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

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

Monday, 20 October 2014

Monday miscellany

It is with sadness that the IPKat records the death of Peter Low. Peter, a European and UK patent attorney with Wilson, Gunn M'Caw till his retirement in 1997, has the unenviable record of having given tutorials for the UK patent attorney qualifying examinations for over twenty years, as well has setting up the Manchester CEIPI basic training course for the notorious European Qualifying Examination [for some measure of the intensity of feelings generated by the EQEs, you need only look at the readers' responses to Katposts here]. A popular lecturer around the world, he edited a guide to the PCT for students published by the University Robert Schuman Strasbourg, France, and served as an examiner for the Singapore Patent Agent Qualifying Examination.  He will be greatly missed both by those who benefited from his tuition and by those who appreciated his gentle humour.


Another source for your IP information needs ...  This Kat has just discovered the existence of IP Preferential, which describes itself as creating a central hub of all IP law and practice updates across the globe which provides relevant information for IP departments. It's totally free of charge for everyone and, with contributors from over 50 countries, it is enjoying something of a growth spurt.


... and another patent search and analytics service. This one's called PatSeer [which, if you don't articulate the letter "r" at the end of a word, sounds pretty close to Craic Computing's PATSY, full text US patent document display service] and it offers "the concept of sharing an interactive patent dashboard called Patent Dashlets™ amongst patent databases". As the developers explain, "such dashboards for instance allow corporate patent professionals to collaborate effectively with their external counsels or even with internal management stakeholders". You can read more about it here.


Someone has to ...
Launched only yesterday, the IPKat's latest limerick competition is already off to a roaring start with various promising limericks already received (plus a number of items of poetry which, for all their literary worth, aren't actually limericks).  The prize: complimentary registration for a fun IP conference which takes place in London on 29 October. Click here for further details.  Incidentally, there's another competition going on at the moment, giving you a chance to design a logo. So if you feel suitably imaginative, creative or are just in the mood for fun, you can find the details, kindly posted by fellow Kat Eleonora, just here.

Online enforcement "has a colour and a name": blocking injunctions - A closer look at the Cartier judgment

Typical moment outside
the Rolls Building last Friday
As Jeremy announced with a breaking news post, last Friday Arnold J issued his 266-paragraph judgment in Cartier and Others v BskyB and Others, a case concerning the possibility of requiring internet service providers (ISPs) to block, or at least impede, access by their subscribers to websites that advertise and sell counterfeit goods.

Why everybody was waiting for this judgment?

The reason why this judgment was keenly awaited is that there is no specific provision under UK law which allows holders of trade mark rights to seek and obtain an injunction against ISPs that have actual knowledge of another person using their services to infringe their rights. 

As readers will promptly recall, such possibility is instead expressly available to copyright owners thanks to s97A of the Copyright Designs and Patents Act 1988 (CDPA), by which the UK implemented Article 8(3) of the InfoSoc Directive into its own national law.

What is the reason behind this 'omission'? It is has of course to do with UK implementation of EU directives, in particular the Enforcement Directive

What happened at the time of transposing this directive into UK law is that UK Government thought that it did not need to take any action to transpose the third sentence in Article 11 into its own law [see para 116 of the judgment]. This provision states that "Member States shall also ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellectual property right, without prejudice to Article 8(3) of [the InfoSoc] Directive"

While UK Government had deemed necessary [despite an earlier view to the contrary expressed by the Government itself: see para 113 of the judgment] to give express implementation to Article 8(3) of the InfoSoc Directive [see para 115], it did not do the same with regard to the third sentence in Article 11 of the Enforcement Directive. UK Government justified its [somehow contradictory?] decision not to take any action to implement this more general rule by referring to s37(1) of the Supreme Court Act 1981. This provision states that “[t]he High Court may by order (whether interlocutory or final) grant an injunction … in all cases in which it appears to be just and convenient to do so.”

This (together with - of course - other considerations) led Arnold J to conclude that blocking orders may be sought also in respect of websites selling and advertising counterfeited goods.

Be honest: wouldn't you rather 
prefer finding a blocking order
inside the little red box?
Beyond trade marks: online IPR enforcement law (and policy)

This is not the only good news for rightholders though, as this judgment also contains a very thorough assessment of the effectiveness of blocking injunctions, the conditions under which they may be granted, as well as a comprehensive overview of the jurisprudence of the Court of Justice of the European Union (CJEU) in both (online) copyright and trade mark cases.

This Kat suspects that we will see many references to the Cartier judgment not just in future applications for blocking injunctions in the UK (and other Member States), but also in forthcoming policy briefs. 

This is because this ruling deals with most - if not all - the arguments employed by rightholders and ISPs when advocating in favour or against the availability of blocking orders.

A few examples are given below.

Freezing? Not really disruptive
1) There are no real alternatives to blocking orders, not even notice-and-takedown and payment freezing

Paragraph 197 ff contains a must-read assessment of blocking orders and availability of alternative measures, including: (1) action against the operators of the websites where the allegedly infringing works/counterfeited goods are hosted; (2) notice-and-takedown by hosts; (3) payment freezing; (4) de-indexing from search engines; (5) custom seizure.

Basically the conclusion of Arnold J was that none of these alternatives is as effective as blocking orders [para 217]. Incidentally, the "risk of reputational damage to the ISPs, particularly in the event of overblocking" is not a "significant one" in Arnold J's opinion [para 195].  

It is particularly interesting to note what the judge stated in respect of (2), (3) and (4) mentioned above.

With regard to notice-and-takedown, Arnold J accepted "that website blocking has advantages over notice-and-takedown" [para 204], also confirming a concern often raised by rightholders, ie that "as soon as an offending website is taken down by one host, the almost invariable response of the operator is to move the website to a different host." [para 201]

Turning to payment freezing [advocated by many, including the EU Commission, as the ultimate solution to online IPR infringement], Arnold J was somehow skeptical as to its actual effectiveness. The judge was "not persuaded that this is a realistic alternative measure in general, although there may be particular cases where it has some value." [para 208]

Finally, with regard to de-indexing, while "this is potentially an important weapon" [para 211], "it is not a realistic alternative measure" [para 215], also because "search engines are not willing to de-index entire websites ... without a court order" and - following Google Spain - "it is not clear at present that any EU court would would have power to order de-indexing on the basis of intellectual property infringement." [para 212]

2) It is not up to the rightholder to show efficacy of blocking measures

In light of the reasons given for stating that there are no real general alternatives to blocking orders, the judge also did "not accept that it is incumbent on [the rightholder] to show that the blocking measures would lead to a reduction in the overall level of infringement." [para 281]

But are blocking orders effective?


Website blocking works fine on Gregory
3) Blocking orders reduce infringements

Contrary to a Dutch study extensively criticised by Arnold J [see paras 229 ff], "in the section 97A context [that was the only available context until last week], blocking of targeted websites has proved reasonably effective in reducing use of those websites in the UK [but not worldwide: see para 228]. No doubt it is the casual, inexperienced or lazy users who stop visiting those websites, whereas the experienced and determined users circumvent the blocking measures; but that does not mean that it is not a worthwhile outcome." [para 236]


Ever thought of filtering?
4) ISPs should bear implementation costs ... and may think of preventative filtering as a cheaper solution

Similarly to what stated in his earlier judgment in 20C Fox v BT (No 2), Arnold J took the view that "the rightholders should pay the costs of an unopposed application ... [and] the ISPs should generally bear the costs of implementation as part of the costs of carrying on business in this sector". However the judge did "not rule out the possibility of ordering the rightholder to pay some or all of the implementation costs in an appropriate case." [para 240]  

A very interesting part of the judgment is paragraph 250 and following. Given ISPs' objection that future implementation costs are likely to increase if a substantial number of orders are granted, Arnold J noted that neither the claimants nor the defendants had addressed the economic dimension of this problem. 

Although the Ecommerce Directive prohibits imposing a general obligation to monitor on ISPs, according to the judge "it is economically more efficient to require intermediaries to take action to prevent infringement occurring via their services than is to require rightholders to take action directly against infringers." [para 251] Is this something for ISPs to think about? 

5) Safeguards against abuse: users' rights and blocking duration


It will be intriguing to see how the final part of the judgment will be applied and developed in future orders. 

In particular, in line with what the CJEU ruled in Telekabel [here], at paragraph 263 Arnold J stated that "in future orders should expressly permit affected subscribers to apply to the [High] Court to discharge or vary the order." [para 264]

And finally: how long should blocking orders last? Not indefinitely: a "sunset clause" should be incorporated. In the present case it is yet to be decided, but last Friday Arnold J's view was that "it should be two years." [para 265]

Never too late: if you missed the IPKat last week

Is it really sixteen weeks since our good friend and fellow blogger Alberto Bellan commenced this series of round-ups of the previous week's IPKat blogposts? It is indeed, and our Kat-stats show that, in some cases, the number of people reading blogposts the week after they were first posted exceeds the number of folk who read them in their week of publication. Anyway, last week's posts -- which finished with quite a flurry of activity yesterday, look like this:

* Nampak: when a patent suit is too simple to go to trial 

 

Summary judgements are a rarity in patent litigation, where judges feel more confortable when grounding their decisions on expert evidence gathered during the trial phase. There are, however, some exceptions, like Nampak Plastics Europe Ltd v Alpla UK Ltd, where Birss J held that the proprietor of a very simple patent for a plastic milk bottle could not resist an application for summary judgment on non-infringement in respect of the claimant's bottle design. In this post, Jeremy allows occasional guest blogger Paul England (Taylor Wessing LLP) to report on the appeal decision of this case, rendered by the Court of Appeal for England and Wales.

 

Clothing retailer Duluth Holdings created an advertisement showing two t-shirts known as “henley” with the phrase “Don A Henley AND Take it Easy”. Don Henley, a former member of the Eagles, did not take it easy and sued the company before the Central District Court of California, claiming infringement of his trade marks, right of publicity, and also false advertising. Marie-Andrée tells how it went.

 

* Les Wednesday Whimsies 


Who said that Continental Europe is under-represented on the IPKat? After an Eleonorian Friday Fantasia, voilà Marie-Andrée’s finesse!

 

* A clear vision of genuine use: Specsavers v Asda (again) 


The Court of Appeal for England and Wales has just issued its decision in Specsavers Asda, a very well-known saga the previous episodes of which have been severally covered by the IPKat [on initial skirmishes, here and here; on the High Court judgment of Mann J here; on the main decision and referral to Europe by the Court of Appeal here; on the costs ruling here and then the Court of Justice of the European Union (CJEU ) decision here]. The dispute substantially concerns the question of whether the use of a pair of coloured overlapping ovals with a distinctive word element can save a sign constituted of two black overlapping ovals without any word sign from non-use revocation. After the CJEU gave its opinion, the controversy came back home, with David recounting how it went.

 

* Chemists and mech/elecs unite! 


Informed by Bart van Wezenbeek of V.O. Patents & Trademarks, David recounts a change in format for the EQE (the qualifying exam to become a European Patent Attorney), which will take effect in a couple of years. Currently, the drafting and amendment papers are available in two versions: one for electrical and mechanical candidates, the other for chemists and life scientists.  Is this change desirable, wonder David and Bart, leaving room for readers’ answers in the comment section.

 

* Apples and Oranges in the IP5 Statistics, or how to make your patent filing statistics look more fruitful 


Once again, Jeremy gives a platform to Peter Arrowsmith (partner in London-based patent attorneys Cleveland), the patent-statistics enthusiast who penned the two-part post on whether British inventors are really a disappearing breed [“The Great British Vanishing Act”, here and here]. This time round, Peter looks at the presentation of patent filing figures published in the IP5 statistical data for 2013, which is released jointly by the five largest intellectual property offices in the world (IP5, indeed).

 

* Finland’s Citizen Copyright Initiative In Doubt: A Sad But Necessary Win For Cross-Border Online Copyright Enforcement? 


In December 2012, the Finnish police raided the home of a nine-year-old girl who had illegally downloaded music on to her computer. That fact gave rise to ‘Common Sense For Copyright, a crowd-sourced initiative which called for the expansion of copyright fair use exceptions under Finland’s Copyright Act. Alas, that the Finnish Parliament is close to rejecting the initiative, Lucas reports.

* Converse sues for trade mark infringement of iconic Chuck Taylor All Star 


Iconic shoe manufacturer Converse has brought 31 trade mark infringement proceedings against retailers and rival shoe designers in the US, claiming infringement of a trade mark covering the “distinctive midsole design made up of a toe bumper and a toe cap, plus an upper strike and/or a lower stripe”. Rebecca tells how it is going.

 

* BREAKING NEWS: Cartier and friends score over ISPs: Open Rights Group intervenes  


Jeremy breaks the news of Mr Justice Arnold of the Chancery Division of the High Court of Justice giving his decision in Cartier, Montblanc and Richemont v BSkyB, BT, TalkTalk, EE and Virgin (Open Rights Group intervening) [2014] EWHC 3354 (Ch). The proceedings concerns right owners’ claims towards most important UK access providers to block access to websites selling infringing goods. This most Arnoldian decision considers all the key issues of the field, from jurisdiction criteria to conditions and principles that govern issuance of blocking injunctions under UK and EU law.

* French Designer Sonia Rykiel Did Not Copy Shoes, Says Paris Court 


In the French copyright wonderland, even shoes can be protected as a work of art. This is what happened recently at the Tribunal de Grande Instance de Paris, Marie-Andrée explains, with that Court determining whether a shoe reflects the personality of its author when French fashion house Sonia Rykiel was recently sued in this court by French shoe manufacturer Apple Shoes for copyright infringement.

* Feeling a bit artistic? Here's a contest for you 


Kafriend Sophie Stalla-Bourdillon (University of Southampton) is looking for a logo for the new interdisciplinary Centre for Law, Internet and Culture (iCLIC) at the University of Southampton, which comprises Eleonora Rosati, Micheal O’FloinnMarta Iljadica, with Sophie acting as iCLIC’s director. The deadline for submitting logos is 2 November. The winner will have his/her work reproduced on the IPKat, get a free ticket for the first iCLIC conference, and will be most welcome to visit the Centre. More information can be found in this Eleonora’s post.

 

* The innovation champs for 2014; the best of times or the worst of times? 


Starting from the final chart of The Economist’s Innovation Awards, published in the 4 October issue of the magazine, Neil reflects on the criteria used to choose the winners, on the very state of innovation, and on what that concept means nowadays. Does that list reflects the idiosyncrasies of The Economist as much as the objective indicia considered? Are we in an innovation trough? Questions and possible answers are in this inspiring post.

* Another competition -- this time for the literary minded 


Jeremy launches a competition to write a limerick that (i) begins with the line "A talented kitten called Kate" and (ii) is on the theme of intellectual property protection other than via the patent system.  The prize is complimentary registration, complete with a free lunch, at CLT's forthcoming conference -- "Intellectual Property: the 'no patents' round-up for non-techie people", organised by CLT and held in Central London on 29 October (for which further details are available here). The deadline for submitting limericks is 26 October. Read this post to know more!

* The UPC and Investor–State Arbitration 


The creation of a unitary patent title and a common court (‘UPC’) to litigate patent infringement in Europe raises, among other things, questions of international IP law. Katfriend Henning Grosse Ruse-Khan (University of Cambridge, King’s College and Max Planck Institute), kindly hosted by Eleonora, investigates those really questions in this post.

* Galileo sees stars as ESA logo marches on 


Jeremy reports on the General Court of the European Union’s decision in Case T-450/11 Galileo International Technology LLC v OHIM, the European Commission and the European Space Agency (ESA). The case concerns a device sign including the word “Galileo”, for which the EU Commission sought registration, on behalf of the European Space Agency, in relation to “research and development in the field of satellite radio navigation” in Class 42. In 2005, a company owning two earlier Community GALILEO word marks for a large number of goods and services in Classes 9, 16, 35, 38, 39, 41 and 42 opposed that registration. Like the earlier decisions in this case, the General Court goes at the very core of similarity among products and services, providing an enlightening analysis on what “research and development” means in terms of services and products. 

* Fill in the form, keep your hair: UPC IT Prototype needs your feedback 


Are you terrified by the possible disasters that the UPC-related IT systems could bring into your life?  Last week the Kat posted a little item encouraging readers to test out the UPC's IT prototype that the UK IPO created to design an IT interface as efficient as possible. Yesterday Annsley tested the prototype herself and, highlighting possible inconveniences that different EU approaches might trigger, re-encourages readers to give their feedback while there is still time (ie, until November 2014).

After patent litigation, is trade mark litigation the next big topic?

Patent: a big,
shiny obsession
with IP litigators
So many major conferences, seminars, lectures and other events have recently been organised in the field of patent litigation that one might be tempted to think that it is the only species of IP that ever gets litigate.  Understandably there is much interest in the European Union, where practitioners and their clients [or should that be patent owners and their professional representatives?] have to juggle with their own domestic patent litigation system, the often complex and arcane proceedings before the European Patent Office, and a whole set of new ifs, whens and maybes that characterise the Unified Patent Court and what is now the 16th draft of its Rules. Likewise there is an almost obsessive interest in patent litigation in the United States, where the subject lies somewhere between a cottage industry and an art form, with ever-shifting guidance concerning injunctions, damages, patent eligibility and the interrelationship of patent suits with the sale price of patents singly or in bundles.   On 4 and 5 December no fewer than three international two-day events are addressing the subject. One wonders if there will be anyone left back in the patent attorneys' offices to answer the phone ...

Trade mark litigation
can take some licking!
In contrast, there has not been any correspondingly focused attention on trade mark litigation, or indeed on other forms of trade mark dispute resolution.  Readers of this weblog will know that this Kat has frequently commented on cases that should never have been litigated at all, either since they are no-hopers or because, even if they can be won, the successful litigant derives no obvious benefit from winning or can derive a swifter and more effective advantage by not litigating [a very recent example of a trade mark dispute which this Kat truly thinks was futile is Galileo v OHIM and others, noted here].  Most of these cases have involved trade marks, trade dress and passing off.  In many cases, where the litigation consists of trade mark opposition proceedings concerning a Community trade mark, a decade or more can pass between the initial filing of a trade mark and a final resolution -- a delay which, if acceptable to the parties, suggests that the matter should surely have been dealt with more sensibly by other means.

Coexistence is easy here,
since lions and lambs are
not confusingly similar
Wearing his MARQUES hat, this Kat has championed negotiation and coexistence agreements as a valuable and constructive alternative to traditional trade mark litigation, and has had the privilege of being able to pioneer that organisation's Coexistence Agreement Workshops -- which began in Amsterdam two years ago and which have now been organised in commercial centres such as Brussels, Bucharest, Madrid, Munich and Rome, and even as far afield as Lima, Asuncion and Mexico City.  These workshops encourage participants to explore voluntarily agreed coexistence, which can only be achieved if the parties have a clear understanding of the trade mark litigation options to which they can resort if consensus is not established. On this basis they can reach settlements that define the scope of use of similar marks, ensuring that their mode of use and the goods and services for which each side to the agreement will use them, will avoid litigation -- and will not give rise to any suspicion of uncompetitive market-sharing or deceit practised on shared consumers.

Team of all the talents ...
This Kat's friends at C5 have put together a big conference on Trade Mark Litigation, on 29 and 30 January 2015 at the Royal Windsor Hotel, Brussels. This is C5's first sortie into this field and the Kat wishes it well. This weblog is one of C5's media partners for this event, which features some notable Katfriends in the extensive cast of experts [A team of all the talents? Well, says Merpel, they are certainly on the ball]. One is the thoughtful and articulate John Noble (Director of the British Brands Group); another is recent guest Kat Darren Meale (Simmons & Simmons), who is currently also a Deputy District Judge. With experience spanning both the Court of Justice of the European Union and the Irish Supreme Court, Judge Fidelma Macken -- who taught with this Kat at Trinity College Dublin several lifetimes ago -- has much to offer, and there's more fire-power from Antwerp Commercial Court judge Sam Granada. Further dispute resolution know-how comes from Crowell & Moring dispute resolution specialist Flip Petillion, an arbitrator and WIPO panellist, and another Katfriend of long standing, Judge Michael Fysh QC, who has jumped ship as it were and shifted, following his retirement from the bench, from traditional litigation to mediation.

The link to this event's web page can be found here.

Sunday, 19 October 2014

Fill in the form, keep your hair: UPC IT Prototype needs your feedback

The AmeriKat's Sunday evening screen
For the AmeriKat, Sunday afternoons are all about scrubbing away the week's frustrations, been and to come, around her flat to the westward drum of Led Zeppelin.  Afterwards, if the siren call of her day job doesn't beckon her, she often curls up with her laptop and paws through the week's IP news.  On a slight variation on the theme today, she has curled up with a hot mug of jasmine moonlight tea to play with the updated version of the UPC's IT prototype.  "Oh, how dull!" you may think to cry.  But, you would be wrong.  After years of posts and commentary, there is finally something concrete you can play with - a UPC prop that makes the system come alive.

Last week, the Kat posted a little section encouraging readers to test out the system.  If you missed it the AmeriKat is here to remind you once more.  With no limit on the number of users testing the system, the UK Intellectual Property Office's UPC Taskforce and those responsible for bringing the IT workstream to life want as many people as possible to test it.  All feedback is welcome - the good, the bad and the ugly. 

We all know that there are differences between European legal traditions and substantive patent law, but there may be possibly even more differences in how we fill out our respective court forms.  How a French patent litigator interprets a direction on a court form to complete certain details will invariably differ from that of a Dutch or Hungarian patent litigator.  These differences came to light during the London workshop on the prototype held two weeks ago.  For example, there was considerable debate about how and when the confidentiality of documents (i.e., evidence) would be dealt with and by whom.  Do the boxes on the form provide enough options for how litigants want to classify the confidentiality levels of their documents?  How are you supposed to assess the value of the claim?  What is the easiest way to upload exhibits so that the court clerks and the judges don't get confused?

What will happen to the AmeriKat if the UPC IT
system doesn't work....
These issues may seem trivial to us now, but the AmeriKat promises that when the system is up and running if there is something not quite right with the IT system and forms, she knows you and your colleagues will be pulling your hair out and throwing your computers off buildings.  Such frustration is likely to surpass even key substantive issues, like no one quite knowing what Article 83 of the Unified Patent Court Agreement really means (and in this respect the AmeriKat is looking to you, European patent judges, to put your heads together at the upcoming Venice conference).  

The UK IPO's UPC Taskforce therefore encourages users to test the system:  
  • in different countries, across Europe and beyond;
  • using different internet browsers and devices (i.e., that means you, iPad and android users); and
  • who are part of teams/firms and will have a single account with multiple users.  This option has been included as a result of direct feedback but the tech wizards need multiple users to test it.
Testers can provide feedback using the feedback application at the bottom-right of the prototype screen.  The current court form is the Statement of Claim form, but there will be others and further iterations so testers are encouraged to check back again whenever they can.  Changes are set out on the front page of the prototype.  The prototype will be open until the end of November 2014.  The next workshop will be in Paris at the end of the month.  

Having played around with the updated version she can see that the IT team have already incorporated many of the comments from the London workshop.  Your feedback will not go into an empty IT abyss.  So be like the AmeriKat  - fill in the form and feedback now, save your hair later.   

Galileo sees stars as ESA logo marches on

Galileo back in court.  The original Galileo Galilei was no stranger to dispute, and it seems that one of the many businesses that has borrowed his name has been following in his footsteps -- with nothing much to show for it in the courts of Europe [you can get a feel for Galileo's recent track record in IP litigation by reviewing earlier Katposts here].  So let's take a look at Case T-450/11 Galileo International Technology LLC v OHIM, the European Commission and the European Space Agency (ESA). This is a decision from the General Court of the European Union (Ninth Chamber) last month which reflects the opinions long held by this Kat that (i) some appeals to the General Court are marked with a message in big red capitals that state "THIS APPEAL IS A COMPLETE WASTE OF TIME", in a magical letters that can be read by everyone except the appellant and that (ii) pretty well all appeals to the General Court in intellectual property disputes against the European Commission and its organs are destined to fail in any event.


What happened in this case to cause those big red letters to spring up? The facts are like this. Back in June 2002 the European Commission filed, on behalf of the European Union, an application to register as a Community trade mark the rather attractive figurative sign represented on the right.  The service for which registration was sought was unusually narrow: “research and development in the field of satellite radio navigation” (Class 42).  

In February 2003, following publication of the application, the Commission transferred half of the rights in the mark applied for to the European Space Agency. A month later Galileo opposed this application, citing  two earlier Community word mark registrations for the word GALILEO, for a large number of goods and services in Classes 9, 16, 35, 38, 39, 41 and 42. Most of the goods and services were quite dissimilar to “research and development in the field of satellite radio navigation”, while others -- while not being close -- were not so totally distant, for example 
Class 35: ‘Providing office and business management services and information compilation, storage and retrieval services in the travel field for others; electronic collection, processing and distribution services for data, images and electronic messages; electronic on-line information services, namely the provision of advertisements and business information in respect of travel, tourism and entertainment through a computer database by telephone link; advertising and promotion by data communications for hotels, hoteliers and the travel industry; on-line direct electronic marketing services and advertising services for hotels and the travel industry, for others’; 
 Class 38: ‘Telecommunication services in the nature of transmission of data, electronic data transfer services, network services, all relating to computerised information retrieval systems; communication services relating to the provision of on-line electronic data transmission facilities for the communication and distribution of information, images and electronic messages by computerised databases; data communications and bulletin board services’.
Said Galileo, on account of the similarity of the respective marks and the similar nature of the goods and services for which registration was sought or had been granted, there was a likelihood of confusion of the relevant consumers under Article 8(1)(b) of Regulation 40/94 (now Regulation 207/2009).

Never mind SatNav: with
CatNav, Pushkin is never lost
In September 2005 the Opposition Division rejected the opposition: the service covered by the mark applied for was not similar to the goods or services covered by the earlier marks, regardless of any similarity of the signs at issue.  In April 2011 the First Board of Appeal of OHIM dismissed Galileo's appeal, reiterating that none of the goods and services covered by those marks were similar to “research and development in the field of satellite radio navigation”.  Galileo then applied to the General Court to annul the decision of the Board of Appeal on the sole ground that the Board of Appeal did not take account of the fact that there was a high degree of similarity between the goods and services covered by the earlier marks and the service covered by the mark for which registration was sought, whether on the basis of actual similarity or on the basis that they were complementary.

The General Court dismissed Galileo’s appeal. In its view:

* It was not disputed that research and development in the field of satellite radio navigation covered by the mark applied for was aimed at a specialist public of undertakings engaged in research and development in the field of satellites and highly sophisticated localisation software [this must be one of the most specialised categories of consumers ever, thinks Merpel]; those services were not aimed at the general public even though the product resulting from that research could, in the long run, be used by the general public. Why? Because what was involved was not an industrial activity or a service aimed at the production of goods but an activity focused on scientific innovation. 

* Given the specialist nature of consumers of satellite radio navigation R&D services, Galileo had to argue that its earlier marks might also be aimed at a specialist public.  However, there was no definition of research and development that ran wide enough to include the conception and manufacture of goods. Thus
The OECD's definition of ‘research and development', on which the parties relied, referred to the ‘creative work undertaken on a systematic basis in order to increase the stock of knowledge, including knowledge of man, culture and society, and the use of this stock of knowledge to devise new applications’. That definition did not refer to the production of goods or to their marketing. 
A further definition of that term submitted by Galileo, which appears in Article 1(c) of Commission Regulation 1217/2010 on the application of Article 101(3) [TFEU] to certain categories of research and development agreements, provided that research and development means ‘the acquisition of know-how relating to products, technologies or processes and the carrying out of theoretical analysis, systematic study or experimentation, including experimental production, technical testing of products or processes, the establishment of the necessary facilities and the obtaining of intellectual property rights for the results’. However, recital 6 in the preamble to Regulation 1217/2010 expressly excluded the stage of industrial application from the concept of research and development.
* The General Court had in earlier proceedings already held that the Commission’s Galileo project was limited to the launching of a satellite radio navigation project, this being the European response to the American GPS and Russian Glonass systems, to providing financial support for the project’s research, development and deployment phases, as well as to establishing the appropriate framework for the subsequent economic operational phase. In doing so, the Commission was not undertaking an economic activity since it was not offering goods or services on the market. Consequently the Board of Appeal did not make any error of assessment in finding that the activity of research and development in the field of satellite radio navigation was not an industrial activity or a service aimed at the production of goods, but was focused on scientific innovation. [This raises an interesting question, says Merpel: if the Commission was not undertaking an economic activity or an industrial activity, what does it need a Community trade mark for? And what criteria will be invoked for establishing whether genuine use has been made of it?]

* Goods and services are only complementary if they are closely connected in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services. By definition, goods or services intended for different publics cannot therefore be complementary. Here there could be no complementary connection between the goods and services which are necessary for the running of a commercial undertaking and those which are produced or supplied by that undertaking: those two categories of goods or services are not used together since those in the first category are used by the relevant undertaking itself while those in the second are used by customers of that undertaking.

This ruling, available so far only in English and French, looks right in law and will, in this Kat's view, be upheld in the event that Galileo appeals further to the Court of Justice.  He still wonders why so much time, effort and money is spent by both sides in seeking to carve out a niche entitlement to use the word Galileo, in literal or pictorial format, when there are so many good folk already using the name for various purposes and it's not as if they are going to encounter the sort of obstacles to brand extension that face owners of brands for popular consumer goods.  

Galileo Global Branding Group here
Galileo Research & Strategy Consultancy here
Galileo Open Air Cinema here
Galileo Telescope Makers here
Galileo BioScience here
How to pick the perfect brand name here

The UPC and Investor – State Arbitration

Henning Grosse Ruse-Khan
What are the international investment law implications of the Unified Patent Court (UPC)? 

No, (thankfully) this is not an exam question for undergraduates taking the IP course (although you never know…), but rather the issue that Katfriend Henning Grosse Ruse-Khan (University of Cambridge, King’s College and Max Planck Institute for Innovation and Competition) investigates in his guest post below.

Here’s what Henning writes:

“The development (for better or worse) of European Patent Law, in particular the creation of a unitary patent title and a common court to litigate patent infringement in Europe raises, among other things, questions of international (IP) law. One addressed in this brief post concerns the potential for Investor-State dispute settlement over decisions handed down by the UPC. It essentially deals with the application of international investment law standards to UPC judgments affecting European patents.

International investment law – although a distinct body of rules than IP treaties – is becoming increasingly relevant for the protection of IP rights, including patents, abroad [this Kat notes that this is also true for copyright, with particular regard to the role of ISPs. For instance, in its recent Discussion Paper on Online Copyright Infringement, the Australian Government wrote that "Australia is obliged under its free trade agreements with the United States, Singapore and Korea (not yet ratified) to provide a legal incentive to ISPs to cooperate with rights holders to prevent infringement on their systems and networks."]. In a nutshell, these rules, usually embedded in bilateral investment treaties (BITs) or Investment Chapters in free trade agreements (FTAs) such as NAFTA Ch.11, protect assets, including IP rights, of foreign investors against state interference. Investment rules in BITs or FTAs often allow foreign investors to challenge host state measures directly in international dispute settlement in front of an arbitration tribunal. Increasingly, the measures under scrutiny involve IP rights: Philip Morris currently challenges tobacco packaging rules in Australia and Uruguay as a form of indirect expropriation; while the US pharmaceutical company Ely Lilly is suing Canada under NAFTA’s investment protection rules for the revocation of two crucial patents (for its drugs Zyprexa and Strattera) by Canadian courts.

A confident Gustav pictured moments after
being asked to explain the international
investment law implications of the UPC
In Eli Lilly v Canada, Lilly challenges what it calls a ‘promise doctrine’ (further discussed here) whereby Canadian courts take for granted what the patent application describes as useful effect of the invention and hold the applicant responsible for fulfilling this ‘promise’ of utility: If the patented invention later is found not to meet a promise the court has constructed from the patent application, the patent can be revoked. Lilly complains that the strict patentability requirements resulting from this doctrine, as applied by the Canadian Courts since 2005, are violating Canada’s international IP obligations under NAFTA, TRIPS and the Patent Cooperation Treaty (PCT). This in turn, Lilly argues, breaches the fair and equitable treatment (FET) and expropriation standard under NAFTA’s investment chapter by interfering with reasonable investment-backed expectations (see a brief description here and further discussion here).

In light of these arguments invoking investment standards against decisions by patent courts, there are several scenarios for investor-state arbitration challenges of UPC judgments: Decisions revoking a patent under Artt.32:1 d), 65 UPCA for example could be challenged as a form of indirect expropriation or breach of the fair and equitable treatment (FET) standard that is often held to protect legitimate expectations of the patent holder. Here, an important question concerns whether a foreign patent holder can claim any legitimate expectations based on the grant of a patent that a revocation might interfere with (for a detailed discussion, see again here). In addition, declaratory judgments of non-infringement based on Art.32:1 b) UPCA could be viewed as in breach of the duty to provide ‘full protection and security’ – if this standard is understood as encompassing a duty to protect patents against third party infringements. Although there are good arguments against such an expansive reading of the investment protection standards, the Eli Lilly dispute against Canada shows that such challenges are not just a theoretical option.

Yes: treaty shopping
is this cute
The nature of UPC decisions makes such challenges all the more likely:  As “court common to the Contracting Member States” and “part of their judicial system”, the UPC is – by virtue of the UPCA preamble – a “national court” of all the Contracting Member States. As a national court of all these countries, its decisions could be challenged by investors who enjoy protection under any of the BITs or FTAs agreed by participating EU Member States, as well as under future EU investment agreements. Essentially, patent holders may ‘treaty shop’ for the most favourable international investment agreement available: It may well be quite a number of such treaties that are binding upon UPCA Contracting Member States and that offer investor-state dispute settlement.

This highlights the potential for international investment law and in particular its system of dispute settlement to interfere with national court decisions and other state measures affecting patents and other IP rights. It remains to be seen whether IP holders as foreign investors attempt to use this as a forum where they get another option for challenging otherwise final decisions of national courts. If one of the underlying reasons for creating the UPC is to keep the European Court of Justice out of substantive patent law, then this gives even more reason to worry: It certainly can be doubted that investment tribunals have any (more) expertise and experience in ruling on patent law matters. States are beginning to respond to this problem: The EU and Canada have introduced language in their FTA aiming to prevent a re-interpretation of IP law via investment tribunals. However, this is not sufficient to prevent future investor-state arbitration challenges – as it will not affect the huge amount of BITs already in force between UPCA Members and third states.”

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