Monday, 15 December 2014
Last week was the busiest in the IPKat's history, with a total of 29 blogposts. We're all a bit exhausted and expect that our readers are too. Thanks so much for sticking with us during this fascinating but definitely difficult period in the history of intellectual property governance. Anyway, sweet and cheerful as ever, Katfriend and superstar Alberto has put together the following list of last week's posts that you would have missed if you away and may even have missed if you weren't. This is what he delivers:
“Time is running out to secure new Scottish patent court!”, warns a press release by the Law Society of Scotland. Not quite so, replies an annoyed Darren.
The suspension of a Board of Appeal member by the EPO President, under the guise of a "house ban", reported here, has generated enormous disquiet. Now, Merpel reports on an unprecedented letter in which the Enlarged Board members express their concerns about the turn of events. Seventy two comments so far give the idea of how much the IPKat’s readers are getting passionate to this story.
Merpel recounts of another letter upon the hot issue of the suspension of a Board of Appeal, this time from Dr Tilman Müller-Stoy. The letter's author is a well-known litigator and is a partner in the renowned German firm of Bardehle Pagenberg. The addressee is Christoph Ernst, head of Germany's delegation to the EPO's Administrative Council.
Merpel reports that a further letter has been sent to the AC by two highly respected IP judges from the UK and the Netherlands. This letter references the earlier letter from the Enlarged Board of Appeal members and expresses support for the position taken. The saga continues…
The chorus of condemnation (discussed also here and here) about the "house ban" of an Appeal Board member continues to grow. After the news of two of Europe's leading judges lending their support to the EPO's Enlarged Board of Appeal (who have asked the EPO's Administrative Council to curb the interference by the President in their work), further support arrives from additional national IP judges, all of whom also serve as external members of the Enlarged Board of Appeal, explains Merpel
* BREAKING NEWS: EPO Communique -- Boards of Appeal "independent in principle"; "precautionary" suspension approved; concern "expressed"
For the many fans of the King of Eponia v house-banned BoA Member saga, here's the text of the communique issued on Friday on the European Patent Office website. The 138 comments so far that have welcomed this post are the best prove of readers' affection to this story and to the way Merpel recounts it.
The previous week's Tuesday Tiddlywinks included an example of a renewal scam letter purportedly coming from OHIM. It was a communication of the kind which savvy applicants and their advisors are all too aware, but which are targeted at smaller and less experienced applicants who may only have one or a few IP rights. Regrettably, the scam phenomenon is not exclusive to trade marks and designs, explains David in this post, after receiving a message from the mysterious “European Patent Organization”.
This note from Darren is about Hospira v Genentech [on which see the IPKat note here], a pharma-patent case that Mr Justice Birss has decided in light of product-by-process claims. Beyond the case itself, Darren seizes the chance to provide a lovely comparative piece upon how product-by-process works in the UK, in the US and in Eponia.
A few weeks ago, Spain introduced an ancillary right over news content. Unlike the German right, the right cannot be waived and requires those who wish to display non-insignificant excerpts to pay a licence fee. “Adios!”, says Google News, as Eleonora recounts in this note.
Perhaps not all know that under EU and UK law a later sign identical or confusingly similar to an earlier trade mark could be registered if the owner of the latter consents so -- which is quite telling as to the function of trade marks, debated some time ago on the IPKat. This is the proper core of Dalsouple Société Saumuroise Du Caoutchouc v Dalsouple Direct Ltd & Another  EWHC 3963 (Ch), a First of December ruling by Mr Justice Arnold in the Chancery Division of the High Court, England and Wales that Jeremy reports in this post.
Amelia Andersdotter, a Swedish politician and former Swedish Pirate Party Member of the European Parliament, drops Merpel a line asking the most famous IP cat of the IP blogosphere's thoughts about a sad, sad story concerning another politician caught on picture in an inopportune situation and using copyright to halt the picture spreading on the press. How bizarre, sniffs Merpel, calling for Swedish Katfriends' help.
After his earlier post on Hospira v Genentech [on which see also the IPKat earlier note here], Darren provides a catch-up summarizing the large number of comments and the debate that it has generated. In Darren's best and most glorious style, this is another masterpiece both for the patent-addicted and for those that are not really into it, which will have the chance to benefit from Darren's clean prose and always surprising way to make complicated things seem easy.
As readers know, this blog does not refuse to post comments with which the IPKat and Merpel disagree. There are some rules to build up a decent discussion though, Jeremy recalls.
Katfriend Sabine Jacques (a PhD student focusing on the parody exception at the School of Law, University of Nottingham) recounts the funny story of MEP Nigel Farage's ('like garage', he uses to say) United Kingdom Independence Party – UKIP threatening to sue a guy for trade mark infringement [even though there is no indication that UKIP has registered its name as a trade mark] after he created UKIP_Trumpton, a Twitter account which aims to ‘gently take the mickey out of UKIP’. What's Trumpton? What's UKIP? Find it out in the Sabine's post!
Fellow blogger, tweeter and IP enthusiast Thomas Dubuisson tells us about a larger than life dispute between Google and Oracle that is rumbling through the courts in the US. The main question at issue is whether Google infringed Oracle’s patents and copyrights by copying Oracle-owned Java APIs in Android (Google’s mobile operating system) without authorization, but many spicy issues are at stake: a smartphone IP dispute between two tech giants, a lot of money, a potential fair use exception, and copyright law in the computer context.
* * *
When Trademarks Overlap With Other IP Rights Special
* * *
"When Trademarks Overlap with Other IP Rights" is the International Trademark Association’s (INTA) European winter conference that took place last week in the lovely city of Munich. The conference, co-chaired by its architects Neil J. Wilkof and Axel Nordemann, comes out from the inspiring Overlapping Intellectual Property Rights, edited by Neil and Shamnad Bashir [published by OUP and noted by the IPKat here] published some time ago. Jeremy has rigorously reported all the event’s speeches in a series of 10 dedicated posts to make the IPKat’s readers feel like if they were there.
This first note reports of Etienne Sanz de Acedo’s (INTA Chief Executive Officer) opening greetings and of blogmaister Jeremy’s opening speech entitled "Overlaid, Overlegislated and Overloaded", where he explains what IP overlap means, where it comes from and where it is leading us.
The first session, "Trademark and Copyrights", was chaired by former guest Kat Tara Aaron. First to speak was Professor Ansgar Ohly, who gave a breath-taking account of conflicts between trade marks and the public domain, also reviewing the extent to which copyright might vest in trade marks. Axel Nordemann spoke next, considering priority, registration of public domain works as trade marks and the problem of book titles mainly under an EU standpoint. Moving to Latin America, the floor was taken by Barbarita Guzmán, who focused on interaction between trade marks and copyright -- also considering the ‘moral rights’ issue in Bolivia, Colombia, Peru, and Ecuador. The fourth speaker was Andrew P. Bridges, who explained the US situation when it comes to trademark and copyright overlapping.
In the panel discussion that followed, Michael Ritscher (Meyerlustenberger Lachenal), Max Kinkelday (Gruneker), and Andrew Bridges keep debating of overlap between trade marks and copyright. The panellists addressed many issues, like different costs connected to those two IP rights, trade mark’s incontestability, protectability, functionality of protectable subject, peculiarities of those two IPRs' scopes of protection, enforcement, evidence, and defences under EU and US perspectives.
The next session focused on the "Trademarks and Designs" overlap. Katfriend and internationally respected scholar Annette Kur opened the discussion, analysing the Court of Justice of the European Union cornerstone decisions on this issue and posing a crucial question: are we really sure that double protection constitutes a problem? A bit of institutional perspective was then provided by Grégoire Bisson (WIPO) and Theophile Margellos (Office for Harmonisation in the Internal Market), who addressed the issues connected with double-registration of a sign as trade mark and design in their respective Offices’ practices.
Always upon trade mark and design overlapping, Mark Owen (Taylor Wessing) took over the chair and introduced Kenneth Wilton (Seyfarth Shaw LLP), who gave an explanation of trade dress and product configuration in the United States. Then came Anna Carboni (Redd solicitors), who spoke about the hypothetical "2JuicyLucy (t/a 2Juice) v DoubleJuice, Inc" dispute, highlighting the salient issues relating to Community trade mark and Community design protection, infringement, and jurisdiction. Daniel Greif (Siam Premier International, Thailand) then spoke about the design/trade mark divide in the Asia Pacific zone. The final speaker of the day was Louis Vuitton's Valerie Sonnier, who talked from the point of view of a lawyer whose employer was in business to make money and who was engaged in trying to stamp out criminal organisations which make and sell counterfeits.
The opening session of Day Two addressed "Trademarks and Geographical Indications". Keri Johnston was the first to speak, giving a report on INTA's involvement on GIs and indigenous rights internationally, regionally and nationally on these sensitive issues. Irene Calboli (Marquette University Law School and National University of Singapore) was the next speaker to take the floor. She reflected upon the overlap between GIs and trade marks being qualitatively different from that between trade marks and copyright or designs, also addressing that issue under an international perspective. Julia Holden (Trevisan & Cuonzo, Italy) spoke next and focused on the legal situation in the European Union. Peter Harvey (Harvey Siskind LLP) came next, explaining the position in the United States. Latha Nair (K & S Partners, India) was unfortunately unable to attend on account of illness, but her talk about the situation in India was enjoyed via an online link.
The session entitled "Trademarks and Unfair Competition", moderated by Axel Nordemann, was opened by Katfriend Professor Anselm Kamperman Sanders, who gave a masterly overview of the conception, birth and early years of the concept of unfair competition from even before the creation of the European common market. Next to speak was Gordian Hasselblatt (CMS Hasche Sigle), who discussed the "protective purpose" of trade marks and their relation to principles of unfair competition. Fellow Kat Neil was next to speak, looking at the common law (US and English) position on unfair competition. The last to speak was Myrtha Hurtado Rivas (Novartis AG), who gave a strategic overview of the trade mark v unfair competition position from the standpoint of a business that had to make decisions as to how -- and where -- to enforce its rights and protect its interests in the Europe of today-- and beyond.
The following session saw something of a novelty act: an interview by INTA stalwart Ronald van Tuijl (JT International) with Christoph Ernst (Ministerialdirigent, German Federal Ministry of Justice, left) and Mihaly Ficsor (Vice-President for Legal Affairs, Hungarian IP Office). Billed under the heading "Trademarks and Patents", this session went somewhat wider -- without adding anything on the interface between trade marks and patents.
The final stretch of Day Two of INTA's European winter conference addressed the topic "Trademarks and the Right of Publicity" and was moderated by Kenneth Wilton (Seyfarth Shaw JJP). First up was Anne Lauber-Rönsberg (Technical University of Dresden), who gave a presentation on the development of publicity rights under US and German law with special reference to the towering personality of Marlene Dietrich. Mark Owen (Taylor Wessing LLP) then spoke on publicity rights in the United Kingdom -- and the legendary Guernsey. Tara Aaron (Aaron Sanders PLLC) then addressed the unique position of the United States, reviewing some fun cases involving Manuel Noriega [Katpost here] and Lindsay Lohan [Katpost here]. Mario Soerensen Garcia finally (Soerensen Garcia Advogados Associados) took over, giving a beautifully Brazilian account of overlap.
The final session of the INTA's two-day conference marathon continued the theme of the previous session, but looked at the trade mark/publicity overlap from the perspective of some trade mark owners which rely on taking licences from well known celebrities and sportsmen: Joseph J. Conklin (Coty) and Alexander Ballasch (DFL Deutsche Fussball Liga GmbH). The grand finale to this event was an address by Office for Harmonisation in the Internal Market (OHIM) President Antonio Campinos, who spoke about trialogue discussions and the various governance issues concerning OHIM, including its rebranding.
PREVIOUSLY, ON NEVER TOO LATE
Never too late 22 [week ending Sunday 7 December] -- VOLVO v LOVOL, EU General Court goes Freudian | Oral Hearing on the 17th Draft of the UPC Rules of Procedure | Trolls owing essential patents in Vringo Infrastructure v ZTE | The importance of being Uber before Uber | Merpel and the EPO strike | An Arnoldian paten ruling in Idenix Pharmaceutical v Gilead Sciences | Audit clauses in IP licences | EPO Board of Appeal Member suspended | AG Villalón tells his stake on distribution right and offer for sale in Case C-516/13 Dimensione Direct Sales and Labianca | Post-mortem moral rights in Poland | Second Circuit hears argument in Authors Guild v.Google fair use case | EPO and the Swiss-cheese approach in decision T0571/10 | The Alicantation of the European Patent Office | Paris Court of Appeal defines third-generation hosting provider in TF1 v Dailymotion | Books review: "The Principle Of National Treatment In International Economic Law Trade, Investment and Intellectual Property" and "The Copyright Wars: Three Centuries of Trans-Atlantic Battle" | Swedish Svensson referral proceedings after Svensson.
Never too late 22 [week ending Sunday 30 November] -- Trade conference and IPKat discount to attend | Eleonora’s copyright infringement checklist | EPO video-conference drawbacks | Bat trade marks | CJEU on essential patents in Case C-170/13 Huawei v ZTE | BGH on acronyms’ registrability | Peppa Pig and Gabriella Capra | Reference to CJEU: copyright infringements through open wi-fi | Court of Appeal for England and Wales on ‘Ideal Home’ trade mark in IPC Media Ltd v Media 10 Ltd  EWCA Civ 1439 | Imitation and lookalike specialists Aldi looses in Case T-240/13 against ‘Alifoods’ | Jeremy’s book review -- Asian IP special | Chancery Division back on Merck v Merck | Trade marks in artistic works | Treatises and indexes.
Never too late 21 [week ending Sunday 23 November] -- EPO + SIPO = happiness? | IPEC on infringement of escort pictures and targeted public | Jeremy’s take on the IP Big Picture | Merpel on the EPO finances | AG Bot on Spanish claim against Unitary Patent | The General Court in TM cases Case T-342/12 and Joined Cases T-122/13, T-123/13 and T-77/13 | Court of Appeal for England and Wales on software patent | CJEU rules over Golden Balls v Ballon D’Or | IP on the airplanes and airport | Do TMs protect consumers or its owner?
Never too late 20 [week ending Sunday 16 November] -- More on Jeremy’s Francis Gurry Lecture "IP in Transition: desperately seeking the Big Picture" | OHIM and trade marks on 3D and 2D animals’ devices | Size of patent drawings matter | IPKat e-mails causing problems (but we still love you) | Helmut Kohl’s injunction against the “The Kohl Protocols” | Ambiguous patent translations | IPEC on damages for TM infringement in IPEC’s National Guild of Removers and Storers Ltd v Statham t/a Marrubi's Removals & Storage.