A sight for sore eyes?

Readers with long memories and lawyers-turned-shelf-fillers will remember the IPKat's posts last year on a thoroughly respectable law firm making a bit of a spectacle of itself in the dispute between Specsavers International Healthcare and Asda Stores (see here and here). Late last week came news that Mr Justice Mann was giving judgment in the sequel, Specsavers International Healthcare Ltd v Asda Stores Ltd [2010] EWHC 2035 (Ch), a decision of the Chancery Division for England and Wales.

High-street budget optician chain Specsavers sued Wal-mart's UK avatar Asda Stores for infringing its SPECSAVERS word and figurative trade marks and for passing off. What had Asda done to deserve this attention? It opened some opticians' stores in its supermarkets, marketing them with a campaign featuring logos consisting of non-overlapping white ovals with "Asda Opticians" written on them in a light green colour favoured by Specsavers but which was not specified in its non-colour-specific trade mark registrations. Its promotional material carried straplines which really invited trouble: "be a real spec saver at Asda" and "spec savings at Asda" [Readers who can't spot the bit that annoyed Specsavers should get their eyes tested, says Merpel]. There was evidence that Asda (i) initially planned to parody Specsavers' logos and advertising, thus inviting the public to compare its offering to that of Specsavers in a fairly blatant manner and (ii) took legal advice on whether Specsavers could legitimately object to various designs and straplines, before choosing those which led to this action.

Apart from alleging passing off Specsavers argued that, by using its logos and straplines, Asda committed regular similar-mark/same services infringement under Article 9(1)(b) of the Community Trade Mark Regulation and took unfair advantage of the earlier marks under Article 9(1)(c) of the same Regulation.

Mann J gave judgment in part in Specsaver's favour.

* The claim based on similar-mark/same service confusion failed: if a registered mark was unlimited as to colour it was registered for all colours and the colour of the allegedly offending sign became irrelevant. In this case, once colour was eliminated there was a degree of similarity between the respective logos, but there was also a significant visual difference in that Specsavers' ovals overlapped but Asda's didn't. While the ovals were an important part of the logos, they did not dominate them to the point that they subordinated the wording when considering the logo's overall appearance. What's more, the wording introduced a very significant difference, giving a very different overall impression and a reasonably circumspect consumer would not be confused by the presence of ovals if they were the only real element in common.

* The fact that Asda -- not for the first time in its trading life [Remember Penguins v Puffins, says the Kat, reported as United Biscuits v Asda [1997] RPC 51] -- was "living dangerously" did not make any difference to this conclusion and did not amount to evidence of an intention to confuse.

* The unfair advantage claim succeeded in respect of the first strapline but failed in respect of the logos and second strapline. This was because there was a link between the first strapline and the mark in that "spec saver" plainly called to mind the claimants' "SPECSAVERS" trade mark, and Asda clearly intentionally gained an advantage by drawing on the reputation already established by Specsavers' brand. As to the logo, the "living dangerously" evidence showed that Asda did indeed think its logo would have a resonance with Specsavers', but did not distance itself sufficiently from the earlier brand to remove that resonance. That amounted to "bringing to mind", but obly very weakly: any advantage from it was too slight to be unfair.

* Misrepresentation lay at the heart of passing off and there was none here: despite the similarities, there was simply too much of Asda's own branding on its own services to give rise to any misrepresentation.

* One of Specsavers' logos was revoked for non-use: it was a wordless one, it had not been used by itself in connection with the services for which it had been registered and its use with words written across it altered its distinctive character.

Says the IPKat, Specsavers probably feel quite sore about this, even though they have secured a small measure of what they sought to achieve. He also notes that, once again, survey evidence was put together by the claimant and then pulled apart by the court. When will claimants in cases involving proof of confusion and/or reputation finally work out how to address the methodological and inferential issues that seem to trip them up on almost every occasion? Merpel is unhappy in general about the conclusions relating to likelihood of confusion: if the relevant consumer of Specsavers' and Asda's optician services has poor eyesight, is he or she not more likely to be confused by the similarities in overall appearance between the two than the keen-sighted Mr Justice Mann?

Berenika Depo

The IPKat is shocked and saddened to learn of the sudden and unexpected passing of his very good friend Berenika Depo earlier today.

A partner in the Warsaw-based intellectual property practice of LDS Łazewski Depo, Berenika was known and greatly admired by a wide circle of practitioners, academics and administrators around the world. From her Polish base,

Berenika practised the art of being a truly cosmopolitan European. She studied law first in Stockholm, Sweden, before furthering her studies in Freiburg and Berlin, concluding with a Postgraduate Degree in Industrial Property at the Jagellonian University, Kraków. Before founding her own firm, Berenika led Baker & McKenzie’s Polish trade mark prosecution and litigation practice. She was a member of the Bar and a European Patent Attorney too. In between, she was a trade mark examiner in OHIM, Alicante, having the distinction of being the first Polish examiner appointed following Poland’s accession to the EU.

As a teacher, writer and public speaker, Berenika was a powerful spokesman on behalf of intellectual property rights. A warm and natural communicator, and also a natural linguist, she spoke fluent English, French, Spanish and German in addition to her two native languages of Polish and Swedish.

This Kat worked with her in her capacity as a contributor to the journal he edits -- not just a contributor of articles but of ideas to be shared with others. He also very much enjoyed crossing swords with her in debate on contentious IP issues, when she would demonstrate her depth of legal and commercial knowledge as well as some shrewd human insights.

The world will be a less exciting place without Berenika. She was a vivacious and inspirational character and there are many of us who will greatly miss her.

Rogue seal runs rampant in wiki world: FBI on the case

The IPKat has probably blighted his standing among US law enforcement officers forever by reporting this, but the BBC got there first with "Wikipedia and FBI in logo use row", posted yesterday on that august institution's website.

Apparently a dispute has broken out between Wikipedia and the Federal Bureau of Investigation (FBI) over the use of the latter's seal (right). The FBI is reported as having written to Wikipedia's San Francisco office, informing it that unauthorised reproduction of the FBI Seal was prohibited by US law, which states

"Whoever possesses any insignia...or any colorable imitation thereof ... shall be fined ... or imprisoned ... or both".

Wikipedia denied that it had done anything wrong when garnishing its wiki entry for the FBI with an image of the seal, saying the FBI lawyers had misquoted the law.

Says the IPKat, it will be good to get a court ruling on whether Wikipedia can be said to "possess" the insignia by virtue of its having been uploaded on to a server. It would also be great to know whether the FBI has registered its seal as a US trade mark and whether it enforces the copyright in it. Come on, US readers, do let us know!

Merpel says, even if the FBI is right, is its position not a futile one, designed to generate ill-will and achieve nothing by way of compensatory advantage? An image search using Google, or indeed Bing, shows how ubiquitous those images are in the online world.

The IPKat thanks Craig Watson (Murgitroyd and Company) for this lead.

Breaking news: Google keyword policy change

The IPKat has learned from impeccable sources that internet search-and-advertise giant Google is to change its keyword policy for all of Europe, taking the opportunity to harmonise practice, aligning the United Kingdom and Ireland with the Continent. The gist of the matter is that Google will introduce a notice-and-take-down procedure in response to the ruling of the Court of Justice of the European Union this March in the Google AdWords case, Joined Cases C-236, 237 and 238/08 Google France, Google Inc. v Louis Vuitton Malletier; Google France v Viaticum Luteciel; Google France v CNRRH Pierre‑Alexis Thonet Bruno Raboin Tiger, a franchisee of Unicis, noted here by the IPKat (you can enjoy the video of the Kats' seminar on this decision here). Under the notice-and-take-down system all you have to do is complain to Google; if the company agrees that your complaint is valid, it will remove the offending ad.

Adtext complaints remain available, and Google's Adtext policy will also change for the UK, Ireland (and Canada), just as it has already been changed for the United States. In result of this, you will be able to use a third party trade mark even without the consent of the mark's proprietor if you use it legitimately (reseller, etc).

All changes come into effect on 14 September 2010.

Wednesday whimsies

Appointment of an IP Tsar: is this a meaningless gesture or a vital step towards resolving IP problems at national level? Monday's post on the subject has sparked off quite a bit of debate, so I'm going to write an editorial for the Journal of Intellectual Property Law & Practice (JIPLP) on this very point. The editorial will be freely accessible to readers of this weblog, which is only fair since they have contributed freely to my thoughts on the subject. Three quick thoughts on the subject: (i) If knowledge is power, the IP Tsar should be able to assemble and distribute it with the greatest facility; (ii) Debate tends to focus mainly on IP's civil law aspects, but the Tsar's role may be far more important on the criminal side; (iii) The brief of the Tsar might include encouraging the many and varied pro-IP groups to rationalise wasteful duplication at all levels of their operations.


What is the effect of Article 96 of the Community Trade Mark Regulation (the provision that gives exclusive jurisdiction to Community Trade Mark Courts) on CTM-related arbitrations? That is the substance of two questions which MARQUES' Class 46 weblog has asked its readers. If you want to offer your sage advice, click here ...


Among the more impressive titles that the IPKat has recently been perusing is one from Sweden. Intellectual Property in Science, by Caroline Pamp, covers a range of central legal issues in relation to intellectual property in early-stage research, with a focus of bioscience and biotechnology and from the perspective of Swedish research groups. According to the web-blurb,

"Universities are in the middle of a transformation process where science is privatized and subject to a commercial logic. This process is not limited to commercialization activities but also extends to research programs. Legal constructions such as intellectual property rights influence and impact this transformation process, which results in an increased transaction-based logic at universities, and which also has an effect on how research collaboration agreements are drafted. Control by intellectual property rights claims is not per se decisive for the effects on access to research results; what matters is how such claims are used: statically, to block access, or dynamically, to enable access".

As an academic with professional experience, the author is better-placed than many to undertake the task of reviewing this subject (which was originally her thesis topic). She shows a welcome degree of understanding of all sides of the equation. Her sources include both mainstream writing and materials which, published in Swedish, are not so easy for some of us to appreciate. There's some case law too, reviewing research-based defences to actions for patent infringement on a comparative basis. This paperback, published by Jure, weighs in at 473 pages and its ISBN is 9789172233560. It's written in English and the print is large and clear. The cost is 690 Swedish kronor and you can order it via the publisher here. Says the IPKat, if you're looking for a well balanced account of this subject, you won't be disappointed.


It's short notice, but the Intangible Asset Finance Society is holding a meeting this Friday, 6 August, entitled "You say IP. I say IPR". What's this all about? The IPKat's friend Roya Ghafele, Lecturer at Oxford University and expert on IP perceptions, will be in conversation with Jim Singer (partner, Pepper Hamilton) to discuss whether accounting rules and language hinder the monetization of intellectual property -- or whether accounting, given its inability to measure intangible asset value, is becoming progressively irrelevant. The IPKat has no idea where on the planet this meeting is being held, but believes that you can find more information here.


From the IPKat's Romanian friend Mihaela Ciocea comes news of carping in the Carpathians following the revelation that the country's new tourism brand, under the slogan "Explore the Carpathian Garden" has been overshadowed by controversy once some crafty bloggers found that part of the logo is almost identical to an image available on the internet [said to be the British Change Transport logo, but the Kat couldn't get the supplied link to work]. Minister of Tourism Elena Udrea has stated publicly: "The similarity of the two logos is just accidental" and that its use will continue. However, the Romanian Ministry of Tourism is said to have suspended payment of the brand producer, the Spanish company THR-TNS, until both the local Trade Mark and Patent Office and OHIM have had their say.

The Pillsbury Doughboy rises to take on My Dough Girl

There is nothing this Kat loves more than bakery related IP stories, especially cupcake litigation (see post here). So this story especially caught her eye via a TechDirt tweet. But before delving into the IP fight, some background is necessary for non-US readers.

The Pillsbury Doughboy is an American advertising icon and mascot for the Pillsbury Company (owned by General Mills) who sells a variety of chilled dough that can be popped in the oven to reveal croissants, cinnamon rolls, buns and cookies. He is, as the name suggests, a "boy" made out of dough. (Picture, left - The Pillsbury Doughboy) His television commercial appearances normally end with a human finger poking his stomach and him responding with a giggle or his trade marked "hoo hoo" (click here to listen). Like Aunt Jemima and the Green Giant before him, the Pillsbury Doughboy enjoys a significant reputation in the US.

So when over eighteen months ago a Salt Lake City resident opened a cookie store called "My Dough Girl" it was only a matter of time until the Pillsbury Dough Boy came a knockin'. My Dough Girl specializes in gourmet cookies named after a specific "Dough Girl" with names such as Penelope, Vivianna and Margo. Like the Pillsbury Doughboy brand, she also sells frozen dough to customers for home baking. When the owner, Tami Cromar, picked the name of her bakery she told NBC affiliate, KSL in Salt Lake City that she went through the proper procedures, namely checking for any potential copyright infringement.

This is supposedly where she went wrong because as many will know this is a trade mark issue, not a copyright issue. The Doughboy then came after her for trade mark infringement when Pillsbury sent her a cease and desist letter this past May demanding she change the name of her business or face a lawsuit. The Pillsbury Company also filed oppositions to The Dough Girl's trade mark applications pending before the USPTO. It is reported that My Dough Girl will be changing their name at a cost of around $50,000 rather than face the costs of litigation.

The fans are not impressed, however, with the organization merely threatening a small business with the prospect of court. A Facebook page devoted to boycotting Pillsbury following its threat to My Dough Girl has drummed up over 800 members in support of Ms.Cromar. A post by Facebook user Cheryl Hawkes Skelton stated:

"Corporations think consumers have no brain power. There is NO way one could possibly confuse the blue and white dough boy with the red sign of My Dough Girl. I haven't purchased Pillsbury in the past, this clinches the deal that I won't in the future."

Another more terse post from user Christopher C. DeSantis stated that:

"Pillsbury's attorneys are far too hungry for billable hours; they should eat some of their own pastries instead. Legal shenanegans (sic) of this nature are frustrating beyond belief, and serve only to underscore the abuses of the legal profession and the greed of mega-corporations. For shame, Pillsbury! What planet are you from? No Pillsbury products for me until you withdraw this ridiculous lawsuit."

This Kat must again reiterate, that as far as she is aware, Pillsbury have only sent a cease and desist letter and have not actually issued proceedings.

Legally speaking, this Kat is skeptical how strong Pillsbury's case really is. The marks and goods are indeed similar when comparing Pillsbury mark as registered, i.e. DOUGHBOY. However, there is something to be said to how the Pillsbury Doughboy is actually refereed to and identified by consumers. This Kat grew up with the Pillsbury Doughboy's reputation, but the link, if any, between the two marks as used is small. This is because in common American nomenclature, the Doughboy is only ever referred to with the "Pillsbury" precursor.

Evidence of actual confusion would be difficult to come by, as well. My Dough Girl operates out of a stand-alone shop, and not, like Pillsbury's products, in every national supermarket through out the US. (Picture, left - is that a litigation ax he is wielding, or just a spatula - you decide) The marketing channels used by the two are extremely different as well. My Dough Girl's marketing seems, as far as can be ascertained, to rely primarily on social networking through its website, Twitter, Facebook page and word of mouth. The Pillsbury Doughboy enjoys multi-network national television campaigns. Further it seems impossible to envisage a scenario where a consumer gets in their car to drive to the grocery store to pick up a can of Pillsbury croissants, drives past My Dough Girl in Salt Lake City, gets confused, stops and purchases their products instead. Economically speaking, as well, if you are in the market for a Pillsbury Doughboy product it is highly unlikely you will be stopping at a gourmet cookie shop instead.

But what about dillution, an astute IPKat reader asks? This Kat believes that the blurring argument is again weaker given the smaller degree of similarity between the marks and the different consumers of the product (thus, decreasing the two's cross-association). And unless Pillsbury would be arguing that the pin-up names of the cookies tarnishes the innocent nature of the Pillsbury Doughboy, she is again unsure how far a dilution argument takes them. For recent dilution case involving Starbucks see this AmeriKat post here.

This Kat believes that this type of threatening conduct by large corporations can actually be more damaging to the reputation of their overall brand than the harm a small business name would actually cause to their trade marks. This Kat suggests that before big businesses blindly send out cease and desist letters they consider the benefit in doing so, not only for their intellectual property protection, but also their brand's reputation.

Pay up! Pay up! And play the game"

No, the IPKat didn't forget -- he has just been busy doing other things. But now he has got around to writing a few choice words on the surprisingly and pleasantly interesting case of Nintendo Company Ltd and another v Playables Ltd and Wai Dat Chan [2010] EWHC 1932 (Ch), decided on 28 July 2010 in the Chancery Division, England and Wales, by Mr Justice Floyd.

The claimants ('Nintendo') respectively (i) made and distributed the Nintendo DS games console (the console) and accompanying games and (ii) held the European distribution rights in the games. Her Majesty's Revenue and Customs Commissioners seized more than 165,000 game copiers, devices which fitted into the slots on Nintendo's games consoles. These devices contained either a built-in memory or a further slot of their own, with room to park a commercially available memory card on which copies of games could be stored. Clever little things, they also contained circuitry, software and data (including a copy of the Nintendo Logo Data File, or 'NLDF') which, Nintendo alleged, enabled them to circumvent its technical security measures which were supposed to prevent the loading and playing of unlawful copies of its games. The technical measures related to three features in particular: (i) the shape of the slot on the consoles, which corresponded to the shape of the game cards designed to fit it; (ii) the boot-up software which was permanently stored on the console and (iii) the use of shared key encryption technology and scrambling. It was these devices that Playables, a company under the control of one Wai Dat Chan, imported.

The facts are quite straightforward compared to the law. Nintendo first invoked s.296ZD(1) [This is not a joke: it really is called s.296ZD(1)] of the Copyright, Designs and Patents Act 1988:

"(1) This section applies where— (a) effective technological measures have been applied to a copyright work other than a computer program; and (b) a person ...
(C) manufactures, imports, distributes, sells or lets for hire, offers or exposes for sale or hire, advertises for sale or hire, or has in his possession for commercial purposes any device, product or component, or provides services which— (i) are promoted, advertised or marketed for the purpose of the circumvention of, or (ii) have only a limited commercially significant purpose or use other than to circumvent, or (iii) are primarily designed, produced, adapted or performed for the purpose of enabling or facilitating the circumvention of, those measures ...".

Nintendo also invoked the original s.296 of the same Act:

"(1) This section applies where— (a) a technical device has been applied to a computer program; and (b) a person (A) knowing or having reason to believe that it will be used to make infringing copies— (i) manufactures for sale or hire, imports, distributes, sells or lets for hire, offers or exposes for sale or hire, advertises for sale or hire or has in his possession for commercial purposes any means the sole intended purpose of which is to facilitate the unauthorised removal or circumvention of the technical device; or (ii) publishes information intended to enable or assist persons to remove or circumvent the technical device ....".

Said Nintendo, Playable's devices fit both these provisions and their application to its consoles was therefore unlawful under the Act. Not content with these allegations, Nintendo said that there was also ordinary, traditional copyright infringement by authorising the commission of infringing acts by others under s.16 of the Act and secondary infringement under s.24 by supplying the means by which others could make infringing copies of (i) the source code for the console's boot up software, (ii) the NLDF and (iii) Nintendo's Racetrack logo. In addition, Nintendo claimed that Wai Dat Chan, who controlled Playables, was jointly liable with the company since its activities were such that they could only have been carried out as a matter of corporate policy; Wai Dat Chan, as sole director and shareholder, was the man who made that policy.

Despite securing a partial settlement on their claims, Nintendo still wanted to obtain a judgment establishing their rights and applied for summary judgment. Both defendants resisted, saying that (i) they neither knew or had reason to believe that the devices would be used to make infringing copies and that (ii) the devices could in any event be put to lawful use. There was also an interesting little issue as to whether sections 296 and 296ZD applied to export sales, or if they only covered sales for local use.

Floyd J gave summary judgment against both parties, except where he didn't. Neither knowledge nor reason to believe were necessary ingredients of a successful claim under s.296ZD, it being a tort of strict liability. Even if the device could be used for a non-infringing purpose, there was liability so long as one of the conditions in s 296ZD(1)(b) of the Act was satisfied. Section 296 was a bit less straightforward: the fact that a device might be used for a purpose which did not involve infringement did not mean that the sole intended purpose was not the unauthorised circumvention of a technical device but here it was clear that (i) 'technical devices' had been applied to the copyright computer programs in the console and its game cards and that (ii) the devices had the sole intended purpose of circumventing Nintendo's technical measures.

The defendants were sunk, but still had some reason to smile: s.296 was not infringed when the circumvention took place outside the jurisdiction. This was because the "infringing copies" which a defendant must know would be made had to involve an act of infringement of United Kingdom copyright. Summary judgment therefore had to be refused in respect of the sales of the devices which were for export. Section 296ZD had no such problems though, since it applied to dealings in the United Kingdom in devices capable of circumvention, wherever they might ultimately end up; indeed, since it was concerned with whether devices were capable of circumvention rather than actually did any circumventing, it didn't matter whether the circumvention was one which didn't take place in the UK or didn't take place elsewhere.

Says the IPKat, in a single European market the notion that the sale or distribution of such devices might ever escape liability on the basis that they are for export only doesn't look quite right, does it? Says Merpel, judging by the amount of money that can be made from game copiers, has Ninendo considered either licensing their manufacture, after the first surge of sales of a new game has subsided, or even making and selling its own?

"It's all in the game" here

"Only a game?" -- arguably the finest footballing autobiography ever written -- here

Play up! Play up! And play the game" here

The marketing of octopus Paul

Our readers may remember Paul (left), the psychic octopus, who became a global sensation when he correctly predicted the outcome of all Germany games in the recent football World Cup as well as the result of the World Cup final. Paul clearly has become a strong brand (see the IPKat post here and reports on Marques Class 46 here, here , here and here)) and somewhat bizarrely still makes the international headlines long after the World Cup.

A short selection of Paul stories: RTL recently reported that a Russian company was interested in hiring Paul as a "bookie", whereas German magazine Der Spiegel informed us that an American composer Parry Gibb composed a love song for Paul ("Paul the octopus, we love you") which can be experienced on YouTube. The Telegraph then reported that Kazakh bookmakers were "furious at Paul" and blamed him for "their paltry World Cup profits", whereas Chinese website Xinhuanet reported that the Chinese comic suspense film "Kill Paul Octopus" will open in Chinese cinemas in August. Paul, also made an enemy: The Telegraph today reported last week that Iranian leader Mahmoud Ahmadinejad proclaimed that Paul symbolizes the "decadence and decay" of the Western world. In the latest news today, we learn from the Austrian Der Kurier that Paul will now also record an album of Elvis songs ("Paul The Octopus Sings Elvis"). I still have hope that the latter was meant to be a satirical article but I fear that this is a genuine news item.

So, how long do we think it took for the first Paul trade marks to appear? You guessed correctly, not very long. Interestingly but not surprisingly, the trade marks were applied for by different applicants.

German trade mark Paul das Orakel was already filed on 2 July 2010, Community trade mark No. 009240532 Polpo Octopus Paul was filed on 12 July 2010 as where two German trade marks in the name of Sea Life Deutschland GmbH, the zoo where Paul resides. Further creative Paul marks, such "Paul die Krake” (Krake is German for octopus), “Oracle Paul” and “Okrakel Paul“, were subsequently also filed by different applicants (for more details, see Marques Class 46 reports here, here , here and here).

However, the marketing of Paul is far from over. Today, we read in Der Spiegel that Paul has landed a marketing deal with German supermarket chain REWE. According to Der Spiegel has has so far "...received more than 160 endorsement offers, including a book deal" and, brace yourself, Paul now also has an agent.

This Kat can't help wondering whether this is a cultural phenomenon, since it is rather reminiscent of the (German) trade mark craze over the polar bear cubs Knut, Flocke and Co (see IPKat reports here and here)?

IP Tsar: is it worth a try?

Writing in The Lawyer today ("Opinion: UK economy needs an IP tsar"), Mark Owen is one of the first folk in the IP field to assess the UK intellectual property landscape after the axing of the Strategic Advisory Board for Intellectual Property (SABIP). This is what he has to say:

"Established two years ago as an independent adviser to the Government on IP policy, [SABIP] had little visible effect on the Government’s understanding of IP [this is not surprising: evidence-based policy assessment is a slow process at the best of times, and getting an embattled government to absorb IP concepts is like trying to get small children to eat spinach] and did little to improve IP policy. To IP solicitors and barristers it was largely irrelevant, other than that its lengthy outpourings were yet another stack of paper to get one’s head around in case they said anything new or provided important clues as to policy, which they rarely did [Many practitioners kindly offered their time, experience and judgment to SABIP projects, and may be wondering why they bothered]. Its passing will be mourned only by the academic community who wrote its many reports [SABIP didn't give the academic community an easy time. I've never experienced research under a more intrusive and interfering taskmaster in my career].

But the rise and fall of SABIP is important because it shows how little any government understands or cares about IP, despite regular lip service to its role in the economy [This is because (i) there are no votes in IP and (ii) most serious policy is shaped at EU level anyway].

So what? Isn’t IP just a small, unimportant area of practice full of geeks, which many large firms stopped doing years ago? Yes and no, as there’s a bigger picture here.

The last government peppered its soundbites with its enthusiasm for the ’knowledge economy’, putting ’Creative Britain’ at the heart of the UK’s recovery from the recession and calling it key to our competitiveness in the global market [The gap between this mantra any any tangible action became increasingly annoying]. The coalition says very much the same. There’s much that can be done to make IP policy serve the interests of the economy and the country as a whole, with potentially significant gains in education, competitiveness and jobs. But our current process of government makes it unlikely that this nettle will ever be firmly grasped.

Government IP policy-making has been characterised by shameless buck-passing dressed up as democracy, in the form of endless and repetitive consultations year after year, with little apparently ever learnt or carried forward [Indeed! Though I'm not sure if it's a case of passing the buck or too many people thinking they've firmly grasped the buck when they haven't ...]. If the knowledge ­economy and Creative Britain are to mean anything, then modern, cogent and flexible [careful: these words are apt to be found in government soundbites] IP laws will have to be at the heart of it. To achieve that, the Government needs to start taking responsibility and make the effort to understand IP and how it should fit with other areas of policy, rather than asking bodies such as SABIP to tell it what to think.

IP should be near the centre of economic and education policy, with a dedicated and serious minister [A good start]. Too often it has been infected by government short-termism, becoming a ministerial game of pass-the-parcel. Lord Triesman was the first IP minister, appointed with knowledge economy fanfare, who hoped to make radical changes but who the Government then moved before he had had a chance to effect much change [He had no IP background or knowledge at all]. We then had high hopes of his successor David Lammy [Baroness Morgan was actually next. Totally miscast and way out of her depth], as he was a qualified lawyer, but who was also in and out of the post quickly and will be ­remembered largely for drawing a curious analogy between file-sharing and taking free soap from hotel rooms [also remembered for arriving late for most public airings and for being spirited away before I could ask him any questions]. Baroness Wilcox now has the portfolio, though her interest in IP is as yet unknown to most of us [some useful background though]. Worryingly perhaps, IP is no longer even seen as sufficiently important to form part of her ministerial title.

In contrast, the US - in so many ways the technological innovator we dream of being - now has an IP tsar [Victoria Espinel], with a direct link to the president, as well as powerful heads of its copyright and patent/trade mark functions.

It may be that Vince Cable’s decision to axe SABIP presages a new more serious approach to IP policy. But the omens look bad. This is not the glamorous end of government, there are few cuts left to be made and little chance of grabbing the headlines. What is required is careful and incremental change, thought through by government departments with real expertise and interest in the area. But what hope of this is there if governments are always focused upon the short term and capable ministers upon further advancement? What we need is an IP tsar who really gets it [It's worth a shot, so long as the IP Tsar has a serious and well-defined role, rather being some sort of ombudsman, plus powers and resources]".

What are your thoughts on the subject? (Please post them below, so that everyone can share them ...)

Monday miscellany

What better way to get the new week off to a wonderful start than to indulge oneself with the delights of a freshly-published UK patent. The IPKat is much obliged to his friend Ilya Kazi (Mathys & Squire) for this one, which turns out to be a Surveillance System. The proprietor is a company named Enjoy Birds More Ltd. Need one say more?

A further confession of terminological ignorance: the IPKat has never heard of the term "nurdle", which apparently means “a small amount of toothpaste akin to what consumers would use brushing their teeth.” It seems that GlaxoSmithKline has some form of intellectual property right in the United States in relation to the nurdle (every nurdle? a stylised nurdle?) which appears on its AquaFresh’s toothpaste package and which is about to be infringed by Colgate. In turn, Colgate is claiming that Glaxo is threatening litigation for no other reason than ”to further its anti-competitive motivations” and “to hinder fair competition.” Thanks, Shabtai Atlow, for this link to the WSJ Law Blog. Says Merpel, please excuse the IPKat's ignorance, and remember that most Kats never clean their teeth. As a poetry-loving Kat, he should however be aware of the following immortal lines (taken from the Shmurdle Nurdle Song):

"You’ll need a Nurdle of toothpaste the size of a pea
Do circles with your toothbrush and you will soon see
Your teeth getting cleaner as you brush round and round
Wash the water down the plug hole with a guuurgl-ling sound".

Progressive brands. A reader has contacted the IPKat in some anxiety. He notes that some people have been using the term "progressive brand" in a very important and grown-up way, but he's not sure why. Has this term, he asks, suddenly grown a meaning which is generally understood and which is now in common use among branding folk? This Kat, pleading a total insensitivity to matters of terminology and common use, must confess that he hasn't detected any such use, and rather hopes he doesn't. But Merpel wonders whether any of this weblog's readers can advise if "progressive brand" does indeed mean something and, if so, what?

"Not so long ago", writes one of the Kat's correspondents, "the ‘Centre d'Études Internationales de la Propriété Intellectuelle’ (CEIPI, for English speakers) was on the tip of everyone’s tongue as providing the Rolls Royce of training courses" for European patent attorneys. Recently, however, the folks at CEIPI have reported reduced enrolments from the UK and are wondering whether it really is because funds are lacking, or whether there is some deeper reason:

"Theories range from a moratorium on annual leave until as many as possible permutations of features in pending applications have been filed as divisional applications before the October 1 deadline, through to too many delta minus semis offering competing courses or too many complete dummies’ guides to passing the EQE. On the other hand, it may be because of something they said during the infamous politically incorrect mock oral proceedings at the C Preparatory Seminar".

CEIPI is part of the faculty of Law at the University of Strasbourg. When the European Patent Office opened in 1977, CEIPI was entrusted with the official teaching role for European patent law to future specialists. It has a well-established reputation for providing good quality courses at reasonable cost, basically because the tutors are hand-picked from senior active practitioners in industry, private practice, or the EPO and it is essentially non-profit-making, at least after the cost of tutors' drinks has been covered. Further details of CEIPI's courses are available here; individual courses are listed in this blog's side bar.

That Press-ing Problem. Many thanks to all of you who have responded to the IPKat's call for an expression of interest in a short-and-sweet session on how to write a good IP press release. The response has been so positive that the Kat is thinking of running the seminar on two separate dates, to accommodate demand. He will be writing to all those who have contacted him, offering dates, at the end of this week. If you'd like to be circulated, email him here.

Olympic Sponsors: There's One Left (Just For You)

I have been thinking about the big picture lately. Maybe that is what happens when you are about to pack your daughter off for a 10,000 mile journey to begin graduate study ("in a far away place", if not exactly a long ago time, with apologies to Lucas and Speilberg). In any event, as I complated the global reach of her imminent trip, I could not help but notice two reports on bloomberg.com about the success of the International Olympic Committee (a.k.a. the IOC) in landing its second global sponsorship agreement in less than two weeks.

If there is one sponsorship program that best enables multiple brands to sustained exposure in front of a worldwide audience, it has to be the IOC sponsorship program. So much so, it would seem, that an entire legal analysis (Phillip Johnson, "Ambush Marketing") was published on the cat and mouse game between sponsorship and ambush marketing, with the Olympic Games clearly in mind.

In one of the maddening aspects of online reporting, the two Bloomberg accounts ("Procter & Gamble Signs Global Sponsorship Through 2020", July 28th, here and "Olympics Chief Rogge Says Sponsorships Improve as IOC Signs P&G", July 29th here) offer complementary accounts of a sort about the addition of P&G to the IOC sponsorship stable (financial terms, however, not disclosed). This came in the heels of the sponsorship agreement of July 17th between Dow Chemical and the IOC.

At least with respect to the 2012 Olympics, which will take place in London, in addition to Dow Chemicals and P&G, the sponsors are Coca-Cola, Acer, Atros Origin (I think that they mean the IT company Atos Origin), General Electric, McDonald's, Omega, Panasonic, Samsung and Visa. As explained by Rogge, the IOC President, with 11 sponsors on board, the IOC wants to add one more sponsor. "We will not go beyond 12 because otherwise we would start diluting the message and the activities," he said. "We are discussing with a number of companies and there are a number of issues in the pipeline but still nothing finally confirmed." Whatever the marketing value of being one of a limited number of Olympic sponsors, the IOC is reported to have raised nearly one billion dollars for sponsorships for the four-year period running through 2014.

What do we make of this sponsorship list? I have a few thoughts:

1. The dark days of 2008-2009 seem, for the moment, to be behind us. I particularly reemember the decision of Kodak, a long-time sponsor, to end its sponsorship after the 2008 Olympics. I attributed that decision to both the financial challenges facing the company and the remixing of their products (unlike the days when the mark was identified with film for cameras), such that exposure (I know--bad pun) of the Olympic kind was no longer attractive.

2. While Asian companies are prominently found on the list, none is Chinese or Indian. That suggests that, at the mega-level of the Olympic Games, Chinese or Indian companies with global reach are not the sort for which massive consumer exposure is yet valued. Of course the day will come when companies from these countries (and other emerging economic powers) will begin to serve as sponsors for the Olympic Games. When that happens, the interesting question is whether Olympic sponsorship will be a clarion call that "we have made it", or whether it will reflect a marketing bet by one or more such companies to invest in the Olympic platform to reach the next marketing level.

3. The P&G agreement seems different to the other sponsors in the sense that P&G will have to decide which of their product brands--e.g., Pampers diapers or Gillette shavers--will be featured. The answer may well differ depending on the situs of the event, and the perceived markets that are being targeted for these products. Whatever the ultimate decision, the branding activities of P&G will differ from most of the other sponsors, which will more likely focus on promoting their house mark in connection with certain product lines.

4. Away from the spotlight of the Olympic Games, I wonder how sponsorships will play out in less widely covered sporting events. In particular, I am curious about the sponsorship program in connection with the 19th Commonwealth Games, set to take place in New Delhi in two months time. At the least, it might give an indication of where future Olympic sponsors will come, as well as a window into the kinds of products and services that are viewed as appropriate for the viewing (Indian?) audience. If any readers have information on this, this Kat would be delighted to hear about it.

Invisible goods

In June the IPKat commented [writes his distinguished and practical friend Richard Ashmead] on a recent reference to the Court of Justice of the European Union (CJEU) which arose from a UK trade mark application for IP TRANSLATOR (here), seeing it as “a much-needed and very welcome reference to the CJEU of some questions which could greatly benefit from a preliminary ruling ...”. The questions in need of a ruling are about the “class heading dispute”, a term which may suggest no more than an argument over classification. It is not.

The argument goes right to the heart of what does -- or does not -- infringe the registration of a trade mark in the European Union, since it addresses the controversial issue of what constitutes identical or similar goods. Indeed it concerns how to construe the scope of the description of goods and services (“goods” for brevity) in a significant proportion of European national, regional and Community applications and registrations. The class heading dispute runs, briefly, like this:

1. The list of goods as registered defines the boundary between what does, and therefore also what does not, infringe a registered trade mark. It tells you whether a third party's goods can infringe because they are identical or, on the evidence, similar, to those for which a mark is registered.

2. To consider if there is infringement, one reads the list of goods for which the mark is registered and check whether third party goods are listed there. If they are, they infringe as being identical. If not you move on to possible similarity and the heavier burden of proof which that involves.

3. Class heading registrations, with list(s) which are the same as Nice Classification Class Headings, are commonplace in the EU. Our dispute centres on how you read these. The two sides of the dispute require you to apply either

a. the "means-what-it-says" approach: construe the words of the class heading list essentially according to their own dictionary significance, or
b. the “class-heading-covers-all” approach: construe the class XX heading list as if it reads “All goods in class XX”.

4. All classes include extra goods not in the class heading wording, specifically or by genus/species significance.

5. Under "means-what-it-says", these extra goods cannot infringe as identical goods, but may infringe as similar goods if the evidence demonstrates that there exists a likelihood of confusion.

6. Under “class-heading-covers-all”, these extra goods are deemed to be within the class heading wording as registered and so infringe as identical goods. There can in these circumstances be no similar goods within class XX, only identical. As examples, under “class-heading-covers-all”:

a. stands for musical instruments in class 15 infringe a registration for “Musical instruments” (the class 15 heading) as identical
b. repair outfits for inner tubes in class 12 infringe a registration for “Vehicles; apparatus for locomotion by land, air or water” (the class 12 heading) as identical, and
c. sleeping bags for camping in class 20 infringe a registration for “Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics” (the class 20 heading) as identical.

These examples do not infringe as existing goods under "means-what-it-says", although they may each infringe as similar goods, with supporting evidence.

7. The protection afforded to a registered trade mark is absolute in the case of identity between the marks and goods, with no defence on evidence relating to the goods.

8. Similarity of goods is arguable, subject to evidence of a likelihood of confusion on the part of the public. Stands for musical instruments may on the evidence be similar to musical instruments themselves but, under “class-heading-covers-all”, the defence argument disappears.

9. Current indications are that the IPOs of AT, BX, CH, CZ, DE, DK, ES, FR, IE, LV, NO, PL, SE, SI, SK and UK apply "means-what-it-says", while the IPOs of BG, EE, FI, HU, IT, LT and RO (along, most importantly, with OHIM) apply “class-heading-covers-all” (thank you, MARQUES, for this data).

10. As a final sting in the “class-heading-covers-all” approach, OHIM’s version of it as explained it its 2003 Presidential Communication No. 4/03 not only extends the scope of a class heading registration to goods not within its wording, but does the same to any registration using a “general indication” from a class heading, giving those words a goods scope beyond their dictionary meanings. As an example under “class-heading-covers-all” a registration list reading simply “data processing equipment and computers” (which appears in the class 9 heading) is infringed by computer software as identical goods, but not under "means-what-it-says" unless the evidence supports similarity.

Both approaches cannot be right, and their coexistence across the EU brings uncertainty as to precisely what it is that class heading registrations (and others) cover. This uncertainty is also likely to produce conflicting decisions, giving equivalent EU national registrations different scopes.

The CJEU reference in IP TRANSLATOR (here) was made in May 2010 by Geoffrey Hobbs QC, sitting as an Appointed Person. It converges its questions on OHIM’s explanation of “class-heading-covers-all” in Presidential Communication No. 4/03, asking whether it is:

“....necessary or permissible for such use of the general words of the Class Headings of the said International Classification of Goods and Services to be interpreted in accordance with Communication No. 4/03 of the President of the Office ......”

In essence this asks the CJEU whether "means-what-it-says" or “class-heading-covers-all” is correct in EU law.

The IPKat commented earlier that he saw justification for both positions, despite preferring the "means-what-it-says" practice. He continued to support a 'one-way-fits-all-offices’ solution, whichever it is. On that latter point there is widespread support. The UK IPO, in the IP TRANSLATOR appeal hearing, commented that the dispute puts it in a difficult situation which can only be resolved by a reference, and OHIM has said publicly that it would welcome an explicit ruling from the CJEU to resolve this difference between different EU jurisdictions. I agree since the existence of the dispute at IPO level, and possibly above, adds an extra level of uncertainty on the scope of a registration in trade mark clearances searches, infringement matters, oppositions and cancellation actions.

I too prefer the "means-what-it-says" practice, but more to the point I believe that legal analysis makes “class-heading-covers-all” untenable. My views on the legalities can be found in the CIPA Journal of April 2009, Volume 38, Number 4 pp 257-260. I have yet to see a reasoned legal analysis supporting the contrary view, but should welcome one, not least for balance in consideration of the further stages of the CJEU reference process.

The keys to resolution of the dispute are, I suspect, in two terms, (i) the prospect of a registered list of goods being construed to provide “invisible protection” for the many items in
every class which are not naturally described by any of the terms used in the class
heading, and (ii) “directly related”, from OHIM Presidential Communication 4/03 as regards goods. On “directly-related” 4/03 says (the support for point 10 above):

“"computer software" is classified in cl. 9 because of the presence of the general indication "data processing equipment and computers" in that class, because computer software is seen as directly related to the corresponding apparatus or equipment. Therefore, when a specification contains "data processing equipment and computers" as a general indication, this will be considered as embracing also computer software.” [Emphasis added]

We know about identical and similar goods, and the increased burden of proof when similarity is argued, but the oft-applied effect of 4/03, eg in CTM oppositions, is that all of these extra goods in any class are directly related to those in their class heading wording, and so are identical. Can then goods be similar and directly related and, if so, does the likelihood of confusion proviso apply or not?

The idea of “invisible protection” comes from a UK IPO opposition decision in case O-026-06 concerning COVENT GARDEN, asking in essence whether a registered list of goods should, through the hidden code of corresponding to (part of) an IC class heading, have a greater goods scope than a registration not so corresponding?

All contributions to this debate, whether they are in agreement with this piece or not, are welcome. Please post a comment below and/or email Richard Ashmead.

Breaking news: Vodkat appeal dismissed

In a super judgment in January, noted by the IPKat here, Mr Justice Arnold (Chancery Division, England and Wales) held in Diageo v Intercontinental Brands that the sale of a product under the name VODKAT was a form of "extended passing off" which makers of genuine vodka were entitled to prevent. This morning the Court of Appeal (Lords Justices Rix and Patten and Mr Justice Peter Smith) dismissed the appeal.

Intercontinental Brands had argued that only products which have a cachet should be protectable and that vodka, being a generic term, did not possess such a cachet. In its decision -- largely given by Patten LJ with a little augmentation from Rix LJ -- the Court reaffirmed that cachet is not a legal requirement and therefore dismissed the appeal, refusing permission to appeal to the Supreme Court.

The injunction prohibiting Intercontinental Brands from continuing to sell its VODKAT non-vodka product will not come into force until such time as any application to the Supreme Court for permission to appeal has been dealt with.

The judgment (77 paragraphs) is not yet on BAILII, but you can read it in full here.

STOP PRESS: the judgment is now available on BAILII, here.

Friday fantasies

The boy stood on the burning deck
Whence all but he had fled.
"Why stay you there", his crew-mates cried,
"When danger lies ahead?"

"I cannot leave", the young man said,
"I won't desert my post!
I'm checking on the IPKat's site
Th'events I like the most.

The list upon the sidebar
Is full of gems galore --
Conf'rences and seminars
On thrice-bless'd IP law!"

Yesterday, in "A Press-ing Problem", the IPKat bemoaned the poor quality of the intellectual property media and press releases which he receives from so many people. If enough people were interested, said the Kat, he'd run a little course on how to write decent ones. So far, he has had a good response -- but half the people who have emailed him to ask to be put on his list are those who already prepare quite good ones, and not a single person from his "offenders list" has contacted him. That already speaks volumes for the comparison between those who take their media releases seriously and those who couldn't care less. If you're interested in participating in a "how to put together a decent press release" seminar, email here, with the subject line 'IP Press Release'.

US-based free patent information provider Priorsmart, which also tracks patent-related blogs and news, has started sending out a daily email listing all the US patent infringements, including free pdf complaints. For details of this service, email here. The IPKat has seen a couple of these listings and is a little embarrassed to confess how few of the litigants are known to him ...

Latest report on British IP crime. The UK's Intellectual Property Office has now published the IP Crime Group's annual report for 2009/10, which provides an overview of the current scale of IP crime and what is being done about it. Noting that it remains difficult to establish the likely impact of IP crime accurately, not least since such activities tend to take place outside the formal economy, the report records an increase in the coordination of enforcement activities and information between rights-holders, the government and enforcement agencies. The result is a greater level of public awareness, more convictions, and more infringers forced to regurgitate their ill-gotten gains under the Proceeds of Crime Act 2002. IP Minister Baroness Wilcox is getting ready to deal with the real villains, though:

"The real key to beating this threat is the public. People must refuse to buy anything they suspect is not genuine and report the seller to their trading standards or police.".

The report is 64 pages long and you can read it here. IPO press release here.

Around the journals. The latest issue of JIPITEC, the a new Online Journal for current issues of intellectual property, information technology and E-commerce law, is now available: check it out! The August 2010 issue of Sweet & Maxwell's monthly European Intellectual Property Review (EIPR) is out too, with a review by the China Patent Office's Yong-Kang Yang of the term "national treatment" in Art.2(1) of the Paris Convention and Patricia Akester's look at the realities of striking a balance between copyright protection and UNESCO's baby -- access to knowledge, information and culture. Always ahead of its cover date, the August-September World Trademark Review (contents here) has a distinctively Chinese flavour to it, but there's plenty more besides, including an international design and trade dress survey. Oh, I nearly forgot -- the July issue of Intellectual Property Magazine (here) has lots of short, attractively illustrated pieces across the range of IP.

Around the blogs. Miri Frankel, who already contributes to the IP Finance weblog, is joining the 1709 Blog team too, where she will offer some welcome US perspectives. Excess Copyright speculates on the deeper meaning and potential for protection of the term "English Muffin"; the IPKat chooses not to delve too far, since Wikipedia associates muffins with crumpets and both have, er, overtones. Frank Zappa fans will recall the prime significance of this delicacy, recorded not merely in the name of one of his children but in Muffin Man, the lyrics of which contain the immortal stanza "Girl, you thought he was a man/But he was a muffin".

Pharma linkage. A friend of the IPKat works in the area of pharmaceutical linkage regulations which tie drug approval to drug patenting. He works in Canada, where the relevant domestic regime, in force since 1993, is was modelled after the US Hatch-Waxman regime, and he is putting together an application for a grant to study linkage regimes globally. He asks:

"Is there a parallel system in the UK or EU? Has one ever been debated, or is one currently being debated?"

If you'd like to comment -- or indeed to get in touch with the Kat's correspondent -- please post accordingly below.

Inbev loses Budweiser CTM appeal

Just when the IPKat thought it was safe to redirect his lynx-like ears away from Luxembourg and towards the ball-by-ball commentary on the cricket match between England and Pakistan, the Court of Justice -- which has been quite quiet over the past few days -- sputtered into life again with a ruling in Case C‑214/09 P, Anheuser-Busch Inc. v Office for Harmonisation in the Internal Market, Budějovický Budvar, národní podnik, the final appeal in a minor part of the larger and apparently eternal war between the formerly American Budweiser (now European-ly Belgian) and its Czech mate Budvar.

In its ruling the Court of Justice, affirming the decision of the Court of First Instance in March 2009 (noted here), said AB Inbev (the AB being 'Anheuser-Busch') was not entitled to register the word BUDWEISER as a Community trade mark for ‘beer, ale, porter, malted alcoholic and non‑alcoholic beverages’ in Class 32. The original application, filed on 1 April 1996 (the day the Community trade mark system commenced), was opposed by Budvar on the basis of (i) its earlier international word mark BUDWEISER, registered for ‘beer of any kind’, with effect in Germany, Austria, Benelux and Italy; (ii) an international figurative mark including the words ‘Budweiser Budvar’, registered for ‘malt’ and ‘beer’, with effect in Austria, Benelux, France and Italy; (iii) an international figurative mark including the words ‘Budweiser Budvar’, registered for ‘beers’, with effect in Germany, Austria, Benelux, France and Italy, and (iv) on a number of appellations of origin including the word ‘Budweiser’.

The Court of Justice today agreed that Budvar's earlier rights to the name in Germany and Austria, where genuine use was sufficiently evidenced, were a sufficient basis upon which to base a successful opposition. AB Inbev still holds trade mark rights for the words BUD or BUDWEISER in 23 of the 27 EU countries, and this decision has no effect on them.

The Court also clarified a legal-procedural issue (at para.69), ruling that the lower court did not err in law (i) when it held that OHIM was entitled to require proof that an earlier mark had been renewed, where that mark was due to expire after the notice of opposition was filed and (ii) when it held that an opposing party was not required to provide such proof on its own initiative.

Campaign for real ale here

Sources: Court of Justice ruling; press release from Stephanie Bodoni (Bloomberg).

Schlumberger v EMGS: A Non-Obvious Marriage of Skills

Who (or what) is the "person skilled in the art"? This was the main question posed in the case of Schlumberger Holdings Ltd v Electromagnetic Geoservices AS [2010] EWCA Civ 819, the judgment of which was issued yesterday by the Court of Appeal.  This resulted from an appeal from the judgment of Mr Justice Mann at the High Court (commented on at the time by the IPKat here), who had found EMGS's patents, relating to geological surveying, to be invalid for being obvious.

While Article 56 EPC asks whether a claimed invention would be obvious to the person skilled in the art, Article 83 asks the different question of whether the patent application discloses the invention in a manner that is sufficiently clear and complete for it to be carried out by a person skilled in the art.  In many, if not most, cases the person would be one and the same, not least because the person who would not find the claimed invention obvious must be sufficiently taught by the patent specification how to implement the invention.

There are some cases where an invention comes from combining knowledge from more than one field of technology.  Once this knowledge is combined, how to carry out the invention becomes straightforward, and the person skilled in the art according to Article 83 becomes a team of people with knowledge from each field.  If the same team of people was used to determine the question in Article 56, however, the effect would be to make the invention immediately obvious.  This is clearly a problem for some inventions that would otherwise be patentable.

In this case, the invention related to a method of finding out whether an underwater geological formation contained oil or water.  Seismic surveying could be used to find promising areas to look into further, but could not go as far as telling what a formation contained.  This was a problem for oil exploration companies, who would generally have to spend about $25M each time in order to drill a test well to find out.  With a hit rate of about 1 in 10, striking water instead of oil 9 times out of 10 made doing this a quite expensive way of finding oil.  This was effectively the situation prior to the application date of the patent in question. 

What the patent, EP1256019, taught was that a technique known as controlled source electromagnetics (CSEM) could be used in a very specific way to tell the difference between oil and water in a geological formation.  Before the patent application, nobody had thought to marry the known techniques of deep water surveying for oil with CSEM in such a way, although both were well known separately.  What the patent proprietor was arguing for was that the invention was a "non-obvious marriage of skills".  In other words, the invention resulted from the recognition that CSEM could be used in a particular way to tell the difference between oil and water in formations that had already been identified.

Lord Justice Jacob, taking the lead role in the judgment, considered that it was clear that the person skilled in the art for obviousness was not necessarily the same person skilled in the art for performing the invention once it was made.  In a key part of the judgment's reasoning (at least in the IPKat's opinion), Jacob LJ stated:

"I think the flaw in [assuming that the skilled person is the same in each case] is to assume that “the art” is necessarily the same both before and after the invention is made.   The assumption may be correct in most cases, but some inventions are themselves art changing.  If a patentee says “marry the skills of two different arts to solve a problem,” marrying may be obvious or it may not.  If it is not, and doing so results in a real technical advance then the patentee deserves and ought to have, a patent.  His vision is out of the ordinary. 

This is not because a different construction is being given to the phrase “person skilled in the art” in the different Articles.  It is because the phrase is being applied to different situations.  Where the issue is claim construction or sufficiency one is considering a post-patent situation where the person skilled in the art has the patent in hand to tell him how to perform the invention and what the monopoly claimed is.   But ex-hypothesi the person skilled in the art does not have the patent when considering obviousness and “the art” may be different if the invention of the patent itself is art changing.

In the case of obviousness in view of the state of the art, a key question is generally “what problem was the patentee trying to solve?”  That leads one in turn to consider the art in which the problem in fact lay.  It is the notional team in that art which is the relevant team making up the person skilled in the art.   If it would be obvious to that team to bring in different expertise, then the invention will nonetheless be obvious.  Likewise if the possessor of the “extra expertise” would himself know of the other team’s problem.   But if it would not be obvious to either of the notional persons or teams alone and not obvious to either sort of team to bring in the other, then the invention cannot fairly be said to be obvious.    As it was put in argument before us the possessors of the different skills need to be in the same room and the team with the problem must have some reason for telling the team who could solve it what the problem is." (paragraphs 63-65, emphasis added).

Jacob LJ then went on to consider what the correct approach would be in this case:

"It follows that the correct approach in this case is to start with the real problem faced by exploration geophysicists.  Did they appreciate they had a solvable problem?   How could they determine whether a thin layer of porous rock identified by seismics as potentially hydrocarbon bearing in fact does so or is just a false positive bearing only brine or water?   One then asks whether the notional exploration geophysicist who read the cited prior art would see that the answer was to use CSEM, or if not that, at least that CSEM had a sufficient prospect of being useful that it was worth asking a CSEM expert.  

The problem must also be approached the other way round, from the point of view of the CSEM expert.  Would he or she know of the exploration geophysicists’ problem and, if so, would he or she appreciate that CSEM had a real prospect of being useful to solve the problem?  

In short: was the marriage obvious to either notional partner?" (paragraphs 71-73).

By this point, it was quite clear what the end result would be, which was that the invention was not obvious because the marriage of CSEM with known geophysics in identifying hydrocarbon layers was not obvious to either notional partner before the priority date of the patent.  The appeal was allowed, resulting in the judgment of Mann J on finding the patent to be invalid being overturned.

In support of the reasoning, various other cases were mentioned where similar arguments would apply, such as Mandy Haberman's 'Anywayup Cup', which married the known features of a slit valve with a trainer cup, and James Dyson's cyclone vacuum cleaners, which married domestic vacuum cleaners with industrial scale cyclone technology.  Jacob LJ also noted with approval some of the leading cases from the EPO on where the problem-solution approach could be used in such situations.  All this led the IPKat to think, perhaps rather egotistically, that his (and some of his readers') words on how the Court of Appeal might have got it wrong in Actavis v Novartis could have had some effect.  Regardless of whether he has had an influence, however, the IPKat is very pleased to see that the EPO problem-solution approach is increasingly being married with the UK-style Windsurfing/Pozzolli approach to produce quite a pleasingly robust test for inventive step that would not necessarily have been obvious to persons skilled in either approaches before.