BUTTERWORTHS ... AND MORCOM; MORE ON THE EESC

The Modern Law of Trade Marks

LexisNexis Butterworths doesn't have much to say about its once fabled intellectual property publications these days. If you click on Intellectual Property in its web catalogue, you are treated to a list of 27 titles. 17 of these titles are designated SOLD TO TOTTEL PUBLISHING, which leaves just ten. The ten remaining titles include

* Hayward’s Patent Cases 1600-1883, which is of purely historical interest to most IP practitioners today;

* The Index and Digest of the Reports of Patent Cases 1884-1955, which was not a particularly popular title even when it was current;

* The Reports of Patent Cases for 1884-1996, since which time that excellent series has been published by old rivals Sweet & Maxwell.

But don't despair: Butterworths still has a couple of leading IP books on its list. One, The Modern Law of Trade Marks (edited by barristers Chris Morcom QC, right, Ashley Roughton, James Graham and Simon Malynicz), has just been published in its second edition. Astonishingly, the publishers' website has very little information about this book, other than its contents list, publication date, price (£239) and ISBN.

For anyone who perseveres in the teeth of the publishers' coyness and actually gets hold of the book, there's quite a treat in store. The first edition, published in 2000, was something of a pioneering exercise: the book had to establish its niche in a market dominated by the then long-dormant Kerly ; it had to decide whether to produce instant history by referring constantly back to the "old law" or whether to make a relatively fresh start (it chose the latter); it also had to develop an individual character, being the second title in Butterworths' "Modern Law" IP series but being less punchy and opinionated than its irrepressible, brainy and rather attention-seeking sister, The Modern Law of Copyright.

The new edition does not need to break new ground, but rather to firm up the ground that already exists, by increasing its descriptive content in the light of a massive accretion of case law and registry practice and by deepening its analysis of the many concepts - those already contained in European trade mark law and those seeking illicit entry from Germany - with which the practitioner and his clients must struggle. The second edition does this admirably. It is the IPKat's impression that The Modern Law of Trade Marks is a book that is read and used more often than it is cited, but the habits of lawyers do not change overnight and it may take a few more editions before this title gains the respect it deserves. By which time, Merpel muses, it will probably be published by Tottel ...


More on the EESC

Yesterday the IPKat asked readers for comments about their thoughts and experiences regarding the European Commission's European Economic Social Committee's Opinions. The Kat's friend, solicitor and commentator on design law John Sykes (Lupton Fawcett) writes:

In researching for my book IP in designs [reviewed here by the IPKat], I read all the 'legislative history' for the Designs Directive and Designs Regulation (thereby qualifying for the prized golden anorak). The influence of the EESC Opinions is hard to judge unless perhaps you are deeply and closely involved in the progress of a particular piece of legislation. This was certainly so in relation to the EU designs legislation as other opinions and comments were rife such as from the Parliament, the Commission and even a dispute resolution body. I recall that some changes were made after the EESC gave its opinion but whether the change was as a result of the opinion or other wider political moves I do not know.

However, since the EESC Opinions would be part of the 'legislative history', it is possible in relation to some particular legislation that the opinions expressed by the EESC may influence the interpretation of that legislation by the CFI or ECJ and possibly even at national level.

Many thanks, John. Shamnad Basheer (an Associate at the Oxford Intellectual Property Research Centre) has also written in. He mentions the EC proposal pertaining to compulsory licensing for exports, adding:

The Parliament just voted on this and it will not be long before this comes into force. I guess a very strategic move, in the light of the upcoming WTO Hong Kong meeting, where the EU and US are at loggerheads with some of the developing countries, particularly with regard to bio-resources (see link here.)