PATENT OFFICE INITIATIVE: A CYNIC WRITES; SALE OF GOODS BY INTERNET NOT "SIMILAR" TO TRANSPORT SERVICES

Patent Office consultation: a confirmed cynic writes

Yesterday the IPKat posted a blog on the UK Patent Office's surprise launch of a consultation paper on the role of inventive step in patent law. The post concluded:

"Merpel wonders why this initiative has come at this time from the UK Patent Office. It's unlikely that the UK government would consider fiddling around with an internationally accepted norm for patentability if no other jurisdictions had the same intention”.

Above: The UK Patent Office is full of little surprises.

Left: Diogenes, the original cynic, doggedly seeks the light ...

A much-loved senior member of the UK patent profession, who has asked for his name to be garbed in anonymity, adds:

"I wondered, too; is it in preparation for the Gowers review [on which see the IPKat here]? And if hundreds of judgments of the finest human minds etc have not brought a universally satisfactory definition in just one jurisdiction (the UK, never mind Germany and the Netherlands) what does the UK Patent Office hope to achieve – except, am I too cynical, satisfying a Minister that they are seen as doing something ..? The CIPA Patents Committee will now look at it and dozens of fine brains at the cost of £[BIG FIGURE] per hour's lost earnings will come up with something … only for it to be shelved and/or ignored by judges. There's a lot to be said for the ’49 Act – and that is not just because I grew up with it …".

What a cheek! OHIM doesn't have to apply Spanish case law

The IPKat notes just one Community trade mark decision from the Court of First Instance (CFI) today. That's Case T‑202/03, Alecansan, SL v OHIM, CompUSA Management Co. Essentially, CompUSA applied to register figurative mark on the left as a Community trade mark for various computer-related goods and services in Classes 9, 37 and 42, the latter being retail store services in respect of computer goods. Alecansan opposed the application in relation to Classes 9 and 37, citing its earlier registration of the figurative mark on the right, registered for 'transport; packaging and storage of goods; travel arrangement’ in Class 39. The Opposition Division and the Board of Appeal both rejected the opposition on the basis that, despite the near identity of the marks, there was no similarity whatsoever in respect of the good and services of the respective parties. Alecansan appealed to the CFI.

The CFI dismissed the appeal.

At the hearing Alecansan pointed out that in principle there is no connection between travel services listed in Class 39 and IT goods in Class 9. However, it argued, there is a connection between its transport services and IT goods of the trade mark applied for. Since CompUsa sold IT goods on the internet, it needed to use goods transport services in order to get those goods to ultimate purchasers. Without such transport services CompUSA could not pursue its business. Alecansan's services and those of CompUSA were thus complementary in nature. This being so, there was similarity between the goods and services at issue. This ingenious plea was rejected.

So too was the second part of the appeal, concerning the failure to take into account Spanish national case-law on likelihood of confusion. Alecansan argued that, since the public targeted by the two marks consisted of average Spanish consumers and the relevant market was the Spanish market, Spanish case-law concerning the likelihood of confusion between the signs should have been taken into account by the Board of Appeal. Under that case-law the identity of the names of the two marks results in their ‘incompatibility’, even when the goods related to the signs in dispute are different, they belong to two different classes of the Nice Classification (Classes 29 and 30) and there is no relationship between them, since the likelihood of confusion on the market is evident. The CFI was unimpressed. It said:

"56 According to the first recital in the preamble to Regulation 40/94, the purpose of the Community trade mark is to enable the products and services of undertakings to be distinguished by identical means throughout the entire Community, regardless of frontiers ...

57 Given the unitary nature of the Community trade mark, the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it, and applies independently of any national system .... Accordingly, the validity of the Board of Appeal’s decisions must be examined exclusively on the basis of the relevant Community legislation, that is to say primarily Regulation 40/94 ...

58 As a result, OHIM cannot be bound by a decision given in a Member State according to which where the two marks are identical in name they are ‘incompatible’ even if the goods and services covered by the signs in question are different. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 ...".

The IPKat thinks this is exactly right. If Alecansan's submission was correct, holders of earlier Spanish registrations would be greatly advantaged over owners of earlier registrations in other EU Member States whose courts had correctly applied the generally accepted norms of EU trade mark law. Merpel agrees: this is just another bleat that can be crossed off the list of spurious arguments for no-hope litigants.

CompUSA here
MedUSA here