Friday fantasies

Do please check the entries on the IPKat's side bar, since we have added a few since last time you looked. The World Intellectual Property Day events are all doing very well -- but there's still space for you to attend them if you'd like. See you there?

Talking of events, the IPKat's Google AdWord Rapid Response seminar, which was launched only on Tuesday and takes place next Thursday -- just two days after the Court of Justice gives its keenly-awaited ruling on the extent that the sale and use of AdWords constitutes trade mark infringement in Europe -- now has nearly 140 registrants, from as far afield as Denmark, Austria and Poland. Since the venue only holds 150, we're nearly full, but we will be opening a reserve list so that we can replace any cancellations. For full details of the seminar which is free and carries 2 CPD points, click here. One side-effect of the seminar, by the way, is that the AmeriKat (Annsley Merelle Ward) has been excused her AmeriKattish duties this weekend so that she can put some long, hard hours into her presentation at the seminar on the impact of Tuesday's Court of Justice ruling in the US. She'll be back next week, though, with news of the Viacom v YouTube arguments and cross motions for summary judgment.

And don't forget World Intellectual Property Day! We've added a new German event to the side bar, in the beautiful city of Dresden. Meanwhile, the number of people attending the IPKat's own Cheese & Wine Celebrity Poetry Reception (details here) has risen to 65 and giant legal information and service provider LexisNexis has just become the Special Cake sponsor (many thanks!). The lunchtime seminar organised by the IP Finance weblog, "Brands and the Cost of Corporate Conscience" (details here), now has 47 registrants. Further sponsorship opportunities for both events remain ...

Now here's a chance for some bright and talented IPster to make his or her fortune. AIPPI's French Group is running a €10,000 essay prize, coinciding with AIPPI's Paris Congress in October. The rules allow for essays on a wide range of IP themes. Entry is open to all and there is a generous deadline of 1 July 2010. But NB, monoglots: les entrées qui ne sont pas en français doivent être traduites en français. How not to win here.

Anyone who wants to know more about ambush marketing and the Olympics, including what happened in Vancouver (see here, here and here), may want to attend the Competition Law Association’s evening meeting on Thursday 22 April 2010 at 6pm at Freshfields Bruckhaus Deringer LLP. Farisha Constable of LOCOG (The London Organising Committee of the Olympic and Paralympic Games) will be talking on “Ambush marketing out in the cold: London 2012 and lessons from the Vancouver Games”. To book, email CLA administrator Suzanne Snook.

The IPKat's friend and ally Becky Chong (Deputy Editor, European Trade Mark Reports and, as of Monday, a member of the in-house legal team at the Institute of Practitioners in Advertising) is running the 10km Cancer Research 'Race for Life' in London's Finsbury Park on 24 July. She would be really grateful if you could sponsor her. Sponsorship is easy if you do it online, here. Adds Merpel: anyone who knows Becky will appreciate what an effort this for her since she's quite, er, petite. Since runners with little legs have to take about 10% more paces to complete the course, please add an extra 10% for however much you sponsor her for!

"Damon Albarn is often lauded for the originality of his Gorillaz", reports The Standard, "but not by Eddy Grant". The reggae star says the cartoon band's new single, Stylo, bears a striking resemblance to his 1983 proto-house anthem, Time Warp. The Standard suggests, somewhat contentiously, that copyright law was written with white musicians in mind: "You are not allowed to copy someone else's lyrics or melody, but rhythms and basslines are fair game. Dance music would have evolved very differently had this not been the case". Thanks are due to JIPLP Content Commissioning Editor Sarah Harris for spotting this item.

How long is forever?

This isn't such a silly question as it sounds, since the word "perpetual" crops up frequently in intellectual property licences. One recently-litigated example of this is BMS Computer Solutions Ltd v AB Agri Ltd [2010] EWHC 464 (Ch), a ruling of Mr Justice Sales in the Chancery Division, England and Wales, on Wednesday of last week.

In 1994 BMS, a computer software business, licensed its MillMaster animal feed software to Bibby. Under the termination provisions, the licence would expire after 10 years unless it was terminated earlier; it would also terminate if a parallel technical support agreement between the same parties was not kept up.

Some years later, both the licence and support agreements were varied, when Bibby was replaced by its successor in business, Agri. Under the revised agreement the licence would become a perpetual licence, for all Agri's then locations, up to a maximum aggregate annual tonnage. In respect of tonnage above the maximum, further payments to BMS would be due. Fresh licence and support agreements were to be negotiated for all non-organic tonnage growth.

In December 2008 Agri gave notice to terminate the support agreement, since it was developing its own software, but asserted that its licence to use BMS's software continued since it was "perpetual". BMS disagreed, saying that continuation of the licence was conditional on the support agreement continuing and complaining that Agri had also used BMS's software at an additional mill without negotiating new licence and support agreements -- though the annual tonnage of compound feed of Agri's operations remained less than the maximum.

In these proceedings, in which BMS applied for summary judgment in relation to two points of contractual construction, the court was asked to consider (i) whether, on the construction of the agreements, the licence had been terminated, notwithstanding its description in the variation agreement as "perpetual"; (ii) whether Agri had to obtain a further licence in respect of the additional mill.

Sales J held as follows:

* Agri's licence had been terminated. It was true that the word "perpetual" had different shades of meaning, including "incapable of being brought to an end" and "of indefinite duration, but subject to any contractual provisions governing termination". In this case, the second of those interpretations was correct. This being so, there was therefore no incompatibility between the variation agreement and the requirement to keep the support agreement in place, so that requirement continued to have effect. Accordingly, when Agri terminated the support agreement, it also terminated the licence.

* The variation agreement was plainly not intended wholly to displace the licence agreement: it stated that the licence would be extended rather than replaced. That indicated that the licence referred to in the variation agreement was subject to the same termination provisions as in the licence agreement.

* The very fact that the variation agreement did not refer to the termination provisions in the licence and support agreements indicated that those provisions were intended to continue in force.

* The termination provisions were of fundamental importance. If the parties had intended to delete them, they would have done so explicitly rather than just leaving it to be inferred from the use of "perpetual", a term of uncertain meaning. In any event, there was a clear commercial need for the termination provisions to continue to operate. If they did not, there would be no mechanism to bring potentially onerous obligations under the agreement to end.

* Use of the software to produce feed above the maximum tonnage was clearly contemplated as being authorised under the variation agreement, since additional payments were provided for. The maximum tonnage figure did not therefore limit the extent of the licence when Agri's business grew. However, it would not be commercially realistic to suppose that the parties intended that there should be no protection for BMS if Agri expanded its activities. It was possible and necessary to interpret the variation agreement by giving it its ordinary and natural meaning so as to require new licence and support agreements to be negotiated for all non-organic tonnage growth.

Says the IPKat, the meaning of the word "perpetual" in the dictionary is one thing; its meaning in the context of an ongoing commercial relationship such as an intellectual property licence is clearly another, and the meaning of any word used in the licence will be understood in the light of the intention of the parties and their commercial aspirations rather than being governed by the whim of the lexicographer. Accordingly it cannot be assumed that this meaning of "perpetual" fits other transactions in which it may be found.

Perpetual motion here

Perpetual emotion here

Spinner dispute hits dizzying new heights

A little bit of soon-to-be-forgotten history was made today when the European Union's General Court handed down its first decision on Community design law in a dispute involving PepsiCo and a Spanish manufacturer of promotional items. The IPKat thanks his Class 99 blog team colleague and great MARQUES supporter David Stone (Simmons & Simmons) for drawing his attention to it. By way of excuse for not spotting it first the IPKat explains that, while he checks the Curia website daily for signs of fresh IP cases, this particular decision hadn't yet been posted by that admirably early when the Kat checked it out ...

Case T-9/07, Grupo Promer Mon Graphic SA v Office for Harmonisation in the Internal Market, PepsiCo Inc, as David points out, is the first from an EU court to discuss in detail the meaning of several key aspects of the current European law on design right law. One is the tricky question as to who is the "informed user". This is the person whose impression of the similarities or differences between a later design and an earlier one is so important (in this dispute, there was discussion as to whether the "informed user" was "a child in the approximate age range of 5 to 10" or a marketing manager).

Another significant issue is the meaning of the term "same overall impression", this being the impression which, when the informed user receives it, means that the registration of the later design is invalid for lack of novelty or individual character. Today's decision will therefore go some way towards harmonising the very different designs jurisprudence that has developed in the various Member States of the EU [if, Merpel adds, the EU's various courts understand it and apply it in a uniform manner, which is far from impossible].

Early summaries of the decision can be found here on Class 99 itself (courtesy of David Musker) and on Elexica here.

Dutch see Orange Book differently; Philips prevails again

The relationship between IP and competition law is one of the hottest topics in IP law. It now seems that two respected European courts have come to different conclusions on the applicability of the "competition law defence" (although in the result, the decisions do not differ).

CD technology was developed many years ago jointly by Philips and Sony. The technical parameters were laid out in several different documents with various colours on the cover, including for CD-Rs in the so-called Orange Book. If you want to produce CD-Rs that are interoperable and saleable, you need to use the technology specified in the standard, and a license from Philips.

The German company SK Kassetten GmbH & Co. KG did not have a license (and never asked for one) and was sued by Philips. It argued that the patents were not infringed and if they were, it was entitled to a compulsory licence since Philips’ behaviour amounted to an abuse of its dominant position (in the CD-R market) in the sense of art. 82 of the European Treaty. In a decision of 6 May 2009 (the "Orange Book Standard" decision), the German Federal Court (BGH) held the patents infringed and accepted that there was a potential "competition law defence". It rejected an argument that the provisions of the Agreement on Trade Related Aspects of Intellectual Property (TRIPS) on compulsory licences prohibited the raising of the defence. However, to avail itself of a compulsory license, the defendant had to act like a "true licensee", namely by

• determining the reasonable licence fee objectively (ie, presumably based on common practice in the relevant industry or market intelligence);


• regularly rendering accounts; and


• paying, or at least depositing, (eg, into an escrow account) hypothetical licence fees.

Practitioners were quick to note that these requirements put the defendant in an almost impossible situation - to be sure that he could benefit from the license, he had to pay a royalty that was possibly too high, but once he paid, he would not get it back. Google BGH and Orange Boook Standard for some views.

The EPLAW blog just broke the news that the District Court The Hague decided on 17 March 2010 that SK Kassetten could not rely on the compulsory license by competition law defence (the court calls this the "FRAND-verweer"). If this IPKat understands correctly - and that is a big if, because his command of Dutch is extremely limited - the Hague Court argues that SK Kassetten never asked for a license, and this bars it from relying on the "FRAND-defence". SK Kassetten should have asked Philips for a license, and if Philips had refused, sued based on competition law. It could not just infringe and then, when it lost the argument on non-infringement, try to rely on the compulsory license defence. The Hague Court notes that it disagrees with the criteria laid down by the BGH for a compusory license based on competition law (see p. 16 of the decision). The Hague Court doesn't fail to note that even if the BGH criteria were applicable, SK Kassetten could not prevail, because it never paid Philips anything (and neither deposited any money into an escrow, presumably).

If readers with better command of Dutch have more insight, please post them in the comments, and if you have an English translation of the Dutch decision, please let the IPKat now.

No abuse to sue company chairmen in second action

Abuse of process is all the rage these days. Only a few short hours ago the IPKat was reflecting as to whether an appeal by a successful party in trade mark opposition proceedings against a decision in which he was actually victorious might constitute an abuse of process and now, in Ashley Wilde Group Ltd v Kocak and others, a decision in the Chancery Division (England and Wales) from John Baldwin QC, sitting as a Deputy High Court judge, abuse issues are raised in copyright infringement proceedings (note: this decision is not available on BAILII, but was conveniently summarised by Lawtel, to which subscribers may turn if they wish to order the full text).

In these proceedings the second and third defendants applied (i) to set aside an order which struck out their earlier application to challenge the court's jurisdiction to hear a claim against them and (ii) to set aside an order that they be liable for costs incurred in separate proceedings.

The background to this is that the claimant, whom Lawtel designate as "W", had obtained judgment, injunctive relief and an award of damages against a Turkish company for infringing the copyright in the design of a cushion. Having failed to execute judgment against the Turkish company, W went after the second and third defendants on the basis that, as the Turkish company's chairman and vice-chairman respectively, they were sufficiently involved in the infringement of copyright to be made personally liable. After W succeeded against them, gaining an order that they pay the Turkish company's costs in the first action since they had caused the first action to be carried on in the way that it was, the defendants applied to have the orders struck out (the application to set aside the costs order being made after a time-lag of five months from the application relating to liability). The defendants maintained that they should not have been proceeded against since the action against them was barred by res judicata or as an abuse of process; after all, the issue of infringement of copyright had already been the subject of a decision against the Turkish company and it was inappropriate to litigate it a second time. They also argued that the factual basis for the costs order was incorrect, not least because they had not caused the Turkish company to dispose of its assets in order to avoid W's judgment.

John Baldwin QC dismissed the applications. In his view

* Res judicata was no defence where neither party was relying on a decision on the merits in the original action. The defendants might just have got some help from res judicata if W had lost in the first action, but that was not the case.

* There was nothing to support the contention that this was vexatious litigation.

* The requirement that a claimant bring all its claims arising out of the same incident against a defendant at once did not mean that a claimant could not sue other parties who might have been involved in the same tort but who were not parties to the earlier litigation.

* There were insufficient details from which it could be shown that the defendants had a real prospect of successfully defending the costs order and the court was not satisfied that things would have turned out any differently if the defendants had been parties to the first action.

The IPKat, admittedly without sight of the full text of the decision, thinks that this must be the correct approach. Merpel adds, at times when substantive copyright law seems to be creaking at the joints and it can be difficult for an injured party to obtain relief, the courts generally seem to take a more flexible and pro-rights-owner position when considering procedural issues.

Make your own Turkish Delight here

Dhu process and the whisky Czar

The IPKat is indebted to his friend Paul Walsh (Bristows) for pointing him towards a decision today from Mr Justice Arnold in the Chancery Division (England and Wales), Maslyukov v Diageo Distilling Ltd & Another [2010] EWHC 443 (Ch), and for offering some extremely helpful thoughts on this decision and some interesting issues it raises: (i) the extent to which one can appeal against a “win” in opposition proceedings where the opposition is founded on several grounds but the opponent only wins on some, and (ii) the concept of goodwill in circumstances where part of a business no longer trades. Paul explains:

"The background is that in the 1980s there was a rationalisation of the Scotch whisky industry, in which many distilleries were closed. Some simply lay dormant, some were bulldozed or converted to storage. The distillery relevant to this case, Dallas Dhu, is now a visitor centre on the “malt whisky trail” (Dallas Dhu). Diageo sought to oppose various trade mark applications made by a Russian businessman, Mr Maslyukov, for trade marks for what Diageo argued were famous distilleries – Dallas Dhu, Pittyvaich and Convalmore, though Diageo had not registered those names as trade marks.

In the opposition Diageo maintained that the marks were unregistrable under the Trade Marks Act 1994, section 3(6) -- this being the absolute ground of bad faith --as well as sections 5(4)(a) (earlier unregistered right [passing off]), 3(1)(c) (descriptiveness), 3(3)(b) (contrary to public policy) and 3(3)(a) (deceptive).

Before the hearing officer in the Trade Mark Registry (O-188-09) Diageo won on bad faith but lost on all other grounds. Although this was a “win”, Diageo decided to appeal all other grounds, given the wider significance of the decision (there being opposition proceedings before OHIM in respect of Mr Maslyukov’s application to register DALLAS DHU as a Community trade mark; he has other pending applications in the UK for trade marks relating to other closed or dormant Diageo distilleries. Other manufacturers may be facing the same problems as Diageo).

As to Section 5(4)(a), the hearing officer held that such goodwill as Diageo enjoyed was not current and, as regards residual goodwill, had been abandoned by virtue of the distillery's closure. This was in the face of evidence as to the longevity of malt whisky as a product and the fact that it is still sold by specialist retailers and brokers; independent bottlers continue, and will continue, to release into the market their own bottling of the product of the distilleries in question.

On appeal the interesting points are first: can you appeal a “win”? In substance, Arnold J said no [the IPKat says, this is consonant with the position recently taken by the General Court with regard to appeals against successful rulings in invalidity proceedings in Case T-300/08 Hoo Hing Holdings Ltd v Office for Harmonisation in the Internal Market, Tresplain Investments Ltd]. The “decision” was a yes/no as to whether Mr Maslyukov should be allowed to register DALLAS DHU and the other marks. Arnold J placed reliance on the fact that an estoppel would not lie against Diageo in respect of those aspects of the hearing officer's decision with which it disagreed.

[Paul wonders here whether a litigant ought to be able to appeal a point of wider commercial significance, rather than relitigate it].

Arnold J then gave a seriously reasoned (but necessarily obiter) opinion on the passing off issue. The bottom line of his opinion re passing off is that product which is still in the market continues to generate goodwill for the manufacturer whether or not the “factory” continues to operate and whether or not there is a reasonable prospect of such “factory” resuming production. Arnold J also casts doubt [at para.75] on whether Professor Wadlow’s understanding of the SUPREMES case is correct: cessation of business does not mean abandonment of goodwill".

The IPKat thinks that it would be good for successful opponents and applicants for cancellation to be able to appeal where multiple grounds are involved, both in the UK and under the Community trade mark system -- so long as (i) the appeal was not an abuse of process but was based on a genuine need and (ii) any costs order takes care not to penalise an unsuccessful party who does not himself appeal (nb in this case Mr Maslyukov did appeal). Merpel says, this is the first case I've seen reported in which the appellant is reported to have appeared "in person by telephone". Must have had a webcam ...

Paul's firm acted for Diageo in these proceedings.

Wednesday whimsies

The IPKat was amused to receive a little verse from the excellent and ever-entertaining Tony McStea (Senior Patent Attorney, Global Patents, Givaudan Schweiz AG) who writes:

"When I saw the mail today [this being the emailed version of the Tiger Watch competition results post, here], I was reminded of the classic limerick that requires the mispronunciation of the Latvian capital to work:

There was a young lady from Riga
Who smiled as she rode on a tiger.
They came back from the ride
With the lady inside
And the smile on the face of the tiger.

This spurred this:

A maker of watches called TAG erred
When riding to fame on one Tiger.
His prowess with putters
Led him on to flutters
Whose number the mind truly staggered".

Right: a tiger that's safe for any young lady to ride on.

A reader writes: "Can anyone provide me with, or direct me to, an English-language translation of the following recent cases from France dealing with secondary liability: (i) Telecom Italia f/k/a Tiscali v Dargaud Lombard - Jan. 14, 2010, Cour de Cassation (First Civil Chamber), (ii) eBay v L'Oréal, a May 2009 decision of the Tribunal de grande instance (TGI) de Paris; (iii) Jean L. v eBay France, T.G.I. Strabourg - Dec. 15, 2009". If you can help, please email the Kat here or post a link below. Thanks!


Around the blogs. The IPKat has just been pointed to another law firm weblog with IP/IT content. It's Mablaw.com, the house blog of Matthew Arnold & Baldwin. The content actually goes a good deal wider than IP and IT, since it embraces other practice areas such as banking, employment law and residential developments. Congratulations go to patent litigation weblog PatLit for securing its 500th email subscriber. The 1709 Blog, which focuses on copyright, welcomes a new team member: Tom Harding, now of Olswang but formerly an international disc jockey and editor of IDJ.

Google AdWords Rapid Response Seminar

Does the sale and use of AdWords infringe the rights of brand owners who have registered those words as trade marks in Europe? We'll soon find out! Next Tuesday, 23 March the Court of Justice, the European Union's highest court, gives its ruling in Joined Cases C-236 to 238/08 Google France v (i) Louis Vuitton Malletier, (ii) Viaticum Lucetiel and (iii) CNRRH, three disputes arising from the sale and use of Google AdWords that have been referred to it by the French courts.

On 22 September the Advocate General, in an Opinion noted here by the IPKat, advised the Court to rule that (i) neither the offer of words for selection by purchasers (ii) nor the display of advertising in response to the use of a keyword corresponding to a trade mark as a search term constitute trade mark infringement, but that (iii) the fact that Google has a pecuniary interest in consumers' click-throughs on advertisements displayed in response to AdWord searches disqualifies Google from enjoying the benefit of the liability exemption for hosts provided in the E-Commerce Directive. Such Opinions are not binding, and this one has stirred up passionate comments both for and against, as well as dispassionate legal analysis.

On Thursday 25 March the IPKat weblog is holding its Google AdWords Rapid Response Seminar on the Court of Justice's keenly-awaited ruling. The faculty consists of IPKat team members Jeremy Phillips, Birgit Clark and Annsley Merelle Ward, who will be joined by Michael Edenborough -- who will be presenting the team's analysis of the new judgment. The team will explain the background to keywords, the reasoning behind the Advocate General's position, the Court's ruling itself, how it fits with current French and German thinking and its impact on US law and practice. The venue is the office of London-based solicitors Ashurst, 9 Appold Street. Registration is from 4.15pm and the seminar will run from 4.30pm to 6.30pm. Attendance at this seminar, which is free, attracts 2 accredited CPD points.

If you'd like to attend, email Jeremy here, giving your name and (if any) affiliation.

About the faculty

Michael Edenborough (Serle Court) is a barrister and an acknowledged expert in trade mark law. He has substantial experience of trade mark litigation in both the British and European courts. Last month he was appointed Queen's Counsel.

Dr Birgit Clark (Boult Wade Tennant), a German-qualified lawyer, has written extensively on IP issues in both English and German. She is a long-standing contributor to the Class 46 weblog of trade mark organisation MARQUES.

Annsley Merelle Ward (Gallant Macmillan) has a background in chemical engineering and studied intellectual property at postgraduate level under Sir Hugh Laddie at UCL before training as a solicitor. She is the author of the IPKat's popular and well-regarded AmeriKat column.

Dr Jeremy Phillips, Intellectual Property Consultant to Olswang LLP, is Research Director, the Intellectual Property Institute, and Professorial Fellow at the Queen Mary Intellectual Property Research Institute. Blogmeister of the IPKat and other weblogs, he writes for and edits a number of IP publications.

Procedural irregularities: when do you let go of a decision?

The IPKat's friend, IP blogger, commentator, practitioner and enthusiast Barbara Cookson (Filemot Technology Law Ltd) writes to draw his to attention to an unusual episode in the annals of the British Trade Mark Registry. Barbara writes as follows:

"This was a fairly standard opposition decided on the papers, with the primary ground based on similarity with an existing registration.

That existing registration was over five years old, so proof of use was required and duly filed. Since Hackett is a high-street brand, they were able to show use of their H logo on aftershaves, cufflinks, silverware, leather goods and clothing. This meant there was an overlap of identical goods between the two marks. On 17 July 2009, in MIP Metro Group Intellectual Property GmbH's international registration; opposition of Hackett Ltd, Case O-210-09, Ann Corbett applied a global approach and came to the conclusion "albeit with some hesitation" that there was no likelihood of either direct or indirect confusion, even where identical goods are concerned (paragraph 51).

There were also grounds under section 5 (3) and (4) (passing off and dilution), both of which require evidence of reputation/goodwill. Ms Corbett's view of the evidence was that it did not allow her to find that the mark had a reputation and both these grounds were swiftly dismissed primarily because the marks were not similar in her view. The result: victory for MIP and a costs order of £1700.

In MIP Metro Group Intellectual Property GmbH's international registration; opposition of Hackett Ltd, Case O-348-09, on 4 November 2009, Oliver Morris issued a second substantive decision, stating in paragraph 6 that this was because the earlier one had been set aside by the registrar due to procedural irregularity (not set out in the decision, but believed to have been the fact that Ms Corbett did not have all the submissions from the parties). The evidence mentioned by Mr Morris is the same as that mentioned by Ms Corbett. Mr Morris arrived at a slightly more limited specification for the earlier right. The silverware went out. The leather goods became specific and the clothing was only men's. At the end of his global assessment -- which is pretty lengthy and deeply analytical, Mr Morris did find that there was a likelihood of confusion for the goods which were identical or highly similar (aftershave and clothing).

Mr Morris also gave rather more attention to the passing off and dilution grounds than Ms Corbett, but eventually came to the same conclusion that they failed because the evidence was not strong enough. Since Mr Morris had found for Hackett on a few goods he decided not to make a costs order.

Both decisions seem to be well within the normal range of conclusions that a hearing officer could draw on this scenario".

The IPKat is fascinated. In particular, though he is unfamiliar with the highways and byways of registry practice in instances such as this, he wonders whether readers are happy with signed and published decisions being set aside in circumstances other than the good old-fashioned appeals he enjoys so much. He believes that this case has indeed gone to appeal-- which is where many people might consider it should have gone in the first place.

There's another problem with in-office procedural regularities. We don't know about them unless the office confess to them. I trust your skills to create some interest. At the very least we will open the floodgates and any agent who has an opposition decision they don't like will protest. What fun! Merpel adds (not that it makes any difference) that MIP Metro uses an H on its H-line hotel products, which it sells through Makro stores.

Busy times ahead for CJ

Making a new resolution, this member of the IPKat team is determined to break with the habit of a professional lifetime and start to abbreviate what he used to refer to as the 'ECJ' as the 'CJ'. Those letters stand for its real name, the Court of Justice -- the top tier of the Court of Justice of the European Union (CJEU). Apart from being more accurate, CJ and CJEU are less likely to be confused with the European Court of Human Rights than is 'ECJ' (since both started with the words "European Court").

The busy-ness of the CJ is reflected in, but not limited to the following cases that are heading its way:

* Case C-46/10 Viking Gas A/S v BP Gas A/S, a reference for a preliminary ruling from the Højesteret (Denmark), lodged on 28 January 2010. The questions referred for a ruling are these:

"Is Article 5, in conjunction with Article 7, of First Council Directive 89/104 ... to approximate the laws of the Member States relating to trade marks [Naughty Danes! This directive has been repealed and replaced by Directive 2008/95] to be interpreted in such a way that company B is guilty of an infringement of a trade mark if it fills gas bottles which originate from company A with gas which it then sells, where the following circumstances apply:

1. A sells gas in so-called composite bottles with a special shape, which is registered as such, that is to say, as a shape trade mark, under a Danish trade mark and an EC trade mark [ie a Community trade mark]. A is not the proprietor of those shape trade marks but has an exclusive licence to use them in Denmark and has the right to take legal proceedings in respect of infringements in Denmark.

2. On first purchase of a composite bottle filled with gas from one of A's dealers the consumer also pays for the bottle, which thus becomes the consumer's property.

Right: Viking's legal team is enraged to discover how far the CJEU is from the sea ...

3. A refills the composite bottles by a procedure under which the consumer goes to one of A's dealers and, on payment for the gas, has an empty composite bottle exchanged for a similar one filled by A.

4. B's business consists in filling gas into bottles, including composite bottles covered by the shape trade mark referred to in 1., by a procedure under which consumers go to a dealer associated with B and, on payment for the gas, can have an empty composite bottle exchanged for a similar one filled by B.

5. When the composite bottles in question are filled with gas by B, adhesive labels are attached to the bottles indicating that the filling was undertaken by B?

If it may be assumed that consumers will generally receive the impression that there is an association between B and A, is this to be regarded as significant for the purpose of answering Question 1?

If Question 1 is answered in the negative, may the outcome be different if the composite bottles - apart from being covered by the shape trade mark referred to - also feature (are imprinted with) the registered figurative and/or word mark of A, which is still visible irrespective of any adhesive labels affixed by B?

If either Question 1 or Question 3 is answered in the affirmative, may the outcome be different if it is assumed that, with regard to other types of bottle which are not covered by the shape trade mark referred to but which feature A's word and/or figurative mark, A has for many years accepted, and continues to accept, the refilling of the bottles by other companies?

If either Question 1 or Question 3 is answered in the affirmative, may the outcome be different if the consumer himself goes to B directly and there:
(a) on payment for the gas, obtains, in exchange for an empty composite bottle, a similar one filled by B, or
(b) on payment, has a composite bottle which he has brought filled with gas?"

The IPKat loves these issues, which he has deployed as IP exam questions over the years and which have been litigated under pre-Directive law both in England and Ireland. If you would like to comment on this case to the policy directorate at the UK's Intellectual Property Office, please e-mail policy@ipo.gsi.gov.uk before 18 March 2010. Your incisive comment might just trigger a decision of the UK government to intervene in the proceedings.


* Case C-552/09 P, Ferrero SpA v Office for Harmonisation in the Internal Market [pompously excessive verbiage deleted], Tirol Milch reg.Gen.mbH Innsbruck, this being an appeal by Ferrero SpA against the judgment of the General Court in Case T-140/08 (noted by the IPKat, predicting an appeal, here). Among the issues raised by Ferrero, which believes that there is a likelihood of confusion of the relevant consumers between its own earlier Italian KINDER mark and the Timi Kinderjoghurt sign, is whether the General Court correctly took into account the fact that KINDER is part of a family of marks.

* Case C-22/10 P REWE-Zentral AG v Office for Harmonisation in the Internal Market [ditto], Aldi Einkauf GmbH & Co. OGH, this being an appeal by REWE-Zentral AG against the judgment of the General Court in Case T-150/08. This Kat is currently unfamiliar with this dispute, in which the General Court has backed the Board of Appeal's decision according that there is a likelihood of confusion between CLINA and the earlier Community word mark CLINAIR.

* Case C-449/09 Canon Kabushiki Kaisha v IPN Bulgaria OOD, this being the re-referred version of last year's mystery case C-181/09 (see IPKat note here), which has actually retained a degree of mystery even now. The UK's IPO explains the question thus:

"How is Article 5(3) (c) of Directive 89/104 [which remains repealed: see note to Case C-46/10 above] to be interpreted: does it relate to importation or exportation of original goods which have been manufactured and put on the market by the proprietor of the right to the protected trade mark, or to importation and exportation of goods which imitate the trade mark of the proprietor of the right to the protected trade mark, that is to say counterfeit goods, which were not manufactured by the proprietor of the right to the protected trade mark?".

Curiously the IPKat has been unable to find this reference on the Curia website by searching the case number or the names of the parties. Still, if you would like to inspire or provoke the IPO to intervene please e-mail policy@ipo.gsi.gov.uk before 22 March 2010.