News from the UK IPO

Research exception consultation

The UK IPO has launched an informal consultation on the research exception to patent infringement, following criticism of the clarity of the exception in the Gowers Review. The purpose of the consultation is to measure the extent of stakeholder concerns (the topic didn't provoke much comment during the process of compiling the Gowers Review) so that, where there are concerns, steps can be taken to resolve them appropriately.

Stakeholders are being asked the following questions:

• Is the research exception in need of clarification? Do you have any evidence to support your view?
• If you consider that the research exception does need clarification, how would you like to see this done?
• Do you have any evidence of research being hindered by patents on research tools, or of the current law
working effectively?
• If you consider that research has been hindered by patents on research tools, how do you think this could best
be overcome, or has research been able to continue?

Responses are due in by 7 November.


...and more from the IPO

Highlights from the decision of Richard Arnold QC, acting as Appointed Person, in Vibe's Application. The application was for a crackled effect in respect of a paint effect as applied to the surface of loudspeaker enclosures. Lots of juicy stuff in here about distinctiveness when two potential trade mark are beign used at the same time, and also how patient a trade mark examiner is expected to be (relatively, but only up to a point), but the standout issue is on the meaning of acquired distinctiveness. The Appointed Person was itching to refer to the ECJ the question of whether an applicant to a trade mark which he alleges has acquired distinctiveness must have promoted the sign as a trade mark (i.e. an indication of orign). He didn't though, because the applicant didn't want a reference, but he did accuse the ECJ of not answering the questions referred in Dyson.

Quoting from Kerly, he identified 3 propositions:

(1) mere association with a particular manufacturer is not enough;
(2) the use of the sign must establish, in the perception of the average consumer, that the product originates from a particular undertaking;
(3) that perception must result from the use of the sign as a trade mark – in other words, the proprietor must have done something in his use to identify the sign as a trade mark, and mere extensive use during a period of monopoly, without more, is most unlikely to have achieved this.

In his view, (1) and (2) were correct according to the law of the UK, but (3) was not necessarily true.

The IPKat reckons that, in principle, it's right that only (1) and (2) should be legal requirements, but as a factual matter, it's hard to see how save in the most exceptional cases, a sign which lacks distinctiveness will be magically transformed into a distinctive sign without (3).