“Time is running out to
secure new Scottish patent court!”, warns a press release by the Law Society of
Scotland. Not quite so, replies an annoyed Darren.
The suspension of a Board of
Appeal member by the EPO President, under the guise of a "house ban",
reported
here, has generated enormous
disquiet. Now, Merpel reports on an unprecedented letter in which the Enlarged
Board members express their concerns about the turn of events. Seventy two
comments so far give the idea of how much the IPKat’s readers are getting
passionate to this story.
Merpel recounts of
another letter upon the hot issue of the suspension of a Board of Appeal, this
time from Dr Tilman Müller-Stoy. The letter's author is a well-known litigator
and is a partner in the renowned German firm of Bardehle Pagenberg. The
addressee is Christoph Ernst, head of Germany's delegation to the EPO's Administrative Council.
Merpel reports that a further
letter has been sent to the AC by two highly respected IP judges from the UK
and the Netherlands. This letter references the earlier letter from the
Enlarged Board of Appeal members and expresses support for the position taken.
The saga continues…
The chorus of condemnation
(discussed also here and
here)
about the "house ban" of an Appeal Board member continues to grow.
After the news of
two of Europe's leading judges lending their support to the EPO's Enlarged
Board of Appeal (who have asked the EPO's Administrative Council to curb the
interference by the President in their work), further support arrives from
additional national IP judges, all of whom also serve as external
members of the Enlarged Board of Appeal, explains Merpel
For the many fans of the
King of Eponia v house-banned BoA Member saga, here's the text of the
communique issued on Friday on the European Patent Office website. The 138
comments so far that have welcomed this post are the best prove of readers'
affection to this story and to the way Merpel recounts it.
The previous week's Tuesday Tiddlywinks included an example of a
renewal scam letter purportedly coming from OHIM. It was a communication of the
kind which savvy applicants and their advisors are all too aware, but which are
targeted at smaller and less experienced applicants who may only have one or a
few IP rights. Regrettably, the scam phenomenon is not exclusive to trade marks
and designs, explains David in this post, after receiving a message from the
mysterious “European Patent Organization”.
This note from Darren is about Hospira v Genentech [on which see the IPKat note
here], a pharma-patent case that Mr Justice Birss
has decided in light of product-by-process claims. Beyond the case
itself, Darren seizes the chance to provide a lovely comparative piece upon how
product-by-process works in the UK, in the US and in Eponia.
A few weeks ago, Spain introduced an ancillary
right over news content. Unlike the German right, the right cannot be waived
and requires those who wish to display non-insignificant excerpts to pay a
licence fee. “Adios!”, says Google
News, as Eleonora recounts in this note.
Perhaps not all know that under EU and UK law a
later sign identical or confusingly similar to an earlier trade mark could be
registered if the owner of the latter consents so -- which is quite telling as
to the function of trade marks, debated
some time ago on the IPKat. This is the proper core of Dalsouple Société Saumuroise Du Caoutchouc v
Dalsouple Direct Ltd & Another [2014] EWHC 3963 (Ch), a First of December ruling by
Mr Justice Arnold in the Chancery Division of the High Court, England and Wales
that Jeremy reports in this post.
Amelia
Andersdotter, a Swedish politician and former Swedish Pirate
Party Member of the European Parliament, drops Merpel a line asking the
most famous IP cat of the IP blogosphere's thoughts about a sad, sad story
concerning another politician caught on picture in an inopportune situation and
using copyright to halt the picture spreading on the press. How bizarre, sniffs
Merpel, calling for Swedish Katfriends' help.
After his earlier post on Hospira v Genentech [on which see also the IPKat
earlier note here], Darren provides a catch-up
summarizing the large number of comments and the debate that it has generated.
In Darren's best and most glorious style, this is another masterpiece both for the patent-addicted
and for those that are not really into it, which will have the chance to
benefit from Darren's clean prose and always surprising way to make complicated
things seem easy.
As readers know, this blog
does not refuse to post comments with which the IPKat and Merpel disagree.
There are some rules to build up a decent discussion though, Jeremy recalls.
Katfriend
Sabine
Jacques (a PhD student focusing on the parody exception at the School of
Law, University of Nottingham) recounts the funny story of MEP Nigel Farage's ('like
garage', he uses to say) United Kingdom Independence Party – UKIP threatening
to sue a guy for trade mark infringement [even though there is no
indication that UKIP has registered its name as a trade mark] after
he created UKIP_Trumpton, a
Twitter account which aims to ‘gently take the mickey out of UKIP’. What's
Trumpton? What's UKIP? Find it out in the Sabine's post!
Fellow
blogger, tweeter
and IP enthusiast Thomas Dubuisson
tells us about a larger than life dispute between Google and Oracle that is
rumbling through the courts in the US. The main question at issue is whether
Google infringed Oracle’s patents and copyrights by copying Oracle-owned Java
APIs in Android (Google’s mobile operating system) without authorization, but many
spicy issues are at stake: a smartphone IP dispute between two tech giants, a
lot of money, a potential fair use exception, and copyright law in the computer
context.
* *
*
When Trademarks Overlap With Other IP
Rights Special
* *
*
"When
Trademarks Overlap with Other IP Rights" is the International Trademark Association’s
(INTA) European winter conference that took place last week in the lovely city
of Munich. The conference, co-chaired by its
architects Neil
J. Wilkof and Axel
Nordemann,
comes out from the inspiring Overlapping Intellectual Property Rights, edited
by Neil and Shamnad Bashir [published by OUP and noted by the IPKat here] published some time ago.
Jeremy has rigorously reported all the event’s speeches in a series of 10
dedicated posts to make the IPKat’s readers feel like if they were there.
This first note reports of
Etienne Sanz de Acedo’s (INTA Chief Executive Officer) opening greetings and of
blogmaister Jeremy’s opening speech entitled "Overlaid, Overlegislated and
Overloaded", where he explains what IP overlap means, where it comes from
and where it is leading us.
The
first session, "Trademark and Copyrights", was chaired by former guest
Kat Tara Aaron. First to speak was Professor Ansgar Ohly, who gave a breath-taking
account of conflicts between trade marks and the public domain, also reviewing
the extent to which copyright might vest in trade marks. Axel Nordemann spoke next, considering
priority, registration of public domain works as trade marks and the problem of
book titles mainly under an EU standpoint. Moving to Latin America, the floor was
taken by Barbarita
Guzmán, who
focused on interaction between trade marks and copyright -- also considering
the ‘moral rights’ issue in Bolivia, Colombia, Peru, and Ecuador. The fourth
speaker was Andrew
P. Bridges, who
explained the US situation when it comes to trademark and copyright overlapping.
In the panel discussion that
followed, Michael Ritscher (Meyerlustenberger Lachenal), Max Kinkelday
(Gruneker), and Andrew Bridges keep debating of overlap between trade marks and
copyright. The panellists addressed many
issues, like different costs connected to those two IP rights, trade mark’s
incontestability, protectability, functionality of protectable subject, peculiarities
of those two IPRs' scopes of protection, enforcement, evidence, and defences
under EU and US perspectives.
The next session focused on the "Trademarks
and Designs" overlap.
Katfriend and internationally respected scholar Annette
Kur
opened the discussion, analysing the Court of Justice of the European Union
cornerstone decisions on this issue and posing a crucial question: are we really
sure that double protection constitutes a problem? A bit of institutional
perspective was then provided by Grégoire
Bisson
(WIPO) and Theophile Margellos (Office for Harmonisation in the Internal
Market), who addressed the issues connected with double-registration of a sign
as trade mark and design in their respective Offices’ practices.
Always upon trade mark and
design overlapping, Mark
Owen
(Taylor Wessing) took over the chair and introduced Kenneth Wilton (Seyfarth Shaw LLP), who gave
an explanation of trade dress and product configuration in the United States. Then
came Anna Carboni (Redd solicitors), who spoke
about the hypothetical "2JuicyLucy (t/a 2Juice) v DoubleJuice, Inc"
dispute, highlighting the salient issues relating to Community trade mark and
Community design protection, infringement, and jurisdiction. Daniel Greif (Siam Premier International,
Thailand) then spoke about the design/trade mark divide in the Asia Pacific
zone. The final speaker of the day was Louis Vuitton's Valerie Sonnier, who
talked from the point of view of a lawyer whose employer was in business to
make money and who was engaged in trying to stamp out criminal organisations
which make and sell counterfeits.
The opening session of Day
Two addressed "Trademarks and
Geographical Indications". Keri Johnston was the first to speak,
giving a report on INTA's involvement on GIs and indigenous rights
internationally, regionally and nationally on these sensitive issues. Irene
Calboli
(Marquette University Law School and National University of Singapore) was the
next speaker to take the floor. She reflected upon the overlap between GIs and
trade marks being qualitatively different from that between trade marks and
copyright or designs, also addressing that issue under an international
perspective. Julia
Holden
(Trevisan & Cuonzo, Italy) spoke next and focused on the legal situation in
the European Union. Peter Harvey (Harvey Siskind LLP) came
next, explaining the position in the United States. Latha
Nair (K
& S Partners, India) was unfortunately unable to attend on account of
illness, but her talk about the situation in India was enjoyed via an
online link.
The session entitled "Trademarks and Unfair
Competition", moderated by Axel Nordemann, was opened by Katfriend
Professor Anselm
Kamperman Sanders, who
gave a masterly overview of the conception, birth and early years of the
concept of unfair competition from even before the creation of the European
common market. Next to speak was Gordian Hasselblatt (CMS Hasche Sigle), who
discussed the "protective purpose" of trade marks and their relation
to principles of unfair competition. Fellow Kat Neil was next to speak, looking
at the common law (US and English) position on unfair competition. The last to
speak was Myrtha
Hurtado Rivas (Novartis AG), who gave a
strategic overview of the trade mark v unfair competition position from the
standpoint of a business that had to make decisions as to how -- and where --
to enforce its rights and protect its interests in the Europe of today-- and
beyond.
The following session saw
something of a novelty act: an interview by INTA stalwart Ronald van Tuijl (JT International) with
Christoph Ernst (Ministerialdirigent, German Federal Ministry of Justice, left)
and Mihaly Ficsor (Vice-President for Legal Affairs, Hungarian IP Office).
Billed under the heading "Trademarks
and Patents", this session went somewhat wider -- without adding
anything on the interface between trade marks and patents.
The final stretch of Day Two
of INTA's European winter conference addressed the topic "Trademarks and the Right of Publicity" and was moderated
by Kenneth Wilton (Seyfarth Shaw JJP). First up was Anne Lauber-Rönsberg
(Technical University of Dresden), who gave a presentation on the development
of publicity rights under US and German law with special reference to the
towering personality of Marlene Dietrich. Mark Owen (Taylor Wessing LLP) then
spoke on publicity rights in the United Kingdom -- and the legendary Guernsey.
Tara Aaron (Aaron Sanders PLLC) then addressed the unique position of the
United States, reviewing some fun cases involving Manuel Noriega [Katpost here] and Lindsay Lohan [Katpost here]. Mario Soerensen Garcia
finally (Soerensen Garcia Advogados Associados) took over, giving a beautifully
Brazilian account of overlap.
The
final session of the INTA's two-day conference marathon continued the theme of the
previous session, but looked at the trade mark/publicity overlap from the
perspective of some trade mark owners which rely on taking licences from well
known celebrities and sportsmen: Joseph J. Conklin (Coty) and Alexander
Ballasch (DFL Deutsche Fussball Liga GmbH). The grand finale to this event was
an address by Office for Harmonisation in the Internal Market (OHIM) President
Antonio Campinos, who spoke about trialogue discussions and the various
governance issues concerning OHIM, including its rebranding.
******************************
PREVIOUSLY, ON NEVER TOO
LATE
Never
too late 22 [week ending Sunday 7 December] -- VOLVO v LOVOL, EU General Court goes
Freudian | Oral Hearing on the 17th Draft of the UPC Rules of Procedure |
Trolls owing essential patents in Vringo
Infrastructure v ZTE | The importance of being Uber before Uber | Merpel
and the EPO strike | An Arnoldian paten ruling in Idenix Pharmaceutical v Gilead Sciences | Audit clauses in IP
licences | EPO Board of Appeal Member suspended | AG Villalón tells his stake on distribution right and offer for sale
in Case C-516/13 Dimensione Direct Sales and Labianca | Post-mortem
moral rights in Poland | Second Circuit hears argument in Authors Guild v.Google fair use case | EPO and the Swiss-cheese
approach in decision T0571/10 | The Alicantation of the European Patent Office | Paris
Court of Appeal defines third-generation hosting provider in TF1 v Dailymotion | Books review:
"The Principle Of National Treatment In International Economic Law Trade,
Investment and Intellectual Property" and "The Copyright
Wars: Three Centuries of Trans-Atlantic Battle" | Swedish Svensson
referral proceedings after Svensson.
Never
too late 22 [week ending Sunday 30
November] -- Trade conference and
IPKat discount to attend | Eleonora’s copyright infringement checklist | EPO
video-conference drawbacks | Bat trade marks | CJEU on essential patents in
Case C-170/13 Huawei v ZTE | BGH on acronyms’ registrability | Peppa Pig
and Gabriella Capra | Reference to CJEU: copyright infringements through open
wi-fi | Court of Appeal for England and Wales on ‘Ideal Home’ trade mark in IPC
Media Ltd v Media 10 Ltd [2014] EWCA Civ 1439 | Imitation and lookalike specialists Aldi looses in Case T-240/13 against ‘Alifoods’ | Jeremy’s book review --
Asian IP special | Chancery Division back on Merck v Merck | Trade marks
in artistic works | Treatises and indexes.
Never too late 21 [week ending Sunday 23 November] -- EPO + SIPO = happiness? | IPEC on
infringement of escort pictures and targeted public | Jeremy’s take on the IP
Big Picture | Merpel on the EPO finances | AG Bot on Spanish claim against
Unitary Patent | The General Court in TM cases Case T-342/12 and Joined Cases T-122/13, T-123/13 and T-77/13 | Court of Appeal for England and Wales on software patent | CJEU
rules over Golden Balls v Ballon D’Or | IP on the airplanes and airport | Do
TMs protect consumers or its owner?
Never too late 20 [week ending Sunday 16 November] -- More on Jeremy’s Francis Gurry Lecture "IP in Transition:
desperately seeking the Big Picture" | OHIM and trade marks on 3D and 2D
animals’ devices | Size of patent drawings matter | IPKat e-mails causing
problems (but we still love you) | Helmut Kohl’s injunction against the “The
Kohl Protocols” | Ambiguous patent translations | IPEC on damages for TM
infringement in IPEC’s National Guild of Removers and Storers Ltd v Statham
t/a Marrubi's Removals & Storage.
Never too late! If you missed the IPKat last week ...
Reviewed by Jeremy
on
Monday, December 15, 2014
Rating:
Reviewed by Jeremy
on
Monday, December 15, 2014
Rating:
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