Fordham IP Conference 2011: part 3

Following the two "meet the judges" sessions which concluded the morning programme, lunch was declared -- with David Kappos (US patent supremo and fellow blogger) as the guest speaker. David described patents as the premier currency of global trade; this currency must not be devalued by failure to keep it relevant. This meant cutting pendency times, reducing unnecessary duplication of office work and looking at the big picture rather than focusing on the minutiae [which, as Merpel sadly notes, is what many fine academics, practitioners, administrators and judges are paid to do].

David then reminded us of the need to take account of developing nations when considering substantive patent law. He gave Europe quite a pat on the back for its efforts in harmonising substantive patent law and confessed to a rapt audience that this really excited him. Refreshed by the gentle pitter-patter of raindrops to which many diners were treated in the Fordham atrium, but with the looming presence of Hugh Hansen making itself felt, David concluded with a message that we should all reach out, work together, rise to the challenge and generally feel good as we put the patent world to rights.

Following lunch, this Kat took himself off to the stream dealing with European trade marks and designs. First up was Annette Kur, an eminent scholar at the Max Planck Institute and a member of the team which authored the recent study on the European trade mark system for the European Commission. Annette explained the background to her study, which is now under consideration by the Commission (proposals, which may or not be based on the study, are expected this autumn or, more realistically, next spring). She also reminded us of the significance of the Community trade mark as a unitary right within the context of European borders and of the non-competitive relationship between OHIM and the national offices.Among the topics she fastened on was that of 'cluttering' of the register, something which many users of the system believe to exist but the existence of which is difficult to prove.

Annette was followed by Paul Maier (speaking for the second time today), who spoke on the problems raised by descriptive trade marks in a region which contains 23 official languages as well as many languages (Russian and Turkish among them) that are not official but are nonetheless spoken by many inhabitants of the region.  Paul reviewed the issue through the lens of the Matratzen litigation, concerning a word which was entirely descriptive of mattresses in German but was quite distinctive for mattresses in Spanish. The Court of Justice took a conservative line, affirming the distinction between the existence of a mark and its exercise: the mark should be registrable but purely descriptive uses would not infringe (Paul also mentioned the Omega 3 case). Paul felt that national offices should check descriptiveness in languages other than their own, to avoid the appearance that people are deliberately registering foreign descriptive words as trade marks.

Gordon Humphreys (OHIM Board of Appeal member) then spoke on registered Community designs. He reviewed four recent decisions: T-09/07 Metal Rappers, T-148/08 Instruments for Writing, T-153/08 Communications equipment and T-513/08 Ornamentation. These cases, the first and fourth of which are on appeal to the Court of Justice, were pretty depressing news for the audience.

The panel discussion focused first on the Max Planck study, which was by general assent well received and much appreciated. Enforcement within Europe, greater consistency as between and within offices and proof of acquired distinctiveness of non-traditional trade marks.