BIG DAY FOR BAHRAIN; NEW InfoTLR; ECJ TO RULE ON MEANING OF LIFE

1 Big day for Bahrain

15 December 2005 - the day before National Day - will see one hell of a celebration among intellectual property enthusiasts in the Kingdom of Bahrain: on that day it accedes to

* the Madrid Protocol on the international registration of trade marks,

* the Nice Agreement on trade mark classification,

* the Patent Law Treaty,

* the WIPO Copyright Treaty and

* The WIPO Performances and Phonograms Treaty.

The IPKat is thrilled. No longer will anyone be able to say that there is a 'Gulf' between Bahrain and other countries in terms of its IP protection.

Information on IP law and resources in Bahrain here and here
Planning to visit Bahrain? What the British Council can do to help.


2 At last, another InfoTLR

Issue two of Lawtext Publishing's bimonthly law report series, Information Technology Law Reports, has now been released. These reports frequently carry intellectual property-related cases, though this issue does not. It focuses on

* Johnson v Medical Defence Union Ltd (on a data subject's request under the UK's Data Protection Act 1998 for access to data held by him, contrasted with his right to secure the same information through normal disclosure procedure in the course of civil litigation),

* Tektrol Ltd v International Insurance Company of Hanover Ltd and others (insurance repercussions for viruses and loss of source code following a burglary) and

* Computer 2000 Distribution Ltd and other v ICM Computer Solutions plc (sale of goods issues arising out of delivery of hardware in pursuit of a fraudulent purchase).

The IPKat has a soft spot for the InfoTLR and hopes he doesn't have to wait too long for the next issue!

3 European Court of Justice to rule on the meaning of LIFE

Flag Thursday 6 October in your diaries: it's Judgment Day in Case C-120/04 Medion. This is the reference for a preliminary ruling on whether the single word mark LIFE, being

"a single word with ‘normal distinctiveness’ and which, although it does not shape or mould the overall impression conveyed by the composite sign, has an independent distinctive role",

is likely to be confused with the later mark THOMSON LIFE. The referring court wants to know whether the German doctrine of Prägetheorie is part of European trade mark law. Prägetheorie (from the Advocate General's Opinion at para.8) is explained as follows:

"The starting point in determining trade mark similarity where individual components of conflicting trade marks are the same is the overall impression conveyed by the marks; what must be ascertained is whether the common component characterises the composite mark to the extent that the other components are largely secondary to the overall impression. There will be no likelihood of confusion on the sole ground that the common component merely contributes to the overall impression. Nor does it matter whether a sign incorporated in a composite mark has retained an independent distinctive role. Individual elements in the overall presentation of goods may however have a distinct role that is independent of the distinguishing function of other components; the components are then viewed in isolation and compared. A component of a sign which the trade recognises as designating not the product as such but the undertaking from which it originates is not generally regarded as characterising the sign. Where a designation of an undertaking is recognisable as such it should as a rule be secondary in terms of overall impression because the market concerned identifies the actual product designation from the other component of the sign".

The Advocate General's advice to the Court was as follows:

"In determining whether a composite word or word/figurative sign comprising a company name followed by an earlier mark which consists of a single word with ‘normal distinctiveness’ and which, although it does not shape or mould the overall impression conveyed by the composite sign, has an independent distinctive role therein is sufficiently similar to the earlier mark to give rise to a likelihood of confusion on the part of the public within the meaning of Article 5(1)(b) of Council Directive 89/104, a national court must base its assessment on the overall impression given by each mark, bearing in mind, in particular, their distinctive and dominant components, the nature of the public concerned, the category of goods or services in question and the circumstances in which they are marketed".

In other words, the answer's "no" but you'll probably get the same answer to the "is it likely to confuse?" question whether you apply Prägetheorie or follow the words of the Advocate General in respect of 99% of given facts. Anyway, to find out what the ECJ says, don't forget to check this blog next Thursday for news and comment.