For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Friday, 10 February 2012

Friday fantasies

Hurry -- for Gurry!
Hurry for Gurry! Earlier this week the IPKat reported on the World Intellectual Property Organization (WIPO) survey, which provides a golden opportunity for people who use its services, or who are otherwise affected by its many and varied activities, to tell WIPO exactly what they think of it. The Kat since discovered that the closing date for completing the stakeholder survey -- one of the boldest initiatives the organisation has launched under the leadership of Francis Gurry -- is Monday 13 February. Since no specific time during that day was indicated as the switch-off moment, this Kat urges everyone to make sure they complete the survey by Sunday 12 February to be on the safe side.


A tale of two seminars. The 1709 Blog has two free seminars coming up. The first, on Tuesday 21 February, is on the recent eye-catching Red Bus copyright decision in the Patents County Court, England and Wales. With Michael Edenborough QC and Brigitte Lindner speaking, it's no surprise that it's nearly fully-subscribed. There are still a few spare seats before the reserve list is opened -- click here for details and you might still be able to get in!    The second seminar, on Tuesday 3 April, is a breakfast event at which William Patry speaks on "How to Fix Copyright", the challenging and question-begging title of his latest book.  This event is being kindly hosted at the London office of Bird & Bird LLP [Merpel is most amused to discover that Bird & Bird tweets at @twobirdsIP]. Full details of this event, which is filling up fast, plus sign-up details, can be found here.


Talking tongues. On Wednesday this Kat reported on the latest intellectual property-flavoured dispute to be referred to the Court of Justice of the European Union for a preliminary ruling, Case C-657/11 Belgian Electronic Sorting Technology (BEST) v Bert Peelaers and Visys NV. The Kat was wondering what the background to this dispute might have been.  Good news is that the much Kat-patted Chris Torrero has managed to unearth the original judgment leading to the reference; bad news, if you are as linguistically challenged as this Kat, is that it appears to be in Dutch. Can any Dutch-speaker come to the Kat's rescue and summarise it?


From the thoughtful pen of the IPKat's friend Ruth Soetendorp comes this little piece which, Ruth suggests, may be of interest to IPKat readers, "especially fashionistas and those of a certain age" [Merpel is shocked by the notion that this weblog might have readers of an uncertain age, though she's sure they are quite uncertain about lots of other things]. Says Ruth:
Sounds like a sun-resistant film ...
"I've recently become aware of glossy mag cosmetic ads including reference to their patented technology. The 29 January 2012 Sunday Times STYLE magazine published a two page spread entitled 'Miracles can happen -- the science behind anti-aging creams'. It mentioned tie-ups between cosmetic houses and research institutes - e.g. L'Oréal and Max Planck Institute, Berlin. It described endeavours by Fujifilm who, since the demise of the 35mm camera, have been diversifying into health and beauty. They are using their knowledge of collagen and antioxidants in making sun-resistant film to make creams that protect skin against the ageing effects of UV radiation. Newcastle University cell regeneration research and Manchester University's research tie-up with Boots [Merpel used to have boots with laces. Was that a tie-in, she wonders] to produce a top-secret anti-ageing product are both included. Unilever and Procter & Gamble, Shiseido and Elizabeth Arden are identified among the big players whose researches are dedicated to making looking in the mirror a more pleasant experience. 
In the closing sentences the article's author (Lois Rogers) asks "are we on the brink of a breakthrough of a truly anti-ageing product, and if so will women be prevented from using it because regulators say it is a medicine?" Is this 'regulators' impeding access for health and safety reasons. Or patent 'regulators' disincentivising anti-wrinkle breakthroughs by classifying them as methods of treatment, and refusing patents? Julie McManus, director of science and regulatory affairs at  L'Oréal, says 'Medicines are for ill health. Our products are designed to work on existing pathways in healthy skin that may not work as effectively any more because of the effects of ageing'. 
The cosmetic companies have a conflict. They crave the respectability of well researched scientific breakthrough, but only so long, I imagine, as the resulting innovations can be patented as cosmetics".
The IPKat is amused at the thought that, just as we have seen convergence in the telecoms and electronics sectors, with phones that take photos, computers that carry phone calls virtually everything that runs on batteries now playing tunes and running computer programs, we are seeing the same thing here, where the healthcare, cosmetics, food, fashion and leisure/lifestyle sectors are increasing finding points of contact.  Thoughts, anyone?


Thanks again to the efficiency of the UK's Intellectual Property Office, the Kats have received notification of yet another set of questions which those inquisitive Belgian judges (this time the Cour de Cassation itself) to the Court of Justice of the European Union for a preliminary ruling, This time it's Case C-661/11 Martin y Paz Diffusion SA v David Depuydt and Fabriek van Maroquinerie Gauquie SA. The case concerns the exclusive right conferred on the proprietor of a registered trade mark and the circumstances in which that right can no longer be asserted against a third party in respect of all goods covered by it at the time of registration. The questions referred go like this:
"1.1. Must Article 5(1) and Article 8(1) of ... Directive 89/104 ... to approximate the laws of the Member States relating to trade marks [which may as well not have been repealed and re-enacted for all the notice the courts take of its replacement, Directive 2008/95 of October 2008] be interpreted as meaning that the exclusive right conferred by the registered mark can definitely no longer be asserted by its proprietor against a third party, in respect of all goods covered by it at the time of registration:

  • where, for an extended period, the proprietor has shared the use of that mark with that third party in a form of co-ownership for part of the goods covered?
  • where, when that sharing was agreed, the proprietor gave the third party its irrevocable consent to use of that mark by the third party in respect of those goods? [Hmm. The IPKat thinks Question 1.1 is conflating issues of enforcement (assertion of rights) with those of validity of registration (no exclusive right at date of registration), though he can't be sure without knowing the background].

1.2. Must those articles be interpreted as meaning that application of a national rule, such as that according to which the proprietor of a right cannot exercise that right in a wrongful or abusive manner, can lead to a definitive prohibition on the exercise of that exclusive right for part of the goods covered or as meaning that that application must be restricted to penalising the wrongful or abusive exercise of that right in another way? [Doesn't the Directive just deal with trade mark law? National laws on abuse of rights, equitable estoppel etc must surely prevail]

2.1. Must Article 5(1) and Article 8(1) of ... Directive 89/104 ... be interpreted as meaning that, where the proprietor of a registered mark ends its undertaking to a third party not to use that mark for certain goods and thus intends to recommence that use itself, the national court can none the less definitively prohibit it from recommencing that use of the mark on the ground that it amounts to unfair competition because of the resulting advantage to the proprietor of the publicity previously made for the mark by the third party and possible confusion in customers' minds, or must they be interpreted as meaning that the national court must adopt a different penalty which does not definitively prohibit the proprietor from recommencing use of the mark? [Goodness! If a proprietor can be prohibited from ever resuming use of a mark previously licensed to another, a generation of licensing wisdom and accepted practices will vanish in a moment -- though one can imagine all sorts of facts in which a temporary restriction or prohibition would be perfectly reasonable]

2.2. Must those articles be interpreted as meaning that a definitive prohibition on use by the proprietor is justified where the third party has, over a number of years, made investments in order to bring to the attention of the public the goods in respect of which the proprietor has authorised it to use the mark?". [Again, without knowing the facts, it's difficult to make submissions at all.  Doesn't every third party that advertises and markets its goods bearing third party marks make "investments in order to bring to the attention of the public"?]
As usual, if you would like to tell the UK government how they should respond to this reference, you can email Policy at policy@ipo.gsi.gov.uk before next Thursday, 16  February 2012.


It has been drawn to the attention of the IPKat that the European Commision's Dictatorate Directorate General for the Internal Market and Services, DGMARKT, now has a new head for its Industrial Property Unit D2, Kerstin Jorna.  The IPKat wishes Kerstin the very best of luck in her new job and assures her that he, Merpel and the rest of the IP community will be happy to tell her how to do it .  As an aside, it has been noted that, despite half a century of increasing harmonisation in what is now the European Union, the name 'Kerstin' is still spelled in different ways. If you plan to search KJ online, neither Kirsten not Kirstin will do.

2 comments:

Jasper Groot Koerkamp said...

Interesting: a referral from Belgium - and a link to a Dutch government website.

The referring Belgian supreme justice asks the Court the question:
"should the expression "advertisement" of Article 2 Regulation 84/40/EEG of 10 September regarding the harmonisation of the legislative and administrative rules of the Member States related to misleading advertisements, and of article 2 Regulation 2006/114/EG of 12 December 2006 related to misleading advertisement and comparing advertisement, be explained such that it comprises, on one hand, the registration and the use of a domain name and, on the other hand, the use of metatages in metagdata of a website?"

Background:
Two parties, BEST and Peelaers, sell sorting machines with laser technology. BEST has registered "www.bestlasersort.com" as domain name and a year later as trademark. Peelaers arranges [what?] such that they appear second witht the search term "best laser sorter".
The [Belgian, not Dutch] judge judges that the registration or use of a domain name, nor the use of metatags in the metadata of a website are advertisement in the sense of the law on commercial practice of 1991. The trademark BEST is revoked as it is not distinctive.
BEST ask for appeal for revocation ("breaking") the decision.

Michael Lin said...

"Cosmeceuticals" is a term that has been popular as of a few years ago to highlight the convergence of the cosmetics and pharma industries. Oftentimes the cosmetics companies are including technologies which reduce wrinkles by, for example, reinvigorating the collagen underlying the skin by "nourishing" it back to health.

The US FDA does regulate certain skin ingredients, and thus I think that the health and safety regulators are already more involved than most people realize. Many potentially-beneficial skin cosmetics are not approved for sale in various countries because of potentially adverse side effects, or because their ingredients are not approved by the local FDA for use without a prescription, directly on skin, etc.

So I think the companies involved typically would not merely file for the method of treatment of the symptom. Usually the companies you list are extremely advanced in their approach to IP, filing for many overlapping rights whenever possible. Patents for the key ingredient, specific formulations, methods of manufacture, and methods of use are all commonplace. In addition, they will use a combination of trademarks for the key ingredient and tag-line, copyright for the commercial, supply contracts for key ingredients or equipment, and trade secrets (key suppliers, precise manufacturing conditions, etc.) as well.

Thus, if the patent office rejects the Method of Use as being unpatentable subject matter, this may not hurt them too much, as they may have protected the product in at least 3-4 other ways as well. This is especially true for the bigger inventions/innovations that will be the basis for the next generation of anti-ageing creams, lotions, etc.

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