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Wednesday, 29 November 2006

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

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