MARQUES in Porto V; latest decisions from the ECJ

Why do young people infringe IP rights? Is it the result of ignorance, indifference, cost-effectiveness, anti-corporate sentiment, a feeling that the IP owners have already made enough profit, or what? This was the theme of the Thursday morning MARQUES conference programme's opening session, chaired by Tan Loke Khoon (Baker & McKenzie, Hong Kong/China).

First to speak was Roberto de Vido (One Man Band Productions, Japan, right), who explained his research into attitudes regarding copying and his empirical research in copyright teaching through the use of "What's it to me?", an ingenious comic book based on video stills (email Roberto here to request this in pdf format). He reaffirmed what many of us have felt for years, that youngesters don't regard IP infringement as theft, that legitimate products were overpriced, that people who claim they haven't the money to buy legitimate goods seem to have the money to spend on expensive trips to Starbucks, etc). His conclusion: much more must be spent on education if the public are to be taught that it's wrong to steal IP.

Roberto was followed by Scott Warren (Kroll, Japan), a lawyer with previous experience working for Sega and X-Box. Scott spoke on why levels of infringement vary so much from country to country: in Japan and Singapore, for example, where brands are loved and affluence is widespread, the level of infringement is low; but in China - new to consumerism - different considerations apply and people in search of the small quantity of genuine product that does exist had to rely on Hong Kong as a reliable location for non-fake products. Nationalism also had a major part to play: the prospect of a distant foreign IP owner losing out, rather than a local business, also plays a part in consumer attitudes. Availability of pirate product is crucial too: if it can be obtained discreetly through the internet, particularly where legitimate product is hard to get, the level of infringement will always be high. Finally, Scott dealt with the enforcement perspective: cooperation with Customs and the deterrent effect of a spell in a Chinese prison (left) may be most efficacious in individual cases.

Andy Leck (Baker & McKenzie Wong & Leow, Singapore, right) concluded this session with a survey of relevant enforcement and sentencing provisions. Can and should juveniles be imprisoned or otherwise punished and, if so, when and how? Should their parents be vicariously liable? Should an element of education be required instead or, or in addition to, other punitive provisions? What about family group conferencing, as tried in Australia and New Zealand?

Andy then reviewed the perception that copyright was over-protected, whether through substantive legal provisions or through digital rights management. Citing Sir Hugh Laddie's thoughts on the subject, he left some of the audience wondering whether they might not actually be performing a public service by doing some infringement and helping lift the dead hand of copyright from the oppressed public.

Following coffee the conference programme focused on current and projected future developments in the international structure of trade mark and design registration, looking at the Madrid-Hague axis. Contributors to this session, chaired by Jochen Hoehfeld (Klunker Schmitt-Nilson Hirsch, Germany), were Ernesto Rubbio (WIPO Assistant DG), José Graça-Aranha (WIPO Industrial Designs Director) and Grégoire Bisson (WIPO Designs Deputy Director). The continued expansion of both systems is a matter of great pleasure to anyone who wants wider geographical protection with less hassle and expense.

The IPKat continues to regret the slow take-up of international filing schemes by national governments. Merpel asks, is this slow take-up the result of too little interest, or too much self-interest?

Note: there will be one final post from Porto, covering the Workshop sessions, before the IPKat returns to London tomorrow.

This morning the Court of First Instance of the European Communities (CFI) published its ruling in Case T-461/04, Imagination Technologies Ltd v OHIM. IT applied to register as a Community trade mark the words PURE DIGITAL for goods in Class 9 and services in Class 38 relating to electronic apparatus and telecommunications and computer-related services. The examiner refused the application on the grounds that PURE DIGITAL was non-distinctive and indeed descriptive for the goods and services in question. The Board of Appeal dismissed IT's appeal. Today the CFI affirmed both earlier decisions.

The IPKat feels that this appeal was always going to fail, since distinctiveness acquired through use was not alleged and, without it, the words in question were a complete non-starter. But what is interesting in this decision is a little argument on the issue of disclaimers and the extent to which, by declining to assert monopoly rights in respect of one or more parts of an applied-for sign, the applicant might just be able to squeeze within the criteria for registration. On this the CFI had this to say:
"61 The applicant maintains that OHIM was wrong to ignore the offer of a disclaimer pursuant to Article 38(2) of Regulation No 40/94 on the ground that the word ‘digital’ is not distinctive. It claims that the inclusion of the word might give rise to doubts as to the scope of protection of the trade mark, in particular whether or not the goods and services could properly be described as digital in nature. ... OHIM should have considered and subsequently accepted the offer of a disclaimer, so as to overcome the harm caused by the circumstances envisaged in Article 38(2) ....

62 OHIM takes the view that the applicant is mistaken both as to the conditions in which Article 38(2) ... applies and the legal consequences thereof. ... the applicant merely refers to the possibility of such a disclaimer or expects OHIM to impose a disclaimer on it.

Findings of the Court

63 Under Article 38(2) ..., where the trade mark contains an element which is not distinctive, and where the inclusion of that element in the trade mark could give rise to doubts as to the scope of protection of the trade mark, OHIM may request, as a condition for registration of that trade mark, that the applicant state that he disclaims any exclusive right to such element.

64 It follows that for that provision to apply at least one of the elements of which the mark consists must be distinctive. As has been established above, both the two elements of which the mark sought consists and the mark considered as a whole are devoid of any distinctive character within the meaning of Article 7(1)(b) .... OHIM cannot therefore be criticised for not considering the offer of a disclaimer within the meaning of Article 38(2) ....

65 It follows from the foregoing that the second plea must be rejected as unfounded".

The ECJ has also delivered its ruling in Case C‑371/06, Benetton Group SpA v G-Star International BV, a reference for a preliminary ruling from the Hoge Raad, the Netherlands, which is noted above.

Finally, posted on the Curia website today is the ruling of the European Court of Justice in Case C-193/06 P Société des Produits Nestlé SA v OHIM, Quick restaurants SA - it looks fascinating in the original French and seems to be something to do with QUICKY and QUICKIES, so the Kat guesses that it is probably an opposition. The ECJ has annulled the decision of the CFI, anyway. Please can someone let the IPKat know if there's anything of significance here.

Earlier IPKat postings on this dispute here and here
MARQUES in Porto V; latest decisions from the ECJ MARQUES in Porto V; latest decisions from the ECJ Reviewed by Jeremy on Thursday, September 20, 2007 Rating: 5


  1. Most young people will agree that it is theft or at least it is wrong to copy a mate's CD/MP3 file/DVD.

    Some jurisdictions do not help themselves, however, and lose credibility by not having fair dealing provisions permitting format-shifting (for example, allowing owners of legitimately-owned CDs to make a personal copy for an MP3 player).

  2. One factor may be that young people are used to getting things cheap or free. If they travel on a bus, or go to a concert, they get the same service as an adult but are charged less for it. Their parent provide most of their meals, and probably much more, for no charge. At school they may well have free access to expensive recording equipment, workshop tools, etc.

    Then they go a record shop and find that they are expected to pay the same price for a CD as the besuited businesspeople who can easily afford it. By comparison with their normal expectations, this can easily seem unfair...

  3. I don't think that young people (for the most part) feel that they should pay a different price than a "besuited businessman (or -woman)". What they (we!) want is to pay a fair price. In some markets, the price being asked is clearly not fair. What content owners must do is 1) deliver product that is valued by consumers, at a fair and reasonably transparent price, and 2) offer legitimate (and higher-value) alternatives to pirated product. In Asia I know plenty of besuited businesspeople who buy pirated product. Because content owners are not delivering on 1 and 2.

  4. I often wonder whether or not IP is simply a means to enable price discrimination; viz, a company sells authentic product under the aegis of IP and also sets up a factory to make poor imitations for sale. This has two effects; greater yield from under the price discrimination curve (ie not only top-end revenue but bottom end revenue) and the ability to accentuate the quality of your IP protected product. This is done by engineering flaws in the pirated product. The latter phenomenon is most obviously seen in pirated films.


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