeable purchasers of the taxis, members of the public were merely "users of the service provided by the consumer of the goods" who were likely to pay low levels of attention to the actual taxis themselves. 
Distinctive character 
The defendants argued that the CTM for the Fairway shape of LTC cab was invalid because it was devoid of inherently distinctive character. In Bongrain SA’s Trade Mark Application [2004] EWCA Civ 1690 at [26]-[28], Jacobs LJ had, interpreting various European case law including Joined Cases C-456/01P and C-457/01 P Henkel v OHIM EU:C:2004:258, rejected the idea that a “fancy” or unusual shape of goods would automatically be taken by the public as a trade mark denoting trade origin. It was not that a shape of goods could never become a trade mark, but that mere use of an unusual shape (in that case, the flower-like shape of a particular cheese) would not be considered distinctive in the trade mark sense unless it could be shown that the average consumer had come to believe that the shape indicated the product’s origin. Arnold J considered the reasoning behind this to be correct, summarising that “the fact that the shape of a product is unusual is a necessary, but not a sufficient condition for it to have inherent distinctive character.” 
Arnold J accepted that LTC’s trade marks looked different to normal cars and that they resembled a type of 1950s car.  However, neither point was sufficient to show that the average consumer would perceive the marks as anything more significant than a variation on the theme of a London taxi. Even had the marks departed significantly from the norm and customs of the sector, the average consumer would not consider them as designating the origin of the taxis. Hence, both the CTM and the UKTM were considered devoid of distinctive character. 
Had the trade marks acquired inherently distinctive character under Article 3(3) of the Trade Marks Directive? No, held Arnold J, who reviewed the CJEU guidance he had recently applied in Société des Products Nestlé SA v Cadbury UK Ltd [2016] EWHC 50 (Ch) (as digested by IPKat here), Arnold J considered that it had not been made out that, at the relevant date, a significant proportion of taxi drivers in the UK perceived the Fairway and TX1/TXII taxis as originating from LTC because of the trade marks in question. Evidence advanced, including advertisements which described the taxi as an “icon” might show that the taxis were well known, but not that their shape denoted their origination from LTC. Furthermore, even taking into account LTC’s argument that the trade marks had become distinctive to a significant proportion of consumers of taxi services (remember, who were not “average consumer”), Arnold J pointed out that these consumers had no reason to care about the trade origin of the taxis they used – they would not see their shape as a trade mark. 
Shapes which gave substantial value to the goods 
Excerpt from the UKTM
On the argument that the CTM and UKTM consisted exclusively of the shapes which gave substantial value to the goods, Arnold J first considered the UKTM for the TX1/TXII which was also a registered design. He considered the fact that the shape was protected as a registered design was a relevant, but not determinative consideration.  This point could be inferred from the reasoning of the Advocate General and the CJEU in Case C-205/13 Hauck GmbH & Co KG v Stokke A/S, which indicated that an important purpose of Article 3(1)(e)(iii) of the Trade Marks Directive was to prevent the use of indefinite trade marks protection to extend the time-limited protection of other intellectual property rights. Hauck, had concerned a trade mark for the shape of a child’s high chair (the “Tripp Trapp”) the design of which was also protected by copyright. In finding that the mark consisted of the shape that gave the product substantial value, the CJEU stated that this concept was not limited to the shape of products having only artistic or ornamental value and that it also covered products with “essential functional characteristics”. 
Bearing in mind the various assessment criteria (as considered in Paragraph 93 of Advocate General Szpunar’s Opinion in Hauck), such as the artistic value of the shape, the dissimilarity of the shape from other shapes in common use and the price of the goods, Arnold J held that the shape of the TX1 did add substantial value to the goods. Relevant factors in the analysis included the fact that the design of the TX1 was regarded as “iconic” and a “design classic” and marketed as such, and its shape was generally dissimilar to other cars at the relevant time. The CTM was not protected by a registered design, but nevertheless the same conclusion was reached in respect of it. 
Non-use of the CTM 
As if it wasn’t enough to find the marks invalid on the other two grounds, Arnold J also agreed that the CTM for the Fairway should also be revoked for non-use in accordance with Articles 15(1) and 51(1)(a) of the CTM Regulation. The Fairway model had stopped being produced in 1997 and had only been available to purchase second hand after that date. Assuming for a moment that the sale of used vehicles could constitute use of a trade mark (which in itself was a difficult question that the CJEU would have to finally resolve), LTC had not displayed genuine use of the Fairway mark.
Excerpt from the UKTM
Arnold J held that the sales of used Fairways simply amounted to recirculating goods which had already been put on the market under the CTM. The limited average price of resale did not help to create or maintain a share of the market for the Fairway cars (as noted above production of the vehicles had long since ceased) and the territorial extent of the CTM’s use had been essentially confined to the UK. Furthermore (in case there was any doubt) disposing of Fairways for scrap was did not constitute genuine use, rather it was “the antithesis” of use of a trade mark. 
On the question of whether the sale of TX1s, TXIIs and TX4s during the relevant period constituted use of the Fairway CTM in a form different in elements which did not alter its distinctive character, Arnold J held that any distinctive character attributable to the CTM derived from the totality of its appearance. The other LTC models of cars were clearly different from the Fairway (and therefore the CTM) in a number of respects.
Entertaining the possibility for a moment that the marks were valid and capable of being infringed, Arnold J found that they would not have been infringed. He noted that a visual comparison of the two taxis showed that the Metrocab was distinct from the Fairway and TX1/TXII in a number of respects. It was bigger, it bore prominent Metrocab advertising and the rear and side views of the cars were quite different. Taking into account the overall impression of the new Metrocab, it did look a London taxi but not like an LTC taxi or either of the marks. As such, the average consumer was not likely to be confused – the marks had little distinctive character and there was ultimately a low degree of similarity between the new Metrocab and the trade marks. 
Neither the CTM nor the UKTM had acquired a reputation and, even if they had, Arnold J was not satisfied that the new Metrocab would have cause detriment to their distinctive character. The average consumer would consider the Fairway, the TX1/TXII and the Metrocab to be “species of the genus London taxi” but this was not be detrimental to LTC’s marks. Arnold J also refused to accept that the defendants intended to gain unfair advantage by exploiting, or riding on the coat-tails of the trade marks. 
Passing off 
Excerpt from the UKTM
Turning to the passing off claim, which was LTC’s final attempt to put the brakes on the development of the new Metrocab, Arnold J noted that LTC’s claim to goodwill was based on abstractions which described the common features of the various models (e.g. a large and upright windscreen, a tapering bonnet, a prominent grill, etc.) rather than specific features of shape. Arnold J agreed that there was considerable force in LTC’s submission that consumers would perceive these features as indicating that the vehicle was a London taxi but, to establish goodwill, these features needed to indicate the source of the taxi model. Unsurprising, given his findings above, Arnold J held that this claim failed for “essentially the same reasons” as in relation to the marks’ lack of distinctive character. Further, there was no misrepresentation because there was no evidence that the shape of the new Metrocab would make consumers believe it came from the same source as LTC’s taxis and Arnold J had already held that the defendants had not intended to deceive the public. 
The case represents a resounding win for Metrocab’s manufacturers and a full set of flat tires for LTC. However, the one-sided nature of the result should not be equated with simplicity in either fact or law –the length of the judgment itself (just short of 300 paragraphs) speaks volumes as to number and complexity of the issues raised before the High Court in this outing. Coming swiftly after the latest Nestle v Cadbury installment (another judgment of Mr Justice Arnold’s that came out in January) this decision provides a further practical application of the CJEU’s guidance that, in establishing whether a trade mark has acquired distinctive character, it must be shown that “the relevant class of persons perceive the goods or services designated exclusively by the mark applied for, as opposed to any other mark which might also be present, as originating from a particular company” (EU:C:2015:604). As LTC will have appreciated, the case is also a further example of the uphill struggles for proprietors of three dimensional trade marks seeking to assert that consumers perceive the often unusual and commercially distinctive shapes of their products as trade marks indicating the product’s origin.

Monday, 8 February 2016

Never too late: if you missed the IPKat last week

Were you away or just too busy to read the IPKat last week? As usual, nothing to worry about: thanks to our dear friend and colleague Alberto Bellan it is #NeverTooLate (now on its 84th edition) to catch up.

So here’s what happened on this very blog last week:

A few days ago Darren attended the inaugural running of an event at the Chartered Institute of Patent Attorneys - a seminar for PhD students. Many young IP enthusiasts discussing many IP issues = a perfect combination for a Kat!

The Japan Fair Trade Commission has recently released an amendment to the “Guidelines for the Use of Intellectual Property under the Antimonopoly Act”, in order to address the issue of how the JFTC approach cases involving standard essential patents in patent litigation. Katfriend Kaori Minami of Squire Patton Boggs reports.

A study provides an astonishing empirical look at the invalidation rate before the German Federal Patent Court and German Federal Court of Justice. Mark tells all.

Brian Whitehead, at Kempner & Partners, provides an edifying summary regarding the increased feasibility of electing an inquiry as to damages in connection with patent litigation.

Ka friend and trade secret expert, James Pooley, has flagged up two key changes to the US Defence Trade Secrets Act, relating to whistle-blower protection and the language on "threatened misappropriation".

How do you measure IP? Data on IP is scarce; inaccessible registries, unregistered rights and privately held information don't help. Yet, recent trends in IP data suggest progress is being made, Nicola says.

The EPO has announced the appointment of its new Chief Economist. Definitely a dream-job, writes Merpel.

GIFs reproduce (very) short extracts of films or other likely-to-be-copyright-protected material, more-often-than-not for non-commercial purposes. Can you protect it with copyright? You bet, says Eleonora.

The IPKat team is calling for candidates for a new role, to be called "InternKat". Among other exciting duties, those who will get the positions will have the honour to keep writing these lovely weekly round-ups. The deadline expires on 29th February. Before that, it is #nevertoolate to get into the fabulous Katworld!

Considering the “wider” significance of the December 2015 launch of the movie, “The Force Awakens”, the latest and probably the most profitable instalment in the Star Wars saga, IP in general, and copyright in particular, may be doing harm to our reservoir of content creation, says Neil.


Never too late 83 [week ending on Sunday 31 January] – The AmeriKat from the Silicon Valley | INGRES conference on developments in European IP law 2015 - patents | Economics of UK creative industries |Stretchline v H&M | Merck KGaA v Merck Sharp & Dohme | Ethics in IP | Social dialogue at the EPO | Ms Potter's extended copyright | CJEU on TMs' genuine use | Replicating works in museums.

Never too late 82 [week ending on Sunday 24 January] – Economics of legal professions | One shot to boost your EU trade marks | AG's opinion on fair compensation | Enforcement Directive consultation and UPC | Armonised grace period | Draft UK Legislation on Unitary Patent and Unified Patents Court | Arnold J's ruling in KitKat | Linking and copyright | GE moves to Boston.

Never too late 81 [week ending on Sunday 17 January– Talented IP barristers 2015 | Wright Hassall LLP v Horton Jr & Anor [2015] EWHC 3716 (QB) | Economics of Collective Management Organisations | International jurisdiction in online EU trade mark infringement cases | SUEPO officials fired, downgraded | Electromagnetic Geoservices v Petroleum Geoservices  [2016] EWHC 27 | Accord Healthcare Limited v. medac Gesellschaft [2016] EWHC 24 (Pat) | New PCT Applicant's Guide | US Defend Trade Secrets Act.

Never too late 80 [week ending on Sunday 10 January] – Allergan's patent extortion claim, Samsung's damages petition, Revlimid generic settlement & more! | Recovery for pecuniary loss and moral prejudice | EU Trade Secrets Directive | Journal d’Anne Frank as a trade mark?! | New Patent Act in Spain | Yellow as a trade mark in Australia | Innovation is the dirty little secret of IP | David Keltie.

Book Review: Indigenous Intellectual Property

Almighty tomes occasionally cross this Kat's desk for review, and she was very excited to receive her copy of Edward Elgar's Indigenous Intellectual Property. Part of the publisher's series of research handbooks on IP, this book, "considers the international struggle to provide for proper and just protection of Indigenous intellectual property (IP)" and is a collection of chapters by experts in the field.

This Kat is very pleased to see more attention devoted to this area of law and policy.  Many of the authors will be well-known to readers from their work in other parts of IP.   The book covers the major IP rights (patents, trade marks, copyright, design, and related rights), in addition to privacy law and identity rights. The strength and high concentration of Indigenous IP researchers in the Australasia region is reflected with a number of chapters looking at Australia and New Zealand. Slightly closer to this Kat's childhood home, a chapter on governance challenges in Canada analyses the Vancouver 2010 Olympic "Ilanaaq the Inuskshuk" logo, which borrows heavily from Nunavut official flags.  The authors note, with some irony, that the Aboriginal peoples of Canada were not allowed to use the logo under the Olympic and Paralympic Marks Act.

Some more from the publisher:
This Handbook considers the international struggle to provide for proper and just protection of Indigenous intellectual property. Leading scholars consider legal and policy controversies over Indigenous knowledge in the fields of international law, copyright law, trademark law, patent law, trade secrets law, and cultural heritage. This collection examines national developments in Indigenous intellectual property from around the world. As well as examining the historical origins of conflicts over Indigenous knowledge, the volume examines new challenges to Indigenous intellectual property from emerging developments in information technology, biotechnology, and climate change.
This book joins other titles in series, edited by founding Kat Jeremy Phillips, including Research Handbook on the Future of EU Copyright by Estelle Derclaye and the Research Handbook on Cross-border Enforcement of Intellectual Property by Paul Torremans.

Bibliographic information: Indigenous Intellectual Property: A Handbook of Contemporary Research,  Research Handbooks in Intellectual Property series. Edited by Matthew Rimmer, Professor of Intellectual Property and Innovation Law, Faculty of Law, Queensland University of Technology (QUT), Australia, 2015, 752 pp, Hardback, available for £175.50, E-book available February 18th for £48.00

Friday, 5 February 2016

Star Wars: Good or bad for movie myth-making?

Software aside, copyright protection is seldom viewed as a means for acquiring market leadership
in content-creation industries. Truth be told, the treatment of such a clearly functional creation as software as a literary work has always required a bit of analytical sleight-of-hand. In any event, the role of network effects is far-removed from the context in which most works of copyright are created and commercialized. Against this background, it is worth pausing a moment to consider how The Economist has chosen to elaborate on the “wider” significance of the December 2015 launch of the movie, “The Force Awakens”, the latest and probably the most profitable installment of the Star Wars saga. Intellectual property, in general, and copyright, in particular, may be doing harm to our reservoir of content creation.

Kat readers with no direct memory of the circumstances of the screening of the initial movie in 1977 may be hard-pressed to appreciate the impact that the movie had on a broad swathe of movie-goers worldwide. To say that it broke new ground barely captures the impact that it had on the film industry and the viewer experience. It is no secret that the Star Wars series, in all of its forms of commercial exploitation, has made a ton of money for Lucasfilm (and now Disney). But no one is forced to go to a Star Wars movie or buy a movie-themed toy. It is a tribute to Hollywood bringing together this combination of experiential and commercialization success.

Not so fast, Kat readers. According to The Economist--
“… Disney has skilfully capitalized on their intellectual property—and in so doing, cemented its position as the market leader in the industrialisation of mythology.”
In its view, this movie, like many other Disney creations,
“…draw[s] on well-worn devices of mythic structure to give their stories cultural resonance. Walt Disney himself had an intuitive grasp of the power of fables. George Lucas, the creator of Star Wars, is an avid student of the work of Joseph Campbell, an American comparative mythologist who outlined the “monomyth” structure in which a hero answers a call, is assisted by a mentor figure, voyages to another world, survives various trials and emerges triumphant. Both film-makers merrily plundered ancient mythology and folklore. The Marvel universe goes even further, directly appropriating chunks of Greco-Roman and Norse mythology. (This makes Disney’s enthusiasm for fierce enforcement of intellectual-property laws, and the seemingly perpetual extension of copyright, somewhat ironic.)”
What Disney (and Lucasfilm) have done is “plunder” time-honored myths with cross-cultural resonance. The Star Wars series is a less impressive creative enterprise than it seems. The really “creative” contribution of Star Wars has been to successfully package these myths by cleverly exploiting modern technology and the expanding possibilities of product merchandising and theme parks. As such, Disney and Lucasfilm are using intellectual property not to protect their relative modest creative contributions, but to gain a leading position in the way that some of our most fundamental cultural heritage is being used for entertainment and commercial purposes. People need to find ways to relate to their most deeply-felt myths, and Disney is increasingly dominating the way that this is being done.

What exactly is the claim here? Is it that because the movie is making abundant use of cultural myths, and the creative contribution is alleged to be modest, Disney should be more measured about the enforcement of its copyright? That is an odd way to view the situation. After all, copyright law has various means to deal with this kind of thing, such as the idea/expression dichotomy and the notion of scène à faire. If Disney oversteps the bounds of its protected copyright, and the courts are correctly applying the appropriate legal principles, then efforts to claim copyright protection in cultural myths will be denied. But it seems that the root of the magazine’s complaint is not legal but moral. Someone like Disney, which makes good money (at the moment) from generating popular contents, should be showing more gratitude. The ultimate problem is not legal but a flaw in corporate character—being less “fierce” (how much less so is not clear) in protecting its intellectual property rights is one way that the company could be saying thank you to the cultural antecedents that have enabled it to successfully create its products.

But the criticism is not merely about a flaw in corporate character, but also the veiled
suggestion that Disney’s increasing presence in the market for creations about myth may have a dampening effect. Using intellectual property as a sword, the ultimate result is that fewer creations might be made than would be the case if intellectual property was being properly applied. Seen in this way, the criticism by The Economist is an extension of the attack that it mounted in August 2015 regarding the alleged deleterious effect of patents on innovation. When it applied to Disney, at least, we can now add to the black list the harm being done to the market for creations that make use of cultural myths.

Thursday, 4 February 2016

Katcall for new positions in the IPKat team

The IPKat is pleased to announce a new and exciting opportunity for aspiring community bloggers!  Considering the running of the IPKat blog in the future, the IPKat team is proposing to create a new role, to be called "InternKat".

The IPKat team is therefore looking for 2 keen intellectual property enthusiasts to fill the position of InternKats. It is envisaged that the InternKats selected would carry out the role for a period of 6 months, and be responsible for tasks including:

  • Round-up posts (example);
  • Never-too-late posts (example);
  • Around-the-blog posts (example);
  • Book reviews (example);
  • Updating the events calendar (here);
  • Reporting of statistics and analytics of the IPKat blog and coverage with a monthly round-up.
If the InternKats wish, they are also invited to write independent posts with a suggested contribution rate of about once a month.  Throughout the period the InternKats will receive training as required for the tasks that the role involves, as well as mentoring and guidance from the IPKat team in writing posts.

Anyone may apply for this role, but the Kats think that it will be most suited to graduate students in the field of IP law or trainees (or recently qualified people) in one of the IP-related professions.

To apply, applicants should send their CV and a 400-word sample post on the topic of their choice by email to, and include the word "InternKat" in the subject line of the email. The covering email should include the applicant's name, qualifications, current occupation, areas of IP interest, and 150 words on why they would like to be an InternKat.

The deadline for applications is 29 February 2016. Successful applicants will begin their internship on 1 April 2016.

So if you want to get your paws on one of the most stimulating opportunities in feline IP blogging [a crowded market, Merpel notes], get in touch now!

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