Wednesday whimsies

Trial judges have to keep a straight face;
once you're in the Court of Appeal, you
can really have a good laugh. Ask
Sir Robin Jacob ...
Swearing in. What a busy month or so it has been for the IPKat.  First there is the enthronement of a new Pope and the inauguration of a new Archbishop of Canterbury. Now we have the elevation tomorrow afternoon, at 1.40 pm to be precise, of Sir Christopher Floyd (right) to the Court of Appeal, England and Wales. Court of Appeal judges do not have the benefit of the doctrine of papal infallibility but do share with both the Pope and the Archbishop the fact that they are subject to a Higher Authority to whom the aggrieved may petition (God and the Supreme Court respectively).  However, the operation of the doctrine of precedent means that at least some of the good they do in their judicial lifetimes will be cited in their Hereafter.  A full list of IPKat references to Floyd (both Sir Christopher and Pink) can be found here.  Also promoted to the Court of Appeal in the same batch of ten are Sir Geoffrey Vos (remember United Airlines v United Airways, hereLady Gaga v Moshi Monsters, here?) and Sir Michael Briggs (he of the Case of the Pixelated Privates and, more recently, involved in the Fage v Chobani Greek yoghurt litigation, here and here, and on which a further post is expected soon) and Dame Elizabeth Gloster (Pearson Education v Prentice Hall of India, here). This Kat is delighted to see that the quota of Court of Appeal judges with at least some IP experience is rising -- and he is naturally thrilled that Sir Christopher, as a judge whose decisions have been so frequently featured on this weblog, is among them.

Katnote: Sir Christopher is being sworn in at 1.40 pm in Court 4 of the Royal Court of Justice in the Strand, London. All are invited. Indeed, it's an acute case of "the more, the merrier".

Anand Sharma gives India's
instrument to Francis Gurry
In case you missed it. India has joined the rest of the world, or at least a big slice of it, by acceding to the Madrid System on the international registration of trade marks with effect from 8 July. While many people may be thinking, "Aha, this should make it a jolly sight easier to get our trade marks registered in India", a country which has not always had an enviable reputation for the speed of its trade mark application process, there is another side to it: Indian enterprises, many of which are displaying a degree of energy and excitement for international trade that much of the Old World seems to have lost, will be greatly assisted in their applications for protection beyond their home turf.  The World Intellectual Property Organization (WIPO) has posted the full details here.  In the photo on the left, India's Minister for Industry and Commerce, Anand Sharma, is seen giving India's instrument of accession to Katfriend and WIPO Director-General Francis Gurry. Says Merpel, this photo cries out for a caption. If readers have any bright suggestions, can they please email them to the IPKat here.

Around the weblogs.  The excellent and charming Tiffany Mahmood, recently appointed as Editor in Chief of the Fordham Intellectual Property, Media and Entertainment Law Journal, has sent the IPKat this link to the journal's blog, requesting comment and feedback. The Kat, feeling well disposed towards all manifestations of IP law student endeavour, will no doubt be making a comment or two, and hopes that readers of this weblog will be similarly inclined.  Meanwhile, the excellent and not-always-quite-so-charming Meldrew, whose posted comments often feature on this blog, has reminded the world that he too has a blog, IP non credere: check it out here.

Meet the Bloggers IX. If you are attending this year's International Trademark Association (INTA) Meeting next month in Dallas, Texas -- or if you're not attending the INTA but just happen to be on an IP culture tour of the area -- you will be more than welcome to attend the ninth annual "Meet the Bloggers" event.  Date: Monday 6 May. Time 8 pm till 11 pm. Dress: advisable. Venue: the Press Box Grill (left), which looks as dark and forbidding a location for a blogfest that you might hope to find.  Details of how to get there, who is hosting and what the previous eight Meet the Bloggers looked like can all be found on John L. Welch's excellent TTABlog® here. Admission is free. This Kat hopes that among those attending will be the person who inadvertently walked off with his camera, which he wouldn't mind getting back ...

"Language, trade mark enforcement, the Swedish … and (yes) Google!"  This is the title of a short note which this Kat commissioned from the excellent and eloquent Nikos Prentoulis (fellow Class 46 blogger and a shining example of a true IP enthusiast).  The Kat apologises for not having posted it earlier, but he has been beset by a surfeit of conferencing of late and is still playing catch-up.
We all know that trade mark enforcement is not just about tackling counterfeiters. But we only rarely think about its actual outer limits, the line beyond which trade mark enforcement is not about trade marks but about inventing a way to stop someone from doing something involving the mark and which the trade mark owner dislikes.

Here’s some interesting food for thought. The Swedish Language Council, a semi-official body entrusted with the duty of cultivation and development of the Swedish language, recently issued its annual list of new Swedish words, including the term "ogooglebar", which roughly translates into English as 'ungoogleable’ (provided you can actually pronounce it, keeping your tongue in its place). The term was to be used to refer to something you can't find on the web with the use of a search engine" (yes, any search engine). Google was none too happy with that definition, obviously concerned with the ghost of Google ending up a “generic” brand and/or trade mark dilution, and asked that the Council change the definition in order to have it refer only to search results via the Google search engine and also mention that Google is a registered trade mark. The Swedish Language Council chose to remove the word from the list altogether, seeking, according to a relevant statement, to spark a debate.

I find it hard to discover the (possibly dark hidden) place where trade mark infringement resides in the matter: I am not sure whether the above constitutes use of “google” in the course of trade. Another thing to consider is whether this type of trade mark vigilance may actually harm the brand’s goodwill. It is another thing to pass the message that you will tackle any and all infringing incidents (which is a laudable tactic) and quite another to say “shoot first, ask questions later, if at all”.

So, does that mean that highly successful brands like Google cannot really protect themselves from sliding down the path of being generic or from harm to their reputation? I should not think so. In order to avoid pitfalls such as generic use or harm to the reputation, trade mark owners cannot simply rely on trade mark enforcement rules, where this brand “swamp” is not the result of aggregated unanswered assault by numerous infringers (a death by thousand stings, if you will), but rather of the way people perceive brands and products and interact with them. That does sound more like the turf of advertising and marketing than that of legal. True, a crucial part of brand protection is to tackle infringement, but, in the absence of infringement, trade mark enforcement is, well, out of place. In the realm of purely descriptive, every-day use of trade marks, brands can employ their marketing and advertising ideas to engage with consumers and relay their messages. And if they fail, well, too bad — but that does not look like something to try to repair via trade mark enforcement".
You can read more or less on this news item here and here.

Planning on a trip to Munich? Why not take your favourite European Patent Examiner out for a drink when the EPO staff go on strike? You can ask him what it feels like to be making the claims instead of examining them.  Discontent is stirring not just in Munich but in all the outposts of the EPO empire: you can read the Resolution of the Staff Union of the European Patent Office (SUEPO) here, and SUEPO's letter to the Chairman of the Administrative Council here. Unitary patent-watchers may note with interest the following extract of the latter:
"The President wants to uncouple reporting from promotions and appears to be planning to slow down career-progression and reduce lifetime-income when the Office is struggling to recruit the competent staff necessary for implementing the unitary patent". 
Wednesday whimsies Wednesday whimsies Reviewed by Jeremy on Wednesday, April 10, 2013 Rating: 5


  1. If we can't find something on Google, doesn't that mean it doesn't exist?

  2. I can see the implementation of working at a "sustainable pace" aka a work to rule leading to a significant rise in the use of the complaints system by the customers. With the uncertainties being introduced by the unitary patent, the national offices are becoming significantly more attractive.

  3. It seems to me that Google has long acquiesced in The Unforgivable Trade Mark Sin, that of letting a mark be used as a noun or, worse, a verb. Once that threshold is crossed and it becomes commonplace, there is no way back. Chesebrough-Ponds fought a valiant rearguard action on behalf of "Vaseline", and succeeded, but it still ended up in the Oxford Dictionary.

  4. Re Sir Christopher Floyd's promotion to the Court of Appeal: The system makes the assumption that the better people should be moved to the higher instances, so being promoted from first instance to second instance is seen as logical. However one could argue that its best to leave at least some good people at first instance so we get a good decision at that point (which hopefully would not need appealing), but of course reassuring them that they are as good as the people at second instance.

  5. On EPO Examiner discontent:-

    The SUEPO figures are interesting. I had always thought that examiners in the Hague were more bolshy than in Munich, but the reverse appears from the ballot figures.

    In descending order of discontent [participation rate times support for central action plan] we have Vienna, Berlin, Munich and the Hague.

    Does this indicate that examiners at the Hague on balance think things are OK? Or does it indicate they are so bolshy they can't even agree with SUEPO?

    It is all so complicated - particularly when we can't see the documents and policies that are being complained about, and so have no idea whether the staff are justified or not in their grievances.

    How quickly a €4000 Christmas bonus fades from memory.....


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