It's legal, but is it Just? IP Enforcement Directive not retrospective, rules English patent judge

Oh, how frustrating it is to be trying to keep up with the latest developments when you have to take a few days off for holiday purposes. This is why Bignell (trading as Just Employment (a firm))v Just Employment Law Ltd [2007] EWHC 2203 (Ch), a Chancery Division for England and Wales decision of Deputy Judge Robert Englehart QC on Tuesday 2 October 2007 (noted by LexisNexis Butterworths), has only just reached the pages of this weblog.

Bignell, a sole practitioner solicitor, ran an employment law practice in leafy Guildford (right) under the punningly ambivalent name Just Employment, for which words he secured a UK registered trade mark. Just Employment Law Ltd (JELL), a law firm with offices in Glasgow, Aberdeen, Manchester and London, traded under the name JUST EMPLOYMENT LAW LIMITED. Like Bignell, JELL provided legal advice and representation in employment disputes. Bignell sued for trade mark infringement and passing off while JELL counterclaimed for a declaration of invalidity on the ground that the words JUST EMPLOYMENT, for a law firm that just practised employment law, were descriptive or at any rate non-distinctive.

The Deputy Judge dismissed Bignell's claims and allowed the counterclaim. In his view

* where a name consisted of ordinary words of the English language, the law adopted a cautious approach when deciding both trade mark registrability and passing-off issues;

* on the evidence, the trade mark should not have been registered since it was neither inherently distinctive nor distinctive in result of use;

* the passing-off claim had to failed: Bignell's practice was a local one and was not known in most places. Nor was there any evidence of misrepresentation-based confusion or damage suffered by Bignell.
The IPKat suspects that the judge's line is a little out of keeping with the view now taken by the Office for Harmonisation in the Internal Market's Second Board of Appeal in Case R-184/2006-2 Lavalife Inc's application (WHERE SINGLES CLICK registrable for dating services) that where a trade mark possesses an element of ingenuity, for instance a humorous twist or a play on words, the chances are that it also possesses distinctive character. Merpel is not so sure about the ruling on the extent of a law firm's goodwill. While off-the-street clients are likely to come from Guildford and not much beyond, even small firms are increasingly using a geographically non-specific internet presence as a means of attracting clientele - and the risks inherent in confidential information being sent to the wrong firm might argue for a greater penumbra of protection for law firm names than for, say, fishmongers or manicurists.

THIS DECISION is now available on BAILII here

Another case that the Kat might have slept through if his friends Edward Tomlinson (Frohwitter Patent- und Rechtsanwaelte) and Simon Haslam (Abel & Imray) had not prodded him awake with a timely email is Siemens Schweiz AG v Thorn Security Ltd [2007] EWHC 2242 (Ch), a Patents Court decision last Thursday from Mr Justice Mann. You can read this decision in full here on BAILII.

Siemens acquired a patent for "a printed circuit board, having a protective coating made from an electrically insulating, thermoplastic material, and a process for manufacturing such a printed circuit board with protective coating", following a series of mergers that took place under Swiss law. The first merger was in March 1998 and the second followed an agreement made in December 1999. However, the result of these first two mergers was not registered until February 2002. A third merger, after a merger agreement struck in September 2004, was registered within six months of its completion. For the uninitiated, where a transaction involving a patentis not registered within the specified time limit, the Patents Act 1977 s.68 originally restricted the patent owner's ability to recover damages for infringement. Now, in light of the IP Enforcement Directive (Directive 2004/48), that provision was amended in April 2006 so that, while it doesn't limit the patent owner's chance of getting damages, it will prevent him getting costs.

Siemens said Thorn infringed by applying a film to a printed circuit board used in one of its fire alarm systems. Thorn said the patent was void for lack of inventive step, being plainly obvious. At last week's hearing a number of issues had to be determined: was the patent invalid for obviousness? Did Thorn's product infringe? Was there a requirement to register the effect of the merger as an assignment under the Patents Act 1977? If there was a registrable assignment, which version of s.68 applied: the old one that barred recovery of damages or the new one that barred recovery of costs?

According to Mann J:

* the patent was valid and Thorn had infringed it.

* following the amendment to section 68 of the Patents Act 1977, the right to damages for infringement was no longer restricted.

* that section did not merely remove a procedural bar to the claim to damages but actually changed the substantive law on damages. This being so, the amended version of section 68 could not affect previously accrued rights and obligations and there was nothing to rebut the presumption against legislative amendments having retrospective effect. Thus the law would apply the old version of s.68.

* for the transfer of a patent to be an "assignment" for the purposes of the 1977 Act, there had to be something in the nature of an inter partes consensual document, not just a transfer of the patent by operation of law such as transfer of title consequent on a merger.

* the merger agreements provided that transfers were to take place and bound the parties to bring them about. The mergers themselves required the transfer of assets. However, the agreement remained an agreement to transfer and not the transfer itself. The transfer took place separately, by means of something that was juridicially different: the operation of the doctrine of universal succession under Swiss law. This being a transfer by operation of law, the mergers and the transfers of the patent were not assignments that needed to be registered and there was no bar to the recovery of damages.
Says the IPKat, the most interesting bit of this case is what Mann J says on an issue not mentioned above - his pet subject of languages. To quote him:

"The competing languages of the patent and its translation, and their true construction

10. As if it were not difficult enough construing a patent in one language, this case presented the problem of having to construe it in two, because of the status of the English translation of the German "original" and a perceived difference between the meaning and effect of words used in the two languages. I have highlighted the relevant differences above. Apart from those words there were no perceived relevant differences in wording or effect, so apart from those words I was able to work from the English translation as if it were for all purposes the governing document even though, for reasons which will appear, strictly speaking it was not.

11. The status of the two documents is governed by section 80 of the 1977 Act. Subsections (1) and (2) read as follows:

"(1) Subject to subsection (2) below, the text of a European patent or application for such a patent in the language of the proceedings, that is to say, the language in which proceedings relating to the patent or the application are to be conducted before the European Patent office, shall be the authentic text for the purposes of any domestic proceedings, that is to say, any proceedings relating to the patent or application before the comptroller or the court.

(2) Where the language of the proceedings is French or German, a translation into English of the specification of the patent under section 77 above or of the claims of the application under section 78 above shall be treated as the authentic text for the purpose of any domestic proceedings, other than proceedings for the revocation of the patent, if the patent or application as translated into English confers protection which is narrower than that conferred by it in French or German."

In applying these sections it is important to bear carefully in mind how they operate. The need for care was demonstrated by the submissions in the present case, because each party was to some extent guilty of allowing a cross-fertilisation between the translations which these sections do not allow. Thus, for example, the defendant's submissions sought to use the German translation to "inform" the proper construction of the English translation. That does not seem to me to be the right way of going about the matter, tempting though it may be. The proper approach seems to me to be the following:

(a) So far as the revocation aspect of any proceedings is concerned, the relevant document is the document in the "language of the proceedings" – that is to say, the German text, in the present case.

(b) In understanding the German text, an English court will require a translation. However, the formal English translation referred to in section 78 is not, strictly, such a translation. It may be that in any given case the parties will use it as the translation from which they choose to work. However, if that is done, it must be borne in mind that what is being worked from is a translation that is accepted as being accurate, and not a translation with formal status.

(c) Accordingly, if there is a dispute as to construction in this context, it is strictly speaking a dispute as to the true meaning of the German, not the English, though if the English equivalent is agreed it may de facto end up as a dispute as to the meaning of the English words.

(d) Where there are infringement proceedings (or proceedings other than revocation proceedings), it may strictly be necessary to consider and construe both the original and the translation as if they were independent documents. The English text is authentic if the protection is narrower than that afforded by the original German. However one cannot ascertain that until one has first construed the English document as if it were an original document (and not as a translation), and then construe the German document, appropriately translated. By "appropriately translated" I mean translated independently of the formal English translation.

(e) Having construed each (so far as necessary) it is then necessary to consider whether the English translation gives "narrower" protection. If it does, the English is treated as the authentic text and will be worked from. If it does not give narrower protection (ie if the scope of protection is the same, or wider) then the German is treated as the authentic text, and will be worked from, though obviously if the protection is the same the English version can usually be used for practical purposes.

12. This sort of structured approach is necessary in order to keep the two versions distinct where questions of construction arise. As I have said, the parties in the case before me sought to use the wording in one language version (the German) in order to construe the language of the other (the English). That approach is not permissible. If there is a dispute as to meaning then that has to be sorted out by reference to the one language version only".
The IPKat wonders whether, given that humans err and that lawyers are created in order to persuade, it is truly realistic to prevent the use of the wording in one language in order to construe the words of the other, particularly since this is what they have long tended to do in the contruction of different language versions of multilingual texts such as EU Regulations and Directives (where the respective texts are at least officially approved). Merpel says, forget the language issue - what about lack of retrospective effect? She's sure she's heard rumours that, somewhere in the Netherlands, the courts have taken the opposite view in trade mark infringement proceedings. Wouldn't this be a great question to refer for a preliminary ruling of every IP lawyer's favourite court, the European Court of justice?

More on retrospective effect here
It's legal, but is it Just? IP Enforcement Directive not retrospective, rules English patent judge It's legal, but is it Just? IP Enforcement Directive not retrospective, rules English patent judge Reviewed by Jeremy on Tuesday, October 09, 2007 Rating: 5

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