NOT SO FAST IN ZOTON PATENT CASE; LEMONADE BOTTLE APPEAL FAILS

This little curiosity cropped up in the Patents Court on 11 October but was noted on subscription service Lawtel only this morning: it's the decision of Mr Justice Pumfrey in a case management issue, Takeda Pharmaceutical and Cyanamid of Great Britain Ltd v (i) Teva UK Ltd and (ii) Sandoz Ltd and Sandoz GmbH, [2005] EWHC 2191 (Pat).

Teva and Sandoz were defendants in separate patent infringement actions brought by Takeda, who owned three patents for pharmaceutical formulations for lansoprazole (a.k.a. Zoton), and by Takeda's licensee Cyanamid. Teva and Sandoz both applied to bring forward the hearing date of a patent infringement action to a date earlier than that already fixed in the second action, the case against Sandoz. The trial of the action was scheduled to take place in April 2006, but Cyanamid notified Sandoz that it intended to apply for interim relief to take effect in December 2005, when the supplementary protection certificate for the basic active ingredient was set to expire but its own patent remained in force.

Teva argued that an earlier trial date would not prejudice Cyanamid, since substantial preparation for the trial of the same issues against Sandoz had already been made. Sandoz supported an earlier trial date since circumstances had changed since the trial date was fixed for April 2006. Given the vast sums that may be made from selling Zoton, the presence or absence of patent protection, even for a short time, gave financial justification to the defendants' pressure to bring the trial forward; the same consideration also meant that any undertakings in damages given by Takeda would be pretty colossal too.

Pumfrey J refused the application. In his view the April 2006 trial date should be left as it was, mainly because there was some doubt as to whether the action against Teva would be ready for an earlier trial. The state of the evidence was unsatisfactory and matters of some complexity could potentially be raised. The trial of the second action would be left as it was, while trial of the first action would take place in the same window already appointed for the second action.

The IPKat is always fascinated to see how judges exercise their case management powers. In this case Pumfrey J did so with some trepidation since, as he put in (para.13): "I find myself in some uncertainty as to the correct approach in this case since ... the competing considerations are both cogent and incommensurable".

Discover Lawtel for yourself here.


French without tears, but what about the lemonade?

The decision is only in French and German, but the IPKat (who, alas, can't handle either language competently) is prepared to guess what it's about. It's Case T-12/04 Almdudler-Limonade A. & S. Klein v OHIM. Correct the IPKat if he's wrong, but it looks like an application to register the shape of a three-dimensional lemonade bottle shape (click here and scroll down for the official version; the bottle as used is illustrated on your right) as a Community trade mark for lemonade (Class 32). The application looks as if it were refused for lack of distinctive character and the appeal was dismissed both by the Board of Appeal and the Court of First Instance for the same reason.

The IPKat mewses on the fact that it would be nice to gain access to the CFI's decision in English too.

X FACTOR CASE HAS THE EX FACTOR

The IPKat is grateful to Steve Palmer of Rawlison Butler, who has pointed him in the direction of the BBC’s report that the X Factor copyright/breach of confidence case has settled. In the case (which managed to confuse the blogmeister by having two parties called Simon) Simon Fuller, creator of the Pop Idol musical television talent contest, sued Simon Cowell, one of the judges of Pop Idol after Cowell set up a musical television talent contest named the X Factor.

The terms of the settlement agreement are confidential, but it seems that Fuller’s production company gets a minority holding in certain IP rights in the X Factor, and Cowell has agreed to front five more series of Pop Idol.

The IPKat is horrified by the though of five more series of Pop Idol. Will the format last the course, or will it become jaded and give way to the next big reality TV trend?

JIPLP AT LAST

At last ... it's JIPLP

Issue 1 of the Journal of Intellectual Property Law & Practice, published monthly by Oxford University Press, has now been released. IPKat co-blogmeister Jeremy, who edits it, would like to thank everyone who has been involved in this project from its inception.

Below, left: JIPLP launches with an exciting half-day programme and champagne reception next Monday

The contents of this issue include articles by Olivier Vrins (Altius) and Marius Schneider (Gevers) on trade mark use in respect of goods in transit through the European Union, Sheldon Burshtein (Blake Cassels & Graydon) on whether domain names are property, Ewan Nettleton and Brian Cordery (Bristows) on groundless threats actions, and by Jeremy himself on the deployment of non-IP specialist judges in applications for summary judgment and striking out. Other features include a Practice Point by Ian Karet and Nemone Franks (Linklaters) on the expert witnesses and a State of Art view of IP harmonisation.

Subscribers can read all JIPLP's contents via its advance access feature, which enables them to read articles, notes and comments as soon as they have been set for publication instead of having to wait for them to be printed and posted. Full contents of issue 1 here.

NEWS FROM FRANCE AND RUSSIA

France cuts levy on flash memory devices

Playlist reports that France is to cut its levy on flash memory devices. Although it is legal to copy music for private use in France, copyright-holders recoup royalties through a levy on media that can be used for copying such as blank cassettes and hard-disks. Under the French Commission on Private Copying’s plans, the fee on flash drives will be brought into line with the less fee on hard disks. Apple in particular is expected to benefit from this move. Presently the levy on its 4GB iPod nano is more than twice that on its standard 60GB iPod because the nano utilises a flash memory device which the standard model operates on a hard disk. The IPKat think this sounds eminently sensible. If a distinction has to be made, it would make more sense to base this on the amount of copied music that the device can hold, rather than the technology by which the device operates.


Vodafone seeks to "regain" Russian trade mark

MosNews reports that British company Vodafone is to embark on legal action to have the Russian registration of VODAFONE transferred to it. The mark has been registered in Russia by another company that has not used it. However, the British company does not presently trade in Russia and says that it has no plans to do so.

The IPKat is in two minds about this one. It’s right that famous marks that could cause confusion, even if the mark owner is not trading in the territory in question, should not be used by others. However, the general principle is that if you don’t use your trade mark – or at least intend to use it – you lose it.

IGNORANCE NO EXCUSE; BRILLIANCE NO EXCUSE EITHER

Ignorance is still no excuse

This little case skipped across the IPKat's path: it's another summary judgment dispute, Polydor Ltd and others v Woodhouse and others, which came before Mr Justice Lawrence Collins in the Chancery Division yesterday. So far it has only appeared as a note on the Butterworths All England Direct service.

Polydor and the other claimants belonged to the British Phonographic Industry Ltd (BPI), an organisation that represents the interests of recording companies and seeks to protect their collective rights. The identity of the second defendant had been obtained through an order made against various internet service providers, whose internet facilities had been used by P2P file-sharers for infringing copyright in sound recordings.

On obtaining a sample of files downloaded by the BPI, Polydor sent a letter before action to the second defendant. After he failed to provide a satisfactory response, Polydor sued for infringement. The second defendant admitted he owned the P2P software and conceded that his children used it to download music, but said he did not know that his acts infringed, that he made no money from his actions and that he no longer had any music download sites on his computer. Polydor applied for summary judgment against him on the basis that he had no defence to the action, the application being supported by evidence obtained from a shared directory in the second defendant’s name.

Below, left: UK courts pioneer new punishment for ignorant copyright infringers

Lawrence Collins J allowed the application, on the evidence before him. It was clear that the second defendant had the internet account and was the named account holder. Noreover, in respect of 'primary' infringements, it made no difference whether the defendant knew or had reason to believe that what he did was an infringement. The IPKat agrees. While ignorance or innocence are factors that may go to the issue of how the court treats an infringer, they do not affect the fundamental issue of whether he infringes in the first place. Copyright owners and their representatives are now doing a great deal to publicise their rights, which in any event reduces the chance of any infringer persuading a court of his innocence.

Ignorance is no excuse here or here
Ignorance is bliss here


Turning brain-power into big bucks?

The IPKat forgot to blog this yesterday: it's the Telegraph's account of the debate between Cambridge University and its academic employees over control of the intellectual property rights (for which read valuable patents, designs and industrial copyrights) in works created by the latter.

Being an academic himself, the IPKat is thinking better of expressing his views free of charge. Merpel however thinks this review of the issues is pretty well balanced, as are the issues themselves. It's a question of finding the right degree of flexibility to ensure that academics are neither solely responsible for the commercial exploitation of their IP rights nor excluded from the process (or the proceeds) of that exploitation.

How to make the most of brains here and here

NEW IPQ; IN PRAISE OF PACKAGING

Latest IPQ

The fourth and final issue of Sweet & Maxwell's scholarly Intellectual Property Quarterly for 2005 has now been published and it has a decidedly Chinese flavour to it. First, An Qinghu (Director General, China Trade Mark Office) writes on the discovery of a three-dimensional Chinese trade mark, going back to 1917, while Herchel Smith scholar Ke Shao investigates some of the early philosophical and commercial roots of Chinese copyright law.

Sadly there is no article on Chinese patents, but the other two main features in this issue are, in their very different ways, quite thought-provoking. Barbadian scholar David Bradshaw examines the recently-enacted UK provisions on access to copyright works by the visually impaired, while David J. Brennan (University of Melbourne) looks at English patent claims as property definers, incidentally revisiting some of the IPKat's favourite legal history research by Wyndham Hulme.


Message in the bottle

The IPKat found this nice little piece in today's Telegraph about the part played by packaging in the making of an iconic brand. ABSOLUT and RED BULL are singled out for special praise.

The feature is an interview with Rexam's Lars Emilson, who is currently very much in the news as his company prepares to gobble up the bottle-making bit of St-Gobain.

CHINA TO AMEND IP LAWS

The NC Times reports that China is to reform its patent laws in order to meet its WTO obligations. The proposals for amendment are due to be presented to the Chinese Parliament next year.

Although China's substantive IP laws are generally thought to meet its TRIPs obligations, enforcement is lax and there can be sizeable delays in obtaining patents because of a backlog in applications.

A Chinese patent

Thus, the following reforms may be on the cards:

• a simplification of patent application and examination procedures
• possible adoption of international standards in granting patents
• improvements to patent protection
• possible amendments to copyright and trade marks
• the introduction of specialist IP courts
• measures protecting China's biological and genetic resources, perhaps through requiring patent applicants to disclose the origin of the materials they use

The IPKat says that IP laws that are strong on paper are worth nothing if they're not backed by suitable enforcement measures. He hopes that China will be in a position to reform its laws in a way that benefits Chinese IPR holders and users, as well as foreign owners and users.

RARE DEFENCE FAILS AGAIN; SUNRISE, SUNSET FOR .EU

Knight on the tiles

Forticrete Ltd v Lafarge Roofing Ltd is yet another decision by newly-appointed Patents Court judge Mr Justice Kitchin, issued on Friday and trailed on Butterworths' All England Direct online service.

Forticrete, who had a patent for roof tiles, sued Lafarge for infringement by making and selling its Duoplane tile. Lafarge wished to amend its defence, arguing that it was allowed to carry on its allegedly infringing acts in reliance on the defence of the Patents Act 1977, s.64(1) ("Where a patent is granted for an invention, a person who in the United Kingdom before the priority date of the invention (a) does in good faith an act which would constitute an infringement of the patent if it were in force, or (b) makes in good faith effective and serious preparations to do such an act, has the right to continue to do the act or, as the case may be, to do the act, notwithstanding the grant of the patent; but this right does not extend to granting a licence to another person to do the act"). Lafarge said its Duoplane tile was based on an earlier design which it had made, kept and used in the UK before the priority date of Forticrete's patent.

Forticrete argued that Lafarge's defence had no real prospect of success since the evidence in support of its contentions did not establish that Lafarge had made ‘effective and serious preparations’ to do an act ‘which would constitute an infringement of the patent if it were in force’ in relation to the earlier design of tile. Forticrete added that, that if such preparations were proved to have been done, Lafarge had not established that they were undertaken in respect of the Duoplane tile.

Kitchin J refused to allow Lafarge to amend its defence. He held that the overriding requirement of s 64 was that a defendant had to establish that the activity which he sought to undertake was substantially the same as the activity it had undertaken prior to the priority date, or that it had made effective and serious preparations to do such an act. In this case, while there was an arguable case that the design of the Duoplane tile had been based on an earlier design, the chain of causation was insufficient to attract the protection of s 64 of the Act. This was because the Duoplane tile was neither identical nor similar to the earlier design. Lafarge, accordingly, had failed to establish that it had a real prospect of success under the section.

The IPKat notes that s.64 is raised successfully as a defence only rarely. The narrow circumstances in which its criteria are fulfilled demonstrates why this is so.


Sunrise, here we come

The IPKat's friend Ian Lowe reminds us that phase 1 of the sunrise period for dot.eu domain name applications starts on 7 December 2005. Dot.eu domain names are European Community based and all applicants must be resident, have their registered office or principal place of business, or be established, within the European Community.

Phase 1 sunrise applicants must also

* be the holder (or licensee) of a valid registered Community trade mark or national trade mark of a member state and
* apply to register a domain name that corresponds to the trade mark in question.

If you wish to take full advantage of phase 1 of the sunrise period, you must arrange to file an application through one of the 500 accredited dot.eu domain name registrars in advance of 7 December. A list of registrars is available on the EURid website at www.eurid.eu. Each registrar will file applications in the order in which they are received.

An applicant whose application is the first to be received at the EURid registry for a particular name on or after 7 December will then have 40 days to validate rights to the registration by lodging evidence with EURid's validation agent. If the validation fails then the name will be offered to the next applicant in line for the same name.

Phase 2 of the sunrise period starts on 7 February 2006 when holders of other prior rights including unregistered trade marks or company names may apply. The sunrise period closes on 7 April 2006 and applications will then be accepted on a first-come-first-served basis.

The IPKat is trying really hard to get excited about this, but with little success. He wonders how popular dot.eu names will be with anyone (except EU institutions) in its earliest phases. Merpel says, isn't it a shame that dot.eu has taken so long. Where was it ten years ago, when it would really have appealed to commercial entities (and to cybersquatters...)?

What is sunrise? Click here to find out
Sunrise lyrics here

COMING UP IN THE ECJ

The IPKat has discovered that the following legal delights currently before the ECJ:

• Hans-Peter Wilfer v OHIM - can patent agents appear before the CFI?
• SGAE - do transmissions to televisions located in hotel rooms count as communication to the public for copyright purposes?
• Armin Häupl v Lidl Stiftung & Co KG - acceptable reasons for non-use in trade mark revocation cases
• Levi Strauss & Co v Casucci SPA - scope of protection against infringement for marks with acquired distinctive character, and the time at which consumers' perception of such marks becomes relevant.

A full list of pending IP cases can be viewed on the Patent Office website.

DON'T FORGET - RON MARCHANT ON MONDAY

Don't forget that this Monday, QMIPRI is hosting an interview with Ron Marchant, Chief Excutive of the UK Patent Office.

All are welcome and there's no charge.

It's not too late to say you're coming - email Ilanah for further details.

WHATEVER HAPPENED TO GAT? CONSERVATION OF ENERGY; PATENTING LIVES

Does anyone know ...

... what has happened to Case C-4/03 Gesellschaft für Antriebstechnik mbH & Co.KG (GAT) v Lamellen und Kupplungsbau Beteiligungs KG (LuK)? This was a 2002breference to the European Court of Justice of the following question:

"Is Article 16(4) of ... the Brussels Convention to be interpreted as meaning that the exclusive jurisdiction conferred by that provision on the courts of the Contracting State in which the deposit or registration of a patent has been applied for, has taken place or is under the terms of an international convention deemed to have taken place only applies if proceedings (with erga omnes effect) are brought to declare the patent invalid or are proceedings deemed to be concerned with the validity of patents within the meaning of the aforementioned provision where the defendant in a patent infringement action or the claimant in a declaratory action to establish that a patent is not infringed pleads that the patent is invalid or a nullity and that there is also no patent infringement for that reason, irrespective of whether the court seised of the proceedings considers the plea to be substantiated or unsubstantiated and of when the plea is raised during the course of the proceedings."

The Advocate General issued his Opinion in September of last year, which means that the ruling is about eight months overdue now. Has the case settled? Is the question too difficult for the ECJ to rule on? Is the court objecting to it being phrased in such a long and complex sentence? Is it being consolidated with other cases? Or is it stuck in the same dark hole that the BioMild and Postkantoor cases disappeared into before they finally emerged? The IPKat would be grateful for any clue. Merpel adds, does anyone have an English language copy of the Advocate General's Opinion?


Laws of physics foul patent application again

This little case popped up on the Lawtel subscription-based legal information service this morning: Duckett v Patent Office, a ruling yesterday by Patents Court new boy Mr Justice Kitchin.

Duckett applied to patent an invention with a propulsion unit with electric and hydraulic systems which, he said, used an alternator to maintain a battery at full charge while providing further electricity for auxiliary power. The hearing officer ruled that this application contravened the law of conservation of energy as it appeared to create energy out of nothing. In any event, while the invention was novel, it was obvious. The application was refused for not having industrial application (since it broke the law of conservation of energy) and for lack of inventive step.

Kitchin J dismissed Duckett's appeal, holding that the hearing officer's decision was reasonable. The invention was indeed not only obvious but contrary to well-established principles of physics. The IPKat is starting to wonder whether, in the light of a recent spate of applications to patent inventions that run contrary to the laws of physics, we're about to see a rewrite of the laws of physics ... Stop dreaming, says Merpel.


Patenting Lives

The IPKat's friend Johanna Gibson wants to remind you about the Patenting Lives Conference, which takes place next week (programme here; registration form here). Backed by the Arts & Humanities Research Council, Patenting Lives will be held at the Clore Management Centre, Birkbeck College, London. Patenting Lives is not just a boring, crusty old conference - it's a multidisciplinary celebration of the various dimensions to the patenting of life and it's not even that dear (£150 for the full two days; reductions for one-day-only participants and students; special rates for anyone accompanied by his/her clone ...)

The project also has its own blog now - so do remember to visit it.

IKEA TO REBRAND?

The IPKat has come across a rather unlikely rebranding suggestion through MosNews.

Vladimir Zhirinovsky, the leader of Russia’s nationalist LDRP party has suggested that IKEA rename itself LDRP. Zhirinovsky argued that the party’s mark is similar since both consist of four letters and feature the colours blue and yellow. He points out that LDRP has used its mark since, 1989 while IKEA’s mark has only been used in Russia since 2000.

Zhirinovsky reckons that a change of name will lead to more sales for IKEA. He also suggests that the homeware store begin selling Zhirinovsky perfume, Zhirinovsky vodka, caps and t-shirts with LDPR’s logo. Customers would also receive an LDPR booklet and a record of Zhirinovsky’s songs for free.

The article does not record IKEA’s response to this suggestion.

The IPKat could understand if Zhirinovsky was trying to stop IKEA from using its mark in Russia, but encouraging a defender to change its similar mark to an identical mark is rather unusual.

BUSY DAY FOR LES LUXEMBOURGOISIES

ECJ cornucopia

Not even the industrious IPKat can hope to deal with so many tip-top IP decisions from Luxembourg all in one go, so he has put together a little list. Today's freshly posted cases on Curia include

* Case C-421/04 Matratzen Concord AG v Hukla Germany SA. This is an Advocate General's Opinion on a reference from Barcelona on what is essentially a question of how one interprets Article 3(1)(c) of Directive 89/104: "under what conditions can a trade mark be registered in a Member State where, in the language of another Member State, it is not distinctive but merely denotes or describes the product concerned?" TM enthusiasts will remember the CFI's earlier ruling in 2002, on a dispute over a Community trade mark application, that MATRATZEN (which means "mattress" in Germany") was validly registered as a trade mark in Spain. Here Advocate General recommends that ECJ rule that

"Article 3(1)(c) of Council Directive 89/104 must be interpreted as meaning that a sign consisting solely of a word or words which denote the product which it covers or describe the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the product in the language of one Member State may not be registered as a trade mark in another Member State where a significant proportion of traders in and consumers of that product can reasonably be expected to understand the meaning of the word or words".

The IPKat keenly awaits the ECJ's ruling (late Spring 2006, he guesses), in the confident knowledge that whatever ruling results will infuriate either the Spaniards or the Germans (who now comprise a sizeable proportion the Spanish population).


* Case T-135/04 GfK AG v OHIM, BUS-Betreuungs- und Unternehmensberatungs GmbH. GfK applied to register as a CTM the word mark ONLINE BUS for statistical and consultancy services in Class 35. BUG opposed, citing an earlier registration of a mark that looked like this (left) but which was only used like this (right). The Opposition Division and the Board of Appeal both upheld the opposition, finding a likelihood of similarity: they also held that the differences between BUG's mark as registered and as used had not undermined the distinctive character of the mark as registered. The CFI agreed.

Right: now this is what the IPKat calls a real ONLINE BUS

Merpel says, it's strange to find a case where the tribunal has to expend as much energy comparing the opponent's mark as registered with the mark as used as it spends in comparing the opposing parties' signs.



* Case T-346/04 Sadas SA v OHIM, LTJ Diffusion marks a return to the limelight of one of Europe's most popular disputes: the battle between the owners of the ARTHUR and ARTHUR ET FELICIE marks. This time, Sadas applied to register ARTHUR ET FELICIE as a word mark for goods in Classes 16, 24 and 25. Sadas opposed, citing earlier registrations in Classes 24 and 25 of its figurative ARTHUR mark (left) and claiming that there was a likelihood of confusion.

Although in previous litigation before the ECJ Sadas argued successfully that ARTHUR ET FELICIE was not identical to ARTHUR, this time round it could not persuade the CFI that the respective marks were insufficiently similar to remove the likelihood of confusion between them.

The IPKat is sure that there must be some really exciting story that lurks behind this dispute - a family vendetta, perhaps - and keeps fuelling it when common sense and financial prudence would have stopped either side getting embroiled long, long ago. Does anyone know the real story?


* Case T-3/04 Simonds Farsons Cisk plc v OHIM, Spa Monopole intervening. The applicant was really asking for trouble here, picking a litigious foe like Spa Monopole and then trying to register this figurative mark (left) in the teeth of Spa's earlier registration of KINNIE for much the same goods. Well, the CFI dismissed the applicant's appeal with costs, which was always going to be the most likely result.


* Case C-431/04 Massachusetts Institute of Technology. This was a reference from the Bundesgerichtshof on the meaning of the words “combination of active ingredients of a medicinal product” within the meaning of Article 1(b) of Regulation 1768/92 on supplementary protection certificates. Advocate General Leger advises:

"The concept of “combination of active ingredients of a medicinal product” within the meaning of Article 1(b) ... must be interpreted as meaning that it does not preclude the grant of a supplementary protection certificate to a combination of two substances, one of which is a known substance with pharmacological properties of its own for a specific therapeutic indication and the other is necessary for the therapeutic efficacy of the first substance, for this indication".

The IPKat would not dare to pass comment on this without reading it carefully first, so he invites his readers to offer their thoughts in the meantime.

FINAL REMINDER; THE X-FACTOR

Are you game for a little theory?


Why do some businesses have a sue-on-sight policy for infringers, while others are more laid back? Why can it make good sense to 'infringe' your own IP rights? What is an n-person iterated non-zero-sum game? If you ever wanted the answer to any of these questions, come and support IPKat's co-blogmeister Jeremy when he speaks this evening on 'How to Win at Monopoly: Applying Game Theory to the Enforcement of Intellectual Property Rights'.

The lecture, in the Current Legal Problems series, takes place at 6pm today in UCL's Bentham House, conveniently near Euston Station. Mr Justice Lightman is in the chair.


X Factor dispute

The BBC reports on the action brought by Simon Fuller against The X Factor which, he claims, infringes the format of his Pop Idols programme. Fuller claims that the ITV1 show copies his Pop Idol format. Fuller's company 19 TV, which created Pop Idol and American Idol, is taking action against FremantleMedia, Cowell and his firms Simco and Syco. Cowell, who became a household name as a Pop Idol judge in 2001, called the claim "utterly ridiculous".

The trial continues. The IPKat will bring you the result. He expects, though that the court will stick to the party line that there is no copyright in a TV programme format.

OUT OF TUNE

The IPKat has discovered from ZDNet that teenage dotcom millionaire Benjamin Cohen has given up his fight against Nominet, who ordered him to transfer the itunes.co.uk to iTunes. Cohen failed to convince Nominet that he had innocently registered the domain name and, instead of using Nominet's in-house appeal system, Cohen applied to have Nominet's decision judicially reviewed.

The judicial review action was dismissed in July since Cohen delayed before bringing the action. Now Nominet has said that Cohen's company Cyberbritain.co.uk has formally abandonned all attempts to regain the domain name.

Nominet's company solicitor said:

"We always said you can't go running off to court before exhausting the process you are complaining about...And a judicial review is wrong for this anyway — that is for complaining about government decisions — and we're not a government body."

The IPKat doesn't think that this was how the case was decided. He thinks that the judge said that, in principle, Nominet could be judicially reviewed as, if it didn't exist, the Government would have to set up a similar entity. However, the IPKat hasn't seen a copy of the decision. If anyone can furnish him with one, he'd be most grateful.

NICKY NOKY; MORE ON ALREX/ARTEX

A little bit of Nicky Noky ...

The Court of First Instance (CFI) has posted its decision in Case T-396/04 Soffass SpA v OHIM, Sodipan, SCA intervening, on the Curia website this morning. Soffass applied to register as a Community trade mark the varely figurative word NICKY for ‘articles made of paper and/or cellulose for household and cleaning purposes, such as handkerchiefs, face cloths, hand towels, napkins, kitchen towels on rolls or spools, toilet paper’ in Class 16. Sodipan opposed, citing its earlier French registration of its NOKY figurative marks for various products in Class 16, including toilet paper. Deeming the marks to be quite different, the Opposition Division did not consider the degree of identity or similarity of the goods or proof of use of the earlier marks. The Board of Appeal, finding that there was some similarity between the marks, ordered that the case be remitted to the Opposition Division for further consideration. Soffass appealed.


The CFI dismissed the appeal, holding that even if there is a very slight degree of similarity between the marks it is necessary to make a global appreciation of the likelihood of confusion. As to the similarity of the marks in this dispute, the CFI said:

"34 As regards the visual aspect, it must be held that there is a certain similarity between the marks at issue. Three of the four letters of the mark NOKY are found in the same place in NICKY. The marks have the first letter ‘n’ and the ending ‘ky’ in common. Since that ending is not usual in the French language it may be regarded as the dominant element in the two marks which draws the attention of French consumers.

35 As regards the phonetic aspect, there is a further similarity between the marks concerned as the last syllable ‘ky’, which is identical in the two marks at issue, draws the attention of French consumers. Therefore, the first syllables of those signs, which differ from each other, have less impact phonetically.

36 In that regard, it must be recalled that according to the case-law, the degree of aural similarity between the two marks is of less importance in the case of goods which are marketed in such a way that, when making a purchase, the relevant public usually perceives visually the mark designating those goods ...

37 Likewise, conceptually, it is possible ... that the word ‘Nicky’ may be perceived by French consumers as a diminutive of the first names Nicolas or Nicole. The importance of that argument is, in part, influenced by the nature of the goods concerned and the circumstances in which they are marketed. Accordingly, the assessment of that argument cannot be separated from the other factors which may be relevant".

The IPKat makes no comment as to the slight degree of similarity - which appears to relate to the marks as words rather than as figurative marks - but he does take exception to para.27 of the CFI's ruling, which reads:

"27 ... if the signs are completely different it is possible in principle, without examining the goods in question, to take the view that there is no likelihood of confusion".

What does "possible in principle" mean? The Community Trade Mark Regulation makes no provision for opposing an application by reference to a mark which is completely different, does it? and if the marks are completely different, why waste expensive time and valuable effort in making unnecessary comparisons?


Alrex/Artex again

Last week the IPKat posted a blog on Case T-154/03 Biofarma v OHIM, Bausch & Lomb intervening. He has now received this comment from a well-informed if anonymous source:

"I think you missed the point of the Alrex/Artex case. It should be remembered that both products are only sold under prescription. Therefore it would seem that the relevant public is a specialised public, trained to distinguish pharmaceutical trade marks, as pointed out by the Board. However, to the contrary of what you said, the CFI referred not only to the specialists, but also, in paragraph 45, to the general public - since end-users would take the products at home. Therefore likelihood of confusion had, according to the CFI, to be measured in view of the possible consumer, although that person has no influence on the choice between different products (function of origin).

But why should the end consumer be relevant, if public health reasons are not part of the relevant considerations and if he does not take the decision which product to buy? Or to turn the question around: pharmaceutical trade marks correspond to a world of its own. They are so difficult for the general public to remember. Most of them will be easily confused by the end consumer. So, in the future, hardly any new trade mark application will pass the test of likelihood of confusion?"

The IPKat agrees that the position of the end-consumer would be difficult to square with the relevant considerations of trade mark law if he had no input on the purchasing decision of the pharmacist or physician. However, end-users do influence purchasing decisions: they ask for products because their friends or relations have previously taken them successfully, or they ask not to have them prescribed because they do not like them and react adversely to them.

THE WORLD AND COPYRIGHT; COPYRIGHT WORLD

According to a press release from the World Intellectual Property Organization (WIPO) yesterday:

Member states of the World Intellectual Property Organization (WIPO) examined ... the impact of the copyright system on the use of protected works for educational purposes in both the analog and digital environments, particularly in developing countries. The meeting took place at the beginning of deliberations by the Standing Committee on Copyright and Related Rights (SCCR) which is being held in Geneva from November 21 to 23, 2005.

Copyright law, like other forms of intellectual property law, recognizes that restrictions or limitations in the rights granted to authors and holders of other related rights are justified in certain cases that do not conflict with the normal exploitation of the protected material and do not unreasonably prejudice the legitimate interests of the rightholders. In relation to education, certain permitted uses are defined which remove liability that would otherwise arise. Digital technology has revolutionized the way in which creative works, including educational materials, are made, delivered and used with important implications for copyright. The information meeting provided an opportunity to examine the varying perspectives of the different stakeholders and served as a forum for delegates to discuss and exchange experiences on the opportunities and challenges presented by the copyright system within the context of education, especially within developing countries.

"The digital environment presents enormous opportunities and challenges in terms of delivering educational materials in a sustainable manner, said Mrs. Rita Hayes, WIPO Deputy Director General in charge of copyright issues. "Today’s meeting was an excellent opportunity to look at the dissemination of teaching materials through balanced and effective copyright systems that meet the needs of all stakeholders; authors, publishers, libraries and educational services", she added.

This is so sweet, the IPKat thinks. If WIPO wants to make more information available for educational purposes in a digital environment, he hopes it will give Google a phone call and encourage its activities in making as many works as possible available to its users through the Google Library Project.

Copyright World

The cover story of the November 2005 issue of Copyright World is an account by Nigel Stoate and Camilla Smith of Taylor Wessing of the spare parts market for cars in the light of proposals for a harmonised European approach to the subject (elderly readers will remember what a live this issue this was in the 1980s and 1990s, when the UK still had a motor industry ...). Other features include articles by

* John Halton (Cripps Harries Hall) on the legal and policy issues arising from the use of technology protection measures;

* Alexandra van Beelen (DLA SchutGrosheide) on Dutch, Austrian and German decisions relating to the disclosure by Internet Service Providers of information concerning the identity of their subscribers and

* Stephen King (Payne Hicks Beach) considers the decision of Mr Jutice Lindsay to appoint himself as a special examiner in order to visit Cuba to take evidence in the somewhat protracted "Buena Vista Social Club" copyright dispute.

RON MARCHANT COMES TO QMIPRI

Next Monday, 28 November, Queen Mary Intellectual Property Research Institute is hosting an interview with Ron Marchant (right), Chief Executive of the Patent Office.

Ron's inquisitor for the evening will be Barbara Cookson (left) of Filemot Technology Law Ltd.

Topics to be covered include:

• the new business model and where are the Patent Office's loyalties now?
• the prospects for centralised European patent litigation
• software patents
• trade mark opposition procedure under the new regime and preliminary opinions
• references to the ECJ from the Patent Office.

Also, there'll be a chance to ask questions from the floor.

The fun and games kick off at 5.30pm. All are welcome, and there is no charge for attending. but please confirm your attendance to Ilanah.

IP AND GAME THEORY LECTURE; DELTA BRAND IN TROUBLE

IP and game theory lecture

Just to remind you: IPKat co-blogmeister Jeremy speaks this Thursday, 24 November at 6pm, at Bentham House, University College London, on 'How to Win at Monopoly: Applying Game Theory to the Enforcement of Intellectual Property Rights'. The lecture, which is free, is part of the Current Legal Problems programme which began more than 55 years ago and which is now published by Oxford University Press.

Do come if you can! Jeremy will be pleased to see you.


Nightmare scenario for brand owners

Delta Airlines, the IPKat thinks, must have a bit of an image problem. If they don't, then this feature in last week's The Onion would have been wasted on its readers. Entitled '133 Dead As Delta Cancels Flight In Midair', the satirical article describes how a 737 travelling from Cincinnati to Salt Lake City was lost with all passengers and crew when cash-strapped Delta cancelled Flight 1060 en route.

According to a statement from Delta, the article reads, the mid-air cancellation was part of the company's plan to cut continental service by 25 percent and emerge from Chapter 11 bankruptcy with an economically viable business strategy. The piece also describes how passengers on an overbooked flight were dumped in mid-flight somewhere over the Allegheney Mountains.

The IPKat understands how marketing wizards are able to put a spin on almost anything, giving a positive slant to any negative news. However, when the goodwill in a brand is assailed in this manner, it's bad news for anyone investing in it. It seems that there are a lot of hearts and minds to win back out there, but not much of a budget with which to do it.

Delta Airlines' risk-free cancellation policy here
Boycott Delta here; Delta sucks here and here
Build your own plane here
How to do a Chapter 11 filing here

MADONNA FOUND GUILTY OF COPYRIGHT INFRINGEMENT

The Miami Herald reports that Madonna has been found guilty of copyright infringement in Belgium. A court in Mons found that Madonna had taken four bars of Salvatore Acquaviva’s Ma vie fout l'camp and used them in her song, Frozen. It is thought that Madonna must have heard Acquaviva’s song, released in 1979, during a visit to Mouscron, which is not far from Mons, in the late 1970s, when Madonna attempted to join a dance group. Madonna’s record label is now stopped from selling the album which features that song in Belgium and must publicise the court’s decision.

The IPKat doesn’t condone copyright infringement, but knows from experience that it’s very hard to distinguish in one’s mind between one’s original ideas and ideas that one has subconsciously copied, possibly from material that one was exposed to many years previously.

LATEST ETMR, MIP

December ETMR now out

The twelfth and final issue of Sweet & Maxwell's European Trade Mark Reports for 2005 has now been published. Cases appearing in English for the first time include

* Clarins Paris SA v Supermercados Sabeco SA (Audiencia Provincia, Zaragoza, Spain), on the availability of damages for commercial and "moral" loss following the sale of luxury brands in downmarket surroundings;

* 100 PANORAMICZNYCH (Supreme Court, Poland) on locus standi for invoking cancellation proceedings and on the assessment of what might be called non-descriptive descriptiveness;

* Adidas-Salomon AG v Patent and Trade Mark Office (Spanish Supreme Court): here Adidas secures the cancellation of a three-striped football-shaped bottle.

There are also cases from the UK, OHIM and the Court of First Instance. The IPKat says "Enjoy!" and reminds you to let him know if you come across any interesting cases that ought to be reported in the ETMR.


Managing Intellectual Property

The November 2005 issue of Euromoney's 10-times-a-year Managing Intellectual Property is full of interesting features. The cover story previews December's World Trade Organization's Sixth Ministerial Conference, which may determine the future direction of the IP/agriculture interface. Staff reporter Sam Mamoudi speculates on the rash of patent cases that might be spreading to the US Supreme Court next year. Also, a triumvirate of Osborne Clarke lawyers (Mark Finn, London; Konstantin Ewald, Cologne; Marie-Helene Lemaitre, Paris) review strategies open to IP owners whose European patent and trade mark rights are vulnerable to central attack.

COMBINATION NON-OBVIOUS; A FLOOR IN THE ARGUMENT

When combination patent claims are obvious or insufficient

This patent case, decided on Friday by Deputy Patents Court judge Christopher Floyd QC, was found by the IPKat on BAILII: it's Schering-Plough Ltd v Norbrook Laboratories Ltd [2005] EWHC 2532 (CH).

Back in 1997 Norbrook applied to patent some improvements in long-acting antimicrobials. Its invention was for a veterinary medicine that combined two active ingredients, an anti-microbial and an anti-inflammatory. This combination could treat various infectious diseases in animals, including bovine respiratory disease (BRD). When the application was filed there were only a few combination products on the market for veterinary products; Schering-Plough had however been peddling its Finabiotic combination antibiotic and anti-inflammatory product ever since 1986. Claim 1 of Norbrook's patent was for any long-acting anti-microbial, together with an anti-inflammatory selected from cited classes which included flunixin and Claim 5 was for any long-acting anti-microbial with flunixin. Claim 6 was for long-acting oxytetracycline and flunixin while Claim 7 covered a particular strength of long-acting oxytetracycline together with a standard dose of flunixin. Schering-Plough sought to revoke Norbrook's patent, maintaining that it was obvious over common general knowledge and that it was void for insufficiency (since the invention as disclosed would not enable the person skilled in the art to make it). An attempt by Norbrook to amend its patent in the light of the insufficiency allegation had already failed.


In these proceedings Schering-Plough pressed its obviousness claim and argued, regarding insufficiency, that once a patentee had responded to an allegation of insufficiency by trying to amend his claims, the burden of proof then shifted to him to disprove insufficiency. In any event, Schering-Plough submitted that the wide claims of the patent could not be justified on the basis of the disclosure as contained in the patent.

Christopher Floyd QC ruled as follows:

* Claim 1 was not void for obviousness. The basic inventive concept was the use of a long-acting anti-microbial and anti-inflammatory in a combination drug. It was implicit in the inventive concept in that claim that the long-acting effect of the anti-microbial was retained in the combination product. The invention was not just the idea of the combination product, but an actual combination product which retained the long-acting effect of the long-acting anti-microbrial. The idea of combining a long acting anti-microbial such as oxytetracycline with an anti-inflammatory such as flunixin was one which would occur to a skilled team without invention, so the inventive concept of claim 1 did involve an inventive step when compared with common general knowledge.

* The burden of proof did not shift to the patentee to disprove insufficiency merely by reason of his amending his claims.

* While claims 1 and 5 were invalid for insufficiency, claims 6 and 7 were valid. It was inconceivable that all the combinations falling within claims 1 and 5 could be made to work without putting a good deal of research or experiment into finding out how to make them work.

The IPKat agrees. Combinations often seem non-inventive in hindsight and it's good to see the court taking a sympathetic approach towards them.


A floor in the rgument: no delivery up in patent proceedings

On the same day, Mr Justice Lewison produced this Patents Court decision, noted on the Butterworths All England Direct Service: Unilin Beheer BV v Information Management Consultancy Ltd.

Unilin owned a patent for a method of connecting floor panels made of a hard material. Its inventive concept embodied was that the panels could be snapped together without the need to turn them. IMC was a flooring importer and supplier. In a previous action, Unilin sued IMC and others for patent infringement, obtaining injunctive relief. Subsequently IMC began to import a different flooring product in the belief that theit did not infringe Unilin's patent. Unilin, alleging patent infringement, sought an order for delivery up of all flooring material which would infringe the patent.

Unilin said it was obvious that the new product was just as much of an infringement as the previous flooring. IMC denied infringement and submitted that the balance of convenience against granting the order was in its favour. IMC also argued that the fact that its new product could be snapped together if enough force was applied, such as by using a hammer, as a result of the elastic quality of the material, did not amount to an infringement of the patent.

Lewison J dismissed Unilin's application. While there was a serious issue to be tried, there was also an arguable defence. It would therefore be open to IMC to re-run the possibility of an attack on the patent’s validity. Further, the balance of convenience was indeed in IMC's favour.

Left: a device for finding the balance of convenience.

The IPKat finds these little snippets tantalising because they are always so incomplete. What ARE the circumstances that result in the balance of convenience being in the defendant's favour? And can we assume that Unilin was seeking delivery up as an interim measure (which doesn't seem to happen much)? Or was it really an application for summary judgment?

HRH SUES FOR COPYRIGHT AND BREACH OF CONFIDENCE

The Times reports that Prince Charles has begun legal action after the Mail on Sunday published excerpts from a journal he kept during the British handover of Hong Kong to China. The Prince is alleged to have made uncomplimentary comments about the Chinese in his 3,000 word work entitled The Handover of Hong Kong — or the Great Chinese Takeaway. He regularly writes up his thoughts on public affairs for other members of the Royal Family, senior politicians and close friends

Associated Newspapers, the Mail on Sunday’s parent company argues that it has not committed either copyright infringement or breach of confidence since the book was widely distributed and was meant for eventual publication. Additionally, the paper claims:

“The story raised important questions about Britain’s relations with China and the Prince’s influence on British political thinking. We believe the public has a right to know the considered views of the heir to the throne on matters of great public interest.”

The IPKat reckons that this is a tricky situation. While there may be a public interest defence to breach of confidence, any such defence under copyright is far narrower, if it exists at all. Moreover, he doubts that an intention to eventually publish a work stops it from being confidential before it was published. If this was the case, publishing houses would not be able to control the launch date of their works, which would be disastrous for planning.

THE ALMIGHTY WINS ON APPEAL; TOO MANY GIs SPOIL THE BROTH?

Almighty bends High Court's ear

Lots of people have a commercial interest in the use of the words "moo juice". Some of their endeavours are depicted in this blog. This Chancery Division decision of Mr Justice Kitchin, given on Friday 18 November and reproduced in full on the excellent (and free) BAILII judgment service, involves just two of them: it's Almighty Marketing Ltd v Milk Link Ltd [2005] EWHC 2584 (Ch).

Back in December 1995 farmer Cooper applied to register the words MOO JUICE as a trade mark in Class 29 for (among other things), milk and milk beverages. In December 2003 Cooper assigned the trade mark to Almighty, of which he was the managing director. In October 2004 Milk Link sought revocation on the basis that there had been no genuine use of the mark since the date of registration (16 August 1996) and that there were no proper reasons for such non-use.

At this point, things started to get a trifle bureaucratic. Milk Link had filed its application for revocation on Form TM26(N), together with its statement of grounds. Almighty responded by filing Form TM8, together with the required documents and subsequently filed two witness statements. Having satisfied itself that the evidence filed was sufficient, the Registry let the proceedings proceed.

At the hearing, the hearing officer decided that, in the light of previous case authority, rule 31(3) of the Rules imposed upon the proprietor (i.e. Almighty) an obligation to file certain specific documentary evidence which had not been filed. Rule 31 states:

"(1) An application to the registrar for revocation of a trade mark under section 46, on the grounds set out in section 46(1)(a) or (b), shall be made on Form TM 26(N) and be accompanied by a statement of the grounds on which the application is made … (3) The proprietor shall, within three months of the date on which he was sent a copy of Form TM26(N) and the statement by the registrar, file a Form TM8, which shall include a counter-statement, and be accompanied by (a) two copies of evidence of use of the mark; or (b) reasons for non-use of the mark, otherwise the registrar may treat him as not opposing the application".

The hearing officer therefore treated Almighty's opposition to the revocation application as having been withdrawn on the basis that the evidence of use filed by the company had been insufficient. Almighty appealed, arguing that Rule 31(3) laid down no more than a procedural requirement which was satisfied by the filing of any evidence at all, there being no basis on which it could be said that the company had failed to comply with Rule 31(3).

Kitchin J, siding with Almighty, allowed the appeal and remitted the revocation application to the Registry for a further hearing. In his view

* the purpose of filing evidence under Rule 31(3) was to see whether a trade mark owner had an arguable or viable defence to the attack mounted upon the registration and thus to provide the applicant for revocation with enough information to enable him to investigate the use of the mark upon which the trade mark owner sought to rely.

* there was no fixed code as to the specific documentary evidence which should be filed in order to satisfy Rule 31(3). Nor was a trade mark proprietor obliged to provide such information, although it might be a good idea if he did. The rule only required that the evidence, when considered as a whole, should establish that the proprietor had an arguable defence to the application for revocation.

The IPKat is very pleased with this decision. The Trade Mark Rules are not an end in themselves and should not be allowed to interfere with the very real business of revoking unused marks, thus clearing the thicket of dead wood that stands between later, active businesses and their quest for registered trade mark protection, while leaving live marks unscathed.

Merpel agrees, adding that in a case such as this the effect of revoking a mark that had being used might result in the applicant for revocation subsequently applying for a trade mark that he couldn't use anyway since he'd be in danger of a passing-off action.

The IPKat and Merpel both wonder, though: MOO JUICE seems, well, somehow more than merely allusive (though it's not precisely descriptive: it could refer to cows' blood, lymph, digestive acids etc) and lots of people out there seem to be using it. If you're looking for a trade mark, why not choose a a mark that's less heavily used by others?

Almighty's MOO JUICE registrations in the UK and EU here
More Moo Juice here, here, here and here


Yet more GIs invade Europe

Official Journal L297 of the European Commission features yet more protected geographical indications (PGIs) and protected designations of origin (PDOs). It announces the enactment of

* Commission Regulation 1854/2005 of 14 November 2005 which sees Miel de Provence ("honey from Provence") become a PGI despite German objections that

(i) registration would conflict with Article 4(2) of Regulation 2081/92 since the defining characteristics of Miel de Provence are organoleptic, relating to its method of production and quality criteria, which are not specific to the region of Provence [the Commission disagrees: registration is based on the reputation of Provence honey as much as on its special quality];

(ii) there was a possible threat to existing traders who use the term but produce honey falling outside the protected specification [not proven, says the Commission];

(iii) use of the name Miel de Provence is permitted under Council Directive 2001/110 relating to honey, in respect of honey from the French region of Provence-Alpes-Côte-d’Azur and made from sunflower, rape or lucerne (alfalfa) [the Commission says, to comply with the specification, traders currently marketing such products under the name Miel de Provence will have to exclude honey of floral origin not provided for in the specification.

* Commission Regulation 1855/2005 of 14 November 2005, which sees Mela Alto Adige or Südtiroler Apfel (PGI), Asperge des Sables des Landes (PGI), Pâtes d’Alsace (PGI), Jamón de Trevélez (PGI), Oliva Ascolana del Piceno (PDO) join their respective lists.

The IPKat is curious to know how many consumers know of these products as PGIs and PDOs. Merpel adds, I'd be curious to know how many of them ever care a damn, to the point of deciding whether to buy a product or not on the basis of whether, for example, it's called "Miel de Provence" or "Oliva Ascolana del Piceno". Is this a sort of overkill, with every sort of descriptive term becoming a protected term?

Right: some Olive Oyl is definitely deserving of legal protection

WAS DIDDY DIDDLED?

The Telegraph reports that rap star Sean Coomb’s decision to restyle himself as “Diddy” has aggravated one London producer and remix engineer to the extent that he has taken legal action against Coombs. Richard Dearlove of London claims to have been known as Diddy since the age of eight. His lawyer says

"My client was nicknamed Diddy at the age of eight, and has used the name professionally since 1992. He is extremely concerned about the impact the other Diddy will have on his reputation here."

He also claims that Coomb’s new moniker has confused his (Dearlove’s) fans and is hoping to rely on a previous English decision by which a newly formed pop-band was forced to rename itself Liberty X to avoid conflicting with the disbanded Liberty pop-group.

Following a trip to the High Court, the case has been scheduled for next year.

The IPKat says that this may be another example of the problem that he has previously highlighted where an entity with the ability to make itself better known adopts a name in which another, smaller entity has goodwill.

DON'T FORGET..

This Monday (21 November), Felicity Hide of Boult Wade Tennant will be speaking on "Can you disclaim a trade mark disclaimer?". She will be focusing on the recent case of General Cigars v Partagas.

The talk takes place at QMIPRI at 12.30pm. It's not to late to say you'll be coming.
Email Ilanah for further details.

ALSO advance notice that the following Monday (28 November),QMIPRI will be hosting an interview with Ron Marchant, Chief Executive of the Patent Office. More details to follow, or email Ilanah at the address above.

WHEN PATENT DECISIONS ARE APPEALED; NINJA SWEEPS AWAY FANCIFUL DEFENCE

The IPKat has found two small patent-ish offerings on the free BAILII case access site. They are

Smith International Inc v Specialised Petroleum Services Group Ltd [2005] EWCA Civ 1357, a Court of Appeal decision delivered yesterday by Lord Justice Mummery (Jacob and Neuberger LJJ concurring).

Smith wanted to appeal against a decision that Specialised Petroleum's patent was not invalid for lack of novelty. There was a general prohibition on appeals to the Court of Appeal from the Patents Court on appeal from a decision of the Comptroller, but this case appeared to fall within each of the exceptions to that prohibition under the Patents Act 1977, s.97(3) since

* the Comptroller's decision had been given under s.72 of the 1977 Act and

* Smith was contending case that the decision of the trial judge (Lewison J) was wrong in law as he had misconstrued the patent in suit or the prior art or both.

If the provisions of the Access to Justice Act 1999, s.55 in relation to second appeals, and the Civil Procedure Rules (CPR), r.52.13, applied to the proposed appeal, Smith would need to show that the proposed appeal raised an important point of principle or practice or that there was a compelling reason to grant permission. However, if the Patents Act 1977, s.97(3) and CPR r.52.3 applied, permission could be granted if there was a real prospect of success or some other compelling reason why the appeal should be heard. The Court of Appeal was asked to consider whether the issue was whether s.55 the Access to Justice Act had impliedly repealed or limited s.97(3).

The Court of Appeal granted Smith permission to appeal. In its opinion

* Section 97(3) was a specific procedure laid down by Parliament for patent appeals; it had not been expressly or impliedly repealed by s.55.

* The effect of applying the general requirements of s.55 would be to cancel or render meaningless the power under s.97(3) under which the Patent Court granted permission to appeal to the Court of Appeal.

* It was difficult to imply legislative intention in a general measure that it was intended to repeal an earlier enactment which was particular, especially since the Access to Courts Act expressly repealed a similar provision for appeals from the Conveyancing Appeals Tribunal but said nothing about patent appeals.

* Accordingly "It is therefore unnecessary to consider whether the proposed appeal raises an important point of principle or practice. The application for permission to appeal is granted on the basis that the proposed appeal has a real prospect of success" (para.27).

The IPKat thinks this must be right, both in principle and in terms of the interpretation of the relevant provisions.

* * * * * * * * * * * * * * * * * * * * *

Finecard International Ltd (t/a The Ninja Corporation) v Urquhart Dyke & Lord) and Ajello [2005] EWHC 2481 (Ch), a Chancery Division ruling of Mr Justice Peter Smith on the Tursday of last week.

In these proceedings Finecard sought an order that a defence raised by Urqhart, a firm of patent agents, be summarily dismissed on the basis that it had no real prospect of success and there was no other compelling reason why the issue should have to wait until trial before it could be disposed of. In 1997 Finecard, a client of Urquhart, was granted an exclusive licence by Spring Form to exploit a patent in England and Wales, the licence being registered over a year later. In 1999 Finecard entered into a new exclusive licence agreement with Spring Form to exploit the same patent but on terms that granted Finecard increased rights. Urqhart, having been asked by Finecard to register the licence as soon as possible, did do two years later.

Under the exclusive licence Finecard, who as exclusive licensee had a statutory right to bring proceedings for any infringement of the patent, did so at a time when the licence had not yet been registered. At the infringement hearing the judge held that the 1999 agreement did not amend the 1997 agreement but replaced it. Accordingly Finecard could claim damages or an account of profit only during the period from when the 1997 agreement had been registered until the 1999 agreement was made. The court also held that the 1999 agreement contained a Californian choice of law clause.

Urqhart submitted that, since only the 1997 agreement had a Californian choice of law clause (the 1999 agreement applying New York law), the judge was wrong as he had not been told about the status of New York under the 1999 licence. If he had he known the true position, he would not have concluded that the 1997 agreement was of no effect as being substituted by the 1999 agreement. This being so, since Finecard had become an exclusive licensee by virtue of the 1997 agreement, which initially governed the relationship between the parties, and remained an exclusive licensee, the fact that it remained an exclusive licensee by virtue of the 1999 agreement meant that its interest in the patent did not have to be registered.

Peter Smith J granted Finecard the order it sought. He concluded as follows:

* If the judge in the earlier proceedings had he been told the New York position, he would not have come to a different conclusion as regards the two-year period when the licence had not been registered. Since the New York law only provided that the 1999 agreement operated from 1999, the judge's conclusion with regard to claims for infringement in the period between the making of the 1999 agreement and its registration would have been the same.

* The purpose of s.68 of the Patents Act 1977 was to provide a regime whereby people who asserted property rights in patents registered their rights so as to put the world on notice of their existence. The wording of s.68 was plain: it was the
instrument or other transaction or event upon which a person relied to enforce
his rights that had to be registered, not the status of the parties.

* The 1999 agreement granted an exclusive licence for the period starting with its date of commencement. This being so, Finecard had destroyed Urquhart's defence
since it could not be respectably argued that s.68 had the effect suggested by
Urqhart.

* The lack of registration put Finecard in a situation that the act of registration was designed to avoid, i.e. the creation of uncertainty as to who was entitled to enforce the patent.

The IPKat thinks this is right too. The defence was artistically conceived and well arrgued, but it was never going to survive a reality check.

What is a Ninja? Click here

CONFUSED? NOT REALLY; LAMENT FOR LOST GENERICS

Likelihood of confusion? Or mere possibility?

Yesterday the Court of First Instance of the European Communities (CFI) gave its ruling in Case T-154/03 Biofarma SA v OHIM, Bausch & Lomb Pharmaceuticals, Inc intervening. B&L applied to register as a Community trade mark the word mark ALREX, for 'ophthalmic pharmaceutical preparations, namely eye drops, solutions, gels and ointments used for the treatment of eye infection and inflammation’ (Class 5). Biofarma opposed, citing its earlier registrations of the word mark ARTEX in France, the Benelux and Portugal for 'pharmaceutical speciality used in the cardiovascular field; pharmaceutical, veterinary and sanitary products; material for stopping teeth, dental wax’ (also in Class 5) and alleging a likelihood of confusion. The Opposition Division upheld the opposition on the basis that both the marks and their respective goods were similar. The Board of Appeal disagreed, concluding that, while both parties' products fell within Class 5, there wasn't much similarity between them: those of B&L were for the eyes, while those of Biofarma weren't. The Board also thought there wasn't much similarity between the marks. Biofarma appealed.

The appeal succeeded and the Board of Appeal's decision was annulled. The CFI agreed that that the relevant consumers were medical specialists and general practitioners who would prescribe the respective products, also holding that those products were neither complementary nor in competition with one another. At this point, B&L must have been feeling quite comfortable about their chance of winning. However, the CFI held that, contrary to the Board's finding, there was a high degree of similarity between the marks themselves. This similarity was so high, the CFI felt, that even the relatively large gap between the products themselves could not prevent a likelihood of confusion.

The IPKat is unimpressed. This seems to him to be one of those cases that the Irish Patents Office keeps mentioning, in which 'likelihood of confusion' is confused with 'possibility of confusion'. He hopes that B&L will have the courage to carry on using its mark and call Biofarma's bluff. We might see then whether there really is a likelihood of confusion. Merpel's not so sure. You shouldn't try to provoke litigation, she says. Haven't you argued before that it's often cheaper and more prudent than to change to a new name rather than to fight over an old one?


Found quite by chance

While reading a recent issue of The Onion the IPKat stumbled across this link to the following delightful piece, posted on 15 April 1998:

NATION'S LAST THEMELESS RESTAURANT CLOSES

An era came to an end Tuesday when Pat's Place, the nation's last themeless restaurant, closed its doors in Dubuque. "We achieved a certain local notoriety for our unique non-themed food and unadorned atmosphere," said owner Patrick Baines, "but sales were sluggish, as most people would just come in to gawk at our photoless walls and mundanely named menu items like 'hamburger' and 'pancakes.' Then they would head over to the Rainforest Cafe, Hard Rock Cafe, Planet Hollywood, All-Star Cafe, Johnny Rocket's or Disney Cafe down the street." Once vacated by Baines, the building will become home to Dubuque's seventh Paddy O'Touchdown's Irish Sports Bar & Good-Tyme Internet Grill.

The point is this. When everything becomes branded, we lose sight of the generic. This process, the IPKat observes, is happening throughout Europe, wherever regular generic or descriptive terms keep ending up as Protected Designations of Origin or Protected Geographical Indications. Soon there won't be any generic cheeses, he wails.

LEGO LOSES IN CANADA

The IPKat has learned from Reuters that Lego has failed in its attempt to enforce its trade mark for the design of its building blocks in the Canadian Supreme Court. In a strongly worded decision, the court found in favour of Lego’s rival MegaBloks. The court showed its displeasure at Lego’s previous market dominance, saying

"The monopoly on the bricks is over, and Mega Bloks and Lego bricks may be
interchangeable in the bins of the playrooms of the nation…Dragons, castles and
knights may be designed with them, without any distinction"

and

"(Lego) is no longer entitled to protection against competition in respect of
its product. It must now face the rigors of a free market and its process of
creative destruction."

The idea that a company should not be able extend the monopoly granted by a patent that has since expired by relying on trade mark rights appears to have been at the forefront the court’s mind.

The IPKat is in favour of leaving this one to consumer perception. If consumers are confused, then it’s right to protect, them, even if the thing that they were confused about was once protected by a patent or other IP right. The existence of the other right doesn’t take away the justification for giving the trade mark right.

POPPING THE CORKS FOR JIPLP

The launch event for the new monthly Journal of Intellectual Property Law & Practice (edited by co-blogmeister Jeremy) takes place at Staple Inn Hall, London (that's near Chancery Lane), on the afternoon of Monday 5 December.

Registration starts at 1.30pm, a full and action-packed afternoon's programme commences at 2.00pm and there's a powerful international panel of speakers on hand - and it's absolutely FREE.

The event will be rounded off with a quite delicious reception, the delicacies being specially selected by the Oxford University Press team of Professional Epicureans ...

The number of places remaining is very limited, but if any readers of this blog are interested in attending, they should email Faye Judges at Oxford University Press if they wish to apply: places will be allocated on a first-come-first-served basis.

UK TRADE MARK PAN FOR RETAIL SERVICES

Following the ECJ’s Praktiker Bau decision, the UK Trade Marks Registry has issued a Practice Amendment Notice, setting out acceptable ways of designating retail services in applications for trade marks.

There will no longer be a need to specify the type of retail services which are being provided (e.g. wholesale, supermarket). However, it will be necessary to specify the types of goods in all cases (e.g. stationery, clothing). While it is sufficient to just describe the type of goods (e.g. footwear), specifying the goods in more detail (e.g. shoes and boots for females) remains an option.

Where these conditions are not met, an objection under section 1(1) of the Trade Marks Act 1994 and/or Rule 8(2)(b) of the Trade Mark Rules may be raised.

The notice also points out that marks consisting of the geographical name of the place in which the retail services take place will normally be rejected under the absolute grounds.

Chapters 5 and 6 of the Registry Work Manual have been altered to reflect this change in practice.

The IPKat reckons that, following Praktiker, there are no big surprises here. However, he wonders what happens when a store decides to begin stocking a new line of goods. Will it have to amend its trade mark specification each time it makes a minor diversification?

NEW YEAR COMES EARLY; MORE BAD NEWS FOR PERPETUAL INVENTORS

2006 has arrived early ...

... for Sweet & Maxwell's Reports of Patent Cases. It might be only half way through November, but issue 1 for 2006 has already been published. It's a bit skinny, containing just one case - the fascinating ruling of Judge Michael Fysh QC in the street lantern dispute of Woodhouse UK v Architectural Lighting Systems on the meaning of the "informed user" in design law (this case was blogged by the IPKat here).


... but not in time for Mr Thompson

The IPKat just found this little morsel of patent case law on the Butterworth subscription site All England Direct: it's the Patents Court decision today of Mr Justice Patten in Thompson v Patent Office.

Thompson applied for a patent in respect of an invention entitled ‘A means for purveying energy for the future’. The deputy director refused the application on the ground that the invention was incapable of industrial application because it simply did not work. Thompson appealed on the ground that patent law, as it stood, prevented the Patent Office from processing any application claiming either (a) perpetual motion or (b) means for creating energy, because it would be against patent law to do so.

Patten J dismissed Thompson's appeal. He held that the deputy director’s decision was clearly right and was not open to challenge. The Patent Office had to operate within the bounds of science as known; nor was it able to rewrite the laws.

The IPKat's misgivings about the refusal to grant such patents are sufficiently known and need not be repeated. Scientific certainties of bygone eras have been refuted, so why should we expect the laws of science to be 'binding' in the sense that legal laws are?

Eric's history of perpetual motion here
Museum of Unworkable Devices here
Something else that works in theory but not in practice here

ROOKLIDGE SPEAKS; LATEST ECDR

US patent reform comes to London

This year’s Stephen Stewart Memorial Lecture took place last night. Organised by the Intellectual Property Institute and hosted at the offices of Slaughter and May, this annual showpiece talk, chaired by Sir Hugh Laddie (below, left), was delivered by AIPLA President William Rooklidge (right) who spoke on ‘Reform of Patent Laws: the US Experience in Forging Legislation from Disparate Interests’.

Mr Rooklidge reviewed the main areas of law reform that the AIPLA is pressing for. One of the most contentious of these is that the patent should be awarded the the first inventor to file (an American euphemism for 'first-to-file'), not to the first to invent. Other reforms which will be greatly welcomed both inside the US and outside it are the abolition of the requirement that the patent applicant disclose the 'best mode' of putting his invention into effect, the simplification of what constitutes prior art, the abolition of the anomalous entitlement of applicants for US-only patents to opt not to have their patent applications published after 18 months, the removal of the subjective element in a claimant seeking to prove "wilful infringement" in order to secure costs and triple damages and the introduction of a nine-month post-grant opposition period. All of this will make US law more closely convergent with the law in Europe and indeed most of the rest of the world.

The focus of the talk then shifted to the AIPLA's opponents - the Business Software Alliance (who wanted tougher provisions on injunctions) and the various groups representing private inventors (who broadly speaking like the law as it is and have no wish to amend it). Mr Rooklidge discussed topics as diverse as the calculation of infringement damages where the infringed product is only a minor component of a successful commercial product, the desirability of members of the public being able to engage in the application process as third parties by communicating prior art information to the USPTO and the abolition of the "inequitable conduct" defence.

The IPKat thought Mr Rooklidge stated his case very well. He certainly gained a lot of supporters in England last night. Whether he can sway the US Congress sufficiently to pass HR 2795 is however another matter.


Latest ECDR

Another batch of copyright cases has just been reported in Sweet & Maxwell's bimonthly European Copyright and Design Cases. Legal decisions reported in English include Pierre Hugo and others v SA Plon and another (Cour d'appel de Paris) on whether the moral right of the long-dead Victor Hugo was infringed by the unauthorised publication of two sequels to Les Miserables involving characters from the original. There are also cases from England, Scotland, the European Court of Justice and the OHIM Designs Invalidity Division.

PRISON BRAND BOOMS

The Sentinel reports on a brand with a difference. BIG HOUSE PRODUCTS is the brand used for goods made by inmates of Pennsylvania penal institutions. The prisoners make clothing (including the clothing made by the inmates), wooden street furniture, storage items and cleansing products, including clear soap to avoid weapons being hidden in it. The brand generally does not undercut the prices of local businesses, despite the availability of cheap labour.

The IPKat says, this is a mark that can’t be tarnished by its use in an unsavoury context.

PARTHENON ON THE ROCKS; SCOTTISH PATENT CASE

Can anyone help?

One half of the IPKat has received a bottle labelled "Original Parthenon Hellenic Specialty Drink". It's 38% proof and looks quite interesting, but it didn't show up on a Google search. Does anyone know what sort of a drink it is, or what it's made of?

Merpel asks: if it's called Parthenon, should it be served on the rocks? No, says the IPKat, that's for Stones Ginger Wine ...


Scotland the brave!

Only yesterday the IPKat complained that there didn't seem to be any fresh IP cases on the Scottish Cases website. On this occasion, at least, the Kat's lament has brought about an instant response. Today a new case has been posted: ITP SA v Technip Offshore UK Ltd (formerly known as Coflexip Stena Offshore Ltd), a short judgment of just six paragraphs in which the defenders' application for costs in a patent dispute was successful.

EUROPE GROWS; TRANSLATION WATCH

EU Expansion

The IPKat found this convenient summary of the present state of affairs regarding enlargement of the European Union.

Above right: The EU Commission's proposal for an enlarged Europe. Forthcoming accession zones are coloured pink, orange, navy, yellow, teal and grey.

Presenting the enlargement strategy Olli Rehn, Commissioner for enlargement (left) said:

“A carefully managed enlargement process is one of the EU’s most powerful and most successful policy tools. The pull of the EU helps the democratic and economic transformation of countries. All European citizens benefit from having neighbours that are stable democracies and prosperous market economies. The EU cannot abandon its responsibilities. But the pace of enlargement also has to take into consideration the EU’s absorption capacity”.

The EU must remain rigorous in demanding fulfilment of its criteria, but fair in duly rewarding progress. Aspirant countries can only proceed from one stage of the process to the next once they have met the conditions for that stage. The Commission will assist the countries and monitor their progress.

The EU’s relations with Croatia and Turkey entered into a new phase on 3 October, when accession negotiations were opened. Negotiations will be based on the country’s own merits and their pace will depend on the country's progress in meeting the requirements for membership.

For the other countries of the Western Balkans, the Commission proposes a road map for realising their European perspectives, setting out the stages and conditions attached to each stage. Establishing a Stabilisation and Association Agreement (SAA) with the EU is a fundamental step in this process. Albania has made sufficient overall progress to establish implementation capacity, paving the way for concluding negotiations on such an agreement. Serbia and Montenegro have just opened SAA negotiations, and Bosnia and Herzegovina will do so shortly.

A country’s satisfactory track-record in implementing its SAA obligations (including the application of its trade-related provisions in the form of an Interim Agreement) will be an essential element for the EU to consider any membership application. Based on a Commission opinion, the EU may grant a country the status of candidate. The Commission recommends that the Council grants the status of candidate country to the former Yugoslav Republic of Macedonia.

Candidate status is a political recognition of a closer relationship with the EU, but it does not automatically mean that a country can start negotiations for EU membership. To do so, the country needs to reach a sufficient degree of general compliance with the membership criteria. In particular, the country needs to meet the political criteria, including full co-operation with the International Tribunal for the former Yugoslavia where relevant.

Kosovo's further progress towards the EU is also part of the enlargement strategy. European integration is essential to achieve a sustainable settlement on the status of Kosovo that reinforces the security and stability of the region.

The IPKat reminds readers from outside Europe that (i) Serbia and Montenegro is currently one jurisdiction but two separate republics; (ii) Bosnia and Herzegovina is a single state, housing three peoples (Serbs, Croats and Bosniaks) and divided into two administrative regions; (iii) the FYR of Macedonia is likely to be confused with the Macedonia which has remained within Greece and (iv) Kosovo is not yet a country, since it's still a province of Serbia, but the majority of its population originates from (v) Albania. No wonder we all get confused.

Merpel adds, the real reason for this post is to remind readers that pan-EU rights such as the Community trade mark and Community design are set for further expansion, as is the area within which Fortress Europe will practise internal exhaustion of IP rights but outside of which it will continue to fend off imports of even genuine goods if they lack the IP owner's authorisation.


Translation watch

There's still no sign of an official English translation of the French-only text of the European Court of Human Rights ruling of 11 October in the complaint brought by Anheuser-Busch against Portugal. The IPKat says thanks to all his readers who have sent brief notes and summaries of the decision - but what he wants is nothing short of the full judgment, made plain and available to all English-speakers.

COPYRIGHT TO PROTECT SPYWARE?

The IPKat has come across a rather worrying story on The Register. RetroCoder, the maker of pseudo-spyware, is relying on its copyright to prevent the providers of internet security programmes from downloading, running or examining its software. In particular, RetroCoder’s SpyMon purports to be designed to inform parents about the online activities of their children. In doing so, it records users’ keystrokes. However, it also has the ability to take screenshots of users’ computers and to shut those computers down remotely. SpyMon’s download page includes the unequivocal statement that

This software package is a copyrighted product. As such the owner of thecopyright expressly forbids any use, disassembly, examinination and/ormodification by anyone who works for or has any relationship or link toan AntiSpy or AntiVirus software house or related company.

If you do produce a program that will affect this softwares ability to performits function then you may have to prove in criminal court that you have notinfringed this warning.

Infingement of a copyright licence is a criminal offence.

The IPKat saw this one coming. Way back when in the days of the Blaster Worm, the cat discussed (in jest) the prospect of IP being used to protect worms, viruses and other nasties. He’s unhappy to see that his prediction seems to be coming true. Merpel says, what about the poor computer users? Don’t they deserve a say here?

TRADE MARK TALK AT QUEEN MARY

Next Monday (21 November), trade mark agent Felicity Hide (right) of Boult Wade Tennant will be speaking at Queen Mary IPRI. The session will be at 12.30 to 1.30pm and there is no charge for attending.

Her title is "Can you disclaim a trade mark disclaimer?" and she will be focusing on the recent case of General Cigars v Partagas.

If you'd like to attend, or would like further information email here.

VOLVO SMASH HIT? NEPAL BERNES … WHILE SMOKERS FUME OVER PATENT

Smash hit for Volvo?

The IPKat's New York friend Miri Frankel sent him this link to a piece in the New York Times by Stuart Elliott.

Microsoft Xbox has created for Volvo a new interactive game called 'Volvo Drive for Life', which serves as a showcase for the Volvo nameplate, three Volvo models and the longtime Volvo brand identity as the car designed with safety foremost. Unlike most racing video games, which reward players for speed, 'Volvo Drive for Life' encourages them to proceed judiciously by taking them through a training course at the Volvo proving grounds in Gothenburg, Sweden, before sending them out on famous highways to drive while avoiding accidents. This video game, which has an initial run of about 100,000 copies, also includes a "greatest hits" collection of film from actual crash tests (Volvo was once famous for its advertisements involving test crash dummies).

'Volvo Drive for Life' is said to be an example of a growing trend known as advergaming, which brings together marketers and game makers in an effort to encourage consumers to spend time playing with their advertising material. The advergaming trend includes producing games that are played online or downloaded to a player's computer, like those for Life Savers candy and the Orbitz travel service, as well as those that are played on video game systems sold by Microsoft, Nintendo and Sony.

The IPKat just loves the idea. Whether it makes people love Volvo or loathe it, there's just a chance that someone might get the idea that it's a good idea to drive safely. Now, if that's a brand message that gets through to consumers ...

Test Crash Dummies here and here


Nepal signs up for Berne Convention

The mountain kingdom of Nepal has announced that, with effect from 6 January 2006, it will be a fully-functioning member of the Berne Union. This is bad news for all international copyright infringers who have, up till now, been routinely pillaging Nepalese copyright works without fear of retaliatory litigation. Nepal now becomes the 160th member of to ratify the Berne Convention.

Nepalese authors project here
Nepal art and prints here


Smokers fume over rumbled tax-dodge

Another IPKat friend, European Patent Attorney Edward Tomlinson (Frohwitter) has drawn his attention to a somewhat unusual use of patent applications, buried in para.19 of Case C-197/04 Commission v Germany. What he found there was a reference to Reemtsma's (West) patent PCT application WO0249462:

"As regards the application of the relevant provisions as defined above to the product ‘West Single Packs’, the Commission refers to the international patent application for ‘West Single Packs’ (published in accordance with the Patent Cooperation Treaty under the title ‘fine cut unit pack’). According to that document, it is a product which offers consumers a straightforward means of easily making their own cigarettes, which are comparable in every respect to industrially-manufactured cigarettes, and which also benefit from the lower rate of tax on fine-cut tobacco. Therefore, the Commission considers that the criteria for the application of Article 4(1)(b) of Directive 95/59 are met in this instance and that the products concerned, such as ‘West Single Packs’, must be classified in the category of cigarettes".

This just goes to show, the Kat's informant observes, that some patentees risk including too much information in their patent specification.

AROUND THE WEBSITES

The Register

The Register reports that webmasters have been receiving cease and desist notices from Studio Peyo, which owns the rights to the SMURFS trade mark. Studio Peyo objected to a nine year old page on a site hosted by a Californian ISP, a page which translates English into Smurf Language. Click here for more from Websmurfer.

Azrael, the cat belonging to Gargamel, ready to pounce on unwitting Smurfs - or is it Smurves?

History of Smurfs here
Are the Smurfs Nazis? Click here

2 Scottish Courts

The Scottish Courts website has not posted any new intellectual property cases since February (Profile Software v Becogent). Surely it can't be because there simply aren't any! The IPKat demands an explanation. Merpel says, perhaps the Smurfs ate them all ...


3 Gone quiet ...

Displacement of Concepts (most recent post 3 June)
Markenbusiness (quiet since 6 July)
CyberBug (no blog since 12 July)
Guiding Rights (quiet since 25 October)

The IPKat hopes these sites are merely resting and that they will soon be active again.

OFFICE CLOSURE; IJLIT AGAIN

1 Intellectual property closes IP Office

The IPKat learns from the Antigua Sun that the Antigua & Barbuda Intellectual Property Rights and Commerce Office will be closed on Monday, Tuesday and Wednesday of this week to enable staff to attend an important workshop and seminar on “The enforcement of intellectual property; copyright and related rights”. During this period all “time sensitive” and important documents should be deposited at the Registry of the High Court at the Government Office Complex, Factory Road. The Registrar and Staff of the Antigua & Barbuda Intellectual Property Rights and Commerce Office, (ABPCO) apologise for any inconvenience this temporary closure may cause.

The IPKat is always glad to learn of the devotion of IP Office staff to learning more about his favourite subject, but this is the first time he's heard of an entire office being shut down because of it. Merpel asks, why does the IP Office need to learn about enforcement of rights? Isn't their business to grant them, not enforce them?


2 IJLIT again

Issue 3 of Oxford University Press's International Journal of Law and Information Technology has now been published. It is unusually IP-rich in its content, which includes

* "Crown Copyright in the UK - Is the Debate Still Alive?", by Stephen Saxby (Reader in IT Law, University of Southampton). for the benefit of non-UK readers, crown copyright is an anomalous provision, which has no justification in the Berne Convention, that vests copyright in a large number of public-commissioned works in the Government for a term that bears no reference to the life of the author(s);

* Jinseok Park (Korean Intellectual Property Office) asks "Has Patentable Subject Matter Been Expanded: a Comparative Study on Software Patent Practices in the European Patent Office, the United States Patent and Trademark Office and the Japanese Patent Office". If you think the title's long, the article weighs in at 42 pages.
* Assafa Endeshaw (Reader in Information Studies, University of Wolverhampton, left) writes "Intellectual Property Enforcement in Asia: a Reality Check";

* "Does P2P have a Future? Perspectives from Singapore" by Cheng Lim Saw and Winston T. H. Koh (both of the Singapore Management University";

* Aashish Srivastava analyses China's Electronic Signatures Law in the charmingly and ambiguously entitled "No Rice, No Wife to Cook".

ORDNANCE SURVEY FAILS TO GET CTM

The IPKat has learnt that the Ordnance Survey has failed to register the word mark OS as a CTM for its core goods.

The Ordnance Survey is Britain’s official national mapping agency. It applied to register OS as a CTM for various goods. The examiner refused the application for Classes 9, 16 and 42 on grounds of descriptiveness and lack of distinctiveness. The examiner claimed that OS was a known abbreviation for Ordnance Survey and that it would inform consumers that goods or services bearing it came from an official map-making agency. The Ordnance Survey appealed.

The appeal to the Second Board of Appeal was unsuccessful and the mark was found to be descriptive, and hence to lack distinctiveneness.

It was not disputed that OS is a short form of Ordnance Survey and that people often referred to Ordnance Survey maps or OS maps, which are often very different from those produced by commercial publishers. The mark would inform consumers that the goods or services so marked originated from an official map-making agency.

A mark must have some distinguishing feature in order to be capable of functioning as a trade mark i.e. of being able to distinguish the goods of one undertaking from those of another. The OS mark had no such distinguishing feature. Instead, it conveyed to the relevant English speaking public the message that the goods in question were of the kind that one would expect to be provided by an Ordinance Survey, regardless of whether it was the Ordinance Survey of Northern Ireland or of Great Britain. This message would not be limited to printed material and would include global positioning systems and software related to mapping.

The relevant consumer would probably also perceive the mark as an indication that the goods or services in question were of above-average quality because they had been produced by the Ordinance Survey, and not just any commercial publisher.

The promotional message was unequivocal and meant that the relevant public would see the mark as a statement to the effect that the goods and services were being offered by one of the Ordnance Surveys of the Member States, and not as an indicator of origin.

The IPKat says that the Board’s statement that consumers would perceive the goods as being of above average quality because they came from a national mapping agency does not square with the fact that the mark was thought not to indicate origin. Perhaps this is another manifestation of the problems faced by the makers of goods who have an effective monopoly in the type of goods that would be covered by that mark.

PERPETUAL MOTION PATENT; BioSLR

1 Patents for devices that defy the forces of nature

The IPKat found this in National Geographic News. On November 1 Boris Volfson of Huntington, Indiana, received US Patent 6,960,975 for his design of an antigravity space vehicle. Volfson's craft is theoretically powered by a superconductor shield that changes the space-time continuum in such a way that it defies gravity. The design effectively creates a perpetual-motion machine, which physicists consider an impossible device.

Robert Park, a consultant with the American Physical Society in Washington DC, warns that such dubious patents aren't limited to the antigravity concept:

"I might hear a complaint about a particular patent, and then I look into it. More often than not it's a screwball patent. It's an old problem, but it has gotten worse in the last few years. The workload of the patent office has gone up enormously."

Some people might consider patents on unworkable products to be relatively harmless. Park, a physics professor at the University of Maryland at College Park, disagrees.

"The problem, of course, it that this deceives a lot of investors. You can't go out and find investors for a new invention until you can come up with a patent to show that if you put all this money into a concept, somebody else can't steal the idea. [Approving these kind of patents can] make it easier for scam artists to con people if they can get patents for screwball ideas."

Perpetual-motion machines have long held special appeal for inventors—particularly during the concept's heyday around the turn of the 20th century. Patent applications on such devices became so numerous that by 1911 the patent office instituted a rule that perpetual-motion machine concepts had to be accompanied by a model that could run in the office for a period of one year.

The IPKat likes patents for perpetual motion machines (though, embarassingly, he couldn't find a link to this one). They shouldn't need to be expensive to examine once you rumble the concept, so the patent office should get good income from them. The inventor is happy because he's got his patent. The patent agent is happy because he gets his fees. Other manufacturers sleep soundly because, if the invention is contrary to the laws of nature, there's not much risk of infringing it. Merpel adds, there's not much sympathy for investors. They're prepared to sink a lot of money each year into patents that don't work even if they're not contrary to the laws of nature; if they don't do their due diligence, it's their own fault.

Other patents by Boris Volfson here, here and here


2 Bio-Science Law Review

Issue 3 of Lawtext's Bio-Science Law Review for 2004-5 has now been published.

Goodies in rather thin issue include a review by Gareth Morgan (Taylor Wessing) of the royalties dispute between Cambridge Antibody Technology (alias CAT) and Abbott Laboratories that ended in victory for the triumphant licensor over use of its Humira product. There's also a challenging piece by Wim Nauwelaerts (from the Brussels office of Hogan and Hartson) entitled: "Whose DNA is it Anyway? Testing Genetics Under the Auspices of EU Data Privacy Law" - a new slant to an old problem, the IPKat thinks.

BROWNED OFF, AT NO COST; ESPACENET SURRENDERS TO POPULAR DEMAND; IAM

1 Browned off, at no cost

In Locksley Brown v MCASSO Music Productions Ltd (noted so far only on the All England Direct service) a two-man Court of Appeal consisting of Lords Justices Scott Baker and Neuberger yesterday overturned a decision of Judge Michael Fysh QC on costs in a rather messy copyright dispute.

Brown sued Mcasso in the Patents County Court for copyright infringement regarding the lyrics in a rap song, "Mr High Roller". Although the case was allocated to the fast track, substantial argument erupted as to whether Brown owned the copyright exclusively or only as a joint owner. Finding that Brown owned a 10& share in the copyright, he awarded him just £180 of his own costs but made him pay Mcasso's too. In his opinion the the costs order in favour of Mcasso as justified since Brown refused to accept two offers by Mcasso to settle the action and also refused mediation. Mcasso then handed Brown a £52,000 costs bill. Brown appealed on the costs issue, arguing that the judge erred in considering the matters that were irrelevant to the issue of liability and had overlooked the fact that the case had been allocated to the fast track.

The Court of Appeal allowed Brown's appeal. Judge Fysh had been entitled to consider Mcasso's first offer to settle the action on a limited basis only, but he was not entitled, on the basis of current authorities, to consider either the offer to mediate or the second offer to settle the action. Also, since this case was fast tracked, Mcasso's bill of costs was excessive. The right thing for the judge to have done was to make no order at all as to costs.

For the facts, click here and scroll down to Locksley Brown v Mcasso.
Visit Locksley Brown, the Lyrical Sultan, here (but when you get there, absolutely NO right-clicking ...)


2 Espacenet caves in to public demand

The IPKat's friend Barbara Cookson has sent him the following informative epistle:

Your readers may like to know that Espacenet has succumbed to overwhelming patent agent pressure and allowed you to download a full patent document. They say:

"We are pleased to announce that from the 4 November 2005, esp@cenet features full document printing and downloading.

We were concerned that full document downloads and printing might encourage gleeful esp@cenetters to start printing and downloading in earnest, and this might have put an intolerable strain on the system.

We are now satisfied that we have the right technical solution (users must assemble and collate the pages of a document before downloading it), and a screening system to discriminate against automated document retrieval in favour of humans (when requesting a download, users have to type in a graphically displayed keyword in response to a prompt)".

The less good news is that it worked perfectly on Windows 98 but not on XP professional. Barbara wonders how the IPKat will fare in its search for the full text of suitably catty patents.

The IPKat says, "His search, Barbara - not its search"; the Kat has not yet fallen under the veterinary scalpel. As for catty patents, how about these for starters? (Click here and here).


3 IAM Licensing supplement

Subscribers to Globe White Page's Intellectual Asset Management will be receiving their special supplement, "Licensing in the Boardroom 2005", if they've not already done so. It features 60 pages of fairly serious small print, taking in the effective settlement of patent litigation (through licensing, of course!), the need to exercise effective vigilance over licensees and the development of a strategy for licensing-in (this being an aspect of licensing that many IP owners forget about). All good stuff, of course.

Free trial of IAM here.

THE TROUBLE WITH OWNERSHIP; CLASH OF THE SOAP TITANS

1 The Trouble with Ownership

This delightful book has just strayed across the IPKat's busy little desk and he proposes to keep it by him for some time to come. Entitled The Trouble with Ownership: Literary Property and Authorial Liability in England, 1660-1730, this book is a celebration of the academic pursuit of an enjoyably interesting quarry for its own sake.

The author, Jody Greene (left), is Associate Professor of Literature and Women's Studies at the University of California, Santa Cruz. She is obviously a person who likes to shine the bright light of modern (and occasionally anachronistic) concepts into the darkest corners of intellectual property history, first identifying the key players in the development of a right that grew bigger than even its most fervent early supports could have believed. Greene then lets these players speak to us through her treatment of their words and deeds. This is not in any sense a political or legislative history of copyright so much as a socio-cultural one and it's good to be reminded from time to time that legal history is not owned by the lawyers. According to the Penn Press blurb:

"Copyright and intellectual property issues are intricately woven into any written work, but the precise nature of this relationship has plagued authors, printers, and booksellers for centuries. What does it mean to own the products of our intellectual labours in our own time? And what was the meaning three centuries ago, when copyright laws were first put into place?

Jody Greene argues that while "owning" one's book is critical to the development of modern notions of authorship, studies of authorial property rights have in fact lost sight of the most critical valence of owning in early modern England: that is, owning up to or taking responsibility for one's work. Greene puts forth what she calls a "paranoid theory of copyright," under which literary property rights are a means of state regulation to assign responsibility for printed works, to identify one person who will step forward and claim the work in exchange for the right to reap the benefits of the literary marketplace. Blending research from legal, historical, and literary archives and drawing on the troubled authorial careers of figures such as Roger L'Estrange, Elizabeth Cellier, Daniel Defoe, John Gay, and Alexander Pope, The Trouble with Ownership looks to the literary culture of early modern England to reveal the intimate relationship between proprietary authorship and authorial liability".

Says the IPKat, this is definitely one for the Christmas stocking. It's IP-related and it makes you think outside the terms in which you usually view copyright.


2 Soft-soaping the Patents Court

This little patents case appeared today on the ever-vigilant All England Direct subscription service: Lever Faberge Ltd v Colgate-Palmolive Ltd, a Patents Court ruling of Mr Justice Lewison. Colgate owned a rather elderly patent for a method of packaging soap bars. Lever, makers of LUX soap, sought a declaration of invalidity in respect of the patent. Colgate objected to the declaration being made, since the patent was shortly to lapse anyway. In any event, Colgate argued, the court should be reluctant to make a declaration in the absence of a judgment following the hearing of evidence.

Lewison J granted declaration of invalidity. He said that, in the olden days before the 1998 Civil Procedure Rules, the courts were indeed reluctant to grant a declaration of invalidity for a patent without fully investigating the facts. But now things have changed: the claim form and any grounds of invalidity had to be supported by a statement of truth (formerly known as an affidavit - and still informally referred to as one). The court can make a declaration even without a full judgment, so long as its terms make it crystal clear as to what was the basis of its decision. Here the patent was clearly invalid so there was no real problem.

The IPKat notes that even elderly patents with only a short unexpired term ahead of them can have substantial nuisance value in the market-place - less so, however, if they're invalid.

Make your own soap here ... and here
Singing in the bath here and here

TOUGHER US CRIMINAL MEASURES

US Newswire reports that US Attorney General Alberto Gonzalez has announced a new proposed piece of legislation. The Intellectual Property Protection Act of 2005 will implement stronger forfeiture proceedings, criminalize intellectual property infringement motivated by any type of commercial advantage or private financial gain and increase the possibility of restitution for the “victims” of infringement.

The IPKat thinks that this may be a bit of an overreaction. While IP infringement isn’t a “victimless crime”, as some would suggest, there are existing provisions which criminalise certain forms of infringement. If these aren’t working, growing increasingly more shrill bya increasing the severity of criminal measures isn’t likely to make the situation any better.

OUT OF FOCUS; PLEASE, SIR ...

1 Out of Focus?

Yesterday the Court of First Instance (CFI) gave its decision in Case T-275/03 Focus Magazin Verlag GmbH v Office for Harmonisation in the Internal Market.

ECI applied to register as a Community trade mark (CTM) the word sign Hi-FOCuS for telecoms goods and services in Classes 9 and 38. Focus Magazin opposed, arguing there was a likelihood of confusion under Article 8(1)(b) of CTM Regulation and relying on its earlier German trade mark FOCUS; this mark was registered in 24 Classes of goods and services and Focus Magazin complained of a likelihood of confusion in respect of all of them. The notice of opposition contained a certificate of registration of the German mark, in German, and also a certificate of registration of the international trade mark FOCUS, this time in French.

The Opposition Division told Focus Magazin that, since it had not provided a complete translation into French (the language of the proceedings) of the certificate of registration of the German trade mark on which the opposition was based, the opposition failed. Focus Magazin then appealed to the Board of Appeal, supplying a an annex to its appeal a French translation of the German certificate. This appeal was dismissed, following which it made a further appeal to the CFI.

This time Focus Magazin struck lucky. The CFI allowed the appeal and annulled the Board's decision holding that, by failing to take into consideration the document produced by Focus Magazin within the time limit, the Board of Appeal had acted outside the scope of Art.74 of the CTM Regulation. The Board should have based its decision on all the matters of fact and of law, whether they were introduced in the proceedings at first instance or in the appeal. Since the document in question had been annexed to the pleading lodged before the Board of Appeal, the Board ought to have taken account of that document.

This is the sort of trade mark litigation that the IPKat hates. The opponent should have put all its evidence in order before the Opposition Division hearing; the Board of Appeal should have considered it (the Boards don't like being treated like first instance decisors though). The trade mark was applied for more than six years ago and this opposition has been litigated all the way from Spain to Luxembourg without even getting to the starting line. Worst of all, FOCUS is such a crummy mark. It's used by so many products and services that it's almost as hackneyed as the IPKat's much-hated lightbulb motiv. Merpel adds: six years, for this?? This little spat could be resolved by sitting the parties down for 20 minutes and hitting their heads together every so often ...

Some other FOCUSes here, here, here, here, here and here



2 German court under fire from Advocate General

A more enjoyable read is Case C-206/04 P Muehlens GmbH & Co. KG v Office for Harmonisation in the Internal Market, in which Advocate General Ruiz-Jarabo Colomer (left) delivered his Opinion this morning. This is an exciting scrap between Zirh International Corp., a CTM applicant who wants to register the word mark ZIRH for perfumes and toiletries and Muehlens, and Muehlens, who hold an earlier figurative mark for much the same goods containing the word SIR. A likelihood of confusion is alleged. The Opposition Division, the Board of Appeal and the Court of First Instance have all rejected the opposition but Muehlens perserveres, fortified by the fact that a German court has ruled that there is a likelihood of confusion in infringement proceedings between the same two signs.

In advising the European Court to reject Muehlens' appeal, the Advocate General concluded his opinion as follows:

"74. ... when a national court gives a decision in which it employs an indeterminate legal concept backed up by a directly applicable Community provision, such as that relating to the likelihood of confusion of Community trade marks, in a manner that openly conflicts with the case-law of the Court of First Instance of the European Communities, compliance with the abovementioned obligations and the great importance of the system of preliminary references require it to have recourse to Article 234 EC in order to avoid the legal uncertainty which, in judicial circles, arises from the coexistence of divergent judgments within the Union.

75. The German court’s decision rejects the Court of First Instance’s thesis that the degree of phonetic similarity between the two trade marks is so insignificant that it will not give rise to any likelihood of confusion, since the degree of identity of the marks is not sufficiently great. In giving reasons for its decision, the Landgericht Hamburg relies on the case-law of the Bundesgerichtshof (German Supreme Court in civil and criminal matters), according to which failure to consider phonetic similarities when evaluating the likelihood of confusion unjustifiably deprives the proprietor of the trade mark of some of the protection to which he is entitled.

76. Even if it is accepted that the national judicial authorities to which Article 234(2) EC applies, such as the Landgericht Hamburg, enjoy a degree of latitude as regards preliminary references, (44) the need for the uniform application of Community law dictates that recourse must be had to Article 234 EC, specifically where the approach taken by a national high court is at odds with that taken by a Community Court, particularly if the decisive impact which a request for a ruling might have had in resolving the dispute is taken into account.

77. The fact that the decision given by the first German court was open to appeal does not diminish the harm caused, essentially by creating legal uncertainty, as the Commission has emphasised. Faced with such a clear conflict of interpretation of a Community provision, the only course open to that court was to use Article 234 EC; (45) it is to be hoped, however, that an appeal court will mitigate the effects of the situation that has arisen, for the sake of interpretative rigour and the European spirit that has presided over the comportment of the judicial authorities in that country, which has always led the field so far as concerns the sincere cooperation with the Court of Justice provided for by the Treaties.

78. In short, we should probably not just complain of the way the Landgericht Hamburg has conducted itself in this context; we must also hope that such dysfunctions will be brought to an end and that the legislature will become aware of how urgent it is to improve the complex legislative framework set up to facilitate harmonious development of economic activity in the Community as a whole, achieving full establishment and proper functioning of the internal market within a European Union that is increasingly convinced of the importance of its contribution to the construction of a better continent".

Stirring stuff, the IPKat says! But will the Court agree next Spring?

STATUS QUO IN COURT; INTERFLORA REPOSITIONS ITSELF

1 Status Quo claims preserved in part ...

The IPKat has been busily contemplating Lancaster v Handle Artists Management Ltd, a Chancery Division ruling yesterday by the Vice-Chancellor, Sir Andrew Morritt and picked up swiftly by All England Direct and not yet available on BAILII.

Most of the parties in this dispute were members of the pop group Status Quo and had an interest in the copyright and performing royalties payable under four sets of recording agreements concluded between July 1966 and December 1982 (the Pye agreements, the Gaff agreements, the 1979 agreements and the Classicmore agreements).

Coghlan left the group in 1981 as did one of his colleagues, Lancaster, in 1987. In November 2002 they sued the other group members and their manager, seeking declarations that they remained entitled to their share of royalties under the recording agreements and that the defendants held such royalties on trust for the members of the group in equal shares. Lancaster and Coghlan sought accounts and enquiries as to how much they were entitled to receive. The defendants applied to strike these claims out on the basis that Lancaster and Coghlan had relinquished any rights to royalties by the documents they signed when they left. Further, they argued, the claims were time-barred by the Limitation Act 1980.

The judge struck out or summarily dismissed the claims for most of the royalties, except in the case of the first claimant those arising under the Pye agreements and in the case of the second claimant those arising under the Pye and Gaff agreements. This wasn't because Lancaster and Coghlan were entitled to the money, but because those claims couldn't be easily determined without a full trial. The allegations contained in the particulars of claim and the relief sought included allegations that the defendants had received money as trustees. If that could be proved, the limitation-based defence would not apply.

The IPKat thinks this must be right. He is always saddened by the sight of aged rock stars in court, trying to refresh their memories of the 1960s, the period of history in which it is popularly said that, if you can remember the '60s, then you weren't there ...

Google hits for "If you can remember the 1960s" here
Rockin' All Over the World here


2 ... and now for some flower power

Interflora, the IPKat reads in Brand Republic, has revamped its branding for direct marketing and other communications activity and is now to position itself as the 'flower experts'. This new slant, developed by direct marketing agency WWAV Rapp Collins Leeds, also includes the message that receiving flowers helps people to feel "special". The newly created branding is to get its first outing on two campaigns being developed under the themes of birthdays and anniversaries. Lyn Davies, Interflora head of brand, said:

"Interflora is already an established and trusted brand but by combining these two key messages we have really set ourselves apart from the competition".

The IPKat finds it difficult to believe that Interflora, who have been supplying flowers on a specialist basis since before he was born, are going to increase their brand power or change consumer perceptions by telling their customers what they already know.

Flower power here and here

WINE WHINE

CBS reports that CBS anchor Bruce Rheins and his wife, Dawn Westlake, have applied to the USPTO to register JESUS JUICE as a trade mark for wines. “Jesus Juice” is the term that the singer Michael Jackson was said to use for wine during the recent child molestation case against him and, indeed, the figurative element that accompanies the word element is a gentleman in a cruciform position wearing a loincloth, fedora, penny-loafers and a single rhinestone glove. The application has led to objections from Michael Jackson’s lawyers. Rheins and Westlake have countered that they never intended to sell wine under the mark. Instead, they applied for it for the purposes of distributing wine to their friends, and to stop others from obtaining the mark, leading to a situation where other peoples’ beverages could be mistaken for their own.

The IPKat reckons that, if the couple really only intended for the mark to be used on goods distributed to their friends, it would be unlikely that the mark would be registered or, if it was registered, stay on the register for long. The case is intriguing though. The IPKat is familiar with allegations that marks which appropriate the names of celebrities may be considered to be registered in bad faith or to be immoral. However, he’s not convinced that it’s desirable that celebrities should be able to control other elements which have become associated with them on these grounds, particularly where these elements have come to fame in insalubrious circumstances.

AFGHANS COME IN FROM THE COLD; MAN STEALS NAME

1 Operation Enduring WIPO

Only four years after the Allied invasion of Afghanistan in Operation Enduring Freedom the government of that country has taken a momentous step towards acceptance within the international community by signing up for ... the WIPO Convention.

Above right: expressions of Afghan folk culture will benefit from WIPO membership

This Convention comes into effect for Afghanistan on 13 December 2005, when the Islamic Republic becomes the Convention's 183rd participating state. The IPKat is, as usual, delighted. Does this mean it's time to put away the Kalashnikovs and whip out the Rolexes, he wonders.


2 Name theft man remains anonymous

The IPKat was fascinated by an item from BBC News about a man who has been sentenced to a term in jail for obtaining a passport by deception after stealing a dead baby's name in Day of the Jackal fashion. The man, who calls himself Christopher Edward Buckingham, refuses to reveal his true identity; he stole his name in 1983 from the birth certificate of a baby who died 20 years earlier.

During police interviews the man said he was Lord Buckingham and had inherited the title on his father's death in 1982. A letterhead bearing the Buckingham coat of arms (left) was found in his possession, but the College of Arms said no-one was currently registered to use the coat of arms, which were last held in the early 1700s.

The IPKat wonders whether it is theoretically possible for a person to abandon or surrender all rights to his own name, these being rights that have some statutory significance, for example the right to trade under one's own name under Council Directive 89/104, Article 6(a). Merpel points out that even anonymous and pseudonymous authors and artists can reassert their right to be known as the creator of their works.

Artist without a name, er, sometimes ... here
Name theft: a Bard comments (find 'trash' and read on)

GAME THEORY LECTURE; NEW BOOK

1 Game theory: forthcoming lecture

On Thursday 24 November, from 6pm to 7pm, IPKat co-blogmeister Jeremy is giving a lecture hosted by University College London in the Current Legal Problems series. The lecture is on ‘How to Win at Monopoly: Applying Game Theory to the Enforcement of Intellectual Property Rights’. According to the Abstract:

"This lecture summarises the tenets of game theory and the basic principles of intellectual property law. It tests the applicability of game theory to some basic intellectual property enforcement problems such as dealing with counterfeit goods, parallel importation and (if time and resources permit) cybersquatting. Finally, it will show that intellectual property owners are more likely to “win” if they learn how to play the game better under existing rules than by repeatedly demanding increased levels of legal protection".

Please accept this notice as a personal invitation: you're more than welcome to attend.


2 New Tottel title

One of the IPKat's recent postbags contained a surprise: Engelman's Intellectual Property Update, written by London barrister Mark Engelman (left) and published by Tottel Publishing. Costing £79 in paperback and published this October, this Update covers legislation and case law over approximately the past 18 months. According to the publishers, "it's the quick reference guide that no IP law practitioner should be without". Described as "time-saving", it offers detailed coverage of both substantive and procedural issues.

"With this fully up-to-date quick reference guide you will have immediate access to related legislation and cases, helping you to put a topic into context straight away".

The IPKat feels that this project has been totally misconceived and, for the most part, poorly executed. In the days before the internet and online services were available, there might have been some use for a book of this nature and possibly a market for it. But there is no excuse for it now. Databases like BAILII, the Patent Office and OHIM complement the subscription-based services such as LexisNexis, Lawtel and Westlaw, making it far easier to identify materials online than by using this book which, incidentally, gets woefully few words per page and is far from ideal for any practitioner who needs to photocopy items.

The format for each case is in the form of an 'Engelman number' (e.g. 5.16 is the 16th case digested in Chapter 5, Trade Marks), Case Name, Details of whether it is reported, Date of judgment, Court, Abstract, Comment, Result and Cited Authorities. On the plus side, the abstracts themselves are often quite succinct, though pressure of space must inevitably require them to be as brief as reasonably possible. However, the compilers of this book have frequently given no name for cases noted, inserting the case number instead. Another puzzle is as to why the names of members of OHIM Boards are given, while the names of Lord Chancellors' Appointed Persons are not - the IPKat would have thought that the latter would be far more interesting and useful to practitioners than the former.

As for data as to whether the case is reported, this book is frankly appalling. Sometimes a citation is given to All England Direct. More often the case's neutral citation reference is given. Still more frequently, however, no reference is given at all, despite the fact that the case has already been reported in the European Trade Mark Reports, the European Copyright and Design Reports, the Fleet Street Reports or the Reports of Patent Cases (all specialist IP reports). Another significant omission is that of any abstracts of, or reference to, European Patent Office decisions - which must presumably be of some use to patent practitioners. If OHIM decisions are featured, why not EPO decisions too? A further omission is that of any clear guidance on the outside of the book itself as to the period it covers.

It's obvious that a lot of hard work has gone into preparing this book, but that its planning and execution has let it down. If this book is to be "the first of many future annual editions", the IPKat hopes that its publishers and planners will put some long, hard thought into sorting it out. Merpel adds, how can this book be the first of any future editions? The first future edition will be the next one ...

COPYRIGHT ROUND-UP

* M&C Tech reports that the music-sharing internet site, Grokster, has shut down, following its defeat before the US Supreme Court in June. The IPKat isn’t surprised, considering how comprehensively they were trounced. Merpel looks forward to the next generation of file sharing service provider to have a go – such sport!

* Vietnam Airways is to stop playing Vietnamese music on its flights according to Vietnamnet Bridge. The Centre for Protection of Music Copyright argues that the airline should be paying extra as it is performing the music in public. The airline argues that it has already paid when it bought the CD containing the music. Merpel reckons that most of the music played on aeroplanes isn’t worthy of copyright protection in the first place.

* Microsoft is to scan part of the contents of the British Library and make the results available on MSN Booksearch says Techworld. While it is not paying for access, the British Library will benefit, as it has been in the process of digitizing its collection for the past decade. Only work that is out of copyright will be protected. The IPKat favours making the contents of books available if (and only if) they are out of copyright. This is particularly valuable for older books which may be fragile and impossible to get hold of elsewhere. Even so, he still feels that you can’t beat a good book.

RIGHTS FOR SAUSAGES; HUMAN RIGHTS FOR DUMMIES; APOLOGIES

1 Cumberland sausage makers mobilise for action

The IPKat has learned from The News & Star that makers of the Cumberland sausage (right) in Cumbria have formed an association in their fight to protect the reputation of traditional Cumberland sausage. After a meeting in Penrith last week, the Cumberland sausage producers’ association was formed, with Austen Davies of Border County Foods as chairman.

The Association will take forward a bid to the European Commission for protected geographical indication (PGI) status. A draft specification has been drawn up and the Association is now putting together a detailed history of the spicy sausage. It is believed that the PGI will be for the term TRADITIONAL CUMBERLAND SAUSAGE, to distinguish it from the various rogue sausages and other life forms (left) that masquerade as Cumberland sausages but are not.

Merpel is feeling a bit dyslexic: this is a case of a PGI for a PIG ...

If you want to help the campaign by providing historical sausage facts, call Veronica Waller on +44 1524 784865.
Cumberland sausage recipes here and here


2 Translation watch

The IPKat is getting quite impatient about the absence of an English-language translation of the French text of Anheuser-Busch v Portugal, the European Court of Human Rights decision of 11 October on the applicability of the first Article of Protocol 1 of the European Convention on Human Rights (respecting rights of property) to trade marks.

Right: the must-read book for all human rights lawyers

Do any IPKat readers have an English version they can make available?

3 Apologies to our email subscribers

The IPKat has had a problem with his email circulars which he is striving to resolve.

He hopes that the solution will soon be within sight. Please be patient ...

SHOPALOTTO PATENT DENIED; CEREAL PATENTING HITS THE STATES

1 Notalotto luck for Shopalotto

Butterworths' All England Direct online subscription service has just thrown up this little decision from Mr Justice Pumfrey in the Patents Court: Re Shopalotto.com Ltd.

Shopalotto applied to patent a computer apparatus configured to provide a lottery playable via the internet. The Patent Office refused the application, holding that it was excluded from patentability under s.1(2)(d) of the Patents Act 1977 (which has broadly the same effect as Article 52 of the European Patent Convention) since it was only a presentation of information "as such".

Pumfrey J dismissed Shopalotto's appeal. He held that

* in determining whether an invention was excluded from patentability under sections 1(2)(c) and (d) of the 1977 Act (computer programs and presentations of information as such), the court had first to determine what the inventor had contributed to the art over and above a computer operating in a new way as a matter of substance. Then it had to decide whether that contribution lay in excluded matter or whether it consisted in a technical contribution or effect. The contribution had to be considered as a matter of substance so as, for example, to prevent patents being granted for such things as novel computer programs on a carrier such as a compact disc.

* the physical under-pinnings of the claim were a general purpose computer programmed to provide a web-server and access to the internet. There was no contribution to the art outside the provision of the various pages to any person suitably equipped to view the pages provided by the server.

The IPKat can't help feeling that applicants in these cases are like moths dashing their wings against the candle. There is no way they can succeed util the law is changed, however they try to disguise their inventions. Merpel adds, at least Patent Office practice has proved to be remarkably consistent over the years in detecting the flaws in software-related inventions that make no contribution to the art.


2 Cereal patenting hits breakfast tables

The IPKat nearly choked over his muesli when he read the latest patent horror story from the US. A patent has been filed for a breakfast cereal business format by Chicago-based Cereality. The idea is that customers at outlets of the Cereality Bar and Café can mix more than 30 brands of cereals to suit their personal taste and either take the resulting mix away or add milk from a "Moo Machine" (unrelated to the Swedish Moo Machine depicted below) and relax on a sofa.

Optional extras include chocolate and strawberry flavouring for the milk and toppings that range from bananas and nuts to sugary "Pop Rocks". Counter staff ("cerealogists") wear pyjamas as a uniform, while the café plays popular Saturday morning cartoons on overhead television sets to complete the experience. Many of the customers are apparently homesick students, whose diet consists almost entirely of LUCKY CHARMS or FROOT LOOPS.

A legal battle has commenced after the opening of the rival "Bowls" café in Gainesville, Florida and a similar restaurant in Miami called "The Cereal Bowl". Lawyers for Cereality have submitted a 40-point claim to the United States Patent Office, covering in detail how the company makes and markets a bowl of cereal. Supporters of the rival cafes claim that the legal moves are a crude attempt to bully them out of a rapidly growing business that could one day match McDonald's or Burger King. They include members of Florida Free Culture, a student group calling for the repeal of intellectual property laws, who have launched a "Cereal Solidarity" campaign to fight the patent application. Says their leader, Gavin Baker:

"the issue isn't just about cereal but something more fundamental. It's whether people should be able to claim an exclusive right on mundane ideas any eight-year-old could think of. When someone is trying to take out a patent on mixing cereals and adding milk, that is wrong".

Although Cereality has three cafes, it plans further expansion next year, selling dozens of franchises across America and eventually, it hopes, Europe. The chain was conceived by David Roth and Rick Bacher who say they came up with the idea after meeting a businessman who kept COCOA PUFFS in his briefcase as a snack.

Cereality says it is only trying to protect its brand image and is not attempting to put competitors out of business. Its application covers everything from the uniforms and the kitchen-cabinet display area to the way the cereals are mixed, described as "placing the first and second portions of the competitively branded, packaged food products together in a container". Copies of the patent application have been sent to rivals with a warning that any infringement could lead to triple damages.

Assuming that this information is correct, the IPKat is appalled at the abuse of the patent system as a means of securing brand protection. He also speculates as to how the doctrine of equivalents will be applied to variants launched by competitors.

What Saddam Hussein thinks of FROOT LOOPS here

LATEST TRADEMARK WORLD, PATENT WORLD

1 Trademark World ...

The November issue of Informa's 10-times-a-year Trademark World leads with a bright and breezy piece by Nicola Isaacs (University of Plymouth) on the implications for brand protection and exploitation when family businesses fall out, with specific reference to the battling Birkenstocks.

In the same issue Isabel Davies and Kristien Carbonez (Howrey) review the Advocate General's Opinion in the Picasso/Picaro case, for which the European Court of Justice's ruling is eagerly awaited (no date fixed yet; the IPKat fancies early February) and Barbara Cookson (Filemot) writes on shape marks.


2 ... and Patent World

The November issue of Trademark World's younger sister Patent World has also reached the IPKat. It leads with IP litigation partners Nick Gardner and Joel Smith (Herbert Smith) examining the role of in-house counsel in the handling of major patent litigation strategy (the IPKat wonders if there's such a thing as "minor patent litigation strategy" ...). DLA Piper Rudnick Gray Cary UK's Neville Cordell and Selina Taylor focus on patent litigation, this time on some recent decisions on forum-shopping (there's a neat chart on pages 27-28). There's also a neat multi-authored piece from Kenyon & Kenyon and Reimann Osterrieth Kohler Haft comparing infringement damages calculations in Germany with those in the USA.

BUS PATENT STALLS; HORRID CONTRACT CASE IN COMPLEX APPEAL

1 The wheels on the bus go round and round ...

Now that Mr Justice Kitchin has been appointed to the Patents Court, it seems that BAILII's web pages for that court are a little busier these days. The IPKat has just found this case on BAILII: Crawford v Jones, decided on Friday 4 November.

Crawford applied for a patent for a display system for buses, which allowed a bus at the front of a queue of buses to switch into exit mode, whereby it dropped off passengers only, when it was considered necessary to increase the separation between it and the following buses. When sufficient separation had been achieved, the front bus would revert to a normal mode of operation and the display would be switched accordingly. The patent examiner listed four prior art documents in support of his contention that the claimed invention lacked novelty and was obvious. He also maintained that it was excluded from patentability as being a method of doing business or a presentation of information. The application was ultimately refused as being a mere method of doing business or presentation of information "as such" and for failing to make any technical contribution that might redeem it. Crawford appealed.

Kitchin J dismissed the appeal. The only advance in the art which could be said to be new and inventive was the nature of the information to be displayed on the outside of the bus and the method of operating a bus in exit mode. These were things that could not, individually or collectively, be regarded as being of a technical nature. What's more, the information to be displayed on each bus was a presentation of information and the method of operating a bus in exit mode was a method of doing business.

The IPKat thinks this appeal was always a non-starter. That's not to say that Crawford's ingenuity was not deserving of protection - just that it can't be patented in Europe. It's doubtful, though, that sui generis protection for "good ideas" will evolve in that Continent though.


2 If you want to know what you've contracted for, take a trip to the Court of Appeal

From the All England Direct subscription service comes Taylor v Rive Droite Music Ltd [2005] EWCA Civ 1300, a decision of the Court of Appeal (Chadwick, Latham and Neuberger LJJ), also on Friday 4 November.

Taylor, was a record producer and songwriter, entered into two agreements with Rive Droite, a music production and publishing company. The first was an (oral) producer’s agreement, the second a (written) publishing agreement. The publishing agreement was renewed twice, most recently in 1998. At the end of 2000 Taylor stopped working for Rive Droite, and brought proceedings in which issues arose as to (i) whether the 1998 agreement was for two or three years, (ii) the terms of the agreement and (iii) the copyright position regarding various songs.

Mr Justice Lewison held that the agreement was for a term of two years; Taylor was not obliged under the terms of the agreement to work exclusively for Rive Droite; Rive Droite was in breach of the agreement in failing to exploit a particular song partly written by Taylor; Taylor had infringed Rive Droite's copyright in two other songs; it was an implied term that, for any project that Taylor agreed to carry out, he would not provide his services to anyone other than Rive Droite (if Rive Droite secured the project). The judge also found an implied term that Taylor would not do anything to prevent Rive Droite from securing a project and that Taylor was in breach of that implied term; finally, Rive Droite had not accounted to Taylor on the correct basis. Rive Droite appealed and Taylor cross-appealed.

The issues on the appeal were (i) whether the term of the 1998 agreement was indeed two years or three; (ii) whether Taylor had infringed Rive Droite's copyright in the two songs; (iii) whether Rive Droite was entitled to an injunction to restrain further infringements of copyright; (iv) whether Rive Droite had made good its claim against Taylor for interference with goods in relation to a certain project and (v) whether Taylor was in breach of an implied term of the agreement in relation to a certain album.

The Court of Appeal was obviously in two minds about the whole thing. It held

* (Chadwick LJ dissenting) The term of Taylor's engagement under the 1998 agreement was two years;

* (Chadwick LJ dissenting) Taylor had not infringed copyright in the two songs;

* Rive Droite was not entitled to injunctive relief to restrain further breaches of copyright;

* Rive Droite had not established its claim for interference with goods;

* Taylor was not in breach of an implied term of the agreement in relation to the album.

The IPKat wonders what this is all about, since the All England Direct note is disconcertingly coy about the facts (available from Lewison J's marathon judgment, posted on BAILII). the moral of the story is however crystal clear. You can save a lot of money by avoiding lawyers when you make a contact - but the cost, in terms of stress, uncertainty and legal fees if you then have to litigate to see what the terms of the contract means, may be far higher.

SIGHT, SPICE AND SPAM

Seeing is believing

The New York Sun reports that the Metropolitan Transit Authority of New York (responsible for the subway, buses etc.) has applied to register the phrase “If you see something, say something”, used to encourage the public to be vigilant in the fight against terrorism, as a trade mark. Other transport authorities, who assumed that the phrase was free for everybody to use, are said to have been surprised. The IPKat can’t really see the point of this. He’s not sure that the phrase would distinguish the MTA, particularly if other transport authorities are using it, and he can’t see what use a mark with such negative connotations would be in the market place. In theory trade mark protection may enable the MTA to police the mark against parodists, but there are defences for parodists anyway.

New IP blog

Shamnad Basheer and Dev Gangjee of Oxford Intellectual Property Research Centre have started their own blog on Indian IP – SPICY IP. The IPKat says that if you’re interested in a (so far mainly patenty) insight of IP law and policy in India, it’s worth a visit.

And now for an experiment...

The IPKat is going to try enabling comment verification to see if he can stop the spamming of his comments by the many scamsters who pollute the internet. Apologies in advance if readers have any troubles posting comments because of this.

BRAIN DRAIN; COMPTROLLERS' OPINIONS; MORE ON BARCLAYS BLOG

1 EU legislates on admission of aliens to European research projects

The IPKat has spotted Council Directive 2005/71 of 12 October 2005 on a specific procedure for admitting third-country nationals for the purposes of scientific research. Recitals 5 and 6 of this Directive read as follows:

"(5) This Directive is intended to contribute to achieving these goals by fostering the admission and mobility for research purposes of third-country nationals for stays of more than three months, in order to make the Community more attractive to researchers from around the world and to boost its position as an international centre for research.

(6) Implementation of this Directive should not encourage a brain drain from emerging or developing countries. Back-up measures to support researchers’ reintegration into their countries of origin as well as the movement of researchers should be taken in partnership with the countries of origin with a view to establishing a comprehensive migration policy".

The IPKat knows how difficult it can be for researchers in many developing countries who, once they've been educated and gain research experience in the developed world, become hugely frustrated at the lack of investment and research opportunity in their own home countries. That's why they'd rather move to Europe, Japan or the US and achieve personal fulfilment rather than go back and find they've swiftly been left behind by advances in their areas of expertise that they can scarcely monitor, let alone participate in. To the extent that it looks towards a "comprehensive migration policy", the Directive will still be facilitating the brain drain it maintains it wishes to avoid. Merpel adds, I'm sure that any migration policy that is selective will make sure that the best researchers from developing countries are those most likely to be kept by the Europeans.

Brains here; drains here
Brain drain from Europe to the US here and here



2 Comptrollers' Opinions

The IPKat has spotted the first two requests to the UK Comptroller of Patents for non-binding Opinions as to whether a particular act infringes a patent (one additionally asks whether the patent is valid). They were filed on 19 and 20 October respectively and the deadline for receipt of comments - which will be made public on the Patent Office website - is 30 November.

The first applicant is patent agency Marks & Clerk, asking - presumably on behalf of a client - in relation to a Novo-Nordisk patent (EP1351732, Automatic injection device with reset feature); the second is Jeremy Lenighan (asking in regard to infringement and validity concerning his own patent EP0801532, Improvement relating to bath and shower combinations).

The IPKat proposes to keep an eye on developments relating to Comptrollers' Opinions and will report back when he can.



3 "Now there's an afterthought"

On Wednesday 2 November the IPKat posted an item on a spat between Barclays Bank and accountants Cooper Parry over the “Now there’s a thought” strapline. One of the Kat's friends, on conditions of extreme anonymity, adds:

"Your comments re Cooper Parry v Barclays were spot on but it has been my experience that problems like this are rarely down to "innocence" so much as arrogance. In Cooper Parry's case they are major players in the East Midlands [of England] with a very prominent advertising campaign and were very well known to the bank in that region. You are faced with two scenarios - did the bank know but decide to "take a punt" or were the searches not comprehensive in the first place, in which case I wouldn't like to be the bank's advisors when the dust settles.

Big wealthy companies are in a position to "take a punt". The chances are that their size will put off any potential arguments over IP rights. When a defendant is wracking up costs at Clifford Chance rates any claimant is going to be worried about the repercussions of losing.

Also if it's a big promotional campaign cross undertakings in damages could leave a smaller company open to a claim for many millions, it's not a question of being able to afford such undertakings, it's whether or not giving such an undertaking would be a responsible act when you employ X hundred people and losing would put them all out of a job.

The Court seems to hold the position that if you are sure your case is strong you should not fear giving a cross-undertaking - the logic of which I can see and I completely understand that the defendant must be protected. However, no matter how strong your case the repercussions are something that have to be seriously considered by any responsible claimant and are likely to put off even those with the strongest of cases.

With it now costing over £1,000 to issue a claim form in such actions, the larger wealthy companies are sitting pretty. They can afford to attack anyone who infringes their rights and to a great extent ignore anyone who's rights they (whether innocently done or not) infringe. As with so much else in life, it all comes down to money!".

Duly noted - and well said!

LAST NIGHT'S GLOBALISATION AND TMS LECTURE

Last night the IPKat attended Professor Graeme Dinwoodie’s contribution to the Queen Mary IPRI series on the impact of globalisation on trade mark law. Professor Dinwoodie’s focus was on the potential conflict between territoriality and globalisation. To this end, he identified two reasons for territoriality, which lead to different outcomes with regard to the various places in trade mark law where the issue arises.

Intrinsic territoriality exists where the reason for territoriality is inherent in the type of trade mark rule itself while political territoriality exists where, as a matter of political fact, it would be very difficult to enforce trade mark law outside the territory. He then proceeded to show how the three main sources of the increased global impact of trade marks (expanded tourism, immigration and the existence of multinational corporations) can fit into this model, by reference to the US case law on the subject.

The IPKat looks forward to future seminars in the series. The issue is one which is certainly due for serious study. He hopes that the series will consider a number of fundamental issues that (he thinks) need to be addressed which analysing the relationship between trade marks and globalisation:

• What does globalisation mean?
• What is the globalisation of trade marks?
• How will be know when the globalization of trade marks (i) is happening and (ii) has happened?
• What are the indicia that this is happening/has happened?
• How is the law affected by the globalisation of TMs (assuming that globalisation of TMs is happening)?
• Does trade mark law actually have an effect on the globalisation of TMs (i) de jure and (ii) as a matter of business practice?
• What factors other than the law could be causing globalisation of TMs? How can we know whether it is the law, rather than these other factors, which is causing the globalisation?
• Is globalisation of (i) TMs and (ii) TM law desirable?

(Ta to Richard Gallafent, with whom the Kat discussed some of these ideas)

LOVIN' SPOONFUL; MISSING TERM?; THE PATENT ZOMBIE

1 A spoonful of Regulations help the medicine go down

While he was busy pursuing other things, the UK Patents Act 1977 was further amended - this time by the The Medicines (Marketing Authorisations Etc.) Amendment Regulations 2005 No.2759 - which came into force on 30 October. These Regulations implement certain provisions of Directive 2004/27 which amends Directive 2001/83 on the Community code for medicinal products for human use. Regulation 3 amends section 60 of the Patents Act 1977 so as to implement Article 10(6) of Directive 2001/83 (substituted by Article 1(8) of the 2004 Directive) and Article 13(6) of Directive 2001/82 on the Community code relating to veterinary medicinal products (substituted by Article 1(6) of Directive 2004/28). These Articles provide that the conduct of tests and trials for the purposes of Article 10(1) to (4) of the 2001 Directive, and their consequential practical requirements, shall not be regarded as infringing patent rights for medicinal products.

The IPKat is relieved to know that clinical experiments conducted for the purpose of gaining approval for non-generic products will not infringe any patents.

Compendium of European Union legislation on medicinal and pharmaceutical products for human use here
How to avoid using medicine here


2 There must be a term for it

If you keep getting the feeling you've seen something before, there's a neat French term for it: "déjà vu". But, the IPKat wonders, is there an equally neat term for the opposite, the feeling that you are quite certain you haven't seen it before, when you have? One of the IPKat's friends has suggested "jamais vu". Can anyone do better?

This is not mere idle speculation. In copyright infringement, subconscious copying occurs when a person reproduces a work that he has no recollection of seeing or hearing. Where evidence can be adduced that he did hear or see the earlier work, a finding of infringement may follow.


3 The Patent Zombie

The IPKat read this on PR Web Newswire (he also received it from Dev Gangjee): the US Patent and Trademark Office is publishing what is claimed to be the world's first “storyline patent” application. Filed by patent agent Andrew Knight in November 2003, this application must still overcome the hurdles of utility, novelty and nonobviousness found in US patent law. That fictional storylines may be patentable was first suggested in a November 2004 article in the Journal of the Patent and Trademark Office Society, “A Potentially New IP: Storyline Patents.” The article argues that case law strongly suggests that methods of performing and displaying fictional plots, whether found in motion pictures, novels, television shows, or commercials, are statutory subject matter, like computer software and business methods.

The story, The Zombie Stare, tells of an ambitious high school senior, consumed by anticipation of college admission, who prays one night to remain unconscious until receiving his MIT admissions letter. He consciously awakes 30 years later when he finally receives the letter, lost in the mail for so many years, and discovers that, to all external observers, he has lived an apparently normal life. He desperately seeks to regain 30 years’ worth of memories lost as an unconscious philosophical zombie.

Charles Berman, Co-Chair of the Patent Prosecution Practice at Greenberg Traurig LLP, comments: “non-obviousness probably presents the biggest challenge to patentability” because minor variations on a central theme may generate so many different storylines. The US Patent Office is apparently planning to publish subsequent storyline patent applications, also by Knight, on November 17 and December 8 and 22.

The IPKat wants to know if this plot would be infringed by his own creation, The Patent Zombie. This is the story of a patent agent who invents a fiction plot and prays to remain unconscious until after his patent is granted. 20 years later he wakes up, to find that the patent has issued, been ruthlessly exploited for profit and ultimately expired. To all external observers, he has lived an apparently normal life. He desperately seeks to regain 20 years’ worth of lost royalties lost as an unconscious patent troll.

More on Zombies here and here

HANDBAG COPYIST BAGGED; WHEN PATENT DAMAGES AND COSTS ARE WITHHELD; LATEST IP REVIEW

1 Only Connect!

The IPKat's trawl of IP news today took him to the excellent All England Direct subscription service once again, where he found French Connection Ltd v Fresh Ideas Fashion Ltd - another Chancery Division decision from new boy on the bench Mr Justice Kitchin.

Fashion retailers French Connection owned and extensively used two Community trade marks: the word marks FCUK and FRENCH CONNECTION, both being registered for trunks, travelling bags, handbags and hold-alls (Class 18). They objected that Fresh Ideas had made and sold handbags that bore their word marks and used a similar type font, suing both them and their sole director for trade mark infringement and passing off. French Connection pressed for summary judgment; the defendants did not show up in court and were not represented.

Kitchin J allowed the application and granted summary judgment. No defendant could withstand such an application unless it could show some chance of successfully defending the claim at trial. That chance had to be ‘real’, meaning that it could not be false, fanciful or imaginary and had to be more than merely arguable. On the evidence, the defendants had no realistic prospect of successfully defending the proceedings at trial.

Left: this lightbulb illustrates a non-original idea -- copying someone else's trade marks

The IPKat wonders whether the court reporter turned up in case Kitchin J had anything controversial or exciting to say about the validity of the FCUK trade mark, upon which Mr Justice Rattee had cast aspersions, obiter, in French Connection v Sutton. [2000] ETMR 341. There was certainly nothing in the note on this decision to suggest that there was going to be anything of interest to the IP world at large. Merpel adds, why does a company that copies someone else's trade marks want to call itself Fresh Ideas?


2 Badly drawn patent claim, but not bad enough ...

Another case to stray the IPKat's way today was the Court of Appeal's patent decision in Unilin Beheer BV v Berry Floor NV [2005] EWCA Civ 1292, found on free judgment service BAILII.

After Unilin applied for a patent for a floor covering, it became aware of some prior art that required it to narrow the scope of its main claim. Once the patent was granted, Unilin sued three businesses for infringement. The defendants counterclaimed for revocation, raising a fresh and hitherto uncited piece of prior art. The trial judge (David Young QC, sitting as a Deputy Judge) found that, while the first 19 claims of the patent were invalid, claims 20 and 21 were both valid and infringed, in a judgment that was affirmed by the Court of Appeal in 2004. Unilin then pressed for damages and costs. The defendants contended that, since the amendments previously made to the patent showed that the specification had not been framed with reasonable skill and knowledge, neither damages nor costs should be awarded under the Patents Act 1977, s.63(2). David Young QC held that the specification as a whole was drafted with reasonable skill and that Unilin was entitled to its costs.

The defendants appealed, arguing that there had been so much absence of care that the patent could not be said to have been framed with reasonable skill. By a respondent’s notice, the claimant contended that in finding that two passages were not framed with reasonable skill and knowledge, the judge had been taking into account irrelevant matter.

The Court of Appeal (Mummery, Jacob and Neuberger LJJ) dismissed the appeal. Under section 63(2), what mattered was relevant skill and knowledge: that which was necessary to do the job of compliance with the European Patent Convention and to provide accurate technical information. If some irrelevant but harmless matter remained within the specification, it was still drafted with reasonable skill and knowledge. It made no sense to hold that reasonable skill and knowledge should extend to matter which was irrelevant.

In this case there was no nexus between the reasons for the amendment and the alleged lack of reasonable skill and knowledge. With all its faults, the patent was still not in any way misleading. The trial judge had found that, taking the specification as a whole, that error had not amounted to a lack of reasonable skill, and that was the sort of assessment with which an appeal court should not interfere unless it was plainly wrong.

This interpretation of s.62(2) must be correct, the IPKat feels. Statutory provisions that limit damages and costs that a successful party would otherwise be awarded are exceptions to the norm and, like all exceptions, should be construed narrowly. Merpel concurs and adds: this is unusual - a Court of Appeal in which all three judges have IP experience, two indeed as former Patents Court judges.


3 IP Review

Issue 12 of CPA's quarterly IP Review may have been out for a little while, but it has only just reached the top of the pile of papers on the IPKat's desk. This issue's cover story is a step-by-step guide to .eu domain name registration by PWC's Wim Van den Bossche and Bart Lieben. Other items in this issue include "Tracking Caterpillar", on the trail of a celebrated and imaginative brand, an introduction to OHIM procedures for the first crop of Community trade mark renewals in 2006 and a review by the effervescent Charlotte Presse of Barcelona's Brand Management Forum.

Register your .eu domain here
Renew your Community trade mark online here
Buy your caterpillars here

CHANGES TO THE PATENT COURT?

The Patent Office is seeking responses to the Department for Constitution Affairs’ consultations on the creation of a single civil court for England and Wales. So far, the Department has conducted a consultation which has concluded as follows:

1. Ministers have concluded that reform to create single Civil and Family Courts with unified jurisdictions would be feasible and beneficial. So they have decided to adopt this as a long-term objective.

2. Establishing these unified courts will require primary legislation. So the objective must form part of a wider strategy. And it is a strategy that should start yielding benefits well before the goal of two single first instance courts is realised.

Meanwhile, the DCA has launched another consulation, this time on focusing judicial resources. This recognises that no purpose would be served by changing the arrangements of the Patent Court, particularly because of the amount of investement that that court brings into Britain. The consulatation also forsees the senior judiciary considering extending the range on specialisms to include “intellectual property (including patents)”.

The IPKat says that “including patents” suggests not limited to patents, bringing the prospect of specialist judges in the other IP rights. This is to be welcomed.

SOUR GRAPES OVER RUSSIAN CHAMPAGNE

Kommersant reports that the four largest Russian producers of Sovetskoe Champagne have written to the Russian Agriculture Minister asking him to transfer the Sovetskoe trade mark to the Producers of Champagne Wines, a non-profit organisation, the mission of which you can probably guess from its name. The mark is currently held by Soyuzplodoimport, a company which manages a number of trade marks on behalf of the state. At present, the “champagne” producers pay a licence fee that enables them to use the mark, but it has come to their attention that Soyuzplodoimport intends to sell the mark to a non-protit undertaking that does not produce sparkling wine. The “champagne” producers are concerned that they won’t be able to use the mark under the new ownership.

The IPKat was goggle-eyed when he read this story. He thought that the French producers of Champagne had managed to eradicate all other uses of the term on wine. However, it seems that the use on Sovetskoe Champagne, first developed in the 1930s to provide a Soviet alternative to Champagne, remains.

CASES IN THE PIPELINE; THE SMELL OF THINGS TO COME

1 Forthcoming attractions

The IPKat is keeping a beady eye on some trade mark decisions that are shortly to emanate from the European Court of Justice in Luxembourg. They include

* Case T-275/03 Focus Magazin Verlag v OHIM - ECI Telecom. On Wednesday 9 November the CFI rules on Focus' appeal against an OHIM Board of Appeal decision, ECI had applied to register Hi-FOCUS as a CTM for goods and services in classes 9 and 38. Focus opposed, citing a likelihood of confusion with its earlier German registrations of the FOCUS word mark in Classes 3, 5, 6, 7, 8, 9, 14, 15, 16, 18, 20, 21, 24, 25, 26, 28, 29, 30, 33, 34, 38, 39, 41 and 42, having dismissed as inadequate its submission of evidence of use of the mark in those classes.

* Case C-206/04 P Mülhens GmbH & Co. KG v Office for Harmonisation in the Internal Market, Zirh International Corp. intervening. This is an appeal from the Court of First Instance (CFI) decision in Case T-355/02 that there was no likelihood of confusion between the Community trade mark (CTM) application for ZIRH and an earlier German registration of a figurative mark containing the word SIR, both marks being for toiletries.

On the same facts, in a decision reported in English in the European Trade Mark Reports, a German court has held that there is a likelihood of confusion. The Advocate General's Opinion is expected next Thursday, 10 November.

As soon as the IPKat hears about these cases, he'll let you know.


2 The smell of things to come

Last week the IPKat blogged the Court of First Instance's dismissal of an appeal against OHIM's refusal to grant a Community trade mark registration for a composite trade mark that included the smell of strawberry. He has now found a somewhat unsavoury sequel to this decision in an article by veteran commentator Naseem Javed (right) in E-Commerce Times on "stinky branding". He writes:

"Initially, EU trademark agencies refused the company's early applications. So, Eden Sarl took it to their regional, second-highest courts. Just recently, these courts, too, rejected their application. [...]

The smell of armpits, dirty laundry and soiled diapers are all now sought-after scents, as companies, pursuing smelly-branding, have all lined up, excited to have exclusive rights to aromas that they can use to bring some odor to their lifeless products ... ".

Er, the IPKat doesn't think so. It seems to him that the attraction of pleasant scents is the fact that they are attractive, not repulsive. In terms of word marks, unattractive and repulsive words do become the subject of trade mark applications, but these tend to be novelty items that have little serious market presence. It is inconceivable that smells that humans spens large amounts of money to eliminate are also going to comprise part of the attractive force that brings new custom or repeat orders for goods or services.

QUEEN MARY PROFESSORS DO THE DOUBLE

Two talks of note by professors from the Queen Mary Intellectual Property Research Institute:

* Professor Michael Blakeney will be speaking at the Institute of Advanced Legal Studies, Russell Square TODAY at 6pm. His subject is "Protection of Traditional Cultural Expression in Asia and the Pacific" and CPD points are available. RSVP (quickly!) to IALS.Events@sas.ac.uk

* Newly appointed Queen Mary professor Graeme Dinwoodie (also of Chicago-Kent School of Law, Chicago, US) will be giving the first talk in a new series of seminars on globalization and trade marks, convened by Professor Blakeney and Dr Gail Evans. His title is "The Impact of Globalization on Trade Mark Law". The talk is at 5.30pm TOMORROW in Room G05 of the Old Anatomy Building, Charterhouse Square, London EC1. Confirm your attendance to Charlotte Knights.

There is no charge for attending either event. The IPKat will be at both events, and hopes you will be too.

ATARI CAN'T GET CASE SHIFTED TO NY; GOOD NEWS FROM IRAQ

The IPKat picked this case up off Butterworths' All England Direct subscription service: Sawyer v Atari Interactive Inc [2005] EWHC 2351 (Ch), a Chancery Division decision of Mr Justice Lawrence Collins yesterday.

Sawyer, a Scotsman, designed and developed of computer games in which he owned the copyright. His business being based in Scotland, he had an agent in England: that was Atari Interactive, a Delaware corporation and games distributor that was licenced to market Sawyer's games. It was a subsidiary of New York-based Atari Inc. Atari Interactive sent all its accounting paperwork to Atari Inc in New York, for world-wide royalty accounting to be processed. The agreements under which Sawyer licensed Atari Interactive specified that they were governed by English law but did not contain a choice of court or arbitration.

After a dispute arose in relation to royalties claimed by Sawyer, he sued in England for, inter alia, an audit and disclosure. He obtained permission to serve the writ out of the jurisdiction. Atari Interactive applied to stay the action on the ground that England was not the forum conveniens, arguing that most of the issues involved accounting matters and that the relevant witnesses and documents were in the USA. Sawyer submitted that the issues in the action related essentially to questions of construction governed by English law and that, accordingly, England was the appropriate forum.

Lawrence Collins J refused to stay the action and refused Atari Interactive permission to appeal, holding as follows:

* The express choice of English law might, or might not, be a significant factor in the determination of the appropriate forum, depending on the likely issues and other questions normally put in the balance;

* The factors that were relevant included whether there was any substantial difference between English law and the law to be applied by the foreign court; if there was a difference, would the foreign court apply English law under its rules of the conflict of laws; and to what extent the dispute turned on questions of law.

* In this case England was the clearly appropriate forum since the essence of the dispute between the parties rested on the interpretation of provisions of contracts governed by English law. The case was not a largely fact-based dispute with little, if any, law involved, nor would the resolution of the dispute turn in large part on accountancy evidence as to what sales have been made.

* Sawyer's claim did indeed include a claim for specific performance of the agreements to allow him to conduct an audit and to give him disclosure of documents, but those claims focused on matters of relief and stemmed largely from the differing approach of the parties to the important questions of the construction of the relevant provisions of the agreements. Moreover, Atari Interactive had exaggerated the New York connections of the evidence.

The IPKat thinks this decision is right, given the learned judge's reasoning, but he notes how infrequently an application to stay UK proceedings in favour of a foreign action is ever successful - at least in IP disputes.


2 At last, some good news from Iraq

The IPKat has read on Portal Iraq that Nearly 30 Iraqi businessmen, lawyers and government officials have now received training in intellectual property rights. Led by Izdihar (a US Agency for International Development project), the training was designed to increase awareness of intellectual property rules, part of the World Trade Organization (WTO) multilateral trading system.

Right: infringers may get more than they bargain for if Iraq adopts a shoot-to-kill policy against them.

Iraq currently has protection for only three types of IP rights: copyright, trade marks and patents. Before it can join the WTO, Iraq will need to protect most other forms of IP rights too.

The IPKat is delighted that intellectual property protection remains among the fledgling democracy's main objectives and hopes that Iraq is able to attract investment and generate fresh IP of its own. Merpel adds, "and just think of all those geographical indications waiting to be protected ...".

BARCLAYS SETTLES TM DISPUTE

Brand Republic reports that accountants Cooper Parry have settled their case against Barclays. The dispute arose over the slogan “Now there’s a thought”. Barclays began to use it as a slogan for its new advertising campaign. Regional accountant Cooper Parry objected that it had been using the slogan for five years and brought a passing off action, claiming that Cooper Parry had “hijacked” its strapline. A trial date was fixed for December, though an interim injunction was refused (according to Cooper Parry because it could not afford to provide a cross-undertaking in damages). Under the terms of the settlement, Barclays will be able to go ahead with the campaign. According to Barclays:

"Barclays is happy to confirm that Cooper Parry is an independent company and that we never had any intention of implying otherwise. Our advertising campaign will continue with the first airing this Friday of the third of four ads."

Cooper Parry said:

""Barclays has acted rapidly to address our concerns in this atter and at the end of the day we accept that no harm was intended. We can all now get back to what we do best -- helping our clients achieve their business goals."

Annoying Jeremy - now there's a thought...

The IPKat says that it’s always tricky when a bigger company (often innocently) starts using a trade mark that coincides with that of a smaller company, particularly if the earlier right is unregistered. There is a risk that the bigger company’s access to the media will destroy the efficacy of the earlier mark, but the bigger company may have had no way of finding out about the existence of the smaller company. Merpel observes that the more that companies employ banal phrases as their trade marks, there more chance there is that someone will have got there first and will be using it, albeit on a small scale.

Thanks to Simon Haslam for pointing out this story.

THE IPKAT AND MERPEL SAY "THANKS"; TOSHI COMES TO TOWN; JIPLP LOOMS LARGE

1 Thanks again for visiting the IPKat

October has been another amazing month for the IPKat. The number of visits to his weblog last month was 11,693 - a new record. In addition to our visitors, some 233 people receive each blog by email as soon as it is posted (if you'd like to receive email updates, either scroll down to the bottom of the page and enter your email address in the little box provided, or just email the IPKat here).

Thanks so much for visiting the site. Your support, your interests, your queries and your comments make it all so worthwhile for the Kat's authors, who have learnt a great deal from the experience. It's just so good to know that there are so many intellectual property enthusiasts out there: we've had visits from people whose originating domains can be traced to 75 different countries.

Merpel says thanks, too: you're always welcome to call!


2 Visiting Japanese scholar

On 10 October Jeremy mentioned that Toshitaka Kudo is visiting London for a couple of weeks, beginning 7 November. He is a Japanese attorney who is a Research Fellow at the Institute of Intellectual Property in Japan.

Above: another great Japanese invention

If you'd like to meet Toshi in London this coming Monday 7 November at 5.00pm at the London offices of Slaughter and May, please email Jeremy here and let him know.


3 JIPLP launch

The first issue of Oxford University Press's new intellectual property title, the Journal of Intellectual Property Law and Practice, will be out at the end of November.

Edited by IPKat co-blogmeister Jeremy, JIPLP will be published monthly from January 2006 and will contain a selection of refereed articles, current information items, reviews and personal perspectives written by a range of IP enthusiasts and experts from the UK, Europe, the United States and elsewhere.

If you'd like a sample copy, send your request by email here.