Since June 2003 the IPKat weblog has covered copyright, patent, trade mark, information technology and privacy/confidentiality issues from a mainly UK and European perspective. The IPKat team is Birgit Clark, David Pearce, Jeremy Phillips, Mark Schweizer, Tufty the Cat and Annsley Merelle Ward. You're welcome to read, post comments and participate in our little community. You can email the Kats here
The IPKat spotted an article in the LA Times highlighting the similarities between advertising and graffiti. According to Crispin Sartwell: “Both convey messages by occupying public space; indeed, both are omnipresent and unavoidable. At the upper reaches of excellence both are arts, though they are more often merely puerile and annoying noise.” However, while advertising is legal, graffiti is considered criminal. Sartwell attributes this distinction to money: advertising is paid for and is the “public expression of wealthy people and organizations” while graffiti is “the public expression of people who are more or less broke.”
Sartwell goes on to consider the interface between the two: culture-jamming, where advertising billboards are altered with subversive messages, focusing particularly on the art of Ron English, who is responsible for such works as a toe-tagged cadaver with the legend “Forever Kool” (Kool is a North American brand of cigarettes) and “Camel Kids”, featuring child versions of Joe Camel, the Camel cigarette mascot.
The IPKat says: “This is an area of IP law where there are no easy answers. On the one hand, if advertising is legally protected from all by third parties, it constitutes a ubiquitous one-way conversation between the advertiser and the public. On the other hand, courts generally feel unhappy about artists riding roughshod over other peoples’ property rights in the interests of free speech.”
Da do Ron Ron? Click here (track 9)
Learn how to read graffiti here Learn how to remove graffiti here Feeling subversive? Buy your spraypaint here
According to a WIPO Press Release Dutch electronics giant Philips has become the first applicant to file a fully electronic international application under the Patent Cooperation Treaty (PCT), with WIPO as the receiving office, using the PCT-SAFE ("Secure Applications Filed Electronically") software. This software lets PCT users file their international applications either online or using physical media such as CD-R. This filing by Philips, the largest user of the PCT, follows a pilot scheme in which 49 applicants were enabled to file international applications using the software with WIPO as receiving office. Philips' Chief Executive Officer of Intellectual Property and Standards Ruud Peters said his company plans to make extensive use of the PCT-SAFE software as this would translate into significant savings for his company: "Filing patents on-line at WIPO means a huge step forward for our patent creation process. As we are constantly looking for ways to improve our business process and be cost-effective, this new service fits perfectly in our strategy".
Sustained growth in the use of the PCT, which is now handling over 100,000 international applications a year, and the increasing complexity of applications, in particular, from the biotechnology sector, has prompted WIPO to look for business solutions to handling such large amounts of data while still providing a value for money, quality service to users. PCT-SAFE, which should be available to all PCT applicants by the end of 2003, claims to offer significant benefits. Users will be able to submit validated applications without the printing, copying and mailing normally associated with such a transaction. They will also receive almost immediate notification that their application has been received and is being processed.
Can't name the 122 countries through which you can use the PCT to apply for patent protection? Click here Other PCTs that have nothing to do with patents here and here For electric filing click here
Contrary to earlier speculation Tecwen Whittock, the man whose coughs steered "Who Wants to be a Millionaire?" cheat Major Charles Ingram to a famous TV triumph and then to prosecution, will not be lending his name to any new anti-cough products. Whittock applied to register his name as a trade mark after a north London company decided to cash in on the game show fraudster by launching a cough mixture called Tecwen Relief with the strapline "One answer, one choice".
On 28 April, just three weeks after Whittock, Ingram and his wife Diana were found guilty of attempting to cheat on the ITV quiz show after Whittock's 19 coughs guided the major towards the right answers, Transfrontier Ltd of Hendon applied to register the slogan TECWEN RELIEF... ONE ANSWER, ONE CHOICE as a UK trade mark for pharmaceutical preparations and substances. Whittock, who knew nothing of the plan, was only alerted to it when he heard a rumour that his name was to be used for a cough medicine. To counteract the attempt to hijack his name, he applied on 16 May to register the word TECWEN, following which Transfrontier's original application was abandoned. Whittock said he had no intention to launch any products using his name: "What I wanted to do initially was to stop other people using the name. I've got no plans to launch a cough sweet or whatever myself, but I certainly don't want a company doing it without my permission".
The IPKat comments: "Despite nearly ten years of harmonisation within the EU, there is still no common standard by which 'bad faith' applications are measured. For Community trade marks the applicant -- like Tecwen in this case -- need not have any intention to use his mark. In the UK, however, if the applicant lacks the necessary intention, the application should be refused or, if it is accepted, it will be liable to cancellation".
WIPO’s new administrative building and a conference hall is to built by Induni-Ferrovial (Induni here, Ferrovial here). IF’s contract remains subject to the condition that further negotiations with WIPO on financial and technical matters are successful. In September 2002, WIPO’s member states approved the building project, which has a budget of US$135 million. Construction work is expected to start in October/November 2003 and is estimated to last approximately 42 months. Once the building is completed (target date 2007) WIPO will be able to regroup its staff, which currently occupies office space in nine different buildings in Geneva, in a single building complex, just off the Place des Nations.
The IPKat says that’s just too much and wonders how much of the benefit of this expenditure will be felt by authors, inventors and business start-ups in the large number of developing states belonging to WIPO.
The IPKat offers a modest prize to any person who can explain to his satisfaction the meaning of paragraph 62 of Advocate General Jacobs' opinion in Adidas v Fitnessworld, reproduced below:
"The effect of the way in which the decorative element is perceived in the present case is very different from the situation in Arsenal [v Reed], in which the [European] Court [of Justice] held that it was not relevant that the allegedly infringing sign was perceived as a badge of support for or loyalty or affiliation to the proprietor of the mark. That case concerned a claim for infringement under Article 5(1)(a), which provides for absolute protection in the case of identity between the mark and the sign and between the goods or services concerned and those for which the mark is registered. In that context the unauthorised use by a third party of the identical mark on identical goods was plainly trade mark use, notwithstanding that perception."
At this point in the Adidas case, the Advocate General was considering whether the use by a defendant of a sign similar to a claimant’s registered mark as a decoration or embellishment rather than to denote the origin of the defendant’s good can constitute infringement under Article 5(2) (the “Euro-dilution” provision) of the Trade Mark Directive. Whether trade mark use (use to denote the origin of the defendant’s goods) is needed for infringement is a moot point in the UK following Arsenal v Reed, where the Court of Appeal held that trade mark use is not needed, at least under Article 5(1)(a) and the House of Lords' conflicting holding that trade mark use is needed for all types of infringement in R v Johnstone.
The Advocate General in paragraph 62 says that there was clearly trade mark use in Arsenal v Reed and distinguishes the Adidas situation because the defendant’s use there was decorative only (and hence did not indicate the origin of its goods). Why then does he point to the absoluteness of the protection granted by Article 5(1)(a) to support his claim? Doesn’t the concept of absoluteness embrace all uses whether or not they involve the denoting of origin? Simiarly, his final sentence seems to suggest that just the fact that the third party’s use of the mark is unauthorized together with the fact that both the two parties’ marks and signs are identical equals trade mark use, but such a definition would surely catch uses other than those which denote the origin of goods. This is demonstrated by his comment that the public’s perception of the mark as a badge of loyalty did not prevent it from being used as a trade mark.
Send your answers by e-mail to theipkat@yahoo.co.uk. Alternatively leave them as comments below.
The New York Times and BBC report that United States, Brazil, India, South Africa and Kenya are close to reaching an agreement allowing poorer countries to import generic versions of medicines that are covered by patent protection, on condition that the drugs do not make their way back into developed countries. It seems though that the US has convinced more developed states to opt out of relying on this agreement. This comes ahead of next month’s meeting of the WTO in Cancun.
The IPKat says: “This is a sensible and humane concession by pharmaceutical companies. It will allow the populations of less developed countries to gain access to essential drugs that we take for granted and the pharmaceutical companies won’t seriously lose out because the drugs will go to people who could not afford to buy legitimate versions of the drugs anyway. However, as Liberal Democrat MP Jenny Tonge points out, this will only be effective if there is an infrastructure within the beneficiary countries for the delivery of those drugs to the people that need them.”
UPDATE: The 146 members of WTO agreed to this proposal on 30 August - WTO press release here.
A novel called Q, written by four Italians under the name ‘Luther Blissett’, has been proposed for the Guardian First Book Award 2003. The book’s four authors -- Roberto Bui, Federico Guglielmi, Luca Di Meo and Giovanni Catabriga -- belong to a group of Italian artists and left-wing activists who began using the name of Blissett, a former Watford FC football player, as their multi-use signature. The English version of Q, a good-versus-evil spy thriller set during the Reformation in Italy and Germany, has already sold over 200,000 copies in Italy and has been translated into 10 languages, including English.
Luther Blissett developed something of a cult figure in Italy following a disastrous season at AC Milan between 1983 and 1984. Said Blissett: "It's something that I've stayed clear of; you've got no control over these kinds of things. People were saying to me you should read it, but why? It's got nothing directly to do with me. Nobody asked my permission to use my name or anything like that. But what can I do about it? They get on with it and I observe from a distance". Meanwhile the Italians have disbanded ‘Luther Blissett’ and reconstituted themselves as Wu Ming (the Chinese for “no name”).
The IPKat would advise Blissett to consider his legal options. Under the Copyright, Designs and Patents Act 1988, s.84, the false attribution of authorship is a civil wrong. While no-one has actually said the former footballer wrote the book, his name is so unusual and distinctive that people seeing it in the context of a novel would swiftly assume he wrote it.
Experience the Luther Blissett phenomenon here, here and here Other famous Qs in literature here, here and ">here
Qhere; The Story of Q here; The Story of Ohere; The Story of Phere; The Story of Pihere For footballers who write click here; for a writer who played football click here
In January 1998 Butch and Sundance (“the Tamworth Two”) made a break for freedom that captivated the entire British nation. They squeezed through a hole in the slaughterhouse wall and gave the police the slip. After Butch, a sow, was recaptured, Sundance was caught after being stunned by tranquilisers. The happy pair are now enjoying a life of leisure at the South of England Rare Breeds Centre, near Ashford, Kent, but they are back in the news again following an announcement that the BBC is to make a £2 million film of their exploits. The 90-minute film for will use the same mix of live action, animation and computer technology as Hollywood bacon-buster Babe. Since Butch and Sundance were mere piglets at the time of their adventure, it will be necessary to employ eight look-alikes for the duration of the filming.
The IPKat wonders about the issues relating to ownership and control of contemporaneous historical events. The pig’s escape was first reported by a local newspaper, the Wiltshire Daily News, but the national tabloid Daily Mail -- which orchestrated a “save the pigs” campaign – then took the pigs over. Now it’s the turn of the BBC. Since “Butch” and “Sundance” were not the pigs’ real names but were given to them in tribute to their exploits, will the owners of the rights in the movie classic “Butch Cassidy and the Sundance Kid” object? Or Viacom, owners of the THE LEGEND OF BUTCH AND SUNDANCE trade mark registration for “entertainment services in the nature of a dramatic television series”? A less problematic issue is that of whether, in the light of the Bette Midler case, the original pigs can object to the use on the film’s soundtrack of an unauthorised sound-alike “grunt-over”.
Which treatment do you prefer? A comparison of UK press reports on the Tamworth Two here Tamworth pigs here, here and here More here about Tamworth than you probably wanted to know
Eat your Tamworth pig here Other porcine celebrities here, here and here Grunt here. Be disgruntled here. Be gruntled here
The Times reports on the campaign of Katherine Albrecht, leader of Consumers Against Supermarket Privacy Invasion and Numbering (CASPIAN) to safeguard the privacy of consumers. Albrecht, who has already saved consumers from Gillette’s “smart shelf” which photographed those buying razors, has decided to make Marks & Spencer her next target because of their proposed use of “smart tags.” The tags, affectionately known to Ms Albrecht as “spy chips” are embedded into goods or their packaging and can be tracked by scanners connected to the internet. As well as allowing thefts and counterfeiting to be more easily detected, the tags allow companies to locate stock that has been misplaced or wrongly shelved. However, they continue transmitting until they are “killed” and according to Albrecht:
“Everything from your earnings to what’s in your briefcase would be sending out information…My concern is that this will be tied in with Britain’s CCTV surveillance system, and you’ll be literally under surveillance at every turn.”
Albrecht’s mission is biblically inspired. She claims to be fighting against the scenario envisaged by the Mark of the Beast in Revelations xiii, where it is said that there would be time when people would not be able to buy or sell food without a number.
The IPKat says: “The protection of private property rights by minimising theft and counterfeiting is a laudable objective but consumers’ privacy should also be protected. The simplest way to strike a balance between the two would be to ensure that the tags are “killed” once a consumer buys tagged goods.”
Management and technology consultancy Margaux Matrix has developed an electronic method of measuring the amount of time brand logos are on television, whether in sports sponsorship or product placement. According to Caroline Marshall, writing in today’s Daily Telegraph, the company plans to test launch in October and be up and running by 2004.
In the past, the measurement of brand air-time has been conducted by a person using a stopwatch to count the seconds a logo is on screen. MM’s new technique will instead use image-recognition software. Existing technology can already measure two-dimensional brand images, MM claims, its technology will measure moving and distorted images where only part of the brand is shown (for example a mud-spattered sportsman with a logo on his shirt).
The new software will be useful for event sponsors seeking to monitor how much coverage their names and logos actually receive, as well as for companies who want to know how frequently their branded goods benefit from on-screen product placement. The IPKat says: “the more precise quantification of brand exposure may even lead to a whole new way of calculating sponsorship fees which is based on the sponsor’s actual, not potential, exposure”.
Writing on the MTV website, Gideon Yago comments on the US record industry’s remarkable attack on individual consumers by suing thousands of file-sharers for $150,000 per song, per hard drive, per download. He writes:
“While the major labels and their lobby, the RIAA, continue to pump millions of dollars into a legal campaign aimed at seeing 16-year-olds in handcuffs, there is an easy, low-cost solution to their financial woes, one that doesn't involve alienating a generation of loyal buyers. Stop making albums. They cost too much and they aren't worth the price tag”.
Yago describes albums as a bloated, outdated, overused, unnecessary idea. Thanks to the fast-forward buttons, today's listeners go cruising from track to track in search of a sucker cut. Consumers are hesitant about spending $16.99 plus tax for an entire record that might turn out to be utterly disposable. Yago complains that, to recoup the money invested in marketing big hits, record labels tack on a dozen filler tracks that nobody wants to hear and sells it as an album. But, he asks, what if the record labels gave less and charged less? If the record industry tightened its product, offered greater diversity and focused its album efforts on music compilations, it might be able to make it out of the business world alive.
The IPKat comments: “Yago’s suggestion is superficially attractive. How many of us have bought the whole album and found the star tracks outnumbered by the dumb ones? But the suggestion may be too little, too late. Too many victims of album abuse have now become practised downloaders and will not easily give up the habit”.
Find out about the RIAA here Take a stand against RIAA here Buy the worst albums ever made here Possibly the worst album ever made here This week’s album charts here Free album download here
An article in Saturday’s New York Times by Robert Crandall, former chief executive of American Airlines draws attention to the practice of code sharing. This is where prominent airlines allow other carriers to use their two-letter codes (e.g. AA for American Airlines in the flight number) to denote their flights, even though the prominent airline is not actually operating the journey. Crandall is concerned:
“All this has happened despite the fact that there are precious few consumer benefits to code-sharing. The main beneficiaries of these arrangements are the airlines, which can mislead passengers into believing that they will be flying a complete itinerary on one carrier, when in fact, they will be using several airlines.”
According to the article, it also allows major carriers to shield themselves from the competition of smaller carriers by killing off independent carriers not involved in such code sharing.
The IPKat says the trade mark implications of code sharing depend on how it’s treated by the airlines concerned. Trade mark licensing is permissible in principle and if the prominent airlines exercise control over the quality of the airlines that they allow to use their codes then this doesn’t seem too different from licensing. However, if the sharing is done in such a way that consumers do not realize that they are flying on a less prestigious airline until they reach the airport (or even the airport itself) then consumer are deceived. In the UK at least, if a trade mark owner uses his mark deceptively he is liable to have it revoked under s.46(1)(d) of the Trade Marks Act 1994.
The IPKat’s postbag contains a fascinating mixture of contents. Invoices, bills, price lists for trademark and patent filing from here to Timbuktu ― and even the occasional interesting publication. Today’s mail haul contained just one item worthy of attention: volume 29 of the Proceedings of IAPIP, the Hungarian Group of AIPPI, for 2002. Since the meltdown of the Iron Curtain, our Hungarian colleagues have shown themselves to be not merely enthusiastic and erudite colleagues but also indefatigable hosts, as many major IP conferences in Budapest have testified. Of particular note in this volume are Judit Kerény’s paper, “Phamaceutical Patent Litigation”, an account by Endre Millisits on current Hungarian Patent Office practice on lapse of trade marks for non-use and Miklós Sóvári’s comments on a subject not usually tackled in IP circles, “Who Pays the Customs Warehousing Costs?”. Good luck, IAPIP, and keep up the good work.
Things Hungary is famous for: click here and here Listen to the czardas here Things Hungary is infamous for: click here and here
The Patent Office has issued a new Practice Notice on the registrability of functional designs. The Office is keen to remind people that it is now possible to protect designs with no aesthetic quality. While it is not possible to register designs that are dictated solely by technical function, according to the Patent Office, the s.1C(1) functionality exception in narrower for designs than it is for trade marks. In reaching this conclusion, they cite AG Ruiz-Jarabo Colomer in Case C-299/99 Philips v Remington, which is a little odd because the ECJ didn’t follow the part of his opinion that highlighted the differences between the 2 types of IP rights. However, this is understandable in view of the dearth of case law in what is still a very new area. According to the practice notice, the test of whether the external features of a design are solely dictated by function (and hence excluded from registration) is: “whether or not the technical function dictated the appearance of a product to the extent that there is no (or neglible) design freedom.”
The Practice Notice also considers Section 1C(2), likening it to the old “must fit” exception. Here the test is whether “there is any part of the design which is not required to be of the appearance it is, in order to enable it to fit the end product.” If the answer is no, the whole design is unregistrable. If only some parts of the design are dictated by the need to fit together with something else then only those parts are exclude from protection and the other features of the design may be protected as long as they satisfy the other requirements for registration. Finally, the Patent Office notes that modular systems may now be protected under s.1C(3).
IPKat Riddle: AG Ruiz-Jarabo Colomer in Philips v Remington says that “the feature concerned must not only be necessary but essential in order to achieve a particular technical result.” There is a small prize on offer for anyone who can explain the difference between the terms “necessary” and “essential” to the IPKat.
Everyone needs to let off steam from time to time and the IPKat is no exception. In this, the first of an occasional series of gripes, the IPKat demands urgent action in getting European Court of Justice (ECJ) cases translated into the 11 (soon to be 21) languages of the European Union without undue delay. ECJ decisions may go weeks or even months before they have been translated into all the EU’s major languages, not to mention the minor ones. Opinions of the Advocate General ― which are often more important than the final decisions because they contain far more detailed legal reasoning ― may wait years for translation. To give just one example, the Opinion of the Advocate General in Campina Melkunie (the BIOMILD case) has been unavailable in Danish, English and Greek since it was delivered on 31 January 2002.
This delay in translating is wrong in principle and damages competition for legal services in the EU. Consider this example: an important ECJ parallel trade ruling is issued in French and German but there is no available official English or Spanish translation. A US attorney seeks urgent legal advice from his European counterparts but can only get it from French and German speaking attorneys. Even if English and Spanish practitioners read the other languages in which the judgment has been issued, they have no reliable and officially sanctioned text upon which they can rely, which puts them at a great disadvantage. Once a language is frequently stigmatised by late translation or no translation at all, it can do nothing for the morale of practitioners in countries like Greece and Portugal whose lawyers practise with a perennial linguistic disadvantage and whose students must constantly study foreign-language texts of laws and decisions so fundamental to their studies.
The ECJ will say, correctly, that legal translation is a time-consuming, labour-intensive and expensive activity and that someone has to pay for it. However, all of the official languages of the EU are meant to be equally authoritative and there are good political reasons why this should be the case. However, failing to translate into some languages suggests that those languages are less important than the others. This violates the principle of equal access to the law. It also makes it difficult for companies and individuals to plan their legal and business affairs if they cannot gain access to the law in a language that they understand. While ignorance of the law is no defence, people in jurisdictions where a translation is not available in their language have no option but to remain ignorant.
So what can be done? The intellectual property profession is wealthy and profitable. Its clients create and enforce cash-generating monopolies. The IPKat asks: (i) how much extra would it cost to translate all ECJ decisions and opinions into all EU working languages? (ii) cannot the option to pay this extra sum be given to those of us who need access to the law in order to do our daily work?
Design Week magazine has reported that Kurt Geiger's CARVELA shoe brand has been revamped by corporate identity consultants The Nest. The object of the exercise was to deliver a more "vibrant and feminine" image for CARVELA entry level products. The new look, which hits the streets this October, will be seen on shoes, bags and packaging. Says KG's marketing head Claire Talbot: "We wanted the identity to reflect the collection and make the brand more aspirational". The Nest strategist Freddie Baveystock adds: "The brand was quite unfeminine. This is a real reinvention. It's all about being girly, having fun".
The IPKat observes: "changes in a brand's ethos or identity are not entirely neutral from a legal point of view. For example, where a brand is refocused so as to attract a different sector within the market then the 'average consumer', by reference to whom the trade mark's distinctive character is measured, may also be subject to change".
The BBC reports that Manchester’s Urbis Museum is encouraging its visitors to take part in Bookcrossing, a scheme by which people can leave copies of books that they have finished reading for others to find an enjoy. They can chart the progress of their books by affixing a bar-code to them that can be obtained from the Bookcrossing website. The idea is that those who find the books record their impressions of it on the website.
The IPKat is concerned about the copyright implications of this endeavour. If the books were first sold to their original owners in the EEA then the copyright owners cannot object to the issuing of copies of them to the public under s.18 of the Copyright Designs and Patents Act 1988 because the right is exhausted under s.18(2). Additionally, there is no infringement of the rental or lending right under s.18A because the definitions of both rental and lending require that the defendant “makes the copy of the work available for use, on terms that it will or may be returned” (emphasis added). Bookcrossing participants wish according to the website to “free” their books so can hardly expect the books to come back to them.
However, the IPKat adds, if a book that was bought outside the EEA is “set free” in Manchester (or anywhere else in the UK) or finds its way there after a number of releases, then the right to prevent copies of the book from being issued to the public is not exhausted. While there is a defence under s.22 for the import of an infringing copy into the UK for private and personal use, this use will not be private and personal if at the time of the import the original owner planned to put it into the Bookcrossing scheme. Additionally, the defence only applies to importation and not the putting into circulation of a copy that has been brought into the UK under that defence. Finally, the defence only applies to infringing copies but most freed books are never an infringing copy because an infringing copy is defined (in s.27) as one where its making in the UK would have constituted an infringement. The making of a book that has been legitimately published and put on sale in a non-EEA country would not have been infringement if it had occurred in the UK so legitimate (but foreign-published) copies entered into the scheme would not fall under this defence.
Read about the effect on authors here More swapping here and here Altruism here and here Click here, here and here if you keep leaving your books behind
Looks like Mr Forgetful forgot to register his domain name ...
London-based The Lawyer magazine reports that easy-magnate Stelios Haji-Ioannou , owner of easyGroup and cut-price airline easyJet, has started a legal battle with veteran broadcaster and TV celebrity Noel Edmonds. Edmonds wants to use the strapline "easymeetings" to promote his videoconferencing company face2face and has applied to register EASYMEETINGS as a trade mark, but Stelios is opposing the application. Stelios doesn't own either 'easy' or 'easymeetings' as trade marks. But, says Bird & Bird IP partner Morag MacDonald, he could still oppose Edmonds' application to register EASYMEETINGS.
Why have Stelios and Edmonds fallen out so spectacularly over the 'easy' name? Edmonds initially developed a videoconferencing business plan with a view to getting Stelios involved. But, following a meeting between the two, Stelios declined. Edmonds wants to retain the 'easymeetings' name in anticipation of easyGroup setting up a rival business using that name.
Edmonds alleges the easyGroup founder also suggested at the meeting that he was interested in starting a similar company on his own: “The meeting with Stelios lasted less than half an hour and none of us really got a word in. Stelios thought it was such a good idea that he might do it without us". John Rothnie, easyGroup head of corporate communications, agreed that easyGroup might want to develop a videoconferencing business of its own. Says Rothnie: “He [Edmonds] came and saw us and asked if they could borrow our brand. Our reaction was, 'Why are you doing this? This is something we could set up anyway'”. Neither side has yet instructed law firms, though Edmonds is reported as having Olswang waiting in the wings.
Here's another Opposition Division decision from OHIM in Alicante, this time on dissimiliarity of services. US corporation Norwegian Cruise Line applied to register the letters NCL as a Community trade mark for cruise ship services in Class 39. Portuguese company NCL Transitarios opposed, citing a Portuguese mark consisting of this stork emblem with the letters NCL prominently splashed across its body and registered for forwarding services, also in Class 39 [nb though the registration was for "forwarding services" in general, it was treated as though it was for the forwarding of freight by sea for the purposes of the opposition]. According to the Portuguese company the marks and services were similar and there was a likelihood of confusion under CTM Regulation 40/94, Art.8(1)(b).
Citing the 1995 edition of Collins English Dictionary, the Opposition Division concluded that cruises were for people, while forwarding services were for cargo, in other words goods. There was thus no similarity between the respective services and no consequent likelihood of confusion and the opposition failed. The IPKat, considering any comment superfluous, snuggled into his blanket and dreamt of ship's mice.
For passengers who prefer to travel cargo class click here, here and here Ship's cats and mice here
Northern Europeans may grow sluggish in the summer sun but Alicante, epicentre of the Community trade mark, remains busy. The most recent batch of OHIM Opposition Division decisions posted on OHIM’s website includes Mobil Oil Corporation’s successful attack Olaf Quilitz’s attempt to register a device mark including the words MOBIL’S & FUN for goods in Classes 9 (software and electronic apparatus) and 12 (apparatus for locomotion), goods for which Mobil had already registered one or more MOBIL-based trade mark. Mobil alleged (among other grounds) similar marks/identical goods and a likelihood of confusion under Regulation 40/94, Art.8(1)(b), as well as Art.8(5), in that Quilitz’s application was seeking to take unfair advantage of the repute or distinctive character of MOBIL, a mark possessing quite a reputation.
The Opposition Division found for Mobil on likelihood of confusion, finding the marks visually, phonetically and (in Germany, Denmark and Sweden) conceptually similar. Sadly, having reached this conclusion, the Opposition Division then sat back and declared that, if MOBIL’S & FUN wasn’t registrable because of Art.8(1)(b), there was no need to consider the Art. 8(5) point. Says the IPKat, “Apart from disappointing those of us who are craving some really good decisions on how Art.8(5) actually works, the refusal to consider the second ground could have messy consequences if (as is unlikely) the Quilitz appealed the Art.8(1)(b) point successfully before the Board of Appeal. Where would that leave the unconsidered Art.8(5) point?”
For things to do in Alicante if you’re not there fore the trade marks click here, here or here Mobil’s recipe for a longer life here Chocolate Obsession recipe from Georgia’s only Mobil Five Star restaurant here
Writing in The Lawyer magazine, 18 August, Taylor Wessing lawyers Kai Westerwelle and Timothy Pinto warn of an impending battle between Germany and the European Commission as to how the EU’s laws on unfair commercial practices should go. The Commission wants a harmonisation directive which will bring into line the widely differing standards by which trading practices are deemed unfair across the Community (the UK and Ireland for example have no unfair competition statute at all). But Germany ― already known as the most protectionist jurisdiction in Europe ― is set to go it alone without waiting for the proposed Directive to be adopted. The sort of practices the proposed Directive will address are, for example, aggressive and persistent marketing, the targeting of recently bereaved consumers and the use of ‘advertorials’ where it is not explained to the consumer that the apparently editorial comment has been paid for.
Arguments for and against advertorials here, here and here Is life unfair? Click here, here or here to find out
If you are a postmodern hipster ironist, click here for your life is unfair bear
August 2003 has seen the launch of a new intellectual property magazine. Intellectual Asset Management, published by Globe White Page, will be published bi-monthly under the editorship of Joff Wild, whose editorial experience spans Managing Intellectual Property and before that Patent World and Copyright World. IAM seeks to bridge the gap between purely legal writing on IP and the needs of the commercial and business world. The first issue carries the results of Suzanna Hawkes' key research on how companies' IP announcements affect share price movements, as well as a piece by Richard Marsland on how Unilever handles a burgeoning portfolio of 135,000 trade marks and 25,000 patents.
In today’s New York Times, the actor Paul Newman writes of his intention to sue the US Department of Housing and Urban Development “for piracy of personality and copycat infringement.” This follows Fox’s decision to bring a trade mark suit against Al Franken for using the term “fair and balanced” in the title of his forthcoming book, Lies and the Lying Liars Who Tell Them: A Fair and Balanced Look at the Right. Newman claims that he has suffered harm because the government department’s acronym, HUD, has resulted in an association between a socially useful entity and Newman’s performance as a hardman in the 1963 film HUD. Says Newman:
“[HUD] is a fair and balanced institution and that some of its decency and respectability has unfairly rubbed off on his movie character, diluting the rotten, self-important, free-trade, corrupt conservative image that Mr. Newman worked so hard to project in the film.”
An obvious (and amusing) parody thinks the IPKat, but behind it there is a serious trade mark point. Does it count as tarnishment if a third party uses a trade mark that has a reputation for being associated with antisocial, deviant or evil behaviour on intrinsically pleasant or virtuous goods. For example, would it be tarnishment if someone took it upon himself to launch a range to MARILYN MANSON (registered as a CTM and a US trade mark) cuddly toys? In the EU, Article 5(2) of the Trade Mark Directive talks about use that is “detrimental to the repute of a trade mark.” If the mark’s reputation is for bad taste or the like then this reputation will be damaged if the mark is used on innocuous or even cutesy items. In the US, it’s not 100% clear that the Lanham Act provides a federal action for tarnishment following Moseley v V Secret Catalogue but if it does then it seems unlikely that use on nice products would fall into the standard definition of tarnishment, which tends to focus on the negativeness of the defendant’s use. For those who want further reading, McCarthy at §24:104 points to a few cases where tarnishment was not found because there was nothing inherently objectionable about the defendant’s goods or services.
Paul Newman gets saucy here Virtuous products here Be an angel here
Richard Morrison, of Wavertree, Liverpool, returned home the other day to find his door had been kicked in by police with a search warrant. They had been acting on a tip-off from a criminal who had broken into the artist's home just days earlier. He told officer he had seen a human head in Mr Morrison's house. The “head” was none other than a mask made from rashers of bacon, stored in formaldehyde. Chief Inspector Stephen Naylor apologised to Morrison, promising that the police force would pay for a new front door.
Morrison said the work was inspired by the artist Damien Hirst’s notorious shark in formaldehyde. He added: "It's obviously a very macabre piece of work, but I never expected it to get this reaction. The police told me that the burglar was terrified - he had a crisis of conscience and confessed his crimes to his mother. I made the mask when I was on an art foundation course two years ago. It just seemed like an interesting concept. I was quite proud of the result, although it's sagging a bit now”. According to the BBC the criminal was arrested by police for a different crime.
Says the IPKat, “One of the problems with conceptual art is that the art lies in the concept as much as in its formal execution. Take the concept and you’ve taken the essence of the art ― but it’s not an infringement of copyright”.
For art by Damien Hirst click here Properties of formaldehyde here For pictures of bacon click here and here For pictures by Bacon click here and here For cheese toast with bacon, like grandma’s grandma used to make click here
Brandchannel’s current featured article urges companies to ensure that their “employees act consistently with the brands they represent”, arguing that, if employees do not conform to the brand image, any other branding activity can suffer. Edwin Colyer, the article’s author asks for example, “Would you be troubled by a Ford dealer who prefers to drive Nissan cars?” That example is pretty uncontroversial, but he goes on to say internal brand alignment (as the process of internal branding is known) “is about encouraging employees to behave in certain ways. And that means dabbling in psychology.” Some of the methods highlighted seem just a little bit sinister – for example, Wal-mart is said to use its mainstream television adverts to “demonstrate appropriate behaviour to the company’s own employees.” However other suggestions seem sensible. Colyer argues that, if a company expects its employees to behave consistently with the brand image, those who head the company must lead by example. Also, employees should be consulted as they will be more likely to accept brand values that they have played a part in creating, rather than values that are imposed on them. Finally, he encourage human resources departments to only recruit employees whose “natural behaviour and values fit closely with the company brand.”
There is probably some truth in what Colyer is saying. People are motivated to apply to certain companies and to remain there once employed if they agree with the company ethos, so getting such employees to “toe the company line” won’t be too difficult and ought to be pretty painless for the workers. Similarly, a branding policy that is the result of genuine consultation with those who are bound by it ought not to cause employees too much difficulty. However, such consultancy has to be sincere – asking people their views and then ignoring what they say is likely to cause ill-will which may be detected by customers. At the end of the day, if the brand values are justifiable then they ought to be acceptable. This puts the onus on those who formulate the branding policy to focus on worthwhile values rather than just imposing a corporate identity for the sake of it, although an entire corporate entity espousing values of peace and light and other nice things can itself look too good to be true and seem sinister.
Such monocultural brands have been the target of an advertising campaign run by Excelsior, a small town in Minnesota. The town placed ads in the form of open letters in the local newspaper stating that certain named retailers such as Starbucks, Home Depot and The Hard Rock Café were not welcome in Excelsior (even though none of the firms had plans to open there) because they represented cultural conformity. The campaign has paid off for Excelsior as it has had nationwide press-coverage in the US and has received enquiries from companies that are interested in opening business there.
On 30 July (see our Archive) we blogged the shock news that, in a ground-breaking legal move, the popular fictional characters The Tweenies were proposing to sue British state broadcaster BBC for human rights violations. This move was prompted by allegations that the BBC had abused their names, reputations and personalities by hiring them out for the marketing of obesity-promoting foods. This afternoon, in a phone call to the IPKat, a spokesman for the Teletubbies confirmed that the fab foursome would be issuing similar proceedings against the broadcasting organisation. “My clients are tired of the BBC depriving us of our human rights to privacy and freedom of conscience”, he said. “This is not only in violation of the European Convention of Human Rights but also breaches the terms of the BBC’s Charter”.
The outstanding critic of the BBC’s policy has been Tinky-Winky, whom the corporation has persistently depicted as gay. “My sexual orientation is my own affair”, stated the Teletubby, “and I don’t see why I have been contractually obliged to carry a handbag”. The BBC rebuffed the allegation. “Margaret Thatcher also carried a handbag”, she said, “and no-one called her gay”. Tinky-Winky’s iconic status in the gay community however troubles him. “I have to do whatever the BBC tells me. It’s hard enough for a teletubby to date a girl in Broadcasting House at the best of times, without having to schlep this handbag everywhere I go”.
Dunlop Canada (follow link to The Buzz, then Events, then Dunlop Name Swap) has invited Canadians whose surnames coincide with that of other tyre firms to change the last names to Dunlop in return for a share of $25,000. Bradley, Jackson, Brian and Janice Dunlop (as they are now known – all formerly Goodyear) have each been paid $6,250 for their troubles and, according to Dunlop, have “made their mark.” The IPKat doubts whether changing your name in order to be part of a publicity campaign can be meaningfully described as expressing your individuality. In any event, Dunlop isn’t a particularly outlandish name and signing your credit-card receipt “Bradley Dunlop” isn’t going to raise too many eyebrows. How different it would have been if the challenge had been set by, say, a certain Atlanta-based drinks manufacturer and the gentleman was to be known as “Bradley Coca-Cola…” This form of publicity stunt may work better in the long-term where the trade mark in question is inherently distinctive, especially if it is fanciful. The IPKat also wonders: if one of the newly-named Dunlops begins behaving badly, robs a bank or is seen leaving (or appearing in) a strip-club, does this count as trade mark tarnishment?
Compare the Canadian Dunlop site with the US and UK sites
Other useful things to do with rubber here, here, here and here
A cure for aches and pains, The Poor Man's Friend was formulated by Dorset apothecary Giles Roberts back in 1790. Its formula, till now a secret, has just been auctioned together with other papers and items formerly belonging to Dr Roberts for £480. The formula and other items were acquired by the museum at Bridport, Dr Roberts' home town. They will go on display in 2004 to mark the 170th anniversary of Dr Roberts' death. Roberts opened the shop as an unqualified doctor in 1788 but was licensed after studying medicine at London hospitals. Among his patent medicines was one labelled 'Anti-Venereal Specific Drops'. In 1797, Edinburgh University awarded him an honorary degree. His customers were grateful enough for his gravestone to be inscribed "His Memory is Cherished Especially by the Poor with Grateful Feelings."
The secret formula was found in a sealed envelope marked "private" by a pharmacist who bought Roberts' old shop in the 1970s. The main constituent of a vat of The Poor Man's Friend was 50lb of Waterford lard, cut into pieces and steamed with 6lb of English beeswax, then strained through cheesecloth. Other key ingredients include calamel, sugar of lead, zinc oxide and lavender. Leading London dermatologist Dr Frances Lawlor is quoted by the Education Guardian as saying: "It would do quite a lot, would be quite helpful in soothing the skin and helping with eczema. Calamel was an antiseptic used in treating syphilis. Zinc oxide would be soothing and could be anti-infectious. It could have a reasonable effect on minor skin infections. But I can't work up much enthusiasm for its properties against headaches and gout".
The IPKat observes: "this shows that trade secrets may possess, in addition to their commercial value, a residual curiosity value".
For other Poor Man's Friends click here or here For Rich Man's Friends click here, here or here (scroll down to Rhythm in Gold)
More on quack remedies here, here and here Lyrics for Dr Robert here
The IPKat’s readers are probably aware of the MSBlast worm, which has been making its way around the internet and is due to launch an attack on Microsoft’s website tomorrow. Disturbingly, a rather nasty pop-up advert has appeared on certain sites that mimics the effect of the worm. A box appears containing an error NT\AUTHORITY SYSTEM error message stating "Windows must now restart because the Remote Procedure Call (RPC) Service terminated unexpectedly". The box is the same as that which appears when a computer is infected with the worm. It then begins to count down from 60 seconds to 50 seconds, at which point the user is informed that his system is vulnerable and he is invited to purchase Computer Shield antivirus software. The user is then “mousetrapped” in the site and cannot escape from it. The way to get rid of the site is to press CNTRL + ALT + DELETE. When the Windows Taskmaster appears, end the Internet Explorer/Computer Shield task.
The IPKat wonders whether the familiar grey box in which Windows warnings appear is itself a work which attracts protection as a copyright work, or whether the appearance of that box, in relation to an offer made by another software company, is an act of passing off. If the answer to either of those questions is “yes” and Microsoft is in a mood to sue, the legal profession would receive a timely boost to its flagging fortunes.
A further issue which remains for the courts to determine is that of the legal protection of real computer worms and viruses. Throughout the European Union, patent law prevents the patenting of inventions “the commercial exploitation of which would be contrary to public policy or morality”; likewise European Union trade mark legislation prevents the registration of signs which are “contrary to public policy or accepted principles of morality”. These provisions would likely prevent a malicious worm or virus being patented, though their effect on worm and virus names is uncertain. Copyright law however, at least in the UK, does not appear to have the same statutory bars. It is probable that copyright does in fact subsist in worms and viruses but that the courts will simply refuse to lend their support to its enforcement.
Peter Pan, beloved by generations of children, is the little boy who never grew up. Remarkably, his copyright never grew up either: it remains in many countries as young and fresh as the copyright which vests in the works of contemporary authors -- and will probably outlive them.
J M Barrie’s gift of all the rights to the story “Peter Pan” has provided a vital source of income to Great Ormond Street Hospital (GOSH) ever since the right to the work was assigned to the hospital in 1929. Although the UK copyright expired in 1987, 50 years after Barrie’s death, former Prime Minister Lord Callaghan successfully proposed an amendment to the law which gave GOSH the perpetual right to receive royalties from Peter Pan (Copyright, Designs and Patents Act 1988, s.301).
In 1996, after the term of copyright protection was extended from 50 to 70 years throughout the European Union, Peter Pan was enabled to enjoy revived copyright in Europe until 2007. A similar Copyright Extension Act was passed in the USA with effect from October 1998, granting copyright there until 2023. This means that, whenever a performance of Peter Pan is staged, a film made or a book published, Great Ormond Street Hospital Children’s Charity can charge a royalty fee. In countries such as Canada, Australia, New Zealand and Japan the copyright term has not been extended and Peter Pan’s copyright there has not merely grown up but died.
Peter Pan is also registered as a trade mark. His commercial activities -- unrelated to the play for which he is famed – include transportation, entertainment and seafoods.
The laws of Never Never Land here Discover why jumping off into Never Never Land is a bad idea here Discover the secret of eternal youth here, here and here Get your Peter Pan outfit here
In his articles on trade mark dilution and brands, Jerre Swann argues that certain “experience” brands allow purchasers to become part of a community of people who align themselves to the brand and its values and that these “communities” are of benefit to consumers. One of the examples that he gives is HARLEY DAVIDSON, with its highly organised owner’s group. NIKE, in a current campaign, seems to be following this lead. In its Jumpstart UK programme NIKE invites “girls” to attend sessions in nightclubs in 4 UK cities where (of course) NIKE sportswear will be on sale and their experts will be able to tell you what sportswear “best suits your shape.” In a spread advert in the London Metro NIKE counsels: “Gals at the event nights are there for fun, not to make you feel like an uncoordinated loser – go alone and socialise while you exercise.”
So do consumers benefit from this commercialised altruism? On the one hand, since NIKE want to sell their products this mightn’t be the best place to go for completely disinterested advice. Also, something rankles about big business being pally and pretending to be your friend – it seems a rather synthetic form of friendship. On the other hand, it’s pretty clear that this is a NIKE sponsored event so consumers know what they’re getting themselves into. If they get fit in the process and make some friends, so much the better.
Learn how to build your own brand community here Some companies that have built brand communities: Lego, Saturn and Smart cars.
How to jumpstart your car here
The BBC reports that Indian musicians are protesting against the current practice of record companies in using their compositions, many of which were popular songs that appeared in musicals in the 1970s, as the basis of raunchy remixes. The musicians, who are upset that they lose out on royalties, have lobbied for a new law. They demand that royalties be paid and that the recording companies obtain permission before marketing the remixes. Additionally, they feel that the sexed-up versions are a distortion of the ideas behind their original songs. One musician said of his song: “It was such a melodious song, they've completely ruined it. It was a song sung by a woman who is waiting for her lover to return to her…Now they've remixed it and the accompanying video has near-nude women dancing in it. They've spoiled the true meaning."
The IPKat says: “If this occurred in the UK, the composers could have relied on the moral right to object to derogatory treatment of their work. The protection given under s.80 of the Copyright Designs and Patents Act 1988 would cover remixes, these being ‘alterations’ of the music, but would not extend to the raunchy performances since the manner of a work’s performance falls outside the scope of moral rights protection”.
Indian Remix as a serious art form here Shania Twain’s Indian remix here Learn here how to play the sitar, tabla and esraj Remix software here and here Raunchy women here and here
Ananova reports that GlaxoSmithKline could be about to disclose the 130-year-old secret behind why its popular HORLICKS malt drink helps people sleep. Although the product has been promoted as a bedtime essential for decades, the reason why it works has never been investigated. But when HORLICKS is relaunched later this year the scientific evidence behind the claim will be revealed, claims trade magazine Marketing.
Horlicks was first created when Englishmen James and William Horlick founded a company in Chicago, US, to manufacture a patented malt milk drink as an artificial infant food. The brand has been advertised with a sleep message since the 1920s, with a campaign in 1931 promoting it as a cure for "night starvation". Till now GlaxoSmithKline, the current maker of Horlicks, has been unable to explain the science behind the claim. According to its website, "It may be the unique combination of wholesome ingredients - the malted barley, wheat or dairy ingredients in Horlicks that aids sleep". But the corporate giant confesses that "as a company we are trying to be more responsible and use science to back up the claims we make".
The IPKat says: "It seems surprising that a pharma company as sophisticated as GSK, with its vast research resources, has hitherto been unable to crack the secret. The IPKat's hunch is that the main reasons why Horlicks works are that (i) people drink it at bed-time when they're tired, (ii) when they drink it, they are already convinced that it will work. Even so, it is not impossible that the results of Glaxo's investigation into the properties of the ingredients of Horlicks will have some commercial value, in which case the company may wish to keep the secret to itself".
Mix yourself a Horlicks Banana Smoothie here For The Big Sleep click here or here For a complete Horlicks click here "Complete Horlicks: a semiotic" approach here Click here and scroll down to Ian Wigg for politically correct and incorrect versions of a clean joke involving Horlicks.
One in 10 people may be suffering an acute form of Celebrity Worship Syndrome (CWS), according to a study published today. Dr Lynn McCutcheon (DeVry University, Orlando, Florida) and Dr James Houran (Southern Illinois University School of Medicine, Springfield) studied more than 600 people to test their interest in celebrities, asking questions designed to reveal what they really thought about the rich and famous. The researchers identified three different stages of celebrity worship, New Scientist magazine reported (no link available at time of blog). At the entry level, one in five people followed celebrities for "entertainment-social" reasons: these are the readers of Hello! magazine and similar publications. Above that is a "borderline pathological" condition found in around 1% of people (for example stalkers and individuals who are prepared to harm themselves or others in the name of their idols). These individuals are more likely to suffer from anxiety, depression and social dysfunction than non-worshippers. At its highest level CWS displays itself in addictive behaviour which may be both dangerous and criminal.
The IPKat says: "This news about CWS is perfect for the marketing and commercial exploitation of branded celebrities and their merchandise. How many fans of David Beckham have been induced to part with their hard-earned cash for objects of veneration such as t-shirts, kitbags and mouse pads on the strength of celebrity worship -- arguably a far more potent force than mere goodwill".
Wordspy word of the day is "patent troll." A patent troll is: " A company that purchases a patent, often from a bankrupt firm, and then sues another company by claiming that one of its products infringes on the purchased patent."
Trolls here, here and here Avoidance tactics if you meet a troll here
Quad International, the proprietor of the SCORE trade mark for erotic magazines, produces a magazine of that name devoted to the august subject of large-breasted women. Today Quad successfully obtained interim relief against Goldstar Publications Ltd’s proposed launch of SCORCH, a magazine containing coverage (or rather the lack thereof) of the same type of ladies.
Pumfrey J found that there was a serious triable issue on both registered trade mark infringement under s.10(2) of the Trade Marks Act 1994 and passing off. On the trade mark infringement point, it was necessary to consider whether the defendant’s mark was likely to cause confusion based on the overall impression given by the sign having regard to all the factors. Here, as a matter of first impression, SCORCH was close to SCORE and so infringement was arguable. Passing off was arguable for the same reason.
To decide where the balance of justice lay, the judge held that the court could take into account future loss to the parties that would be hard to assess, even if it wasn’t uncompensatable. As a result, the interim relief sought by Quad was granted.
The IPKat says: “This seems to be a case where the two marks were phonetically and visually quite similar but were conceptually pretty different, yet the marks were found to be close so on a global appreciation the marks were found to be similar.”
How to prepare chicken breasts here Ladies from a more innocent age here and here
Just hours after Schick-Wilkinson Sword unveiled the first four-blade razor, Gillette filed a rapid-response patent infringement claim, claiming that the new Schick Quattro has infringed the Gillette Mach3’s technology.
The issue a Boston federal court will be asked to consider is whether Schick's synchronised four-blade configuration, which retails at $8.99, infringes the patents that allow the three Mach3 blades to extend progressively closer to the beard. Gillette, which dominates the worldwide razor market, seeks preliminary and permanent injunctions, triple damages and other relief. But its response is not confined to legal action: the main battle will take place in the open market: Gillette has announced three new shaving products of its own, including an update of its Venus system for women.
Find out here why you shouldn’t steal Mach3 razors from Tesco Stores
To bake Berkeley sourdough with the aid of a razor click here Test-drive a different sort of Quattro here Review of Razor Blade Smile here For misheard lyrics of Shocking Blue’s “I’m Your Venus” (used in Gillette’s Venus ads) click here Read some of Gillette’s patents here, here and here
Commission Regulation 1428/2003 adds a new product to the growing list of goods whose designations of origin are protected in the European Union: giant white beans (also known as elephant beans). Known to their followers as Fasolia Gigantes - Elefantes Kastorias, these beans are cultivated on the banks of the river Aliakmonas and lake Kastoria in Greece, over some 900 hectares of slightly acidic, well-drained alluvial soil. These beans are not in fact native to Greece, having been first domesticated in Mexico and then imported into Greece at the end of the sixteenth century.
Recipes for giant white beans here, here and here For a different sort of elephant bean click here Jumping beans available here for kids and here for software applications developers
Genetic carpetbaggers accuse Mexico of bean piracy here
Adbusters Magazine reports that in the wake of Naomi Klein’s No Logo and the overexploitation of hip-hop culture by companies such as Nike, companies are turning to “un-cool” for branding inspiration. Part of the attraction is that “Getting it wrong may now be the safest way of getting it right”, but it also responds to the contemporary rejection of stereotypical conceptions of perfection. However, Adbusters attributes the trend on a desire for a more innocent less branded age, saying: “The growing universality of un-cool/nu-cool is more than a new twist on irony. It’s also a nostalgia for the carefree days before teens fell victim to their own hyper self-consciousness.” The bad news for trade mark lawyers is this manifests itself as “a backlash against the brand”. However, a side-effect has been the resurgence of less up-to-the-minute brands such as Babycham and Pringle.
For those of you unfortunate enough to be infected by the MSBlast worm, ZDNet offers easy to follow advice on how to disable and delete it. The worm can manifest itself by causing the infected computer to crash repeatedly, accompanied by an NT\AUTHORITY SYSTEM error message stating "Windows must now restart because the Remote Procedure Call (RPC) Service terminated unexpectedly." Once in place, MSBlast scans for other systems to infect and is due to launch an attack on Microsoft on 16 August.
A Chicago jury has finedMicrosoft $521m for infringing Eolas Technologies’ patents in the plug-in components of Microsoft’s Explorer webbrowser. Microsoft has announced that it intends to appeal the decision to the US Court of Appeals
Learn about famous explorers here Your chance to become an explorer here Click here to see a Chicago Jury
The July 2003 issue of Sweet & Maxwell's European National Patent Reports has just emerged. Of the three cases it features, one is of particular legal significance: Gen-Probe Inc v Hoffmann-La Roche AG. HLR held a European patent for the amplification of nucleic acids. Seeking to tie the Swiss pharma company's patent in knots, Gen-Probe launched proceedings in Italy against the HLR group of companies for a declaration that its own system for TMA blood tests for chlamydia did not infringe HLR's patent; Gen-Probe also sought the patent's revocation. The big issue was whether a court in Milan, Italy, had jurisdiction to make any ruling of revocation or non-infringement of the bits of the European patent that spilled beyond Italy into Austria, Belgium, Germany, Switzerland, France, Luxembourg, Sweden and The Netherlands.
The Court of Milan, citing the relevant provisions of the European Patent Convention, ruled that since a European patent, once granted, becomes a bundle of national rights, it didn't have jurisdiction to rule in respect of either revocation or non-infringement outside Italy. The court added that there had to be at least the risk of some harm occurring in Italy before a foreign defendant who was not domiciled in Italy and did not trade there could be sued in an Italian court.
The IPKat spotted a couple of stories today about the importance of names to the entities they represent. First an interview in The Daily Telegraph with Henry Stewart, the founder of Happy Computers who has managed to build up a company with a £1.8m turnover from £5,000 start-up funds. Happy Computers, a computer training company, prides itself on “making people feel good about themselves”, be they customers, employees or the members of the wider community. Despite the fact that he was advised not choose such a “silly” name, Steward feels that he has benefited from it, saying: “It has great marketing value and is vital for company culture. You can’t answer the phone in a miserable voice”.
On a similar note, in an op-ed piece in the New York Times the self-named Sparrow (previously known as Michael Gorelick) recounts his experiences of trying to find a name to match his inner self, resulting in ultimate failure because: “This is the problem with names. They can never liberate us, because they take on our personality. It would be best if we could have a new name every day, based on our mood and disposition. Thanks to spam, this is now possible". He welcomes the ability of spammers, who address their offerings to a series of distortions of his name to grant him a new identity every day, matching the way he is feeling.
The IPKat says: “This goes to show the profound effect a name can have corporate and individual culture and wellbeing so careful how you choose yours".
Find out what your name means here Change your name here Famous name changes here
Or at least his trade mark office does. The USPTO, conscious of the fact that it may not always be able to keep up with the development of new goods and services, is appealing to the public for suggestions of goods and services to include in its Acceptable Identification of Goods and Services Manual. The bad news is that applicants who've had their goods or services category rejected by a trademark examining attorney cannot apply to have it included in this way.
It really is a good time to apply for non-distinctive or descriptive marks in the UK. At present we all enjoy the benefit of the ECJ's BABY-DRY ruling, which enables us to register many trade marks of breathtaking descriptiveness that we never thought we see registered a couple of years ago. And now, for those who don't like having to wait around, the UK Registry is accelerating the procedure for rejecting applications for those marks which don't even reach the minimal level of distinctiveness to qualify under BABY-DRY. The Registry is doing this by cutting from six months to three months the time for applicants to respond to official objections based on absolute grounds of invalidity. Says the Registry: "Such applications have the greatest capacity to create uncertainty in the market place about whether (and how) descriptive and non-distinctive signs may freely be used in trade. The changes therefore pursue an aim which is in the public interest".
The IPKat says: "The time given by OHIM for applicants to respond to objections based on absolute grounds is only two months. It seems strange that a national granting authority should be so much more generous with its applicants".
Time given by OHIM for applicants to respond to "absolute grounds" objections: two months.
Click here, here or here to see how you can pass three months if you're not busily responding to official objections.
Proprietary pharmaceutical giant Glaxo SmithKline has hit upon a novel way to promote its anti-allergy medicines, commissioning the writing of a new Mr Men book, Mr Sneeze and His Allergies. The Mr Men, penned by the late Roger Hargreaves, were phenomenally popular among small children in the 1970s and 1980s and spawned a plethora of merchandise spin-offs. Now, according to today’s Media Guardian, GSK is hiring Roger’s son Adam to produce the new tome which it the company will give away as part of the roadshow publicity for its allergy medications. The books, which conclude with a guide to allergies and medications, are being used as prizes for competitions in the local press.
The storyline is as follows: Mr Sneeze suffers from a summer ailment he believes is a cold. His companion Little Miss Sunshine suggests he might have hay fever but his sneezing doesn't stop after he ploughs up all his grass. Said a GSK spokesman: "It's a story about misunderstanding allergy. The book's aim is to raise awareness of allergies in general, especially indoor allergies”.
Mr Sneeze was not available for comment. The IPKat however cautions: “This news item is loaded with issues. First, on a technical legal note, commissioned works can cause copyright problems, particularly if they have illustrations. The time to sort these issues out is before the event, so as not to run the risk of new Mr Sneeze spin-offs providing a battleground between competing commercial expectations. Secondly, on a strategic note, we’d like to know about issues of exclusivity: there are loads of Mr Men characters, others of whom may be quite useful for other pharma companies. Have GSK guarded against this? Thirdly ― and this is a big ethical issue ― many people are uncomfortable with the idea of targeting drugs at children through a series of books that ordinarily have no hidden commercial agenda. On the other hand the IPKat welcomes anything that would lead to a higher rate of correct diagnoses of potentially debilitating illnesses. It’s a question of striking the right balance”.
Annanova reports that Raymond Collier, a farmer in Locks Heath, Hampshire has been reported to Fareham Borough Council for playing music to his pigs too loudly. The farmer has said claimed that the tunes calmed the pigs and may have made them grow bigger. Environmental health officers found that the music was not loud enough to constitute a nuisance, although an abatement order was issued to prevent unpleasant odours caused by the build-up of manure and slurry.
The IPKat wonders whether playing music to your pigs counts as performance in public for the purposes of ss.16 and 19 of the Copyright, Designs and Patents Act 1988. The legal feline notes that there’s no definition of what constitutes “the public” in the CDPA so there’s nothing to say that his porcine pals don’t count. Also, is playing music so loudly that your neighbours can hear it (whether they want to or not) classed as public performance?
MTV reports that a new screen version of “Catwoman” is to be made for July 2004, with superstar Halle Berry to take the lead role. Says Ms Berry: “now my next job is to sort of dive into it and figure out who I will be as Catwoman. And what can I bring to it that all of the other great ladies of the past maybe forgot to bring? And I hope I'll find something".
Catwoman, who first appeared in the Batman comics back in 1940, has since appeared in her own comic titles, as well as various Batman-related cartoons, TV shows and movies. A costumed jewel thief with the alter-ego of Selina Kyle, Catwoman has been both a nemesis and love interest for the Batcave-dwelling superhero. The current script reportedly involves a new Catwoman named Patience Price who is granted cat-like powers. Batman is not expected to appear.
The IPKat comments: “the fate of Catwoman is that, while the outward trappings of her intellectual property - the trade mark registrations and the copyright - may stay constant, her personality and even her history are made to change. This may be an inevitable consequence of shifts in fashions, consumer demands and social attitudes, but it can also damage goodwill if the new Catwoman fails to meet the expectations of her previous fans and admirers”.
It’s not just Catwoman who is about to be redefined. Terminator 4 is also in search of a new identity: click here to find out why
Visit Catwoman’s Cursor Cave here For a visit to the Batcave with a difference click here For pictures of Julie Newmar as Catwoman click here Find out here why Brad’s wife of 29 years was called Catwoman by the guys at the gas company
Noteworthy UK trade mark opposition brought by Geoffrey Inc., proprietors of the TOYS “Я” US trade mark, against the National Canine Defence League’s (NCDL) application to register TOYS AREN’T US together with a stylised picture of a dog’s head for goods and services associated with NCDL’s fundraising activities. The main argument centred on s.5(3) of the Trade Marks Act 1994. NCDL conceded that Geoffrey had a reputation in its mark. The 2 marks were found to be similar. NCDL’s argument that the inclusion of the word AREN’T and the dog’s head negatived any similarity between the marks was rejected by the hearing officer. TOYS “Я” US was a highly distinctive mark, even though the idea behind it was a simple one and the NCDL’S mark, which was by its own admission “inspired” by Geoffrey’s mark, unambiguously captured the distinctive character of the earlier mark. While the negative message contained in NCDL’s mark might have avoided direct confusion, confusion is not necessary under s.5(3) and so just putting NOT in front of a mark does not provide a defence. Here the marks were similar because NCDL had gone beyond inspiration and into imitation.
Since a play or parody on a mark alone is not enough for an objection under s.5(3) to succeed, Geoffrey still had to make out one of the stated adverse consequences. No unfair advantage was taken of the TOYS “Я” US mark’s distinctive character or repute because there was no specific aspect of Geoffrey’s reputation for the retail sales of toys etc that would confer a significant benefit on the NCDL in relation to the mainly charitable goods and services for which it had sought the mark’s registration. Although Geoffrey had lent its support to certain charitable schemes, there was not a substantial enough connection for the public to expect the opponent to “be involved with charitable activities such that the mark in issue would be seen as an indication that the opponents support, or associate themselves with, the applicant’s activities.” While the IPKat agrees that it might be hard to show an unfair advantage where the two parties’ goods are so far apart that no one would ever impute the reputation even subconsciously from the earlier mark to the later mark, the hearing officer’s finding seems to be coming very close to requiring sponsorship or endorsement confusion which, as he himself said, shouldn’t be relevant under s.5(3).
However, Geoffrey succeeded on detriment to repute. While their argument that they would suffer from bad publicity as a result of suing a charity did not impress the hearing officer, the argument that the TOYS “Я” US mark would become associated in the minds of the public with cruelty to animals, particularly as the NCDL campaigned on emotionally charged and politically contentious issues such as the destruction of dogs and puppy farming did. The applicant’s use would bring wholly unwanted associations to a mark that had to maintain an appeal to children and parents alike in order to remain successful, even though consumers would know the opponent had nothing to do with cruelty to animals. The fact that the NCDL had laudable objectives and campaigned against the unpleasant activities was likely to be lost on consumers.
NCDL’s argument that all charitable use is, by definition, with due cause was also rejected. Charitable use doesn’t fall within the generally accepted definition of due cause in Lucas Bols (prior right to the mark or compulsion to use the mark). Also, there’s nothing in the European Trade Mark Directive (on which the UK Trade Marks Act is based) to suggest that there was meant to be a block exemption for charities. As a rule, charities aren’t exempt from the effects of legislation and it was highly improbably that the legislation was intended to give charities a free hand to exploit or damage other organisations’ marks. This would do real damage to traders who’d spent time and resources building up their brands for no particular public policy objective. An argument that use of another’s mark by a charity for a good cause would do less damage than other uses and so would likely be de minimis (de minimis detriment and unfair advantage isn’t caught by s.5(3)) was rejected for similar reasons.
NCDL was also found to have registered its mark in bad faith because it adopted a mark that was calculated to bring the TOYS “Я” US mark to mind without considering the effect on Geoffrey’s business (even though it had no subjective intent to cause them harm). Such disregard for the consequences of its actions fell short of the standards of acceptable commercial behaviour.
Finally, Geoffrey’s argument based on passing off under s.5(4)(a) failed because the negative in NCDL’s mark and the distance between the two parties’ goods meant that consumers would not think that there was a link between the two parties so the misrepresentation element of passing off was missing.
The IPKat says: “An important issue that wasn’t considered here is whether there are certain marks that become so ingrained in everyday speech that third parties should be allowed a degree of latitude in making use of them in the interests of free and easy communication. Perhaps the correct place to consider this may be in the fairness element of ‘unfair advantage’, but the hearing officer never got this stage because there was no advantage, unfair or otherwise.”
Last week the EU’s Official Journal published the text of Council Regulation 1383/2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights. Coming into effect on 1 July 2004, the new Regulation repeals the existing provision under Regulation 3295/94. This is what the new Regulation does:
1. It sets out the conditions under which customs authorities can act when they encounter goods they suspect of infringing IP rights whether they are entering or leaving EU territory or being released for free circulation there.
2. It provides definitions of “counterfeit” and “pirated” goods.
3. It enables the customs authorities to suspend the free movement of suspected infringing goods both where they have been notified of those goods by IP owners and where they need to detain the goods till they can contact the IP owners and ascertain if the goods are lawful or not.
4. It provides a procedure for the destruction of counterfeit and pirate goods without the need to institute formal legal proceedings to determine that those goods infringe an IP right under local law.
5. It exempts certain infringing goods which enter the EU as part of an individual’s duty-free allowance.
Read here what the TRIPs Agreement has to say about border controls against infringing IP imports
Find out here why importing fakes is a mug’s game
Are your Beatles memorabilia fake? Check here Tell real shrunken heads from the fake variety here
This month’s IPKat choice is Valuation and Exploitation of Intellectual Property and Intangible Assets by John Sykes and Kelvin King (emis professional publishing, Welwyn Garden City 2003), 482pp, £95. The authors of this attractive, accessible work are well equipped to assist the reader in comprehending the many issues which arise from IP exploitation and valuation. John Sykes, an experienced solicitor and a partner with Lupton Fawcett, has advised both IP owners and those who invest in them while Kelvin King, a partner in Valuation Consulting, is an enthusiastic and knowledgeable asset valuer. Between them they have made IP valuation a far more accessible subject than it is usually found to be. They have also provided a good introduction to IP exploitation, a subject which has always been accessible in the past but where it is not the legal and technical bits that confound readers so much as the common sense bits.
The book is divided into two segments: two chapters address intellectual property rights management and the understanding of intellectual property rights in general. These chapters are not intended to describe the law so much as to explain how the law affects intellectual property management. For this reason the text mentions the laws which govern not merely the UK but also Germany, the EU, the US, Australia and TRIPs as well as regional and international filing systems. The second segment consists of three far more substantial chapters which deal respectively with intellectual property valuation, due diligence and securitisation.
What was the most valuable patent ever issued? Click here for one contender
World’s most valuable brands are listed here Candidates for most valuable copyright work here, here and here
The Trademark Blog is unhappy with the IPKat’s coverage of Absolut vodka’s involvement with Sex in the City by way of the fictional ABSOLUT HUNK campaign (see the IPKat’s 6 August ABSOLUT CHEEK post). Marty suspects that the IPKat was being ironic but that’s not the case. Certainly there’s a degree of light-heartedness there and this wasn’t one of our most substantively legal blogs. However, there was a serious point behind it – if a trade mark owner indulges in advertising of a salacious nature, can he complain when third parties use his mark in a similar context?
Marty says “The Absolut Hunk campaign is fictional, and thus the use is tarnishing only if you miss the joke”. Not so. While Sex in the City is obviously fictional and the actual posters did not appear widely (although one did appear at a New York bus stop, presumably for filming purposes), the use took place with Absolut’s full cooperation and the image used was shot by the photographer used in the “real” Absolut campaigns. Furthermore, Absolut later capitalised on the success of the image by distributing cards containing the recipe for the “Absolut Hunk” cocktail featured in the show. The whole episode allowed Absolut to get the best of both worlds and to reap the marketing advantage of a campaign that was by the admission of its vice-president of marketing “a bit salacious” and thus inconsistent with the campaign that Absolut runs in the “real world”.
Marty goes on to say that being featured in Sex in the City can’t be tarnishing because Sex in the City is mainstream and can’t be considered to be hardcore pornography. This misses the point though. The argument was never that being featured in Sex in the City was (self-)tarnishing. Instead, it was that being associated with a publicity campaign featuring an obviously naked man could be, regardless of where that campaign appears. A rule of thumb for when the trade mark owner has used his mark in a way that prevents him from bringing at least some tarnishment claims against others ought to be, would the trade mark owner cry tarnishment if a third party used its trade mark in the way that it has? Here I think there’d be a good chance that Absolut would. From a European perspective, under Article 5(2) of the Trade Mark Directive, the closest we get to tarnishment is the idea of detriment to repute of the trade mark. How can a trade mark owner claim that a defendant has damaged his reputation if the trade mark owner has already associated the reputation of his mark with overt sexual imagery? Here, certainly the positioning of the vodka bottle leaves a little to the imagination but the direction that the mind is meant to go in is quite clear from the rest of the image.
Ananova reports that 74 year old Norma "Duffy" Lyon from Des Moines, Iowa, is making a model of a Harley-Davidson motorbike out of butter. This full-scale butter V-Rod will commemorate Harley-Davidson's 100th anniversary. The butter she is using is five years old, which is about the maximum age she likes to work with because the consistency changes.
Ms Lyon began the Harley sculpture last week after finishing a life-sized butter model of a dairy cow (she has carved life-sized dairy cow out of butter for the Iowa state fair for more than 40 years. She had to get permission from the company to create the sculpture and she works from several pictures of a V-Rod taken from different angles.
The motorcycle is built on a frame which is covered in butter. Ms Lyon plans to use about 300lbs of unsalted butter in completing the sculpture.
The IPKat asks: “While getting permission to use a design- or copyright-protected object is a safe course of action, is the making of a butter sculpture out of an industrially manufactured object necessarily an infringing act? And does anyone out there know whether Andy Warhol got permission to copy the Campbell soup cans?”.
The BBC reports on a Linux copyright battle that is brewing. SCO claims that code that it bought from Novell has been reused by programmers working in Linux and infringes the copyright that SCO now owns. As a result, SCO has been threatening to sue Linux users from IBM down. In response, Red Hat, the biggest distributor of Linux computer systems has started up a fund to pay for court action against SCO on grounds of "unfair and deceptive actions".
Word Spy!, which the IPKat has just discovered via the Trademark Blog, is a website devoted to recently coined words and phrases, old words used in new ways and existing words that have enjoyed a recent renaissance. Word Spy! doesn’t make up its own words and phrases but lists those that appear in newspapers, magazines, books, press releases and websites.
Trade mark owners should check out Word Spy!’s Top Words list and see how their brands are being used. There are currently three trade mark-related phrases in the Top 100: GOOGLE (as in “google bombing”, KOOL-AID (“drink the Kool-Aid”) and CNN (“CNN effect”). Of these three marks, only one -- Google -- is mentioned as a trade mark by Word Spy! itself. Kool-Aid should be particularly concerned, given the negative connotation of "drink the Kool-Aid".
Dying with Kool-Aid? Click here . Dyeing with Kool-Aid? Click here
The July 2003 issue of the European Copyright and Design Reports has belatedly emerged from Sweet & Maxwell. It contains, among other things, English translations of two good cases. The first is Koubareli v Volotas and Forthnet, an Athens Court of First Instance decision on the cyber-harassment of a young Greek authoress by an admirer whose activities were held to infringe not only her economic and her moral copyright but also her right of personality. The second, from the Cour d’appel de Paris, is Société Reed Expositions France v Société Tigest, in which the court ruled that contractual restrictions on what the purchaser of commercial data ― in this case a database of contact and other details of exhibitors at the claimant’s exhibitions ― could do with the data did not constitute a violation of the defendant’s freedom of speech.
AdAge reports that the makers of ABSOLUT vodka have been indulging in a bit of product placement. A poster depicting a seemingly naked man with only a strategically placed vodka bottle to protect his modesty and with the slogan “Absolut Hunk” has appeared in Sex and the City, a popular television programme, with Absolut’s cooperation as part of a plot line in which one of the main characters secures a modelling commission for her boyfriend. The ad was actually posted at a New York bus stop, although in the programme it was digitally “moved” to Times Square. Though the ad was shot by the photographer responsible for the real ABSOLUT campaign, Absolut has said that they will not be running the ad. According to their vice-president of marketing: "It is not exactly consistent with the campaign, not to mention a bit salacious." Nevertheless, it is producing recipe cards for the Absolut Hunk cocktail.
Aside from the niceties of whether trade mark use has taken place, the IPKat is concerned. By associating its ABSOLUT mark and campaign with overt sexual imagery, Absolut has arguably tarnished its own mark, in which case its taking moral high ground in opposing third parties from registering such domain names as absolutbabes.com, absolute-erotik.com, absolutporn.com and absolutpussy.com seems just a tad two-faced.
Recipe for Absolut Hunk (the cocktail that is) here ABSOLUT parodies here and here Real ABSOLUT ads here
Back in 1993 London patent agents Forrester Ketley sued inventor David Brent for unpaid fees arising from the preparation of his Indestep injection moulding machine. Ten years later, the proceedings still in their relative infancy, the patent agents sought further and better particulars of Brent’s defence and counterclaim while Brent made a host of demands which included a request for full reasons for all earlier court orders relating to the dispute and a ruling on the fairness of the proceedings under the Human Rights Act 1998.
Mr Justice Jacob told Brent his defence and counterclaims would be struck out unless he provided particulars of them within a reasonable time. He also dismissed all Brent’s counterclaims as being without substance or misconceived. Said the judge: “Although Mr Brent is a litigant in person and I make full allowance for that, I have to say that I cannot find all his submissions to be entirely rational. His submissions are diffuse, confused and overlaid with an enormous sense of injustice which extends to anybody connected with this case including almost every previous Judge or Master and everyone connected with the opposite side”.
The full transcript of this decision can be found on the subscription-only Lawtel service.
Guidance here where a litigant appears in person in the UK.
Intellectual Property Creators’ suggestions for the Inventors’ Bill of Rights here Visit the Institute of Patentees and Inventors here For information concerning a rather different David Brent look here and here
One way of gaining publicity for your brand is to pay for a motor racing team to splash it over their cars and kit. Another way is to get sued for non-payment of sponsorship fees and get your brand featured in the business press. Formula One entrepreneur Eddie Jordan sued telecoms giant Vodaphone for not paying $100m sponsorship cash to his Jordan F1 team. Sadly for him the claim failed, leaving him with £5m in legal costs.
The IPKat says: "if you want to prove the existence of a £100m sponsorship deal, try putting the contract in writing. One man's disputed account of a telephone conversation with another is not the strongest evidence".
Full text of the decision here If you enjoy Formula One racing, click here If you prefer something a little slower, click here or here
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Interesting article from the BBC examining the less obvious causes of the decline in CD sales. According to the article, it’s not just the fault of file-sharing as RIAA would have us believe. Piracy is also a major factor, so much so that it is claimed that 90% of CDs in China are pirate copies. However, more innocuously, part of the downturn in CD sales is due to the fact that people who in the 1980s and 90s were seeking to buy CDs to replace their vinyl collections have completed the process. Many of the people who do file-share do so because they just can’t get the heavily-plugged singles that they want alone without paying for a complete album which they don’t necessarily want. Finally, music isn’t as important to young people as it used to be with the rise of other distractions such as brands, clothing and of course, mobile phones. However, the article isn’t really clear whether this means that young people listen to less music or that that aren’t willing to pay for music because of the other demands on their finances and so are more likely to resort to file sharing.
Mark Mulligan, a consultant from Jupiter Research, whose site is a treasure trove of this type of thing, is heavily quoted. Read his blog here .
In a couple of recent Trade Mark Registry decisions (here and here) the examiner has refused to register the word JESUS as a trade mark for various classes of goods (none of which were inherently controversial) because he considered its use as a trade mark to be contrary to public policy or the accepted principles of morality under s.3(3)(a) of the Trade Marks Act. Although there were a few people in the UK whose surname was JESUS and in some other countries it is a popular forename, in the UK only a small minority would view it as an ordinary surname or forename. Instead, its primary significance in the UK, where a substantial number of people believe in the Christian faith, are taught the subject in schools and worship in Church, was as the name of the religious figure and as such its use as a trade mark would cause offence that went beyond mere distaste. That offence was caused by the resultant undermining of “an accepted social and religious value” to a significant extent because many believe that JESUS is the name of JESUS CHRIST who is believed by Christians to be the Son of God and as such, whose name should not be debased by use as a trade mark for the applied for goods.
Little-known fact: there are 27 people with the surname JESUS in the London Telephone Directory
Back in 1996 Bargain Pages (BP) sued Midland Independent Newspapers (MIN) for passing off. The case was settled on terms which included a court order restricting the names and get-ups under which MIN could publish its own papers and ordering MIN to impose that order on its parent and subsidiary companies. Six years later, following intense corporate reorganisation on each side, BP had become a subsidiary of Bargain Pages Media (BPM) and MIN had become part of Trinity Mirror, Britain’s largest newspaper group.
In January 2003 BP launched a new paper, The Bargain Pages, whereupon one of MIN’s former subsidiaries MNL, itself part of the Trinity Mirror group, brought out a rival publication, Bargain Hunter. BP had already commenced passing off proceedings before BP’s lawyers found the papers relating to the 1996 trial and order. Among the questions before the court was whether, in a claim relating to breach of the 1996 order, BP could amend its claim by joining BPM as a second claimant and Trinity Mirror and MNL as further defendants. The Vice Chancellor Sir Andrew Morritt ruled that BP could join BPM as a claimant but that Trinity Mirror and MNL could not be joined as defendants since, to put it simply, they were not around at the time of the 1996 litigation. But he confirmed that BP could sue MIN for failing to procure the adherence of Trinity Mirror and MNL to the 1996 order.
As you may have gathered, the IPKat runs on Blogger software. Blogger also goes under the name of Blog*spot and if you sign up for a Blogger blog the address that you get takes the form www.X.blogspot.com. Imagine the IPKat's surprise then when he paid a visit to www.blogspot.co.uk. The IPKat thinks that perhaps Google, who now own Blogger, are in need of a little trade mark/domain name advice.
Glaxo discovered that retroviral drugs sold under the trade marks EPIVIR, COMBIVIR and TRIZIVIR and intended for French West Africa under a not-for-profit scheme were reaching the UK via Dowelhurst, a parallel trader. Glaxo pressed for summary judgment for trade mark infringement, seeking injunctive relief. Dowelhurst expressed anxieties concerning the form of the injunction since it could still source those drugs from elsewhere in the European Union and lawfully import them into the UK. Peter Prescott QC, sitting as an additional judge of the Chancery Division, granted full injunctive relief so far as the drugs destined for Africa were concerned, but agreed that the form of injunction should not be such as to prevent Dowelhurst importing and selling drugs lawfully.
Golf giant Tiger Woods is reported to have ditched his Nike titanium driver. He is rumoured to be reaching for the trusty old Titleist 975D which swept him to the pinnacle of the golfing world back in 1999. Although Woods has signed lucrative endorsement contracts with Nike, who kit him out from head to foot (his five year clothing deal is reputed to have netted him $150m), his inability to maintain consistency with the Nike club, which was designed specially for him, has forced the switch.
The IPKat says: “When playing golf at the highest level, emulate Tiger Woods -- make sure there’s an opt-out clause in your endorsement contracts in case the product you’ve endorsed doesn’t deliver the goods”.
Compare Nike and Titleist products for yourself.
Sip a refreshing Tiger Woods here Who wins when Tiger Woods plays golf with Stevie Wonder? Find out here
Today’s Sunday Telegraph reports that a hundred popular recipes by the Naked Chef Jamie Oliver have been compiled into a fake book which has been emailed to millions of people worldwide, to the consternation of Oliver’s publishers Penguin. Oliver’s first four books have sold more than six million copies, earning him more than £6m, but his 30,000 books sales a week may be dented by the fake, The Naked Chef 2, which is a painstaking compilation of his previously published recipes. Penguin suspects the lavishly illustrated email fake has been cobbled together by someone with a grudge against either Oliver or Penguin itself. Says Robert Lands, a media law specialist at Finers Stephens Innocent: “In theory the publishers could sue for damages … The minimum they could ask for is the value of the book multiplied by how many people it was sent to”. But first the villain must be found and that is not so easy, where “spoofing” techniques can be used to camouflage the identity of an email’s sender.
Read about the Polynesian Tropical Penguin Steak here
Carly Simon is to reveal who she was singing about in You're So Vain, her 1973 hit song. She is auctioning this piece of information in order to raise money for Martha’s Vineyard. However, the eventual buyer will have to sign an agreement consenting to keep the song’s subject confidential.
Background to the mystery subject of the song here Find out if that song is about you here Criticism of the song lyrics here Click here or here if you find clouds in your coffee
Last Wednesday the Court of Appeal affirmed December 2002 decision of Neuberger J in Peer International v Termidor[2003] ECDR 221. In that decision the judge refused to give legal effect in the United Kingdom to a Cuban law which purported to invalidate an earlier copyright assignment made by two Cuban composers, Ignacio Pineiro and Antonio Fernandez (a.k.a Nico Saquito), to Peer International, a Los Angeles-based publishing house. After that law was passed in Cuba, the copyright was vested in a state entity which purported to grant an exclusive licence to the defendants, a German company.
The Court could see no public policy grounds for allowing the application of a law which was in effect confiscatory, retrospectively depriving assignors of their intellectual property rights without compensation. This was one decision that was never going to go the other way, either at first instance or on appeal.
Ananova reports that two dozen people who have been wrongly declared dead have held a Hindu last rites ceremony outside the Uttar Pradesh State Assembly in India in protest at the State’s refusal to recognize that they are still very much in the land of the living. However, this is only the tip of the iceberg and it is claimed the 35,000 people in that province alone are affected. Many of the mix-ups occurred when the victims’ families have declared them dead in order to claim the supposedly deceased’s land or property. One unfortunate gentleman even managed to run for prime-ministerial office twice but could not persuade the authorities to recognise that he was alive. The IPKat wonders what the implications would be if any of the “undead” happened to be copyright holders. Under the 1957 Act, copyright lasts for 60 years from the death of the author so if the author is wrongly declared dead, will the clock start running from the date of the wrongful declaration? If so, while the crafty family members may get the “deceased’s” tangible property earlier, they will be shortening the duration of any copyright that they inherit.
If you’re not dead and you’re having problems click here Learn about zombies here Zombie accoutrements obtainable here
IPKat’s patent of the month (found on Patently Absurd) is a must for the dog that has everything. Tired of your dog carelessly dipping his ears in his dinner? Are your fido’s follicles filled with food? Then invest in a pair of these rather lovely ear protectors.
According to the specification:
“This invention provides a device for protecting the ears of animals, especially long-haired dogs, from becoming soiled by the animal's food while the animal is eating. The device provides a generally tubular shaped member for containing and protecting each ear of the animal, and a member to position the tubular member and animal ears away from the mouth and food of the animal while it is eating.”
Learn about the dog genome project here Meet today’s dog of the day here Canine comedy here Fido philosophy here and here
Dog blog here
Another of the tranche of cases decided by the Court of Appeal on Wednesday (30 July), this time of a more procedural nature. Smithkline Beecham v Generics and BASF v Smithkline Beecham arose out of three separate attempts to have Smithkline’s patent for paroxetine hydrochloride anhydrate revoked. The first set of proceedings against Generics was settled. However, there were certain documents disclosed by Generics that Smithkline wished to use in the second and third sets of proceedings involving BASF and Apotex respectively. Generics did not want Smithkline to make use of those documents and applied for an order under Civil Procedure Rule 31.22 prohibiting their disclosure which the first instance judge granted and which was effective for both the second and the third sets of proceedings (CPR 31.22 states that a party to whom a document has been disclosed may only use it for the set of proceedings in which it has been disclosed except where the document has been read to or by the court at a hearing that has been held in public and even then the court may order that it should not be used, the court gives permission or where the parties agree).
The Court of Appeal held that while the judge was right to make the order concerning the second set of proceedings, he should have allowed the documents to be used in the third set of proceedings. With regard to the second set of proceedings the judge was right to base his decision on the interests of the public and the third parties with which the documents originated (they had been compiled by independent experts) and the requirement to do justice. Thus he was correct to come to the conclusion that it was not necessary for the documents to be disclosed. However, in the third set of proceedings there was a real argument that the documents had to be made available in order to allow the claim to be fairly disposed of. This factor would enable them to be discoverable under CPR 31.17 and made disclosure necessary in the interests of justice, albeit with a relevant order to protect the interests of the owners of the documents. A further quirk was that the judge who was hearing the third set of proceedings had already been exposed to the documents in one of the earlier sets of proceedings and so could well have been influenced by them, unconsciously at least.
The Court of Appeal yesterday ruled on the status of confidential conversations tape-recorded by one person without the knowledge or consent of another. In L v D (the parties’ names were concealed for the sake of privacy) the claimant recorded conversations with the defendant, a musician/songwriter she used to live with, for the purpose of her protection in relation to domestic violence proceedings. In a subsequent legal action the claimant sued the defendant for a share in his home. Giving evidence, the defendant mentioned his sexual proclivities, including an “additional aspect” which he sought to keep private. Subsequently the defendant applied for an interim injunction to stop any use of the claimant’s recordings. The trial judge refused the injunction and the Court of Appeal dismissed the defendant’s claim.
According to the Court of Appeal, where a tape recording is made by one person of a private conversation but without the consent of the other, equity imposes a duty of confidence in relation to the recording which is separate from any confidentiality in the information revealed in the recording. This is because, in similar fashion to a photograph, the recorded details of the words of a private conversation could make more impact, and cause greater embarrassment and distress, than a mere account of the conversation in question. Equity imposes on the conscience of a person who secretly takes recordings of a private conversation an obligation not to use those recordings for any other purpose. In this case, however, the claimant did not plan to use the recordings for any purpose except that for which she had obtained them. What was more, she had made no attempt to publish the recordings. This being the case, the defendant was not entitled to the relief he sought.
This blog is based on an note published on the Butterworths Lexis Nexis Direct subscription-only service, details of which are available here. The same case is also available from Thomson's Lawtel subscription service under the name D v L. The case's neutral citation number is [2003] EWCA Civ 1169.
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Looking for fun? If not, you can always try one of these ...
2010
11 January 2010: "On the Brink Of European Patent Law", Utrecht University, Netherlands. Leading patent judges, academics and practicing lawyers from Germany, England and The Netherlands and members of the Boards of Appeal of the EPO discuss issues of European patent law in honour of Prof. Jan Brinkhof on the occasion of his retirement. More details here.
11 to 15 January 2010: CEIPI Preparatory Seminars for Paper D of the EQE. Experienced tutors (working in private practice, industry or as an examiner, director, or Board of Appeal member at the EPO) cover all the essential aspects of the examination and more, interactively in small groups. Details here. Register here
12 January 2010: "Drafting and Negotiating Clinical Trials Agreements", The Rembrandt Hotel, London. Organised by Management Forum. Click here for registration or email herefor further information. 13 January 2009: The SPC Blog's Second Seminar. Full details of this lovely little event can be found here.
13 January 2010: “IPScore from the European Patent Office”, afternoon seminar presented by Johannes Schaaf (EPO). Venue: The Bishop's Finger, Smithfield (London). Organised by the IAM Education Committee of LES Britain + Ireland. To join LES Britain + Ireland click here.To register, click here.
19 January 2010: "Technology Licensing Masterclass", The Rembrandt Hotel, London. Organised by Management Forum. Click here for registration or email herefor further information.
21 January 2010: "Oppositions and Appeals -- the EPO Case Law", The Cavendish Hotel, London. Organised by Management Forum. Click here for registration or email herefor further information.
21 January 2010: "Licensing and Collaboration Agreements". This is an Intellectual Property Institute seminar, hosted by GE Healthcare, 15 John Adam Street, London WC2. The speaker is Jeremy's former colleague Susie Middlemiss (Slaughter and May). IPKat readers are entitled to register for the same fee as IPI members. Application forms here.
23 January 2010: Alumni of Nottingham Trent Postgraduate Diploma Refresher Course. One-day course for those who have previously completed the PG Diploma in Commercial IP. Venue: Chartered Institute of Arbitrators, Bloomsbury Square. General update starring Alastair Wilson QC, Guy Tritton and other Hogarthians. Contact Tracey Watson. Lady alumni with whom touch has been lost are particularly welcome ...
25 January 2010: "Using IP as a Strategic Business Asset", organised by Management Forum. Venue: Rembrandt Hotel, London. Click hereto register or email here for further information.
26 and 27 January 2010: Advanced In-house counsel forum on China IP Law. Organised by the American Conference Institute in partnership with Asia IP at the JW Marriott Hotel, Shanghai, China. Full programe details and registration here.
26 to 30 January 2010: CEIPI Preparatory Seminars for Paper D of the EQE. Experienced tutors (working in private practice, industry or as an examiner, director, or Board of Appeal member at the EPO) cover all the essential aspects of the examination and more, interactively in small groups. Details here. Register here
IPKat Prize Event!!! 28 January 2010: Annual Intellectual Property Round-Up conference, organised by CLT and chaired by IPKat team blogger Jeremy. Full details of conference available here. Details of proverb competition here. 29 January 2010: "Fundamental Principles of Patenting", organised by Management Forum. Venue: Rembrandt Hotel, London. Click here to register or email here for further information.
31 March 2010: "Selection Patents: Alive or Dead?", a seminar held by IPSoc and hosted by Lovells. Speakers: Simon Thorley QC and Andrew Waugh QC, both of whom are thankfully very much alive. Places are limited, so not even being young, affluent and charming will guarantee admission. Registration via IPSoc here, so don't be late!
4 to 5 February 2010: CEIPI "Cramming Course" for Paper C of the EQE. A morning course which will let you put the last-minute polish on your knowledge of Paper C with a mock examination (C 2009) and a review and discussion with an experienced tutor (working in private practice, industry or as an examiner, director, or Board of Appeal member at the EPO). Details here. Register here
9 February 2010: "Funding and the Fortunes of Intellectual Property Litigation". Organised and hosted by Hardwicke in Lincoln's Inn, London. Very reasonably priced, with 3 CPD points. IPKat team member Jeremy is in the chair. For full details and registration click here.
4 to 5 March 2010: "Fundamentals of European Claim Drafting", organised by Management Forum. Venue: Rembrandt Hotel, London. Click here to register or email here for further information.
22 to 26 March: 15 Day Integrated D & C training for EQE 2011: Week 1. Organised by DeltaPatents; venue, Eindhoven, NL. Click here for further details.
11 to 14 April 2010: LES International Conference, Sandton, South Africa. It's still early days, but details will be posted here as they arrive.
10 May 2010: "Ownership and Control of Intellectual Property", organised by CLT; venue: Central London. Further details awaited.
22 to 26 May 2010: INTA 132nd Annual Meeting, Boston, Mass. Further details will be available from the INTA website.
26 to 28 June 2010: LES Fundamentals of Intellectual Asset Management Course, venue: Cranfield University, Cranfield UK. You can download the registration form here. If you want further information, please email the LES administrative office here
28 June to 2 July: 15 Day Integrated D & C training for EQE 2011: Week 2. Organised by DeltaPatents; venue, Eindhoven, NL. Click here for further details.
21 September 2010: Handbags at Dawn, the annual IP and Fashion conference, venue: Central London. Organised by CLT. Sponsored by Fashionista-at-Law. Further details not yet available.
27 September to 1 October: 15 Day Integrated D & C training for EQE 2011: Week 3. Organised by DeltaPatents; venue, Eindhoven, NL. Click here for further details. 3 to 6 October 2010: AIPPI World Intellectual Property Congress, Palais des Congres, Paris. Details, as available, will be posted on the conference website here.
