Tuesday Tiddleywinks

Discretion is the better
part of valour ...
The IPKat had a good chuckle at the suggestions made by readers for a caption to grace the photo-shot of incoming IP Federation President Bobby Mukherjee shaking hands with his predecessor James Hayles which he posted on this blog last week (here), but on reflection he has decided not to publish any of them. Perhaps the fact that the building shown between them in the background is known as the erotic gherkin may have nudged too many of them into areas best not covered in a family weblog such as this.  Also, the IPKat and Merpel may have to establish good relations with the IP Federation one day.

A well-informed reader whose identity is best concealed has drawn the attention of the IPKat to the fact that, at the World Trade Organization last week, the Dominican Republic lfollowed in the footsteps of the Ukraine (here) and Honduras (here) in challenging Australia's 2011 Tobacco Plain Packaging legislation by formally requesting consultations with Australia – the first step of initiating a dispute under the WTO Dispute Settlement procedures. Under Australia's Tobacco Plain Packaging Act 2011, all tobacco products sold in Australia after 1 December 2012 will have to be in plain packaging (see image, left). 

The WTO challenges of all three countries claim violations of the TRIPS Agreement and the WTO Agreement on Technical Barriers to Trade (TBT). In the area of TRIPS, the challenges focus – among others – on claiming violations of 
• Article 2.1 (and the incorporated Articles 6quinquies, 7, and 10bis of the Paris Convention) because under the new legislation Australia would no longer provide "as is" protection of trade marks registered outside Australia, not provide effective protection against unfair competition to nationals of other countries of the Union, and create confusion between goods of competitors. • Articles 15 and 16, because the legislation would prevent owners of registered trade marks from enjoying the rights conferred by a trademark; and • Article 20, because plain packaging would constitute an unjustifiable encumbrance on the use of trade marks. 
Next to go?
Further claims relate to the TRIPS provisions on GIs, to Article 2.2 of the TBT Agreement arguing that the legislation creates obstacles to trade that are more trade-restrictive than necessary to fulfil a legitimate objective, and to a violation of the national treatment principle, as it is claimed that the measure discriminate predominantly against imported products. In order to initiate the next step of WTO Dispute Settlement proceedings – the establishment of a Panel that could rule on the WTO compliance of the legislation in question – a claimant country will have to formally lodge such a request with the WTO Dispute Settlement Body. Although the required time delay (60 days since the request for consultations) has elapsed for Ukraine and Honduras, to date, no such request has been lodged. 

Around the weblogs.  Following the comment of Judge Birss QC in Samsung v Apple earlier this month that Samsung's not-quite-iPads were not cool like Apple's (discussed by the IPKat here), Class 99 hosted a lengthy analysis of another interface between design law and cool, this time in relation to the design protection of ice bags for keeping wine cool. You can read Joe Cohen's piece on Gimex v The Chillbag Company here.  Elsewhere, the jiplp weblog announces that the Journal of Intellectual Property Law & Practice (JIPLP) is looking not just for more writers but for more book reviewers too. On the 1709 Blog Iona Harding asks whether New Zealand's 'three strikes' law against file-sharers has resulted in a 50% drop in infringement -- or only in a halving of the rate of detection. SOLO IP speculates about the problems of small and sole IP practitioners getting ripped off at the point of disposing of their practices. Finally, it seems that Australia -- leading the way again -- is contemplating introducing a new art law, as Simone Blakeney explains.

Not a GTI but definitely distinctive --
somewhere underneath the fierce facade lurks
a 1968 Volkswagen Beetle
Back in March 2012 the IPKat filled up some gaps in cyberspace with this post about the efforts made by Volkswagen to prevent Suzuki registering SWIFT GTI as a Community trade mark for cars, basing its opposition on a good deal of obstinacy and earlier national registrations of GTI for motor vehicles and their parts.  A katpat goes to David Gilmour for spotting that, not content with its defeat in the General Court, Volkswagen is appealing to the Court of Justice itself.  So watch out for Case C-260/12 P Volkswagen AG v Office for Harmonisation in the Internal Market (Trade Marks and Designs). The appeal is on a whole bundle of grounds, many of which look quite unappealing, but this one might be a runner. Says Volkswagen:
"The General Court infringed European Union law by classing the designation 'GTI' as a descriptive indication of a technical nature, even though that designation is registered as a mark in a number of Member States. It is purely the task of the national authorities to decide on the descriptive meaning of a mark in their respective territories. Only if an application has been made to remove a mark from the register can a body of the European Union take account of the invalidity of a national mark in determining whether there is a likelihood of confusion".
The IPKat promises to keep tabs on this case and looks forward to its full-blooded resolution.

Still in March 2012 ... Mottainai is said to be a Japanese term for "a sense of regret concerning waste when the intrinsic value of an object or resource is not properly utilized".  This Kat is not sure that there's an equivalent word for it, but the term is much beloved by the UK's Intellectual Property Office, which latched on to it in March of this year (see Katpost here).  The word has just popped up again, in "IPO extends indefinitely Mottainai pilot program" (here).  In short, the IPO has announced that the Mottainai pilot program, currently trialled as part of the IPO’s Patent Prosecution Highway (PPH) agreements with the Japanese Patent Office, the US Patents and Trade Marks Office and the Canadian IPO, has been indefinitely extended. The attraction of this pilot has been that, while PPH agreements have traditionally included restrictions based on both the order of filing and on the countries from which applications initially claim priority, the Mottainai model allows requests for acceleration to be made under a PPH agreement regardless of the order in which the various applications were filed or the original priority claimed by the co-pending applications.
Tuesday Tiddleywinks Tuesday Tiddleywinks Reviewed by Jeremy on Tuesday, July 24, 2012 Rating: 5


  1. I wonder who all of those little countries with so little legitimate interest in tobacco consumption in Australia or anywhere else or high levels of IP protection, for that matter, are fronting for. And who is ultimately paying all the bills? And, as they say - at the end of the day, "cui bono"?

  2. Yes, this is my raised eyebrow. According to Transparency International's Global Corruption Perception Index, out of 183 countries surveyed, Honduras scored 2.6 in a scale going from 0 (highly corrupt) to 10 (very clean) and ranked 126. The Dominican Republic also scored 2.6 and ranked 129. Ukraine scored 2.3 and ranked 152.

    Come on, Big Tobacco, can't you try a bit harder?

  3. Ambrose Bierce, in the Devil's Dictionary [http://www.thedevilsdictionary.com/] defined:-
    "lawyer" as "One skilled in circumvention of the Law";
    "litigation" as "A machine into which you go into as a pig and come out of as a sausage"; and
    "litigant" as "A person about to give up his skin for the hope of retaining his bones".

    Do we have similar definitions in IP?

    Perhaps I can start with:-

    "Mottainai" - "A system in which the diligent office of second filing can do work for the idle office of first filing".


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