Pirate Bay site sold to Swedish gaming company

Another chapter in the Pirate Bay saga (see the IPKat's collected (earlier) Pirate Bay postings here). The BBC today reports that the file-sharing site has been sold to the Swedish gaming company Global Gaming Factory, who has reportedly paid 60m Swedish kronor (£4.7m) for its famous purchase.

Global Gaming Factory was quick to announce in a very un-piratey manner that it would start paying copyright fees for all content linked to via the Pirate Bay site. Hans Pandeya, head of Global Gaming Factory, is cited by the BBC as saying "We would like to introduce models which entail that content providers and copyright owners get paid for content that is downloaded via the site. ... Content creators and providers need to control their content and get paid for it."

Peter Sunde, one of the famous four founders of the Pirate Bay site, is reported to have told the Swedish news agency TT: "We feel that we can't take The Pirate Bay any further. ... We're in a bit of a frozen situation where there's not much happening and there are neither people nor money to develop things."

It is not yet clear how Global Gaming Factory will charge for the download. The Pirate Bay site will be transferred in August. Whether this move will in any way affect the Pirate Bay founders appeal in the criminal proceedings, seems doubtful, says the IPKat. At least, it should ensure that Frederik Neij, Gottfrid Svartholm Warg, Carl Lundstrom and Peter Sunde will be able to pay their defense lawyers, muses Merpel.

Top Patent Blogs 2009: last chance to vote!

You have probably spotted by now that the US-based IP Watchdog weblog has been running for the past month a poll of Top Patent Blogs, with voters being asked to rate the 50 leading patent law blogs. There are actually two polls. First, you can cast one vote for the blog you like the best. Secondly you can cast as many votes as you need for the patent blogs you regularly read.

Right: once upon a time, voting was by show of hands -- but now it's all done online.

Both polls close today, so this is your last chance to vote. The results are promised early next month (i.e. soon).

This is the IPKat's first time in the poll and, even though it's not strictly speaking a patent blog but a general IP blog, in the race to head the Top Fifty it's currently in third position (well behind Patently-O, not far behind Patent Circle and just ahead of European Patent Case Law). In the second poll, for most-read status, the Kat is currently second (again well behind Patently-O but with its whiskers ahead of IP watchdog, Patent Circle and Patent Baristas).

If you'd like to vote, or are just curious to read the list of leading patent law blogs, you can visit the polling site here.

Patents, divisionals, legislative spaghetti and the faint-hearted

The following piece, by patent attorney Alexander Korenberg (Kilburn & Strode), raises some interesting issues. Entitled "Not For The Faint Hearted – The New Rules Relating To Filing A Divisional Application At The European Patent Office", it has just been published in the June 2009 (Volume 38, Number 6) issue of the CIPA Journal, p.388. The article reads as follows:

"Significant changes regarding the rules for filing divisional applications (and other procedural rules) will take effect from 1 April 2010. One of the EPO’s stated objectives behind the rule change relating to divisional applications is to increase legal certainty for third parties. Will this be achieved?

Introduction

Under the current rules, a European patent application can be divided at any time the application is still pending, that is it is not granted, withdrawn or refused. New rule 36(1) of the European Patent Convention introduces additional time limits for the filing of a divisional application:

Rule 36 (1)

(1) The applicant may file a divisional application relating to any pending earlier European patent application, provided that:

(a) the divisional application is filed before the expiry of a time limit of twenty-four months from the Examining Division's first communication in respect of the earliest application for which a communication has been issued, or

(b) the divisional application is filed before the expiry of a time limit of twenty-four months from any communication in which the Examining Division has objected that the earlier application does not meet the requirements of Article 82, provided it was raising that specific objection for the first time.

The new rule for filing a divisional application thus includes a time limit to do so by 24 months from the issuance of the first examination report for a family of parent and divisional applications (Rule 36(1)(a)). Additionally, the new rule provides for an independent time period to file a divisional of 24 months from an examination report raising an objection that the claims of the application relate to more than one invention and therefore lack unity (Article 82 EPC) providing that that specific objection is raised for the first time in the examination report (Rule 36(1)(b)). In the remainder of this report, this time limit to file a divisional application within 24 months of a first specific lack of unity objection is referred to as the “further time limit”. As will become clear below, understanding the consequences of the new rules, and specifically the further time limit, is far from straightforward – only the brave should read on.

“That Specific Objection”

There is a question as to what is meant by “specific” in the context of new Rule 36(1)(b). On the one hand, “specific” could simply refer back to Article 82, in which case only the very first non-unity objection raised for a family of applications would trigger the further time limit. On the other hand, “specific” could refer to non-unity objection relating to specific claimed subject matter, in which case a further time limit would be triggered each time a non-unity objection is raised for the first time for a specific claimed subject matter. In the absence of guidance from the EPO, it seems plausible to assume that the latter interpretation will be applied and that “that specific objection” means an objection specific to particular claimed subject matter not being in unity. This reading seems reasonable in light of Article 4G(1) of the Paris Convention which recites that the applicant may divide the application if a unity objection is raised. The further time limit appears to be intended to allow the filing of divisional applications occasioned by a lack of unity objection (as opposed to a “voluntary” divisional application filed on the applicant’s own volition), even if the 24 months time limit running from the first examination report has expired.

Limited effect of the further time limit

The question arises as to how the further time limit in the case of a lack of unity objection affects the prosecution strategy for a family of parent and divisional applications. Assuming that the EPO tends to raise any objections of lack of unity in the first examination report, any further time limit initiated by a lack of unity objection is likely only to apply in situations where a first examination report has already issued. The further time limit will then only apply if the applicant introduces a lack of unity by amendment after the first examination report or files a divisional application with claims which lack unity. What is the effect, then, of the new rules on such an amendment or divisional application?

Owing to the interaction with other rule changes taking effect at the same time, and in particular new Rule 62a EPC, matters are not quite as straightforward as they are currently. Rule 62a EPC will require a selection of a single independent claim per claim category (product or method/process, in accordance with existing Rule 43 (2) EPC) before a search is carried out.

Rule 62a

(1) If the European Patent Office considers that the claims as filed do not comply with Rule 43, paragraph 2, it shall invite the applicant to indicate, within a period of two months, the claims complying with Rule 43, paragraph 2, on the basis of which the search is to be carried out. If the applicant fails to provide such an indication in due time, the search shall be carried out on the basis of the first claim in each category.

(2) The Examining Division shall invite the applicant to restrict the claims to the subject-matter searched unless it finds that the objection under paragraph 1 was not justified.

Rule 62a EPC thus requires a selection of a single independent claim per claim category (product or method/process) before a search is carried out (let alone an examination report issued). This limits the circumstances where a unity objection can arise, as non-selected claims will not be searched and a lack of unity objection cannot be raised in relation to their subject matter.

Case by Case

As a result of the interaction of the new rules, four cases need to be distinguished:

• A divisional application with claims comprising several groups of independent, product and method/process claims, each group of independent product and process claims relating to a respective invention (“a priori” non-unity): Although multiple inventions are present in the application as filed, the interaction of the new rules will require selection of one independent claim per category and a later deletion of any unsearched claims. If the applicant chooses independent claims relating to the same invention, a lack of unity of invention objection will never arise. Thus, the further time limit does not apply in this situation and the subject matter of the independent claims cannot be protected once the original 24 months time limit from the very first examination report issued for the family of applications has expired. If, on the other hand, the selected independent claims do not relate to the same invention, a lack of unity objection can be expected, which would initiate the further time limit. However, this comes at a price, since only the first such independent claim will be searched while the remaining non-unified unsearched independent claims can only be pursued in a further divisional application (with clear cost implications).

• A divisional application having claims with a single independent claim each for a product and method/process not in unity: This situation is considered unlikely to arise often, as a single claim set is not usually created to include independent product and method/process claims to non-unified inventions. Nevertheless, for a set of claims containing a single independent claim per category in which the independent claims are not in unity (for example apparatus and method claims relating to separate inventions), a lack of unity objection triggering the further time limit can be expected. However, the same problem with unsearched subject matter as outlined above for the selection of independent claims for different inventions in different categories applies. The non-selected of the two independent claims can only be pursued in a divisional application.

• Lack of unity based on prior art (“a posteriori” non-unity): The EPO could raise a lack of unity of invention objection if the independent claims are found to be not novel or not inventive in light of prior art cited during the search of the application. A lack of unity objection should be raised if the dependent claims are considered not to be linked by a common inventive concept (“special technical feature”) in light of the prior art. This may be considered an “unexpected” lack of unity objection. If such a lack of unity objection raised at the search stage is confirmed in an examination report, this examination report triggers the further time limit for filing a divisional application (providing that the objection is being raised for the first time). Thus, the further time limit may apply where an “unexpected” lack of unity objection is raised based on the result of the search.

• The applicant introduces a new set of claims lacking unity after the first examination report: In accordance with the new rules, any amendments after the first examination report will be at the EPO’s discretion (as opposed to the present rules, where the applicant can amend once as of right after the first examination report). We speculate that non-unitary amendments after the first examination report are unlikely to be admitted (and thus no lack of unity objection would be raised).

Conclusion

As can be seen, the seemingly simple approach of providing a time limit for filing a divisional application triggered either by the very first examination report or by the first examination report raising a specific lack of unity objection, in fact is all but simple in its consequences. The result is a complicated set of scenarios depending predominantly on the structure of the claim set. A further factor, of course, is how consistent the EPO will be in applying the new rules. For example, if new Rule 62(a) (requiring selection of an independent claim per category) is not applied consistently, different scenarios will arise on a case by case basis. Likewise, much will depend on how lenient the EPO is in applying its discretion to allow amendments after the first examination report has issued. This will add further uncertainty.

It may be the intention of the EPO to limit the availability of the further time limit (where a lack of unity is raised). Nevertheless, the availability of this time limit is applicable to limited circumstances which are difficult to understand and/or in part, unpredictable. This could, in effect, be contrary to the EPO’s stated intention behind the rule changes, of increasing legal certainty for third parties. In many cases, determining whether further divisional applications can still be filed under the rules from 1 April 2010 will be more difficult, more costly and less certain than under the current system".

The IPKat considers this to be one of the most non-illustrable blog features he has ever posted. He is however concerned at the amount of effort and ingenuity that goes into drafting increasingly complex rules that can scarcely be understood by the layman and which seem to consist almost entirely of a sort of legislative spaghetti that tangles everyone up. If the system were designed from the point of view of what its users want -- and they appear to want both the facility of divisionals and the greatest effectiveness in being able to exercise that facility -- might it not be better to start from that position rather than keep worrying about the interests of third parties. If if weren't for patent applicants there would be no third parties. Merpel merely notes that the current rules on divisionals are a good deal longer than the entire text of the Venetian patent law of 1474: see Venetian Cat (no relation) here.

Tricky issues concerning divisionals have also been recently discussed on the IPKat's weblog here, here, here and here.

Gone to meet its drafter

It's a rare thing indeed for the IPKat to publish a Comment to an earlier blog as a substantive item in its own right. It's an even more unusual thing for the IPKat to do so without attribution, but this wonderful piece -- penned by the wily Anonymous -- has had him chuckling into his whiskers ever since he first read it. This comment was appended to the IPKat's rant last week which you can find here, though you don't need to read the original post to enjoy the full flavour of ...

"The Norwegian Patent Sketch

Customer: Hello Miss.

Assistant: What do you mean Miss?

Customer: I’m sorry I have a cold, I wish to register a complaint.

Assistant: I’m sorry, but it’s a public holiday in Wales.

Customer: Never mind that my lad, I wish to complain about this ‘ere patent, what I purchased from you not ‘alf an hour ago in this very boutique.

Assistant: Ah yes the Norwegian patent, what seems to be trouble sir?

Customer: I’ll tell you what the trouble is my good man, it appears that you neglected to pay the filing, search, examination, and renewal fees.

Assistant: Lovely claim drafting though.

Customer: Claim drafting don’t enter into it, the application is lapsed!

Assistant: No it isn’t, it’s just in suspension.

Customer: [sarcastically] Listen, my lad, I know a lapsed patent when I see one and I’m looking at one right now.

Assistant: But there are residual rights.

Customer: Residual rights are a function of the validity, which was never examined ipso facto, there ain’t any.

Assistant: You could write a cease and desist letter. These can be based on the residual rights.

Customer: Well, then if there are residual rights, I’ll try and invoke them shall I. [Holding patent up in front of his face] ‘Ello Mr Patent, ‘ow are we today, would you like me pay your renewal fees for you so we can go to court for a preliminary injunction?

Assistant: There you see, the residual rights can be invoked.

Customer: That, my good man is precisely my point, you cannot invoke residual rights on a lapsed patent!

Assistant: Ah yes, but if I hadn’t let it lapse, the resulting patent would have been litigated for nullification, incurring additional expenses for you, the client.

Customer: Nullification, nullification! This ‘ere patent could not be nullified if you threw 10,000 novelty disclosures at it. It is dead, deceased, gone to meet its drafter, cast off its mortal coil, it has ceased to be, if it wasn’t here, it would be pushing up the daisies and tripping the light fantastic at the legal library. It is lapsed, deemed to be withdrawn, refused, revoked, it has lost all rights in rem, ab initio, a posteriori, a priori, a forteriori and retroactively even!

[Smashing the rolled up papers on the table with great force]

That my good man, is an ex patent!

Assistant: But it was published.

Customer: Published you say? [Pause] I took the liberty of examining the file estoppel for this patent after I got it ‘ome and discovered that the only means by which it ‘ad been published, was by virtue of the fact that a photocopy had been nailed to a tree outside Concept House!

Assistant: Well I suppose I’d better replace it then [looks behind counter]. Well it looks as though we’re right out of patents.

Customer: I see, I get the picture.

Assistant: I’ve got an industrial design.

Customer: Does it protect a technical invention?

Assistant: Er, no.

Customer: WELL IT’S HARDLY A BLEEDING REPLACEMENT THEN IS IT!!!??@@##.

Assistant: [Sheepishly] No, I suppose not.

Customer: Well.

Assistant: D’you….., d’you want to come back to my place?

Customer: [Checks the shop] Yeah, all right, sure".

Letter from AmeriKat

Stop your relentless Twittering!

Despite the powerful protection afforded her by the First Amendment, the AmeriKat does not tweet, Twitter, or chirp. Hundreds of other people may be joining her, given the recent rash of claims against users who have published defamatory, private, or otherwise infringing statements on their Twitter accounts. Despite the internet begin heralded as “the most participatory form of mass speech yet developed” in ACLU v Reno, this participation may have come at a price. The Media Law and Resource Center has reported that over 250 claims have been brought against individuals using Twitter and other blogging sites this year.

As reported by The Independent in March, the first lawsuit against a Twitterer was brought against the notorious Courtney Love (left) by fashion designer Dawn Simorangkir. Love posted Twitter updates calling the designer, among other things, a liar and drug user. Under section 230 of the Communications Decency Act 1996, Love and not Twitter is responsible for the publication of libellous and private material. To counteract the immunity from liability afforded publishers, the president of the Media Bloggers Association, Robert Cox, has collaborated with Media Professional Insurance to establish a new insurance plan for bloggers to protect themselves in the event of a lawsuit.

But it is not only the world of libel, nor just the liability of independent bloggers that is at issue. At the beginning of this month, St. Louis Cardinals (a Major League Baseball team) manager Tony La Russa filed the first claim brought against Twitter in the Superior Court of California. The complaint states that Twitter is responsible for trade mark infringement, misappropriation of image and likeness and invasion of privacy by publishing the Twitter content of an impersonator of La Russa. As far as the AmeriKat is aware, the post of Twitter’s co-founder Biz Stone stating that Twitter has not settled the case means that the two parties will be proceeding to trial. If they do, the court will be asked to decide whether section 230 of the CDA is also applicable in cases of trade mark infringement. In the AmeriKat’s opinion, however, La Russa’s lawyers dressed up a defamation suit in the clothes of a trade mark claim to fall outside of section 230; she believes that the Court will be wise to such tactics.

In a recent case this month, Barnes v Yahoo!, Orgeon’s 9th Circuit has attempted to redress this imbalance by holding that, where an ISP has undertaken to remove infringing content and does not, it may not be able to bar a claim for promissory estoppel against them by virtue of section 230. Despite this case, the AmeriKat feels that it is inadequate for claimants to have to rely on a contractual claim when an actionable tort has been committed against them. The AmeriKat believes that with the comparative effortlessness, speed, and general brevity of these types of internet publications, the ease to which someone’s reputation is libelled or intellectual property infringed has surely increased. Since under section 230 a claimant, without the ability to sue the publishing website, is potentially left without adequate redress for a tort committed against it, the AmeriKat feels that the US needs to redress this current imbalance in the law.

Sotomayor Standing

Following every Supreme Court nomination comes the inevitable media and governmental interrogation of the nominee’s judicial, legal, and personal record. President Obama’s May 29 nomination of Sonia Maria Sotomayor to the Supreme Court has resulted in 54% of Americans stating they would like to see her confirmed as the next Supreme Court Justice, replacing Justice David Souter. Given the US public’s majority approval of Sotomayor, the AmeriKat has taken this opportunity to conduct a little research into our likely next Supreme Court Justice’s intellectual property law record.

Before her nomination to the bench by former President George H W Bush, Sotomayor was a partner at New York firm Pavia & Harcourt, specializing mainly in trade mark matters. For four years Sotomayor represented significant brands, such as Fendi, against producers of counterfeit goods and ran stringent anti-counterfeiting programmes to protect their brands. Responding to a 1986 event called the “Fendi Crush”, where to celebrate their success against counterfeits thousands of fake Fendi accessories were destroyed, Sotomayor stated that in representing brands the “aim is much like a drug operation. We attempt to go after suppliers and secure information that leads back to the manufacturers.” Besides obtaining several ex parte injunctions against counterfeit suppliers on behalf of Fendi every month, Sotomayor also established a group of prominent trade mark lawyers in New York City to lobby for changes in anti-counterfeiting laws. In an interview with The San Francisco Chronicle in 1992, Sotomayor stated that “In the next five or 10 years, trade mark owners will become more concentrated on changing state laws, changing penalties. They will rely more on local police to make arrests. A real threat of jail does have an impact.”

Unfortunately, it is Sotomayor’s subsequently reversed decision in Tasini v The New York Times 972 F.Supp. 804 (SDNY 1997) which is the most well known of all her intellectual property decisions. In this case, freelance journalists brought a claim against the Times alleging copyright infringement arising from the republication of their articles on electronic databases such as LexisNexis. The authors contended that their original licence granted to the Times was for publication in print form and therefore did not include electronic publication. Sotomayor was tasked in interpreting section 201(c) of the Copyright Act which deals the rights of owners of collective works, i.e. whether the Times as a collective works owner could reuse the journalists’ works absent any express authorization. In her liberal interpretation of this section, Sotomayor held that the Times had the right to reprint the journalists’ works, even if their initial licence did not include electronic reproduction. However, the Supreme Court reversed Sotomayor’s decision by 7-2. Justice Ginsburg gave the majority speech ruling that the Times republication of the journalists’ individual articles without the context of the entire newspaper in which the articles were first printed was an infringement and thus required the journalists’ consent and compensation.

If rumour is correct and President Obama’s administration manages to install Sotomayor to the Supreme Court by October in time for the Court’s next term, she may be presiding over the much-anticipated judgment in Bilski. The AmeriKat’s brief investigation into Sotomayor’s intellectual property decisions seems to show her leaning in favor of larger corporations and rights holders. However, this limited evidence and Sotomayor’s few judgments concerning patent cases have not given the AmeriKat any definitive guidance on how to predict Sotomayor’s approach to Bilski. If it is anything like her ex-husband’s stance, however, Sotomayor’s judgment will not be forming part of any ground-breaking judgment that many are hoping.
Where the AmeriKat has failed to predict Sotomayor’s attitude towards patent claims, she is eager to hear your views. To help you along your way, the AmeriKat suggests you look Sotomayor’s responses to the required Senate Committee of the Judiciary questionnaire.

Michael Jackson

This week’s Letter would not be an accurate reflection of the current discussions in the US if the AmierKat did not mention the death of Michael Jackson. The AmeriKat herself remembers dancing around to the Thriller vinyl record in her purple corduroy flairs and joining her parents exercising to “Can You Feel It” on Jane Fonda’s Workout cassette (vinyl and cassettes – those were vintage days for intellectual property law!). Besides his enduring earlier hits and his later bizarre press appearances, it was Jackson’s purchase of ATV Publishing, the owner of the rights to 251 Beatles’ songs, and his own catalogue of valuable copyright works, that will be preoccupying numerous lawyers handling the administration of his estate in the coming months. As reported in Rolling Stone, since Jackson’s death on Thursday, sales of his music on iTunes have soared. The AmeriKat wonders whether, with his death, the increase in value of Jackson’s intellectual property assets will now go somewhere in handling the reported $400 million in debt facing his estate.

Blacklight fail yet again

As regular IPKat readers will know, this particular Kat has been intrigued by the progress of the strange and mysterious US company Blacklight Power, and in particular by their continued attempts to get UK patent protection for their alleged inventions. Two of their inventions have previously featured in a hearing at the UK-IPO (commented on by the IPKat here), which resulted in a finding that the applications fell foul of sections 1(1)(c) and 14(3) of the Patents Act 1977. The hearing officer considered that, because the inventions relied on a controversial scientific hypothesis known by the self-contradictory acronym 'GUTQCM' (now apparently called the "Grand Unified Theory of Classical Physics"), it was necessary to determine whether the alleged theory was, on the balance of probabilities, likely to turn out to be true. For various reasons, the hearing officer considered that it was not at all likely.

Blacklight then appealed against the decision, and came before Mr Justice Floyd in the Patents Court to argue their case (on which the IPKat commented here). Floyd J in general agreed with the UK-IPO hearing officer but nevertheless sent the applications back to the IPO so that what he considered to be the correct question could be answered, which was whether there was any reasonable prospect that the theory would be found to be true on a full investigation with the benefit of expert evidence.

The same hearing officer then went on to consider this question, which has now resulted in a second decision coming out of the UK-IPO on these applications, available from the IPO here. Unsurprisingly, the hearing officer has not miraculously found that the theory would stand a reasonable prospect of success of being found to be true, and has again refused the applications. The key statement of the decision (which at times ventures into the outer realms of speculative physics) appears to be this one:

"So how does the question of GUTCQM’s reasonable prospect of being shown to be valid fare in this scheme of things? If an applicant for a patent put forward an invention based on one of the current candidate theories for the fundamental nature of space time, such as string theory, or loop quantum gravity, etc, the question whether the theory had a reasonable prospect of turning out to be valid would raise real issues. It would by no means be guaranteed that the answer in any of those cases would be in the affirmative. Those are well recognised and intensively researched ideas familiar to thousands of physicists. GUTCQM is not even a candidate theory in those terms. It is not a theory that has received any acknowledgement let alone critical assessment by the scientific community at large. Assessing it on the basis of the observations I have made above concerning the two different routes to acceptance of theories, it has neither demonstrated that it provides an underlying principle nor is it a theory that is receiving attention and work by researchers in the scientific community. If I may refer to a consideration of the landscape of rival theories from the Roger Penrose book referred to above; on page 1017 he mentions a survey of scientific articles which lists eight different theoretical bases for research in the field of quantum gravity, the most popular theory in that survey attracting 69 articles in a month and the two least popular just one article each. This was in 1997 but I don’t think the picture would be very different now. GUTCQM is not one of the eight; it does not attract one single article. It simply is not within the consideration of serious scientists in the field. It does not in my view get off the starting blocks for inclusion among the group of such theories which might eventually turn out to be valid."

The IPKat has no doubt that Blacklight Power's applications will not succeed as long as they carry on being dependent on a theory that has such little possibility of being right, or at least being accepted by proper physicists. Perhaps they should try a different tack and try to patent inventions that have some basis in reality?

Citing prior art in European patent applications

The IPKat has noticed a recent decision of an EPO Board of Appeal that relates to the question of whether it is necessary, rather than merely preferable, for a European patent application to mention relevant prior art known at the time of filing. The issue relates to Rule 42(1)(b), which states that the description shall "indicate the background art which, as far as is known to the applicant, can be regarded as useful to understand the invention, draw up the European search report and examine the European patent application, and, preferably, cite the documents reflecting such art".

Patent attorneys will be well aware that not mentioning relevant prior art known at the time of filing cannot of itself make a European application or patent invalid. The examiners for application 06024212.0, however, apparently thought differently, contrary to long-standing EPO practice. From a rather strained interpretation of the German version of the relevant rule, the examining division's view was that not including a reference to relevant prior art known to the applicant at the time of filing would make the application void ab initio. The application was refused as a result. The applicant, Samsung Electronics, unsurprisingly appealed.

In the resulting decision T 2321/08, the Board considered that the examining division had got it completely wrong. Rule 42(1)(b) did not put any stringent obligation on the applicant to cite relevant documents known at the time of filing, and failure to do so was in any case correctable after filing by making appropriate amendments. There was no reason to depart from the long-standing EPO practice of allowing amendments to be made to the description to cite relevant documents.

The IPKat wonders what on Earth the examining division in this case were thinking of, but is very glad that the Board reached the decision they did, not least because the consequences of the decision going the other way would have been very bad indeed. The well-known consequences in the US of not citing relevant documents are bad enough, but following the examining division's reasoning in this case would inevitably result in many currently pending European applications and granted patents becoming invalid without any hope of recovery. Following the decisions in G 1/05 and G 1/06, the IPKat finds it surprising that an examining division could even contemplate such a draconian interpretation of the rules.

Friday frissons

Don't forget to check the IPKat's side bar. There are so many exciting events on offer. Some are free; some are discounted; some are not.

Around the blogs. Specialist copyright blog The 1709 Blog, launched this April, has now achieved its 200th email subscriber -- well done!And take a look at GlobalIPWatch, a cooperative venture concerning which Arif Mahmood has written:

"I was wondering if IPKat could help European students learn about unique opportunities with Global IPWatch.com. We are a non-commercial international electronic IP case law reporter and have law students from the US and Canada produce case summaries of notable IP decisions from both jurisdictions. While we cover some EU decisions at the moment we are trying to reach out to ambitious young IP professionals who want to volunteer as Associate Editors and contribute EU IP cases".

If you're volunteering, then email Arif here. Another blog that is crying out for attention is IP Finance, which last week notched up its 500th email subscriber. IP Finance is experimenting with regular themed features: one is Louise O'Callaghan's Tuesday Articles on IP insolvency, which has now been running for five weeks (details are available in the side-bar); the other is Neil Wilkof's posts on the drafting of IP licensing contracts -- the first two of which are here and here.

Good news if you're one of the young IP enthusiasts who either attended the Intellectual Property Institute's informal (pay-for-your-own-drinks) session at The Old Nick last year or who contacted the IPI to say you'd like to keep in touch. There are two forthcoming events in the pipeline. One is a "show and tell" social, to be hosted by Wedlake Bell: turn up and be sure to bring an item of IP interest, so we can all discuss it over a refreshing drink or two. The other is a chat with IP Minister David Lammy MP, who has kindly agreed to join us -- again at The Old Nick -- for a strictly off-the-record chat about IP and what it feels like to be making one's career in that sector. Dates and further details to be supplied in due course.

Several good souls have taken the trouble to inform the IPKat of a patent, US 5255452, issued to the late Michael Jackson. This was for a "method and means of creating anti-gravity illusion". The IPKat doesn't want to speak ill of the dead, but he has a long memory and wonders whether the equally late but prior in time Roy Castle performed a similar illusion using a similar device back in the 1960s, in the days of black-and-white telly.

The Chartered Institute of Patent Attorneys (CIPA) in the UK has had a big week. On Wednesday it launched the latest supplement to its must-read/steal Guide to the Patents Acts (details here).

Left: a patent attorney, unable to bear the new burden of regulatory review, decides to chuck it in and get a job for life with a decent pension ... in the civil service

Then it publishes, for a most reasonable £25, the 9th edition of Doug Ealey's Study Guide to the Patents Acts (details here: review to follow). Then it gets maligned by the formerly friendly Intellectual Property Office. Who said that being a patent attorney was boring!

The IPKat's friend and 1709 Blog colleague Hugo Cox is currently looking for a fresh challenge. If you've got one, click here for further information and contact details.

Right: a dogged character looking for a fresh challenge ...

Events in the forthcoming week include the seminar led by Cambridge IP buff Dr Patricia Akester entitled "The Impact of DRM on Access to Exceptions: First Empirical Assessment". This is another excellent Intellectual Property Institute event. Please don't let the fact that it clashes with the second week of the Wimbledon tennis tournament distract you -- if you like an ace, then Dr A is the person for you. Details here.

Fending off allegations that he himself is biased, the judge in the proceedings to establish whether the Swedish Pirate Bay judge was biased has concluded that he was not and that, accordingly, the Pirate Bay Four were properly convicted of criminal copyright infringement (see earlier posts here and here). Reports on these latest proceedings can be read on The Register, Reuters and Ars technica.

You want to complain?

The current issue of IPInsight ("the free e-newsletter brought to you by the Business Outreach and Education team" of the UK's Intellectual Property Office), leads with a feature entitled IP complaints. Its text reads as follows:

"Unhappy with your IP adviser? Your chances of holding them to account are about to improve.

A bill for £2,000 lands on your desk. It is from your IP attorney. Sure, they have been working on your case. But where has this bill come from? Did anyone ask whether you wanted the work doing? Actually, you might have liked it done differently. Or not at all.

At the moment, you can complain, of course. First, you raise it with your attorney. Then, go to one of the two professional institutes: The Chartered Institute of Patent Attorneys (CIPA) for patents, or the Institute of Trade Mark Attorneys (ITMA) for trade marks. But it feels as if they are all in the same boat. Nobody sees it your way round.

Next year, any such cosiness is being blown away. The professional institutes are losing their regulatory role. In future, they are being freed to concentrate on representing their members. From early next year, a new regulator, The Intellectual Property Regulation Board (IPREG), also known as IP Reg, will be responsible for ensuring high professional standards. The chief executive is Mike Knight, a former examiner at the Intellectual Property Office, who is used to casting a sceptical eye over IP attorneys.

In drawing up new policies for conduct, discipline and qualifications, he is under the direction of a board that includes IP users as well as attorneys. It will mean a big change in how the profession works. "We are turning it the other way round. We will be setting down standards in light of what the public expects. It will be no longer a question of what professionals think they ought to have achieved."

Knight will have little tolerance for anyone saying that IP varies too much from case to case. "Everyone is providing a legal service. We want to make sure attorneys tell their clients where they are going, what they are doing for them, what they can expect and how much it will cost. The best attorneys do it already. We want to spread these practices throughout the profession, so on each the client knows what to expect."

As a user, you can go to the IPREG website to take a look at the code of conduct and the qualifications expected of attorneys. Because the needs of a lone inventor and a global brand are so different, Knight is wary of producing a template for IP agreements, but in the code of conduct, you will find examples of what IPREG expects to see in a contract.

These standards, written under the influence of IP users, will be how the profession is judged in future. If you are unhappy, you will have a clear framework on which to base any complaint. If your attorney gives an inadequate response, you then go to another new independent body: the Office of Legal Complaints.

After taking an initial look at whether you have a genuine grievance, they will ask your attorney to put up a hefty sum to cover the cost of the investigation and any redress. If they are cleared, it will be returned to them.

But the principle is there that 'the polluter should pay', says Knight. "We want to win respect for a profession with high standards. If you are a bad attorney, you will pay for it."

The IPKat is happy to see all professions regulated, and he sees no reason why the IP professions should be treated differently. He is also pleased to see that IP users are being brought in to the review process. However, he wonders whether he is alone in considering the tone of this article to be unnecessarily offensive. It demeans the work that has gone into regulating the patent and trade mark professions in the past and the comment about cosiness strikes a gratuitiously unpleasant tone. Has the IPO fallen out with the professions, or is it merely sticking pins into them for the fun of it, to remind them that, while a dissatisfied client can change his professional representative, you can't change IPOs if you fall out with people working in the one you've already got?

IPReg website here
Rules of Conduct for Patent Attorneys, Trade Mark Attorneys and Other Regulated Persons here
"You want to complain!" -- the Monty Python sketch

Is the ruling in L'Oréal v Bellure against the law?

Swedish Advokat Mats Björkenfeldt (Hjalmar Petris Advokatbyrå HB) is one of the IPKat's favourite correspondents because he likes to use his brain in order to exercise the brains of others. He is very concerned about the recent ruling of the Court of Justice of the European Communities in Case C-487/07 L'Oréal v Bellure (discussed here by the IPKat and here, on the same blog, by another of the IPKat's favourite correspondents, Professor Dirk Visser). Writes Mats:

"I wonder if you can help me in this matter?

Concerning ECJ´s ruling in L'Oréal v Bellure I wonder if this decision is consistent with EC´s Directive 2005/29 on Unfair Commercial Practices (UCPD)?

In Wetherill and Bernitz, The Regulation of Unfair Commercial Practices under EC Directive 2005/29, New Rules and New Techniques, Hart, 2007, p. 42, you can read the following:

“The standard of assessment is touched upon in one of the Recitals (14), which declares that it is not the intention of the Directive to reduce consumer choice by prohibiting the promotion of products which look similar to other products unless this similarity confuses consumers as to the commercial origin of the product and is therefore misleading. This recital can be read as a pronouncement in favour of a rather restrictive view of the scope of protection offered… This would be more in line with the rather restrictive view on passing-off prevailing in English law than with the elaborate German case law”.

Professor Ulf Bernitz -- you may call him Mr IP in the north -- confirms in his chapter "Misleading Packaging, Copycats and Look-alikes: an Unfair Commercial Practices", in Ezrachi et al, Private Labels, Brands, and Competition Policy, Oxford 2009, p. 218:

“From a legal point of view, trade mark law constitutes the basis. However, trade mark protection is often not broad enough to catch the use of copycats and look-alikes. They often avoid being so confusingly similar that they would constitute trade mark infringement. In this regard, it is of fundamental importance to which extent there exist principles of unfair competition law suitable to the problems. On this point, the law is far from uniform. The possibility of taking successful legal action against the practice seems to be particularly restricted in the UK; English law on passing off tends to require proof of actual misleading. In other countries, e.g. Germany and the Nordic countries, unfair competition or marketing law offers wider possibilities for successful legal action in this kind of cases. However, the recent EC Directive 2005/29 on Unfair Commercial Practices has changes the basic legal perspective substantially”. And at p. 229: “This recital (14) can be read as a pronouncement in favour of a rather restrictive view on the scope of protection offered, indicating the priority of consumer perception and thus possibly reducing the application of the Directive to instances of clear deception of consumers looking for a particular brand or the like. This would be more in line with the rather restrictive view on passing-off prevailing in English law…”

The ECJ´s ruling in L'Oréal v Bellure is based, as I believe, on the notion of protection of investments, cf AG´s opinion in Case C-206/01 Arsenal v Reed. But is it consistent with the law?

I´m rather confused, and wonder if any IPKat friends, including Professor Visser, can bring order to all of this?"

Who would like to rise to this challenge, wonders the IPKat. Merpel reminds readers that there are still a couple of days in which to cast your vote on the poll (you can find it at the top of the side-bar) as to whether L'Oréal v Bellure is the best thing since sliced bread or an unmitigated evil, or something in between.

German file-sharing site fined 24m euros

The Register reports that a German court has fined file-sharing service Rapidshare 24 million euros for copyright infringement in respect of 5,000 tracks which were shared through the site. The court has held that it is the responsibility of the hosting service, and not the copyright owners, to ensure that copyright infringement was not taking place.

The IPKat has relatively little sympathy for file-sharing websites when they know that the main use for their websites is to exchange copyright material. However, he wonders what this judgment means for services like UTube where some files may infringe but others may either be completely original, or at least involve transformative use.

ECJ puts the finger on PURE DIGITAL's problem

For those who love recent history, Case C-542/07 P Imagination Technologies Ltd v Office for Harmonisation in the Internal Market is a Community trade mark appeal which the Court of Justice of the European Communities heard way back on 11 June but which has hitherto escaped the vigilant Kats.

Imagination applied to register as a Community trade mark the word sign PURE DIGITAL for goods and services in classes 9 and 38 (electric and electronic apparatus for use with multi-media entertaining systems and telecommunication of information, etc). The examiner refused the application on the ground that the mark was descriptive and devoid of either inherent or acquired distinctive character. The Second Board of Appeal dismissed Imagination's appeal, as did the Court of First Instance. Imagination then appealed to the Court of Justice, maintaining that the Court of First Instance had wrongly taken the view that the distinctive character of a trade mark for which registration had been sought must be acquired before the date of filing of the application.

The ECJ dismissed the appeal and explained as follows:

* Distinctive character, if not inherent, had to be acquired through use of the trade mark before the date of application for registration. This was apparent from the very wording of Article 7(3) of the Community Trade Mark Regulation, particularly from the use of the verbs in the past tense in the phrases 'the mark has become' and 'in consequence of the use which has been made of it': the mark must already have acquired distinctive character through prior use by the time of filing of the application.

* It was the intention of the Community legislature to grant protection as a Community trade mark only to those marks whose distinctive character had been acquired through use before the date of application and the literal interpretation of Article 7(3) was the only one which was compatible with the logic of the system of absolute and relative grounds for refusal.

* If the contrary were correct, that would lead to the unacceptable proposition that, in opposition proceedings based on an earlier mark which had not yet acquired distinctive character, the opposition would succeed where the second mark already had distinctive character at its time of filing while the first had not yet acquired it through use.

The IPKat thinks this is right and that the final point is the real clincher. Merpel agrees and says, how refreshingly pleasant it is to see a court these days which has a kind word for any sort of literal interpretation: I'd almost forgotten that words come with meanings and are not all wrapped in meta-text. Tufty, not wanting to be left out, adds that the words 'pure digital' are likely to run into relative grounds oppositions even if there are no problems with absolute grounds such as decriptiveness and lack of distinctive character, if you look at the logos decorating this post.

Pure digital products here

Pure digitalis here

IP foresight: a new forum for SCRIPT

The IPKat's learned friend and scholar, Professor Charlotte Waelde, writes to inform him as follows:

"At SCRIPT (the AHRC funded research centre for studies in intellectual property and technology law at the University of Edinburgh) we have set up an independent 'think tank' called the Intellectual Property Foresight Forum (IPFF). The main purpose of the IPFF is to 'bring together intellectual property and media lawyers, postgraduates and others with related interests to discuss and collaborate on issues of importance in the development of intellectual property and media laws and policies'. Details can be found here.

We are aiming to engage in a variety of activities including the preparation and submission of opinions and responses to consultations and the development of joint funding bids.

We also want to build up databases of academics and PhD students working in these fields and hope that you might be interested in having your details included in the academic database and that your PhD students might be keen to have their details in the student database.

IPFF Academic Database

The purpose of this database is to make available information on Intellectual Property and Media academics in order to facilitate networking and foster research collaborations in IP and media law development and policy.

If you would like to be included in the database, please click here and fill out the online form.

IPFF PhD Database

The purpose of this database, which builds on the work of Professor Lionel Bently at CIPIL, University of Cambridge, is to facilitate the development of a UK wide community of Postgraduates and to act as a resource for both students and PhD Supervisors.

If you have PhD students working in the area of IP or media law who might like to be included, please ask them to click here and fill in the online form.

Other work

If you would like to get involved in any of the work of the Forum, such as submissions to consultations and joint funding bids, please do get in touch. I would be very pleased to hear from you".

If you are interested, you know where to click -- and if you want more information you can email Charlotte here.

UK customs procedures and the burden of proof

Via the IPKat's friend Anat Paz and her colleagues at Lovells comes the transcipt of a letter from Her Majesty's Revenue & Customs' Customs & International Supply Chain Integrity & Facilitation unit. The changes in UK Customs procedures relating to allegedly counterfeit goods can have very serious implications for rights holders. The letter, dated 22 June 2009, reads:

"Changes to the way goods suspected of infringing an Intellectual Property Right are to be dealt with at the frontier.

I am writing to inform you that with immediate effect the way we administer the intellectual property regime in respect of Trademark and Copyright infringing goods will change to comply fully with Article 13 of Council Regulation 1383/2003. We will no longer seize items based upon a witness statement alone but will detain them pending the outcome of court proceedings instituted by the right holder and only seize the goods if directed to do so by the appropriate court.

Why the change?
The UK implementation of Regulation (EC) 1383/2003 via SI 2004 No. 1473 “The Goods Infringing Intellectual Property Rights (Customs) Regulations 2004” provides for procedures similar to, but not identical with, those required under the Council Regulation. We have been advised that departure from the precise requirements of the Council Regulation is not permissible as the Regulation is directly applicable within the UK. We are therefore obliged to modify our procedures to align fully with the requirements of the Council Regulation. This change will not weaken our ability to enforce IP rights legislation at the frontier.

What does this mean for the right holder?
The change will significantly impact upon goods that may infringe either a trademark or copyright. Our practice has been to seize these items accepting a witness statement from the right holder as confirmation that the goods are infringing and therefore liable to forfeiture. Should the owner disagree with this determination they have the right to challenge this through judicial proceedings.

We now accept that the burden of proof should be upon the right holder who must confirm the infringing nature of the goods by taking legal proceedings. More pertinently any proceedings must ordinarily be instituted within ten working days but no later than twenty working days after notification of detention. Right holders must therefore be prepared to institute proceedings within the time period set out in the Regulation. Goods will be seized only if the right holder gains a successful judgement and we are directed by the court to seize the items in question.

How we will administer the regime
When goods that we believe may infringe an intellectual property right are detected we will contact the right holder or the nominated representative as set out in the IP application and detain the goods for ten working days.

At the time of contact the case officer should supply to the nominated contact all the information, as set out in Article 9 of the Council Regulation, which is required to decide whether an intellectual property right has been infringed.

To maintain the detention beyond ten working days the right holder must initiate proceedings to determine whether an intellectual property right has been infringed or reach agreement with the declarant, holder or owner of the goods to abandon the goods.

The period may, upon request, be extended by a maximum of a further ten working days so it is important that right holders keep the case officer informed of any delay. Right holders should note that the detention period cannot exceed 20 working days in the absence of court action.

In the case of perishable goods the detention period set aside within which court proceedings must be initiated shall not exceed three working days and may not be extended.

The proceedings for all IP rights are those that are set out in Regulation 9 of Statutory Instrument 2004 no 1473.

Until the adoption of a new Statutory Instrument, which will set out clearly our powers of seizure in IP cases, right holders should as part of their proceedings arrange for the disposal of any infringing goods via an order of the Court.

Will Article 11 be applied?
With the agreement of the Minister we intend to introduce legislation to implement a simplified procedure based on Article 11 of the Council Regulation, however in its absence we will apply the article in the following manner.

These arrangements apply to all IP rights covered under the Council Regulation and are not limited to trademark and copyright.

The right holder may seek the permission of the declarant, holder or owner of the goods to abandon the goods.

The agreement should be in writing and must be communicated to the case officer either by the right holder or the declarant, holder or owner of the goods.

It should be noted that the time periods set out in Article 11 and Article 13 run concurrently. The owner of the goods has the certainty that steps must be taken to establish the IP status of the goods within twenty working days at most or the detention of the goods, for IP purposes, must cease. Article 7 of Commission Regulation 1891/2004 agrees that it is reasonable to accept that first seeking disposal under a simplified procedure is justification for extending the initial ten working day period but right holders must act with alacrity as goods cannot be detained for IP purposes beyond a total of twenty working days.

Destruction will be carried out at the expense and under the responsibility of the right holder. Right holders should therefore ensure that they obtain prior permission from the person with authority to abandon the goods to the Crown.

Is there a transition period?
Suspect consignments that have already been detected and action started under the old procedure will continue to be processed under the old procedure and if appropriate goods will be seized. However right holders who seek an extension of a further ten working days will be informed that they should use that period to initiate court proceedings. In absence of a court order goods will not be seized for an intellectual property breach after Friday 3 July.

Should you have any queries arising from the changes announced above, please contact:

Ron Johnson
IP Policy Team
Tel 01702 367980
e-mail ron.johnson@hmrc.gsi.gov.uk"

The IPKat urges his British readers to take careful note of this sudden shift, for their own sakes and for the sake of their consumers. Merpel wonders why HMRC is spelling 'trade mark' as 'trademark'. Is this a major policy shift in terms of traditional British spelling, or merely the result of its eagerness to save time when sending important letters by omitting the spaces between words?

Letter from AmeriKat

The IPKat is pleased to introduce a new member of the blogging team, the AmeriKat. Her real name is Annsley Merelle Ward and you can read all about her if you scroll down to her piccie on the side bar. Annsley is right at the bottom, below Tufty, in keeping with the Kats' traditional adherence to alphabetical order.

The AmeriKat will be providing letters from America on a regular basis, throwing some light on events in the US for the benefit of those of us who know it is but not what it is about. Here's her first offering:

Will Waxman's axe chop biologics? And has pay-to-delay had its day?

The summer sun has brought to Washington a flurry of activity in the area of patent law. As was previously reported by the IPKat in March, Representative Henry Waxman’s (D-California) Bill, if passed, aims to reduce the exclusive marketing currently enjoyed by brand-name biologics to five years and provide for a mechanism for FDA approval of these drugs where currently there is none.

Right: Senator Waxman (right), celebrating his first appearance on the IPKat weblog

This means that currently, along with “pay-for-delay” settlements where brand-name drug manufacturers pay generic competitors to stay out of the market, the current state of the law has prevented generic biologics from entering the market and competing with the brand-name versions at all. This has had the effect of prohibiting access by U.S. consumers to lower priced drugs.

Since March, Washington has seen two significant events occur that may be signalling a change of fortune for the pharmaceutical industry in this area. First, in dealing with “pay-for-delay settlements”, the U.S. House Energy and Commerce Committee’s Commerce, Trade, and Consumer Protection Subcommittee has voted 16-10 in favour of Representative Bobby Rush’s (D-Illinois) Protecting Consumer Access to Generic Drugs Act of 2009 (H.R. 1706). This Act prohibits these types of anticompetitive settlements and, if passed, may have the effect of reducing the cost of prescription drugs.

Second, the Federal Trade Commission on 10 June released its report “Follow-on Biologic Drug Competition” which examined whether competition from “follow-on biologics” (FOBs) or generic biologics could reduce the price of brand-name biologic drugs. Rep. Waxman stated that the FTC’s report “completely disposes of the drug industry's argument that they need 12 to 14 years of exclusive marketing, indeed that they need any additional exclusivity, to sustain innovation.”Responding earlier to the introduction of Waxman’s Bill, the Biotechnology Industry Organization’s President and CEO Jim Greenwood argued that the Bill “does not strike the necessary balance for patients or the economy” as it would de-incentivise investment into research and new drugs by enabling competition from FOBs. The FTC conclusion, however, is explicitly at odds with the view held by Greenwood.

The FTC’s report and the sub-committee’s vote in favour of Rush’s Bill possibly strengthens the prospects of Waxman’s Bill and may assist in its passage through the Committee and Congress. Because Rush’s Bill received a favorable vote it stands a strong chance of being accepted by the Democratic controlled House and Senate. Its passage may ease the way for Waxman’s Bill, which was previously heralded by Mr Kailian, a moderator of the BIO 2009 International Conference session aptly entitled "Weathering the Perfect Storm of Financial Distress and Political Pressure”, as being “dead in the water”.

For some entertaining and pointed questioning of brand-name pharmaceutical companies ‘anti-competitive’ behaviour, the AmeriKat strongly suggests watching the examination of the witnesses during the Sub-Committee’s hearings.

Has Jammie got off lightly?

Over a thousand miles away from the legislative chambers of D.C., Jammie Thomas-Rasset, the Minnesotan mother who illegally downloaded and shared 24 songs, has been ordered to pay $1.92 million to four major music labels, a sum which works out at $80,000 per track. Although this figure seems legally, if not morally,excessive, it must be remembered that section 504(c)(2) of the U.S. Copyright Act allows upwards to $150,000 per wilfully infringed work. The sting in this case is that, two years previously, Thomas-Rasset had been convicted on similar charges of copyright infringement and ordered to only pay about $200,000. However, due to the judge’s faulty jury instructions in this previous case, the verdict was thrown out and a retrial rescheduled. The attorney for Thomas-Rasset, Kiwi Camara, stated that he was surprised by the size of the award and, although he was prepared to negotiate with the RIAA, he shortlisted issues on which he would appeal the judgment.

Needless to say, where the RIAA received poor press previously for their litigious activity, the astronomically high award of damages in this case against one individual is set to continue to diminish their standing in U.S. court of popular opinion. With the support of powerful Democrats in Washington, popular opinion is not something that the RIAA is overly-concerned with for the time being – although the AmeriKat argues that they probably should be. Regardless of a settlement or appeal in this case, Thomas-Rasset is set to be used as a poster child of the RIAA’s unwinnable litigious battle against file-sharing and the need for proper reform in the area of digital music piracy.

Kappos and the wind of reform

Maybe the AmeriKat was less interested in intellectual property matters under the previous administration, or maybe there was in fact just less reform in the field, but she can’t help but notice a distinct wind of reform in the air. This has been highlighted by President Obama’s nomination of David Kappos to head the United States Patent and Trademark Office. Kappos, the Vice President and Assistant General Counsel at IBM, previously testified before the Senate Judiciary Committee that “excessive [patent] litigation threatens to sap America's innovative capacity and its ability to compete in the world if left unaddressed".

The AmeriKat urges readers to watch Kappos’s testimony and to also to take a look at IBM’s Intellectual Property Policy Statement, one of the better ones she has read. Not afraid of the prospect of reform, Kappos may be the energy needed in Washington to support the latest raft of much-needed intellectual property reforms.

The German Piratenpartei: a preliminary assessment

The IPKat, concerned at the rise of the political Pirate Movement within Europe, asked his friend and fellow blogger Axel Horns of IP:JUR fame if he could explain to the Kat's readers about the position in Germany, where there seems to be an increasing degree of pro-pirate sentiment. Axel has produced a full document on the subject, which you can read here. His executive summary is as follows:

"A process of getting rapidly politicised can currently be observed especially in the age group of 18 to 30 years old persons in Germany. We have not yet seen any high-profile lawsuit comparable to the Pirate Bay case in Sweden where big entertainment cartels fight against individuals sharing files or against maintainers of P2P infrastructure and helped the Piratpartiet getting their decisive boost for the European election. The incidents igniting this process in Germany were different.

While, between 1995 and 2008 the Internet was by and large and in general seen by the public in Germany (despite certain pitfalls like Internet fraud) more or less as cutting edge of positive innovation, the mood turned caustic in 2009. In traditional mass media, in particular in broadsheets, we saw some sort of Luddism 2.0 emerging. These fierce eruptions of anti-Internet phobia alone alienated many individuals in the above-identified age group and helped to bring the Piraten in Germany up to the share of 0.8 % as reached in the elections to the European Parliament.

However, some sort of Big Bang, which might perhaps later be seen as decisive in history, appeared on June 18, 2009, shortly after the European elections.
On April 22, 2009, the German cabinet under Chancellor Angela Merkel finalised a Draft Bill making Internet filtering mandatory. The reason given was to fight child pornography on the Internet. It took only until June 18, 2009, to push the Bill through all stages of Parliamentary processing. Even an expert hearing held in a Parliamentary committee resulting in very bad marks for the Bill as well as an Official on-line petition against that Bill hosted on the web server of the Bundestag, ending up by some 134.000+ supporters, could not stop the project.

Caused by that Bill, the time from April to June 2009 saw an hitherto unprecedenced kind of rising polarisation of the German public in two adversary camps: some of the proponents of the Bill argued in a populist manner, stressing the the Internet must not be a zone extraterritorial to the Law - pretending to know the Internet as of today being something that comes close to a lawless anarchist no-go area. One of the more important points for the castigators is that it appears to be easily possible to strengthen endeavours to take websites offering child pornography off the net instead of merely blocking access to them.

Regular monitoring of Internet publications in various blogs and on Twitter related to the Piratenpartei showed that the debate on and passing of the Bill by the German Bundestag had an instantaneous impact on driving many people, in particular former supporters of the Social Democratic Party, to the Piratenpartei in droves, driven by fears that civil liberties might be further curbed on the Internet.

If the main headaches of those politicised 'Digital Natives' in Germany are due to civil liberties endangered by the state, why does that have influence on Intellectual Property politics, too?

Today's Piraten are quite pragmatic people, and they tend to put their refusal of state surveillance in the same box as their frustration with, say, having paid for a DRM-protected music track but being unable to listen to it on all of the gadgets they own. And, those who work as software developers might be inclined to put some - at least as of today - widely theoretical threat of being sued on the basis of a software patent into just the same box. These kinds of problems are caused on a first level by private entities but, seen on a secondary level, the state gives those entities the powers of IP rights which are perceived as overbroad. Suddenly, things like DRM or software patents are categorised by Piratenpartei folks in the vicinity of civil liberties issues.

While, if measured by their political statements available on the Web, the Swedish Piratpartiet pushed by the Pirate Bay case clearly is a patent abolitionist party, the picture given by the German Piratenpartei is more fuzzy. Their programmatic statements concerning patent and copyright law appear to be pretty vague but in their tonality somewhere between censorious and openly hostile. If so desired politically, they might well be changed more abolitionist as well as evaluated in a more moderate direction.

Whoever defines himself as part of the new digital era, equipped with some sort of an own blog, a RSS feed aggregator, and with accounts on major social websites like Twitter, Facebook and the like will find it extremely easy to tune in on a broad flow of information concerning the Piratenpartei and their political issues and make contact with relevant people, if so desired. However, the profile of the entire matter in Germany's mainstream media is fairly low. Yes, now there is some media coverage, but in most cases merely on the inner pages of newspapers or in the late night hours on TV. If your daily life is not interwoven with the Internet, many of the issues involving the Piratenpartei might be quite invisible for you.

So, we in fact are witness of a new type of 'Digital Divide' which is not measured in terms of having access to broadband Internet or not. Being a DSL subscriber but in fact being limited to painstakingly operate the own email account due to lack of Internet savvyness does not put you on the right side of this new divide. And, let us face it, many IP experts and professionals effectively today are still on the wrong side of that divide.

Hence, a worst case scenario might see the Piraten clientele breed on some sort of IP aboli-tionist revolution without traditional IP circles even duly taking notice.
The German Piraten might well become the new Greens of the 21th century, and the system of Intellectual Property as we know it would then likely suffer heavy collateral damages".

A tricky European patent question

A friend of the IPKat has been pondering a particularly tricky question relating to European patent law, which has so far eluded a straightforward answer, even from the EPO. Any trade mark practitioners can look away now.

The question relates to what happens when an international application is objected to by the EPO acting as the international search authority (ISA) on grounds of lack of unity. Before the International Search Report (ISR) is established, the applicant is 'invited', under PCT Article 17(3)(a), to pay additional search fees to cover other inventions that have not been searched, giving a very tight one month deadline for paying the fee(s), under Rule 40.1. According to Annex D of the PCT Applicant's Guide, the EPO charges 1700 Euros for every search, which means that doing this can get very expensive for some applications.

Until last year, it didn't really matter whether any additional search fees were paid during the international stage, because extra searches could always be paid in the European regional phase. Following the implementation of Rule 164(2) EPC, however, this is no longer possible. Instead, it is now only possible to pursue inventions not searched during the international phase by filing a divisional application. Filing divisional applications at the EPO can also be a very expensive business.

The question is then what happens when an applicant is no longer interested in the invention searched by the ISA but wants to pursue another invention in the European regional phase that was not searched, and for which no additional search fees were paid. Is the applicant required to file a request to enter the European regional phase, meeting all the requirements of Rule 159 EPC for the claims he doesn't want, and then file a divisional application for the claims he does want? Is it possible instead to file the request for the parent application, but not pay any fees, and file the divisional before the fees become due? Is it possible just to file the European request as a divisional application and not bother with the parent? Or is there some other clever solution that has not been considered?

The IPKat does not have a clear answer, so would very much like to hear from any of his readers who might have ideas or, more preferably, who have done something in this situation that actually works. All contributions, preferably only by means of the comments facility so that all can obtain the benefit (anonymous/pseudonymous, if necessary), would be gratefully received.

Monday matters

Not everyone is aware of the European Commission's Green Paper consultation on the Brussels Regulation 44/2001 -- and time is running out if you want to have your say, since the deadline is 30 June. Says the IPKat's friend Chris Stothers,

"Importantly for IP practitioners, the Commission is considering some fundamental changes to the conflict of laws rules applicable to IP disputes. In particular, there are proposals to deal with Italian or Belgian torpedoes and to reverse the outcomes of Case C-4/03 GAT v Luk and Case C-539/03 Roche v Primus, allowing cross-border infringement actions to proceed even where the validity of the patents is challenged before national patent offices or courts".

For further details click here.


Calling all fashion fans! This year's Handbags at Dawn event, a one-day conference on intellectual property in the fashion industry, takes place on 22 September 2009 in Central London. This year the conference organisers, CLT, have been persuaded by sponsoring weblog Fashionista at Law to make a special "two places for the price of one" admission deal. For full details of the programme and registration click here.

The CIP Forum on "The Future of Innovation" in Gothenburg, Sweden, is listed on the IPKat's left-hand side bar. The organisers have just emailed the Kats to tell them that, in addition to the early booking discount for signing up before July, there's also a special 10% fee reduction for IPKat readers who quote code 9090 when registering. This is a precious opportunity to visit a lovely city, famous for its lovely and innovative Volvos ...


From the Phillips Ormonde Fitzpatrick IP Now blog comes this link to the gory details of the dismissal of Mars' action against the manufacturers of Malt Balls (left). Mars must have felt fairly confident that, somewhere along the line one of the following causes of action -- passing off, misleading and deceptive conduct in breach of s 52 and trade mark infringement -- would bring the desired result. But it was not to be. Said the court:

"it is highly unlikely that any ordinary consumer of chocolate confectionery could mistake something which is not called a Malteser for a Malteser. In that sense, Mars is a victim of its own success. The fact that the Delfi jars carry the name “Malt Balls” and use slightly different visual features is sufficiently clear to distinguish them from the Maltesers products.

The Maltesers marks are very famous. Consumers generally must be taken to be familiar with them. That is relevant to assessing a consumer’s imperfect recollection of the mark. So viewed, a comparison between the impression held in the consumer’s mind and the direct impression of Sweet Rewards’ mark is one which, in this case at least, occurs in a context in which the chances of the average consumer having forgotten the Maltesers mark are vanishingly small".

Does the IPKat hear the faint murmuring of "L'Oréal, L'Oréal ..."?


There is still just a little more than a week to the end of the IP Watchdog poll of Top Patent Blogs, drawn from the world's 50 most visited patent law weblogs. In the "Favourites" poll, the IPKat currently lies a very creditable third with 9.5% of votes cast, behind the hugely popular Patently-O (28.9%) and Patent Circle (11.6%). The Kats' noses are still ahead of Le blog du droit européen des brevets (9%) and the effervescent Spicy IP (6.9%). In the "which blogs do you read" poll the IPKat is second with 15.5%, again well behind Patently-O (46.7%) but leading IP Watchdog (14.6%), Patent Circle (14.3%) and Patent Baristas (12.5%). Another of IPKat team member Jeremy's weblogs, PatLit, is doing well for a newcomer in both polls and will be delighted to pick up sympathy votes from anyone who wants to encourage outsiders!

L’Oréal/Bellure: who speaks for the European majority?

The IPKat has received this letter from his respected friend Professor Dirk Visser (Trademark Law Institute & Leiden University, not to mention leading Dutch IP practice Klos Morel Vos & Schaap), which discusses last week's ruling of the European Court of Justice in L’Oréal/Bellure (see IPKat note here). Professor Visser's letter reads as follows:

"Dear friends of the Trademark Law Institute (and some other learned and honorable Trademark friends and colleagues),

I just would like to share with you my thoughts on this landmark decision by the ECJ and maybe you can give your views to get an idea how this decision is received throughout Europe.

To me, the L’Oréal/Bellure decision by the ECJ is a breath of fresh air after the often ambivalent, unpractical or systematically incomprehensible recent decisions in trade mark cases by the ECJ.

In my opinion in L’Oréal/Bellure the ECJ clearly states what is probably the most important basic moral emotion of IP and unfair competition law: “Thou shall not (1) intentionally, (2) without investment of one’s own and (3) without paying any compensation, reap profit of another’s considerable (creative, innovative or commercial) effort, investment or goodwill”. (“Thou shall not reap where thou has not sown”).

(Evidence of) misrepresentation is not required, (evidence of/ risk of) confusion is not required, (evidence of) harm is not required (although there probably always is harm in such a case).

You can like this result or not, but at least and for once, it is clear what the ECJ says.

Lord Justice Jacob will probably not like it, many other ‘free competition’-minded people in (and outside) the UK will not like it. But it does in my opinion probably reflect what most IP judges, lawyers and laymen basically believe and feel, at least on the continent.

Intent is (and probably always has been) an important factor, lack of own investment is too and so is of course not paying any compensation.

The decision also give clear guidance as to how to decide the case at hand: smell-alikes, designed or marketed as cheap copies, are not allowed. Again, you can like it or not, but at least it is clear, and it is in my opinion a better basis than copyright in the fragrance.

I do look forward to your views!"

The IPKat wonders how representative Professor Visser's views are of non-UK thought. If you have any special message to share with the readers of this blog, please post them below. If you'd rather share them with Professor Visser alone, you can email him here. Merpel says, it doesn't matter whether people think the ruling is good or bad: the real issue is whether it is right in terms of applying the existing law to the facts on which the reference is based. Tufty says, I've set up a poll in the sidebar where which you can "vote" for the position that reflects your view.

Friday fandango

Don't forget to check out the IPKat's heaving side bar. It's burgeoning with forthcoming events to cater for almost every taste.


Have you played with the Beta version of the new United States Patent and Trademark Office (USPTO) website yet? If not, just click here ... Another useful website is Intellogist, which was drawn to the IPKat's attention by Duncan Bucknell: this free facility draws together some of the loose strings of patent search. Another internet-based facility that thudded into the Kat's inbox this week was that of India's GVK BIO's patent research services, which offers a comprehensive package of search and intelligence services in that busy sector.

Around the blogs. The IP Finance weblog, founded in January 2008, has just collected its 500th email subscriber. And patent litigation weblog PatLit, very much boosted by the publicity generated by IP Watchdog's Top Patent Blog Poll (if you haven't spotted this yet, check out the top item on the left-hand side bar), has just raced up to the 300 subscriber mark).

A sweet and clever friend of the IPKat writes: "I am looking for paralegal work in IP. I am a versatile 4-year law graduate with a wealth of corporate experience and fluency in German. I studied IP for one year, and am passionate about building my career in that area. I can provide proactive paralegal support with excellent research skills and a love of writing, and an ability to enhance client relationships. I also have excellent organisational skills, can take on responsible work and provide insightful and efficient assistance to the management of your client files". If you can help, please email the IPKat here and he'll forward your response.


From IPKat reader Dan Guildford (Dewey & LeBoeuf) comes this link to a remarkable open letter sent to newly-elected British National Party MEP Nick Griffin by the respected charity, the Royal British Legion, whose poppy logo, emotively recalling the fields of poppies that became sites of mass slaughter in the First World War, is one of the most powerful pieces of imagery wielded by any British charity. The Legion's letter reads in part:

"... You wore a Poppy lapel badge during your news conference to celebrate your election victory. This was in direct contravention of our polite request that you refrain from politicising one of the nation's most treasured and beloved symbols.

The Poppy is the symbol of sacrifices made by British Armed Forces in conflicts both past and present and it has been paid for with blood and valour. True valour deserves respect regardless of a person's ethnic origin, and everyone who serves or has served their country deserves nothing less.

The Poppy pin, the Poppy logo, and the paper Poppy worn during Remembrance are the property, trade mark and emblem of The Royal British Legion.

For nearly 90 years, The Royal British Legion has pursued a policy of being scrupulously above the party political fray. It is vital that everyone - the media, the public and our beneficiaries - know that we will not allow our independence to be undermined or our reputation impaired by being closely associated with any one political party. This is more important now than ever.

On May 27th, 2009, the National Chairman of The Royal British Legion wrote to you privately requesting that you desist from wearing the Poppy or any other emblem that might be associated with the Legion at any of your public appearances during the European Parliamentary election campaign.

He appealed to your sense of honour. But you have responded by continuing to wear the poppy. So now we're no longer asking you privately".

This letter exposes an explosive issue: the extent, if any, to which the proprietor of any mark can control its use once the object bearing it has been sold or otherwise placed in ordinary streams of commerce. There doesn't seem to be an obvious solution to the Legion's problems.

The first Sir Hugh lecture: an eye-witness report

This member of the IPKat team has been so tied up of late that he sadly had to miss the inaugural Sir Hugh Laddie lecture, delivered earlier this week by that great figure in British appellate IP jurisprudence, Lord Hoffmann. The Kat's correspondent ("an anonymous fan") writes:

"Lord Hoffmann delivered a suitably stellar (and including as it did, personal reminiscences, touching) inauguration to the annual Sir Hugh Laddie lecture series to a packed house at the UCL Institute of Brand and Innovation Law, offering a witty and incisive discussion of Sir Hugh's complicated (to use a modern and youthful colloquialism) relationship with the ECJ on the subject of trade marks.

The South African sage noted how, in Wagamama, things had actually got off to a great start, what with Advocate General Jacobs' subsequent express endorsement in Puma v Sabel of Sir Hugh's finding that that the function of a trade mark is as a badge of origin, not to mention the definitive rejection in that case of Benelux notions of assessment of likelihood of association. His Lordship wryly observed that relations obviously weren't as cosy on the consent issue in Davidoff and how they really reached their low point in Arsenal on the badge of origin issue.

Commenting on Arsenal, Lord Hoffmann dryly noted that while Sir Hugh's ingenious rejection of what Sir Hugh saw as meddling by the ECJ in the fact-finding jurisdiction of the national court was not necessarily a constitutional crisis, it was "an uncomfortable quarter of an hour." He pointed to the widening gap between Sir Hugh's personal views on trade mark functions and those of the ECJ in the pharmaceutical repackaging cases but admired Sir Hugh's rigour in applying the law on the issue as it developed, whatever his personal reservations.

Lord Hoffmann expressly agreed with Sir Hugh's overriding jurisprudential insistence that monopolies must be in the public interest. It was not obvious that the developing ECJ jurisprudence on the function of trade marks comported with this view. He added that good legislation does not lead to a lot of litigation. Unclear legislation does. Lord Hoffmann suggested that ,as a result of lack of clarity at the ECJ level on the proper role of the trade mark, the law under the Trade Marks Act 1994 has become, in contrast to its 1938 pre-decessor, a maze of arcane dicta. It was fertile ground for litigation. The law in this area was, in effect, a mess. He seemed particularly sympathetic to Sir Hugh's firm view that the badge of origin function must not be high-jacked to confer a quasi-copyright and that, notwithstanding repeated insistence to the contrary, the trend of ECJ jurisprudence seemed to be doing just that.

Lord Hoffmann ended the lecture with a plea for clarity in the area. It will be interesting to see how this plea is received and indeed, how much enthusiasm there is among stakeholders for such clarification!"

The IPKat is indebted to his informant for this information. Merpel however challenges this account: she recalls that his Lordship was making a plea for "claret", not clarity -- to be enthusiastically received by steak holders.

10 Days Later: Coming through the Courts

Earlier this month, the IPKat brought news, via Annsley Merelle Ward, of the likely legal spat over the publication of a sequel of sorts to JD Salinger's Catcher in the Rye (see here). Annsley has now updated the Kat on this week's developments.

Right: here's the rye -- but where's the Catcher?

Annsley writes:

"After over an hour of argument in New York City, US District Judge Deborah Batts temporarily blocked publication in the United States for the next ten days of the unauthorized sequel, 60 Days Later: Coming Through the Rye. Having already ruled that there exist substantial similarities between the sequel and the original book, District Judge Batts is using those ten days to determine whether the sequel qualifies as "fair use" of Salinger's original work.

The lawyers for the sequel's author, Fredrick Colting (writing under the pseudonym JD California), argued today that 60 Years Later was a work of meaningful criticism of Catcher in the Rye and therefore benefited from the fair use defence under US copyright law. District Judge Batts stated that the next ten days will be used not to assess whether sequel's criticism of Salinger's work is sufficient to qualify for the defence of fair use but to ascertain whether the alleged criticism exists at all. At the end of the ten days she will decide whether to impose a permanent ban on publication in the US or to schedule a full trial.

As reported by Associated Press, Colting's lawyer Edward Henry Rosenthal claimed that injuncting the book prior to a full exploration of the book is "a prior restraint that raises very serious First Amendment questions". A lawyer for Salinger, Marcia Beth Paul, responded that prohibiting publication of a book that infringes another work's copyright is not akin to the banning of a book. Although there is undoubtedly an interesting debate as to whether copyright law should be permitted as a mechanism of quasi-prior restraint of freedom of speech, I have a feeling that the defence lawyer's arguments may not have as much mileage in court as they may have hoped.

Not failing to disappoint, District Judge Batts added that, despite the lack of legal precedent that holds that a purely literary character (absent any artistic characterizations via drawings or photographs) could be protected under copyright, Salinger's character Holden Caulfied may in fact be entitled to copyright protection. "It's a portrait by words," she said. "It is difficult in fact to separate Holden Caulfield from the book." I wonder if the question District Judge Batts will be asking is: If a portrait is worth a thousand words, how many words make up a portrait? I am unsure whether any judge would voluntarily want to be making a ruling on this question.

The written judgment is expected in the next ten days, or in the words of District Judge Batts "as soon as I can".

I can't help but echo the oracle that was IPKat's prediction two week's ago: Regardless of the decision, this case is destined to be subject to its own sequel in the US Court of Appeals".

Sources: Associated Press articles here and here; New York Times here
All available case documents pertaining to the case, including dockets, orders and applications, can be found here

More about rye here

Whiskey and rye here ... and hear

L'Oreal v Bellure at the ECJ

The morning the ECJ delivered its judgment in L'Oreal v Bellure, on whether 'knock off' imitation perfumes which clearly weren't the trade marked goods, but were marketed in a way that 'winked at' L'Oreal's famous perfume brands, infringed L'Oreal's trade marks and were protected as permissible comparative advertising.

Is harm needed for unfair advantage?

The court answered the 5th question first. This boiled down to whether there could be unfair advantage under Art.5(2) without (a) confusion or (b) detriment to the earlier mark.

Since only one of the types of harm mentioned in Art.5(2) is needed for there to be infringement, there could be no need for detriment to repute or distinctiveness for unfair advantage to be made out. [IPKat comment: quite right. The IPKat can see why the UK Courts might have wanted to introduce a harm to trade mark function requirement in here, but there was no basis for it on the face of the Directive].

How can unfair advantage be proved?

The ECJ's words bear repeating in full, since the IPKat reckons they're going to be the subject of much close textual analysis by legions of lawyers:

In order to determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include the strength of the mark’s reputation and the degree of distinctive character of the mark, the degree of similarity between the marks at issue and the nature and degree of proximity of the goods or services concerned. As regards the strength of the reputation and the degree of distinctive character of the mark, the Court has already held that, the stronger that mark’s distinctive character and reputation are, the easier it will be to accept that detriment has been caused to it. It is also clear from the case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to them (see, to that effect, Intel Corporation, paragraphs 67 to 69).

[IPKat comment: 2 huge problems with this - (1) all these factors go towards showing that there's a link between the marks, but they don't really show that the link has 'rubbed off' on the later mark to give its owner an unfair advantage; (2) these are the factors that were used in relation to detriment to distinctive character, but the court has just said that these are two different types of harm; (3) the ECJ in Intel v CPM said such factors are insufficient for showing unfair advantage. ]

The ECJ also said: ' In addition, it must be stated that any such global assessment may also take into account, where necessary, the fact that there is a likelihood of dilution or tarnishment of the mark.'

[IPKat comment: aaargghhh - you just said that the various types of harm are different. Anyway, if there is likely dilution or tarnishment, why do you need unfair advantage on top? Also, note the use of the word 'likely'.]

On the facts

The defendants had created a link, they had done so for commercial advantage and had done so with the intention of creating a link. Thus, there was unfair advantage.

[Let the IPKat be the first to welcome the law of unfair competition to the whole of the EU, even if you do need a registered trade mark to qualify for it (but how hard is that now - you could just apply your distinctive word/device mark to your relatively straightforward product shape, register the whole bangshoot as a CTM a la Whirlpool v Kenwood and hey presto, you qualify for protection.]

The harm in a nutshell

The ECJ sums up:

'The advantage arising from the use by a third party of a sign similar to a mark with a reputation is an advantage taken unfairly by that third party of the distinctive character or the repute of the mark where that party seeks by that use to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark’s image.'

The comparison lists

Here the question was whether the use of the names of L'Oreal's perfumes in price comparison lists could amount to infringement under Art.5(1)(a), seeing as the ability of L'Oreal's marks to idenify the origin of L'Oreal's goods (the essential function) wasn't harmed.

The ECJ noted that price comparison lists were a form of comparative advertising, and it had already held in O2 that the use of a mark in comparative advertising could infringement, but also had Art.3a(1) of the Comparative Advertising Directive to save it.

The court revisited its line of case law on the scope of Art.5(1)(a), noting that it encompassed not only harm to the essential function, but also to the other functions of a trade mark which are 'in particular that of guaranteeing the quality of the goods or services in question and those of communication, investment or advertising'. Art.5(1)(a) is wider than Art.5(1)(b) [thus confusion isn't required] and while descriptive use, e.g. Holterhoff, isn't covered, price comparisons aren't purely descriptive as they are for the purposes of advertising. The court noted that Art.5(2) might also apply in price comparison cases.

[IPKat comment: this sounds very nice in theory, but the court doesn't give us a clear understanding of what sorts of activities can harm the other functions of a mark. It seems though that the Court of Appeal in Arsenal got it right when it said that the effect of Holterhoff was to exclude descriptive use only.]

The Compartive Advertising Directive

In relation to Art.3a(1)(h) (comparative advertising must not present goods or services as imitations or replicas of goods or services bearing a protected trade mark or trade name), this didn't require the goods to be counterfeit, nor did it require the advert to be misleading for it to be prohibited. The imitation could be implicit or explicit. Moreover, the imitation didn't have to be of the product as a whole, and could be of one aspect, e.g. its smell. In this case ' It is not in dispute that the object and effect of the comparison lists at issue in the main proceedings are to draw the attention of the relevant public to the original fragrance of which the perfumes marketed by Malaika and Starion are purportedly an imitation. Those lists thus attest to the fact that those perfumes are imitations of the fragrances marketed under certain marks belonging to L’Oréal and Others, and they consequently present the goods marketed by the advertiser as being imitations of goods bearing a protected trade mark within the meaning of Article 3a(1)(h) of Directive 84/450.'

In relation to Art.3a(1)(g) (omparative advertising must not take unfair advantage of the reputation of a trade mark), unfair advantage appeared both here and in Art.5(2), and had to be interpreted in the same way in both. in this case, in the words of the court: '... since, under Directive 84/450, comparative advertising which presents the advertiser’s products as an imitation of a product bearing a trade mark is inconsistent with fair competition and thus unlawful, any advantage gained by the advertiser through such advertising will have been achieved as the result of unfair competition and must, accordingly, be regarded as taking unfair advantage of the reputation of that mark.'

[IPKat comment: some circular reasoning going on here. Because the advertising was contrary to Art.3a(1)(h), it was unfair under Art.3a(1)(g). At least though this is an attempt to articulate the unfairness, rather than just stopping at the fact that there has been an advantage. Generally though, this makes it very hard for people to tell consumers that their products are like trade marked products in some respect.]

IPKat concluding comment

If Intel was the low point of Art.5(2) protection for trade mark owners then this has got to be the high point, particularly when taken in conjunction with the approach to comparative advertising. Although the ECJ didn't explicitly adopt the Advocate General's position that any advantage is unfair, in bascially stopping once the link has been established if there is a commercial motivation for making that link, it may as well have. It looks like we're stuck with something which looks rather like a tort of unfair competition. The escape route is that only marks with a reputation will qualify. This makes it crucial for us to have a clear understanding of the standard for establishing when marks have a reputation - something which so far has been rather imprecise.

An International Bank of Intellectual Property: a proposal for knowledge liberalisation

Now here's something which is guaranteed to generate debate. This piece has been specially crafted for the blog by Itaru Nitta, Green Intellectual Property Project, Geneva, Switzerland. Itaru writes:

"This summer, a crowd of patent opponents and proponents will be descending on Geneva when international organizations in the city convene a series of meetings to explore future legitimacy for the global regime of patent protection.

Right: green and patent -- but is the solution to the world's innovation problems in the bag?

The participants will address a wide variety of increasing patent disputes, but they seem to amount to one of the most primitive questions -- do we truly need patents? To answer this question, policymakers are strongly encouraged to consider the International Bank of Intellectual Property (IBIP), which has been recently proposed in the course of working with the World Health Organization over public health, innovation and intellectual property.

Patents are widely believed to be indispensable for promoting innovations, or "knowledge production." Once, however, innovation is protected, patents leave up to the market the dissemination of patented technologies, or "knowledge allocation," which is the common culprit of various patent frictions, including the accessibility to essential medicines, the transfer of environmental technologies and the biased incentives of research toward commercial profitability rather than the most necessary public interest, for example, the "neglected diseases."

Patent insurance

To set off this lack of knowledge allocation, IBIP is designed to provide "patent insurance" as a financial assistance. Besides the existing official fee for granting and maintaining patents, IBIP would impose an extra official fee on patent applicants and holders as a form of "insurance premium," which would create a trust fund financing knowledge allocation, such as the compensation of technology transfer costs, particularly royalty assumption, and other subsidies for purchasing patented products in developing counties, as well as a wide range of funding proposed for needed research, including medical grants, prizes, public-private partnerships and others.

This financial assistance, or "payment of the insurance," would convince society of the wisdom of patents, and as a result, calm growing global criticism over patents and uphold societal trust over them. In other words, the extra fee would serve as a premium for defending patents against the risk of compulsory licensing and other safeguard flexibilities. Consequently, the dual benefit of patent insurance -- not only for developing nations in the form of financial aid, but also for developed nations in ensuring patents -- would readily build consensus by developed nation patentees on their burden of paying the patent premium. This dual benefit would attract not only corporations facing predicaments in patent protection, such as pharmaceutical industries, but also any research-oriented sectors in developed countries because they all need ensured patents.

The patent insurance would be payable to both developing and developed countries in response to their requests for financial assistance. Such requests would be deliberated to assess the feasibility of facilitating knowledge allocation during an international quasi-judicial process, modeled after, for instance, the Multilateral Investment Guarantee Agency affiliated with the World Bank and the dispute settlement mechanism in the World Trade Organization. Importantly, in the case of denial, the IBIP must ensure opportunities for the rejected country to consider an alternative action, including the traditional flexibilities in patent such as compulsory licensing, parallel importing, generic production and the Bolar exemption.

The patent insurance premium would be an additional weight for patentees in the traditional balance of public interest (innovation disclosure) and private right (the patent monopoly as a reward for the disclosure) in the legitimacy of patents. In the sense of economics, the patent premium would serve as a combination of "Tobin taxation" and "Pigovian taxation." From Tobin's perspective, the premium is an international taxation imposed at a border when a knowledge asset is crossing. The Pigovian aspect of the patent premium is to facilitate the market incorporating its failure that patent protection generates in society.

Translation Waiver and Reduced Price of Official Fee

To prevent burden of the premium from inflating the price of patented products, for example, increased price of medicine, the proposed patent insurance would also feature two measures: a translation waiver and reduced price of the official fee.

Having paid the premium under the translation waiver, an applicant would no longer need to file an application translation with a local patent office while the application enters a designated country or region, unless the office needs a faithful translation for a trial or litigation. This waiver of translation would compensate or even outweigh the financial load of the patent premium because application translation accounts for a significant proportion in the costs of obtaining a foreign patent (roughly speaking, the total cost for a single foreign application is US$10,000 and its translation costs usually US$3,000 or more). The translation waiver would be supported by considerable improvement in computer translation, allowing a patent office to examine an application without a human-conducted translation or even by utilizing such translation of limited portions (for example, only claims and relevant descriptions in a specification).

Another technical progress in examination of patent applications would offer a discounted price in official fees for those who have already paid the premium. This lowering would be brought about by streamlining examination by means of emerging technologies for identifying and measuring innovations. These tools would include information-communication technologies, highly-evolved patent-mappings and other intelligent methodologies.

In addition to the original functionalities of the patent insurance, these financial advantages of the translation waiver and discounted official fee would further encourage patentees to agree with the insurance premium.

Since patent insurance would be embedded in the existing patent system, the insurance would possess a substantive and sustainable financial scale (with a possible annual revenue of up to several tens of billions of US dollars) due to enormous amounts of both filing numbers and subject matters in patent worldwide even during a time of challenging economic conditions.

Knowledge liberalisation

An expected function of patent protection is to enhance the total welfare in society through "knowledge liberalisation." It might surprise readers to know that an unexploited but genuine essence of patents is not the protection but liberalization of knowledge, which is a macroeconomic model containing knowledge production and allocation as constituents to describe the dynamics of patent. Such liberalisation would be embodied in IBIP if patent incorporated the financial mechanism to drive knowledge allocation.

The concept of knowledge liberalisation would no longer regard patents as a mere innovation protector, but rather as more like a proactive financial driver of funding for the largest overall benefit in society.

More information appears on the website of the Green Intellectual Property Project, Geneva, Switzerland".

The IPKat would love to hear what his readers think. Adds Merpel, so long as he agrees with them ...

The case of Le Bourgeois Gentilhomme and a sugary discovery

The IPKat is now getting a bit tired from reading all these judgments that have been coming out of the English courts recently. The latest of these (at least the last time he looked anyway) is that of Tate & Lyle Technology Ltd v Roquette Freres, decided yesterday by Mr Justice Lewison (pictured, right) in the Patents Court.

The case related to the validity of a European patent granted to Roquette Freres, which the IPKat presumes is EP0905138 (the patent does not seem to be mentioned by number in the judgment itself, unless the IPKat's eyes and search technology are deceiving him). The patent, after much disputation including an opposition and an eventually abandoned appeal, was left with only one claim, which reads:

The use of maltotriitol to modify or control the form of maltitol crystals.

Several documents were cited by Tate & Lyle, some of which clearly disclosed the use of maltotriitol in the process of manufacture of maltitol, a particular type of artificial sweetener made from starch. It was determined, with the assistance from expert witnesses, that maltotriitol did indeed control and modify the form of crystals formed, so the claimed invention was not novel. Regardless of whether the particular prior art processes disclosed mentioned the purpose of maltotriitol, the inevitable effect would have been that of controlling the form of maltitol crystals that formed. This reasoning was, of course, nothing new and was summarised by the eminent Lord Hoffmann in Synthon BV v Smith Kline Beecham plc:

"…the matter relied upon as prior art must disclose subject-matter which, if performed, would necessarily result in an infringement of the patent. That may be because the prior art discloses the same invention. In that case there will be no question that performance of the earlier invention would infringe and usually it will be apparent to someone who is aware of both the prior art and the patent that it will do so. But patent infringement does not require that one should be aware that one is infringing: "whether or not a person is working [an] … invention is an objective fact independent of what he knows or thinks about what he is doing": Merrell Dow Pharmaceuticals Inc v H N Norton & Co Ltd [1996] R.P.C. 76 , 90. It follows that, whether or not it would be apparent to anyone at the time, whenever subject-matter described in the prior disclosure is capable of being performed and is such that, if performed, it must result in the patent being infringed, the disclosure condition is satisfied. The flag has been planted, even though the author or maker of the prior art was not aware that he was doing so."

Having used this approach in relation to the various documents cited, the patent was found to be anticipated by no less than five of them. For good measure, however, Tate & Lyle's counsel, Colin Birss QC, also suggested that the claim was in any case invalid due to the contribution being a mere discovery, excluded from patentability under section 1(2). Because the claim merely informed the reader that maltotriitol, which was a known impurity in the manufacture of maltitol, had the effect of changing the formation of crystals, all the patent contributed was the discovery that the crystal changing was caused by maltotriitol's presence. Mr Justice Lewison thought this was a jolly good idea, and it clearly sparked off some thoughts of 17th century French comedy:

"In Molière's play Le Bourgeois Gentilhomme, Monsieur Jourdain asks something to be written in neither verse nor prose. A philosophy master says to him, "Sir, there is no other way to express oneself than with prose or verse". Jourdain replies, "By my faith! For more than forty years I have been speaking prose without knowing anything about it, and I am much obliged to you for having taught me that." That is this case. The industry has been using maltotriitol to control or determine crystal habit without knowing it. What is left of the patent as granted is no more than a discovery as such."

For some reason unknown to him, the IPKat's mind turns to the well known saying of that other famous Frenchman, Eric Cantona: "When the seagulls follow a trawler, it is because they think sardines will be thrown into the sea".

Merpel thinks that the IPKat might have been reading a bit too much caselaw recently.

Confusion about generally elliptical cone shapes

The IPKat thought he knew all there was worth knowing about what would be classified as being of a "generally elliptical cone shape", when he read the judgment of Mr Justice Patten in Ancon Ltd v ACS Stainless Steel Fixings Ltd back in October 2008 (IPKat commentary here). How wrong he was. After Patten J decided that Ancon's patent, although valid, was not infringed because ACS's product did not include a head having a generally elliptical cone shape, Ancon decided to appeal. They now have the result they originally wanted, thanks to a judgment delivered by Lord Justice Jacob yesterday.

The judgment, although unusual, could have been very unusual indeed had the other judge involved, Lord Justice Waller, not agreed with Jacob LJ, because the usual third member of the Court of Appeal was not present due to illness. The parties were willing to accept the risks of having a hung decision, which appears to have paid off for Ancon at least.

What puzzles and troubles the IPKat, however, is the highly unusual, not to say bizarre, way in which Jacob LJ decided to interpret the wording of claim 1 of the patent in question, which reads:

1. A channel assembly (21) adapted to be attached to a building structure, said channel comprising a spine (29), two side walls (28) and lips (27) defining a slot (25) in the channel and adapted to restrain a fixing in the channel, said spine (29) being provided with anchors (31) for casting into concrete, said side walls (28) being inclined inwardly towards the spine (29) and further including a fixing (30) having a head (33) with inclined sides characterised in that the head (33) has a generally elliptical cone shape. [IPKat emphasis applied]

One of the embodiments in the patent (see illustration, above right) showed what this would mean in practice. The head, shaped to fit a matching channel, was of an elliptical shape to allow it to lock into the channel when turned, and was cone-shaped to allow it to more closely fit the channel. This combination had the effect of improving engagement between the two parts, which together served as a secure mounting assembly for hanging heavy things from.


As all European patent attorneys will immediately recognise, the positioning of the characterising clause in the claim clearly indicates that the generally elliptical cone shape of the head was also what persuaded the EPO that the claimed invention was distinguished over the closest prior art document, which was identified during opposition proceedings as GB782428. This characterising feature should be reasonably clear from the selection of figures from this document shown on the left.

What the IPKat fails to understand is how, given all this, the term "generally elliptically cone shape" could be applied to the alleged infringing article (pictured below right). The IPKat's own conclusion would most definitely be that it would be stretching the bounds of credulity quite a bit to imagine that such a shape could be described as being in any way a generally elliptical cone. He wonders therefore whether Jacob LJ has indulged a bit too much in the "meticulous verbal analysis" that, quoting Lord Diplock in Catnic, he specifically warns against (paragraph 19). If the alleged infringement could be described as being generally elliptically cone-shaped, then why would the corresponding component in the closest prior art document not be described as such? Is the IPKat missing something obvious here, or is this a judgment that is just plain wrong?

Merpel simply wonders what it is about building products that makes such contentious legal decisions.

Two new Patents Court judgments

The IPKat has been notified of two recent judgments coming out of the Patents Court of the High Court for England and Wales. The first of these, Edwards Lifesciences AG v Cook Biotech Incorporated, issued last Friday by the Honourable Mr Justice Kitchin, is a rather more weighty one than the second, Kapur v Comptroller General of Patents, which issued a while ago but has only just appeared on BAILII.

The case in Edwards v Cook related to EP(UK) patent 1255510 granted to Cook Biotech. Edwards applied to have the patent revoked, and Cook counterclaimed for infringement. Attentive readers may recall that Edwards have recently been on the other end of a claim for revocation, in Corevalve v Edwards Lifesciences (reported by the IPKat here). The issues this time round also involved implantable valves in the form of collapsible stents for delivery via a catheter (pictured above right). The issues for the judge to decide were (apart from a couple of minor feeble arguments about insufficiency and added matter) whether the patent was novel and inventive over a succession of cited documents.

Kitchin J arrived at the conclusion that the patent as a whole was obvious in light of one of these documents, which had been published before the priority date of the patent. The matter need not have then gone any further, but for good measure the judge also considered the effect of another document in the form of a scientific paper published between the claimed priority date and the application date of the patent. The paper was therefore only relevant if the priority claim was invalid. The priority application, a US provisional, was filed in the names of three inventors, only one of which was employed by Cook Biotech at the time. A PCT application was then filed one year later, in the name of Cook Biotech. Crucially, the other two inventors' rights were not assigned to Cook until much later, and not until after the application entered the European regional phase. Edwards' argument was that Cook had not derived the right to claim priority because, at the time the application was made, the right had not been assigned and they were only successor in title for one inventor, via a contract of employment.

Referring to sections 5 and 7 of the UK Patents Act, Article 8 of the PCT and, most importantly, Article 4 of the Paris Convention (which section 5 is intended to put into effect in the UK), Kitchin J came to the logical conclusion that the effect was clear:

"A person who files a patent application for an invention is afforded the privilege of claiming priority only if he himself filed the earlier application from which priority is claimed or if he is the successor in title to the person who filed that earlier application. If he is neither the person who filed the earlier application nor his successor in title then he is denied the privilege. Moreover, his position is not improved if he subsequently acquires title to the invention. It remains the case that he was not entitled to the privilege when he filed the later application and made his claim. Any other interpretation would introduce uncertainty and the risk of unfairness to third parties. In reaching this conclusion I derive a measure of comfort from the fact that the Board of Appeal of the EPO has adopted the same approach to the interpretation of Article 87 EPC in two cases: J 0019/87 and T 0062/05."(paragraph 95)

The scientific paper was therefore prior art, and had the effect of some of the claims being found invalid for lacking an inventive step over this document. too Although the patent was found invalid anyway, this case does raise the issue that priority claims do need to be carefully considered. It is not enough just to have a connection with the priority application; a common applicant or a definite chain of title is really needed, which must be sorted out in advance of the claim being made.

The other judgment published recently involves the familiar name of Rajesh Kapur, an applicant for several patents that have already been considered in a previous judgment (see IPKat commentary here). Not to be put off, Mr Kapur decided to have another go at the UK-IPO, having been given a glimmer of hope by Mr Justice Floyd, who remitted the applications due to a failure to properly consider the mental act exclusion under section 1(2). Unfortunately, the principles of estoppel and res judicata prevented Mr Kapur from running with the same claims and similar arguments the second time round at the UK-IPO. His Honour Judge Fysh QC agree with the UK-IPO hearing officer, and dismissed the appeal.

No privacy for pseudonymous bloggers

In a decision released yesterday (available from BAILII here), a pseudonymous blogger has failed in his attempt to prevent his real identity from being revealed. The blogger, previously only known as 'Night Jack', has now been revealed (see also here & here) as Richard Horton, a detective working for the Lancashire constabulary.

(right: this is all you will see now if you go to nightjack.wordpress.com)

The judge in this case, Mr Justice Eady, determined that the claimant had no reasonable expectation of privacy "because blogging is essentially a public rather than private activity". Publication of the blogger's identity did not therefore contravene Article 8 of the European Convention on Human Rights and Fundamental Freedoms. The information relating to the blogger's identity, which was found by the Times after some journalistic digging, did not qualify in the judge's view as having the necessary "quality of confidence" as contemplated by Megarry V.-C. in Coco v Clark. Any right of privacy the blogger might have would in any case be outweighed by a countervailing public interest in revealing that a particular police officer had been making the communications.

Some people write blogs under pseudonyms as a bit of fun, and would not be too bothered if their real identity were to be revealed. Others, however, who perhaps think that they can hide their true identity and write blogs that could be damaging to them if their readers knew who they really were, might want to reconsider what right they have to protect their anonymity in light of this judgment.

Digital Britain -- first thoughts

Congratulations to ZDNet.co.uk, which was first to get something accessible on to the internet concerning today's launch of the UK government's Digital Britain manifesto. According to ZDNet.co.uk's Tom Espiner, who heard it from David Meyer,

"The report does indeed recommend that all users have access to broadband up to 2Mbps [That's a lot slower than broadband suppliers advertise, but faster than many seem to deliver ...].

In terms of how this can be achieved, the government said that the market already covers two-thirds of next-generation broadband needs, but that there will be a 50p monthly levy on each copper line to fund next-gen broadband, to cover the remaining third of needs [so you can get rid of your copper line now, go wireless, and save £6 a year, or nearly US$ 10 at today's exchange rate].

Unlicensed filesharers are to have their bandwidth reduced, plus be subject to protocol blocking. Their IDs may also be released for civil actions [there is doubt as to whether either of these steps will deter or even inconvenience the mobile, technologically savvy youngsters who comprise the core of unauthorised file-sharers today, though].

There will be a major telecoms resiliency test-exercise this year [sounds sensible].

There will also be an internet crime and security initiative, combining parliament, government, and business [The IPKat can understand why parliament and the government have been included, but what is business supposed to have done wrong?].

There will be a consultation on Ofcom penalties for Communications Act 2003 contraveners [seems prudent: ].

The government is to provide a £23m fund for basic SME IT support [A curiously un-round sum. why 23?].

There will also be more IT training for citizens [You've heard of Bootcamps. Well, these will be Reboot Camps. but will there be special training in anger management and router rage?] ".

... but now you can read it for yourselves!

Digital Britain Interim Report here
Digital Britain Forum here
"Digital Britain: a Beginner's Guide" here
Earlier IPKat posts here, here, here and here
Comments from The 1709 Blog here and here
IPKat team member Jeremy's comment on ZDNet here

Last minute reprieve for passing off

An Art.8(4) case from the CFI: Joined Cases T-114/07 and 115/07 Last Minute Network v OHIM - Last Minute Tour. Last Minute Tours registered a word and device mark containing the words Last Minute Tours as a CTM for Class 16 and Classes 39 and 42. Last Minute Network applied for the mark to be invalidated, citing an earlier right protected by passing off in the sign lastminute.com under Art.8(4). The OHIM Second Board of Appeal rejected the application for invalidity citing a lack of confusion.

The CFI found that the Board had erred in a number of respects:

1. The Board had looked at the average consumers of the goods in question, whereas under passing off the relevant public is the earlier user's customers;
2. The Board had wrongly addopted the approach that because the term 'last minute' had a generic meaning, no party could be granted a 'monopoly' in it. This was wrong in the light of the Camel Hair Belting case (Reddaway v Banham [I896]. A. C.. I99);
3. In establishing misrepresentation, the Board had conducted a mark for sign comparison of the two indicia, focusing on their aural, visual and conceputal aspects, as would be appropriate under Art.8(1)(b). Passing off would include a onsideration of other factors such as, in this case, the circumstances in which the goods or services are offered in the United Kingdom under the sign LAST MINUTE TOUR on the date on which the application for the Community trade mark was filed. The Board had also failed to take into account the reputation of lastminute.com in establishing passing off, and the possiblity that its reputation would lead to confusion as to the origin of services which just used the 'last minute' element.

The decision was thus annulled at sent back to OHIM for adjudication.

The IPKat notes that this case demonstrates something that is sometimes easy to forget - that the confusion required for trade mark infringement and misrepresentation under passing off don't necessarily lead to the same result. Once again though, the IPKat feels rather sorry for OHIM, having to apply the assorted unfair competition rules and other laws of 27 Member States under Art.8(4).

Congratulations John and Andrew!

Happy birthday, Her Majesty the Queen! And it's a happy day too for two people who have received honours for services to intellectual property. They are, in no particular order:

* Patent attorney John Grant (right), who receives the MBE for services to intellectual property (for details of his valour, click here). And please don't send the IPKat any jokes about "patent grant" -- unless they're both novel and non-obvious.

* Andrew John Beale, for services to intellectal property and business in Wales (see Andrew's profile here) -- and it's not every day that academics are given an OBE for services to business.

Congratulations to you both -- and if any readers spot others on the list whom the Kats may have missed, please let them know ... gently. They do sometimes miss a name, but it's not for any sinister reason!

ADDENDUM: by popular request, the Kats have added Malcolm Skingle from GSK, who played a leading role in creating the Lambert template agreements to assist in the commercialisation of university know how [thank you, to the several people who kindly drew attention to this omission]. His OBE was cunningly disguised as being 'For services to the

Pharmaceutical Industry'.

"But you never asked ..."

An interesting little decision on the mechanics of proof of use of trade mark cropped up in the Court of First Instance of the European Communities last Friday in Case T‑450/07, Harwin International LLC v Office for Harmonisation in the Internal Market, Cuadrado, SA. Harwin registered the figurative Pickwick mark (right) as a Community trade mark for ‘clothing, footwear, headgear’ in Class 25. Cuadrado sought cancellation, citing its earlier word mark PICK OUIC and figurative mark (below left), both of which were registered for various items in Class 25, and maintaining that on account of the similarity of marks and overlap of goods there was a likelihood of confusion.

The Cancellation Division annulled the registration in a decision which was upheld by the Board of Appeal. According to the Board, Harwin's appeal was based on the complaint that the Board had not considered whether Cuadrado had demonstrated use of its earlier marks, but the Cancellation Division didn't need to do so since Harwin hadn't expressly asked it to. Having failed to ask the Cancellation Division to assess whether there was use of the earlier marks, Harwin was too late to do so before the Board of Appeal.

The Court of First Instance allowed Harwin's appeal. When Cuadrado submitted evidence of use of its earlier marks before the Cancellation Division, Harwin commented that that evidence was insufficient to prove genuine use. In response, Cuadrado produced additional documents on proof of use. The CFI continued:

"23 For OHIM, the effect of the absence of an express request for proof of use, which should, for example, have been made by [Harwin] when OHIM invited it to submit its observations on the application for a declaration of invalidity, was to deprive [Harwin] of any opportunity to dispute the genuine use of the earlier mark relied on in support of the application for a declaration of invalidity. In the present case, OHIM refused to treat the observations submitted on that issue by [Harwin] in its response to the application for a declaration of invalidity as an express request ....

24 Such an approach does not take into account the relevant evidence submitted on that issue in due time by the parties to the Cancellation Division and, subsequently, to the Board of Appeal.

25 So far as the principles underlying it are concerned, the system provided for by Article 56 of Regulation No 40/94 ... must be described as follows:

– the proprietor of an earlier trade mark is obliged to prove the use of its mark only if that use is challenged by the proprietor of the trade mark which is the subject-matter of an application for a declaration of invalidity;

– in the absence of such a challenge, OHIM may confine itself to considering whether a likelihood of confusion exists, without considering proof of use;

– where there is such a challenge of the use, whether by means of a request for proof of use submitted by the proprietor of the trade mark which is the subject-matter of an application for a declaration of invalidity or by means of that party challenging the evidence submitted by the proprietor of the earlier mark to prove use, OHIM is required to examine the issue of proof of use prior to that of the existence of a likelihood of confusion.

26 Concerning the literal interpretation of the words ‘[i]f the proprietor of the Community trade mark so requests’ used in Article 56(2) of Regulation No 40/94, it must be observed that they may be understood as referring to a request such as that set out in the applicant’s observations on the application for a declaration of invalidity. That request was furthermore fully understood by the applicant for a declaration of invalidity, since it produced additional evidence in order to reply to the applicant (see paragraph 21 above)....

29 ... the request for proof of use was made by [Harwin] expressly and timeously. In any event, it was fully understood by [Cuadrado], which answered it in its response to the observations submitted by [Harwin] on that subject. ...

32 The situation here is not comparable to that which gave rise to the judgment in MUNDICOR .... In the present case, the issue of the use of the earlier mark was the subject of an exchange of arguments between the parties. That exchange, which was commenced in the application for a declaration of invalidity, was expressly instigated by[Harwin] both in its observations relating to that application for a declaration of invalidity and again following those observations, without [Cuadrado] being mistaken as to the nature of that exchange.

33 Consequently, in the light of the observations submitted by [Harwin] concerning the genuine use of the earlier mark in response to the observations made on that issue by [Cuadrado] and following which the latter submitted new evidence in that regard, the Board of Appeal infringed Article 56(2) and (3) by holding in the contested decision that the issue of the genuine use of the earlier mark did not have to be examined by the Cancellation Division".

The IPKat thinks this is correct, but notes the contrast between Harwin -- which didn't expressly say what it meant even once -- and the CFI which tends to say the same thing over and over again. Merpel laments the annoying fact that both parties are 'applicants', Cuadrado being the applicant for invalidity and Harwin being the applicant for annulment of the Board's decision; these appellations change in accordance with the nature of the proceedings as they wend their way from Cancellation Division to Board of Appeal to CFI to Court of Justice, which can confuse for the sake of achieving clarity. For the benefit of readers of the decision and users of the Community trade mark system it would be much easier if the owner of the challenged mark were simply referred to as the 'proprietor' throughout.


Pickwick Papers here
Picnic Papers here
Picnic Cat here

Patents County Court: users propose reform

As has recently been reported on PatLit, the Working Group of the Intellectual Property Court Users' Committee has just gone public with its proposals for reform of the Patents County Court for England and Wales. This court, which was set up with the best intentions of reducing the cost of patent litigation and making altogether simpler and more user-friendly, has not been able to achieve that desired end -- for more reasons than the IPKat has time to enumerate in the space of a short weblog article.

The Working Group has come up with some constructive and sensible proposals for improving the current system -- and has not shied away from problems either. If you'd like to read the proposals and email your comments to the Group's secretary Philip Westmacott, please do so by 3 July 2009.

Says the IPKat, one of the proposals is to change the name of the court from the Patents County Court to the Intellectual Property County Court. This won't actually make the litigation cheaper, but it may sound a little less expensive to litigants who have already been exposed to courts with the P word in their name. Merpel adds, don't print the proposals out in full. Although the document is 24 pages, page 2 is blank, as is the penultimate page, while the final page is a single blank sheet of orangey-red (a great waste of colour toner).

Friday fillers

Don't forget to check out the forthcoming events and dates listed in the IPKat's side-bar. Right now there are 60 of them! Some are free, some are fun, some are merely topical and essential ...


Thanks for the tribute -- but no thanks! Asianet reports that the Kerala Wildlife Department, India, dropped the name of legendary Australian television personality and wildlife expert Steve Irwin from the title of its crocodile park at Neyyar, Thiruvananthapuram, to avoid the charge of violating intellectual property rights. Irwin’s widow had threatened action. Said a spokesman for the park: "We meant it as a token of our respect for him and his work as a naturalist and conservationist". The crocodiles were not available for comment [thanks to Adam Smith, World Trademark Review, for the link].

Around the blogs. The IPKat and Merpel have been perusing a relatively recent and well-presented addition to the blogosphere -- Austrotrabant's Blog, a trade mark blog by the enthusiastic Maximilian Schubert. Good luck, Max, we wish you well! The Kats' congratulations are also offered to blogs that have reached some landmarks. The African intellectual property weblog Afro-IP has now secured its 250th email subscriber, and Fashionista-at-Law has welcomed its 200th.

The IPKat salutes John (formerly Peter, thanks to a speed-blogging typo) Brown, who has been recycled as President of the Chartered Institute of Patent Attorneys (CIPA) -- he's only the third President since 1882 to have held the office twice. John promises to rally the troops in the battle to ensure that the organisation provides its customary exemplary service despite the various hindrances, however well-intentioned they may be, which have been imposed by a well-meaning government. Funny, says Merpel, recycling usually means 'green', not 'brown' ...


Family photo fun. The BBC reports that a St Louis couple, Danielle and Jeff Smith, were surprised to discover that their family photo -- which they used on a Christmas card and then posted on a blog -- was being used, withour authorisation, on an advertising poster for the Grazie supermarket, Prague. The owner of the shop has promised to remove the image, adding that if the family had lived locally he would have offered them a bottle of wine. The IPKat suspects that, if the family had lived locally, they would have told him what to do with it [thanks to David Goldring for this link]. For further speculation on copyright issues see The 1709 Blog here.

Battle of the quackers. This item reached the Kats via Brian Stevens (Schlumberger), to whom they express their grateful thanks. It concerns a dispute between two San Francisco boat operators, one of whom claims the exclusive right to the use of Wacky Quackers, duckbill-shaped kazoos that are played -- if that be the word -- by their customers in the course of bay tours.

Says the IPKat: while this article discusses sound marks as a species of trade mark, it misses a point that will instantly occur to European trade mark enthusiasts: if the distinctive sound in which the senior operator claims monopoly rights is one which is generated by customers, who presumably have some choice in the length, volume and pitch of their wacky quacks, the mark will be difficult, if not impossible, to portray in terms of graphic representation. Says Merpel, what about passing-off and unfair competition, then?

Those European patent court proposals: the CIPA response

The IPKat received a press release earlier this week which he has only just got around to reading. It's from the Chartered Institute of Patent Attorneys (CIPA) and was issued in response to a newspaper report that EU industry ministers had agreed formally to ask the European Court of Justice for its opinion on a potential overhaul of patent litigation in Europe (on which see here). The press release goes as follows:

"According to Vicki Salmon, chairman of CIPA’s litigation committee, the ministers’ request highlights the efforts being made to set up cheaper, more streamlined procedures. “This proposal deserves support,” Vicki Salmon says, “but, as ever, there are some devils in the detail.” [The IPKat would like to see the detail, but it just doesn't seem to be available to peasants and pussycats]

According to CIPA, achieving the confidence of the business community, quickly and effectively, will be critical to the success of any European patent litigation court ['quickly' is an interesting concept. If the court came into being tomorrow, how many months/years would elapse before the first full trial would take place?]. Questions of language [if it isn't English?] and local interests [i.e. will patentees in some countries be happy to lose the advantage of litigating at home against a foreign invader?] will continue to be topics for debate, affecting such confidence.

In some countries there is a wealth of experience of patent litigation - not necessarily always leading to the same outcome in the courts as judges can disagree - while in others there is almost no experience - indeed in some, literally none. The current proposals are for a three-judge court, made up of two local judges and one from another jurisdiction. That third judge may well speak a different language and have a different legal background from the two local judges, which could lead to misunderstandings i.e. the third judge misunderstands that he is there for purely cosmetic or politically expedient purposes?]. Litigants may choose, for tactical reasons, to litigate in a state where there is little experience [Indeed. It's sometimes said that infringers sometimes choose to do the same ...]. This could seriously undermine confidence and consistency in a court in its infancy and, if not lead to a still birth, leave it significantly disabled [Another problem is over-confidence, rather than the lack of it]. “It is highly desirable that as diverse a selection of judges with real practical experience of patent litigation is used until consistency is clearly and demonstrably established,” says Vicki Salmon.

CIPA is arguing that, if a European patent court system is to be more cost-effective, then it is also important to consider who will be representing the parties. In the UK, qualified patent attorneys can bring cases in the Patents County Court, the High Court (Patents Court) and the Court of Appeal. Although the current proposals include rights for patent attorneys to represent their clients, there is considerable pressure from lawyers across Europe for the new court system to be closed to specialist IP attorneys, regardless of who can do the best job for the client [The Kat hopes that this issue is resolved in terms of reality rather than principle, since any proposed system is only as good as the people who work it. Patent attorneys have come a long way since they first obtained rights of audience in the UK and litigants should be entitled to instruct them if they so wish]".

Standard setting antitrust investigation dropped; Canada rejects business method patents

Rambus competition probe to be dropped

Forbes reports that Rambus and the European Commission have reached an agreement that will see the Commission dropping its antitrust probe into Rambus. The investigation has considered whether Rambus abused its dominant position by setting overly-high royalties for licensing DRAM patents that it was alleged were fraudulently set as industry standards. In return, Rambus will cap certain licence fees for 5 years and will ensure any fee cuts benefit the whole market. The agreement still needs the approval of other industry players.

Had this gone the whole way, the IPKat wouldn't have envied the Commission in trying to figure out what 'excessive royalties' are in this situation.



Canada rejects business method patents

Meanwhile, the Inquirer reports that the Canadian Patent Appeals Board has said a firm no to business method patents. Speaking in an appeal against a decision to refuse the registration of Amazon's One-Click method for buying goods online the Board said:

"since patenting business methods would involve a radical departure from the traditional patent regime, and since the patentability of such methods is a highly contentious matter, clear and unequivocal legislation is required for business methods to be patentable."

The IPKat is no fan of providing patent protection for anything as fundamental as business methods and welcomes the decision.

Another EBA referral on divisionals

Thanks to Laurent Teyssedre's blog, the IPKat has learned of a new referral being made to the EPO Enlarged Board of Appeal relating to when divisional applications can be filed. The question being asked goes like this:

"Is an application which has been refused by a decision of the Examining Division thereafter still pending within the meaning of Rule 25 EPC 1973 (Rule 36(1) EPC) until the expiry of the time limit for filing a notice of appeal, when no appeal has been filed?"

The decision leading to the question, J 2/08, has not yet been uploaded to the EPO's decision database, but can be found here, courtesy of Laurent. The case relates to European application number 05027368.9.

What happened during prosecution should be fairly clear, given the above question. The IPKat, who thinks that the answer to the question is a clear 'no', merely wonders why the applicant didn't follow the apparently normal (yet, in the EPO's eyes, abusive) procedure of filing a divisional application (without, of course, paying the fees) on the day before oral proceedings were scheduled, just on the off chance that their application was refused. Failing that, they could have filed an appeal just for the purpose of keeping the application pending. Couldn't they?

Bad faith and chocolate bunnies

It's not yet available on the Curia website, but the Luxembourg jungle-drums have been beating out the news that the Court of Justice of the European Communities has delivered its ruling in Case C-529/07 Chocoladefabriken Lindt & Spruengli. Word from the Kat's friend Stephanie Bodoni (Bloomberg) is that Lindt & Spruengli’s Community trade mark for a chocolate Easter bunny wrapped in gold foil may be at risk if a competitor can prove L&S gained their legal protection in bad faith. Says Stephanie:

"The European Court of Justice today said that “an overall assessment” of relevant factors must be made to check whether Lindt, Switzerland’s oldest chocolate maker, acted in bad faith when it applied for the EU protection in 2000.

“To determine whether there was bad faith, consideration must also be given to the applicant’s intention at the time when he files the application” for the trade mark, the EU court in Luxembourg ruled today.

After acquiring its EU trade mark, Lindt sued Austria’s Franz Hauswirth GmbH, for making “confusingly similar” products to its own 57-year-old rabbit, wrapped in gold foil with a bell and red ribbon around its neck. Sylvia Kaelin, a spokeswoman for Kilchberg, Switzerland-based Lindt, declined to immediately comment, saying she had not seen the ruling

“Even in such circumstances, and in particular when several producers were using, on the market, identical or similar signs for identical or similar products capable of being confused with” Lindt’s product, the Swiss company’s application “may be in pursuit of a legitimate objective,” the court said. In addition, the extent of Lindt’s reputation at the time “might justify the applicant’s interest in ensuring a wider legal protection for his sign,” said the court. Lindt started selling the bunnies in Austria in 1994. Chocolate bunnies have been sold in Austria and Germany since at least 1930, according to court documents".

It remains for the Austrian court, which referred the case for a preliminary ruling, to apply it to the facts. The IPKat -- who is keeping off all chocolates for health reasons -- reserves the right to comment on this ruling once he gets his paws on it.

STOP PRESS: 11.34am: text of judgment now available here

No ope for folding ladder infringer

Mr Peter Prescott QC, sitting as deputy judge in the Patents Court, issued his judgment earlier this week in the matter of Folding Attic Stairs Limited v The Loft Stairs Company Limited. The names of the imaginatively-titled companies involved may give the reader a little clue as to what the case was about (see picture, right, an example of folding stairs available from Memphis Folding Stairs).

A dispute between the parties arose after the defendant (LSC) fell out with the claimant (FAS) over money, and started to make and sell loft stairs themselves, rather than buying them from the manufacturer. FAS then brought their patent, GB2319051, into play, claiming that LSC were infringing it.

The patent covered a small but significant development in how folding stairs for loft access were constructed. LSC argued that the patent was either anticipated by FAS's own disclosures as a result of a prototype being shown to visitors before the priority date of the patent, or was obvious over this disclosure. There was also an issue to be determined about what some of the wording in the claimed invention actually meant, namely whether the words "predetermined" and "preset" meant anything at all and, if so, whether they could be a limitation on the claimed invention. The matter of infringement was not really an issue at all, presumably because LSC were making stairs to FAS's own design (design right was also briefly mentioned, but did not feature). The judge put the issues as follows:

"Two points of difficulty are these. What happens if a manufacturer allows selected members of the public onto his premises, not on terms of confidence, where they can see a product that is still under development, but they are not experts and do not understand its significance – could that invalidate a patent afterwards applied for? And what are we to make of the phrase "spaced a preset distance" in the patent claim – are words of intentionality allowed?"

The patent covered a manufacturing process for the folding stairs in question, rather than the stairs themselves, a key feature of the invention being that a part of the construction process involved allowed for a difference between the width of the stair portion and a width of a frame made to fit an existing opening in a ceiling (termed an 'ope' in the patent, hence the appalling pun above). Because it was impractical to make stairs of various widths to fit a known range of sizes of ope, a single width stair was used with a modification to how the folding metal arms were connected to the frame, made during manufacture of each set of stairs. The feature allowing this involved the use of an inner frame positioned a "preset distance" inwardly from the outer frame, which was made to fit the available size of ope. This implied some intention on the part of the person performing the invention, which gave the judge some difficulties in construing the claimed invention.

"I must say I have seen 'predetermined' and 'preset' in granted patent claims on occasions too numerous to recall, and the experience of Jacob LJ in patent cases is a fortiori. Therefore I do not believe his stricture applies to the word "predetermined" as such. I do not have a convenient means of searching the claims of granted European patents, but as an exercise I have looked at the online database of the United States Patent Office, where the text of claims granted since 1975 is searchable electronically. I expected to find many patents with the word 'predetermined' in one or more claims. Even so, I was astonished. There are more than 658,000 such patents.

While I have not been able to perform a similar exercise for the European Patent Office, I have no doubt that it is accepted EPO practice to allow it to be used, provided the criterion that enables it to be understood is sufficiently clear. There are numerous decisions of the Boards of Appeal where the word 'predetermined' was used in the claims and no objection was taken to it, provided the purpose was clear. (There are too many to read through, but see e.g. decisions T 1241/04 and T 0463/01). Indeed in the 2007 edition of the Guide for Applicants, Annex III, available on the EPO website, there is a model patent application – as if to say, "Now, let us show you the right way to do it" – with the word 'predetermined' in claim 1. The usage can also be found in guidance to candidates for the European Qualifying Examination in the form of acceptable examination answers, also published on that website.

I am unable to accept a contention that, in the context of this patent, 'predetermined' or 'preset' is meaningless and of no effect. A reader skilled in the art would think the patentee was using it in order to try to tell him something; and he would work out the purpose by reading the patent as a whole."

The judge then found that the correct meaning of the claimed invention could be found, the key to this involving noticing that the claim was for a process for manufacturing folding stairways on a repeat basis, and that the purpose of setting the inner frame a certain distance away from the outer frame had to be taken into account. The scope of the claimed invention, although narrow, could therefore be determined.

On the matter of validity, the arguments raised by the defendent involved a prior disclosure of a prototype on the manufacturer's premises. The manufacturer had allowed members of the public, including an Irish minister and a press photographer, on to their premises before the patent was applied for. A prototype of their folding stairs was seen and photographed, and a picture appeared in the Irish press, showing the managing director of the company with the prototype in the background. The question was then whether the undoubted disclosure of the prototype was in fact an enabling disclosure of the invention to the public. The judge said:

"It is clear law that, if this test unit had been in a public place e.g. a street, where anyone might have stopped to examine it, its design would be considered to have been made available to the public. In Lux Traffic Controls Ltd v. Pike Signals Ltd [1993] RPC 107, 132-135 prototype traffic lights were given field trials. It was not proved that any member of the public – much less an expert in traffic lights – stopped to deduce the novel modus operandi. Even so it was held that the new idea was made available to the public. The principle is the same as the obscure book on the shelves of a public library that nobody consulted in fact. The law must draw the line somewhere, as I have said, and it does so by adopting the rule that inasmuch as the public had a right to be there, they are deemed to have had the right to access the information. In the same way, if it is proven that all sorts of members of the public could enter private factory premises, no obligation as to confidentiality being imposed, the law will consider that whatever could be seen there has become part of the state of the art. In those circumstances the law cannot start speculating about who did or did not see the thing.

In our case, however, the test unit was not in a public place at all and it was available for viewing by a small and defined class: the Minister and the photographer. They were not persons skilled in the art; and there is no evidence that they were interested in manufacturing folding attic stairs – it seems unlikely – nor that they manifested any interest in the test unit (which was not in the main part of the factory). Even so, urges Mr Davis for the Defendants, they were free to examine the unit if so minded, they were free impart to anyone in the world whatever recollection they had of it, and so its construction must be considered to have been made available to the public."

The judge in the end came down on the side of the claimants, finding that the claimed invention was not disclosed to the public, in part because, on the balance of probabilities "if some officious person had stopped them on the way out and asked them to describe the test unit, it is unlikely that they would have been able to describe the presence of an inner frame with side beams spaced from the sides of the ladder" (para 89). There was no reason why a normal human being, not interested in the manufacture of folding ladders, could care less. Even if he was wrong on this point, the judge considered that the claimed invention, because it was a process for manufacture, was also not obvious in light of such a disclosure. The patent was then found to be valid and infringed.

The IPKat thanks Mr Prescott for yet another well-written and clear judgment, which has made him think a bit more about what words should and should not go into a patent claim. Just because a word such as 'predetermined' is used in lots of granted claims, and is apparently approved by the EPO, does not mean that it is ideal or clear in all circumstances. As with the dreaded word 'means', some words can be used as lazy shortcuts to avoid describing what the invention actually is, or at least leaving a claim sufficiently vague that things other than what were being thought of at the time of drafting might possibly be covered. This does not, however, make things easy (or cheap) once a patent has been granted. The IPKat thinks that it is still preferable, wherever possible, to use words that have a straightforward meaning in themselves and which do not need the skilled person's motivation to be brought in to give them meaning. This does not mean that the claims need to be narrow, just that the drafter should perhaps think a bit more about the invention before setting out what it is.

Catsuit controversy

From the IPKat's friend Venya Wijegoonewardene, an LLM student at King's College London, comes the following offering:

"Photographs of a certain line of designer catsuits caused a bit of a stir recently. Susie Bubble, one of the UK’s trend-setting bloggers (and named in the Evening Standard’s 1000 London’s Most Influential List), was asked to take down some photographs of Pam Hogg’s coveted catsuits from the Style Bubble weblog entitled Hogg Roasted.

The response by Hogg’s team to the ‘unauthorised photographs’ reflects the ongoing debate as to the extent a designer can control his or her creations. The uncontrolled use of these particular images was deemed to be bad publicity by the designer’s management.

Susie Bubble’s blog has a dedicated following in the fashion industry, so one might have thought that such exposure would be good publicity for the designer (most young designers would view even a brief mention on Style Bubble as great publicity). Nonetheless, Hogg’s team stated that they did not allow unauthorised images to be taken in an uncontrolled environment "unless you have bought one, were lent one or it was for a shoot".

The approach of Pam Hogg’s team is interesting: were they simply trying to protect their high-fashion brand? Perhaps they considered the ‘uncontrolled environment’ potentially damaging to the high-fashion nature of the brand. Yet, considering the extent of Style Bubble’s following, this attempt to control the brand’s representation in the media has in effect resulted in somewhat negative publicity. Susie Bubble’s post in response to the catsuit controversy expresses disappointment that the brand views itself as elitist and suited only to the upper rungs of the fashion ladder. Yet she also recognises the reasons as to why some designers would jump at the opportunity to dress the likes of Lady Gaga, while others would not".

How to roast a hog here and here

Blowing bubbles here

Loi Hadopi falls at the last hurdle

Fresh from Guardian online is news that the controversial French loi Hadopi (the "three strikes and you're out" approach to dealing with unlawful file-sharers and internet-enabled copyright infringers) has been struck down by the Constitutional Council as being unconstitutional. According to Richard Wray ("French anti-filesharing law overturned"):

"The French judiciary has ridden to the rescue of the country's web users, striking down a controversial new law which would have allowed the state to cut off the internet connections of illegal filesharers for up to a year.

The ruling is a blow to French president Nicolas Sarkozy, who had characterised the so-called "three strikes" law as a crucial weapon in the fight against online piracy. ... France's constitutional council ruled today that "free access" to online communications services is a human right and cannot be withheld without a judge's intervention. The council also ruled that the method of policing the web envisaged in the law breaches a citizen's right to privacy.

... Under the French law, which was passed last month after initial resistance from politicians, persistent illegal filesharers were to be warned by email and then letter that they should stop sharing copyrighted material. If they continued, their internet connection could be cut off for up to a year.

... The French ruling, which comes after the country's Socialist party asked the council to look at the legality of the Hadopi law, is unlikely to have a direct impact on the legality of any UK moves to combat piracy by using technical measures because it is based on a reading of the French constitution, rather than EU law".

The IPKat suspects that this will not be an end to the matter, and awaits further developments (possibly from the European Commission in Brussels) with interest.

See also note and further materials here

Greek cocoa-milk marketers delta severe blow as Kraft steals the milk

The Court of First Instance of the European Communities gave its ruling today in Case T‑204/06, Vivartia ABEE Proïonton Diatrofis kai Ypiresion Estiasis, formerly Delta Protypos Viomichania Galaktos AE v Office for Harmonisation in the Internal Market, Kraft Foods Schweiz Holding AG intervening. This was Vivartia's second appeal against a decision to uphold an opposition to its application to register the above mark in Class 30 for 'milk with cocoa'. The opponent alleged that this mark was likely to be confused with its own earlier marks for various milky and chocolaty items in Classes 29 and 30, including the Community trade mark reproduced below.

The main issue was that of similarity of marks. The Opposition Division, Board of Appeal and Court of First Instance all concluded that they were sufficiently similar to produce a likelihood of confusion in the relevant consumer. On similarity of marks the Court had this to say:

"37 ... the mark applied for is composed of two components ‘milko’ and ‘ΔΕΛΤΑ’ [a Greek word, pronounced "delta"], a design representing a white milkmaid inside a green triangle against a background of red lines and coloured motifs surrounding the word ‘milko’. As regards the earlier mark, which was registered in black and white, that is composed of a single word element ‘milka’ inscribed in white letters on a dark rectangle. Because the rectangle is insignificant, the word ‘milka’ is the dominant element of the earlier mark.

38 First, as regards visual comparison, certainly the word element ‘milko’ occupies a more distinctive position in the mark applied for. That component is ... clearly the largest. Next, it is located at the top of the mark applied for. It is therefore more likely to attract the attention of the relevant public and to be easily noticed and remembered. That word element closely resembles the dominant word element ‘milka’ in the earlier mark. The Board of Appeal rightly states that both marks use a similar diagonal written representation for the words ‘milko’ and ‘milka’, and that the peculiarly stylised letter ‘m’ in both components is very similar. In addition, the vowels ‘o’ and ‘a’ of those components have practically the same shape.

39 Admittedly, the mark applied for contains a number of additional elements that distinguish it from the earlier mark. However, the Board of Appeal rightly states that the figurative element, comprising a milkmaid inside a green triangle against a background of red lines, will be perceived by the relevant public as ornamental. The figurative element of the milkmaid, particularly for milk products, is not, moreover, an especially original or fanciful representation likely to attract the attention of the average consumers of the goods in question.

40 As regards the ‘ΔΕΛΤΑ’ component, that occupies a position of clearly secondary importance in the mark applied for when taken as a whole. It is located at the very bottom of the mark and is much smaller than the word element ‘milko’ and even the figurative element of the milkmaid. In addition, the ‘ΔΕΛΤΑ’ component is difficult to understand for European consumers who are not familiar with the Greek alphabet, which is an additional reason for asserting that the relevant public will focus more on the word element ‘milko’.

41 Thus, the differences ... are not sufficiently great to overcome the similarity arising from the word ‘milko’. In the light of those circumstances, the Board of Appeal did not err ... in holding that the signs at issue were similar, when it compared them visually, taking each sign as a whole.

42 Second, as regards phonetic comparison, ... the words ‘milko’ and ‘milka’ are very similar phonetically. The addition of the ‘ΔΕΛΤΑ’ component cannot call into question that similarity. Even if the relevant public were to perceive ‘ΔΕΛΤΑ’ as a Greek word, a significant part of that public would not know how to pronounce that word, and will accordingly tend to omit it when referring to the mark applied for orally.

43 In that connection, the applicant’s submission that, if they are unable to read the ‘ΔΕΛΤΑ’ component correctly in Greek, most consumers will tend to pronounce its Latin equivalent ‘delta’ must be rejected. Such an argument is based on the premiss that those consumers are familiar with the capital letters ‘Δ’ and ‘Λ’ in the Greek alphabet. The goods covered by the marks at issue are everyday consumer goods and are therefore targeted at the general public. ... most European consumers do not know the Greek alphabet and that only a category of more erudite consumers would know it.

44 Therefore, the Board of Appeal’s finding ... that at least a significant part of the public will not pronounce the ‘ΔΕΛΤΑ’ component when referring to the signs orally, since it does not know how to, must be upheld.

45 Third, as regards conceptual comparison, the Board of Appeal correctly states that the word elements ‘milka’ and ‘milko’ are invented words and do not have any meaning in any of the official languages of the Community. Therefore, as the Board observes ..., the relevant public will associate the word element ‘milko’ with ‘milka’ because those words do not have any meaning.

46 In addition, for non-Greek-speaking consumers, the signs at issue do not have any conceptual differentiating elements that can counteract the visual and phonetic similarities. The ‘ΔΕΛΤΑ’ component cannot have the impact that the applicant wishes to have accepted on the conceptual comparison. ... a large proportion of European consumers will not be able to read or understand that word written in Greek. In those circumstances, that word element cannot be regarded as introducing a new concept that the consumer will associate with the mark applied for".

The IPKat really struggles with the bit that says "the relevant public will associate the word element ‘milko’ with ‘milka’ because those words do not have any meaning". To him, as a milk-drinking cat, milko and milka both mean "milk" with a redundant syllable at the end, just as Orlwoola suggests "all wool" with a redundant final syllable. Merpel says, it seems that Milko has been on the market in Greece for a while. Could it be that, it Milko is confusingly similar to Milka in Europe, Milka is confusingly similar to Milko in the cradle of democracy too?

Why cats shouldn't drink chocolate milk here and here

ADDENDUM: after the item above was posted, the IPKat received the following verses from a distinguished gentleman who sometimes supplies this blog with news and comments:

It appears not only curiosity
But also chocolate can kill a cat
Must admit I never intended
To feed you some of that.

I may feed you lots and lots
Of pure bull and crap
But from now on I'll keep
The bars safely under wrap ...

Not such a good idea after all?

The IPKat's still not terribly certain what Firebox is, apart from something that isn't quite the same as Firefox. His attention was however caught by an email from an anxious lawyer, who sent him this link to Firebox Inventor.

The blurb introducing Firebox Inventor is very upbeat and lovey-dovey. It opens:

"Calling all creative geniuses, visionaries, mad scientists, tinkerers, ponderers and garden shed inventors:

We’ve teamed up with Stuff, the World’s best-selling gadget magazine, to launch Firebox Inventor: a national search to find the next must-have product for 2010 and it might just be your idea that makes it onto our shelves! It could be a cool new toy, handy gadget, or something else entirely: if it’s original and it fits our quirky range, we want to hear about it.

You don’t need to have an expensive prototype, polished business plan, or to take part in a scary formal pitch. You can send your entry to us in any format you like and there isn’t a Dragon in sight.

We’ve assembled an expert panel of judges from across the technology, toy and product development industry to pick out the very best idea from the bunch".

The website then lists the members of the expert panel and continues:

"The Prize

The winning idea will be developed, manufactured and sold by Firebox on our award-winning website. [this, presumably, is Firebox's prize] What’s more; the winner will receive 50% of our profits for the lifetime of the product! [this holds out an expectation of further details in the Terms and Conditions, which only specify that the profits are net of all costs, taxes etc. Obligations regarding accounts? Payable in £, $ or Mongolian tögrög?]

How to enter

There is no age limit to this competition [there is, actually: no under 18s may enter] and no experience necessary. Your product suggestion could take the form of a drawing, photo, video, or doodle on a beer mat. Whether it’s a long email, a short tweet or arrives by carrier pigeon; any entry format goes [except that the T&Cs say you have to enter the competition via YouTube, following it up with a notificatory tweet]".

The Firebox Inventor Terms & Conditions contain some fascinating legal prose. Naturally they require the winner to assign to Firebox all IP rights in the winning entry. Among its various provisions the terms specify:

"It is a condition of entry that you agree to enter into a release with Firebox in relation to the use of your Competition Entry and ancillary materials (including your name, likeness, photographs and any other material available to Firebox) [whoops, there goes privacy and publicity]. Firebox reserves the right to publish details of your Competition Entry and ancillary materials either on the Firebox website or to provide such details to the media [If an entrant does not want their entry published they should make this clear when submitting their entry] [if you can give notice that you don't want your entry published, the release isn't much of a condition of entry, is it?].

By submitting your Competition Entry you agree ..
* that your Competition Entry may be used for any and all purposes related to Firebox [and not merely to the competition?];
* that your name and likeness may be advertised and used in connection with your Competition Entry and this competition throughout the world;
* to grant to Firebox the non-exclusive, irrevocable, worldwide, perpetual, royalty free right and licence to use your Competition Entry for all purposes connected with the competition, in all media and to give all other consents (if any) which Firebox requires for such use;
* that the content of your Competition Entry is your own original work and is not copied from any third party;
that no other person has (nor will have) any rights in the Competition Entry that are inconsistent with these terms;
* that you have not granted any other person any rights that are inconsistent with the licence granted above [since Firebox only asks for a non-exclusive licence, the chance of another grant being inconsistent with this one must be quite real];
* to waive any so called moral rights and any right to equitable remuneration for the purposes of any rental or lending rights that may be deemed to be in existence in relation to the Competition Entry, so that Firebox may use the Competition Entry in any way it deems fit;
* the Competition Entry contains nothing which is unlawful or legally restricted;
* the use of the Competition Entry by Firebox in connection with this competition will not give rise to any liability to Firebox;
* that no third party owns any copyright or other rights in your Competition Entry and has no right or interest in it;
* to indemnify Firebox in connection with any liability, claims, costs or damages arising as a result of your breach of these terms;
* that it may not be possible to give a credit in relation to your Competition Entry;
* to sign all documents necessary for this release and licence, on request".

Those terms related to the entry itself; more terms apply to the invention or innovation itself. Thus Firebox -- which reserves the right to modify or discontinue product development or product sale for any reason and at its absolute discretion -- continues:

"It is a condition of entry that you agree to enter into an assignment
agreement with Firebox should your Competition Entry be picked for the Prize.
Such assignment agreement shall formally assign all ownership and intellectual
property rights (including copyright, design right, patent rights and trade mark
rights) in the Competition Entry and any product derived therefrom [does this include improvements?] to Firebox in exchange for a royalty of 50% of the profits earned by Firebox in respect of the Product only. Such profits shall be the revenue generated less applicable taxes, development and production costs for the lifetime sales [whose lifetime -- that of Firebox, the competition winner or the product itself?] of the Product by Firebox.

Firebox reserves the right to disqualify any Competition Entry where the entrant has supplied untruthful, inaccurate or misleading information and/or is in breach of the terms herein [does this include retrospective disqualification, if the entrant is in breach of a warranty of non-infringement?].

... There is no alternative to the Prize as stated and such Prize is not transferable.

All entrants must disclose to Firebox in writing full details of any and all criminal or civil proceedings or actions pending against them and/or convictions unspent as of the date of entry [let's hope that Firebox's data protection regime is fire-proof, then].

... No entrant will, without Firebox’s prior written consent, publicise or discuss with any third party any information in relation to their involvement in the competition
(including without limitation any information in relation to Firebox or any associated companies or affiliates) save where such information is already public knowledge [so the entrant needs consent before seeking legal advice?].

... Firebox reserves the right to modify or cancel the competition should circumstances deem it necessary. In such a case, no indemnity or compensation will be given to the participants involved. [That's handy, isn't it?]

... It is the entrant’s responsibility to ensure their Competition Entry is protected by any relevant copyright or other intellectual property rights as appropriate [the IPKat hopes the worldwide patenting costs come to more than the 50% royalty ...]. Firebox will not be held responsible for any claims of intellectual property infringement whether made by an entrant or any third party" [perhaps the entrant might like to consider a litigation insurance policy too].

Now let's look at the Submission Terms:

"The following terms reflect Firebox’s policy regarding the submission and disclosure to it of any ideas, concepts, inventions, materials, designs or information (“Submissions”).

Unless agreed otherwise in writing and signed by You and a director of Firebox the Submissions shall not be deemed confidential and no part shall be subject to any duty of confidence or any similar or equivalent obligation.

Firebox is involved in the creation, research and development of software, technology, ideas and concepts relevant to the gifts industry and receives proposals and information internally and from various external sources. Accordingly, Firebox may receive, review, devise or develop ideas, works, materials and information which are the same as or similar to Your Submissions and/or have done so already. No use, research, development or disclosure of such works, materials and/or information shall be deemed a breach of nor infringe any rights You have in any Submission.

... Submissions may be evaluated by Firebox or by third parties. You agree that Firebox may disclose the Submissions to such third parties for this purpose and that the terms of this Agreement apply equally to such disclosure. Firebox makes no representations or warranties of any kind regarding the evaluation of any Submissions by Firebox or by any third party.

You warrant and represent that Your Submission and its disclosure or delivery to Firebox will not breach any agreement You may have with any third party (including without limitation any confidentiality, non-disclosure, secrecy or licence agreement) nor will it, nor its use, hereunder infringe any third party proprietary rights.

This Agreement constitutes the complete and only agreement between You and Firebox with respect to the Submissions and supersedes all prior oral or written understandings, communications or agreements not specifically incorporated herein and its terms shall have effect regardless of whether or not Your Submissions are marked "confidential", “private” or "proprietary" or have any other notices or indications. This Agreement and the terms applicable to Submissions shall not be varied by You or Firebox except in writing signed by You and a director of Firebox".

The IPKat doesn't fancy entering this competition after all ...

Brave New gTLDs?

Oh brave new world of new gTLDs - a view perhaps not shared by everyone. The Guardian today reports of a new study which reveals that 65% of the British population (or 65% of the 1000 British consumers asked by the Future Laboratory and Gandi.net who conducted the study) believe that the introduction of new generic top level domains (gTLDs) could turn the internet into rather messy and chaotic place and also raise ownership conflicts.

Image from awwthatscute.com

According to the Guardian, the report gives numerous examples of gTLD's that could offend, such as the gTLD ".god" and ".war" and also predicts that there could be conflicts ahead depending on the respective use of the new gTLDs. ICANN, The Internet Corporation for Assigned Names and Numbers, introduced its plans concerning new gTLD's last October (see here on the ICANN's website).

".ipkat" anyone?

E-Learning on Software Patents at the EPO

Now that all observations are now in on G 3/08 (see here), the EPO have started to have their own say on how software patents (or "computer-implemented inventions" according to the EPO definition) can be granted. A brochure titled "Patents for Software?" has just been released, and is available from the EPO here. The introduction to this makes clear what the EPO's own definition is:

"Relying on a well-known and widely used definition, a computer-implemented invention is an invention whose implementation involves the use of a computer, computer network or other programmable apparatus, the invention having one or more features which are realised wholly or partly by means of a computer program. The term software, on the other hand, is ambiguous. It is generally understood as the implementation of an algorithm in source or object code, but without distinguishing between technical and non-technical processes.

As with all inventions, computer-implemented inventions are patentable only if they have technical character, are new and involve an inventive technical contribution to the prior art.

The European Patent Office (EPO) does not grant patents for computer programs ("software patents") or computer-implemented business methods that make no such technical contribution. In this respect the granting practice of the EPO differs significantly from that of the United States Patent and Trademark Office (USPTO). [IPKat comment: Although, after Bilski, it appears that the USPTO is now even more strict than the EPO]

The EPO is bound by European patent law as laid down in the European Patent Convention (EPC), which has been adopted by the 35 member states of the European Patent Organisation, and as interpreted by the independent EPO boards of appeal, the judiciary of the Organisation."

The EPO have also made available (unfortunately only in English) two very well produced online presentations (or "e-learning modules", as the EPO likes to call them) on what computer-implemented inventions are, and how they are granted under the EPC. These are available here and here. The IPKat has viewed these (it only takes about half an hour in total), and would highly recommend them to anyone interested in the subject, particularly those who might be confused about the difference between what is termed an invention under Article 52 and what is patentable, which are of course quite different things. His only gripe about the presentations (other than the part where one is asked to willingly suspend disbelief about what the word 'technical' means) is the grating use of the apparently wrong pronunciation of the word patent. Througout all his training, this Kat was told that it was most definitely "PAH-tent", and not "PAY-tent". But then maybe the EPO is right again, and the rest of us are all wrong...

Swedish Pirate Party wins EU parliament seat

The results of the European elections are out and the IPKat learns from today's Guardian that the Swedish Pirate Party ("Piratpartiet", their party logo is depicted on the left), which, inter alia, wants to legalise internet file-sharing and intends to overhaul copyright and patent laws, won one of Sweden's 18 seats in the European parliament. Stockholm News has more details and reports that with final results from 98% of the Swedish election districts counted, the Pirate Party secured 7.1% of votes. AFP cites one of the party's candidates, Anna Troberg, who told Swedish television on Sunday "Privacy issues and civil liberties are important to people and they demonstrated that clearly when they voted today."

The BBC gives us further background information on the Pirate Party's political agenda. It appears that the Pirate Party campaigns for free access to the internet and intends to reform copyright law and the patent system. Interestingly, the party's membership figures rocketed (tripled within a week) after the recent controversial Pirate Bay ruling by a Swedish court concerning online file sharing (see the IPKat's posts here and here), even though the Pirate Bay file-sharing website has no links with the political party. The BBC further cites Rickard Falkvinge, leader of the party, who said last night: "We are writing history and we are securing civil liberties in Sweden, Europe and the world."

The IPKat is politically impartial and also not quite certain what the Pirate Party's exact plans and suggestions are ("The Pirate Party wants to fundamentally reform copyright law, get rid of the patent system, and ensure that citizens' rights to privacy are respected"; see the party's website here), but this Kat is nonetheless intrigued how the Pirate Bay decision appears to have influenced Swedish voters.

A Study Guide to the Patents Act

Doug Ealey has been in contact with the IPKat about a book he has just had published, which he hopes will be useful for trainee patent attorneys preparing for their exams. The book, which has a particular emphasis on what is needed to pass P2, is a follow-up to the study guide that Doug published online last year (which the IPKat publicised here). The people at CIPA have obviously been paying attention, as they have now put their name to it and made a new 2009 edition available in hard copy form. It can be ordered from CIPA here. Doug says:

"The Study Guide to the Patents Acts sets out to achieve the opposite of such books as Visser and Hoekstra. Rather than provide exhaustive commentary on patent law for reference during the open book EQEs, it instead simplifies the law and commentary as far as possible to provide a bare-bones reference that can be readily learnt by students taking the closed-book UK finals.

The 2009 edition is now available in book form instead of online, with all proceeds going to CIPA. In the 2009 edition, the law section has been heavily updated to reflect both the full JEB syllabus and recent changes in law, and also now includes a new section devoted to revision and how to analyse and answer the P2 exam.

To complement the book, a free forum has been set up at http://studyguide.forumer.com/ for anyone to discuss any of the exams, and the forum also includes a revision schedule to help co-ordinate this process."

The IPKat, who has had a chance to see a review copy of the book, is happy to recommend it to trainees, who he thinks need all the help they can get in passing those tricky exams. Just remember that you can't take it into the exam with you, so some memorising and hard work will unfortunately still be required.

Downloaders not to be cut off after all - but Culture Minister won't be there to see it (not) happen

The BBC reports that, contrary to previous expectations, the Digital Britain report, due out on 16 June, will not call for serial downloaders to lose their broadband access under a 'three strikes and you're out' scheme. Instead, it will propose that the speed of their connections is slowed down. The (soon to be ex) Culture Minister, Andy Burnham said at yesterday's Music Week's Making Online Music Pay conference that the Government preferred to take 'technical measures' against downloaders, rather than cutting down their access. A spokesman later clarified:

"It is likely to include an obligation on ISPs to send out letters to people who are infringing copyright...What Mr Burnham also said was there was the likelihood that the MoU would be backed up by new powers for Ofcom to impose 'technical solutions' for repeat offenders if that process of sending out letters was not effective enough".

However, Andy Burnham is Culture Minister no longer, with Ben Bradshaw stepping into the role (also on the move is John Denham, the Secretary of State for the Department of Innovation, University and Skills, the parent department for IP matters).

The IPKat favours the move. Broadband access is increasing required to access goods and services and completely severing peoples' connections would seem rather too punitive. If the technical solution works, it could be a nice compromise. However, the timing of the launch of the report seems rather poor, with the new Minister being in the post for something like a week and a half.

A bit of blog news

It has been an exciting week for intellectual property blogs, what with the first full week of polling for Top Patent Blog (masterminded by Gene Quinn, right: see IP Watchdog here). At the time of writing, the excellent and highly-focused Patently-O is deservedly way ahead in both the Favourite Blog and Most Regularly Read Blog categories,  but the IPKat -- which is not a patent blog but a general interest IP blog -- isn't doing badly.  All the Kats are thrilled to be up there with the leaders, especially since it's not always easy for European patent blogs to get noticed on the other side of the Atlantic, where the domestic market is so well served.

Current leaders in the two categories (each of which features the 50 Technorati/Alexa highest-rated patent blogs) are as follows:

Favourite Blog

Patently-O (35.0%)

Patent Circle (10.6%)

IPKat (8.6%)

European Patent Case Law (7.5%)

Spicy IP (7.4%)

Most Regularly Read Blog [more than one vote may be cast in this poll]

Patently-O (52.5%)

IPKat (14.9%)

IP Watchdog (14.8%)

Patent Circle (13.5%)

Patent Baristas (12.5%)

271 Patent Blog (12.4%)

If you haven't voted yet, there's still time to do so. Just click here.  If nothing else, it's instructive to visit some of the listed blogs and check them out for yourself. There is some excellent information and indeed scholarship lurking out there in the blogosphere -- and it's all free.

Other IP blogs the IPKat has been perusing recently include the Italian (and sometimes English) ipFaber, operated by the law firm of the same name, and the Duets Blog ("Collaborations in creativity and the law"), written by a nine-person team with plenty of humour as well as insight. And let's not forget Beauty Marks, where Jessica Stone Levy shares a spot of well-crafted self-indulgence with her readers.  And if you have an interest in intellectual property in Poland, the IPKat's friend Berenika Depo (LDS Lazewski Depo & Partners) can help you. Her IP Blog provides some useful information about what's going on in that increasingly IP-active jurisdiction

This Lammy's not for the slaughter: innovation Minister opens his books

The IPKat has been reading with increasing alarm about the expenses claims made by the British Members of Parliament on whose goodwill the future of intellectual property-based investment and industry in the United Kingdom exists. That's why he is so relieved to learn that the Minister with responsibility for intellectual property, David Lammy MP, has nothing to hide. 

Right: David Lammy, showing he has nothing to hide.

David, whose name has not been tarnished by this ongoing scandal [see the Telegraph here. A Google search of the terms 'British', 'MPs', 'expenses' and 'scandal' scored 193,000 hits], has opened his expenses up for public scrutiny, inviting local journalists, residents of his Tottenham constituency and prominent community figures to inspect his Parliamentary account in the interest of transparency. Said the Minister a fortnight ago:

"The last couple of weeks have created an unprecedented crisis in people’s belief in politics, shaking everyone’s trust in politicians and Parliament. Since the beginning of the expenses debate I have been working hard with the Parliamentary authorities to open my expenses claims to public scrutiny and I intend to publish them on my website for everyone in Tottenham to see at the earliest opportunity.

... Next week, I will be publishing my expenses in full on my website and asking for copies to be placed in Tottenham’s libraries for my constituents to review. I also intend to regularly publish all new expenses I incur in a timely way [The Kat couldn't find them when he last looked, but he's sure they'll be there soon].

 ... My expenses have been wholly incurred supporting my work as Tottenham’s MP, and in running a busy office which serves residents from one of the most deprived communities in Britain.

I am committed to seeing this system of Parliamentary expenses reformed, and welcome the fact that in the coming weeks we will have the chance in Parliament to elect a new Speaker who must be dedicated to rebuilding the public’s trust in politics and Members of Parliament".

David's general record over recent years can be found here. Says the IPKat, apart from the fact that he has apparently spent nothing on cats, there is little to comment on.  Adds Merpel, an extra bonus is that you can follow David Lammy here on Twitter ...

"If you have something to offer, someone will learn something from you"

The title of this piece, as every scholarly feline knows, is from chapter 24 of The Catcher in the Rye, the classic novel by the reclusive one-hit-wonder JD Salinger. Acute readers of the popular media will have noted that legendary literary lion has roared -- and the world of intellectual property has heard his call. The IPKat's friend Annsley Merelle Ward takes up the tale:

"Any “marvelous peace in not publishing” that JD Salinger, the reclusive author of The Catcher in the Rye, might have enjoyed seems momentarily at an end. As a fierce protector of his intellectual property, Salinger has instructed his lawyers (Davis Wright Tremaine, New York) this week to file a lawsuit in the US District Court in New York, claiming that a sequel entitled 60 Years Later: Coming Through the Rye infringed copyright in “both his novel and the character Holden Caulfield”. The suit aims to prohibit the publication, sale, distribution, advertisement or other dissemination of this sequel written by JD California and published by UK-based Windupbird Publishing, owned by Swedish company Nicotext. Windupbird, Nicotext and US SCB Distributors are all named as defendants in the suit.

On Monday Fredrick Colting, the founder of Nicotext, referred to the lawsuit as “completely ludicrous”, as reported in the Swedish paper The Local. Colting stated that even though 60 Years Later “was written in Salinger’s style ... words and imagination belong to everyone. You can’t copyright style. Otherwise, we wouldn’t have any books left”. However paragraph 4 of the lawsuit claims that 60 Years Later has gone further than this in copying The Catcher in the Rye’s structure, locations, characters and voice.

Assuming that Salinger’s lawyers can make out a prima facie case for copyright infringement, their main battle will occur later in disproving that the US affirmative defence of fair use does not apply -- specifically, that 60 Years Later is not a parody of Catcher. Fair use is a defence to copyright infringement if use of copyright material was for a limited transformative purpose. US courts will look to the four factors outlined in section 107 of the Copyright Act 1976 to determine whether a work is a parody: (1) the purpose and character of the use in 60 Years Later; (2) the nature of the copyrighted work; (3) the amount and substantiality of the copying; (4) and the effect of the use upon the potential market for or value of Catcher. It is argued that Salinger’s lawyers may have most difficulty in arguing the first factor or what is known as the “transformative test”, i.e. that 60 Years Later did not sufficiently transform Catcher into a new work. They also may encounter difficulty in arguing the third factor, i.e. that 60 Years Later copied a significant qualitative and qualitative amount from Catcher.

The preliminary hearing is expected at 2:30 pm on Monday 8 June 2008 before presiding judge Judge Deborah A. Batts [not Katts?]".

Annsley looks forward to seeing how quickly this case will be settled or, if not, how the arguments for the protection of a literary character under copyright will be advanced. Merpel says, how fortunate we are in the legal world of IP litigation to have our own guaranteed sequels -- we call them "appeals" ...

Reports on this dispute here and here
The author of 60 Years Later here
60 Years Later: the book
Salinger’s last public interview here
Cat Salinger has a sinking feeling here

"If you're happy and you know it ..."

Above: in an attempt to improve staff morale and working conditions, OHIM's new suite of offices seeks to enrich the experience of working in Alicante

The IPKat has received many peculiar communications in his time ... and here's another. The source is said to be, quite simply, "OHIM", the Office for Harmonisation in the Internal Market which is responsible for administering the Community trade mark and Community design systems. This communique reads as follows (with kittenish embellishments in red):

"The results of the OHIM staff opinion survey, carried out by independent consultants Towers Perrin [who seem to be risk management specialists], have now been presented to OHIM's Enlarged Management Committee [the IPKat hopes it's only the Committee that's enlarged, not the managment] and the Staff Committee, and the report is available for consultation by all staff.

The key findings of the survey show that OHIM staff are in general very satisfied with working conditions, training and the work they perform. Negative perceptions emerged with regard to OHIM's image, communication [always a problem with a multilingual organisation + EU red tape] and top management [we all know we can do better than the bosses ...].

The consultants found that there was a strong "Us" and "Them" divide, with positive opinions about colleagues and departments ("Us") and negative impressions about management at all levels ("Them") [the IPKat suspects that "us" is actually positive. In English we call it cameraderie or esprit de corps].

Staff, particularly those who had been with OHIM for a long time, were concerned that change had occurred at too fast a pace [it's SO disconcerting when the refectory menu changes before you've had a chance to try all those options], with insufficient communication or consultation [the longer you work for an organisation without becoming part of the management structure, the more likely you've been passed over and are cultivating sour grapes]. Views among newer staff tended to be more positive [don't worry -- they'll soon grow out of it].

The Management Committee remains committed to the main policies implemented so far, such as the staff and e-Business policies. Thanks to these policies and the active engagement of staff the Office has obtained significant achievements in service levels and customer satisfaction, as demonstrated, year on year, by the results of the annual User Satisfaction Survey [it's more important to please the customers: there are far more of them and they pay for the privilege of using OHIM. Staff are fewer in number and have to be paid ...]. Nevertheless, the Management Committee acknowledges the concerns expressed and the results of the survey will be carefully analysed [that doesn't actually commit the Management Committee to do anything]".

"Whiter shade ..." -- we await their Lordships' pleasure

The IPKat learned from the BBC this April that the copyright dispute over Procol Harum's classic "A Whiter Shade Of Pale" had been appealed to the House of Lords (the UK's highest appeal court, soon to be rebranded the Supreme Court). You can read all about the dispute at first instance here and in the Court of Appeal here. The dispute arises from the claim by Matthew Fisher, who played the organ on the track, that he is entitled to a share of royalties dating back to 1967.

Right: the Lords are leaping with excitement over the Procol Harum appeal -- but when will they share their ruling with us?

What the IPKat wants to know is whether any of his readers can tell him when the ruling of their Lordships might be expected. He's checked the House of Lords website for exciting developments, but this information was not among them. If you know, can you please post the information below or email the IPKat here.

Merpel says, how strange it is to think that the average age of the Law Lords hearing this appeal is lower than that of the pop group litigants ...

Watch and listen to "Whiter Shade of Pale" here ...
... and here on the ukulele

Bilski goes to the Supreme Court

The IPKat learns that Bernard Bilski's attempt to get a patent at the USPTO is to be heard by the Supreme Court of the United States.  More details are available here and here.   Whether this will sort out the mess that the USPTO is currently in about the boundaries of patentability is anyone's guess.  In any case, we will apparently have to wait until October this year at the earliest to find out.  

Who owns the Black Sabbath trade mark?

Thank you, veteran IPKat friend Simon Haslam (Abel & Imray), for sending in this link to news that 60 year old Black Sabbath singer Ozzy Osbourne (right) is suing the band's guitarist Tony Iommi over royalty payments. Osborne alleges that Iommi has falsely claimed entitlement to the sole rights to the band's name, thus losing him royalties from merchandise sales. An unspecified sum is sought by way of damages and lost profits, as well as a declaration is a half-owner of the trade mark.  Iommi, who registered the Black Sabbath trade mark in the US in 2000, denies liability and says Osbourne legally relinquished rights to the band's name in the 1980s.

Osbourne is reported as saying he believed all four original members of the band should share Black Sabbath's name equally. His lawyer adds that even if he did agree to relinquish his rights, he took a major role in the band's direction and success after rejoining it in 1997.

The IPKat promises to keep an eye on this action, the latest an a long line of disputes between elderly band members who have metamorphosed from rock icons into cuutural antiquities. Merpel says she would hate to have the responsibility for sifting through the memories of the group's various members in the hope of assembling a coherent body of evidence as to what they said and did some time last century.

Black Sabbath Community trade mark here (registered for, among other things, waste backets, planters, vases, candlesticks ...)

Madrid System Users unite! You have nothing to lose but your delays...

No stranger to early mornings, the IPKat reported in the course of his INTA escapades on the breakfast meeting of the LinkedIn Madrid Protocol Group, at which a group of seriously concerned trade mark practitioners expressed their anxieties concerning certain facets of the operation of the international trade mark registration system. One of the post-INTA developments is the formation of a Madrid System Users' Google Group (email madrid-system-users-group@googlegroups.com) to enable members to exchange information more swiftly and efficiently with one another. Announcing this development, Alfred Strahlberg writes:

"As discussed at the breakfast meeting, users of the Madrid system are encountering lengthy delays of up to 12 months and more in recording changes. After 18 months I am still waiting for basic typographical errors to be rectified by WIPO in connection with six international registrations. In the Files section I have attached an example of a delayed case involving IR 975173, requesting the deletion of electric hair dryers, which was received by WIPO on December 9, 2008 whose recordal is not even pending. The same limitation relating to a CTM application was recorded within a few weeks at OHIM. Petitions to limit the specification of IR 875647 MYCOSMOS and 862157 mycosmos (fig.) that were requested by fax on March 20, 2008 and acknowledged by WIPO have also not been actioned. These delays are unacceptable.

Obviously WIPO does not have sufficient staff and needs to get its act together from an IT point of view.

Members are invited to send me examples of delayed recordals.

I have for years advocated the electronic filing of recordals via the WIPO website that would reduce the turnaround time.

I have written to Judith Zahra, Officer-in charge of the International Registrations Division at WIPO, asking her what is being done to shorten the backlog".

If you'd like to share your experiences with the Group, as well as any bright ideas for making Madrid easier and more enjoyable to use, please feel free to do so. If you need to communicate with Alfred, you can email him here. 

Delays here and here
The Great Delayer here
Lay Lay Delay here

Pirate Bay and dual use disruption

The IPKat's friend, Advokat Mats Björkenfeldt (Hjalmar Petris Advokatbyrå HB, Stockholm, Sweden), has set down some of his thoughts on the recent Pirate Bay decision (see earlier IPKat posts here, here and here; update on The 1709 Blog here). Says Mats:

"The Pirate Bay judgment (and the discussion in Europe as far as I know) lacks perspective on peer-to-peer networks and innovation. Perhaps the Svea Court of Appeal will reverse this decision, if the judges read professor Michael A. Carrier´s execellent new book Innovation For the 21st Century, Harnessing the Power of Intellectual Property and Antitrust Law.

With regard to pioneering peer-to-peer and other disruptive dual-use technologies [i.e. those which have both infringing and non-infringing uses] his recommendation are as follows.

“The innovations promised by dual-use technologies are revolutionary. They promise to transfer the way we consume entertainment and interact with each other, and possibly even restructure our society. But such technologies are continually under assault in courts´P2P analyses. They are evaluated in their infancy when their capabilities can barely be discerned. And they do not stand a chance against the widespread, concrete instances of infringement offered by the copyright holders. Given the silent consequences of a vanquished technology and the carcasses of innovators strewn on the side of the technology highway, courts must alter their analysis to better appreciate innovation.

Sony [Mats explains: the US Supreme Court ruling 1984 that the manufacturer of the VCR was not liable for copyright infringement] offered just this defence. It understood the various asymmetries that challenge innovation. It left the door open for Congress to narrowly address particular technologies. It has accompanied an explosion of dual-use devices. And it even assisted antitrust law in favoring disruptive technologies that could reduce the market power of entrenched companies.

Even if music copyright owners' existing business models are significantly threatened by P2P technologies, creativity is not. Most artists do not receive any royalties from the recording industry. In any event, copyright owners can always sue direct infringers or urge Congress to act.

Sony also is consistent with an error-costs analysis. Courts´ mistaken approval of technologies allowing copyright infringement may harm existing business models but often will not affect creativity. Erroneous condemnation, in contrast, directly harms innovation by stifling technologies.

In the end, the case for innovation is at least as strong today as it was at the time for Sony. In particular, disruptive innovation plays a starring role in the story of P2P. It explains the recording industry's failure to recognize the potential offered by Napster in 2000. And it is threatened by the complicated tests that court have promulgated in the area of secondary liability. Although we may never realize what we are missing, the future of innovation – and thus our economy and livelihoods – depends on a return to Sony”.

Don Dodge at Microsoft noted that professor Carrier “explains why and how to better promote innovation in the 21st century”. I agree and hope that the judges in Stockholm will read his book".

These comments caught my eye because I was just in the process of reading Michael Carrier's book myself. The thesis of the author, a Rutgers professor and former litigator with Covington & Burling, as viewed through the publisher's web-blurb, is this:

"In recent years, innovation has been threatened by the United States legal system. Much of the blame can be attributed to the antitrust and intellectual property laws. Innovation for the 21st Century seeks to reverse this trend, offering ten revolutionary proposals, from pharmaceuticals to peer-to-peer software, to help foster innovation. Michael A. Carrier illustrates the benefits of improving the patent system and incorporating innovation into copyright and antitrust law. He also dips into a rich business literature to import ideas on "disruptive innovation" and "user innovation." And he replaces the 20th-century view that the IP and antitrust laws are in conflict with a new 21st-century framework that treats them as collaborators".

The author's thesis, like his writing, is enticingly persuasive (if inevitably Americo-centric). Yet I think there is room for a competing perspective. It's precisely because established industries do recognise the potential of disruptive innovation that they fight it tooth and nail. They have every reason to do so. For one thing, it gives them an opportunity to obtain the last benefits of an old business model before they move to a new one. For another, it enables them to test current legal rules to the point of destruction, thus enabling them, the proponents of the new disruptive innovations and legislators themselves to identify more accurately the fulcrum around which intellectual property protection and pro-competitive antitrust provisions must turn in order to retain their balance. 

At the time you live through any event, a few short years seem like an eternity. But viewed through the eyes of history, the birth-pangs of the new technologies are short.  The historian of the 2050s will probably consign the transitions from vinyl to cassette, thence to CD and DVD, then to downloads, DRM and P2P, to a few short sentences.

Bibliographic details. Published by Oxford University Press 2009, US$65. ISBN13: 9780195342581, ISBN10: 0195342585. Hardback, 412 pages. Rupture factor: low. Book's web-page here.