Monday miscellany

Venerable Cats (a throw, available
for $49.95 here)
"Dear venerable Kats" is always a good way to start an email which you hope this team of feline bloggers will take the trouble to read.  Reading on from this auspicious opening, it turned out that this email referred to a matter of some substance.  Its author writes:
"This is just a quick request for any tips you or your readers might have for extracting Office for Harmonisation in the Internal Market (OHIM) opposition costs from reluctant [and presumably unsuccessful] opponents. 
Are you aware of any means by which those unwilling to pay can be compelled, reprimanded or shamed publicly as I'm unwilling to give up on €1,600 in costs that easily".
The IPKat calls upon all readers who know the tricks of the trade to advise this poor young man how to proceed in these circumstances. It's unfair that some churlish souls should oppose a Community trade mark application, lose their opposition and then refuse to pay up. Merpel says, never mind the sage advice, can't we just go ahead with the naming and shaming?

Some little while ago, a report on this weblog from Catherine Lee reviewed the litigation in between AFACT and iiNet on that ever-popular topic of whether internet service providers are liable for the sins of their subscribers in the lovely, sunny island of Australia.  Speculation was then rife as to whether that case would reach the High Court (despite or perhaps because of its name, it's the top court Down Under, where everything is upside down).  Anyway, thanks to Anna (they have so few people down there that surnames aren't really needed) the Kat can tell you that this litigation been granted special leave to appeal to the High Court.

The IPKat has learned from his friends at Dimock Stratton in Canada that the Ontario Court of Ontario has held that for the purpose of asserting jurisdiction, at least, a domain name can be considered a form of personal property in that beautiful and snowy jurisdiction. The case is Co. v Lojas Renner S.A., 2011 ONCA 548, August 5, 2011) and this recognition was a tool for enabling a company with ties to Ontario to bring a Brazilian defendant before the Court in Ontario. After taking a peep at various authorities, including the equally beautiful and snowy Sweden, the court said:
"From this brief survey, it can be seen that the emerging consensus appears to be that domain names are a form of property".
This would suggest that, in Canada at least, while the details of the defeat remain to be hammered out. the "domain names are not property" lobby has lost this war.

Patents and the Public Domain. Some readers may recall that, earlier this year, IPKat team blogger Jeremy was preoccupied with the interaction of the patent system with the public domain.  This was because he was preparing a study for his friends at the World Intellectual Property Organization (WIPO) on that very subject.  This paper has now been published on the WIPO website as document number CDIP/4/3/REV./STUDY/INF/2 [he had been hoping for a more exciting document number, but this was the only available at the time] on the bit of the website that's called "Projects for Implementation of Development Agenda Recommendations". The document itself is called Study on Patents and the Public Domain and you can read it here.  It's not all written by this Kat, incidentally: it also contains scholarly contributions from India, Colombia, Egypt, Ukraine and South Africa. If you get a chance to read it, please let the IPKat know what you think!

Around the weblogs.  "Judge invokes Monet, Picasso in Red Sole trade mark analysis" is Christopher Pett's take on the recent Louboutin v YSL saga, hosted on Art & Artifice here (this case comes up for discussion by Mar-Ellen Field and Annsley the AmeriKat in this year's Handbags at Dawn Fashion and IP conference on 22 September). There's gloomy news for anyone wanting to surf the IP offices of the Central African Republic, it seems, as Kingsley Egbuonu's survey of official African IP websites for Afro-IP reaches that tropical domain.  Class 99 reports that Kosovo has a new design law: we all look forward to seeing how IP infringements are litigated there. If you're about to get involved in inter partes trade mark proceedings before the UK's Intellectual Property Office, Class 46 summarises the latest practice note on case management: good news for those who hate long phone calls is that disproportionate ones will be terminated ...
Monday miscellany Monday miscellany Reviewed by Jeremy on Monday, August 15, 2011 Rating: 5


  1. It is interesting to see someone asking how to get costs paid in OHIM proceedings.

    Anecdotal evidence suggests that practitioners do not generally bother because the amounts do not merit it, and OHIM will not get involved. This leads to a practice of not paying or getting paid.

    However, something akin to the IPO practice of a list of non-payers, leading to the option of requiring non-payers to pay money on account next time they are involved in inter partes proceedings.

    An alternative, probably very unpopular, would be to revise the OHIM opposition form to make the opponent undertake on filing the opposition to pay costs awarded against it, and ditto the application form.

  2. I have not looked at the question of unpaid OHIM costs awards in any detail, but my understanding is that they can only be enforced via the Court. Unfortunately, the irrecoverable cost of such action may well exceed the original costs award. I have tried to find out whether the PCC can hear applications for enforcement of OHIM costs awards, but my initial enquiries did not yield anything helpful (perhaps the Kat could ask Judge Birss ..?)

    The UKIPO has a "name and Shame" list (, which also has the neat effect, I believe, of forcing those on the list to stump up security for costs if ever they find themselves in another inter partes dispute before the tribunal.


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