ALL YOU NEED IS LOVE

The Trademark Blog reports on the advertising agency Saatchi & Saatchi’s site devoted to lovemarks. According to the agency, brands are old hat. People automatically assume that they will get goods and services that perform to their expectations. Instead, the future belongs to lovemarks, entities that not only earn the respect of consumers, but also create “an intimate, emotional connection that you just can’t live without. Ever” and are “a relationship, not a mere transaction”. Such loyalty is earned through a mixture of love and respect (unlike brands which command respect only and fads, where only love is a factor). The respect arises from a combination of mystery (not knowing about something makes you want to find out more about it), sensuality (the design, flavour and other sensual elements of the product) and intimacy with the brand (so that it touches on the consumer’s personal aspirations and inspirations). The site offers you a chance to test if your favourite products are in fact lovemarks, asking questions such as “Have [product] been inspirational in your life?” and “Does [product] fit in perfectly to the way you dream about yourself?” Also available is a list of lovemarks that other people have nominated, from Absolut Vodka to Yorkshire Pudding via Marmite and McDonald’s.

The IPKat is not impressed by lovemarks. At present we live in a commercial environment in which the public is increasingly suspicious of superbrands and increasingly tired of their advertising. To reverse this, Saatchis are obviously trying to persuade their customers to get consumers to become more sentimental and soft-headed again, in the hope that this will start a new advertising trend, with Saatchis as the trendsetters. The idea of cultivating mystery in the face of consumer demands for more information about outsourcing and cheap labour seems particularly cynical. The IPKat’s conclusion is that Saatchis wouldn’t have come up with lovemarks if there wasn’t a smell of hatemarks in the air.

How to get rid of lovemarks here and here
More lovemarks here

BLACKBERRY BLIGHT HITS RIM

The Register reports that, faced with an ongoing patent battle in the US that threatens to place injunctions on its products, RIM is focusing heavily on Europe and has launched a tri-band full colour BlackBerry PDA (personal digital assistant) this week -- only to find itself attacked by another intellectual property lawsuit, this time from a Luxembourg-based company. RIM and T-Mobile USA have been sued in Delaware by InPro II Licensing, a Luxembourg-based licensing company, which claims that the companies are infringing its patents. Inpro is seeking damages which are "in no event less than a reasonable royalty". RIM, which is appealing against an injunction granted to US intellectual property company NTP that could potentially ban it from selling its products, has filed a suit in federal court in Dallas asking for a ruling that the InPro patents are invalid. RIM said in a statement this week that InPro had shown "threatening and grasping behaviour". All the legal uncertainties surrounding RIM add to the problems facing all PDA makers in a declining market. One of the company's weaknesses has always been its lack of success in Europe, which it is aiming to reverse next year.

The IPKat has observed over the years that IP litigation in general, and patent litigation in particular, becomes more intensive in weakening markets. That's because, when a market is expanding rather than contracting, money that might be spent in litigation frequently attracts a better return when spent on marketing or new product development. But when the market diminishes, enforcing IP rights may be the only way to save a business from losing profitability or indeed going under.

How PDAs work
Other PDAs here, here and here
More on blackberries here, here and here

LATEST EUROPEAN COPYRIGHT CASES

The November 2003 issue of Sweet & Maxwell's European Copyright and Design Reports is now out. Foreign judgments available for the first time in English include the following:

* Noir d'Ivoire v Home Boutiques (Court of Appeal, Brussels, Belgium): is a collection of colours in a painter's palette protectable as a database?

* Maria Isabel R v Vipriga SA (Court of Appeal, La Coruna, Spain): does post-employment exploitation of an employee author's work constitute an infringement of copyright?

*Pop Group A and EROC II (Bundesgerichtshof, Germany): does a licence of the right to record performances in 1970s permit the making of subsequent recordings in CD format?

*SABAM v SA Schleiper (Brussels Civil Court, Belgium): does a further reproduction of licensed reproductions of art works in miniaturised form for advertising purposes infringe the copyright?

JOIN THE IPKAT IN GENEVA

The IPKat is packing his bags to fly off to Switzerland for next week's INTA Worldwide Forum on Trademark Protection (1 and 2 December, Noga Hilton Hotel, Geneva). The forum is devoting an entire day to "Madrid System for the International Registration of Marks". If you'd like to meet the IPKat in Geneva and say hello, just send him an email.

WHEN PORK GOES "MOU"

In Oriental Kitchen Sarl v Office for Harmonisation in the Internal Market, Case T-286/02, the Court of First Instance of the European Communities reaffirmed the principle established in Matratzen v OHIM [2003] ETMR 392, that descriptive terms were registrable as trade marks if the description was in a language not known in the jurisdiction in question. Oriental Kitchen (OK) applied to OHIM to register the word mark KIAP MOU for goods in Classes 29 and 30 (including meat and prepared dishes). An opposition was filed by Mou Dybfros, owners of the MOU registered trade mark in the UK for goods in Classes 29 and 30. The Opposition Division rejected the application, there being a risk of confusion since the marks and the goods were similar. OK appealed unsuccessfully to Board of Appeal and then appealed further to the Court of First Instance (CFI). OK argued that OHIM had misapplied Art.8(1)(b) Council Regulation 40/94, that it only intended its products to appeal to expatriate Chinese and Indonesians living in Western Europe and that "mou", being the Thai word for pork, was merely descriptive and could not therefore be protected.

The CFI rejected OK's application. The Court did not have to take into account the fact that Oriental kitchen had intended its products to appeal exclusively to a Chinese or Indonesian clientele living in western Europe. There was nothing in the trade mark application to suggest that Oriental Kitchen had intended this to be the case. Further, the products went through the same sales channels and outlets as those sold to the average consumer. Finally, the fact that the term "mou" had a meaning in Thai did not affect the definition of the relevant public. Also, there was nothing to prevent the products at issue from being sold under the mark at issue to the same wider public, as was targeted by the earlier mark. Therefore, in view of those considerations, the relevant public for the mark at issue was the average consumer of foodstuffs in the UK. The goods on which OK and Mou Dybfros used the marks were identical. So far as visual and aural similarity, "mou" was both a unique term constituting the entirety of the earlier mark and the second word of "kiap mou". In terms of conceptual similarity, the words "mou" "kiap" and "kiap mou" had no meaning for consumers in the relevant market (the UK), for whom "mou" could not therefore be descriptive. Since the same applied for "kiap", both those terms were equally engaging to the relevant public and would be perceived by the public as equally dominant components without affecting the distinctive character of "mou". OHIM's Board of Appeal was therefore correct in finding that the respective signs were similar. UK consumers would be likely to think that the food sold under the mark KIAP MOU could come from the same enterprise as that owning the trade mark MOU. OK's appeal was therefore dismissed.

The IPKat thinks this analysis must be right. If the MOU and KIAP MOU registrations were allowed to stand together in respect of the same products, the commercial utility of one or both of them would inevitably be severely compromised.

More on mou here, here, here and here
Noises that pigs make here

A SOUND DECISION FROM THE ECJ

In Shield Mark v Kist, the ECJ has decided the conditions under which sound trade marks can be registered. Shield Mark obtained Benelux registrations in various forms for the melody of the first nine notes of Beethoven's Fur Elise and the sound of a cockerel's crow. When it brought trade mark infringement and unfair competition claims against Mr Kist, the court found that there was no infringement. Since the Benelux Governments intended to refuse to register sounds as trade marks , they had been invalidly registered. Shield Mark appealed to the Hoge Raad. In response to the Hoge Raad's reference, the ECJ provided the following guidance on the registrability of sounds as trade marks:

♦ On the issue of whether sound marks can be trade marks - Sound marks are capable of being trade marks under Article 2 of Directive 89/104 if they are capable of distinguishing the goods or serviced from one undertaking from those of other undertakings and if they are being capable of being represented graphically. They are not by their nature incapable of distinguishing between the goods of different undertakings and because they are precluded from registration under Article 2 Member States cannot preclude them from registration as a matter of principle.

♦ On the issue of whether sound marks can be represented graphically - following its Sieckmann, the ECJ reiterated that a trade mark can consist of a sign that is not capable of being perceived visually (such as a sound or an olfactory mark), as long as it can be represented graphically, particularly by means of images, lines or characters and if its representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. Furthermore, in order to obtain registration of a sound, an applicant must state in his application that he is applying for a sound mark.

♦ Whether certain ways of representing sounds are acceptable for trade mark purposes - While it was for national courts to determine whether the marks submitted in each case met these criteria, the ECJ was prepared to offer guidance on whether representation by musical notes or written language was sufficient. A description using written language could not be said to be insufficient a priori. However, Shield Mark's claim for the first nine notes of Fur Elise and a cockcrow was not sufficiently precise or clear, making it impossible to determine the scope of protection sought. This therefore did not meet the graphical representation element of Article 2. An onomatopoeia is also insufficient because there is a disparity between the onomatopoeia and the noise it purports to represent. Furthermore, an onomatopoeia can be perceived differently in different Member States - something more is needed to make onomatopoeia registrable. Music notes in the form A, C, E etc are also unacceptable since they are not clear, precise or self-contained as it is impossible to determine from such a representation alone the pitch and duration of the sounds forming the melody claimed. However, a stave divided into bars showing a clef, musical notes and rests forms a faithful representation of the sequence of sounds forming the claimed melody and as such meets the graphic representation requirements. Although a stave is not immediately intelligible, it may be easily intelligible, allowing the competent authorise and the public (including other traders) to know precisely the sign whose registration is sought. The ECJ refused to provide guidance on whether a sonogram, a sound recording, a digital recording or a combination of those methods were sufficient since these were hypothetical questions that the referring Netherlands court did not need to reach its judgment because Shield Mark had not applied for registrations in those forms.

The IPKat isn't surprised by the ECJ's conclusion after the court's judgment in Sieckmann. He observes though that the door has clearly been left open to the registration non-visual signs, the representations of which will require some interpretation before they can be understood. However, of all the non-visual signs, sounds are unique in having a method of notation that allows people to know exactly what the sign will be like merely by looking at the visual representation of them. He also notes that it seems that only sounds in the form of a musical melody will succeed and so he's withdrawing his application for the cat's miaow for intellectual property information services.

Fur Elise here and here
Cockerels here, here, here, here and here

LESS RED TAPE IN SIGHT

A WIPO press release says its Member States have made some progress towards revision of the Trademark Law Treaty (TLT) following a meeting in Geneva last week of the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT). This meeting was attended by 79 member states, three intergovernmental organisations and 10 non-governmental organisations, Discussions focused on the revision of the TLT, which was concluded in 1994 with a view to streamlining and simplifying formal trade mark procedures relating to national and regional trade mark applications and the maintenance of trade marks. The TLT currently has 31 member countries. Applicants seeking trade mark protection must meet certain formality requirements in order to avoid rejection of their application. These formalities currently vary from one country to another. The proposed TLT revision includes provisions on electronic filing of trade mark applications and associated communications and the introduction of relief measures when certain time limits have been missed, A Diplomatic Conference to consider the revision of the TLT may be held as early as 2005 (a decision on this is expected at the next meeting of the SCT in April 2004).

The SCT approved the proposal on communications which envisages that "any Contracting Party may choose the means of transmittal of communications". This means that national trade mark offices may choose whether to accept filings on paper only, by electronic means only, or both on paper and by electronic means. It also agreed to simplify requirements regarding the language of communications. Although the treaty mentions the principle according to which no Contracting Party may require the attestation, notarisation, authentication, legalisation or any other certification of any signature in a communication, offices which receive communications in more than one language may require a translation by an official translator or a representative. Proposals on signatures adressed recent developments such as the increasing acceptance by Offices of electronic signatures or other types of identification. Contracting Parties will still be free to require the original paper copy of any electronic communication within a reasonable period of time. The SCT also largely approved a provision on measures in case of failure to comply with time limits. The provision requires Contracting Parties to provide at least for one of three types of relief: (i) extension of the time limit, (ii) continued processing or (iii) reinstatement of rights.

Although the IPKat likes to play with a ball of string occasionally, he disapproves of all forms of red tape and regrets the fact that so many national offices have for so long been reluctant to adopt more streamlined and user-friendly systems for dealing with trade mark applications.

Red tape here, here, here, here and here
Cut red tape here and here

WHY REPRODUCTION IS A BAD IDEA

In 1994, Dr Mina Alikani of Cornell University Medical Centre published a paper in the journal Human Reproduction detailing her research on how a weakness in the wall of the inner cell mass of an embryo may lead to a greater likelihood of the embryo developing into a set of identical twins. Unsurprisingly, she was not best pleased when, in 2000, she noticed that seven paragraphs of her paper had been reproduced in another publication, Human Reproduction Update. The article had four named authors, Mr N Abusheika, Dr O Salha, Mrs V Sharma and Mr P Brinsden, though the piece was actually written by the first two doctor and the latter two, as senior authors, merely had a supervisory role. An apology appeared in the journal condemning such plagiarism but also acknowledging that due to the vast number of academic publications available, it was unreasonable to expect senior authors to comprehensively check for such wrongdoing. Subsequently, the General Medical Council brought an action for serious professional misconduct against the authors, stating that such conduct was unethical and unprofessional, though the action against the senior authors was dropped and only that against Abusheika and Salha was continued. The trouble was, it was impossible to tell which of the two doctors was responsible for the addition of those paragraphs and so, instead of the charge being conscious copying, it was couched in terms of failing to adequately review the paper. The GMC, against the advice of its legal adviser, found both guilty of serious professional conduct, highlighting the lack of honesty and integrity of the two and holding that:

“All authors are responsible for the contents and substance of any paper to the extent that they have not taken reasonable steps to discharge their responsibilities. To accept the benefits of authorship while evading the responsibilities for any deficiencies in the paper is unacceptable and dishonest."

The case was appealed to the Privy Council, which found that the GMC had been wrong in its approach. It had concluded that one or the other of them had acted dishonestly and, because the doctors did not give evidence (since they admitted serious professional misconduct) so the GMC had no evidence of which of them was responsible for the copying, it found them both guilty of dishonesty. This violated “fundamental principle of fairness that a charge of dishonesty should be unambiguously formulated and adequately particularised”, even if there was a high degree of negligence on the part of the non-copying author. Nonetheless, even the non-copying doctor was guilty of profession misconduct for letting the publication go ahead, despite the fact that the plagiarism was only of Dr Alkani’s expression of the state of the art in the field, rather than of her actual research. However, the GMC’s sentence of 3 months suspension from the register for the pair was reduced to a reprimand because the 3 month sentence was intended to highlight the seriousness of dishonesty but the Privy Council had found that dishonesty could not be proved.

The IPKat notes that professional codes of conduct, such as that of the GMC can supplement copyright and other IP protection and tailor the conditions for liability to the needs of the profession in question. Another prominent example is the Press Complaints Commission’s Code of Practice. In this case, while there is no need for dishonesty or even negligence to be shown for copyright claims to succeed, the GMC is able to afford special censure to copying that it considers to have been done in circumstances that are detrimental to the profession.

Live-action embryos here
Twins here, here and here

“MIRROR MIRROR IN THE COURT, HAST THOU BEEN NAUGHTIER THAN THOU OUGHT?”

The Lawtel subscription-only service has featured the curious case of Attorney-General v Ryan Lee Parry and MGN Ltd. In this case the parties made a statement in open court, announcing the agreement of terms of settlement between the Queen and MGN, the publishers of the Daily Mirror newspaper. This settlement follows the publication of two articles in the Daily Mirror that showed there was an inadequate vetting process for potential employees of the Royal Family at Buckingham Palace and also disclosed personal details of the domestic life of the Queen and members of the Royal Family. Parry, a reporter for the Daily Mirror, obtained a position as a footman in the Royal Household by submitting a false reference. Parry started work with the Royal Household on 23 September 2003 and the first of an intended series of articles appeared in the newspaper on 19 and 20 November 2003. Those articles not only revealed shortcomings in the vetting process for engaging staff at Buckingham Palace and Windsor Castle but also revealed intimate details of the personal and domestic lives of the Royal Family. The Royal Family considered them to be "a highly objectionable invasion of privacy, devoid of any legitimate [public] interest" and in breach of privacy agreement signed by Parry. A temporary injunction was ordered by Mr Justice Lewison on 20 November 2003. This injunction prevented any further publications while the parties submitted evidence to the Court, on the ground that the Queen was likely to succeed in obtaining a permanent injunction against further publication.

The terms of settlement agreed by the parties before Mr Justice Lightman on 24 November included (i) a permanent injunction prohibiting any further disclosures by Parry or MGN; (ii) delivery up of all photographs and unpublished documents; (iii) the destruction of any draft and unpublished stories; (iv) a ban on any further syndication of material already published and (v) an undertaking not to republish certain photographs. The defendants also agreed to contribute £25,000 to the Queen's legal costs.

The IPKat is delighted that the parties were able to do all this themselves, in contrast with the dispute involving the other royal family (Douglas and Zeta-Jones v Hello!) in which the parties could scarcely be induced to agree on anything. The IPKat also notes that the Royal Family appear to treated, at least in this instance, as being as protectable by the law as any of their subjects are, contrary to the view that there is an inherently greater public interest in knowing about them than about ordinary citizens
.
More on domestic servants here, here and here
Vetting of employees here and here
Other types of vetting here and here

WHEN A SINGLE COLOUR IS THE PRIOR MARK

The IPKat brings news of an interesting Trade Mark Registry decision concerning an opposition based on a registration of a colour per se. Orange Personal Communications is the proprietor of two marks for the colour orange in the form of Pantone 151 and a colour sample, applied to the visible surface of packaging or promotional materials etc, where it is the predominant colour. It opposed Easygroup’s application to register various terms prefaced with the word “easy”, such as easyPoints, easyJet.com and easyGiro, all with the colour orange claimed as an element of the mark. However, during the course of the opposition the opponent sought to amend the application in order to include a claim under s.5(1) of the Trade Marks Act (identical marks, identical goods/services). The Hearing Officer held (mirroring the Civil Procedure Rules on amendment) that such an amendment could only be made if it had some prospect of success and here the opponent had no possibility of success.

The ECJ in LTJ Diffusion v Sadas said that identity of sign and mark must be interpreted strictly and that, for a sign to be earlier to any identical mark, it must reproduce the earlier mark without any modification or addition. Here the addition of the “EASY” prefixed words constituted an addition or modification to the opponent’s earlier mark, since the earlier mark did not include any words at all. The fact that the opponent could choose to use its mark together with words did not mean that such words could be taken to form part of their monopoly. Instead, what was relevant was the fixed point of reference in the earlier mark with which the comparison with later marks could be made. For the marks to be identical, the word “EASY” had to be contained within the earlier mark; the inclusion of the word “predominant” in the reference to the use of colour by the opponent in his registration did not result in wording being included in the opponent’s monopoly.

The IPKat notes that this is the first case that he is aware of where the registration of a single colour as a mark has been compared to a later mark or use. He expects many other tricky problems to filter through in this area if traders are able to secure single colour registrations, particularly how one judges whether a specific shade of a colour that is used by an applicant/defendant is similar or identical to the strictly delimited (as all colour marks must be after Libertel) colour of an earlier trade mark.

All things orange here, here, here, here , here and here

PRIVACY AND CELEBRITY

“Privacy and Celebrity” was the title of the lecture given tonight at the Institute of Advanced Legal Studies by Michael Tugendhat QC (now Mr Justice Tugendhat). The lecture, hosted by the Society for Advanced Legal Studies, was attended by the IPKat who, despite his celebrity in IP circles, arrived incognito so as to preserve his privacy intact.

Michael Tugendhat started with an historical review of the attempts made by celebrities such as Lady Eden, King George III and Queen Victoria to protect their privacy through the control of paintings and etchings which featured them, drawing a parallel with the attempts of celebrities such as Catherine Zeta-Jones to do the same thing through controlling which images of them can be used. He then outlined the positions taken against further legislative intervention in support of personal privacy rights, both by Lord Hoffmann in Wainwright v Home Office, and by the Department of Culture, Media and Sport. Both the government and Lord Hoffmann, as well as the speaker himself, felt that a free-standing privacy action was not necessary because other, pre-existing legal rights are sufficient to protect peoples' privacy. After a review of British case law culminating in Wainwright v Home Office (IPKat, 26 October 2003), the speaker discussed the possibility of utilising the provisions of the Data Protection Act 1998. He also discussed the far-reaching repercussions of the European Court of Justice ruling in Lindqvist (IPKat, 16 November 2003) and the even more far-reaching effect of the European Convention on Human Rights and its attendant case law. His conclusion was that, while time will show whether there is a need for further specific legislation, the privacy interests of not only celebrities but of ordinary citizens are surprisingly well protected. The speaker concluded by drawing attention to the upcoming privacy case brought by Princess Caroline of Hanover in the European Court of Human Rights in Strasbourg.

The IPKat was happy to know that, after all the excitement and uncertainty generated by the implementation of the Human Rights Act 1998, Michael Tugendhat felt confident that the judiciary would place reliance not only on the “new” sources of privacy law but also on pre-1998 case law in seeking to balance the interests of individuals seeking privacy with the interests of the press in the freedom to disseminate publicly significant information.

From first to last: Samuel D. Warren and Louis D. Brandeis, “The Right to Privacy” (1890) here; Lord Phillips, “Private Life and Public Interest” (2003) here
Celebrities in need of privacy here, here and here

DIALOGUE ON GEOGRAPHICAL INDICATIONS RAISES MORE QUESTIONS THAN IT ANSWERS

Last Friday, the IPKat attended the Queen Mary Intellectual Property Research Institute and Fordham School of Law Dialogue on Geographical Indications. Too much was said during the round table to bring you a blow-by-blow account, so instead the IPKat will detail some of the most interesting points that were raised:

♦ There was a major tension between the US and EU attitudes to GIs. The Americans saw them as anti-competitive and as an example of EU protectionism. It was suggested that GIs granted monopolies in generic terms to certain traders and therefore resulted in horizontal market division between those traders who are fortunate enough to be entitled to use GIs. The Europeans present tended to take a less hard-line approach, recognising that, by providing consumers with information about the products in question, GIs can have pro-competitive effects. One proposed solution from the American delegation was that every GI holder should also have to coin a generic description of his/her product so that competitors will be able to adequately describe their products if they are similar to those covered by the GI. The IPKat was not particularly persuaded by the American position. GIs aren’t as much of a threat to competition as was asserted. GIs do not stop competitors from producing similar or even identical products as long as they do not market them under the GI. Certainly they’ll have to find another way of describing the nature of their products but this should be possible although it may require some effort. Additionally, few GIs are truly generic. Most are used in conjunction with a separate generic term e.g. the “ham” element of “Parma ham”.

♦ It was suggested that geographical indications are part of the anti-globalisation trend because of their focus on unique regional specialities. The IPKat isn’t too sure about this: proponents seek protection for the same GIs all over the world. As a result, there are certain GIs that are recognised as luxury products the world over.

♦ It was asked why spirits were included in the Doha Declaration whereas TRIPs had just covered wine.

♦ The economics of GIs were discussed. Although it was recognised that overly-restrictive GI protection can limit the availability of product information and thus have a negative economic effect, the fact that it can incentivise GI holders to invest in their goods was also noted, as was the ability of GIs to protect the livelihood and cultural heritage of local producers. Other associated costs, such as the expense of running a register of GIs, were also highlighted.

From the IPKat’s point of view, the main issue is this: There are other, lengthier ways for competitors to describe the characteristics of their goods. Whether we think it is reasonable to expect competitors to use those methods, rather than the more convenient GIs depends on: (i) the cost we are prepared to impose on competitors who enter the market – searching for suitable descriptive terms rather than using the GI as a shortcut imposes a burden on competitors and (ii) the cost we’re prepared to impose on consumers in the search for products with certain characteristics – it will be easier for consumers if they can search for goods similar to those that bear a GI if the similar goods can use the GI in some way e.g. “Tastes just like Parma Ham” or “Gorgonzola-style cheese, made in England”

The US position on GIs here
The EU on GIs here and here
WIPO on GIs here
WTO on GIs here
Famous GIs here, here and here.

BLAIR PUTS NEW SPIN ON THE SIMPSONS

Ananova reports that British Prime Minister Tony Blair is to make an appearance on “The Simpsons”. He has provided his voice for the episode, entitled "The Regina Monologues", in which the cartoon family visit England. In this episode the family comes to London for a holiday and is met at Heathrow airport by Mr Blair, who invites them back to his residence at 10 Downing Street for tea. After gaining tips on where to visit in London from the Prime Minister, Homer causes chaos by tipping tea from his Union Jack tea cup over the carpet. Homer also ends up in trouble with the Royal family after he crashes a Mini Cooper into the back of the Queen's horse-drawn carriage and is locked up in the Tower. The episode, which also features the voices of Harry Potter author JK Rowling and Sir Ian McKellen, is being aired on Fox tonight in the US and is due to be shown in Britain in January.

The IPKat wonders what precautions Tony Blair may have taken to protect his intellectual property. He has not registered his name as a trade mark. In the UK there is no property right in a distinctive voice; nor could he sue if the producers of the Simpsons had substituted a sound-alike actor for him. The IPKat assumes that, as is usually the case with Mr Blair, his lines were scripted by the Americans.

Royal Simpsons here and here; non-royal Simpsons here and here
More monologues here, here and here

DISNEY’S PANNING FOR GOLD

The Sunday Telegraph reports that Disney has pulled out of the new live-action Peter Pan film just five weeks before its release date. The decision is the result of a row between the studio and Great Ormond Street Hospital in London, which inherited the copyright in Peter Pan under the will of JM Barrie. Disney has argued that it should not have to pay any royalties to the hospital on the film-related merchandise that it sells since it has been making regular payments to secure the animated rights to the story and has made voluntary payments from its income from merchandise associated with its animated “Peter Pan” film. Disney however feels that its partners in making the film, Sony and Revolution Studios, should have to pay over a proportion of their merchandising profits.

The IPKat is somewhat perturbed. While Great Ormond Street is undoubtedly the copyright holder in Peter Pan, the IPKat does not see why this should automatically entitle it to merchandising rights in all things Peter Pan, unless we’re going to recognise copyright in names. Disney plans to merchandise books, board games, soft toys and computer games, but only books really involve making use of Great Ormond Street’s copyright material. The IPKat says that this is a trade mark or passing off issue, rather than a copyright issue.

Read the book here
Sing like Peter Pan here
Travel like Peter Pan here
Act like Peter Pan here

PRINCE HARRY WON’T BOW TO SPONSOR’S DEMANDS

England’s victory in the Rugby World Cup final was a mixed blessing for the team’s shirt sponsors, telecoms company 02. The team’s victory was a boost for the company, but the most high-profile England supporter at the event, that telegenic teenager, heavily-photographed and much-filmed Prince Harry, wasn’t wearing the right team shirt. The shirt, which Prince Harry refused to change, was an old model bearing 02’s former name, BT Cellnet. The sponsors saw Prince Harry wearing the "wrong" shirt at England's other matches and tried everything to persuade him to ditch it for the latest version, complete with the O2 logo. They sent him several new jerseys and even enlisted the help of the Rugby Football Union, their £8 million commercial partner. The Prince, however, was having none of it: his old shirt was a present from England star and match-winner Jonny Wilkinson and was, as His Highness put it, a lucky shirt since England always won when he wore it.

A senior manager with 02 is reported as saying: "It's very disappointing for us because the Prince has attracted worldwide media attention on television and on the front pages of newspapers, but the commercial value for us has been zero. We sent the Prince a few new shirts but he wanted to wear what he considered to be his lucky shirt. England did win the World Cup, so maybe it was a lucky shirt after all”. A spokesman for the Rugby Football Union added: "We tried to get him to change, but wearing Jonny Wilkinson's old shirt is his way of supporting the team. If he wants to wear Cellnet we can't stop him. Royalty are not going to be commercial". 02’s disappointment was compounded by the fact that its opportunities to capitalise on its sponsorship in Australia had already been severely curtailed. The World Cup organisers banned teams from wearing sponsors' logos on their shirts and insisted on "clean" stadiums to avoid "commercial clutter". Under the tournament rules, no sponsor other than an official commercial partner was allowed to advertise within 500 yards of any of the grounds, while team logos were banned from training pitches and even the clothes worn by players as they travel to a match.

The IPKat, not known as a keen royalist, has some sympathy with the prince. Since English teams do not normally win anything through their own efforts, it must be assumed that the wearing of the wrong shirt was the reason why the team won. On a legal note, there is no basis upon which 02 could compel anyone to abandon the use of shirts bearing its former company name and logo, notwithstanding the fact that such use may cause confusion or undermine the value of the later name and logo.

Lucky shirts here, here and here
Some other prominent royal Henries here: Henry V, Henry VII and Henry VIII

GSK GETS THAT SICK FEELING AS ANTIBIOTIC PATENTS MEET AN EARLY DEATH

GlaxoSmithKline (GSK), the world's second largest drugs group, has lost its action to prevent Swiss company Novartis making and selling cheap generic versions of Augmentin, GSK's leading antibiotic. GSK’s proceedings were aimed both against Novartis and its generic company, Geneva Pharmaceuticals. The US Court of Appeals for the Federal Circuit ruled in favour of Novartis and Geneva late on Friday, upholding Geneva's claim that seven of GSK's patents for the drug were "improper and should not have been used to extend patent protection for [GSK's] product".

Novartis and Geneva surprised the market in 2002 when it launched a generic version of Augmentin. The launch came after an unexpected US legal decision in May 2002 that a number of GSK's patents for Augmentin were invalid. GSK spent over a year fighting the decision but the original ruling has now been upheld, ending the legal dispute between the companies. In 2001 Augmentin had US sales of almost $1bn. In the first quarter of 2003, sales were $83m, down 64 per cent against the same period last year. A spokesman for GSK said the company remains committed to its newer Augmentin antibiotic medicines - Augmentin ES and XR - which now account for nearly 35 per cent of the total number of prescriptions for branded and generic Augmentin.

The IPKat commiserates with GSK’s shareholders on the likely diminution of the value of their share holdings in the light of this decision, but he reminds them that we live in a world of swings and roundabous - this decision should at least help to reduce their medical bills.

More on antibiotics here, here and here

THE SMELL OF SUCCESS - BUT NOT FOR TRADE MARKS

An article from the BBC details the University of Plymouth’s BA in Business and Perfumery. The students on this course learn how to create a smell to a brief that will later be passed on to the perfumer for refinement. As well as creating a “trade mark” smell for products such as perfumes, shampoo and detergents that may have a functional role, the odour is meant to communicate an emotion to the consumer. This is made complicated by the fact that different fragrances have different connotations in different countries, so smells may have to be formulated on a regional basis.

The IPKat notes that while smells are an important aspect of many products, following the ECJ’s decision is Sieckmann outlining the problems with registering odours as trade marks, it is hard to see how they can have value as intellectual property assets.

Identify smells here
Nice smells here and here
Noses here and here

THE IPKAT PATENT OF THE MONTH: NOVEMBER 2003

Population control in China is likely to remain a problem if the patent application filed in 1994 by Hao Hongfeng is anything to go by. According to the abstract, his invention is for an “external-use type anticonceptive drug” made of “traditional Chinese medicinal pregnancy-proof incense”. The invention, which can be made in the form of powder and emulsion, is either inhaled or spread on the Jenchung acupoint (the midline of the nasal philtrum, one third of the way from the nose to the edge of the upper lip) or the belly-button, it can “attain the goal of birth control”. The good news is that this medicine has no toxic side-effect. The bad news is that it has a success rate of only 92%.

The IPKat, noting the steps that WIPO is currently taking to protect folklore and traditional knowledge, wonders if steps will also have to be taken to protect us against the effects of such knowledge.

Philtrums here, here , here and here
Belly buttons here, here and here
More on contraception here, here and here

CTM SEARCHES: A SOLUTION AT LAST

The IPKat has heard that, at a meeting of the COREPER (the European Union’s Committee of Permanent Representatives) this week, it was agreed to change the currently unpopular search system for Community Trade Marks. Searches of the EU’s national registers will become optional for CTM applicants, although the search of the OHIM register will remain compulsory. In a spirit of compromise that will enable national trade mark granting authorities to milk CTM applicants for a little while longer, this change will not be implemented until the passage of a transitional period of four years. This political compromise is expected to receive final formal approval at next week's Council Meeting.

In a letter to members of MARQUES, the association of European trade mark proprietors, chairman Tove Graulund describes this compromise as “not ideal for brand owners, but acceptable”. Tove notes that, in four years’ time, applicants will be able to decide for themselves if they wish to make use of national searches or not.

Searching for something? Click here, here or here
If you’re not conducting useless searches, investigate 1,000 other ways to waste your money here

NO INTERIM INJUNCTION AGAINST ONLINE CONTEXTUAL ADVERTISING (“POP-UPS”), BUT THE FIGHT GOES ON

A federal court has dismissed Wells Fargo's application for interim injunctive relief against WhenU, a software maker that launched rival pop-up advertisements when customers accessed the bank's website. Said Judge Nancy Edmunds (US District Court of Michigan, Southern Division): "the fact that some WhenU advertisements appear on a computer screen at the same time the plaintiffs' web pages are visible in a separate window does not constitute a use in commerce of the plaintiffs' marks". The bank alleged copyright and trade mark infringement.

WhenU makes software that tracks the movement of websurfers and serves up targeted advertisements to those who are likely to make a purchase. For example, an ad for travel site Priceline.com might appear while a surfer is visiting Travelocity.com. The software is bundled with other popular downloads such as peer-to-peer software BearShare or weather applications, that consumers use for free by agreeing to receive occasional ads. About 30 million internet users have WhenU's software on their desktops. Said the judge: “The fact is that the computer user consented to this detour when the user downloaded WhenU's computer software. While pop-up advertising may crowd out the U-Haul advertisement screen through a separate window, this act is not trade mark or copyright infringement, or unfair competition".

Wells Fargo described this decision as "a set-back" for consumers: "This form of advertising can create confusion for impacted customers who visit financial sites and believe the offers they are receiving are from that financial institution", said a Wells Fargo representative. "The source of these pop-up advertisements may not always be clear to the customer. It's important for customers to know who they are dealing with online, and we took action to eliminate this source of confusion for our customers". No court date has yet to be set for the full trial.

The IPKat, despite its instinctive and deep-rooted dislike of all pop-up advertisements, is keeping an open mind on the outcome of the next round of this litigation since neither the copyright nor the trade mark issues are susceptible of easy resolution.

How to kill pop-up ads here, here and here
Things that pop up here, here and here

SON SHINES IN OHIM

The IPKat has spotted an interesting OHIM Opposition Division decision on the registrability of O’ versus Mc surnames. O’Neill applied to register a figurative depiction of the work O’NEILL in various classes of goods, including Class 25. Peek, the proprietor of an earlier German mark for the work MC NEAL in Class 25, opposed O’Neill’s application in so far as it included sports and leisure clothing, headgear and footwear, especially sports shoes, casual shoes, sandals and socks. Peek argued that the signs and the goods were identical or similar, leading to a likelihood of confusion and particularly that the two signs would be pronounced identically because the prefixes had not aural effect and consumers would notice the main components of both signs (NEILL AND NEAL) rather than the prefixes (MAC and O’).

The opposition was rejected. The goods were either identical or similar. Peek’s articles of clothing encompassed O’Neill’s sports and leisure clothing and socks. Similar concerns meant headgear was identical or very similar to clothing, especially since headgear is meant to be fashionable as well as protecting wearers from adverse weather. O’Neill’s footwear was similar to Peek’s clothing since both were worn by humans and their function is to cover and protect the human body. Additionally, both are often sold in the same outlets and clothing manufacturers often produce footwear under the same mark. Consumers know of this practice and will therefore perceive the two types of goods as belonging to the same category.

However, two marks were not similar. Visually, the signs were different. Three of the six letters each contained were different. Additionally, the beginning of both signs, which is the part to which consumers pay the most attention and will be remembered most clearly, were different. So were the second parts considering the different composition of letters that made up each of them. Aurally, the two suffixes (NEAL and NEILL) would be pronounced in the same way by the relevant public (the German public because that was where the earlier mark was registered). However, the beginnings were completely different sounds and consumers’ attention is generally caught by the beginnings of signs rather than by their ends. Thus, aurally, the difference outweighed the similarities. Conceptually, the two marks had no meaning in the relevant country. Instead, they would be perceived as family names of foreign origin and so consumers would notice the difference between them.

To determine the likelihood of confusion, the attentiveness of the relevant public, the distinctiveness of the earlier mark and the similarity of the goods or services had to be taken into account. Here, the consumers in question were the standard average consumers of the goods in question as defined by the ECJ in Lloyd. To assess the distinctive character of the mark, it was necessary to make a global assessment of the capacity of the mark to distinguish the goods for which the mark was registered as coming from a specific undertaking. Peek did not argue that its mark had acquired distinctiveness so any distinctiveness had to be per se. However, Peek’s mark was averagely distincitve. There was no likelihood of confusion because although a lesser degree of one of the similarity factors can be made up for by the other and the goods were identical or similar, the signs were dissimilar so there could be no likelihood of confusion.

The IPKat is interested by the Opposition Division’s approach to assessing the similarity of the two names. He’s not sure why the fact that they were perceived as surnames did not qualify them for conceptual identity. On a strict reading, they are conceptually very similar because both “O’” and “Mc” mean “son of”, but chances are an average German consumer would not know this. He’s also not sure why the Opposition Division went on to consider the distinctiveness of the mark since the opposition was doomed to failure once the marks were found to be dissimilar. The similarity of goods assessment is also worthy of note, particularly the part about consumer perception being shaped by practice in the trade.

Find out what your surname means here and here
Famous Neils here, here and here

FIRST AUSTRALIAN CRIMINAL INTERNET PIRACY CASE

The first convictions under the Australian criminal internet piracy legislation have taken place according to news.com.au. Peter Tran and Charles Ng were each given 18 month suspended prison sentences and, together with Tommy Le, received community service orders for their parts in running a Napster-style MP3 site. The judge, NSW Deputy Chief Magistrate Graeme Henson, said that the trio's activity didn't only deprive copyright holders and artists, but also "drills down deeply within the economy" and can "work a significant disadvantage to society". Michael Speck, of Music Industry Piracy Investigations, has claimed that the sentences are too short, comparing the group's acts to theft, and has argued that they should be treated as if they had stolen the quantity of CDs shared on their network from an actual shop.

The IPKat is not entirely happy with the analogy drawn between copyright and the theft of tangible property. For one thing, it is uncertain that those who used the downloading network would actually have bought the physical CDs, so a direct diversion of sales has not necessarily taken place. Those who assume that tangible property principles such as theft apply to intangible intellectual property must prove their point and demonstrate that they are suitable, despite the differences between physical and intellectual property.

So you want pirate music? Click here, here and here you naughty person

ECJ LAYS DOWN GUIDELINES FOR DETERMINING “AMERICAN BUD” DISPUTE

In Budejovicky Budvar NP v Rudolf Ammersin GmbH, Case C-216/01, the European Court of Justice handed down a long, complex decision on the legal basis upon which a Czech brewer can prevent the sale in Austria of AMERICAN BUD brand beer. Budvar, a Czech brewer, exported BUDWEISER BUDVAR beer to Austria. Austrian company Ammersin sold Anheuser-Busch's AMERICAN BUD beer. In 1999 Budvar sought an order that Ammersin stop using the word "Bud", or similar designations likely to cause confusion, for beer. Budvar claimed that (i) AMERICAN BUD was confusingly similar to its own prior Austrian trade marks; (ii) the use of AMERICAN BUD for a beer from anywhere but the Czech Republic breached a bilateral convention concluded between Austria and the former Czechoslovakia which listed "Bud" as a protected designation reserved exclusively for Czech products. The Austrian court stayed the proceedings and referred a number of questions to the ECJ concerning the interpretation of Arts 28, 30 and 307 of the EC Treaty as well as Council Regulation 2081/92 on geographical indications.

The ECJ ruled as follows:

(a) Regulation 2081/92 did not say that simple indications of geographical source could not be protected under the law of a Member State. Its aim was to ensure uniform pan-EU protection of geographical designations. However, the national protection of geographical designations which did not meet the requirement of registration under the Regulation was governed by national law and was confined to that territory.

(b) Since the Austrian national system of protection of geographical indications provided for absolute protection, it was irrelevant whether there was any risk of consumers being misled. The scope of Regulation 2081/92 however depended on the nature of the designation, since it covered only designations of products where there was a specific link between their characteristics and their geographic origin. "American Bud" was not a designation falling within the scope of the Regulation. Its protection under the bilateral agreement was therefore limited to Austrian territory.

(c) Arts 28 EC (which prohibited barriers to intra-EU trade) and 30 (which justified limited exceptions to that prohibition) applied without distinction to products originating in the EU and to those admitted into free circulation in any of the Member States, whatever the real origin of such products.

(d) The prohibition on marketing "Bud" beer from countries other than the Czech Republic in Austria, under the bilateral convention, could affect imports of "Bud" beer from other Member States and thus of constituting a barrier to intra-EU trade. Such a rule was therefore a measure having an effect equivalent to a quantitative restriction within the meaning of Art.28. The courts thus had to consider whether such a restriction was justified under Art.30. Since the aim of the bilateral agreement was to ensure fair competition, such an objective could fall within the sphere of the protection of industrial and commercial property within Art.30 as long as "Bud" had not, either at the time of the entry into force of the agreement or subsequently, become generic in the country of origin. If the national court found that "Bud" designated a region or a place and its protection was justified under Art.30, its protection could be extended to Austria.

(e) If the national court found that "Bud" did not identify any region or place, the question then arose whether the absolute protection of that name, as provided for by the bilateral convention, constituted an obstacle to the free movement of goods. If so, without prejudice to any protection under specific rights such as trade mark rights, the protection of "Bud" could not be justified on the grounds of protection of industrial and commercial property under Art.30. If it were established that "Bud" contained no reference to the geographical source of the products it designated, Art.28 would preclude its protection by means of a bilateral agreement between a Member State and a non-member country.

(f) Rights and obligations under an agreement concluded between a Member State and a non-member country before the date of accession of that Member State were not affected by the EC Treaty and the purpose of Art.307(1) was to make clear, in accordance with the principles of international law, that application of the EC Treaty did not affect the duty of the Member State concerned to respect the rights of non-member countries under an earlier agreement and to perform its obligations.

(g) It was for the national court to ascertain whether, after the break-up of Czechoslovakia in 1993, both Austria and the Czech Republic intended to apply the principle of continuity of treaties to the bilateral instruments at issue.

(h) EU Member States had to take all appropriate steps to eliminate the incompatibilities between a pre-EU accession agreements and the EC Treaty. The national court had to ascertain whether a possible incompatibility between the EC Treaty and the bilateral convention could be avoided by interpreting that convention in such a way that it was consistent with Community law. If that proved impracticable, that State should take appropriate steps. Until incompatibilities were resolved, Art.307(1) permitted that State to continue to apply such an agreement in so far as it contained obligations which remained binding on that State under international law.

The IPKat marvels at the complex legal knots that must be untied before an Austrian innkeeper can get an answer to the simple question "can I sell this can of AMERICAN BUD in my bar?"

American Buds here, here and here
Remember Czechoslovakia? Click here and here for historical background
Other extinct countries here

IPKAT GUEST BLOG: CAN THE ECJ REWRITE NATIONAL STATUTES?

The IPKat is pleased to welcome back London barrister Ashley Roughton as a guest blogger. Ashley, of Hogarth Chambers, is an intellectual property specialist who has appeared in many recent cases, including Arsenal v Reed.

Much comment has been made about the apparent widening of the test for infringement as set out in Article 5 of Council Directive 89/104 (the trade marks directive) following the ECJ judgment in Adidas v Fitnessworld. Two points emerge. The first is the issue of the "link" between the registered trade mark in issue and the sign. The test for infringement is said to be less than confusion (or at least different): any "link", whatever that means, will do. The second is to do with the fact that the ECJ appear to have re-written Article 5(2) of the directive so that the reputational protection available to proprietors of registered trade marks also applies to goods or services which are identical or similar to those for which the registered trade mark in issue is registered, provided, that the registered trade mark has a sufficient reputation.

Assuming that the ECJ is right, what does this mean in practice? Here considerable difficulties arise. At first it seems impossible, without the intervention of the legislature, to delete section 10(3) of the Trade Marks Act 1994 so that a claimant relying on section 10(3)(b) of the Act need not show that the defendant's goods or services are dissimilar to those set out in the trade mark registration document. Since the ECJ says it does not matter whether the goods or services in question are similar to those set out in the registration document, section 10(3)(b) should not be there.

How, then, does one formulate a claim under section 10(3) of the Act? To this there are two possible answers. The first is to say that the directive has horizontal direct effect. In other words, private litigants can rely upon the directive -- and only the directive -- as setting out the basis for a cause of action, without recourse to the subsidiary legislation (in this case the Act). Standing well in the way of this argument is the well established notion that there is to be no horizontal direct effect so far, at least, as directives are concerned and so far as concerns private rights. The position so far as governments are concerned is different, but this is a separate notion known as vertical direct effect and does not concern the point being made. The "no horizontal direct effect" rule is one which has, in the past, been repeatedly made by the ECJ (see, for example, Case C-192/94 El Corte Ingles SA v. Rivero [1996] I E.C.R. 1281). The second, more attractive, answer is to say that if a provision of a domestic statute offends European law, that provision must be ignored. There is sparse but strong authority for this proposition: see Case C-269/80 R. v Tymen [1981] E.C.R. 3079. Therefore, the argument goes, ignore section 10(3)(b) of the Act.

While this second point is procedurally attractive to brand owners, at least it leaves one with a sense of discomfort; the sort of discomfort which gives legislators a bad name. Article 5(2) of the directive is reasonably clear and section 10(3)(b) of the Act is a reasonable transposition of the directive in that regard. The ECJ may be able to declare national transpositions of directives as being incompatible with European law but it seems it has developed a new power to declare directives to mean something which they don't. Whether this opinion stands the test of comment on the IPKat web site remains to be seen.

IPKAT IN OXFORD

Today the IPKat attended Professsor Gerald Dworkin's talk, "Unfair Competition: Is the Common Law in Need of a Loose Cannon?", hosted by the Oxford Intellectual Property Research Centre at St Peter's College. The focus was on the breadth of the unfair competition action at common law and on the place of misappropriation within in it. He began by identifying three possible ingredients of an unfair competition tort: Confusion (or Misrepresentation); Attack (on another trader) and Theft (or Misappropriation) a.k.a. CAT or MAT. The first two of these ingredients were enshrined in Art 10bis of the Paris Convention, while the third - misappropriation - was not. Nor was misappropriation singled out in Art 39 of TRIPs. However, this did not mean that there was no place for misappropriation within unfair competition doctrine.

Professor Dworkin described the manner in which passing off law in the UK had expanded the concepts of goodwill, confusion and damage so as to address new forms of unfair competition and changing trade practices. Nonetheless, passing off has not been stretched so far that it will provide relief against misappropriation alone in the absence of misrepresentation. This was not always the case in the US, where misappropriation without confusion was recognised in the 1918 Supreme Court case of INS v Associated Press. However, this decision was never fully accepted and was later restricted to the protection of "hot news" in NBA v Motorola.

After reviewing the ad hoc protection accorded to acts of misappropriation in perceived "problem cases" such as semi-conductor chips and database rights, he went on to consider why the common law is reluctant to grant protection against misappropriation per se and how certain other jurisdictions were coping with the same issue. He noted that while countries such as France, Germany and Switzerland ostensibly provide protection against misappropriation, they employ an "X factor" to distinguish deserving cases from undeserving cases.

In concluding, Professor Dworkin conceded that before any doctrine of misappropriation was recognised, it would be necessary to consider the economic arguments for and against such an expansion. He also pointed out that new forms of action and new rights e.g. the EU unregistered design right, were already eating into the territory where such relief may be desirable.

The IPKat says that this is an area that needs further investigation. While the prospect of competitors being able to take a "free ride" on the efforts of others is instinctively unappealing, the risk of measures that would stifle competition is equally unattractive.

Cat mat here, here and here
Unfair competition here and here

WILL WIPO RESCUE SANTA CLAUS?

Ananova reports that Disney studio bosses are concerned about a new movie which shows Father Christmas drinking, stealing and chasing girls. "Bad Santa", starring Billy Bob Thornton, has been made by Disney subsidiary Miramax, the studio that also made Quentin Tarantino's "Kill Bill". In one scene, Santa says to a barmaid: "I'm an eating, drinking, f***ing Santa Claus!" "Prove it," she replies. The next scene shows Santa and the barmaid having sex in his car. In another scene, a child asks: "You are really Santa, right?" Santa responds: "No, I'm an accountant. I wear this as a f***ing fashion statement!" The Drudge Report says the film has caused "complete outrage" among senior Disney executives. "Nothing appears sacred, anymore, this is just not in the spirit of Walt Disney", a source close to Chief Executive Michael Eisner is quoted as saying.

The IPKat is not surprised that Santa Claus should be considered sacred by money-making Disney executives, even though he is pretty well devoid of significance in genuinely religious circles. A search of the Vatican website, for example, scored zero hits for "Santa Claus". Further, Google searches for "Santa Claus" + money yield around 155,000 hits, "Santa Claus" + sex give around 64,100 and "Santa Claus" + religion scores only around 48,700. More seriously, the IPKat notes that we are dealing here with the tarnishment of a fact-based fictional character who has brought untold happiness to millions of children. Perhaps WIPO's plans for the protection of traditional knowledge and folkore should be extended to cover cultural icons such as Santa Claus, whose value may be irretrievably damaged by such acts of cultural vandalism.

Santa Claus' history, current activities and death
Pagan Christmas Cult here; Santa Claus bank robbery here
Santa Claus jokes here and here
Twenty ways to confuse Santa Claus here

NAME CHANGES FOR FREE!

The BBC reports that an advertising agency has had an unexpected success with a spoof website (www.whatbrandareyou.com) that it set up. The site pokes fun at the trend for companies to rebrand at great expense with “nonsense” names such as Corus and Arriva by offering to generate a new name for a company once the existing name, core value and main goal of the company is inputted. However, names that the site generates are actually being used by genuine companies which have registered certain of them with Companies House, although the directors of those companies claim not to know of the website.

The IPKat is rather impressed by all these “nonsensical” names. On the one hand, they sound meaningful enough to suggest to consumers that there is a fundamental value lurking behind the brand but on the other hand, they are in fact pretty meaningless, which means that they are not precluded from being registered as trade marks. However, he is not impressed with the website’s suggested name – rest assured, the IPKat will NOT be rebranding as “Subigo” any time soon.

Definition of “subigo” here
A spot of rebranding here
Silly names here, here and here

THE DATA INSPECTOR CALLS: MRS LINDQVIST AND THE BROKEN FOOT

IPKat’s friend Jordgubbar writes to tell us about Case C-101/01 Bodil Lindqvist, in which the European Court of Justice (ECJ) delivered its judgment on the interpretation of the Data Protection Directive (Directive 95/46) and the Swedish Personuppgiftslag (SFS 1998:2004), which implemented that Directive.

Background to the reference

In 1998, Mrs Lindqvist set up internet pages at home in order to allow parishioners of her church preparing for their confirmation to obtain information they might need. Those pages contained information about Mrs Lindqvist and 18 colleagues which included some family circumstances and telephone numbers. She stated that one colleague had injured her foot and was working part-time on medical grounds. She did not however tell her colleagues of the existence of those pages or obtain their consent. Nor did she notify the data inspectorate of her activities. The public prosecutor proceeded against Mrs Lindqvist, charging her with breach of the Personuppgiftslag in that (i) she had processed personal data without prior written notification; (ii) she had processed sensitive personal data without authorisation and (iii) she had transferred personal data to a third country (by placing it on an internet site accessible outside the EEA) without authorisation.

Article 1 of the Directive sets out the basic protection of the fundamental rights and freedoms of natural persons with respect to the processing of personal data. Article 3 sets out the scope of the Directive: the processing by any means of personal information which forms part of a filing system or is intended to do so. It sets out situations in which the data protection legislation does not apply, including public security and defence purposes. Further, the Directive does not apply to the processing of personal data by a person in the course of purely personal or household activities. By virtue of Article 8, certain types of information are "sensitive personal data", which includes information concerning health.

Summaries of the questions to which the ECJ responded

Question 1: Does the mention of a person (by name or with a name and telephone number) on an internet home page constitute the processing of personal data for the purposes of the Directive?

The term "personal data" covers any information relating to an identified or identifiable natural person. This includes the name of a person in conjunction with his telephone co-ordinates or information about his working conditions or hobbies. To do anything with such data constitutes "processing", so the loading of personal data on an internet page must be considered processing.

Question 2: The Court did not need to answer this question

Question 3: Does loading such information on to a private homepage fall within one of the exceptions in Article 3(2)?

The Court considered the exceptions specifically set out in Article 3(2) and held that the list of activities is exhaustive. Charitable or religious activities cannot be considered equivalent to the activities set out in that list. Further, the Court held that the exception in respect of activities which are exclusively personal and domestic must be interpreted as relating only to activities which are carried out in the course of private or family life. Mrs Lindqvist submitted that private individuals who make use of their freedom of expression to create internet pages in the course of a non-profit or leisure activity are not carrying out an economic activity and are thus not subject to EC law. Citing Österreichischer Rundfunk, the ECJ held that recourse to Article 100(a) of the EC Treaty (the legal basis for the Directive) does not presuppose the existence of an actual link with free movement between Member States in every situation referred to by the Directive. The Court considered that a contrary interpretation would go against the essential objective of approximating the laws of Member States in eliminating obstacles to the functioning of the internal market.

Question 4: Is information that a person has injured his foot and is on half time on medical grounds "sensitive personal data" for the purposes of Article 8(1).

The ECJ held that such data clearly constitutes personal data concerning health within the meaning of Article 8(1) and is therefore sensitive personal data for the purposes of the Directive.

Question 5: Is the placing personal data on a website a transfer of the data within the meaning of the Directive and does it makes a difference if no individual from a third country has accessed the site?

To obtain the information appearing on the internet, an internet user would have to connect to the internet and to carry out the necessary actions to access those pages. In other words, Mrs Lindqvist's internet pages did not contain the technical means to send the information automatically to people who did not intentionally seek access to them. Where personal data is loaded on to a website in one country and then appears on the computer of a person in another country, such data is not directly transferred between those two people but goes through the computer infrastructure of the hosting provider where the page is stored.

Since the Directive contained no criteria applicable to the use of the internet, the ECJ did not presume that the legislature intended the expression "transfer of data to a third country" to cover the loading of data on to an internet page, even if such information is thereby made accessible to persons in third countries with the technical means to access them.

Question 6: Does the Directive restrict freedom of expression or other freedoms and rights applicable within the Community (in particular, those enshrined in Article 10 of the European Convention of Human Rights)?

The ECJ considered that the provisions of the Directive do not, in themselves, bring about a restriction which conflicts with the general principles of freedom of expression or other freedoms or rights. It is for national authorities and courts responsible for applying the national legislation implementing the Directive to ensure a fair balance between those rights and interests.

Question 7: Can a Member State provide more extensive protection for personal data or give it a wider scope that the Directive?

Measures taken by Member States to ensure the protection of personal data must be consistent with the provisions of the Directive. They must also be consistent with the objective of the Directive of maintaining a balance between freedom and movement of personal data and protection of private life. However, the Court held that a Member State is not prevented from extending the scope of national legislation implementing the provisions of the Directive to areas not included by its scope, provided that no other provision of Community law precludes it.

The IPKat wonders whether data protection laws are going to be used as a back-door to protecting personal privacy rights. In Douglas and Zeta-Jones v Hello! the UK High Court awarded damages for breach of data protection rules, in addition to regular damages for breach of confidence, in an action for damage to the claimants’ “commercial privacy” interests (see IPKat blog, 12 November).

Famous injured feet in history here, here and here

SPOT THE DIFFERENCE

Under s.41(2) of the UK Trade Marks Act 1994, an applicant can file a single application for the registration of a series of marks where all of the marks “resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark”. Where a mark is considered unregistrable by the Registrar, under s.37(3) he must inform the applicant and give him an opportunity to make representations or amend the application, otherwise the application will be refused. The Lord Chancellor’s Appointed Person (LCAP) considered the requirements for series applications in the recent Gateway case.

Gateway applied to register a series of fifteen marks comprised of three or four “cow spots” (the characteristic black on white blotches found on many cows) for Classes 9 and 35 in a single application as a series. The Registrar refused the application, stating that the marks did not constitute a series since they differed as to their material particulars and that, furthermore, none of the applied-for marks could be divided into separate series (e.g. one of three spot marks and one of four spot marks) since the marks possessed a low level of distinctive character. What he meant by this was that any variation, including the number, size and configuration of the sports in each mark, affected the identity of each mark. Gateway appealed to the LCAP, arguing primarily that the concept behind all the marks was the same, so they would all “ring the same bell at the same pitch” in terms of their perceptions and recollections of the relevant consumer and that, even if this was not the case, Gateway should have been given the opportunity under s.37(3) to take corrective action to neutralise the objections. Gateway also objected to the test the Registrar used for determining the identity of the mark and doubted that he had made the assessment from the point of view of the relevant consumers.

The Hearing Officer’s decision was set aside and the case was remitted to the Registrar: According to the LCAP, the identity of a mark must be judged by reference to the specific individuality of that mark, assessed according to the way it would be perceived and remembered by the average consumer of the goods or services concerned, rather than by reference to the general nature or common characteristics of all the marks in issue. The average consumer here is reasonably well-informed and reasonably observant and circumspect. The assessment under s.41(2) requires an examination of whether all visual, aural and conceptual differences are insubstantial in terms of their effect on the identity of reiterated trade mark.

In this case, it was wrong to take an “all or nothing approach” i.e. that either all of the marks constituted a single series or none of the marks constituted a series. Instead, the marks could be divided into “sub-combinations” of marks that would satisfy the requirements of s.41(2). Comparing each of the fifteen marks with each other would require a hundred and five different comparisons, but it was not necessary for the LCAP to perform such a comprehensive analysis. Clearly there were differences in at least five of the comparisons that would modify the distinctive character of the marks in issue, according to their impact on the perceptions and recollections of the average consumer, and so the complete set of fifteen was not registrable as a series. However, since there was scope for some corrective action which would salvage some of the marks as a series, the Hearing Officer should not have denied Gateway the opportunity to take appropriate corrective action under s.37(3). It was for the Registrar to determine which marks could be saved, though the LCAP did not think that it would be sufficient to simply divide the application into one for three-spot marks and another for four-spot marks.

The IPKat notes that the LCAP has taken a narrow approach in requiring a mark-for-mark comparison and by not paying attention to the concept behind the series. Such a strict approach is called for by the wording of the Act. However, the IPKat also welcomes the LCAP’s realistic approach to the division of invalid series. Nevertheless, the IPKat wonders what benefit is conferred by being the owner of a series of marks. If the marks in the series are really so similar, then any use by a third party that infringes one of the series would in any event infringe all of the series, in which case it would be sufficient just to have a single registered mark.

European Court of Justice’s ruling on how to tell if marks are identical here
Identical cows here and here
Cow-spotting here, here, here and here

PATIENT: HEAL THYSELF!

Brandchannel reports on the increasing trend for pharmaceuticals, and even surgical procedures, to be marketed directly to patients. This became more of a possibility (in the US at least) in 1997 when the Federal Drugs Agency relaxed its rules on such advertising and drugs companies have gone to extreme lengths to promote themselves. For example, Medtronic placed ads for is incontinence treatment above public urinals while Zimmer, pioneer of a minimally invasive hip-replacement operation, markets briefcases, desk accessories, cups, hats, polo shirts, sweat shirts, sweaters and writing equipment bearing its company logo on its website. Patients are better informed about symptoms and available treatments as a result and can even ask for drugs by name. The internet has also proved a powerful tool in this process, e.g. Medtronic's spinal division has bought certain back-pain related search engine keywords. However, some doctors have expressed disquiet at this practice, arguing that patients sometimes misunderstand or are misinformed and that certain drugs and procedures are unduly "hyped" even when their benefits have not been properly proven.

The IPKat notes the central role played by trade marks in this process. While doctors may not be so swayed by "big brands" and can be expected to remember unwieldy generic names, this isn't necessarily true of patients. Instead, they may favour trade marked products, even where there is little difference between the advertised product and its generic equivalents.

Be your own doctor here, here and here

WHEN A TRADE MARK GETS IN A PICKLE

Bjornekulla Fruktindustrier Aktiebolag v Procordia Food Aktiebolag Case C-371/02 (blogged by the IPKat, 13 November) was a reference to the European Court of Justice for a preliminary ruling by the Svea Hovratt, Sweden, on an appeal from the Stockholm District Court (reported in [2002] ETMR 464). Swedish company Procordia owned the BOSTONGURKA trade mark for chopped pickled gherkins. Another Swedish company, Bjornekulla, which produced pickled gherkins, picked beetroot and similar items, sought revocation of the BOSTONGURKA mark, claiming it had lost its distinctive character and was now a generic term for chopped pickled gherkins. To support its argument, Bjornekulla submitted two consumer studies which showed that the majority of persons interviewed believed that the term "Bostongurka" could be freely used to describe any brand of pickled chopped gherkins. Procordia submitted its own report, based on the trade, showing that half of those interviewed recognised the BOSTONGURKA mark as a trade mark for pickled chopped gherkins. The revocation suit was dismissed since Bjornekulla failed to show the mark had lost its distinctive character. Bjornekulla appealed: if the public's perception of the mark was decisive in assessing whether a mark could be registered and whether a risk of confusion likely to constitute the infringement of the mark existed, the same was true for revocation. Procordia disagreed: the relevant public, it said, consisted of those involved in the marketing of the product. The court therefore decided to stay proceedings and referred the question to the ECJ.

In his Opinion, Advocate General Leger advised the ECJ that Article 12(2)(a) of the harmonisation directive, Directive 89/104, requires that, in order to determine whether a mark had become a common name in the marketing of a product for which that mark was registered, so that its owner was at risk of losing his rights over that mark, a global appreciation had to be made both from the point of view of the consumers or end users as from the viewpoint of the businesses which marketed those goods or services.

If this Opinion is accepted by the ECJ, the IPKat is curious to know how trial courts will apply it in situations in which, both among consumers and in trade circles, there is some identification of the disputed mark as being a trade mark but the preponderant majority in each case regard it as a generic term.

Advocate General Leger's Opinion here in French, German, Italian, Portuguese and Finnish
Original BOSTONGURKA gherkins here
Other pickled gherkins here, here and here

PLUMBER'S CASE NOT SO WATERTIGHT

Paul Davidson, the trader known as "the Plumber", is appealing against a High Court summary judgment that he breached his fiduciary duties to a company which held the patent to a revolutionary pipe-fitting device. The breach resulted from his role at Easyrad, where he held a 52% stake. Davidson was sued by other owners of Easyrad, after he sold a patent belonging to Easyrad to another company, Oystertec before its flotation in 2001. Davidson was a director of Oystertec at the float, but has since stepped down. The claimants alleged Davidson pulled out of a deal to pay them for their share of the patent ownership. The judgment says it is clear from correspondence "they were willing to give up their shares in Easyrad for a global compensation in the region of £715,000". Davidson allegedly sold the patent to Oystertec for a sum believed to be £3m, but refused to compensate the other owners. Davidson is yet to receive any money from Oystertec for the patent.

Deputy judge Peter Prescott QC said in the judgment: "I suspect that once the flotation had safely gone ahead Mr Davidson must have supposed that the claimants had lost most of their bargaining power, so why should he worry?" Acknowledging that a dispute between the owners could have rendered the patent worthless, he added: "The proper course was not to strip the patent out of the company for the potential enrichment of Mr Paul Davidson". Instead, Easyrad should have been put into liquidation and the patent sold "at the best price that could be got". The judge concluded: "it is unarguable that Mr Davidson considered that he was acting in the best interests of Easyrad. Such a defence would be fanciful". Davidson said the judgment was "the most ridiculous thing I've ever heard in my life. Of course I'm appealing." The judgment also upholds the claim for "equitable financial compensation against Oystertec" but does not dispute that Oystertec is the lawful owner of the patent.

The IPKat will be watching future events closely. If, as the report indicates, summary judgment was entered for the claimants, the judge must have felt Davidson's case was not only weak but completely untenable. This is a difficult position from which to seize an ultimate victory.

Earlier proceedings on the validity of the Oystertec patent here
More about plumbers here and here
More about oysters here, here and here

BAYONNE BLEEDER SUES -- BUT DOES HIS LAWSUIT PACK A PUNCH?

Findlaw reports that former heavyweight boxer Chuck Wepner is suing actor Sylvester Stallone for a share of the profits from the "Rocky" movies, claiming the series was based on Wepner's career. Wepner, a New Jersey club fighter, acquired the nickname "The Bayonne Bleeder" for what his opponents did to him even when he won. Wepner, who went nearly 15 rounds in a 1975 loss to Muhammad Ali, has filed a claim before a Jersey City Superior Court that Stallone repeatedly credited that fight as the inspiration for the 1976 Oscar-winning film, from which four sequels followed. "Stallone has been using Chuck's name - and continues to this day - in promoting the `Rocky' franchise without any permission or compensation", said Wepner's lawyer Anthony Mango. Michelle Vega, Stallone's publicist, declined to comment. The lawsuit claims Stallone made several promises to Wepner that he would be financially compensated over the years, though no payments were made.

The IPKat wonders what the legal basis for this claim might be. Stallone and the film’s makers are not alleged to have infringed any trade mark or copyright and, in the absence of any contractual duty to compensate Wepner, a mere promise to do so is not enforceable. Nor is it clear that any right of publicity has been infringed since, even if he was inspired by Wepner, Rocky is very much his own fictional character.

Rocky movies and merchandise
Bleeding boxers here and here
Other boxers here, here and here

INFORMATION SOCIETY OR INFORMATION OVERLOAD?

The New York Times reports on a study by the University of California at Berkeley’s School of Information Management and Systems finding that humans stored 5 exabytes (equivalent to the storage capacity of 50 million computers, assuming they all had hard drive capacities of 100 gigabytes) of information on paper, film or optical media in 2002. The IPKat notes that much of this information will be eligible for protection by copyright. This is especially true since by looking at recorded information, the study is focusing on works that will satisfy the fixation requirement that triggers copyright protection. This goes to show that although there are billions of works that are strictly entitled to copyright protection, the system relies on: (a) authors not enforcing their rights to trivial works and (b) the fact that most works will never be copied.

Information on coping with information overload here and here
Deadwood issues here and here

ADVOCATE GENERAL'S DECISION IN BJÖRNEKULLA - BUT NO ENGLISH YET

Advocate General Léger has delivered his opinion in Björnekulla Fruktindustrier v Procordia Food on the interpretation of Article 12(2)(a) of Directive 89/104 (the Trade Mark Directive). In order to determine when a mark is liable for revocation because it has become a common name in the trade for a product or service for which it is registered, we must look, in a global manner from the point of view of consumers and end-users of the types of goods or services concerned AND from the point of view of traders who commercialise that category of goods or services. The IPKat can't tell you any more because this is yet another case where the English translation is as yet unavailable. The IPKat is grateful though to Daphne Zografos of Queen Mary IPRI for translating the Advocate General's conclusions.

IS PATENT LITIGATION SUCH A DREADFUL THING?

The Patinnova '03 conference, jointly sponsored by the European Commission and the European Patent Office, brought 680 participants to Luxembourg's Hémisphère this week. A wide range of patent-related interests was represented: innovators and innovation managers, patent administrators and policy makers, patent information and search providers, patent insurance and financing bodies -- and of course patent lawyers.

Considering that there's no point in applying for a patent unless you're prepared to enforce it against infringers, many Patinnova participants were remarkably squeamish about the thought of actually going to court and suing someone. Professor William Kingston (Trinity College, Dublin), a veteran campaigner for reform of all aspects of the patent system, called for the compulsory use of arbitration, together with legal aid for respondents when patent arbitrations are appealed to the courts. He attacked the patent enforcement policies of large companies as being intimidatory and observed that money spent on patent lawyers was an inefficient allocation of valuable resources. IPKat co-contributor Jeremy Phillips however argued for a more sympathetic view. Patent litigation addressed issues that mediation and arbitration could not (such as interim relief); it was becoming more efficient with the introduction of specialist courts and pan-European jurisdiction and would be even better value once the IPR Enforcement Directive was adopted. The important thing was not to avoid all patent litigation like the plague, but for businesses to evaluate it (and its dispute resolution alternatives) in the same manner as it would evaluate any other business proposition on the bases of cost, benefit and likelihood of gaining a desirable outcome.

Patent litigation is not a lot of fun, particularly for any business that is dragged into it unwillingly. But nor should its advantages be ignored. The IPKat would like to hear of any readers' experiences of patent litigation, highlighting its strengths or its weaknesses. Just post a comment below or send an email.

Patent litigation insurance here, here and here
Patent alternative dispute resolution here and here

THE BIRD'S THE WORD

What do Larry Flynt, Jessica Lynch, Catherine Zeta-Jones, Gail Hipgrave, Prince Charles and a High Court judge have in common? They all get a mention on Media Beak, a new blog, recommended by the IPKat, which bills itself as "the new hot-off-the-press top topic discussion forum for media law". The IPKat wishes the Media Beak well, and looks forward to reading his views and news.

EWAN MCGREGOR WINS PRIVACY INJUNCTION

The actor, Ewan McGregor has won an injunction against the plans of French picture agency, Eliot Press, to publish photographs of his children on a family holiday in Mauritius. According to the BBC, the judge stated that he will “decide on damages for breach of confidence and invasion of privacy at a later date”. Meanwhile, Fraser Woodward, the agency that originally published the photos in question in December 2002 is defending an action by the actor for (again according to the BBC) “breach of privacy under the Data Protection Act”.

The IPKat eagerly awaits the judge’s decision, noting that this is a case involving a celebrity but one that is untainted by efforts to cover-up any scandalous doings of the person in question or the sales of pictures to a rival publication. The IPKat is also curious to know how the judge has treated/will treat the balance between breach of confidence and privacy, considering the hostile approach take to a free-standing privacy action in recent cases such as Wainwright and Douglas and Zeta-Jones and OK! v Hello!

Click here if you’re holidaying in Mauritius
Holiday snaps here, here and here

FAT CHANCE OF SPONSORSHIPS FOR JUNK FOOD JUGGERNAUTS

According to the Sunday Telegraph the UK Government's food watchdog, the Food Standards Agency (FSA), is proposing to ban junk food companies from sponsoring pop concerts and sports to combat obesity among children. The FSA says its targets would include Pepsi-Cola (which sponsors concerts by Britney Spears, Miss Dynamite, Beyonce and Enrique Iglesias) and Coca-Cola (which sponsors boy band Busted and girl band Mis-Teeq). McDonald's, the sponsor of Justin Timberlake and ITV's Pop Rivals, and Nestle, which supports ITV's Pop Idol, would also be affected by a ban.

In a consultation paper, the FSA says that pop stars should be used to promote healthy food instead of junk food, which has contributed to a doubling in the number of children with weight problems in the past 10 years. The proposal would have a profound effect on Britain's multi-million-pound sponsorship industry. McDonald's and Pepsi-Cola would be unable to sponsor the England football team, while the Sheffield Wednesday football club would lose its sponsorship from Chupa Chups lollipops. Walkers crisps' £3.5 million deal with Gary Lineker, the television presenter and former England football captain, would be under threat, as would Domino Pizza's deal with The Simpsons, according to the consultation paper, which also criticises advertising techniques used by Cadbury's and Kinder Eggs. Billboard and magazine advertising aimed at children and "pop-up" advertisements on the internet would be banned. Junk food companies would be barred from linking up with computer games and competitions and from targeting mobile telephones by text message when their owners are near a food outlet.

The companies are expected to resist any attempt to interfere with sponsorship. Pepsi-Cola's deal with the Football Association is worth an estimated £4 million, with long-term returns estimated at five times that figure. A spokesman for Walkers, which has used Michael Owen, Vinnie Jones, Victoria Beckham and the Spice Girls in its advertising, said: "We would vigorously defend our right to continue to use any high-profile personality in our campaigns". McDonald's however said it welcomed "the opportunity to be involved in the debate with the FSA". A spokesman said that the chain had put £14 million into local football sponsorship since 1993. "Our sponsorship will make it possible for 10,000 people to become football coaches", he said. The pop industry has also criticised the proposals. Julian Henry, who represents Pop Idol, S Club and MTV, said: "Record labels have become dependent on brands that want to support new pop talent. With sales of singles dwindling, brand investment is a critical part of the success of a new pop act. Part of the Spice Girls' appeal was that they could reach consumers in supermarkets and garage forecourts as well as on Radio One and Top of the Pops".

The IPKat wonders whether the proposals will have the desired effect. After all, it’s not as if sponsorship is the only way the junk food merchants can catch their target market. However, the cost of dealing with the medical problems brought on by obesity is expected to cost the UK £3.6 billion a year by 2010 and that’s a far bigger sum than the amount likely to be spent by then on sponsorship.

Smart food, junk food here
In praise of junk food here and here
Dangers of junk food here and here

BBC IN FAKE POPPY FURORE

The Guardian reports that in a recent episode of Film 2003, a poppy – the symbol of remembrance of Britain’s war dead worn at the beginning of November - was digitally superimposed on the presenter Jonathan Ross after the programme had been recorded. He had neglected to wear a poppy for that episode as he had also been shooting episodes to be viewed on other days. The BBC therefore stepped in, to avoid allegations that Ross was not paying due respect.

The IPKat wonders if the BBC obtained permission from the Royal British Legion to use its IP rights before taking this step. The Legion will have copyright in the design drawings of the poppy and in the poppy itself, perhaps as a sculpture, or a work of artistic craftsmanship which could be infringed by a 2-D digital copy. It may also have a trade mark right that could be infringed by the BBC’s actions – it could argue that the BBC’s digital poppy referred back to the real poppy and hence was a referential use, referring to the Legion’s use of its poppy mark for its services and hence is an identical mark, identical service situation. However, there is no design right case since infringement there requires making an article that embodies the design. The IPKat is still pondering the possibility of an action based on infringement of a plant varieties right ...

Poppy history here
How to grow poppies here

HELLO! SAYS GOODBYE! TO OVER £1 MILLION

Actions for breach of confidence in the UK rarely get to the stage at which the court is required to explain the basis upon which it makes its damages awards. This is why last week's judgment of Mr Justice Lindsay in Douglas, Zeta-Jones and Northern & Shell Plc v Hello! Ltd and others has attracted so much attention. In earlier proceedings the first to third defendants were found liable to all three claimants in connection with the publication of photographs of the wedding of Michael Douglas and Catherine Zeta-Jones in Hello! magazine, even though the happy couple had granted OK! the exclusive right to cover the event and publish photographs of it. All three claimants sought damages for wasted costs due to the rearrangement of contents which were to be published in future issues of OK!, as well as and a notional licence fee representing a reasonable sum which Hello! would have had to pay for permission to publish the unauthorised photographs. The Douglases also sought damages for distress and under the Data Protection Act 1998, while OK! sought damages for the loss of expected revenue from the two Douglas wedding issues which it had originally planned. Hello! challenged this head of damage, arguing that OK! had originally intended to publish just one Douglas wedding issue. OK! also complained that, by virtue of the publication of the unauthorised photographs in Hello!, those photographs were subsequently reproduced in some of the national newspapers, compounding the "spoiling" effect of Hello!'s publication of them.

In his judgment, Lindsay J started off by deciding that the Douglases' claims for distress and wasted costs were subsumed within their claim for a notional licence fee and that the claim by OK! for loss of expected revenue was in the alternative to its claim for a notional licence fee. Since the notional licence fee was only £125,000, which was not as great as the damages assessed on a compensatory basis, it was on the latter basis that damages would be awarded.

In the judge's opinion, if the events complained of not occurred, there would have been two OK! Douglas wedding issues, the print order for the first issue would have been increased to 2,500,000 and the print order for the second issue would have been 1,625,000. Assuming that those print orders would have been met by the printers, the total likely combined sales of those two issues would have been 3 million copies. Further, the publication of the unauthorised photographs in various national newspapers would not have taken place. In terms of causation, the newspaper publications were not so remote a consequence of Hello!'s publication that they should not be laid at Hello!'s door. Finally, taking into account the total cost of its putative sales, the loss of advertising revenue, credit for the actual sales and advertising, as well as wasted costs, Hello! was ordered to pay OK! £1,033,156. The Douglases fared rather less well in comparison, being awarded just £14,600 between them (this sum being made up of £3,750 each for distress, £50 each for damages under the Data Protection Act 1998 and £7,000 between them for wasted costs.

The IPKat notes that this case was fiercely contested from first to last and that hearings on pretrial issues reached the Court of Appeal on two occasions. He wonders whether even the very large damages award in this case would have exceeded the claimants' costs.

Say "hello" in more than 775 languages here ; say "hello goodbye" here
Can you keep a secret? Click here
Secret weddings here, here and here
More on unauthorised photos here and here

PROCTER & GAMBLE TOPS GLOBAL MARKETING LEAGUE

AdAge reports that Procter & Gamble was the biggest global advertising spender for 2002, laying out a total of $4.48 billion. The company has overtaken General Motors, the top spender of 2001. In total, the top 100 global advertising marketers spent $74.2 billion, an increase of 7.1% on the previous year. To be considered global marketers, companies had to advertise in three of four regions - North America, Europe, Asia and Latin America. Much of Procter & Gamble’s increase was the result of the purchase and integration of various pre-existing brands and businesses such as Wella, DOVE and SLIMFAST.

The IPKat points out that a global marketing strategy depends on having global trade marks protection. This is now a more easily realisable proposition, thanks to the introduction of the Community trade mark and the recent accession of the United States to the Madrid Protocol.

Do a spot of global marketing here, here, here and here

TRADE MARK REGISTRATION AND THE PUBLIC INTEREST

The IPKat attended the latest in the Queen Mary IPRI research seminar series on Monday, given by Dr Jennifer Davis of the IP Unit at Cambridge University on “A European Constitution for IPRs? Competition, Trade Marks and Socially Significant Signs”. She began by identifying two possible roles for trade marks: as social and cultural assets and as sources of competition since they can either enhance competition by stimulating innovation or inhibit competition by forming barriers to entry. While pre-1994, UK trade mark law paid heed to the former role by recognising the strong public interest is the prevention of the enclosure of the “trade mark commons”, EU trade mark law has the aim of enhancing free movement and competition within the EU and as a result the courts in applying the new trade mark law find it difficulty to take wider public interest concerns into account. This is largely because they are lacking a language or “discourse” with which to introduce these public concerns, since the concepts applied at the EU level are market-based and serve the interests of establishing and maintaining a frontierless internal market.

The extent to which the new regime takes a neo-liberal “let the market decide” approach is evident from the fact that although a series of public interest exceptions are set out in Articles 3(1)(b)-(d) of Directive 89/104 (for non-distinctive and descriptive marks and marks which have become customary in the trade) these exceptions can be trumped and registration can be obtained where the mark has acquired distinctiveness through use. Jennifer also illustrated the point by reference to the leading ECJ cases on the absolute grounds for the refusal of registration. Although in Windsurfing Chiemsee (place names as trade marks) and Libertel (colours as trade marks) the ECJ recognised that there may be a need to keep such marks free in the public interest, such signs could still be trade marks and would be governed by ordinary trade mark principles for the purposes of registrability, particularly acquired distinctiveness would render them registrable. This was even more apparent in BABY-DRY where the market perception was all-important in that if the market saw the sign as a trade mark then it would indeed be registrable, regardless of any public interest concerns. However, the ECJ has retreated somewhat from that approach in the recent DOUBLEMINT, where it held that certain signs should be kept free for other traders, even if no other traders are currently using the term in question.

Davis concluded by arguing that there is a need to realise that IPRs are more than just economic assets, but for this to happen, the language for looking at wider social concerns must be introduced into the new trade mark law. One way in which this could occur would be if the Member States agreed a statement of first principles based on considerations other than competition.

While the IPKat found it refreshing that Jennifer looked beyond the usual black-letter trade mark principles and is all in favour of limiting the registration of some trade marks both in the public interest (e.g. to guarantee free speech) and in the interests of other competitors on the market, he felt that there were certain unresolved issues. He doubts that the competition-based approach and an approach which considers the public interest are mutually exclusive. Keeping certain marks free for an applicant’s competitors to use ensures that the market remains competitive and delivers all the associated advantages to the public, as well as to the applicant’s rivals. Also, refusing such a mark registration for reasons based on competition will have the same effect as refusing such a mark registration based on broader public interest concerns, even if the reasoning used to reach the decision to refuse registration is different. In fact, there are public-interest safeguards written into the Directive. As well as the relative grounds, there are defences for descriptive use etc (although whether this covers trade mark use is not yet clear), there is the need for use by a defendant to be “in the course of trade” to constitute infringement and there may be a need for a defendant’s use to be “trade mark use” (the issue still isn’t totally clear). Furthermore, public interest terminology has worked its way into ECJ judgements, albeit with a flavour of protecting the interests of competitors despite the lack of an express mandate in the Directive: witness the affirmation of the “keep free” doctrine in Windsurfing Chiemsee and colour depletion theory in Libertel. Most importantly though is the question of what the public interest actually is. Davis seemed to suggest that there was no need for it to be defined in detail. Instead, it was important to recognise in principle that certain marks should be excluded from registration in the public interest, but that this could encompass various interests that could be sorted out in the future. While the IPKat thinks that there is merit in the idea of reserving space for public interest concerns to be played out, unless at least a non-exhaustive attempt at a definition is made, how can be know: (i) that the public interest is worth reshaping the way trade mark problems are argued for; (ii) that the public interest isn’t already adequately protected by the competition-based approach and (iii) what to include in the statement of first principles that Davis suggests?

Commons of note here and here
Save the commons here

JUDGMENT IN DOUGLAS & ZETA-JONES CASE

Last Friday, Mr Justice Lindsay delivered his verdict in the quantum of damages section of the action brought by Michael Douglas, Catherine Zeta-Jones and OK! Magazine against Hello! Magazine, following the latter magazine’s publication of unauthorised photographs of the Douglases’ wedding. The judge awarded the claimants a total of £1,033,156 collectively: £14,600 for the Douglases and £1,033,156 for OK! The IPKat will bring you more detailed analysis imminently.

How to choose a wedding photographer here
Wedding cake symbolism here
Let them eat cake! here and here
The icing on the cake here

TRADE MARK JARGON-WATCH - DILUTING EU PRINCIPLES?

The IPKat is somewhat disturbed by the decision of the Lord Chancellor’s Appointed Person, Geoffrey Hobbs QC in a recent opposition case under the Trade Marks Act 1994, s. 5(3) (that provision implements dilution-style protection, based on Article 4(4)(a) of Directive 89/104 in the UK). Direct Wines applied to register LE XV DU PRÉSIDENT as a trade mark for alcoholic beverages, wines, spirits and liqueurs. BSA opposed the application, based on its earlier registration of PRESIDENT for edible lard, cheese and dairy products which had been advertised by reference to the benefits those products conferred on a healthy lifestyle. The Hearing Officer rejected the opposition and BSA appealed unsuccessfully to the Appointed Person.

In reaching his decision, the LCAP used terminology that has no basis in EU-level law. He started off by stating that the “umbra” of protection conferred by a trade mark registration is found within the absolute protection given in s.5(1) in cases and that protection “within the penumbra” contemplated by the Act “radiates” outwardly from and by reference to the mark in question under ss.5(2) and (3) (ss.10(2) and (3) in infringement cases) and the goods or services for which it is registered. However, the concepts of “umbra” and “penumbra” have no basis in ECJ jurisprudence (although they have been mentioned in certain UK cases).

According to the LCAP, s.5(3) tests whether a later mark is “in compliance with the duty to distinguish” by considering whether, having regard to the distinctiveness and reputation of the earlier mark, there are differences between the marks and the goods or services of the two undertakings that would be sufficient in combination to avoid detriment or advantage of the kind prescribed. Protection cannot be granted under either s.5(2) or 5(3) merely because the two parties’ marks call each other to mind. Once again, the idea of a trade mark that is being applied for having “a duty to distinguish” introduces a new term into trade mark jurisprudence (although of course, a trade mark must be capable of distinguishing the goods of one undertaking from those of other undertakings to be registered). Another novelty is that he categorised taking unfair advantage as being a “positive effect” and detriment as a “negative effect”.

In this case, the earlier mark had a significant reputation acquired through use in the UK in relation to cheese and butter products, with particular emphasis on the natural qualities of those products. There was no evidence that Direct Wines adopted its mark with BSA’s mark in mind nor was there any evidence that concurrent use of the two marks would lead to a likelihood of confusion. While there was an affinity between cheese and wines and the two types of products would be of interest to the same types of consumer, the dissimilarities between the marks and goods in issue would combine to make it unlikely that Direct Wine’s use of LE XV DU PRÉSIDENT bring BSA’s PRESIDENT mark to mind or vice versa. The distinctive power of the PRESIDENT mark in relation to BSA’s goods was not strong enough to support any other conclusion and the “necessary element of cross-pollination” was absent “between the two strains of use”. Again, this final requirement of “cross-pollination” is purely domestic and is arguably an analogy that has been taken too far – what on earth are “strains of use”? The IPKat thinks this sounds rather too much like plant varieties.

The IPKat feels that the introduction of a layer of home-grown terminology is unhelpful. What does it add to the principles that have been articulated for the whole of the EU by the ECJ? Even more worryingly, the indigenous jargon could be taken as adding extra requirements to those set out in Directive 89/104 and by the ECJ, at odds with the harmonising principle of EU trade mark law. When formulating and applying such home-grown terminology, domestic trade mark jurists should be careful to ensure that the boundary between analogies that merely clarify EU principles and analogies that illegitimately add extra requirements to registrability and infringement cases is not blurred. The IPKat also feels that the LCAP’s approach is curious in that at para 17 of his decision he states that the test under ss.5(3) and 10(3) is

“Whether, having regard to the distinctiveness and reputation of the mark entitled to protection, there are differences (in terms of marks and goods or services) that would be sufficient in combination to avoid detriment or advantage of the kind proscribed.”

It is curious that the LCAP wants us to look at differences between the marks and goods rather than similarities. This seems to suggest that the default position is that a mark is unregistrable under s.5(3) or is infringed under s.10(3) where an earlier mark has a reputation, this being a position which must subsequently be disproved. This is odd because the burden of proving the requirements of ss.5(3) and 10(3) is on the opponent and mark-owner respectively, rather than on the applicant or defendant.

Help deciphering jargon here and here
Discover the affinity between cheese and wine here, here and here
More than you ever wanted to know about cheese here, here and here
What to do with cheese after you’ve drunk rather a lot of wine here

iTUNES: HE WHO PLAYS THE PIPER MAKES A LOSS

The Register reports that iTunes, the Apple “legitimate” music downloading service is losing money. This is because much of the 99c per song fee goes in the form of licence fees to RIAA. On top of this, Apple had to develop the software that powers the downloading and to maintain the downloading site. The company plans to make a profit by associated hardware tie-ins, like its iPod potable music players. The Register criticises Apple’s approach, asking why it is “helping an extinct, and unworthy industry back on its feet” and helping “ancient copyright rules spin the money back to the pigopolists”, rather than supporting a compulsory licence scheme where all artists are paid a flat rate for their performances. It concludes that the reason is that, in the interests of vanity, Apple is keen to be the first successful legal download company.

While the IPKat is disappointed that Apple is not breaking even in running its service, he isn’t sure that he agrees with The Register’s analysis of Apple’s approach. Whether or not a compulsory licence scheme of the sort the article advocates is desirable, at present the copyright laws require the payment of licence fees and Apple is providing a valuable service in running a legal downloading facility and thus filling a demand in the market that was not adequately catered for.

iTunes here
i Claudius here
i For an Eye here

VODKA WARS: "STALIN IN A BOTTLE" CONFUSINGLY SIMILAR TO LEADING BRAND

In an English High Court decision last week, Mr Justice Laddie came out in support of the principle that Trade Mark Registry decisions should not be analysed to death in appellate proceedings. In AC Prodal 94 Srl v Spirits International NV Prodal applied to register two marks that consisted of labels attached to vodka bottles, their most distinctive feature being the word STALINSKAYA. Spirits, who owned the well-known trade mark STOLICHNAYA, opposed under the Trade Marks Act 1994, s. 5(2), arguing that there was a likelihood of confusion. On appeal Prodal argued that the hearing officer (i) failed to give proper consideration to the existence of other Russian-sounding vodkas that had nothing to do with Spirits' marks and (ii) wrongly assessed the conceptual and visual similarities between the marks, in that its mark had "Stalin" in the middle, while STOLICHNAYA didn't.

Laddie J dismissed Prodal's appeal, warning that an appellate court should be wary of indulging in an over-meticulous analysis of first instance judgments. In this case the hearing officer was perfectly entitled to conclude that, for most people, the existence of the name "Stalin" did not jump out and immediately give rise to a reference to a former leader of the Soviet Union. He assessed the impact of the two marks, bearing in mind imperfect recollection, and was entitled to reach his conclusion, which was a fair assessment of the visual similarity. Laddie J added that it was not the duty of the court to overturn a decision of the Trade Mark Registry simply because it had reached a conclusion it might have decided differently. It had to be demonstrated that the decision was wrong in a material way and was a significant departure from a proper assessment of the law and the facts.

The IPKat notes that, in the wake of the ECJ rulings in Gofkid and Adidas v Fitnessworld, Spirit could have obtained the same result by opposing under the Trade Marks Act s. 5(3).

More on Stalin here, here and here
Stalin and vodka here and here
Vodka cocktails here, here and here
Make your own vodka here

POLICE THREATENED BY COPYRIGHT NAME CLAIM

Recently in the news is Missouri motorist Daniel Smith. When stopped by police near Independence, Missouri, following a driving accident, threatened to sue them under copyright laws if they wrote down his name. Smith, 45, allegedly told officers his name was copyright protected and that, every time it appeared on their documents, he would launch a $500,000 lawsuit. He reputedly added that, if his claim wasn't paid within 10 days, it would cost them $1.5 million and that, if they didn’t pay up at that point, judgments would be entered against all parties involved and their property.

The IPKat marvels at Smith’s cheek. Even if copyright vested in a name (which does not appear to be the case: see Exxon Corporation v Exxon Insurance Consultants [1982] Ch 119), he suspects that Smith is not its author and wonders whether title to his name devolved to him as a beneficiary of his parents’ estate. The only plausible thing about Smith’s assertion (viewed from a European perspective) is the generous scale of the damages you can get in the United States.

Copyright in names? Not for Ewoks or Elvis
What is copyright infringement? Find out here, here and here
Copyright infringement damages issues here and here

ADVOCATE GENERAL CLEANS UP DISTINCTIVENESS QUERIES

Yesterday, Advocate General Ruiz-Jarabo Colomer delivered his Opinion in the joined cases of Henkel v OHIM and Procter & Gamble v OHIM, where the two companies appealed against CFI decisions that the three dimensional shape of their small blocks of compressed detergent with different colour layers and coloured speckles intended for use in washing machines or dishwashers were devoid of distinctive character under Article 7(1)(b) of Regulation 40/94 and hence were not registrable as CTMs. The Advocate General opined as follows:
1. Distinctiveness should be judged both at the time of application and at the time of registration. Distinctiveness at the time of registration had to be relevant because a mark is liable to be declared invalid under Article 51 if it ceases to be distinctive. It would make no sense if a mark was granted because it was distinctive at the time of application but then was immediately liable to be declared invalid because it had ceased to be distinctive by the time it was registered. The problem of signs that have lost distinctiveness through being copied during the registration procedure would be avoided because the Office excluded from its analysis of distinctive character other operators’ signs that have been used solely to obstruct the registration of the applied-for mark.
2. It was incorrect argue that it is unnecessary for OHIM to be particularly strict when assessing the distinctive character of a sign since the interests of competitors are protected by the defences recognised in Article 6 of Dir 89/104 and Article 12 of Reg 40/94. The question of distinctiveness is meant to be assessed by the Office at the examination stage, and not by the court in an infringement action, especially because leaving the task to the courts would put competitors at a disadvantage as there is a reluctance to question official documents once a mark is registered.
3. A mark isn’t distinctive just because there are no other products on that market with that feature since it is not the number of products on the market that it is determinative of distinctiveness. Instead, it is how the average consumer perceives them. Additionally, the number of products on the market is of no assistance where a mark is descriptive.
4. The CFI’s finding on the degree of attention paid to the tablets by the average consumer was a finding of fact so could not be re-examined by the ECJ. However, if the degree of attention was a legal issue, it made sense that the average consumer’s level of attention for everyday goods would be lower than his attention for luxury goods.
5. The CFI was right to judge distinctiveness by comparing the marks applied for with a paradigm composed of features which spring to mind if the shape of the product is imagined and then determining if the features that were found in the applicant’s shape but not in the paradigm were distinctive, rather than comparing it to shapes of products already on the market because the CFI’s test was less dependent on the vagaries of the market. However, it would be more fitting to carry out such an analysis under Article 7(1)(c) (descriptiveness) because the examiner is looking at whether the sign is no more than a representation of the graphic description of the product. Conducting that analysis would also enable the examiner to look at whether there is a need to keep the shape free for other traders – a consideration that cannot necessarily be assessed under Article 7(1)(b). Since the CFI’s basic test was correct, the court should not consider whether the CFI was correct to find that the arrangement of colours and the rounding edges of the tablet were not distinctive since this was a question of fact within the jurisdiction of the CFI.
6. While it was uncertain whether the Article 7(1)(c)-type analysis of whether a sign needs to be kept free for other traders to use could be considered under Article 7(1)(b), this did not mean that extensive protection should be granted to signs which aren’t descriptive, but are for other reasons devoid of distinctive character. This is because there is a general interest in maintaining in the public domain signs which are incapable of identifying the commercial origin of the goods or services which they designate. However, the Libertel principle of exhausting the limited range of colours available and thus giving certain competitors an anti-competitive advantage did not apply to shapes. Additionally, the CFI was possibly in error in saying that all of the absolute grounds for the refusal of registration in Article 7(1)(b) to (e) were meant to prevent the grant to one operator alone of exclusive rights which could hinder competition on the market for the goods or services concerned. Nonetheless, in the test of comparing the applicant’s shape to an obvious shape (the ideal paradigmatic concept of the product i.e. how it “instinctively comes to mind”) to assess its distinctive character, the CFI had not improperly employed the “keep free” criterion.

The IPKat isn’t quite sure how one decides what the paradigmatic shape of a product is. The IPKat would base his idea of what such a shape would be on shapes which were already on the market (for example, the IPKat’s idea of a notional washing tablet would almost certainly be square), which is problematic if the shape is of a product which is not yet on a market. If anyone has any bright ideas about how the determination of paradigm shapes should be conducted, please let the IPKat know. The kurious kat also notes that the Advocate General is very much in favour of limiting “keep free” type arguments to Article 7(1)(c)-(e) as the recent DOUBLEMINT case suggests but he is somewhat puzzled by the Advocate General’s comments on there being a public interest in keeping signs that are not descriptive but are also not distinctive in the public domain. The tension between these two ideas remains to be resolved.

Detergents: history
Soaps and detergents here
How Henkel keeps Germany clean here
Some famous tablets here and here (at p. 2)

LATEST REPORTED TRADE MARK CASES

The November issue of Sweet & Maxwell’s European Trade Mark Reports , slightly delayed by postal strikes in London, is now reaching readers. Cases now available in English for the first time are

• Christian Dior v Makro (Court of Appeal, Madrid), where the sale of luxury perfumes such as POISON and CHRISTIAN DIOR in an out-of-town site alongside dog food and pork bellies was held to infringe those trade marks;
• Boehringer Ingelheim v MTK Pharma (Hanseatisches Oberlandesgericht, Germany), where MTK wasn’t able to argue that it was necessary to repackage CATAPRESAN blood pressure products after it was shown that other parallel traders had succeeded in reselling it without the need for repackaging;

If you know of any European trade mark case which you’d like to see reported in the ETMR, please email us and let us know.

SUING FAKE COKE WITNESS IS NOT AN ABUSE OF PROCESS

Trade mark owners have received a boost to their fight against counterfeiters in the decision of Mr Justice Rimer in Coca-Cola Co Ltd and another v Ketteridge and others (31 October 2003). In August 2001 Coca-Cola discovered what they thought was a counterfeiting operation by a company, Capella, involving the importation from Turkey of large quantities of cola contained in unlabelled bottles which Coca-Cola asserted were confusingly similar to their bottles. The labelling took place at an industrial estate which was raided by Trading Standards Officers following a tip-off. Coca-Cola successfully sued Capella and one of its directors,for trade mark infringement. At the trial two members of the Ketteridge family (Ray Junior and Ray Senior) gave evidence and it was the revelations that arose in their cross-examination that convinced Coca-Cola that they had been major players in the operation. Both denied involvement. Ray Junior submitted that Coca-Cola's action against him was an abuse of judicial process and should be dismissed. He argued that, if Coca-Cola wanted to sue him at all, they should have sued him in the first action since they knew from an early date that he had been at the industrial estate on at least two occasions, that he owned half Capella's shares and that he was a director and a partner of the director who was found liable in the earlier proceedings.

Rimer J threw out the abuse of process argument. Ray Junior was not being harassed by successive litigation and there was no justice in the proposition that, if Coca-Cola successfully sued other defendants, they were automatically precluded from suing him later. In any event he was too late to argue the abuse of process point. If it was ever an abuse, it had to have been an abuse from the moment Coca-Cola issued its claim form, which was the time he could and should have sought to strike the action out. Instead he had put in a defence and had defended the claim on its merits. On the facts, Ray Junior had participated in the counterfeit operation, but Ray Senior hadn't.

The IPKat agrees that Ray Junior's point was untenable. Coca-Cola could hardly be expected to join Ray Junior as a defendant in the earlier trial just while he was just finishing off giving evidence in it.

Make your own Coca-Cola here
Things to do with Coca-Cola here, here, here and here
Dangers of drinking Coke here and here

CONFUSE A COW

The IPKat brings you news of another CFI Community trade mark judgment. Pedro Díaz v OHIM was decided on Tuesday. Díaz applied to register CASTILLO for, inter alia, dairy products. However, Granjas Castelló, the proprietor of an earlier Spanish mark, EL CASTILLO for condensed milk, opposed the application. In this case, Díaz appealed against the Board of Appeal’s refusal to register its mark for cheese under Article 8(1)(b), finding that there was a likelihood of confusion because of the similarity of the goods and the marks. The CFI dismissed the appeal. Although the marks were pretty clearly similar, the court wasn’t too impressed with the Board of Appeal’s reasons for finding that cheese and condensed milk were similar. The fact that both condensed milk and cheese could be used as ingredients in cooking did not make them similar because this is true of most other foodstuffs. It was also unlikely that the two could be used as substitutes for people who are lactose-intolerant. However, the CFI found that the two were similar as they belonged to the same “product family” i.e. although the relevant public would know that the way in which the products were manufactured were different, they would be aware of the essential characteristics of the two sets of goods and would conclude that those differences did not prevent them from being made or sold by a single undertaking. Also of interest is the Court’s holding that the fact that the marks were similar and the goods were similar meant that there was “prima facie a likelihood of confusion between the marks”. Finally, the CFI commented on the effect of the existence of other similar marks on the market on the likelihood of there being confusion, finding that confusion would be less likely if one of any co-existing marks had a reputation.

The IPKat notes that even in a relatively routine Article 8(1)(b) case such as this, the CFI has introduced a couple of new principles. There is still scope for further guidance on the circumstances in which confusion will be found. Such guidance will come to light as new fact-patterns are presented before the EU courts. He observes that the CFI has adopted a Continental approach in its willingness to find confusion, prima facie at least, as a matter of law, rather than fact, following automatically from the fact of the similarity of the marks and the similarity of the goods.

Milk mad? Click here and here
Despise dairy? Click here and here
Recipes with condensed milk and cheese here , here and here

WHAT'S IN A NOSE?

Ananova reports that, in a study of 100 women who had undergone a variety of cosmetic operations in the past two years, 19% gave up holidays to finance the surgery while 12% spurned home improvements. The Harley Medical Group reports that those having a nose job (rhinoplasty) were most likely to give up a holiday (33%), while women seeking breast surgery opted to take out loans (31%). Liposuction patients were most likely to do without home improvements (20%).

The IPKat is contemplating the intellectual property aspects of rhinoplasty. The Patents Act 1977, s.4(2), following Art. 52(4) of the European Patent Convention, refuses patent protection to any "method of treatment of the human ... body by surgery". As for the nose itself, a sculpted nose (i.e. not a genetically modified or cloned one) is not precluded from patentability but is unlikely to fulfil the patentability criteria. An inherently distinctive human nose may be registered as a trade mark without the need to show that it has acquired distinctiveness through use (as a trade mark, that is). So long as its form is not dictated by its function, a nose created by plastic surgery may be protected by design right. As for copyright, it might even be a "work of artistic craftsmanship" under the Copyright, Designs and Patents Act 1988, s.4. The IPKat asks whether rhinoplasty, and indeed other forms of cosmetic surgery, should be entitled to the protection accorded to other intellectual creations and, if so, what should that protection be? The usual prize will be awarded for the best answer.

More about rhinoplasty here, here and here
Nose sculptures here and here
Noses of note: Michael Jackson here and here, Cyrano de Bergerac and Jimmy Durante
Noses that work: click here and here
Artificial noses here and here

TOTES LOSE UMBRELLA CASE CASE

Lord Justice Jacob has just delivered his first Court of Appeal judgment today in A Fulton Company Ltd v Totes Isotoner (UK) Ltd were rival manufacturers of cloth cases for portable folding umbrellas. Since those umbrellas folded into an oblong shape, the cases which housed them were also oblong. Fulton's "Miniflat" cases were of an open flat box construction with a cuff, which had a slit in one corner to facilitate insertion of the umbrella. The stitching along the lines of the case gave it a sharp box-like appearance. Totes' cases were initially straight copies of the Miniflat case. However, once they heard of Fulton's registered design rights, Totes changed its cases by removing one short side of the cuff altogether and making a 'cut out' design. Fulton alleged infringement of its unregistered design right on the basis that the 'cut out' design had been made by copying the design of part of the article and was an exact reproduction of that part. The trial judge (Judge Fysh in the Patents County Court) held that Fulton was entitled to unregistered design right in the 'cut out' design and that totes' cases infringed that right. Totes appealed, contending that the law conferred no separate unregistered design right in a design for only part of a product. Only one thing had been designed, the Miniflat case as a whole, and they had used the 'cut away' design, this being a different design which Fulton had not envisaged. The Copyright Designs and Patents Act 1988, s. 213(2) provided that "design" meant "the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article". Under the same Act, design right did not subsist in a method or principle of construction or in "features of shape or configuration of an article which (i) enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function, or (ii) are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part, or (c) surface decoration. ...".

The Court of Appeal dismissed the appeal, holding as follows:
1. A designer who finds that part of his design had been copied is entitled to complain, even if the remainder of the design hasn't been copied.
2. It was clear from s. 213(2) that unregistered design right subsists in any aspect of the shape and configuration of part of an article. The change to the design in this case didn't alter the whole design and thus a different overall design, since part of the copied design was to be found in the alleged infringement.
3. There was nothing in the word 'aspect' which narrowed the meaning of s. 213(2), since the notion conveyed by that word in the composite phrase 'design of any aspect of the shape or configuration of the whole or part of an article' was 'discernible' or 'recognisable'.
4. Totes' argument overlooked the exceptions provided for by s. 213(3) of the Act, particularly the 'must fit, must match' exceptions, which were features of the shape or configuration excluded from the subsistence of design right and which, if present, were parts of an article.
5. A designer was entitled to prevent the copying exactly or substantially of part of his design, unless that part was excluded from protection because it was not original or fell within the must fit, much match exceptions. Since Totes had copied an aspect of part of the Miniflat case, it had infringed the design right.

The IPKat didn't think this appeal ever had a chance of succeeding and marvels that it was brought at all. Jacob LJ reviewed the literature on the scope of design protection, going all the way back to 1990, as well as all the cases, and could find no merit in it.

Click here for umbrella covers and stands
Things to do with umbrellas here and here
Umbrellas in art here, here and here
Umbrellas in culture here and here
Umbrellas in nature here

IPKAT MUSING: COPYRIGHT CHANGES AND FREE SPEECH

The UK courts have argued in Ashdown v Daily Telegraph , Hyde Park Residences v Yelland and Imutran v Uncaged Campaigns that they should not consider Article 10 of the European Convention on Human Rights (which guarantees freedom of speech) directly when they are deciding what the public interests exceptions are to the enforcement of copyright. The reason given for this is the right of free of speech has been sufficiently provided for in advance by the specific defences to copyright infringement listed in the Act. However, the new Copyright Regulations limit these defences. The IPKat wonders whether the courts will still assume that the streamlined defences meet the UK’s Article 10 ECHR obligations, or whether they will feel the need to reassess the situation.

GUEST BLOG: EDGAR FORBES ON PRIVACY - COMMERCIAL COMMODITY OR HUMAN RIGHT?

Our guest blogger, Edgar Forbes, is Senior Lecturer in Media Law and Intellectual Property at Bournemouth University. Edgar writes:

It’s official. There is no Right of Privacy in the UK. Forget promises by the European Convention on Human Rights or the Human Rights Act that “Everyone has the right to respect for his private and family life, his home and his correspondence” are there to protect privacy. Nor, it would seem, do these legislative provisions require English law to recognise privacy as a fundamental human right.

In rejecting that English law should recognise a tort of privacy Lord Hoffmann in Wainwright and another v Home Office [2003] UKHL 53 (16 October 2003) states: “There seems to me a great difference between identifying privacy as a value which underlies the existence of a rule of law (and may point the direction in which the law should develop) and privacy as a principle of law in itself”. The judgment narrows the scope of privacy and steers the law away from the more rights-based approach seen in recent cases. Privacy proponents had been cheered by Sedley LJ’s approach in Douglas v. Hello! Ltd that “The law no longer needs to construct an artificial relationship of confidentiality between intruder and victim: it can recognise privacy itself as a legal principle drawn from the fundamental value of personal autonomy”. While not rejecting Sedley LJ’s approach outright, Lord Hoffmann decided to dismiss it as “a plea for the extension and possibly renaming of the old action for breach of confidence”. This was echoed in Lord Scott’s dictum “whatever remedies may have been developed for misuse of confidential information, for certain types of trespass, for certain types of nuisance and for various other situations in which claimants may find themselves aggrieved by an invasion of what they conceive to be their privacy, the common law has not developed and overall remedy for the invasion of privacy”.

So why is there such a judicial reluctance to embrace privacy per se? In his judgment Lord Hoffmann made reference to the US tort of privacy but, citing Dean Prosser’s taxonomy (Dean Prosser: The Law of Torts, 4th ed 1971), concluded that it required privacy to be broken down into a number of ‘loosely-linked torts’ which casts doubt upon the value of any high-level generalisation. “English law has so far been unwilling, perhaps unable, to formulate any such high-level principle”.

Whether unwilling or unable, the approach of the House of Lords is that (1) there are sufficient laws and legal principles that can extend to cover alleged violations of what people ‘conceive’ to be their privacy; (2) the fact these laws exist is sufficient to satisfy the requirements of the European Convention and Human Rights Act and (3) since it is for the legislature to make laws, it is for Parliament and not the Courts to formulate them. The UK legislature has thus far avoided any attempt at formulation. The 1990 Calcutt Committee and the recent Government response to the 5th report of the Culture, Media and Sport Select Committee on Privacy and Media Intrusion (published 16 June 2003) concluded that neither a right to privacy nor a right to freedom of expression were absolutes ― they should be weighed against each other. This was, the report concluded, best left to self-regulation.

Where serious intrusions occur, self-regulation seems to have provided insufficient remedy and is confined to those it seeks to regulate. The Press Complaints Commission states that the “use of longlens photography to take pictures of people in private places without their consent is unacceptable” yet decided that a beach was not sufficiently private a place when newscaster Anna Ford complained about the publication of close-up shots of her on holiday. Similarly a park was not a private place when actress Kate Beckinsdale complained about pictures of her and her daughter in a park. Meanwhile Radio 1 DJ Sara Cox was awarded an out of court settlement for unwanted holiday snaps of her and her partner. So where’s the rationale? Is a lack of legal principle leading to haphazard protection of values?

In Douglas v. Hello!, Michael Douglas and Catherine Zeta Jones were awarded damages for an illicit photograph taken at their wedding, which they had already commercialised by selling the exclusive image rights to OK magazine. So they invite photographers to a private occasion and get damages while others are lying on a beach minding their own business and can’t claim for the longlens intrusions they suffer. How can this be? In short, if you commercialise your image or private life, the law can furnish protection through one of its traditional tort based remedies. If you have not put a monetary value on your privacy and rely on it being a moral right, then tough. The House of Lords has confirmed that the law is unwilling or unable to help.

Lord Hoffmann refers to privacy as a value rather than a principle, an approach that perhaps explains why the law seems happy to entertain a commoditised version of privacy as a property right rather than a fundamental human or moral right. How else can it be that such an intimate violation as an improperly conducted strip search (as in Wainwright) is unworthy of remedy. How can someone be interviewed and photographed in a hospital bed (see Kaye v. Robertson [1991] FSR 62) and the courts not find that his privacy was invaded because he did not own or occupy the hospital room and his body was not touched (so no trespass occurred). How can Lord Hoffmann admit that the European Court concluded that the UK did not offer Geoffrey Peck (see Peck v. United Kingdom) adequate remedy after CCTV images of him were widely publicised without his consent but then deny it has anything to do with privacy. Mr Peck was suicidal and was caught on CCTV attempting to slit his wrists. After the images had been viewed by over 9 million people on prime time television Lord Hoffmann still felt able to dismiss such a gross intrusion on privacy as showing “no more than a need, in English law, for a system of control of the use of film from CCTV cameras which shows greater sensitivity to the feelings of people who happen to have been caught by the lens”.

So is that what the Government says is best left to self-regulation? Is the fact that no existing tort was committed and Mr Peck had not tried to sell his image rights on the CCTV sufficient argument to deny Mr Peck a remedy? The European Court declared that it was not. Yet the House of Lords has made no attempt to embrace the message in that judgment or the spirit of the European Convention in their judgment in Wainwright. So what does this mean for privacy? The law will protect things derived from people’s private life such as information, images or reputation yet it seems unwilling to protect privacy per se. In other words, the law will recognise the property rights attached to privacy ahead of personal or moral rights.
This shifts the legal imperative from protection of a human right to protection of a commercial value in that right. Privacy has become an intellectual property right.

CANDID CAMERA COPYRIGHT CONUNDRUM

According to the BBC, a row has broken out over the ownership of a series of tapes allegedly featuring the late Princess Diana talking candidly about her marital problems. The tapes were made during lessons on public speaking that she took with voice-coach Peter Settelen and were seized during raids on the house of Paul Burrell – the Princess’ former butler. Settelen has issued an ultimatum to the police, saying that if the tapes are not returned to him by Wednesday he will commence legal proceedings. However, Diana’s family, headed by Earl Spencer, is arguing that the tapes belong to it and is seeking to have them destroyed.

The IPKat notes that the issue of who owns the copyright in the tapes is highly complex. Ordinarily, although the person featured speaking on a video (or his or her heirs) would own the copyright in the literary work comprised of the words he or she says and the dramatic work comprised of any actions that he or she performs while being recorded. However, the person who set up the video camera would own the copyright in the actual recordings. Where the work is made in the course of employment, copyright will vest in the employer. However, where the recording is made during freelance employment such as this seems to be, the copyright will remain with the author unless there is a provision in the contract of employment to the contrary.

Elocution lessons here and here
Advice on public speaking here and here

KOOL KARMA DESIGNER SEEKS OUT-OF-BODY SHOP RELIEF

According to today’s Daily Telegraph Peter Wylly, an award-winning designer, is suing The Body Shop for infringement of one of his product designs. The Body Shop, he alleged, copied his distinctive “Kool Karma” incense burner without his permission. The incense burner, designed in 1998, had the appearance of a 1950s abstract sculpture; its circular shape enables oil to be heated over a tea-light candle. Wylly sold 100,000 of the burners to The Body Shop in 1999 before the retailer stopped placing orders, telling him that the product was not selling. But this summer he noticed that The Body Shop was selling a scaled-down version of his design, made in Taiwan. The Body Shop told him that the smaller product, the Circle of Life Aroma Jar, had been one of their top sellers over the past two years. It was still on sale last month, priced £10. Accepting liability for infringement, The Body Shop offered to pay Wylly 35p for every jar sold outside the United States and Mexico. Wylly, represented by Beachcroft Wansbroughs solicitor Robin Fry, is asking the Patents Court to order the company to give an account of the profits it has made from selling the item.

The IPKat notes that design right infringement has suddenly become the flavour of the month in the UK (see also “First Community Design Action Ends in Win for Mattel”, posted on IPKat yesterday).

More on Karma here, here and here
Click here for No Karma, Bad Karma, Sweet Karma and Club Karma
Circle of Life concepts here, here and here

GET YOUR PATENTS OFF MY BUSINESS METHODS

According to The Register the US Federal Trade Commission (FTC) has called for the US Patent and Trademark Office (USPTO) to apply tougher standards in granting patents and has urged Congress to establish a mechanism to permit companies to challenge patents more easily. The current US practice of allowing patents for business methods (for example the Amazon One Click patent) has generated controversy in the IT business and indeed beyond it. “There is widespread concern about patent quality and that means there is widespread concern that there are patents out there that shouldn’t be issued”, said FTC chairman Timothy Muris.

Recognising the strain which an estimated 300,000 patent applications a year place on USPTO staff, the FTC is calling for increased funding which will allow the agency to tackle a two-year long backlog. The FTC would also like a procedure to be established for enabling rivals to challenge a patent without resorting to costly litigation, as well as the introduction of a lower burden of proof for the invalidation of any patent.

The IPKat welcomes the FTC’s proposals. US patents for business methods have provoked anxiety in US trade circles and ridicule in Europe, particularly where the invention appeared to be nothing other than the performance of an existing business method by means of a computer. As for extra funding, the IPKat recalls that charges have been made for some years that IP filing fees have been appropriated for the subsidy of non-IP activities. It would be good to know that all money collected from patent and trade mark applicants and owners actually went into funding the USPTO’s operations.

Diversion of US patent fees here and here
State Street: the respectable face of US patents for business methods here and here
Monkey business methods here, here, here and here

OLÉ USA

Today is the day that the USA’s implementation of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) becomes effective. As of today, trade mark applicants will be able to designate the USA as a jurisdiction for international registration and base its registrations on a home registration in the USA. For the mean time however, US Madrid applications must be made on paper because of technical difficulties with the electronic filing system.

The IPKat welcomes this development .US registration is a vital part of many companies’ international trade mark exploitation and protection strategy and this will make it easier for those companies to achieve this and for US-based companies to gain protection in other jurisdictions.

The USPTO’s Madrid Protocol guide here
WIPO’s Madrid Protocol site here
Americans in Madrid here
To find your way around the Madrid System click here

WHY A BEAR LICENCE ISN'T ALWAYS A GOOD IDEA

The Daily Telegraph reports on the latest twist to the battle over the rights to Winnie the Pooh. The author, AA Milne transferred the rights to Stephen Slesinger in 1929. His widow licensed the use of Winnie the Pooh to Disney but she now claims that she is owed royalties on DVDs, videos and software that were not covered by the original licensing agreement. However, Disney claims that it does not have to pay as it has made a deal with Clare Milne, the grand-daughter of AA Milne, who argues that she is entitled to reclaim the rights from the Slesinger family following the passage of the Sony Bono Copyright Act. Previously the US judge had rejected Clare Milne’s claim but now she has said that "substantial ground for a difference of opinion" and Milne has been granted the right to appeal.

The IPKat notes that this case is possible because the US Copyright Act contains a provision allowing authors and their heirs and successors in title to reclaim copyright that they have licensed to others after a certain period of time. The IPKat would be very interested hear about any jurisdictions that have similar provisions in their copyright laws.

The section of the US Copyright Act allowing for copyright licences to be terminated here
The Sony Bono Act here
AA Milne here
Christopher Robin here but not here
More about Winnie the Pooh than you wanted to know here, here and here
Play Pooh Sticks here or here
Pathology in the Hundred Acre Wood here

FIRST COMMUNITY DESIGN ACTION ENDS IN WIN FOR MATTEL

The Trademark Blog reports from Yahoo! that on Friday US toymaker Mattel Inc. obtained a ground-breaking European Union-wide decision against German company Simba Toys for selling products that copy Mattel's MY SCENE range of dolls. The High Court, London, ordered Simba Toys to stop making, distributing and selling products sold under the name MY STYLE in the European Union. The Court further ordered Simba to request the return of those products from retailers and its other customers, declaring that Simba had infringed Mattel’s Community design rights in its MY SCENE range of dolls.

The news report stated that, since the High Court's decision was based on Community design rights, it applies across the whole of the European Union. This would therefore be the first time that any court in Europe has made a Union-wide Order based on a Community design right. The Court ordered Simba to inform all those supplied with the infringing dolls of the Court's order, and ask for return of the infringing products. In addition, the High Court awarded Mattel costs (including legal fees) and ordered Simba to make an interim payment of £450,000 to Mattel while the detailed costs are assessed. Simba must also pay Mattel damages suffered as a result of the infringement throughout the European Union, which remain to be determined in future proceedings.

The IPKat has not yet found an available transcript of the judge’s decision in this case, but will post further information as and when it becomes available.

More on Community design rights here and here
MY SCENE dolls here
Designer dolls here, here and here