DE LANDTSHEER - THE AG'S OPINION; BROTHERS CONFUSINGLY SIMILAR

De Landtsheer - the AG's Opinion

The Opinion of Advocate General Paolo Mengozzi in Case C-381/05 De Landtsheer Emmanuel SA v Comité Interprofessionnel du Vin de Champagne and Veuve Clicquot Ponsardin SA has now been posted on the Curia website, alas not in English. It was originally available to English readers in French, if they followed the link to the Italian version, though this quirk seems to have been rectified.

This case involves the reference to the ECJ for a preliminary ruling on the following questions:

"1. Does the definition of comparative advertising cover advertisements in which the advertiser refers only to a type of product, so that in those circumstances such advertisements must be regarded as referring to all undertakings which offer that type of product, and each of them can claim to have been identified?

2. With a view to determining whether there is a competitive relationship between the advertiser and the undertaking to which reference is made within the meaning of Article 2a of Directive 84/450:

(a) On the basis in particular of a comparison of Article 2a with paragraph (b) of Article 3a, should any undertaking which can be identified in the advertising be regarded as a competitor within the meaning of Article 2a, whatever the goods or services it offers?

(b) In the event of a negative response to that question and if other conditions are required in order for a competitive relationship to be established, is it necessary to consider the current state of the market and drinking habits in the Community or is it necessary also to consider how those habits might evolve?

(c) Must any investigation be confined to that part of the Community territory in which the advertising is disseminated?

(d) Is it necessary to consider the competitive relationship in relation to the types of products being compared and the way in which those types of products are generally perceived, or is it necessary, in order to assess the degree of substitution possible, to take into account also the particular characteristics of the product which the advertiser intends to promote in the advertising concerned and of the image he intends to give it?

(e) Are the criteria by which a competitive relationship within the meaning of Article 2(2a) can be established identical to the criteria for verifying whether the comparison satisfies the condition referred to in paragraph (b) of Article 3a?

3. Does a comparison of Article 2(2a) of Directive 84/450 1 with Article 3a of that directive mean that

(a) either any comparative advertising is unlawful which enables a type of product to be identified where a competitor or the goods offered by him cannot be identified from the wording?

(b) or the lawfulness of the comparison must be considered in the light only of national legislation other than that by which the provisions of the directive on comparative advertising are transposed, which could lead to reduced protection for consumers or undertakings offering the type of product being compared with the product offered by the advertiser?

4. If it should be concluded that there has been comparative advertising within the meaning of Article 2(2a), must it be inferred from Article 3a(1)(f) of the Directive that any comparison is unlawful which, in respect of products without designation of origin, relates to products with designation of origin?"

The Advocate General has advised the court to rule as follows:

«1) La référence faite dans un message publicitaire à un type de produit ne répond pas, en soi, à l’exigence d’identification inscrite à l’article 2, point 2 bis, de la directive 84/450/CEE du Conseil, du 10 septembre 1984, en matière de publicité trompeuse et de publicité comparative, telle que modifiée par la directive 97/55/CE du Parlement européen et du Conseil, du 6 octobre 1997, en ce sens qu’elle permettrait d’identifier chaque entreprise qui offre un tel type de produit ou ses biens. Une telle référence ne pourrait constituer une identification implicite d’un concurrent ou des biens offerts par celui-ci, au sens de cette disposition, que si, eu égard à toutes les circonstances de l’espèce, elle permet à un consommateur moyen, normalement informé et raisonnablement attentif et avisé, de se représenter une ou plusieurs entreprises déterminées qui offrent ce type de produit, ou leurs biens».

2) Pour déterminer s’il existe un rapport de concurrence au sens de l’article 2, point 2 bis, de la directive 84/450 entre l’annonceur et l’entreprise à laquelle il fait référence dans la publicité, il ne saurait être fait abstraction des biens ou des services offerts par une telle entreprise. Il y a lieu en revanche de vérifier que l’annonceur et ladite entreprise sont en concurrence, actuelle ou potentielle, pour une partie quelconque de la gamme de produits ou de services qu’ils offrent respectivement. Il suffira, en particulier, qu’existe, du côté de la demande, une certaine substituabilité, même limitée, entre un produit ou un service de l’un et un produit ou un service de l’autre.

Pour évaluer l’existence dudit rapport de concurrence, l’autorité nationale de contrôle doit se référer à la situation existant dans la partie du territoire communautaire dans laquelle la publicité est diffusée et qui est soumise à sa juridiction et devra prendre en compte également, entre autres facteurs, les possibilités d’évolution des habitudes de consommation, les particularités des produits ou services qui font l’objet de la publicité et l’image que l’annonceur entend imprimer au produit qu’il promeut.

Les critères de vérification de l’existence d’un rapport de concurrence au sens de l’article 2, point 2 bis, de la directive 84/450 et les critères servant à vérifier si la comparaison répond à la condition énoncée à l’article 3 bis, paragraphe 1, sous b), de cette même directive ne sont pas identiques.

3) Une publicité qui, bien que procédant à une comparaison, ne répond pas aux conditions permettant de la qualifier de comparative au sens de l’article 2, point 2 bis, de la directive 84/450, échappe au champ d’application des dispositions de cette même directive relatives à la publicité comparative. Sa licéité doit donc être évaluée au regard des dispositions nationales applicables autres que celles qui transposent les dispositions susmentionnées et au regard des autres dispositions de droit communautaire éventuellement pertinentes, même si le niveau de protection des intérêts des consommateurs et des fournisseurs de ce type de produit qui devrait en résulter est moindre.

4) Il y a lieu de déduire de l’article 3 bis, paragraphe 1, sous f), de la directive 84/450 qu’est illicite toute comparaison qui, pour des produits n’ayant pas d’appellation d’origine, se rapporte à des produits ayant une appellation d’origine».

Babelfish has helpfully rendered the Opinion as follows:

"1) The reference made in an advertisement to a type of product does not answer, in oneself, with the requirement of identification registered in article 2, point 2 (a), of directive 84/450/CEE of the Council, September 10, 1984, as regards misleading publicity and comparative publicity, as modified by directive 97/55/CE of the European Parliament and the Council, of October 6, 1997, in the sense that it would make it possible to identify each company which offers such a type of product or its goods. Such a reference could constitute an implicit identification of a competitor or goods offered by this one, within the meaning of this provision, only if, have regard with all the circumstances of the species, it allows an average consumer, normally informed and reasonably attentive and warned, to represent one or more given companies which offer this type of product, or their goods ".

2) to determine if there is a report/ratio of competition within the meaning of article 2, point 2 (a), of directive 84/450 between the advertiser and the company to which he refers in publicity, it would not know being disregarded goods or services offered by such a company. It is necessary on the other hand to check that the advertiser and the aforementioned company are in competition, current or potential, for an unspecified part of the service or line of goods which they offer respectively. It will be enough, in particular, which exists, on the side of the request, a certain substitutability, even limited, between a product or a service of the one and a product or a service of the other. To evaluate the existence of the aforesaid report/ratio of competition, the national supervisory authority must refer to the situation existing in the part of the Community territory in which the publicity is diffused and which is subjected to its jurisdiction and will have to also take into account, inter alia factors, the upgrading capabilities of the spending patterns, the characteristics of the products or services which make the object of publicity and the image that the advertiser intends to print with the product that it promotes. The criteria of checking of the existence of a report/ratio of competition within the meaning of article 2, point 2 (a), of the directive 84/450 and the criteria being used to check if the comparison answers the condition given in the article 3 (a), paragraph 1, under b), of this same directive are not identical.

3) a publicity which, although proceeding to a comparison, does not answer the conditions making it possible to qualify it the comparative one within the meaning of article 2, point 2 (a), from directive 84/450, escapes from the field of application from the provisions of this same directive on comparative publicity. Its must thus be evaluated in comparison with the national provisions applicable others that those which transpose the above-mentioned provisions and to the glance of the other possibly relevant provisions of Community legislation, even if the level of protection of the interests of the consumers and the suppliers of this type of product which should result from it is less.

4) It is necessary to deduce from article 3 (a), paragraph 1, under F), of the directive 84/450 which any comparison is illicit which, for products not having a label of origin, is referred to products having a label of origin".

The IPKat can't understand this very easily in either language. Can any kind reader supply a brief explanation of what the AG is recommending and whether - as the IPKat suspects - the producers of goods bearing protected appellations are getting a better deal out of this than are competitors and consumers.


Brothers confusingly similar

Well, the IPKat said it was a doomed appeal and he was dead right. The appeal in Case T-43/05 (details described on last week's IPKat posting here) has been dismissed. As the Court of First Instance said:

"If the relevant average consumer purchasing clothing, footwear or headgear bearing the mark BROTHERS by CAMPER understands that those goods originate from the manufacturer CAMPER, the familiarity of the mark CAMPER will not prevent the relevant average consumer who is accustomed to buying clothing, footwear or headgear bearing the mark BROTHERS from also associating those goods with the manufacturer CAMPER when the mark BROTHERS by CAMPER is registered.

87 Therefore, even if the mark BROTHERS is also well known, there is a risk that a consumer satisfied with goods of the mark BROTHERS who wishes to purchase other goods of that mark will purchase goods of the mark BROTHERS by CAMPER, making the applicant benefit from the familiarity of the similar earlier mark".

Some famous brothers here, here and here
Some famous campers here, here and here

MERCI BEAUCOUP, FREDERIC; SO IT'S GOODBYE DAT; TRADE MARK RULES AMENDED, HOW NICE..

Merci beaucoup, Frédéric

The IPKat posted a comment last week on Magna Doodle v Magna Pro. The IPKat's good friend Frédéric Glaize has now thrown him a link to the full judgment in that case, which you can read too on the magnificent Le petit musée des marques blog.

Right: a different sort of doodle here, by the talented J. T Bruce subjectruin.net


So it's goodbye DAT

The Designs Appeal Tribunal (DAT) in the United Kingdom is the body that hears appeals against decisions of the Designs Registry (which is part of the Patent Office). Since there are very few decisions to appeal against, the DAT is not exactly the busiest judicial body on the planet.

Nonetheless, if and when the Tribunals, Courts and Enforcement Bill comes into force (see clause 134 and Part 6 of Schedule 23), the DAT will be scrapped and appeals against Registry decisions - like appeals against Trade Mark Registry and Patent Office decisions - will go to the Patents Court or Patents County Court instead.

Merpel has spotted that the same piece of draft legislation has provisions for the protection of cultural objects that are on loan. Apart from anything else, they can't be seized. What if they infringe copyright, she mewses?

Left: The IPKat doubts whether the new appellate arrangements will mean that businesses will spend less time hanging around waiting for the result of their appeals, since he suspects that it'll be the same judges hearing them.


Trade mark rules amended, how Nice ...

Right: Nice biscuits get classified in Class 30

The UK's trade mark rules are amended from 1 January 2007 - a public holiday - by the Trade Marks (Amendment) Rules 2006 (SI 2006/3030). According to the blurb:

"These Rules formally prescribe the Nice Classification as the prescribed system of classification under the Trade Marks Act 1994 ... The Ninth Edition of the Nice Classification enters into force on the 1 January 2007. The Ninth Edition of the Nice Classification will be available on the World Intellectual Property Organisation's website (www.wipo.int).

...

Rule 6 amends rule 46 of the 2000 Rules. This provision enables the registrar to re-classify a registered trade mark where the Nice Classification has changed for some or all of the goods and services in respect of which the mark has been registered.

Rule 7 and the Schedule revoke, amongst other things, two Schedules to the 2000 Rules. Those Schedules set out two previous systems of classification, both of which were based on earlier versions of the Nice Classification system".

So now you know. The IPKat says, if you've got those old Schedules in your copy of the 2000 Rules, why not print the new classification out and paste it in on top of them? You've got all day on 1 January to do it.

Find out what class your goods and services are in here
Why are Nice biscuits Nice? Click here and here
How to dunk your biscuit here (English readers only ...)

GOWERS SPEAKS

Yesterday the IPKat paid a trip to the Stephen Stewart Memorial Lecture, organised by the Intellectual Property Institute and hosted by Slaughter and May. The subject was the Gowers Review of Intellectual Property, and the speaker was Andrew Gowers himself.

Mr Gowers started by apologising that his talk preceded the release of the report, which probably wasn’t the organisers’ intention at the time of inviting him. Actually, the IPKat reckons that this was rather a coup – it’s not often you see a room full of IP lawyers and specialists, tounges hanging out suspense, hoping to get a hint about what’s to come.

On the date: Gowers noted that the date of 6 December had been widely predicted. His response: ‘You may very well think that; I couldn’t possibly comment’.

While he couldn’t comment directly on the contents of the report ahead of its publication, he identified three key areas that he had identified whilst hearing the evidence presented to him.

The need for stronger enforcement: he noted the harm to industry caused by piracy and counterfeiting. He further noted that legal sanctions for online activities are less severed than those for offline activities and commented on the key role played by broadband internet access in enabling infringement.

He also noted that while Trading Standards do a good job in relation to trade marks, they do little in relation to traders who infringe copyright [a possible hint concerning one of his proposals wonders the IPKat]

The need for IP to be less complex in the interests of industry: While Patent Office fees are reasonable, he noted that legal fees make up a high percentage of costs in relation to IP. He noted the lack of an industry-wide standard contract with regard to licensing.

He also identified the cost of litigation as a problem. In particular, while the Patents County Court if meant to be a cheaper option, this is often not the case. Costs were even worse for European protection, and he noted that Europe is the most expensive jurisdiction in which to obtain patent protection.

[The IPKat wonders if this last comment is fair though – Europe is actually lots of jurisdictions, with a simplified system for getting protection in them all. More fundamentally, the IPKat wonders what kind of Government-led policies could be made to combat these problems. Presumably capping legal fees isn’t an option and previous attempts to cut costs (such as the PCC) don’t seem to have been completely successful. As for European costs, the UK alone can’t control this, though it could press for simplification at the international level.]

The need for a clearer understanding of IP by consumers: the fact that many consumers do not realise that private copying infringes copyright was picked out for comment. This led to concerns about respect for the law which were undesirable since copyright is too important an area to fall into dispute [another possible suggestion to be made by the Review, the IPKat reckons].

Left: following the lecture, these golden ducks - individually signed by Andrew Gowers - were auctioned for the benefit of the Intellectual Property Institute.

Bonus information: Gowers noted that there had been little interest in petty patents or utility models.

Summing up. Gowers reckoned that the system was broadly along the right lines, but there are some areas where ‘tweaking and sensible reform’ are desirable. He noted that there is probably the opportunity for such reform, since there is the political will in the UK, both on the part of the current Government, and the Opposition. In the past though, there have been issues concerning the strategic formulation of IP policy at the Government level. Moreover, there is an opportunity for the UK to influence policy on the international level, in particular since Germany, which is to lead both the EU and the G8 in the near future, is keen on promoting innovation.

The IPKat was secretly a little disappointed. Of course, it’s hard to know what the Review will say, but from Mr Gowers’ talk, it seemed that any change would be limited to incredibly specific areas. There does not seem to have been an engagement with the fundamental balance of IP, and Gowers mentioned little in terms of substantive law. Unsurprisingly, considering that the Review was set up by the Treasury, he seemed to be coming at it from the view of IP as a tool for business and innovation, rather than as having nobler aims (an attitude with a proud history in the UK), and there was little if any mention of the cultural benefits of IP to the wider public. He also notes that, while Gowers criticised the fact that IP policy had traditionally been something of a lobbyist’s playground, he relied on statistics that sounded rather like they’d come straight from the mouths of the industry's lobbyists.

The IPKat awaits 6 December (or whenever it is) with interest.


TO BOOK A PLACE ON ONE OF THE IPKAT'S GOWERS REVIEW BRIEFING SESSIONS, CLICK HERE

THE APPLIANCE OF SCIENCE - LAY ADVISERS GO TO COURT; UNCHARTERED TERRITORY

The appliance of science - lay advisers go to court

Right: unlike judges, cats spend up to 18 hours a day asleep ...

Last Friday the Court of Appeal sneaked this decision out in Halliburton Energy Services Inc v Smith International (North Sea) Ltd [2006] EWCA 1599. This must have been the fifth or sixth time that issues arising from this patent dispute have gone to court, but at least the parties wouldn't have been sitting there, glaring eyeball-to-eyeball at one another - Smiths didn't appear this time round.

What happened here is this. After the Patents Court (Mr Justice Pumfrey; see IPKat note here) held Halliburton's patent invalid but, before the Court of Appeal heard the appeal, the parties settled. To Halliburton's surprise and disappointment, this settlement did not have the effect of revalidating the patent (see earlier ruling to that effect here, plus IPKat's comment here). That triggered an appeal against the invalidity decision on its merits. To this end the Court of Appeal, with Halliburton's support, decided to appoint a lay scientific adviser to help it. Such an expert, Professor David Limebeer, was duly appointed, with no objection on either side. After he read the relevant papers, Professor Limebeer sent the Court of Appeal Judges a note in which he sought to highlight the key issues and to propose a possible way forward in the appeal. At this point Halliburton sought his removal as an expert adviser on the ground that he had, by misunderstanding the role of such adviser, disqualified himself from acting in that capacity.

The Court of Appeal, in a judgment given by Lord Justice Chadwick for the court (Rix and Jacob LJJ), refused to revoke the professor's appointment. The Court, reviewing case law on the role of the adviser, noted that the power to call on the assistance of an advisor was introduced as long ago as 1883 but that it had rarely been invoked. In this case Halliburton felt that Professor Limebeer had overstepped the boundaries of his role by offering an opinion on legal matters rather than on merely technical ones. The Court disagreed: not only had the professor conceded that he was aware that legal matters were not within his purview, but he also confessed that some of his thinking was "still poorly defined". It could not be said that he had improperly reached a legal conclusion or that the appearance of a fair trial based upon his assessment had been lost.

The IPKat thinks that the Court of Appeal judges are perfectly capable of separating out a lay expert's legal musings from his scientific guidance, but agrees that it would have been more prudent for him to confine himself to the latter. Merpel says, it would be strange indeed if the Court of Appeal judges were influenced in its legal decision by the words of a scientist - often it's difficult enough even for a barrister to influence them.


Unchartered territory

The UK Patent Office's very own Edward Smith tipped the IPKat off about this recent decision by Allan James in CFA Institute's application; opposition by the Chartered Insurance Institute. The CFA's mark (right) included the word "chartered", was aimed at registration in Class 36 (insurance and financial services), prompting an opposition by the CII on the following grounds:

"(i) registration of the mark would be contrary to section 3(3)(b) of the [Trade Marks] Act [1994] because use of the mark would be liable to deceive and cause a substantial proportion of the relevant the public to believe that the persons using the mark were approved or regulated by a professional body established by Royal Charter and/or had been approved and regulated by the opponent;

(ii) for the same reason, and because use of the term “chartered” in the UK is restricted under the Business Names Regulations, registration would be contrary to public policy and therefore prohibited by section 3(3)(a) of the Act;

(iii) use of the mark would lead the public to believe that the applicant has Royal endorsement and registration of the mark would therefore be contrary to section 4(1)(d) of the Act;

(iv) the application was made in bad faith".

Allan James, for the Office, upheld the opposition. He said:

"... the applicant’s mark was promoted in more general financial publications prior to the date of the application, including the Financial Times and the Economist. The number of such advertisements in evidence is limited. These advertisements emphasised the link between entitlement to use the designation and high standards and ethics. There is nothing about this aspect of the advertising that would put the public on warning that the sort of guarantee offered by the designation Chartered Financial Analyst was not the same as that offered by members of other professional bodies of the kind granted Royal Charters. A few of the advertisements make reference to the ‘charterholder’ class of membership. I think that this would have had an ambiguous meaning to a private investor who is not already familiar with the origins of the applicant’s organisation. The advertisements also refer to the applicant having qualified members around the world. However, the opponent also makes such a claim in its promotional material. Membership in other countries does not therefore distinguish the applicant’s members from members of bodies of the kind granted a Royal Charter. The applicant’s public advertisements do not clearly identify the organisation as one that originated in the US. In fact the only clue as to its US base seems to be that a US free phone telephone number, which is included in relatively small print at the bottom of the adverts. This subtlety is likely to have been lost on the casual reader.

60. I therefore find that the potential for deception, particularly amongst private investors, is unlikely to have been significantly reduced by the applicant’s promotion of its collective mark prior to the date of the application. There is no evidence of deception having come to light. However, I do not regard this as decisive. It may simply be because deception of the kind described above was complete.

61. For the reasons given above, I find that the objection under s.3(3)(b) of the Act succeeds".

The IPKat has his little anxieties about this decision. "Chartered" in this context is one of those terms, like "Swiss chocolate", that doesn't seem to have a precise meaning but does create a general rather waffly expectation. In this case he'd personally have been tempted to regard "chartered" as meaning "more expensive because someone has had to take time off from earning money in order to make himself more valuable to his clients/ customers". Merpel's a bit disappointed that bad faith was raised in this case and deeply wishes that the ground was only invoked where it has some genuine basis.

Get your royal charter here
Chartreuse here
Charters here

CHANGING STATIONS

The IPKat is grateful to James Heald for drawing his attention to a story covered by Bloomberg. It seems that the architect of the main Berlin railway station has won a moral rights case against the German rail company Deutsche Bahn AG. The architect, Meinhard von Gerkan, objected to the replacement of his original roof, which resembled a cathedral’s nave, with a flat metal roof designed by another architect.

The court said:

"The chamber is of the opinion that the flat ceiling seriously distorted the architectural design…[The decision to change the roof] is a breach of architects' rights as set out in the copyright law".

The station being built (right)

The decision was welcomed by the architecht’s firm, a partner of which commented:

"We are very happy about this decision…It means this current ceiling will be torn down and replaced".

The IPKat says that when IP dictates the way in which ‘real’ property (in the land law sense) can be used, the result tends to be messy.

CLARIFICATION: the roof originally depicted with the post was not the roof at the heart of the controversy. Instead, the offending ceiling is located underground.

LATEST IP&T

Latest IP&T

Right: Michael Silverleaf QC, who has been Consulting Editor of IP&T since its inception.

The November/December 2006 issue of LexisNexis Butterworths' Intellectual Property and Technology Cases has now been published. It contains just four reported cases, but they're pretty big ones:

* Emanuel v Continental Shelf 128 Ltd (the ECJ's ruling that it's not deceptive for a trade mark consisting of a name to be registered in someone else's name, so long as no-one's pretending the person named has any connection with the proprietor's business);

* SmithKline Beecham v Apotex (Court of Appeal decision on whether someone who isn't a party to patent infringement proceedings can still get the benefit of a cross-undertaking as to damages by the patent owner);

* The two August Storck cases, heard by the European Court of Justice, involving non-registrability as a Community trade mark of the shape of a delicious but visually non-distinctive confection and its wrapper.

Left: er, not that stork, silly ...

The IPKat still enjoys the look and feel of IP&T's sleek, shiny black cover.

GOWERS REVIEW - THE DATE, AND IPKAT BRIEFING SESSIONS

Gowers review - the date

The IPKat has it on the best authority from James Nurton of Managing Intellectual Property that the Gowers Review will be published on Wednesday 6 December 2006.


Gowers Review - IPKat briefing sessions

Left: are IP rights the chains that shackle competition and consumer rights, or are they the links that bond intellectual effort and financial investment to their promised return?

The IPKat is hugely relieved that we now know when the long-awaited review conducted by Andrew Gowers of the UK's intellectual property framework is to be published. Everyone wants to know what the Gowers Review is going to mean for the IP communities in the United Kingdom. To this end, the IPKat has arranged a briefing session to address the following issues:

* What was the Gowers Review asked to do?

* What are its main conclusions?

* What's in it for IP owners?

* What's in it for commercial users of the IP of others?

* What's in it for the consumer?

* What do its recommendations mean for the IP professions?

* Where, if anywhere, do we go from here?

The session will be held first on Monday 11 December 2006 at the Chamber of Shipping (Carthusian Street, London, just round the corner from Barbican tube station), from 1.30pm till 5.30pm. It will be repeated on the following dates: Mondays 8, 22 and 29 January 2007.

Right: participants debate the defensive and offensive merits of IP rights

If you'd like to attend any of these sessions, please email IPKat co-blogmeister Jeremy on jjip@btinternet.com and tell him (i) who you are, (ii) which date you'd like to attend. Places are limited, but the IPKat will try to accommodate all of you. The fee for the four hour session (which includes coffee and biscuits) is a very reasonable £80. Invoices will be furnished at the door for all who attend. Please remember to pay!

Gowers: see the responses and comments from the Open Rights Group, the British Academy, the National Union of Journalists, the Royal Society, AURIL, NESTA, UNICO and the Publishers Association (among many others ...)

GOWERS - THE SHAPE OF THINGS TO COME?

The BBC obviously knows something we don’t. The IPKat almost choked on his (metaphorical) porridge on hearing James Naughtie’s spectacular misunderstanding of copyright during this morning’s Today programme. Cutting through the kitty litter, the upshot was that the BBC is predicting that the Gowers Review will not recommend extending copyright in sound recordings beyond their current 50 year term of protection, despite the calls of luminaries such as Sir Cliff Richard and Jethro Tull.

Mr Gowers (left) thinking about what to write in his long-awaited report

What the IPKat wants to know is, when will the Gowers Review actually be published?
What Merpel wants to know is, how did the BBC get inside information about the contents of the report?

Listen to the piece here (7.40 slot)
Read about the issue on another BBC site here.

A CHEESE BY ANY OTHER NAME ...

A cheese by any other name ...

Now here's something you don't see every day - an application to change a term that has been accorded Protected Designation of Origin (PDO) status in the European Union under Council Regulation 510/2006. The registered PDO is ‘Queso de Cantabria’ and the Spanish government's Ministry of Agriculture and Protected Cheese Names wants it replaced with ‘Queso Nata de Cantabria’. The story goes like this:

"The application to register the PDO ‘Queso de Cantabria’ was made under Article 17 [of Commission Regulation 1107/96], since it was one of the designations of origin protected under legislation in Spain when Regulation (2081/92 entered into force.

Legal protection had been granted in accordance with the national legislation in force, which excluded the possibility of protecting non-geographical names such as ‘Queso de nata’. For this reason, another of the names by which the cheese was known, ‘Queso de Cantabria’, was filed for.

Over a decade has passed since Community registration was sought and we have found that the designation ‘Queso de Nata’ continues to be used by many consumers, who think it involves a different cheese to the one protected by the PDO ‘Queso de Cantabria’. We therefore consider it appropriate to request that the name be amended by combining both designations. Their use is very extensive, as can be seen from the recent bibliography on Spanish cheeses ...[omitted]".

The IPKat is very happy that this cheese's two names are finally united in a single PDO registration. Merpel notes that this is an amendment that has been prompted by consumer confusion: presumably it will be a good idea for the public to be educated that the two cheeses are but one.

Ministry of Cheese here
Search for cheeses by name here
The gentry eat cheese, while peasants eat butter here
Lemon cheese here
Cheshire Cheese here

HOWZAT?

As if the England cricket team weren’t doing enough to lower the morale of their put-upon fans, the IPKat learns from DNA India that the England and Wales Cricket Board (ECB) is accusing the ‘Barmy Army’ of die-hard cricket fans of infringing its intellectual property rights. The claim is that merchandise bearing the ECB logo and the word ASHES infringe the ECB’s (presumably trade mark) rights. The ECB has said that it wants to avoid legal action, but hasn’t ruled it out.

The IPKat says that this has hints of Arsenal v Reed (though he doubts that Advocate General Ruiz-Jarabo Colomer will wax quite so lyrical about leather against willow). Merpel adds, so long as the ECJ avoids the follow on…

SOMETHING TASTY FOR THE WEEKEND

Here's a medley of little bits and pieces to keep you happy over the weekend as you gear yourselves up for the last week of November ...

The Ranbaxy/Pfizer Lipitor scoreboard. The IPKat's friend Duncan Bucknell has produced this handy chart that shows how Ranbaxy's efforts to dismantle the patent power of Pfizer's Lipitor has fared internationally. So far it only features 13 countries. If anyone out there knows of developments in any of the other 200 or so countries, can they please either tell Duncan direct or feed the information to the IPKat, who will happily pass it on. While the IPKat's on the subject, don't even try to answer this one [inspired by Pfizer's IP portfolio]: what do you get when you cross Lipitor with Viagra ...?


Good news for bloggers - Californian immunity. This is from the BBC, via the ever-vigilant Simon Haslam: a California court has ruled that neither bloggers nor internet service providers can be held liable for libellous statements posted on the internet via their facilities by a third party. Thinks the IPKat, logic dictates that the same should apply to third-party copyright infringements.

Left: the IPKat found this lovely pic on personal-injury-info.net


Don't forget the WIPO New Logo Competition. The IPKat has been receiving entries from various sources - but not (yet) from ANYONE from the World Intellectual Property Organization. The prize: free entry to CLT's delectable 2007 Intellectual Property Conference, which will be held in London on Thursday 25 January 2007. Competition details here. Conference details here.



Calling all IP publishers and editors. The IPKat is hosting, thanks to the generosity of Slaughter and May's London office, a buffet lunch on Tuesday 19 December for intellectual property law publishers and editors. Although the Kat has invited the people he knows about, he's sure there must be some more people involved in IP and whom he hasn't invited - either because he didn't know about them or because he missed them when trawling his database of contacts.

Above, left: the IP editors and publishers; right: the Great Grizzly

Since there are still a couple of places available, anyone who feels that he or she can "bear" to be there - or should at least invited - should email the IPKat at theipkat@yahoo.co.uk and make themselves known. For the record, it's 12.3opm to 2.30pm and we have a Great Grizzly keynote speaker too ...

NEW DMCA EXCEPTIONS

The IPKat learns from USA Today that the Library of Congress has recognised six exceptions to the rules against decryption of technological protection measures under the DMCA. These include:

*Allowing users of mobile phones to break software which locks their handsets in with a particular network;

*Allowing academics to break locks on DVDs to obtain film snippets which will be used for teaching compilations;

* Allowing blind people use special software to read copy-protected electronic books

However, there is no exception for decrypting security protection CDs to allow their contents to be copied on to MP3 players.

The exceptions will expire after three years.

The IPKat welcomes what sound like clearly defined, sensible, competition and social welfare minded exceptions.

IP SAVES OFT FROM CHEESY PAPERWORK; ABLE AND WILLING

IP saves OFT from cheesy paperwork

Right: Wincanton cheese technology - now being irrevocably licensed to Moody

The UK's Office of Fair Trading (OFT) is a potentially significant player in British IP enforcement, since it is charged with making sure that competition remains a viable option even where the balance of power (including IP rights) is not evenly distributed between market competitors. Till now it has made little impression on IP exploitation. On Monday, though, the OFT issued Press Release 162/06 with the less-than-snappy-title "OFT accepts licensing of an 'up-front buyer' to protect UK competition in cheddar-cheese making equipment sector". The Press Release, in relevant part, reads:

"The OFT has decided today to accept the undertakings offered by Tetra Laval ... to address the competition concerns arising from the anticipated acquisition by Tetra Laval of part of Carlisle Process Systems from Carlisle Companies Inc.

The transaction raised concerns in relation to the supply to UK customers of certain equipment used for the industrial manufacture of cheddar cheese. As a result of the undertakings offered by Tetra Laval, the transaction will not be referred to the Competition Commission.

The OFT considered that the merger of two leading competitors in the supply of vats, cheddaring machines and cheese towers to UK customers would reduce competition and innovation and would result in higher prices and lower levels of service in the sector.

Left: Moody's existing cheese making plant

Instead of a reference to the Competition Commission, the parties have offered to grant an exclusive irrevocable EEA-wide licence of intellectual property (IP) rights relating to cheese equipment sold under the 'Wincanton' brand ... to Moody plc ... For this package to be a viable remedy, it was important to find a buyer that already had the necessary manufacturing capability, expertise and industry contacts to be an effective competitor. The OFT wished to manage this risk up-front by assessing Moody's business case, the licensing agreement, and the detailed terms of the undertakings. Having done so and consulted publicly before accepting the undertakings, the OFT is now satisfied that Moody's significant experience as a supplier of services of equipment to the dairy sector combined with possession of the relevant IP rights makes Moody as effective a competitor to Tetra Laval after the merger as Carlisle was before it".

According to the OFT's Senior Director for Competition, Vincent Smith:

"This ... is the first time we have accepted the licence of intellectual property rights alone as a merger remedy; it is also the first time we requested and have approved an 'up-front purchaser' before accepting undertakings in lieu of reference. This case demonstrates the OFT's flexibility on merger remedies when parties show constructive engagement with the OFT on this issue at an early stage ... [C]ustomers and consumers will be protected from the adverse effects of the merger".

The IPKat can't help feeling that, if Tetra Laval are so willing go grant an irrevocable licence of their IP to a certified viable competitor, they must be getting plenty in return.

Laval cheese without the Tetra here
Make your own cheese here
Swiss cheese plant here


Able and willing

The IPKat has a friend who is currently seeking experience working either with a private practice law firm or in-house as an intellectual property lawyer. Qualified as a solicitor in England and Wales and also as a lawyer in India, he holds First Class degrees both in Electronics and in Law and has specialised in intellectual property at both Masters and Doctoral levels.

Enthusiastic and willing to work, he is willing to provide a CV for any interested party. For further details, email the IPKat at theipkat@yahoo.co.uk.

CINPRES BACK IN COURT, BUT TO NO AVAIL

Cinpres back in court, but to no avail

Further thanks are due to Simon Haslam for spotting Cinpres Gas Injection Ltd v Melea Ltd, another round in the frankly tragic litigation between two companies over a patent that Cinpres lost following a bout of legally sanctioned perjury. Earlier hearings are noted on this weblog here and here. Now, this time Mr Justice Mann was asked to adjudicate on an application by Cinpres for a declaration that, even though it was not entitled to be registered as the patent's owner under the Patents Act 1977 s.37, it was entitled to be granted a licence under the same provision "to continue doing what it has been doing in the past". This claim was a bit of an optimistic punt into the judicial stratosphere based on the recent Court of Appeal decision in Yeda Research v Rhone-Poulenc [2006] EWCA Civ 1094 at paragraph 13 where Lord Justice Jacob said:

"This does suggest that there may be a jurisdiction to grant even an ousted patentee a licence. But, even if there is, it would often not be a proper exercise of the Comptroller's discretion, having decided that a person had no entitlement whatsoever to a patent which he had applied for in breach of someone else's legal rights, to decide that nonetheless that person (or his licensee) should have a licence under the patent. Things may, I suppose, be different if the ousted patentee has in good faith made a considerable investment in the invention, particularly if the true owner had stood by for a number of years allowing this to happen".

Mann J was not moved by the notion that this triggered an interpretation of s.37 that enabled the relief sought to be granted. He said, at paragraph 10:

"For a claimant to an interest to be able to have a remedy it must have some element of legitimate claim. If it is determined not to have such claim then section 37 does not give jurisdiction to give some sort of consolation prize because fairness demands it".

The fact that Cinpres made a claim of proprietorship that was dismissed did not give it a legitimate claim. The IPKat agrees with Mann J's approach, although he is increasingly left feeling that, if the existing law cannot be tortured into enabling a company in Cinpres' position to gain some sort of right in the invention, given the history of the dispute, then the law could do with a little subtle amendment.

BETWEEN ROCCO AND A HARD PLACE

Between Rocco and a place

Here's a curiosity from the Queen's Bench Division, brought to the IPKat by the Lawtel subscription-only service this morning: it's Frederick Gladstone Were v Hodder & Stoughton and Jake Arnott, a statement read out in open court before Mr Justice Eady on Wednesday 15 November. The statement was made following libel proceedings that Were brought against publishers Hodder & Stoughton and author Jake Arnott.

What happened was this. Were performed under the stage name "Tony Rocco" since 1962 when he had had a hit single, Stalemate. Arnott (born 1961) wrote a novel, Johnny Come Home, which featured a character called "Tony Rocco" who was said to be a popular music manager famous for having had a hit single in the 1960s. The fictional Rocco was depicted as a sordid, predatory pederast who lusted after teenage boys. Were claimed that readers of the novel who knew him would have thought the character in the book referred to him.

Arnott and the publisher have both apologised for the distress and embarrassment caused to Were, who is nothing like the fictional Rocco, and confirming that the character of Tony Rocco in the novel was not intended to depict Were or refer to him in any way. They undertook not to repeat the allegations and said they'd try ur to recall all copies distributed so far. They also agreed to change the name of the character for all and any future reprints of the novel and to pay Were a substantial sum by way of damages, together with his legal costs.

Left: could this be the statement read out in court - or the title of Arnott's next book?

The IPKat is quite sympathetic towards both sides. It's horrendous when your name becomes notorious for reasons that are quite beyond your control (just think of the real Harry Potters, Stuart Littles, Gordon Bennetts and so on) - but on an increasingly populous planet the chances of picking a name at random and ending up like Arnott must just keep rising. Merpel bets the substantial sum received in 2007 was a lot more than whatever Rocco got for Stalemate in 1962.

Full text of statement here
Stalemate by Nada Surf here and by Limp Bizkit here
Strange names here
Another Tony Rocco, who didn't sue, here

ECJ TO RULE ON FUNCTIONALITY?

The IPKat has come across a reference to the ECJ under the Art.234 procedure, calling on the court to interpret Directive 89/104, Art.3(1)(e) first indent (shapes resulting from the nature of the goods themselves). The Hoge Raad der Nederlanden asks:

(1) Must Article 3(1)(e), first indent, be interpreted as meaning that the prohibition contained therein permanently precludes the registration of a shape as a trade mark where the nature of the product is such that its appearance and shaping determine its market value entirely or substantially as a result of their beauty or original character, or does the prohibition not apply where, prior to the application for registration, the attractiveness of the relevant shape to the public has been determined predominantly by the recognition of it as a distinctive sign?

(2) If the answer to Question 1 is to the latter effect, to what extent must this attractiveness have prevailed for the prohibition no longer to apply?

IPKat readers had better sit tight - the reference was only made in September.

WIFI, DILUTION AND DOCTORS

WiFi

VNU reports that the Australian Commonwealth Scientific and Industrial Research Organisation (CSIRO) has won a US District Court patent case concerning WiFi. The court ruled that the Japanese company, Buffalo Technology’s, WiFi devices infringed CSIRO’s patent concerning the the 802.11a/g standard, a Wi-Fi interface that is used by most notebook and desktop wireless Lan devices. However, the validity of the patent is being challenged by Intel, Dell, HP, Microsoft, Apple and Netgear in separate litigation. If this action is successful then the affect of the decision in the case against Buffalo will be ameliorated.

The IPKat says that while patents over industry standards may be inconvenient, this fact alone does not render them invalid.


Recommended reading

The IPKat alerts his readers that the contents of an online symposium on the US Trademark Dilution Revision Act 2006 are available freely online from FirstImpressions, a companion to the Michigan Law Review. Participants include Profs Graeme Dinwoodie, Mark Janis and Stacey Dogan.


PhD

IPKat co-blogmeister Ilanah [who hates writing about herself in the third person] was awarded her PhD on Monday for research into dilution by blurring in the US and EU. Anyone interested in discussing the subject is welcome to get in touch.

PCT: THE LATEST BITS ...; NEW CONFERENCE COMPETITION

PCT: the latest bits

The IPKat has just received PCT Notification No. 180, this being a circular from the World Intellectual Property Organization (WIPO) which features all the recent amendments to the Regulations made under the Patent Cooperation Treaty. These amendments were adopted by the Assembly of the International Patent Cooperation Union on 3 October 2006 and take effect on 1 April 2007. PCT Notification No. 181 contains the bits you've all been dreading - the new fees.

All the official information you could ever need for international patent filing here
Other things that PCT stands for here


New conference competition

CLT has announced its 2007 Intellectual Property Conference, which will be held on Thursday 25 January 2007 at The Hatton Conference Centre, London (in the heart of the Hatton Garden jewellery and diamond district). The programme is packed with exciting features. Topics covered include

* the impact of European and international developments on local IP practice in the UK;

* the collision of IP rights and their mortal enemy, competition rules;

* the intended and unintended consequences of the current protection of unregistered rights;

* an investigation of whatever happened to traditional copyright.

Speakers include Anna Carboni, Ruth Annand, Alan Poulter and Ian Karet. In the chair is IPKat co-blogmeister Jeremy (the IPKat's paw has made its imprint on the programme, which should lead to some fun). Booking early's not enough. You have to get there early - latecomers are made to sit at the front ...

This conference comes with a fun competition too. On the right is a representation of the logo of WIPO, the venerable World Intellectual Property Organization. It is deeply meaningful and symbolic. But what we need for the twenty-first century is a NEW LOGO for WIPO, together with a brief explanation of what it means. Please send your entries to the IPKat here. The prize: free registration for the conference (the normal price is £495 plus VAT). Closing date for submissions: Monday 8 January 2007, at midnight Greenwich Mean Time. Best entries will be posted on this blog, so please make sure they're not infringing any third party copyright ... (Merpel says, we wouldn't like WIPO to get sued

For full conference programme and registration details click here

FORTHCOMING DISTRACTIONS FROM THE ECJ

Forthcoming distractions from the ECJ

The European Court of Justice has quite a bit in the pipeline over the next few weeks, but much of it is in the form of hearings rather than the Opinions and Judgments the IPKat craves. So what tangible results of the ECJ's cogitations are on their way between now and the Winterval?

Next week, on Thursday 30 November, the Advocate General will be giving his Opinion in Case C-381/05 De Lantsheer Emmanuel v Comité Interprofessionnel du vin de Champagne (CIVC) and Veuve Clicquot Ponsardin. This is a reference for a preliminary ruling from the Cour d'appel de Bruxelles on the following questions:

"1. Does the definition of comparative advertising cover advertisements in which the advertiser refers only to a type of product, so that in those circumstances such advertisements must be regarded as referring to all undertakings which offer that type of product, and each of them can claim to have been identified?

2. With a view to determining whether there is a competitive relationship between the advertiser and the undertaking to which reference is made within the meaning of Article 2a of Directive 84/450 [on misleading advertising]:

(a) On the basis in particular of a comparison of Article 2a with paragraph (b) of Article 3a, should any undertaking which can be identified in the advertising be regarded as a competitor within the meaning of Article 2a, whatever the goods or services it offers?

(b) In the event of a negative response to that question and if other conditions are required in order for a competitive relationship to be established, is it necessary to consider the current state of the market and drinking habits in the Community or is it necessary also to consider how those habits might evolve?

(c) Must any investigation be confined to that part of the Community territory in which the advertising is disseminated?

(d) Is it necessary to consider the competitive relationship in relation to the types of products being compared and the way in which those types of products are generally perceived, or is it necessary, in order to assess the degree of substitution possible, to take into account also the particular characteristics of the product which the advertiser intends to promote in the advertising concerned and of the image he intends to give it?

(e) Are the criteria by which a competitive relationship within the meaning of Article 2(2a) can be established identical to the criteria for verifying whether the comparison satisfies the condition referred to in paragraph (b) of Article 3a?

3. Does a comparison of Article 2(2a) of Directive 84/450 1 with Article 3a of that directive mean that

(a) either any comparative advertising is unlawful which enables a type of product to be identified where a competitor or the goods offered by him cannot be identified from the wording?

(b) or the lawfulness of the comparison must be considered in the light only of national legislation other than that by which the provisions of the directive on comparative advertising are transposed, which could lead to reduced protection for consumers or undertakings offering the type of product being compared with the product offered by the advertiser?

4. If it should be concluded that there has been comparative advertising within the meaning of Article 2(2a), must it be inferred from Article 3a(1)(f) of the Directive that any comparison is unlawful which, in respect of products without designation of origin, relates to products with designation of origin?".

The IPKat, being fascinated by the points of intersection between trade mark infringement and unlawful comparative/referential advertising, awaits the Opinion with excitement. Merpel says, never mind the law - what were the facts that gave rise to the dispute in the first place? Has someone been slagging off Champagne without specifying whose Champagne? In which case does Directive 84/450 cover multiple-sourced products covered by PGI and PDO protection too?


A prima facie doomed appeal is likely to be rejected on Thursday 30 November when the CFI gives judgment in Case T-43/05 Camper, S.L. v OHIM, JC AB. Camper is appealing against OHIM's refusal to register as a Community trade mark the figurative BROTHERS by CAMPER for all products in class 25 (clothing, footwear and headgear). JC opposed, citing earlier Swedish, Finnish and Danish figurative mark "Brothers" for goods in the same class. According to the appellant the conflicting trade marks are similar to the extent that there exists a likelihood of confusion. Click here to view both marks.


On Thursday 14 December the Advocate General gives his Opinion in Case C-273/05 P Celltech R&D Ltd v OHIM. This is an appeal by OHIM against the judgment of the Court of First Instance (CFI) in Case T-260/031. The CFI overturned the Board of Appeal's decision to affirm the examiner's decision to reject the application to register the word CELLTECH for goods and services in various classes. The Board had agreed with the examiner that, because the word CELLTECH consisted of the grammatically correct combination of the two terms ‘cell’ and ‘tech’ (an abbreviation of ‘technical’ or ‘technology’), it could not serve as an indicator of origin for the goods and services in respect of which registration was sought, all of which fell within the field of cell technology.

OHIM's appeal is based on five arguments:

1. Although the CFI recognised "that at least one meaning of the word mark CELLTECH is 'cell technology'", it incorrectly required the Board of Appeal to give "an explanation of the meaning in scientific terms of cell technology" in order to explain "in what way those terms give any information about the intended purpose and nature of the goods and services referred to in the application for registration, in particular about the way in which those goods and services would be applied to cell technology or how they would result from it";

2. The CFI wrongly disregarded the principle following which a mere combination of elements, each of which is descriptive of characteristics of the goods or services in question, without any unusual variations as to syntax or meaning, remains descriptive of those characteristics for the purposes of Article 7(1)(c) CTMR;

3. The Court's statement that a finding of descriptiveness or of lack of distinctiveness requires a description of the "intended purpose" of the goods and services in question is erroneous as a matter of law. Although the Court recognised that "cell technology" is an "area of use" for the goods and services in question, it wrongly held that the description of such an "area of use" would be insufficient to establish that the sign CELLTECH is descriptive and therefore devoid of distinctiveness;

4. The Court incorrectly considered that the description of a process for the production or the supplying of the goods and services in question does not fall within the ambit of Article 7(1)(c) CTMR;

5. The Court also failed to give reasons in support of the latter finding.

Never a kat to prejudge the issue, the IPKat fancies OHIM to win this one [nb thanks are due to Trevor Cook, Bird & Bird, who spotted a monstrous error in the original version of this post which has since been rectified].


Finally, and also on 14 December, the CFI gives judgment in Case T-81/03 Mast-Jägermeister AG v OHIM. This is an application to annul the decision of the Board of Appeal (Case R 412/2002-1) arising from Zacapeneca's application to register as a Community trade mark its VENADO figurative mark for goods in Classes 32 and 33 (inter alia mineral and aerated waters and other non-alcoholic drinks, rum, rum-based liqueurs, brandy). MJ owned an earlier mark (right) consisting of a stag's head with a cross, registered for goods in Classes 18, 25, 32 and 33 (inter alia umbrellas, clothing, non-alcoholic beverages in so far as included in Class 32, wines and spirits). MJ's opposition failed both before the Opposition Division and on appeal. MJ's further appeal maintains that the principles relating to likelihood of confusion had been incorrectly applied.

The IPKat couldn't get a decent image of either mark to stick, unfortunately, but they can both be seen here. Although they're quite similar, the Board of Appeal had this to say at paragraph 32:

"The Board took the liberty of sampling the United Kingdom trade marks register and discovered that the deer or deer’s head motif is also found to be a common feature on trade marks covering beverages. It is not difficult to see why. Traders in beverages – particularly alcoholic beverages – like to associate in the mind of the consumer, their product with unspoilt wilderness, highland areas, of rugged and manly pursuits such as hunting game. This mental association brings with it the notions of purity, nature and tradition, all important selling points for drinks".

DON'T DOODLE

Yahoo! News reports that Pilot Pen Company has won a French trade mark infringement case against Mattel. Pilot makes the Magna Doodle sketching toy, and holds French and Community trade marks for MAGNA DOODLE. Mattel produced a sketching toy under the DOODLE-PRO trade mark, which was found by the Tribunal de Grande Instance of Paris to be confusingly similar to the MAGNA DOODLE mark. Mattel has said that it will appeal.

The IPKat says it’s rather difficult to reach a conclusion based on such scant information, but it is a little worrying that the only element the two marks appear to have in common is the descriptive/suggestive word ‘doodle’.