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.

Tuesday, 31 January 2012

Eye of Newt, Eye of Tiger: is this Gingrich's Macbeth Moment?

Macbeth's bid for power was thwarted
by ambition, pride and a disregard
for the law.  Is Newt Gingrich about
to follow suit?
The animal kingdom has its musical dimension.  The song of the nightingale, the mysterious music of whales, the mewing of arctic seagulls, even the synchronised barking of dogs, have all been the subject of comment. The world has however heard little of the song of the newt -- till now. In an article for the Telegraph, "US election 2012: Newt Gingrich faces lawsuit for using 'Eye of the Tiger' theme tune", by Amy Willis, the IPKat reads as follows:
"Newt Gingrich, the Republican candidate whose star has been waning in the Florida polls this week, is being sued for his use of the song Eye of the Tiger during political rallies and public events. Court documents were filed in Chicago on Monday by composer Frank Sullivan, a co-writer of the Grammy-award winning anthem, citing copyright infringement. Mr Sullivan registered ownership of the song in 1982. Gingrich has used the tune to whip the campaign crowds into a frenzy as he walks on stage at rallies to address his supporters. ...  The song became a household No 1 in 1982 after the release of the [Rocky III] film, starring Sylvester Stallone.
The law suit, lodged in a federal court by Rude Music Inc, a music company owned by Mr Sullivan, cites copyright infringement by Gingrich as far back as 2009. In addition to Mr Gingrich, the complaint names his campaign, Newt 2012 Inc, and the American Conservative Union, an advocacy organisation, as defendants.

The complaint states that the alleged violation is intentional because Mr Gingrich is "sophisticated and knowledgeable" concerning copyright laws. In the five-page court document, it notes that Mr Gingrich's criticism of the Stop Online Piracy Act during a debate in South Carolina, demonstrated his knowledge of copyright laws [Merpel thinks that some readers of this blog, among others, would suggest that his opposition to SOPA demonstrated how little he knows about copyright -- but that's another matter!]. During the campaign he said: "We have a patent office, we have copyright law. If a company finds it has genuinely been infringed upon, it has the right to sue." 
Rude Music Inc has requested an end to unauthorised use of the song by the Gingrich campaign, and that Rude Music Inc is awarded damages for the infringement. 
A Gingrich campaign spokesman could not immediately be reached for comment".
The IPKat and Merpel will be watching for developments.

More about eyes of newts here
Tiger's eyes here and here
Cat's eyes here

IP Protect Expo: a chance to learn, a chance to chat

Have you heard of the IP Protect Expo? No? Nor had the IPKat, until Ian Shircore told him all about it.  This event is coming up on 28 and 29 March 2012 in the Gallery Hall, Business Design Centre, London.  What's it all about? Let Ian explain:
"IP Protect Expo 2012: Bringing the IP world to London

The problem is The Gulf. Not the geographical one, but the gulf between the theory underlying IP issues and the day-to-day practice of dealing with the fakers, chancers and organised crime gangs who see their life’s work as piggybacking on other people’s creations.

To get the legal experts, the brand or rights owners, the investigators and the police or trading standards people all focused on the same problems at the same time is usually impossible [this is the conventional wisdom -- in the UK at any rate -- and it's not just a matter of there being no convenient interface protocol between them: it's also the result of all of these people having more than one thing to do at a time, and everyone's priorities are different]. Yet there is obviously a great deal to be gained from swapping stories and comparing notes about what the criminals are up to and how they can be stopped.

And it was this simple idea – that there ought to be an international forum where people from every aspect of the intellectual property business could get together and exchange tips, techniques and experiences – that led to plans for the first IP Protect Expo, which takes place in London on 28 and 29 March 2012.

From the germ of an idea 12 months ago, this has already turned into a high profile international event. It will be opened by Baroness Wilcox, the UK government’s Minister for Intellectual Property and it will involve many of the biggest – and most put-upon – global brand owners, from Unilever, Beiersdorf and GlaxoSmithKline to Epson, Tiffany and Estee Lauder.

Many IPKat readers will be aware of the leading role in tackling fakes taken by the UK’s influential Anti-Counterfeiting Group (ACG). The ACG’s involvement, as co-host of IP Protect Expo 2012, has done a lot to help the fledgling event shape a genuinely useful programme of specialist seminars and gain immediate international credibility.

As a result, the organisers are already facing the problems of success – starting a waiting list for would-be exhibitors who want stand space and worrying about whether the excellent balconied hall at the Business Design Centre may have been too conservative a choice of venue. On the other hand, as a new event in an untried format, it was not guaranteed to attract the world’s attention as it has. No-one was seriously expecting to sell stand space to commercial exhibitors from Australia and Eastern Europe, alongside the security technology vendors, investigators and legal firms from closer to home.

By bringing together brands and rights holders from many different industries, as well as law enforcement and anti-counterfeiting experts from around the world, IP Protect Expo puts an important new date in the calendar for the whole industry.
Rubbing shoulders is
always appreciated -- but
first you have to find them
It creates a cost effective networking opportunity for rights holders, brands, industry bodies and associations, technology vendors, online security experts, investigation specialists and enforcement agencies to rub shoulders and build relationships, as well as sharing information. And, unlike conferences, it is cheap enough for whole teams to come along and meet their counterparts from other specialisms. The seminar programme itself is a crash course in IP practice, with contributions from battle-hardened experts like IFPI’s anti-piracy director, Jeremy Banks, barrister Rob Gray, from Bond Solon, Richard Heath of ICC/BASCAP and Shelley Duggan, associate general counsel, global brand protection leader at Procter & Gamble.

Based on confirmed attendances with two months to go, it is clear that IP Protect Expo 2012 has already achieved what it set out to do. It has created a framework within which, for the first time, all those involved in protecting IP are coming together at a cross-functional and cross-industry level to focus on the practical aspects of the task. For more information about the event, go to www.ip-protectexpo.com".
The IPKat likes to see any event that brings people together to share their experiences and learn from one another, and he wishes this event well. Merpel likes the idea too, but does feel that there's scope for coming up with a catchier, less descriptive name than IP Protect Expo. Any ideas?

Sink or Schwim? The legal assault on USA Enterprises begins

The IPKat has been a tireless fighter against the perpetrators of  intellectual property scams and the purveyors of parasitic, worthless quasi-official services and catalogues (see for example earlier posts here, here, here and here). He therefore takes great heart to see that his transatlantic friends at Leason Ellis LLP are taking the initiative described in the media release which they issued yesterday and which, in relevant part, is reproduced here:
"Leason Ellis LLP, an intellectual property law firm located in White Plains, New York, has filed a Complaint against USA Trademark Enterprises, Inc. of Sarasota, Florida, and its principals Timea Csikos and Andras Nemeth, with the United States District Court for the Southern District of New York, White Plains Division. The case, 12-cv-0620, has been assigned to the Honorable Edgardo Ramos. A copy of the Complaint is available at www.trademarkblog.com
The multi-count Complaint alleges that defendants have engaged in false advertising and unfair
competition by marketing a catalog of trademark registrations, which offers no value as the published information is freely available in the online records of the U.S. Patent and Trademark Office. Defendants are further confusing consumers into thinking that the catalog is legitimate by sending unsolicited notices designed to make it appear as though USA Trademark Enterprises, Inc. is an official government enterprise or otherwise affiliated with any entity associated with the trademark registration process.

According to [the IPKat's friend and initial inspiration for launching this weblog] Martin Schwimmer, lead counsel for Leason Ellis in the case, and author of the well-known Trademark Blog, “our clients are routinely receiving bogus notices from companies like USA Trademark Enterprises. Unbelievably, USA Trademark Enterprises even sent a notice to us when we registered our firm’s logo. They are obviously mining the records of the USPTO and targeting novice trademark registrants who can be mistakenly led to believe that the catalog has any legitimate public notice value.”

Adds Schwimmer, “We are concerned that U.S. trademark registrants receiving these solicitations have actually handed over money for what amounts to mere public notice services – a benefit already bestowed upon a U.S. trademark registrant as a matter of law. Anyone who has done so should immediately contact competent trademark counsel concerning those transactions. Of course, we are also interested in speaking with them about their experiences as they are likely relevant to our case.”

David Leason, Managing Partner of Leason Ellis, said “by targeting our clients and us, USA Trademark Enterprises has interfered in our business [this is presumably why it is the law firm, and not a scam-victim, which is bringing this action under the New York General Business Law, Articles 349 and 350, seeking an injunction, an account of profits, the tripling of punitive damages and practically every dreadful fate short of being chained to a rock and made to listen to Pachelbel's Canon till the end of time] and cast a shadow over the legitimacy of trademark-related communications. In filing suit, we are out to protect our clients, our business, and the integrity of the trademark process from predatory and deceptive marketing.” ...".
The IPKat says, if you are a trade mark proprietor or applicant, or someone who acts for one, who has been adversely affected by the activities of  USA Trademark Enterprises, do please email Peter Sloane or Cameron Reuber at Leason Ellis LLP, or call 914-288-0022.   Merpel says, if you can bear a little 1970s nostalgia, see what else comes from White Plains.

Breaking news: Specsavers v Asda goes to European Court of Justice

Snowy never could decide whether
she needed glasses for reading Court
of Appeal decision ...
The Court of Appeal for England and Wales has just given judgment in Specsavers International Healthcare Ltd, Specsavers BV, Specsavers Optical Group Ltd and Specsavers Optical Superstores Ltd v Asda Stores Ltd [2012] EWCA Civ 24.  This Kat, who said that Specsavers must have felt pretty sore about the trial decision of Mr Justice Mann (see earlier post here), is not surprised to see that the Court of Appeal -- for whom IP specialist Lord Justice Kitchin delivered the judgment -- has upheld two of its grounds of appeal and has stayed a third, pending a reference to the Court of Justice of the European Union for a preliminary ruling on the following five questions:
A. Where a trader has separate registrations of Community trade marks for
(i) a graphic device mark;
(ii) a word mark;
and uses the two together, is such use capable of amounting to use of the graphic device mark for the purposes of Article 15 of Regulation 40/94? If yes, how is the question of use of the graphic mark to be assessed?

B. Does it make a difference if:
(i) the word mark is superimposed over the graphic device?
(ii) the trader also has the combined mark comprising graphic device and word mark registered as a Community trade mark?

C. Does the answer to A or B depend upon whether the graphic device and the words are perceived by the average consumer as (i) being separate signs; or (ii) each having an independent distinctive role? If so, how?

D. Where a Community trade mark is not registered in colour, but the proprietor has used it extensively in a particular colour or combination of colours such that it has become associated in the mind of a significant portion of the public (in a part but not the whole of the Community) with that colour or combination of colours, is the colour or colours in which the defendant uses the sign complained of relevant in the global assessment of (i) likelihood of confusion under Article 9(1)(b) or (ii) unfair advantage under Article 9(1)(c) of Regulation 40/94? If so, how?

E. If so, is it relevant as part of the global assessment that the defendant itself is associated in the mind of a significant portion of the public with the colour or particular combination
of colours which it is using for the sign complained of?
This Kat has not had time to read the 187 paragraph judgment yet (at the time of posting, it wasn't yet on BAILII but you can read it here), but will return to it tonight unless one or other of his colleagues kindly gets there first and writes the decision up for him.

Katonomics 10: IP valuation again --how much is a footballer worth?

You can't keep a good Katonomist down -- particularly on a date like 31 January.  That's the closing date for the English and Danish "transfer windows" within which football clubs can sell their overpaid, under-performing players to their rivals and use the money to buy overpaid, under-performing players from clubs that have to sell them because they need the money to cover the debts incurred by overpaying their under-performing football players in the first place.  Anyway, sensitised to the transfer market for professional footballers, the IPKat's treasured expert on matters pertaining to the point of contact between intellectual property law and economics Dr Nicola Searle takes a look this week at the question of the moment: how much is a footballer worth?

"When the IPKat first suggested this football related post, my first reaction was panic. I know next to nothing about football. Indeed my knowledge of professional sports in general ranks only slightly above my knowledge of aglets. However, the IPKat pointed out that lack of knowledge about football is actually a qualification for discussing the topic. Limited knowledge of a subject has not dissuaded economists before, so I pressed on.
To begin with, let’s look at some economic properties of the market for footballers. I would argue that footballers share many characteristics with performers such as actors and dancers. Footballers, like artists, are intrinsically motivated to play football. This suggests that footballers would continue to play football even if they weren’t paid. However, tennis player Serena Williams recently professed that she doesn’t like sports and prefers shopping, so perhaps intrinsic motivation isn’t as relevant as I thought. 
Vertical -- but are their skills differentiated?
In which case, it’s all about the cash! Like the arts, the market for footballers exhibits vertically differentiated skills. Put differently, it’s an A list/B list, winner-takes-all market. For footballers, being top tier means that they are more skilled or more popular than those below. That potentially small difference means winning more games and generating more ticket sales than second tier players. Losing teams don’t fare as well financially, so it’s in a club’s interest to have the best players. Players know this and successfully bargain to capture some of the club’s benefits from winning.
The A list/B list structure of the market means that some players earn a lot of money, but the majority don’t. For baseball, a slight difference in overall skill level means that American baseball player Alex Rodriguez earned US$27M in 2007 whereas his teammates at the bottom of the payscale made $327k. Don’t forget, these are the athletes that made it to the big leagues. Consider all the other wannabe athletes and lower league players that earn nothing or considerably less. Like law graduates who hope to make partner and drug dealers who dream to be gang leader, the economics of athletic careers mean that aspiring athletes take on a lot of risk. 
We could also look at the market for footballers as husbands and partners (economics of marriage), but that involves far too much fake tan for my taste. 
So, how do you a value a player? You could use this American patent. Or, follow British based researchers Tunaru, Clark and Viney, use of the options-based analysis I discussed last week (here). They also note that much of the recent wealth of clubs comes from television contracts, which are increasing due to the sport’s popularity. 
However, what about the brand value of players? French researchers Villemus and Gurău note here that the brand value of the player and the club are interrelated. They’re the ying and yang of football. After all, what would the Wimbledon Football club be without Pelé Best? And H&M FC without David Maradona? (I hope I’m managing to offend as many readers as possible.) 
The brand value of the athlete rests firmly on the base of the player’s athletic value. It is that athletic value and ability to win that attracts fans and builds up a brand value. Being good looking or sufficiently interesting/charming will increase value. Here, the income and market models play a role. As the stakes (television contracts, licensing deals) grow higher, so the cash flow associated with a player increases. Competition between clubs drives up the market price for footballers as they bid against each other for the best players. 
However, where do athletic value and brand value diverge? Pinpointing it exactly is difficult. Given that the spectacle of a football match is a performance, I would argue that nearly all the value of a footballer is in the brand. You don’t go to a match to watch generic skilled athletes, you go to watch those players for that club. Ancillary revenues from merchandising and advertising benefit from the higher prices associated with branded goods and the large fan base. Athletic ability may be the key to stardom, but it is the brands and fans that make it so profitable.
So readers, how did I do? Where do you think the value of footballers lies?".
The IPKat notes that it's not just footballers that have a market value and an economic impact. The same is true of football club managers. This Kat thanks Shmuli Phillips for this link to this recent piece in the Financial Times on that very topic.

Monday, 30 January 2012

Monday miscellany

Wanted! The IPKat has been asked to find a work experience placement, either in a law firm or in the legal department of a company, for a bright and interested 15 year old schoolboy from North West London. He is available from 2 to 13 July inclusive.  If you have a space in your office and are prepared to share it with him, please email the IPKat here and let him know, with the subject line "Work Experience".


The IPKat's Danish-based friend and colleague Matthew Elsmore has been wondering if anyone has ever put together a guide on intellectual property issues arising out of the writing and publication of textbooks and educational materials. This Kat can't think of one offhand, though he can clearly recall various battles with publishers over the content of some of his own books. The legal department of one publisher expected him to get permission for the reproduction of a lengthy quote from Charles Dickens (died 1879), and he also had some fairly vigorous correspondence over the question whether the reproduction of a figurative trade mark in a chapter on trade mark registration constituted a trade mark infringement. It is quite possible that other authors have had similar experiences, so perhaps a legal guide would be quite handy. Can anyone point Matthew in the direction of such a work -- or would they like to write it?


Around the blogs.  Afro-IP's Kingsley Egbuonu's A to Z tour of national IP office sites takes him this week to Mauritius, where he has some highly encouraging news to report.  Neil J. Wilkof, on IP Finance, has posted a fascinating piece on "Loss Leaders and Bait and Switch: Marks and Brands in the Auto Industry". Rick Sanders, writing on his law firm's blog, has some interesting insights on ReDigi in the US in "Music Industry v. ReDigi: The Problem with Phonorecords: Copyright".  Still on copyright and the US, Eleonora Rosati has posted a punchy little piece on the controversial Research Works Act. There's a good Current Intelligence note by Riccardo Sciaudone on the Advocate General's Opinion in Case C-461/10 Bonnier Audio, which you can find here on the jiplp weblog and which addresses the uncomfortable relationship between IP enforcement and respect for personal data.


The 1709 Blog's "Red Bus" copyright seminar on Tuesday 21 February, which was launched only last Thursday, now has a remarkable 61 registrants already signed up for it -- even though the details of who else will be speaking apart from Michael Edenborough QC have yet to be finalised.  If you'd like to join them, you've not much time to lose!


"Today I opened the TMView database", reports the IPKat's Bulgarian friend Ventsi Stoilov, "and I discovered that there are many changes". First, he spotted that the trade mark search criteria have increased. Even better, you now have the opportunity to receive a mail signal in the event of various changes in trade mark status --oppositions, updates, etc.  If you are so minded, you can transform your search results directly into pdf., Excel or html format. Three new states are now TMView-searchable: Romania, Lithuania and Sweden. For those who are constitutionally equipped to live in an atmosphere of continuing feverish excitement, Ventsi reports that there are even more changes coming in March. Ventsi's overall assessment: "I think this is good news for all of us, because it will allow us more conveniently and easily to search for marks".


Doing its best to extend a hand to prospective users, the UK's Intellectual Property Office is excitedly asking "Have you joined our IPO LinkedIn group where IP news/issues can be discussed?". If you already have, you can skip to the next item on this blog post. If not, details of the group can be found here.


Those who both love European patent law and have a high tolerance for loose-leaf publications will be pleased to note that the latest release -- Release 36 -- of Sweet & Maxwell's European Patent Decisions (EPD) has now been, well, released.  This publication, authored by the IPKat's friends Noam Shemtov and Florian Leverve, is updated four times a year, the next release being expected this coming April.

IP and Entrepreneurs: Going, Going, Gone

How are IP rights presented to budding entrepreneurs? I had another enlightening glance at the answer to that question quite by serendipity over the weekend. While taking a walk on the IIT-B (India Institute of Technology Bombay) campus, I passed signs for "The Entrepreneurship Summit 2012". The conference was put together by ECell, which seems to be a student-initiated entrepreneurship group that enjoys IIT-B faculty support. It also had various high-profile sponsors, including Nokia, CNBC and ESET. I introduced myself, explained what I was doing on campus, and the organizers graciously invited me to come in. I eagerly accepted the offer and took in part of the afternoon sessions. 

Of particular interest were the talks by James Beach, co-founder School for Start-Ups and a serial founder of successful businesses,  and Mr. De Neef f.  Each speaker seems to be prominent in his field and each had come quite a distance to take part in the program, Mr Beach from the U.S. and Mr. De Neef from Belgium.

The the two speakers seemed to agree on very little (said Mr. Beach, you don't need to be creative to be an entrepreneur, it's all about finding an opportunity and executing, while Mr. De Neef emphasized the importance of creativity as a linchpin in the innovation enterprise). What they did agree on, each in his own way, was on the unimportance -- bordering in irrelevancy -- of IP.

Let's start with Mr. Beach. His message was clear and succinct. Not only is creativity irrelevant ("Ï have never had a creative idea", I think he said), but copying is good, he stated and restated. Granted, he seemed to be referring to the copying of "ïdeas", but at no point did he mention IP. A self-styled salesman, he maintained that entrepreneurship is all about execution--anyone has it in him to be a salesman too. While I have to believe that Mr Beach would counsel against trespassing on the IP rights of others, the reason is wholly pragmatic--to do so would interfere with execution of the venture. Except for that, IP was nowhere to be found in his rousing 45-minute address.

 Mr. De Neef was described as an engineer by training; his words were about the future. In his view, the digitized future will have the following interrelated characteristics. First, copyright will cease to exist (at one point he also included patents, although he was less dogmatic on that). Secondly, ownership of intellectual property will be irrelevant; indeed, it seems that the very notion of intellectual property as property will be outmoded. Thirdly, all content will be free. He referred to his teenage child as a example of a consumer of digitized contents with the expectation that they will be available without cost. Fourthly, creation will all be about collaboration (presumably, in his view of the brave new collaborative world, copyright, ownership and even copyright itself will cease to exist).

This is not the first time that I have commented on the virtual absence of IP in presentations that are made by leading figures speaking before elite audiences of budding entrepreneurs (see here). I have looked assiduously for recurring examples in which IP is presented as a material component of an entrepreneur's plan. Not only have my searches come up short, but the opposite seems to be true. IP (save perhaps mention of the need for patent protection) is simply not part of the young entrepreneur's prospective skill set.

 There are a couple of different ways to look at this. The fact may be that, in Mr. De Neef's brave new world, IP and especially copyright, will largely disappear and there is not much that anyone dealing with copyright can to change it. Sooner or later, copyright as we know it, or indeed, copyright at all, will cease cease to exist. Or it may be the case that IP still has a central role to play in the discourse about entrepreneurship, but we have not yet found a way to package the narrative in a rhetorically effective manner. Or it maybe that the terms of the discourse are distorted; not every new business is a start-up, much less a hi-tech start (although social media seems a particularly ripe candidate for the "death of copyright")--"real start-ups and real entrepreneurship" will continue to rest on IP. Or it may be that IP is simply too narrow a term; the proper focus should be on innovation, whether or not it falls under the category of subject matters that enjoys IP protection.  Whatever view you choose, the fact remains--whether by design or omission -- that IP is simply not part of the entrepreneur's (and our potential clients of the future) set of considerations as he develops its business.

Students at an elite school such as IIT-B can be expected to create "real start-ups". Even for them, however, IP is treated as a matter of only marginal importance. Since none of us know what the future will bring for IP, I would have thought that the best we can do for prospective entrepreneurs is to enable them to be aware of the various possible outcomes and to reach an informed decision. As an IP community, we do not seem to have succeeded.

There is one more aspect to take into account. In an environment where the IP aspects of many kinds of content may decline or disappear, a premium will then be paid for control of distribution and the harnessing of network effects. In such a world, with copyright on the way out and patent law being forced to re-create itself to adjust to the collaborative model of invention, trade marks will only increase in importance. Goodwill and trust in products and service will become perhaps the most valuable form of IP asset, partially by default but partially also due to the changed circumstances.

REPORT: House of Commons Committee hears unified evidence on unitary patent proposals (Part II)


Bifurcation -  litigating just one half of the
patent cookie can be satisfying
or unappetising depending if you are
a patentee...
Turning to the question of bifurcation, the Committee asked whether or not it was clear as to how questions of bifurcation would be resolved before the UPC.  Mr. Carr explained that the problem with bifurcation at the moment was that in the UK, the courts generally do not bifurcate cases.  The UK courts hear validity and infringement together on the theory that you cannot infringe an invalid patent - the rights have never been there. Germany, however, generally bifurcates and grants injunctions before hearing whether a patent is valid.  The proposals had, Mr. Carr said, "fudged" the whole thing so that it would be up to the discretion of various local courts as to whether it would bifurcate or not.  He stated that if Germany generally bifurcates and the UK does not, if you are a patentee you will start your claim in Germany because it is more likely you will win and have an injunction granted in your favor without having to deal with the pesky question of whether you rights upon which your relying even exist.  Faced with this position the UK courts will either say that they do not care about this consequence and tell litigants to start in Germany if the prefer, or they will have to compromise their legal principles and start bifurcating.  Mr. Carr concluded by examining the problems of bifurcation, especially for SMEs, whereby an SME may face an injunction which stops their trade due to having allegedly infringed another litigant's patent.  However, three years down the line when the validity hearing takes place and it is found that the patent is invalid, that SME may have completely lost their business.

HHJ Colin Birss QC - Will our
extremely qualified  patent judge
have to bid adieu to patent cases
in the PCC because
of half-baked
unified patent proposals?
 
The negative effects of the system on SMEs were also noted by the panel, including issues of language of proceedings being different for infringement and validity, the increased costs of such proceedings as a result, and the delay and the effect of improperly granted injunctions where patents are later held to be invalid.  Mr Carr and Mr Roberts also explained that due to the exclusivity provisions in the proposals whereby the unified patent court system would have to, after a transitional period, be the only competent court in which to litigate unitary and European patents, the new cost-effective and quick procedures of the Patents County Court would no longer have a role to play for SME's who wish to cheaply enforce their patents.  They instead would have to litigate their rights in the more expensive unified patent court system.  For this reason, one may see users start harvesting national patents again, instead of European and unitary patents.  

After so many negative comments about the proposals, Mr. Carr wisely interjected that he wanted to make sure that the Committee understood that the idea of having a single unitary patent system and unified court is a very good idea, but it was "the implementation as currently proposed" and what the proposals and idea had become that was the problem.  Ms. Salmon also stated that the compulsory nature of the system would militate against the benefits of competition between courts - competition which in the UK's experience between the High Court and the Patents County Court  has lead to improved procedures.  Mr. Carr also stated that the current system would enable a great deal of jurisdictional forum shopping.  

Mr. Stephen Phillips MP
Returning to the point that Mr. Carr had hinted at at the beginning of the session, Ms. Mordaunt asked why it was so important that the Central Division be in the United Kingdom.  Mr Carr replied:
"I think there are a few reasons.  The first is, let’s assume this is going ahead, we can talk about the problems but, let’s assume it’s going ahead and as I have said I think it has an appearance of a train that is not stopping anywhere.  I do not personally feel it’s an option for the UK to opt-out because if you opt-out you will be marginalized and patent litigation will take place outside the UK.  Assuming, it continues, if we get the Central Division, whoever gets the Central Division, will be able to mitigate or to put its own national stamp - because it’s the most important place – on how this Court works.  So for example, there will be decisions the Central Division makes that will affect everywhere and you will be able to mitigate, definitely, the most serious effects. The second point is that this is going to be a really important European institution – we don’t have them.  Germany already has the EPO.  If Germany gets this court as well, aside from the economic benefits I have discussed, you also have the situation which militates against fairness. That the very place, and indeed I think Germany proposed to have it in Munich, that is granting the patents is deciding on their validity as well, and that to me does not have a perception of justice at all.  And the third reason I point to, is simply the economic benefits for the UK if we do get the Central Division in terms of skilled employment, of vast increase in patent litigation and the opportunity to use and expand our expertise."
Ms. Salmon agreed and cited a figure from a letter from IPLA suggesting that an estimated figure of annual turnover would be around 100 million pounds which did not include the fees of patent attorneys, support services, experts, litigation services, etc.  

Continuing
the AmeriKat's "Flag on T-shirts"
theme, the French flag on a t-shirt 
Mr. Carr, in closing, again stated that it was for the reasons previously mentioned that it was important for the UK to get the Central Division.  He also stated that, with the greatest respect, France as the suggested default position between Germany and the UK just did not have the patent expertise and tradition of patent decisions that the UK ["Or indeed Germany", says Merpel] possessed.  Mr. Cash MP questioned whether if the UK gets the Central Division, the concerns presented by the panel during the hearing would diminish.  The panel stated that on balance they would like it to be in the UK in order to try and mitigate the problems which plague the current proposed system however that would in no way change the basic concerns about the substantive provisions in question. Mr. Cash MP then asked the panel to include in their further paper any other issues they wished to address in light of the Committee's questions, including reasons why the UK government was so "keen to press on and the effect on UK interests."

Dr. Christian Gassauer-Fleissner
(EPLAW)
Dr. Christian Gassauer-Fleissner, President of EPLAW, was the last witness of the session and was posed the same questions as the first set of witnesses.  He appeared on behalf of EPLAW who has been campaigning on this topic for a long period of time.  EPLAW's campaign had specifically been undertaken by his predecessor, Dr. Jochen Pagenberg (see AmeriKat post here).  Dr. Gassauer-Fleissner stated that EPLAW had made very similar comments and criticisms to the system to the Commission but that nothing had been really taken on board.  He explained that in relation to the specific concerns (more on this below), the Commission never made any official response to EPLAW.  He stated that there may have been some friendly acceptance of EPLAW's arguments in discussions but no one had taken on any of their proposed modifications and everything EPLAW had said had been ignored by the Commission.  He also stated that the "proposal as it is tabled now will create more problems than it will solve.  EPLAW certainly disagrees with what the Commission is saying about the possible merits of the drafts as they are on the table now." 

Turning to the specific concerns with the substantive proposals, Dr. Gassauer-Fleissner stated that most of had been addressed by the previous panel.  He stated one of the concerns was 
"...the inclusion of Articles 6 to 8 and the consequence that the ECJ would be involved in matters of substantive law...There are various important issues – one is a timing issue.  The involvement of the ECJ will delay infringement proceedings for years.  Second is the cost…and third, which is maybe the most important, is that the judges at the ECJ do not have patent law expertise and this is the point where I personally  really do not understand the approach because what we are talking about here related to the UPC system, if I may call it that, is to get as many experienced patent judges as possible and get away cases from local courts that do not have patent experience in the first instance.  What is proposed now is that there should be experienced local divisions/regional divisions at the lower level at the first instance and at the Court of Appeal there should be experienced judges (aside from the question of where they will come from)...but then at the highest instance, at the ECJ, there will not be any experienced patent law judges any more.  In a way, what you can criticize about the system as it is now in some countries, is that at the lower level of courts you don’t have patent law expertise of the judges, and now you are turning it upside down and creating a problem at the highest instance....
. . .
One other thing, of course, is the issue of the costs – nobody knows what this is going to cost.  On the one hand, currently at least in my country, even the Government does not know what it would cost because there are still disputes about where the local divisions would be and whether each country would have a local division.  Second no one knows what the court fees will be.  Nobody knows what costs will be reimbursed... by the successful party."
The consequences of "chilling effects: that the AmeriKat
would like to see....
He also stated that the value of the patent has the potential to be diminished if SMEs do not have the funds to be able to enforce the patent.  Such a loss in the ability to enforce a patent and benefit from the revenue streams otherwise associated with the enforcement of the patent and the corresponding market share, would mean that SMEs and other companies may not have the funds to reinvest into research and development.  Essentially, the proposed system may result in a chilling effect on innovation.   

Mr. Cash MP, turning to the Committee's now most-asked question, asked
WILLIAM CASH MP:  If the evidence that we have received, and it seems pretty conclusive, is that intellectual property judges, practitioners and the industry all over Europe, by the sound of it, are so against the proposed regulation and agreement, why is it that these proposals are being pushed through and hurried through in Brussels? 
 DR. GASSAUER-FLEISSNER:  I don’t know.  I think the only reason I can see the one that was also mentioned earlier -  that the previous Presidency wanted to present some kind if success after many years of discussions. I may add one thing to what was said before. I am pretty sure it was not German industry that pushed this because as I said before my predecessor, who was German, he really was campaigning almost half of his time against this. I don’t think there were particular German interests behind this.

One of the last questions of the session was regarding whether the system would result in "overt forum shopping", which seemed apparent given that some countries would be expensive, others would not be, some would have suitably qualified patent judges, others would not, some would be easy to establish infringement, others would not.  Dr. Gaussauer-Fleissner said that it "may definitely lead to forum shopping for obvious reasons."  He also agreed that the sourcing of experienced patent judges would be problematic and that given there was a "high risk" that the new system would not work, the system should not be exclusive.  Although, Dr. Gaussauer-Fleissner agreed on the majority of the comments addressed by the first panel he commented that bifurcation works and it works in his country and he also did not touch on the topic of the seat of the Central Division.   

What's next?

The AmeriKat was impressed with how prepared the Committee was, how on point the questions were, and how well attended the session was (only a couple seats were free).  Obviously, from the UK panel there were national interests that were at play in regard to the seat of the Central Division, however the AmeriKat was struck by how diplomatic the approach was in addressing the issues that concern all patent professionals and industry users across Europe.  

What do the Fates have in store
for the unified patent proposals?
This week on 1 February, Minister Baroness Wilcox (and officials)  will be before the Scrutiny Committee.  The AmeriKat understands that her presence has also been requested before the House of Lords, but the AmeriKat has been unable to find confirmation of this on Parliament's website.  The AmeriKat understands that the supplemental paper from CIPA and the IP Bar will be submitted prior to this hearing.  

In the meantime, there has been little word from Brussels regarding next steps on the unitary proposals - save for a comment from President Barosso and a paper from the Max Planck Institute -  but the next formal scheduled step is the plenary vote on on the proposals from 13-16 of February.  What the UK will do in the meantime and whether and how other Member States will react is something the AmeriKat dare not predict.  Despite the positive movement in the UK in respect of addressing the profession's concerns, she nevertheless fears that unless a radical step is taken not just by the UK but other Member States, the runaway unitary patent train will not be halted.  

[Please note the AmeriKat would like to publish the written evidence of CIPA, EPLAW and the IP Bar Association, but under an obscure rule (so obscure she doesn't know what it is) she has been informed that she should not to publish the papers until they are themselves up on the Scrutiny Committee website - which sadly they are not yet.  She asks that readers be patient, in the meantime.  Also, if you see any error's with the transcribed sections please let the AmeriKat know - she listened to the recording a mere 10 times, but lost the will after the 11th....]


REPORT: House of Commons Committee hears unified evidence on unitary patent proposals (Part I)

The Houses of Parliament ready for some evidence
on the unified patent proposals
Last Wednesday the IPKat informed readers that the AmeriKat would be forgoing any prospect of birthday joy in favor of attending the House of Commons European Scrutiny Committee’s oral evidence hearing on the unitary patent and unified patent court proposals (see previous posts on Committee here). However, the afternoon did provide at least some celebratory delight in the battle of the unitary patent debacle (listen to the hearing here). The AmeriKat was unsure at what level the Committee would be engaged and/or interested in the issue.  However the initial tone set by the Chairman, Mr. William Cash MP, and by virtue of the Committee's following 18 questions posed to the witnesses, the Commons Scrutiny Committee demonstrated that it is thankfully engaged with and taking the industry's concerns on board:
“This is a very important and very technical question which is before the Committee and I ought to add that we’ve received evidence from the following organizations – EPLAW, Henry Carr QC, Federation of British Industry, Charted Institute of Patent Attorneys, IP Federation (here), two letters with attachments from the Minister Baroness Wilcox and also finally from the Intellectual Property Lawyers Association.  We also had it from the AIPPI... I would also mention that the evidence so far appears to be broadly consistent and very much in line with that which has been given by Henry Carr QC and the Chartered Institute of Patent Attorneys. This is a hugely important question, I repeat, and is something that we want to get right. I have to add that the Committee has not received any expert evidence whatsoever which supports the agreement on the UPC as drafted.  We have also asked the Minister to refer it to any such evidence but the Minister has not responded."
The hearing, which took place in Committee Room 19 at the Palace of Westminster on Wednesday afternoon, first heard evidence from Mr. Henry Carr QC (IP Bar Association/11 South Square), Vicki Salmon (CIPA/IP Asset) and Tim Roberts (CIPA's President) who gave evidence together. The proceedings closed with evidence from Dr. Christian Gassauer-Fleissner, Chairman of European Patents Lawyers Association (EPLAW). Both sets of witnesses were posed the same 18 questions, with some variations. The members of the Committee in attendance and posing the questions were Nia Griffith (Labour), Kelvin Hopkins (Labour), Penny Mordaunt (Conservative), Stephen Phillips (Conservative) and Henry Smith (Conservative).

Chairman of the
Scrutiny Committee,
Mr. William Cash MP
The first question, posed by Mr. William Cash MP, was whether to date the witnesses had had opportunities to contribute to formulation of policy on the EU unitary patent and the unified patent court ("the UPC").  Mr. Carr replied that they had been given none, a statement echoed by Ms. Salmon and Mr. Roberts.  Mr Carr stated
“There have been contributions from Sir Robin Jacob who has offered a few opinions but on the issues which he has offered opinions it is pretty clear that no one wants to listen very much.”
Mr. Cash MP  went on to mention the oft-quoted statement of Professor Sir Robin Jacob, who was described by Mr. Cash as being regarded as “generally being regarding as having unrivaled expertise in the field of intellectual property” [“What is it about Sir Robin which makes politicians swoon?”, asks Merpel, remembering Baroness Wilcox's comments] from his 2 September 2011 opinion
“This is no time for anything other than plain speaking. I am fortunate enough to have had wide experience, as barrister, judge and now academic, with the patent system from all angles. I have many contacts amongst users and lawyers. I know of no one in favour of involvement of the CJEU in patent litigation.  On the contrary all users, lawyers and judges are unanimously against it."
Mr. Henry Carr QC
Henry Carr QC agreed that this view was still correct in relation to the proposals as currently drafted, in particular because, as Professor Sir Robin was referring to, the current Draft Regulation included Articles 6 to 8 which means that questions of substantive law on patent infringement would be subject to interpretation by the CJEU.  This, explained Mr. Carr, would cause a great deal of delay, at least 2 years, and be subject to decisions by a panel of judges who do not have any expertise in patent law.  In replying to a second follow-up question on whether any comments the profession had made to various institutions had filtered through to drafts, Mr. Carr said that he could not find that "any of the fundamental objections to the current proposal made any difference."  Tim Roberts said that the only movement that was observed was the increased enthusiasm by the UK Government in having the Central Division in the UK which had been taken on board after UK industry raised the issue.  Ms. Salmon said
"We have put comments in but sometimes it’s hard to know how many of them get through and how strong a negotiating position there is– because we represent to the UK government– and then it all goes quiet.  I think we find the whole European legislative process quite opaque.  It’s very difficult at times to find even what draft legislation is under discussion and therefore its quite difficult to see what's going on to it."  
Vicki Salmon
Turning to the draft Rules of Procedure, the Committee asked if the panel had been able to put through their views on the Rules of Procedure and whether any of those comments had filtered through to the draft.  Prior to turning to the issue of the Rules, Mr. Carr stated that he wished to amplify one thing regarding the location of the Central Division.  He stated that it was correct that initially the UK government did not seem interested in bidding for the Central Division, but upon receipt of various e-mails and letters from those in the profession and industry, the Government put in a bid for the Central Division to be in London.  Mr. Carr stated that it was really important that this was done and that the location for London be pushed - for reasons he would turn to later during the hearing.  In relation to the Rules, he stated that there was a committee who would be working on the Rules - who will meet this week on 3 February 2011 - but that no one had done anything about the Rules for years.  The Rules contained some
"405 paragraphs of immense complexity which curiously do not deal with some of the fundamental questions that one would expect the rules to deal with"  
but that the profession would have an opportunity to discuss the Rules and their comments, including some particular suggestions from Daniel Alexander QC - Vice Chairman of the IP Bar Association.

When questioned about their opinions on the impact assessments conducted by the Commission and others, the panel unanimously stated that they felt the assessments to be, as Mr. Carr stated, "very poor and quite alarming from the perspective of SMEs".  Further, the panel of witnesses agreed the assessments were based on a whole slew of assumptions which were outdated and not based on solid foundations upon which to justify the current system.  It was suggested that it would be better that a brand new assessment be undertaken, especially in light of the departure of the EU who, up until the introduction of the enhanced cooperation procedure and the CJEU's Opinion, had been a signatory and a source of funding for the system.

The AmeriKat so thrilled to be
 spending the afternoon in Parliament
she even brought a hat...
The issue of the controversial introduction of the enhanced cooperation procedure produced a question from Mr. Cash MP, who stated:

"In relation to enhanced cooperation, as you raise that question, of course  there are limitations on the use of that procedure.  Really, I think I am right in saying, it should be used mainly as a matter of last resort.  But, are there any political reasons that you can consider, which would tend towards the promotion of this proposal which have not yet been disclosed as to who and which countries might benefit from it as compared, for example, [to] the assertions that Europe as a whole might benefit from it?  Could you just elaborate a little bit on some of the underlying political questions, because I know the Poles were particularly interested to get this through during their Presidency and I just sort of felt that this was being pushed rather, and that there was accelerated enthusiasm to get it through to benefit individual countries.  Could you perhaps just give us a little elaboration on your views of that?"

Mr. Carr was the first to bravely address that question.  The exchange that followed the question was as follows and ended with Mr. Cash MP requesting a further paper from the panel on the potentially hidden issues of why the proposals were being pushed forward with such great force:  
MR. CARR:  I think the country that stands, potentially, to benefit most form this is Germany.  And the reason for that is that Germany, as you know, already has the European Patent Office which is a very big employer in Germany and very, very successful organization….and I think is the second biggest after the Commission – the second biggest European institution.  If Germany, as it wishes to, gets the Central Division, in effect, for reasons I can explain if you wish, most cases will go to the Central Division.  And therefore the other centers of expertise in patent litigation, which are primarily the UK and the Netherlands will lose out very, very considerably.  Germany will then gain another big, big institution which will be very, very important and will very much expand the amount of patent litigation, its importance to patents, than it already has.  So they are the big gainers.  Why that caused the Poles to accelerate, I am not sure. I think many of these Presidencies wants to say they have  done something.  Certainly the big gainers will be Germany if they get that Central Division. 
Ms. Penny Mordaunt MP
WILLIAM CASH MP:  In relation to the German question, would you say that it will enhance their economic prosperity  for them to have the advantages of this court in the way you described?

MR. CARR:  Well, I would do, I would certainly say it will.  If we look at the situation in the UK at the moment, and perhaps compare it with Germany.  I have seen various figures,  the reliability I would not vouch for.  In broad terms currently patent litigation and patent advisory services in the UK generates hundreds of millions of pounds for the economy - that's as it stands at present.  Germany is even more so: there are more patent cases in Germany than here, but we are still a big player.  If we were to get the Central Division, estimates that I have seen are that we would get as much as five times as much patent related work than we do at the moment – so we would be into billions. Whoever gets the Central Division, that's going to be a major employer - a major employer of skilled people, so many cases, so much staff - so I think whoever gets that will benefit their economy greatly if it goes ahead. 
WILLIAM CASH MP:  ...Perhaps you could do a paper on that question.  There seems to be such unanimity in the profession that  I suspect that there are things not yet known to Parliament which are not being disclosed to us at the moment, which we would be able to benefit from, so if you could do that that would be helpful.
The CJEU is alleged to be slow and causes delays.
 The clock says 8:45 - but is that AM or PM?  
The Committee then posed several questions regarding the profession's concern on the inclusion of Articles 6 to 8 in the Proposed Regulation.  Mr. Hopkins MP questioned what was the cause for the "uniform and profound concern over the involvement" of the Court of Justice of the European Union ("CJEU", also referred to as the "ECJ" during the hearing) on substantive patent law.  Mr. Carr explained the concern from the perspective of the trade mark law experience:
"I have appeared in several cases in the European Court of Justice largely because the trade mark system is already subject to the ECJ, because we have a Trade Mark Regulation and a Trade Mark Directive, so questions of interpretation are referred to the ECJ. The practical effect that this has is that, let’s say you are involved in a trade mark case [and] a question of interpretation arises, unless the UK court is absolutely certain what the answer is not just here but in all Member States, it has to refer it.  So your case then stops and it takes about 2 years to get an answer from the ECJ.  And of course during that time, there are additional costs because the parties have to prepare written observations, governments intervene and you go to a hearing in the ECJ and you eventually get an answer.  It then comes back to the UK court who tries to interpret the answer, and one of the problems – there has not just been extra delay and extra costs – but in trade mark [law] its been really difficult to interpret the answer.  So then there is a great debate about who has won! And then you have to continue with the case.  So it’s not proved [to be] a system which intellectual property lawyers throughout  Europe wish to expand, and the problem with the existing proposal is that it expands it into patents, as well."
Mr. Kelvin Hopkins MP
The Committee itself pointed out that this stated delay could be compounded given the substantial backlog of cases at the CJEU.  Mr. Carr agreed and said that what people may find is that the UPC will not work very well and is worse than the current system.  Indeed, he said, the lawyers he had spoken to all said that the current proposals appeared to be worse than the current system of patent protection and enforcement in Europe.  Mr. Carr was asked whether those were just UK lawyers to whom he had spoken.  He stated that he had spoken to 
"[Patent lawyers] in other European countries.  I referred in my evidence to the opinion of the Council of Bars and Law Societies of Europe which apparently represents about 1 million lawyers – the fact there are 1 million lawyers in Europe is worrying, but nonetheless  - and their view was that partly because of this Article 6 to 8, the proposed system will increase legal uncertainty, increase costs and be bad for users, so I think it is a very widespread view.”
Ms. Nia Griffths MP
Ms. Salmon agreed, mentioning that other papers compiled on the subject, including letters and position papers from multinational industry bodies, for example from Sweden and EPLAW, also confirmed this view.  This concern was not just the UK profession arguing about Articles 6 to 8, but it was a view shared throughout Europe.  Again, Mr. Cash MP asked why, if given the unanimity regarding Articles 6 to 8, those provisions had not been removed?  Ms. Salmon stated that they had been "struggling to find out" and referred to the opinion from the Commission which has been very difficult to get a hold of, although she understood Professor Sir Robin Jacob was trying to get his hands on it.  Mr. Carr reinforced this position by identifying the opinions of  Professor Sir Robin Jacob and Professor Krasser who said that Articles 6 to 8 were unnecessary to include but some unnamed Commission lawyer had said their opinions were incorrect. [Readers will remember Cecilia Wikstrom had asked to see this opinion during a JURI session, but as far as the AmeriKat understands she was never provided with the Commission's legal opinion on Articles 6 to 8]. However, Mr. Carr stated, "if you look at the reasoning, there is very little to support the proposition."  

Mr. Cash MP asked that the panel in their supplemental paper to examine the reasons why Spain and Italy did not want to take part in the unitary patent system and/or Unified Patent Court.  He stated that:
Evelyn Waugh's Scoop
WILLIAM CASH MP:  I am getting increasingly puzzled about the question of why it is there is this headlong determination, rather obstinate determination, to go ahead with the proposal  which the entire industry , the lawyers, the judges, Sir Robin Jacob, everybody is against but there is some dynamic operating at the centre of gravity that is driving it forward despite the expert evidence of pretty well everybody.

MR. ROBERTS:  The only theory I can suggest to you is that the EU needs a victory and this can be presented as a victory.  This is something they have been trying to do for 40 years.  They’ve almost got agreement on something.  It is a very desirable objective and it is being presented outside the UK as a victory, as something the EU can do…  As the Daily Beast requested “please cable victories” and that is the motivation behind this.    

Sunday, 29 January 2012

"You look nice ... enough to copy"

This member of the IPKat team receives leads and links from many sources near and far, but this item was drawn to his attention by a very local source: Mrs Kat was checking her emails via the Yahoo! webmail service and this item sprang up before her very eyes. She wasted no time in reporting it to the appropriate blog member, for which she deservedly earns her very first kat-pat.

The intellectual property creation that lies at the heart of this post is the message on the right, painted by Atlanta, Georgia-based graffiti artist Tori LaConsay on a road sign in her vicinity. This work, painted in December 2008, bore an uncanny resemblance to a product design which was subsequently used by ubiquitous multinational high-street store Hennes & Mauritz (H and M, if you prefer), a sample of which is exhibited below.


The story goes that Tori LaC complained to H & M and received the following magnificent brush-off:
“We employ an independent team of over 100 designers. We can assure you that this design has not been influenced by your work and that no copyright has been infringed.”
It's not clear exactly what has happened since in purely legal terms, though it is reported that H&M has removed the offending items from its e-commerce website and is said to have posted this statement on its Facebook page last week:
“We are very sorry for our customer service team´s reply, it is very unfortunate and we apologize for it. We are in contact with Tori LaConsay and will continue the dialogue with her directly.”
At this point the trail seems to have gone cold. The IPKat, who considers that £2.99 is a very good price to pay for a guest -towel two-pack, wonders what has happened since. Has there been a legal claim and/or a settlement? What has happened to those guest-towels? Does H & M take indemnities from its members of its "independent team of over 100 designers" in respect of the risk of intellectual property infringement? And could the whole thing just be a complete coincidence?

Merpel's just puzzled that anyone would have thought the original worth creating in the first place, never mind copying or spontaneously emulating. But then, she's just a Kat and there's no accounting for aesthetic taste ...

When cutting and pasting is 'unpalletable'

We are all familiar with judgments that contain cutting comments, and which give one or other party to a dispute a pasting -- but not every day do we come across judgments about cutting and pasting, particularly when the object of the judge's attention is itself a judicial decision. And that's exactly what happened in Invalidity Application no.83707 in the name of Pass J Holdings Ltd in relation to trade mark registration no.2512671 in the name of Ben Spencer, Case O-427-11, a decision of Geoffrey Hobbs QC last November, sitting as an Appointed Person.

The contested trade mark in this case was a figurative mark (right) containing the words "online pallet" in respect of "non-metal pallets for goods handling and/or loading, transportation and freight, including but not limited to pallets made of wood or plastic" (Class 20) and "transport, freight, distribution, warehousing and logistics services including: the collection and delivery of goods; the transportation of goods including but not limited to transportation by road; goods handling services including: packaging or other conditioning of goods for transportation; the provision, including hiring, of artefacts for the purpose of transporting goods, including but not limited to the provision of pallets; the provision of warehousing or other goods storage facilities; the provision of one or more of the above services via Internet ordering" (Class 39).

In May 2011 the mark was declared invalid.  The trade mark proprietor appealed on various grounds, including serious procedural irregularity: it appeared that parts of the Hearing Officer’s decision had clearly been cut and pasted from an earlier Decision, resulting in the insertion of incorrect dates of registration of various marks, of the inclusion of names of persons having nothing to do with the matter and with reference to the wrong section of the Trade Marks Act 1994.

Setting aside the earlier decision and remitting the invalidity application to the Registrar to be heard by a different Hearing Officer, the Appointed Person observed that he had no power to award costs against the Registrar -- but that he would have awarded costs if he had such power [the Kat hears that the Registrar did the honourable thing and paid the parties' costs. presumably ex gratia].  The Appointed Person couldn't deal with the substantive grounds of appeal at this stage without usurping the function of the Registrar and depriving the parties of the opportunity to be heard by two levels of decision-taking, since there would have been no appeal against his decision.

The IPKat is not without sympathy for the Hearing Officer, since cutting and pasting has become a regular feature of the preparation of judicial decisions at all levels and it can be difficult for tired eyes and minds beset by déjà-vu to pick up cut-and-paste errors when proof-reading. Much the same can be said about articles submitted for publication, where evidence of inaccurate cutting and pasting is generally spotted by editors before a potentially embarrassing publication can result.  Merpel wonders how often cut-and-paste errors don't get noticed at all but we are losing the skill of accurate reading.

Cut-and-paste or copy-and-paste here
Tips on better proof-reading here

A kat-pat goes to barrister Thomas Elias (Serle Court) for drawing the Kats' attention to this decision. 

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