Strictly for the birds?

Radio Frequency Identification (RFID) technology doesn't often get a mention on this weblog, despite its usefulness in the fight against fakes. However, the IPKat thought it would be worth drawing it to his readers' attention, having just been captivated by a recent BBC news item from Malaysia, "RFID technology thwarts bird's nest counterfeiters", by Jennifer Pak, here. The article reads, in relevant part:

"One of the most coveted beauty products in Asia is found inside a damp and dark three storey house in southern Malaysia's Johor state. The delicacy is spun from saliva [the Kat is not making this bit up ...] and it will soon land in someone's soup, as people in China believe that eating bird's nest is good for their skin and they're willing to pay up to US$100 just for a handful. It's a lucrative industry and counterfeits have flooded the market.

Safety concerns last July effectively halted all exports of bird's nests to China from Malaysia, the world's second biggest supplier of the delicacy.

The Malaysian agricultural ministry says its edible bird's nest industry is worth RM5b ($1.59bn; £1.01bn) [... or this bit]. That is why the government is now investing in Radio Frequency Identification (RFID) to boost consumer confidence. It's one of the most common reasons why Asian governments use the technology.

RFID allows a product to be easily tracked from the source to the consumer. The bird's nests can be sealed in a box with an RFID tag that contains a microchip [shouldn't that be micro-"cheep", wonders Merpel] embedded with details about the harvest. A handheld scanner emits a radio frequency to unlock that information. It may sound similar to barcodes, but RFID tags are said to be harder to duplicate.

... The final product can only contain saliva. Still, it is hard for consumers to tell if a bird's nest is real or not so [Yanming Resources] has been forced to lower prices in order to compete with counterfeits. But with RFID, every step of this laborious process, from harvesting to packaging, is tagged. The data is stored centrally with the government. This official support will be key for consumers.

In essence the RFID becomes a certificate of authenticity, says Yow Lock Sen, who is in charge of overseeing the government project. The system is still being perfected, but eventually customers who have safety concerns will be able to trace the origins of the product by simply downloading a free app onto a smartphone, and scanning the RFID tag on the product.

Although it is a government research project, participation from the industry is voluntary since it requires companies to buy the RFID tags and reading equipment.  ..."

The IPKat, who is fascinated by this, wonders whether the sale of fake bird's nest is the sort of thing that would be protected by an "extended passing off" action in the United Kingdom and whether the bird's nest concept might be protectable as a Traditional Speciality Guaranteed in the European Union. Merpel still feels uncomfortable about eating anything that is essentially saliva and wonders what other strange and squirm-making bits of the body and its excrescences might also be regarded as delicacies at dining tables braver than hers.

Monday miscellany

Stuff the (Single) Market -- with canapés;
Tax the Rich -- lightly ...

“A Kat reflects”. On 12 June 2012 this member of the IPKat weblog team takes time off from his gruelling training schedule ahead of the London Blogging Olympics O******s in order to devote some time to Union activities. The Union in question is the Union of European Practitioners in Intellectual Property and he is attending a meeting of its British cell. Since the Union couldn’t afford the prices at The Old Nick and they don’t have good prospects of leverage through taking industrial action, they’ve had to opt for something a little more downmarket and they’ve ended up at The Royal Society, 6-9 Carlton House Terrace, London. To sweeten the blow a little, those attending will be mollified with Champagne and canapés. If you want to hear a Kat Reflect, there are still some spaces. Details are available here

Anshika's appointment:
a blow for Wallace and Gromit

Attaché now on the case. A press release informs the IPKat that the UK's second Intellectual Property attaché has been appointed and will start work in India as part to the UK Government’s plans “to bolster trade relations and support IP and innovation-led businesses abroad”. The lucky person, Anshika Jha, will be based in the British High Commission in New Delhi and will be working with to help British businesses operating in India make the most of the business opportunities there [says Merpel, it will be good to know how much of this is related to enforcement of IP rights held byBritish businesses and how much will address the licensing of UK technology into India – and vice versa].

Tea at 3pm? You must
be joking!*

IP TRANSLATOR delayed — but not by much. Thanks to the IPKat’s excellent friend Michael Edenborough QC the news can be broken to a disappointed world that the long-awaited ruling of the Court of Justice in Case C-307/10 Chartered Institute of Patent Attorneys (the IP TRANSLATOR case, concerning which some people have still not yet read Richard Ashmead’s masterly three-part analysis of the issues here, here and here) will not be handed down at 9.30am on Tuesday 19 June 2012. The new time is 3pm, just too early for tea.

* Illustration: Tea Time with Angel, by Monica Van de weer, available for purchase here

Katonomics 18: the Olympics -- or should that be Olympigs?

In this, the sixth and final post in her third Katonomics series, the ever-competitive Doctor Nicola Searle goes for Gold when she takes on her toughest assignment yet: an IP-sensitive economic appraisal of the Olympic Games:

What do Olympigs (a pork stand), Polympics, Monopolymics (economic structure of international sports), Holympics (church sponsored fitness classes) Woolympics (Harris tweed uniforms), and Olympits (deodorant manufacturer) have in common? They all potentially violate the London 2012 Olympics protected rights. Described by the London Organising Committee of the Games and Paralympic Games (LOCOG) as “extremely valuable assets,” what is the relationship between IP, the Olympics and economics?

Economic analysis of the Olympics lives up to its dismal science nickname. The analysis argues that wealth and population size predict the number of Olympic medals a country will win. This slightly undermines the whole international-display-of-athletic-prowess image of the competition. Instead, Greek researchers Vagenas and Vlachokyriakou find that the size of the Olympic team, which is a measure of population and wealth, predicts 70% of the number of medals. Americans Bernard and Busse have similar findings but note that the host country typically enjoys a 2% bump in medals. Unfortunately, “you came all this way and lost because we have a statistical advantage” is unlikely to succeed as a sports chant.

Hosting the Olympics should have a positive impact on regeneration, tourism, legacy and cultural values. This tends to focus on the host city, but British-bases economists Walton, Longoand Dawson find that Brits outside London also support the games. They calculate that the positive impact of the games in the South West of England is around £173 million in addition to the £480 million positive impact in London. This is done using the Contingent Value Method which is based on asking how much the population is willing to pay for the event. The DCMS report uses a similar technique and argues a £3.2 billion overall positive impact on the UK over 10 years.

Like the valuation of IP, measurements of the value of events, particularly events that have yet to happen, include the valuation of intangibles. This leaves these valuations open for debate and, particularly as the valuations of the Olympics were conducted in pre-austerity times, subject to change. The DCMS report includes seven intangible benefits: feel-good factor, improving awareness of disability, inspiring children, legacy of sports facilities, environmental improvements, promoting healthy living and events. At the same time, there are six intangible costs listed: crowding, increased petty theft, security risks, local disruption, transport delays and, one to which I am contributing, excessive media coverage.

Surprisingly, respondents didn’t cite enforcement of IP right as either a cost or a benefit. The enforcement of Olympic IP right has come under some heat recently. On one side, control over these rights is an important funding mechanism and guarantees exclusivity for event sponsors. On the other, the public may associate these IP rights as freely used cultural symbols which form part of the feel-good intangible benefits. For example, we have objections that estate agents were threatened with legal action for creating an Olympic ring display out of hula-hoops. And who wouldn’t want to eat at the banned Olympigs food stall, which presumably is an important part of a training diet?

For IP and the Olympics, therein lies the conflict. A public which sees the Olympics as cultural event and is funding a £9.3 billion public sector package, and LOCOG who has raised £670 million from sponsors who have paid for exclusivity (I should confess some confusion here as the DCMS financial report refers to the LOCOG funding as part of the £9.3 billion public sector funding package). Would the public be willing to pay an extra £670 million to have London 2012 cupcakes unregulated?

Regeneration of the Olympic sites is also an economic benefit. Barcelona is often touted as an example of the positive impact the games have on the local area. British-based economist Kavetsos finds that the Olympics are responsible for a 2.1-5% increase in property prices in the area, which translates to £1.4 billion increase overall. The regeneration of East London should have long-term positive economic impact on the area.

At this point, my head is synchronised swimming with all of these numbers. It is much easier to tally the costs of the Olympics than the benefits. The positive impact figures I’ve mentioned should be net of the costs involved. The £9.3 billion public sector package doesn’t simply disappear -– it represents contracts for UK businesses, employment, development and the intangibles mentioned earlier.

Excuse me while I’m off to rehydrate with my Oympips orange-flavoured sports drink.

NOTE TO DOCTOR NIC’S DEVOTED READERS: while this post may mark the end of the third series of Katonomics posts, it does not mark the end of her contributions to this weblog. Stay tuned for further news, and be prepared to be delighted ...

To ™ or not to ™? A reader writes ...

As every Kat knows,
TM stands for
transcendental meditation

Much-loved favourite question returns. The IPKat's friend Bansi Pattni has written in with a question which members of the blog team get asked quite often in one form or another, so this Kat thought it was time to open it up to the public rather than leave it in the murky realm of private correspondence. Writes Bansi:

"I am currently working for a company in the Netherlands and I am attempting to write some guidelines for the use of registered trade marks within the company. While doing so, I have come across wordmarks for computer programs which are not registered but which the company considers as its trade marks. The word marks are distinct and have the possibility of being registered.  However, they are only used internally within the company so there seems to be no incentive to register them. In the event that one of these wordmarks is used in marketing material or client reports, I was thinking of suggesting the use of the ™ symbol.

After doing some research I found that, in general, US sources seem to advocate the use of ™ for unregistered trade marks whereas UK sources state that the use of ™ implies the trade mark is unregistered but does not speak of where it can be used and if it really should be used. In short, internet sources and textbook answers are not sufficient and neither is the opinion of just one professional.

There appear to be no set rules on whether to use ™ or not so I was hoping you may be able to provide me with your own professional opinions on whether ™ should be used for unregistered trade marks. I am also curious to know how its use is received by the IP community in different countries".

This Kat’s position is that, in the jurisdictions with which he is most familiar, the use of ™ is not explicitly controlled by statute or case law and that it is no more than an indication that the business that uses it regards the sign to which it is appended as being a trade mark even though it may not have been registered as such – and even if no application has been made to register it.

The bigger the 'TM', the more
difficult it is so miss ...

Be that as it may, use of the ™ may confer some benefits. In the first place, where the distinctive character of an unregistered sign is being contemplated in the course of registration proceedings, it often happens that an applicant’s mark is refused registration on the basis that the relevant consumer, seeing it, would not realize that it was a trade mark (rather than an advertising or promotional slogan, a description of goods or services or as an ornament or embellishment of the packaging). If such a sign is however accompanied by a ™, it may be more difficult to draw the conclusion that the relevant consuming public would not consider it to serve a trade mark function.

Additionally, in the event that an action for passing off or unfair competition is brought in respect of an unregistered sign which is followed by a ™, its presence may influence the decision whether to grant provisional relief and, if the plaintiff succeeds, the flagrant nature of the infringement and therefore the scale of the damages awarded.

Merpel says, whatever else may be said about ™s, they’re not very pretty. There ought to be a better way to handle this. How about an official depository of signs used as unregistered trade marks, together with a list of goods or services covered by their non-registration …?

But what do readers think? Let’s be hearing from you!

Other pleasures represented by the letters TM here, here and here

Delving into moral rights in the House of Harlot

This Kat likes her moral rights cases (for instance see her earlier KatPost here). So she was very interested to hear that Recorder Douglas Campbell, sitting in the Patents County Court, England and Wales, had given judgment in a moral rights case on 18 May 2012 in Emma Delves-Broughton v House of Harlot. Every day since then, she has been checking the usual suspects for a transcript of the decision -- but currently the case remains as unreported.

Wearing nothing but a white fur coat, Merpel
always thought she was quite daring enough:
fur and latex rubber really don't go ...

This Kat has however ascertained the following so far: Ms Delves-Broughton is a professional photographer (her website bears the legend: "WARNING: This site contains images of partial nudity up to Art Nude"). She took a photograph of an unnamed female model in a forest wearing a garment supplied by the House of Harlot. ("CLICK TO ENTER HOUSE OF HARLOT AND TORTURE GARDEN CLOTHING FOR LATEX RUBBER FETISH FASHION"). Ms Delves-Broughton gave a copy of the image to the model with a letter which only granted the model permission to use the image on her own website for personal use. If anyone else wanted to use it, the model should let Ms Delves-Broughton know. The model however presented the image to the House of Harlot, which then proceeded to modify the image by reversing it and removing the forest background [says the IPKat, it's just as well they didn't remove anything else ...]. It then put this second image on its website.

When Ms Delves-Broughton complained, the House of Harlot promptly took down the second image. Ms Delves-Broughton then commenced proceedings for (a) copyright infringement and (b) derogatory treatment of her work. The House of Harlot responded by arguing that (a) it had a licence to use image by virtue of subsequent oral discussions between the model and Ms Delves-Broughton and (b) the changes it made to the image did not constitute derogatory treatment.

Douglas Campbell decided in favour of Ms Delves-Broughton on both claims. In respect of the claim of copyright infringement, he found that it was inherently implausible that Ms Delves-Broughton and the model had a discussion during the shoot to the effect that the House of Harlot was granted a licence to use the image. He was critical of the credibility of the model, particularly as her oral evidence (that a licence to the House of Harlot was granted) went further than her witness statement (which reiterated the understanding outlined in Ms Delves-Broughton’s letter outlining use of the image). He preferred the evidence of Ms Delves-Broughton and found that she had granted no such licence to the House of Harlot.

On the issue of damages for infringement, the fact that the image had appeared on eight pages of the website did not mean that there were eight uses for damages purpose. the judge stated that there had only been a single use: on the website. He followed the guidelines set out in the National Union of Journalists and awarded £675 for the infringement claim.

In respect of the claim of derogatory treatment of the work, Douglas Campbell noted that considerable time and effort had done into the composition of the image and that it had been important for the forest to appear for artistic reasons. Accordingly, he found that the changes amounted to distortion, but not mutilation, and were not prejudicial to Ms Delves-Broughton’s honour or reputation. Nonetheless, there was a distortion and therefore derogatory treatment of the work.

On the issue of damages for derogatory treatment, taking everything into account, the court awarded £50 damages. Normally the primary remedy in such cases was an injunction, but that remedy was inappropriate in the present proceedings as the House of Harlot had already removed the photograph from its website.

The IPKat and Merpel ask: has anyone been able to get their paws on a judgment or statement of reasons?

Friday fantasies

Message to Google. The IPKat is not sure whether the improvement in performance of the new Google software since he posted his open letter to the company is simply a random event or is a direct consequence of the kind intervention of the anonymous IPKat-reading Google personality who read it and said he'd see if he could get it actioned. Either way, this entire post has been composed without any technical hiccups at all -- and it's a very long time since the Kat has been able to say that.  Thanks, he says. Hope you don't get into trouble with your boss, adds Merpel.

"I spy ..."

That EU IP Observatory! The latest score on the IPKat’s sidebar poll shows that there is little respect or enthusiasm for the recently-announced EU Intellectual Property Observatory. If you’d like to add your opinion, whether by offering your support, by expressing your rage or by anything in between, there are still a few days in which to do so.

Unitary Patent Update. The AmeriKat does normally intrude on the Friday Fantasies but she’s doing so here. She tells the IPKat that, further to her update yesterday, the European Parliament's website has now been updated to show that the plenary sitting and first reading of the unitary patent provisions will take place on 13 June with the vote to be held on 14 June 2012.

The course was okay, but student
life on the intergalactic IP course
was a bit sparse ...

Patents at a distance. Prompted by yesterday’s post yesterday about distance learning and copyright ("Why distance learning has come a long way", here), the IPKat has received this request for information from a keen reader:

 I have been looking for a distant learning LLM relating to patents or more specific, to patent litigation. I know of three European possibilities: Nottingham (patent litigation), CEIPI in Strasbourg and Hagen in Germany. Are there any other options, especially in the UK? I am interested in Nottingham, although I find it very UK specific. Are there any plans of changing this to make it more European or is there another course offered? I am thinking in view of the European Patent Court, if this ever becomes reality. I have asked in Nottingham, but haven´t received anything other than the programme of the litigation LLM.

Any suggestions, or inside information? Do let our reader know.

When resolving disputes
between heavyweights, it's
often advisable not to come between  them ...

While we’re on the subject of patent litigation, this Kat has something of a vested interest in IP dispute resolution this summer. This is because he’s running a little stand-alone workshop on the subject as part of the IP Dispute Resolution offering by LexisNexis at the end of June. The conference itself runs from 28 to 29 June, but the workshop is on the afternoon of the day before. You can click for details here and, if you use the VIP code FKW82288IPK for readers of this weblog, you can even get a very generous 25% discount.

Safe and sound in Canada. A katpat goes to the IPKat’s effervescent friend Lorraine Fleck for news that, after the IPKat hosted her note on the registration of sound marks in Canada in the wake of the application to register the roar of the MGM lion, four further applications for sound-based trade mark have now been received. You can listen to them here.

What About Generic Copyright?

We all know that certain trade marks can be too successful, with the result that they become the generic name for the good or service that they are intended to identify.  But what happens when a copyright work becomes "too" successful? Is the result something akin to genericity in trade mark law -- or is something else at work? Before you accuse this Kat of having had too much catnip, consider the following.

Nearly 20 years ago, the Israel Supreme Court had to decide whether a drawing based in large part on the figure of Donald Duck constituted copyright infringement. One of the claims made by the defendant was that the figure of Donald Duck had become such an integral part of modern culture that it no longer could enjoy copyright protection. This claim was rejected and the defendant ultimately was found liable for infringement. However, this Kat has continued to be intrigued by the notion that there may be certain works that are so well-recognized that certain aspects of the work take on a public life and meaning of their own, even if they do not enjoy copyright protection per se.

Spurred on by this intriguing question, this Kat has sought to formulate circumstances in which aspects of protected copyright take on a special role in public consciousness--what we will call "generic copyright". He has come up with at least two variant possibilities for generic copyright. In the first, the element is detached from the work, but its public fame continues to be connected with the underlying copyright work. In the second, the element is not merely uncoupled from the work, but it takes on a public meaning that does not depend upon its original creative context. This Kat has decided that the time has come for him to float this notion with the readership and so--a proposed exemplary list of generic copyright follows.

1. The voice of Jacob, the hands of Esau--And so it is written in Genesis (27:22)--"So Jacob came close to Isaac his father, and he felt him and said, 'The voice is the voice of Jacob, but the hands are the hands of Esau' "(New American Standard Bible). The phrase has become a wide-spread cultural staple whenever one wants to express the notion of inconsistent facts from what should be a single source that should be yielding consistent information.

2. Faustian bargain--I suspect that most of us have not read this greatest of all German literature (even not in translation, shame on us), but the notion of making a pact with the Devil (Faust traded his soul to the devil in exchange for unlimited knowledge and worldly pleasures), with all of the resulting unpleasantries, has become a standard motif of western culture.

3. "Toto, I don't think we're in Kansas anymore." - Who can forget that scene from the Wizard of Oz, when Dorothy finds herself removed from her Kansas cabin due to the tornado, surrounded (at least at knee-length), by those uniquely-voiced Munchkins. Her trenchant comment to her dog Toto has become a standard cultural fare for expressing the notion that one is in a new, unfamiliar situation.

4. "Phony"--Never has a single word from a work of modern fiction taken on a life of its own outside of its original literary moorings. We are speaking about J.D. Salinger's classic, "The Catcher in the Rye" (you may agree or disagree whether it is the great American novel, but this Kat continues to read the book every five years, much to the bemusement of Mrs Kat). The main character, Holden Caulfield, accuses almost every one (at least older than he) of being a "phony." The term has come to connote the dichotomy between the sweet world of childhood innocence and the unpalatable world of shallow adult hypocrisy. Before Salinger's creation, would any of us ever have thought to describe that pompous investment banker down the hall as a "phony"? Today the use of the term is so widespread that we tend to forget its origin.

5. "Catch-22"--The phrase, which is the name of Joseph Heller's monumental work on the potential insanity of armies and war, has come to mean "a problematic situation for which the only solution is denied by a circumstance inherent in the problem or by a rule" (Merriam-Webster.com). Be honest--is there anyone out there who has not referred to a circumstance as "a Catch 22" situation? As European leaders struggle to sort out the current financial crisis, is the current plan to adopt austerity to achieve growth "a Catch 22"?.

6. "My Way"

"And now the end is near
And so I face the final curtain.
My friend I'll say it clear
I'll state my case of which I'm certain. 

I've lived a life that's full
I travelled each and every highway.
And more, much more than this
I did it my way."

Paul Anka's song is so closely identified with Frank Sinatra's rendition that it is perhaps the quintessential example of why we need to protect performer's rights as a neighbouring right. More generally, the phrase "My Way" has become a pithy means to express the actions of a person who lives life on his/her own terms. For those of you old enough to remember, the changes brought about by Mikhail Gorbachev to the former USSR in the 1980s were described as the "Sinatra Doctrine"--Gorbachev did it "his/my way."

7. "Ground Hog Day"--In the movie by the same name, actor Bill Murray plays an egocentric Pittsburgh TV weatherman (can any weatherman from Pittsburgh really be egocentric?) who gets sent to the town of Punxsutawney (this is the real name) to cover the annual Groundhog Day event. If the groundhog sees its shadow, we are in for six more weeks of winter (this is a true tradition in Punxsutawney). Murray finds himself repeating the same day over and over again, waking up to an alarm clock just before 6:00 am each morning. After trying hedonism, suicide attempts, and everything in between, he reexamines his life and priorities. In a short period of time, this phrase has come to mean any situation which we seem to be repeating, until we perhaps alter, our behaviour.

7. "Hotel California"

"Last thing I remember, I was running for the door
I had to find the passage back
To the place I was before
"Relax, " said the night man,
"We are programmed to receive.
You can check-out any time you like,
But you can never leave!"

Has any song ever conveyed imagery as strong as this song by the Eagles? And is there any better way of expressing the notion that it is easy to enter, but difficult, maybe even impossible to leave a situation? Once again, referring to the economic challenges facing the Euro, is Euro membership like the Hotel California, or not? We may learn the answer very soon.

8. "If you build it, he will come"--One of the all-time great fantasy movies-"Field of Dreams"--tells the story of a farmer in Iowa who is spurred on to construct a baseball field in corn fields in response to the exhortation of the unseen voice, who implores--"If you build it, he will come". I leave it to you to discover who the "he" was. Suffice to say, the phrase has become an eloquent way of expressing the idea of pursuing one's inner voice to achieve a goal, as quixotic (I suppose we could have this word to our list) as it might be seem to some.

Well, dear readers, if you have followed this Kat all the way to the end, here is his exemplary list of generic copyright. Maybe it is a bit culture-bound, but that may be unavoidable. Comments anyone?

Mini Unitary Patent Update: European Parliament vote , Rules of Procedure & Legal Services Opinion Request (UPDATED)

A picture of what the AmeriKat would
like to be doing right now
ideally with some gelato in tow
(or is that "ice cream"?)

The sun is shining down in London, the people are smiling and all seems well in the world, except, that is, for the threatening unitary patent storm clouds growing over Brussels.  "Oh how dramatic, AmeriKat!", you say, "There is no need to ruin our second sunny day all year with your Doomsday predictions of the unitary patent package.".  Oh, but she must.  She does, however, promise to make it quick.  In fact she only has three points to share with you:

1.  European Parliament vote:  With the upcoming meeting of the Competitiveness Council meeting this Wednesday, the AmeriKat was alerted to the European Parliament's tabling of the plenary sitting date and first reading of the unitary patent package first scheduled for 11 June 2012, but now scheduled for 13 June with the vote on 14 June 2012.  Can this be construed as a confident Statement of Intent to get the patent package approved come what may or as a cautiously optimistic "pencilling-in"?

2.  Rules of Procedure news:  Following the first circulation of the Rules of Procedure to stakeholders in April, Rules of Procedure Committee Chair, Kevin Mooney (Simmons & Simmons) tells the AmeriKat that they are now on the 8th draft of the Rules to which they have received 31 detailed responses.  The ninth draft will go to the Commission/Danish Presidency today so that it is available for the Competitiveness Council meeting on Wednesday.  After the meeting, the draft should be more widely distributed, but as of yet there is no news on a public consultation.  "We are waiting", says the AmeriKat, tapping her paws impatiently.

3.  Update on request for unredacted version of Legal Services Opinion:  On Sunday (or Monday, depending how late you were up), the AmeriKat reported on the confirmatory application request she stumbled upon for access to the unredacted version of the Opinion of the Legal Service (document here) on the compatibility of the draft agreement with the CJEU's Opinion 1/09.  Two of her lovely readers responded, including the anonymous requstor, who alerted her to the Council's response to the application (found here) who refused to provide access to the unredacted document.  However

"Denmark, Estonia, Slovenia, Finland and Sweden cannot concur with the reasoning in the draft reply, which seems contradictory in first arguing that the negotiations are entirely outside the Council’s decision-making structures but that there still is a need to protect the Council’s decision making process (because the draft Agreement and the two draft Regulations form a “package").

As regards the contents of the opinion, it would seem that even if a possible harm to decision making  or to the protection of legal advice could be demonstrated, there would be an overriding public interest in handing out the information, or at least more significant parts of it in line with Article 4(6) of Regulation 1049/2001."
 
Too right! The AmeriKat understands the UK government also did not support the Council's reply. Stay tuned for a Katty post on European legislative transparency coming to your computer screen and e-mail inbox very soon.  

Now, with that done, please go enjoy the sunshine!

F1: Community TM institutions can't cast aspersions on national marks

If you were busily digesting the Chocolate Bunny ruling earlier today, you might have missed a further trade mark ruling from the European Union's senior court: Case C‑196/11 P, Formula One Licensing BV v OHIM, Global Sports Media Ltd, on an opposition relating to a Community trade mark that was filed a little over eight years ago and which may still have a few more years' mileage to it.

The following analysis is taken from today's Curia press release:

"The Court of Justice sets aside the judgment of the General Court which failed to acknowledge, in relation to trade marks, the distinctive character of the ‘F1’ sign

Neither OHIM nor the General Court are competent to call into question the validity of national trade marks capable of opposing the registration of a Community trade mark

In April 2004, Racing-Live SAS [a company which was subsequently replaced by Global Sports Media Ltd as proprietor of the trade mark applied for] filed an application for registration of a Community trade mark ... for a figurative trade mark (right) in respect of various goods and services (magazines, books, publications, reservation of tickets for shows, and arranging competitions on the Internet).

However, Formula One Licensing BV opposed that application. The opposition was based on the existence of an international word mark and two national word marks for ‘F1’, and the Community figurative mark (left), covering the same products and services as those indicated in RacingLive SAS’ application for registration.

By a decision given in October 2008, OHIM dismissed the opposition, considering that there was no likelihood of confusion between the trade mark applied for and those of which Formula One Licensing was the proprietor. Moreover, OHIM stated that the word element ‘F1’ was a descriptive element in the trade mark applied for.

Formula One Licensing subsequently brought an action for the annulment of OHIM’s decision before the General Court. By its judgment of 17 February 2011, the General Court dismissed the company’s action and confirmed OHIM’s decision. Formula One Licensing now claims that the Court of Justice should set aside the judgment of the General Court.

In its judgment delivered today, the Court of Justice notes, first, that that the Community trade mark does not replace the national trade marks of Member States and that those two types of trade mark co-exist in the economic life of the EU. The Court states that in this dual system of trade marks, the registration of national trade marks is solely a matter for the Member States and that, therefore, OHIM and the General Court are not competent for either the registration or the declaration of invalidity of those trade marks. Accordingly, the Court notes that the validity of a national trade mark may not be called into question in proceedings opposing the registration of a Community trade mark, but only in cancellation proceedings brought in the Member State in which the national trade mark was registered [quite right, though isn't strange that, while a national Community trade mark court can rule a CTM to be invalid, the organs of the CTM can't do the same to national marks?].

In addition, according to the Court, it cannot be found, in such opposition proceedings, that a sign identical to a national trade mark is devoid of distinctive character, that is, the ability to allow the public to associate the products and services designated by the sign with the company which applied for its registration. Such a finding would be likely to eliminate the protection which national trade marks are supposed to provide [Exactly! That's why the argument was raised, wasn't it?].

Hence, the Court notes that, in a situation such as that in the present case, OHIM and, consequently, the General Court, must verify the way in which the relevant public perceives the sign which is identical to the national trade mark, solely in relation to the mark applied for, and evaluate, if necessary, the degree of distinctiveness of that sign. In that respect, the Court points out that it is necessary to acknowledge a certain degree of distinctiveness of a national mark on which an opposition against the registration of a Community trade mark is based. In those circumstances, the Court finds that, in finding that the sign ‘F1’, identical to the national trade marks of Formula One Licensing, was devoid of distinctive character, the General Court called into question the validity of those trade marks in proceedings for registration of a Community trade mark and therefore infringed the regulation on the Community trade mark.

Therefore, the Court sets aside the judgment of the General Court and, since it is not in a position to give final judgment in the matter, refers the case back to the latter".

Says the IPKat, there are interesting issues at stake here. One is the presumptive validity of every national trade mark, which is a matter of law, versus the reality that some trade marks may have lost whatever distinctive character they had by the time a later Community trade mark is applied for: what is the value to the market place of preserving the effect of a monopoly which is based on a presumption that can be undermined?  A further question relates to national marks which are cited in support of an opposition but which are open to challenge and apparently invalid on the basis that they are in conflict with a protected geographical indication (this can easily happen in the case of a newly acceding EU Member State). The courts must find a comfortable balance between the need to balance commercial and legal certainty, the protection of investment in brands and branded businesses, competition and consumer choice

Adds Merpel, the moral of today's rulings is that, so far as distinctive character of a trade mark is concerned, it's better to be involved in the motor racing business than in the manufacture of chocolate rabbits.

Formula One car-catching cat here

Day of Judgment for Chocolate Bunnies

If you want to know whose
bunny this is, you have to
read the small print ...

It has often been said that the Day of Judgment will be accompanied with a great weeping and a gnashing of teeth.  Well, today was judgment day for a well-known, much-loved but dubiously distinctive chocolate rabbit and, while there may have been some wailing from the general vicinity of Lindt & Sprüngli, teeth might have been more involved in noshing than gnashing, as Europe's consumers prepare for a world in which they will be faced with a market in which they must choose between any number of branded and presumably generic chocolate bunnies.  This is the result of Case C-98/11 P Chocoladefabriken Lindt & Sprüngli AG v OHIM, which (at time of writing) has not yet been made available in English [but it's in English now, here. A katpat to Luis Gimeno for being first to pull the trigger!].

According to today's Curia press release,

"The shape of a chocolate rabbit with a red ribbon cannot be registered as a Community trade mark

The Court of Justice confirms that this shape is devoid of any distinctive character According to the Community Trade Mark Regulation the shape of goods or their packaging can constitute a Community trade mark. However, a mark which is devoid of any distinctive character cannot, in principle, be registered.

On 18 May 2004, the company Lindt & Sprüngli AG filed an application for a Community trade mark ... for a 3D sign representing the shape of a chocolate rabbit with a red ribbon. OHIM dismissed the application, in particular on the ground that the mark applied for was devoid of any distinctive character. Lindt challenged that decision before the General Court, which dismissed the application, concluding that OHIM had not erred in law in its decision.

Lindt brought an appeal against that judgment before the Court of Justice.

In its judgment delivered today, the Court rules that the General Court did not err in law by concluding that the OHIM’s refusal to register the mark was valid.

The Court recalls that the distinctiveness of the mark must be assessed, first, by reference to the goods or services for which registration is sought and, secondly, by reference to the perception of the relevant public. In that regard, the Court rules that the General Court correctly identified and applied those criteria by carrying out an evaluation both of current practices in the industry and the perception of the average consumer. As regards the acquisition of distinctive character through use of the mark applied for, the Court confirms the reasoning of the General Court which found that Lindt had not proved that distinctive character had been acquired through use across the EU.

Consequently, the Court dismisses the appeal".

You can read the decision here in German.  Fortunately the IPKat has a team member, Birgit, who is both a native German-speaker and an expert in all things to do with the registration of chocolate rabbits as trade marks (for background to this decision, see Birgit's excellent post here). If there is anything worth adding to this brief post, rest assured that Birgit will add it.

How to make a chocolate Easter bunny here
How to make a chocolate Zombie bunny here