IP: the "no-patents round-up for non-techie people" Session 1

IP: the "no-patents round-up for non-techie people" -- today's conference organised by CLT and hosted in London's Grange Fitzrovia Hotel -- was opened by James Tumbridge (Pillsbury), speaking on trade mark and trade dress protection.  James reviewed some of the snags attached to securing trade mark protection in the UK and Europe for single colours and colour combinations, 3D product shapes -- not least of which is the issue of consumer perception and its relationship to distinctiveness and the degree of attention that leads consumers to distinguish goods on the basis of the presence of those signs on relevant products. Special attention was given to the problems of registering Scrabble tiles, torch shapes, Lego bricks -- and the happy outcome achieved by Nestlé in their dispute with Mars over the protection of the shape of the Polo mint.

Moving on to domain names, James noted that, while there is plenty of action before Nominet at registry level, they have generated relatively little reported litigation. James reminded us of Toth v Emirates [2012] EWHC 517 (Ch), which limited the scope for taking Nominet decisions before the courts for a judicial review [on which see brief Katnote here].

Turning to passing off, the Advocaat, Jif Lemon, Henry vacuum cleaner, Moroccanoil, Swiss chocolate, the FAGE/Chobani Greek yoghurt and Vodkat decisions were also subjected to James' analysis. As for survey evidence, it has become very difficult to get the courts to accept it, which is a shame because it's the best way of demonstrating that one product's get-up is confusingly similar to another. Limerick winner John Boumphrey added, from the floor. that survey evidence is a bit like a lamp-post: it's there more for support rather than for illumination. James, who represented Chobani, had some critical comments regarding the court's approach towards the protection of ill-defined product categories (what precisely is "Greek yoghurt" and do consumers really care where it's potted or how it's made?) and the fact that terms of this nature, which fail to qualify for geographical indication protection under EU law, are protected far more widely in the UK than in the rest of Europe.

Next to speak was Rebecca O'Kelly-Gillard (Bird & Bird), who summarised the mountain of recent Court of Justice of the European Union (CJEU) and domestic cases as "Browse on, internet users, but watch out online retailers and ISPs"; there was also a sub-theme of the CJEU imposing limitations on national legislation in order to encourage European harmonisation. Rebecca had an awesome challenge before her in leading us through the cases, leading with Svennson, Meltwater, Pinckney and Hi Hotel.  The fact that injunctive relief can be secured on a pan-European basis but infringement damages have to be collected on a country-by-country basis was mentioned. James added here that there some wheezes that might help, such as getting freezing orders against infringers' banks -- but even once this is done, the damages still have to be collected.

Copyright and its impact on hotels and pubs was Rebecca's next theme. The CJEU's ruling in OSA confirmed that users of spas were a new "public" to which broadcast works were being made available (hospitals and prisons are much the same from this point of view). Showing football matches in pubs was also touched upon, in the form of FAPL v Luxton (use of Danish domestic satellite card for commercial rather than domestic purposes) and QC Leisure.

The use of copyright material for personal purposes was reviewed in the form of the CJEU ruling in ACI Adam, plus a review of the new UK Copyright, Designs and Patents Act 1988 section 28B exceptions.  Finally Rebecca turned to the CJEU's ruling on parody in Deckmyn, with which readers of this weblog will be familiar, and to the limited right of digitisation of library books in order for users to access them on their premises in Darmstadt.