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, 21 September 2012

Friday fantasies

Don't forget to check out the IPKat's Forthcoming Events page! New events are added quite regularly and there may just be one that takes your fancy.


Freshly back from Athens, where he was attending the annual MARQUES Conference, this Kat just wants to say a big "thank you" to the organisers for making his brief stay so very pleasant and for being so very helpful.  If you love European trade marks, missed the conference and want to find out a bit about what happened, the Class 46 blog has posted a series of live reports on some of the sessions, which you can read here, here, here, here, here, here and here.


While on the subject of trade marks in Europe, the IPKat has just been informed of a forthcoming reference by the German Bundesgerichtshof  of some fresh questions for the Court of Justice of the European Union to answer.  This is Case C-360/12 Coty Prestige Lancaster Group GmbH v First Note Perfumes N.V.  The questions in question, as it were, are as follows:
Will the Advocate General's
Opinion smell better than
the defendant's goods?
1. Is Article 93(5) of Regulation 40/94 [on the Community trade mark] to be interpreted as meaning that an act of infringement is committed in one Member State (Member State A), within the meaning of Article 93(5) ... where, as a result of an act in another Member State (Member State B), there is participation in the infringement in the first-named Member State (Member State A)? 
2. Is Article 5(3) of Regulation ... 44/2001 [the Brussels Regulation on jurisdiction and the enforcement of judgments] to be interpreted as meaning that the harmful event occurred in one Member State (Member State A) if the tortuous act [No, says Merpel.  The questions may be tortuous, and the Court's ruling certainly will be, but the harmful act had better be tortious if it is the subject of legal proceedings] which is the subject of the action or from which claims are derived was committed in another Member State (Member State B) and consists in participation in the tortuous act (principal act) which took place in the first-named Member State (Member State A)? 
If you would like to tell the UK Intellectual Property Office what you think, and whether the UK government should make representations, email Policy at policy@ipo.gsi.gov.uk before 27 September 2012.  If you'd like to know about the background to this reference -- so would we!  If you have any interesting information about the facts of the underlying case, please help us share them with our readers. Given the fact that Coty Lancaster Prestige makes expensive and sought-after scents and that First Note is a sister company of Bellure, this Kat suspects that it is something to do with smell-alike perfumes being sold by reference to the names of leading brands which they emulate, but he's not prepared to guess any further than that.


Sir William Blackstone
Still on the subject of trade marks, the International Trademark Association (INTA) is organizing an advanced-level two-day conference, Trademarks in Transactions. This programme is intended to help a wide swathe of intellectual property professionals protect their trade marks in corporate transactions and commercial agreements. The conference will take place on 11-12 October at the Renaissance Blackstone [Merpel is impressed that this hotel is named after so famous a lawyer] in Chicago. Topics include

  • Advanced issues in drafting and negotiating trade mark licences. 
  •  Drafting and negotiating sponsorship agreements. 
  • Legal, business, and tax issues involving related-party transactions. 
  •  Handling trade marks and trade mark licences in bankruptcy. 
  •  Trade mark due diligence in mergers and acquisitions and in other complex corporate transactions. 
  • Drafting and negotiating transitional trade mark licences, trade mark representations and other provisions in M&A transactions. 
  •  Litigation avoidance transactions.
  • Drafting and negotiating settlement and co-existence agreements. 

IPKat team member Neil will be among a global list of speakers, along with katfriends Roland Mallinson and Richard Watts. Further details about the conference can be found here.


Celebrated artistes shaken, woken, as they lose their homes. The European Commission has approved under the EU Merger Regulation the proposed acquisition of EMI's recorded music business by Universal Music Group. According to the Commission this transaction, as initially notified, would have increased Universal's size in a way that would likely have enabled it to impose higher prices and more onerous licensing terms on digital music providers which could in consequence have negatively affected opportunities for innovative providers to expand or launch new music offerings, reducing consumer choice of digital music, as well as cultural diversity in the European Economic Area (EEA). To meet these concerns, Universal offered to divest itself of EMI Recording Ltd, which holds the iconic Parlophone label (home to artists such as Coldplay, David Guetta, Lilly Allen, Tinie Tempah, Blur, Gorillaz, Kylie Minogue, Pink Floyd, Cliff Richard, David Bowie, Tina Turner and Duran Duran). The divestments also encompass EMI France (which holds the David Guetta catalogue), EMI's classical music labels, Mute (home to The Ramones and Jethro Tull), Chrysalis (home to Depeche Mode, Moby and Nick Cave & The Bad Seeds), various other labels and a large number of local EMI entities. The divestment package also includes Coop, a label licensing business selling artists such as Mumford and Sons, Garbage and Two Door Cinema Club. In addition, Universal committed to selling EMI's 50% stake in the popular Now! That's What I Call Music compilation JV and to continue licensing its repertoire for that compilation in the next ten years [at this point readers might be wondering if there's anything left ...]. Universal finally committed not to include Most Favoured Nation (MFN) clauses in its favour in any new or renegotiated contract with digital customers in the EEA for ten years. MFN clauses oblige digital customers to extend any favourable term granted to Universal's competitors to Universal. This commitment lets Universal's competitors negotiate more freely with digital customers and further levels the playing field between these competitors and Universal. The rights to be divested are worldwide and cover both digital and physical music [the IPKat's not quite sure what 'physical music' is, but it does sound like fun!]. This will ensure a viable and competitive exploitation of the divested artists and catalogue by the purchaser of the assets. The Commission concluded, in light of these commitments, that the transaction would no longer raise competition concerns and would  have no negative effect on consumers. According to Commission Vice-President in charge of competition policy Joaquín Almunia:
"Competition in the music business is crucial to preserve choice, cultural diversity and innovation. In this investigation, we have paid close attention to digital innovation, which is changing the way that people listen to music. The very significant commitments proposed by Universal will ensure that competition in the music industry is preserved and that European consumers continue to enjoy all its benefits." 
Thanks, and a big katpat, go to Magali Delhaye for preparing this note.  Want to know more? You can find the full press release here and FAQs on the subject here.


Irbesartan: the subject
of Sanofi's disputed SPC
In  case you thought the Kats missed Actavis Group PTC EHF & another v Sanofi Pharma Bristol-Myers Squibb SNC [2012] EWHC 2545 (Pat), another thumpingly stirring epic judgment of Mr Justice Arnold in the Patents Court, England and Wales, let us assure you that nothing is further from the truth.  The upshot of this decision -- which covers supplementary protection certificates (SPCs) for pharmaceutical patents -- is that two more questions relating to SPCs will be winging their way to the Court of Justice of the European Union (CJEU) in Luxembourg, which has so far spurned some deliciously simple opportunities to demonstrate its ability to handle patent law by replacing legislative uncertainties with judicial ones.  This case, which is likely to feature more fully in a later Katpost, has two nubs.

The first relates to Article 3(a) of the SPC Regulation, which states that an SPC shall be granted in respect of a patent when, on the date of the application for it, "the product is protected by a basic patent in force". Arnold J's first question to the CJEU, at [74], is simplicity itself:
"What are the criteria for deciding whether 'the product is protected by a basic patent in force' in Article 3(a) of the Regulation?"
The second is found at [92] where Arnold J states:
"It appears ... that the Dutch Patent Office has adopted the opposite interpretation of [the CJEU's ruling in Case C-322] Medeva to that adopted by the UK Intellectual Property Office, namely that it prohibits the grant of more than one SPC per patent regardless of the number of products claimed in the basic patent. In Case AWB 10/4769 Georgetown University v Octrooicentrum Nederland (11 July 2012), which is a parallel case to the Georgetown case in this country, the Rechtbank 'S-Gravenhage (Judge van Walderveen) held that the correct interpretation of Article 3(c) was unclear and decided to refer a question to the CJEU provisionally worded as follows:
    "Does [the Regulation], more specifically Article 3(c), in the situation in which multiple products are protected by (the claims) of a basic patent, preclude the proprietor of the basic patent being issued a certificate for each of the products protected?" ...
Arnold J liked this question so much that [at 96] he provisionally decided to ask it too.  The Kats will be keeping an eye out for further developments, so watch this space.

1 comment:

Anonymous said...

I wish someone would ask "Does [the Regulation], more specifically Article 3(c), in the situation in which multiple products are protected by (the claims) of a basic patent, preclude the proprietor of the basic patent being issued a certificate for each of the products protected?

And, when will someone ask what the S in SPC stands for?

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