The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy
InternKats: Rose Hughes, Ieva Giedrimaite, and Cecilia Sbrolli
SpecialKats: Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Friday, 31 March 2006


The IPKat is grateful to Jonathan Mitchell QC (Murray Stable and Scottish Commons project lead) for tipping him off about a Dutch case enforcing a Creative Commons licence. Jonathan writes:

A Dutch magazine, ‘Weekend’, illustrated an article with photographs taken from the photographer’s Flickr public website at . As is usual on flickr, the photographs were published under a Creative Commons licence which did not permit commercial re-use, and there was a link to this licence on the webpage. The photographer, Adam Curry, sued Weekend’s publishers, Audax, for copyright infringement in the Netherlands. Audax argued that it was misled by the flickr notice 'this photo is public'; that the link to the CC licence was not obvious; and that Weekend had assumed in good faith that no authorisation from Curry was needed. Moreover, Curry had not incurred any damages by the publication of the photos in Weekend, since the photos were freely available to the public on flickr.The Court rejected Weekend's defence, sustaining the argument that the effect of the link to the Creative Commons licence was that the limitations in that licence applied, and awarded damages of €1000. The decision is noteworthy as the first decision of a European court on the practical effect of a Creative Commons licence on material published on the internet and dealing with the common assumption that any such material automatically falls into the public domain.The full text of the Dutch court’s decision is at (click Printbarie versie).

Key passage in English:

"All four photos that were taken from were made by Curry and posted by him on that website. In principle, Curry owns the copyright in the four photos, and the photos... are subject to the [Creative Commons] licence . Therefore Audax should observe the conditions that control the use by third parties of the photos as stated in the licence . The Court understands that Audax was misled by the notice 'This photo is public' (and therefore did not take note of the conditions of the licence ). However, it may be expected from a professional party like Audax that it conduct a thorough and precise examination before publishing in Weekend photos originating from the internet. Had it conducted such an investigation, Audax would have clicked on the symbol accompanying the notice 'some rights reserved' and encountered the (short version of) the licence . In case of doubt as to the applicability and the contents of the licence , it should have requested authorization for publication from the copyright holder of the photos (Curry). Audax has failed to perform such a detailed investigation, and has assumed too easily that publication of the photos was allowed. Audax has not observed the conditions stated in the licence [...]. The claim [...] will therefore be allowed; defendants will be enjoined from publishing all photos that [Curry] has published on, unless this occurs in accordance with the conditions of the licence ."

There’s a comment at .

The Creative Commons UK website at seems to be out of commission at the moment, but its international site at is OK. It recently published a Scottish edition of its licences and an English edition should be published very shortly.

The IPKat realises that this is an important case and that the court does make reference in the paragraph quoted above to the terms of the licence. However, the court starts from the position that this is a work that is protected by standard copyright and that’s where the protection against commercial use stems from. The real test of Creative Commons licences will be when the exceptions that they attempt to impose are put before the courts.


Australian IP amendments go to House

Australian lawyer, patent attorney & IP strategy consultant Duncan Bucknell has posted a note on the Intellectual Property Laws Amendment Bill 2006, which was introduced yesterday into the House of Representatives of the Australian Commonwealth Parliament. Proposed amendments to the Patents Act include (i) clarification of the prior use defence to infringement; (ii) compulsory patent licences being ordered under the Trade Practices Act; (iii) the possibility of exemplary damages for patent infringement; (iv) a Bolar provision (a defence to pharmaceutical patent infringement in respect of unauthorised activities directed to obtaining regulatory approval). Duncan's note contains links to all relevant legislative materials and press releases.

The IPKat likes Duncan's website, which is a model of clarity compared with some he visits.

A miracle for a client

IPKat friend and IP/IT enthusiast Justin Patten (Human Law) reports that his client, artist Ed Miracle, has settled his copyright infringement claim against the publishers of Thomas Friedman's The World is Flat, which misappropriated one of his paintings ("I Told You So", left) for the front cover. Details of Justin and of the case itself can be found on his blog here.

Blizzard sued by WOW guide author

IP scholar and games enthusiast Yee Fen Lim has drawn the IPKat's attention to this news item from Gamespot on a dispute between Blizzard Entertainment, its parent company Vivendi Universal and the Entertainment Software Association (ESA) and 24-year-old Brian Kopp of Bronson, Florida as to whether eBay should be ordered to stop auctions of Kopp's book "The Ultimate World of Warcraft Leveling & Gold Guide", this being a manual for players of a massively multiple online role-playig game (MMORPG) with wizards, warriors and monsters that has attracted a following of six million subscribers worldwide since it debuted in 2004.

Blizzard, Vivendi and the ESA repeatedly sent eBay takedown notices under the Digital Millennium Copyright Act, citing copyright and trade mark infringements. The auction giant's general policy is to halt auctions when it receives such complaints and to suspend a user's account after it racks up a certain number of warnings. Kopp, who denies infringement, continues to sell the book through another website. The dispute continues.

Thursday, 30 March 2006


On 20 June 2006, CLT is running a conference entitled Sharing Names (full programme available here). The conference, which takes place at the Cafe Royal, London, investigates the problems that can occur when the same name or trade mark is used by multiple parties and how these issues can be resolved or avoided.

Issues to be considered include:

  • Honest concurrent use
  • The effect of prior co-existence
  • Collective marks and joint ownership of marks
  • Infringement through use of the same name on (i) dissimilar goods and (ii) the internet
  • Defences in shared name situations
  • Shared name transactions, including (i) co-branding; (ii) splitting trade marks - competition concerns and (iii) sublicensing

Speakers are:

  • David Landau (UK TM Registry)
  • Arnaud Folliard-Monguiral (OHIM)
  • Dev Gangjee (LSE)
  • Belinda Isaac
  • Simon Chapman (FFW)
  • Patricia McGovern (P McGovern & Co)
  • Lindsay Lane (8 New Square)
  • Michael Bloch QC (Wilberforce Chambers)
  • Isabel Davies (Howrey)
  • Neil Wilkof (Herzog Fox & Neeman)

The normal price for admission is £495+VAT, in return for which attendees will receive 6 lovely CPD points, but the IPKat has a free place to give away to the person who most effectively completes his gruelling task.

The free place will be given to the person who comes up with the best anagram of any one of the following terms (multiple attempts are allowed though):

  • Elizabeth Emanuel
  • Coca Cola
  • Shared name
  • Essential function
  • Office for Harmonisation in the Internal Market (Trade Marks and Designs)
  • Directive 97/55/EC of European Parliament and of the Council of 6 October 1997 amending Directive 84/450/EEC concerning misleading advertising so as to include comparative advertising

Send your anagrams here. Answers must be in by 1pm on Wednesday 12 April.


Yet another Opinion from the European Court of Justice, this time from Advocate General Sharpston, making what the IPKat thinks must be his debut in an IP matter: it's Case C-108/05 Bovemij Verzekeringen NV v Benelux-Merkenbureau.

Bovemij applied to register the word EUROPOLIS as a Benelux mark for various services, including insurance, financial affairs and travel arrangements. The Benelux Trade Mark Office (BBM) told Bovemij it was provisionally refusing registration on the ground of lack of distinctive character. Bovemij retorted that the sign had been lawfully used as a mark in trade since 1988 by its subsidiary, Europolis BV. "So what?", said the BBM and refused the application.

Bovemij appealed to the Hague Regional Court of Appeal on the basis that even if EUROPOLIS wasn't distinctive when the application was first made (what it was), it had become so by the time it had to be considered. The court was sure that the mark wasn't inherently distinctive, but had its doubts about the acquisition of distinctiveness bit, so it stopped the show and sent the following questions to the ECJ for a preliminary ruling:

"(1) Must Article 3(3) of the Trade Marks Directive be interpreted as meaning that in order to acquire distinctive character (in the present case through a Benelux trade mark) as a result of use, as referred to in that provision, it is necessary that the sign be regarded as a trade mark, before the date of application, by the relevant public throughout the Benelux territory and, therefore, in Belgium, the Netherlands and Luxembourg?

If the answer to question 1 is in the negative:

(2) Is the condition for registration laid down in Article 3(3) of the Trade Marks Directive satisfied, for the purposes of that provision, if the sign, as a result of the use made of it, is regarded as a trade mark by the relevant section of the public in a substantial part of the Benelux territory and can this substantial part be, for example, the Netherlands alone?

(3)(a) When assessing distinctive character acquired through use, within the meaning of Article 3(3) of the Trade Marks Directive, of a sign – consisting of one or more words of an official language in the territory of a Member State (or, as in the case in point, the Benelux territory) – is it necessary to take into account the language regions within that territory?

(b) For registration as a mark, should the other requirements for registration be satisfied, is it sufficient if/required that the sign be regarded as a trade mark by the relevant section of the public in a substantial part of the language region of the Member State (or, as in the case in point, of the Benelux territory) in which that language is an official language?".
Advocate General Sharpston advised the ECJ to rule as follows:
"Questions 1 and 2

It is not necessary, for the purposes of assessing acquisition of distinctive character of a word mark through use under Article 3(3) of the Trade Marks Directive, to have regard to the entirety of the Benelux territory (Belgium, the Netherlands and Luxembourg) if for linguistic reasons the relevant class of persons, as previously defined for the purposes of Article 3(1), is to be found only in parts of that territory.

Question 3

Linguistic communities in a Member State or in the Benelux territory should be taken into account in assessing acquired distinctive character through use of a sign consisting of word or words.

Where a word mark would fall to be refused registration as devoid of any distinctive character (Article 3(1)(b)) and/or because it consists entirely of a word or words that are descriptive in a particular language (Article 3(1)(c)), that mark may only be registered under Article 3(3) where it can be shown that the mark has acquired distinctive character through use throughout the relevant linguistic community (namely, of the Member State, or of the Benelux territory taken as a whole)".
In other words, while for Community trade mark (CTM) purposes a mark must be shown to have acquired distinctiveness throughout the territory of the CTM before it can be registered, no such rule applies for national and regional trade marks. As the Advocate General said, having cited Case T-91/99 FordMotor Company v OHIM (OPTIONS) [2000] ECR II-1925:
"44. The BTMO’s position – namely that the sign must be regarded as a mark throughout the Benelux territory before it can be registered - is based on Ford. That case was concerned with whether a mark had acquired sufficient distinctive character through use to be registered as a Community trade mark under Article 7(3) of the Community Trade Mark Regulation. It seems to me that the rationale for the territorial assessment applied in Ford is not appropriate when determining whether distinctive character through use has been acquired by a national mark under the Trade Marks Directive.

45. The Community trade mark and national trade marks are conceptually different. If a mark is to be given Community-wide recognition in the terms provided for by the Community Trade Mark Regulation, it is reasonable to require the mark’s owner to demonstrate distinctive character acquired through use over a greater geographical area. The Community trade mark has a unitary character throughout the Community.
National registration of a trade mark merely gives it that character throughout the Member State in question. It is significant that Article 7(2) of the Community Trade Mark Regulation states that Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the Community. There is, however, no equivalent to that provision in Article 3 of the Trade Marks Directive. Because the Community trade mark is a unitary mark which, if registered, will be effective throughout the territory of the Community, it is right to impose the condition contained in Article 7(2). Such a mark ought not to be registered if there exist, in any part of the Community, grounds for non-registration. The same considerations do not apply to the registration of national trade marks as harmonised by the Trade Marks Directive.

46. Furthermore, the two measures are concerned with different situations. Although both aim to further the establishment and functioning of the internal market,
the Trade Marks Directive does so in a more limited way, by putting in place a partial harmonisation of national trade mark law. In contrast, the Community Trade Mark Regulation creates a new type of intellectual property right, namely a Community trade mark".
The IPKat thinks this is a very brave statement and he wonders whether the full court will let it stand. In economic terms and in terms of principle it seems strange to end up with the conclusion that, in a large community that consists of cats, dogs, sheep, goats and badgers, a mark that no dog regards as distinctive can't be registered as a trade mark while, in a smaller jurisdiction consisting of merely cats and dogs, the fact that cats regard the mark as distinctive but dogs don't do so will not affect the mark's ability to be registered.

Other Europolises here , here , here , here and here


Diana dress designer loses control of name, even though consumers may be deceived

The IPKat brings you news of the latest European Court of Justice ruling, Case C‑259/04 Elizabeth Florence Emanuel v Continental Shelf 128 Ltd.

Elizabeth Emanuel, a well-known designer of wedding wear, traded under her own name from 1990. 1996 she formed a company called Elizabeth Emanuel Plc, to which she assigned her business of designing and selling clothing, all assets of the business including its goodwill and an application to register the trade mark ELIZABETH EMANUEL, which was granted in 1997. In September 1997 EE Plc assigned its business, goodwill and the registered trade mark to Elizabeth Emanuel International Ltd, which employed Ms Emanuel for just one month.

In November 1997 EE International assigned the registered trade mark to another company, Oakridge Trading Ltd which, in March 1998, applied to register the trade mark ELIZABETH EMANUEL. In January 1999 Ms Emanuel opposed that application was filed and, in September of the same year, she sought to revoke the mark that had already been registered. The opposition and the application for revocation were both dismissed on the ground that, while the public had indeed been deceived and confused, into thinking that Ms Emanuel was connected with her eponymous trade mark when she was not, such deception and confusion was lawful and the inevitable consequence of the sale of a business and goodwill previously conducted under the name of the original owner. Continental Shelf 128 Ltd then became the assignee of the trade mark and the late application.

Below: Elizabeth Emanuel's new label.

On appeal the Appointed Person decided to stay the proceedings and refer the following questions to the Court for a preliminary ruling:

"1. Is a trade mark of such a nature as to deceive the public and prohibited from registration under Article 3(1)(g) [of Directive 89/104] in the following circumstances:

(a) the goodwill associated with the trade mark has been assigned together with the business of making the goods to which the mark relates;

(b) prior to the assignment the trade mark indicated to a significant proportion of the relevant public that a particular person was involved in the design or creation of the goods in relation to which it was used;

(c) after the assignment an application was made by the assignee to register the trade mark; and

(d) at the time of the application a significant portion of the relevant public wrongly believed that use of the trade mark indicated that the particular person was still involved in the design or creation of the goods in relation to which the mark was used, and this belief was likely to affect the purchasing behaviour of that part of the public?

2. If the answer to question 1 is not unreservedly yes, what other matters must be taken into consideration in assessing whether a trade mark is of such a nature as to deceive the public and prohibited from registration under Article 3(1)(g) [of Directive 89/104] and, in particular, is it relevant that the risk of deception is likely to diminish over time?

3. Is a registered trade mark liable to mislead the public in consequence of the use made of it by the proprietor or with his consent and so liable to revocation under Article 12(2)(b) [of Directive 89/104] in the following circumstances:

(a) the registered trade mark and the goodwill associated with it have been assigned together with the business of making the goods to which the mark relates;

(b) prior to the assignment the trade mark indicated to a significant proportion of the relevant public that a particular person was involved in the design or creation of the goods in relation to which it was used;

(c) after the assignment an application was made to revoke the registered trade mark; and

(d) at the time of the application a significant portion of the relevant public wrongly believed that use of the trade mark indicated that the particular person was still involved with the design or creation of the goods in relation to which the mark was used, and this belief was likely to affect the purchasing behaviour of that part of the public?

4. If the answer to question 3 is not unreservedly yes, what other matters must be taken into consideration in assessing whether a registered trade mark is liable to mislead the public in consequence of the use made of it by the proprietor or with his consent and so liable to revocation under Article 12(2)(b) [of Directive 89/104] and, in particular, is it relevant that the risk of deception is likely to diminish over time?’".
In response to these somewhat lengthy and inelegant questions the ECJ has just ruled as follows:
"1. A trade mark corresponding to the name of the designer and first manufacturer of the goods bearing that mark may not, by reason of that particular feature alone, be refused registration on the ground that it would deceive the public, within the meaning of Article 3(1)(g) of Council Directive 89/104 ..., in particular where the goodwill associated with that trade mark, previously registered in a different graphic form, has been assigned together with the business making the goods to which the mark relates.

2. A trade mark corresponding to the name of the designer and first manufacturer of the goods bearing that mark is not, by reason of that particular feature alone, liable to revocation on the ground that that mark would mislead the public, within the meaning of Article 12(2)(b) of Directive 89/104, in particular where the goodwill associated with that mark has been assigned together with the business making the goods to which the mark relates".
In other words, a name is a commercial asset that can be traded in like any other commodity - so long is the user creates no further deception (as happened in France in the recent Inès de la Fressange litigation, to be reported in full, in English, in a forthcoming issue of the European Trade Mark Reports.

The IPKat believes this decision is both correct and uncontroversial. If it were not, celebrities would no doubt receive a lot less for the right to use their names, which would doubtless peeve them even more.

A Lidl goes a long way

Yesterday Advocate General Tizzano delivered his opinion in Case C-356/04 Lidl Belgium GmbH & Co. KG v Etablissementen Franz Colruyt NV. Lidl, a German company, operates a chain of retail stores in Belgium. Colruyt, a competing chain with more than 170 supermarkets in Belgium, sent its customers a leaflet which read:
"Dear customer, Last year, 2003, you were able once again to make significant savings with Colruyt. On the basis of our average price index for the past year we have calculated that a family spending EUR 100 each week in Colruyt stores saved between EUR 366 and EUR 1 129 by shopping at Colruyt’s rather than at any other supermarket (such as Carrefour, Cora, Delhaize, etc.); and saved between EUR 155 and EUR 293 by shopping at Colruyt’s instead of a hard discounter or wholesaler (Aldi, Lidl, Makro). On the reverse side you will see the evolution of the price differential vis-à-vis other stores in the course of 2003. … In order to be able to continue to guarantee the lowest prices, we compare daily 18 000 prices in other stores. … Each month we use those prices to calculate the price differential between Colruyt and the other stores. We refer to this as our price index which is certified by Quality Control, the independent Instituut voor Kwaliteitscontrole. The result: at Colruyt’s you enjoy, every day and at any time of the year, the lowest prices. In 2004 also we remain true to this guarantee".
Colruyt also used the following text on its checkout receipts, referring customers to its website for further explanations in regard to the system of price comparison which it applied:
"How much did you save in 2003? If you spent EUR 100 at Colruyt’s each week, then, according to our price index, you will have saved between EUR 366 and EUR 1 129 in comparison with another supermarket (such as Carrefour, Cora, Delhaize, etc.); between EUR 155 and EUR 293 in comparison with a hard discounter or wholesaler (Aldi, Lidl, Makro)".
Colruyt then launched a selection of basic products under the name BASIC. Some passages in its advertising leaflets contained the following statements:
"BASIC: absolutely the lowest prices in Belgium. Even cheaper than the comparable selection of the hard discounters (Aldi, Lidl) …’; ‘BASIC – ABSOLUTELY ROCK-BOTTOM PRICES – In addition to a significant overall price reduction we can offer you from now on a large number of products that you can compare with those of the typical hard discounters (like Aldi and Lidl) and with the ‘Eerste prijs/Premier prix’ products of other supermarkets. These are our BASIC products: everyday basic products at absolutely rock-bottom prices".
Lidl sued Colruyt for unfair comparative advertising under Belgian law. The court stayed the proceedings and referred the following questions to the ECJ for a preliminary ruling:
"(1) Must Article 3a(1)(a) of Directive 84/450 ... be construed as meaning that the comparison of the general price level of advertisers with that of competitors, in which an extrapolation is made on the basis of a comparison of the prices of a sample of products is impermissible inasmuch as this creates the impression that the advertiser is cheaper over its entire range of products, whereas the comparison made relates only to a limited sample of products, unless the advertisement makes it possible to establish which and how many products of the advertiser, on the one hand, and of the competitors used in the comparison, on the other, have been compared, and makes it possible to ascertain where each competitor concerned by the comparison is positioned in the comparison and what its prices might be in comparison with those of the advertiser and of the other competitors used in the comparison?

(2) Must Article 3a(1)(b) of Directive 84/450 ... be construed as meaning that comparative advertising is allowed only if the comparison relates to individual goods or services that meet the same needs or are intended for the same purpose, with the exclusion of product selections, even if those selections, on the whole and not necessarily in regard to every sub-division, meet the same needs or are intended for the same purpose?

(3) Must Article 3a(1)(c) of Directive 84/450 ... be construed as meaning that comparative advertising in which a comparison of the prices of products, or of the general price level, of competitors is made will be objective only if it lists the products in the comparison that are being compared and makes it possible to ascertain the prices being charged by the advertiser and its competitors, in which case all products used in the comparison must be expressly indicated for each individual supplier?

(4) Must Article 3a(1)(c) of Directive 84/450 ... be construed as meaning that a feature in comparative advertising will satisfy the requirement of verifiability in that article only if that feature can be verified as to its accuracy by those to whom the advertising is addressed, or is it sufficient if the feature can be verified by third parties to whom the advertising is not addressed?

(5) Must Article 3a(1)(c) of Directive 84/450 ... be construed as meaning that the price of products and the general price level of competitors are in themselves verifiable features?".
AG Tizzano proposes the following answer:
"(1) The condition with regard to permissibility referred to in Article 3a(1)(b) of Directive 84/450 does not preclude advertising which makes a comparison between selections of goods or services.

(2) The requirements in respect of the ‘objectivity’ and ‘verifiability’ of the comparison, laid down in Article 3a(1)(c) of the Directive, do not preclude advertisements which do not expressly mention the goods and prices that are being compared when the advertisements in question indicate where and how an average consumer can find those elements easily or in any case clearly make it possible for the consumer to ascertain what they are from the context and the circumstances of the case.

(3) Comparative advertising which compares the price levels in various supermarkets on the basis of an extrapolation from selected data and which gives rise to the belief that the price differences cited apply to all the products sold by those supermarkets is misleading within the meaning of Article 3a(1)(a) of the Directive".
In other words, advertisers are advised to say which brands or goods the comparison is based on. The IPKat likes this approach, since it encourages comparative advertisers to keep consumers better informed - and thus better empowered. On the assumption that time is money, Merpel adds, it would be nice if they added how long you can expect to line up waiting to pay for what you buy, as well as how much time to have to ferret around looking for the cheaper products that the comparison is based on.

Lidl online here; Colruyt here
Somewhere a bit classier, but more expensive, here


Singapore TLT (as it now seems to be known)

OHIM's Jessica Lewis has drawn the IPKat's attention to a very useful WIPO web page here that features new WIPO documents. It contains confirmation that the Singapore revision of the Trademark Law Treaty has been adopted by the conference by a load of countries listed here. It also has a draft text here and lots more besides. Many thanks, Jessica!

IP's all happening in Turkmenistan

7 June 2006 is a red letter day for IP in Turkmenistan. On that date the Caucasian former USSR republic steps up its commitment to the international community by implementing the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks and the Locarno Agreement Establishing an International Classification for Industrial Designs.

But ... it won't be till 7 March 2007 that Turkmenistan implements the Strasbourg Agreement Concerning the International Patent Classification.

Lots about Turkmenistan here
How to make traditional Plov here
What to do in Turkmenistan here
Turkmenistan and human rights here

Wednesday, 29 March 2006


SA Supreme Court software copyright case

The South African Supreme Court (SCA) has decided a case on copyright in computer programs, IOL reports. Anton Haput developed the Data Explorer software and claimed that his copyright in this was infringed by the All Media Products Survey software. The SCA held that the writer of AMPS had copied a substantial part of the Data Explorer source code because he found it too difficult to write himself. The court held that substantiality is a qualitative, rather than quantitative question and that the AMPS writer had taken a particularly valuable part of the Data Explorer source code.

A quick glance at the judgment shows that the court also deals with originality, authorship and computer generated works.

The IPKat says this test of substantiality sounds jolly sensible, although qualitative taking is more difficult to assess objectively than quantitative taking. Readers should note that this appears to be a straight source code copying case, rather than a ‘look and feel’ case.

Full text available here

Word IP Day event

The IPKat has been informed about the following event run by Own It, together with Briffa:

It’s World Intellectual Property Day and, to mark this auspicious event, Own It have teamed up with Briffa Law Firm to get a global view on the ins and outs of trading internationally and how to protect and exploit your work across a huge geographical and business landscape. Aspects of intellectual property that will be discussed at this event include export, manufacturing and licensing, protecting your work, getting the best deal and what to do if your work is copied and is being manufactured and sold abroad. This event will have a special emphasis on manufacturing in China and the new markets and opportunities opening up in the Far East. There will be plenty of opportunities to ask questions. Event: It's a mad mad world - protecting and making money from your IP in an international marketDate: Wednesday 26 April 2006Time: 6.00 to 8.00 pmLocation: West Space, Rootstein Hopkins Space, London College of Fashion, John Princes Street, London W1

Book your place here
More information here
Location map here

IPKat mailing list

New readers might like to know that they can join the IPKat’s mailing list and receive the IPKat’s posts by email each time they’re posted. Just drop the IPKat a line at and he’ll sign you up.


Today Mann J is hearing Apple Corp v Apple Computers (the court list can be viewed here). The dispute arises out of a pre-internet-age settlement agreement, in which Apple Computers paid Apple Corp, the Beatles' record label, to be able to use the APPLE mark for computers and associated goods, but not for music. At the time (1991), the widespread use of computers for playing music, let alone the iPod, hadn't been envisaged.

The IPKat doubts whether there'd be confusion between the two parties' use of APPLE, particularly since the Beatles' music isn't made available for download, but that's not really the point here. By making a co-existence agreement the parties lifted this matter out of trade mark law and into the realm of contract.


Back from Singapore ...

The IPKat's great friend Tibor Gold (Kilburn & Strode) has returned from Singapore, where he took some time off from his client work and translating Court of First Instance decisions into English, in order to solve the world's problems. So what, in answer to the IPKat's queries, is the Singapore Treaty about? Tibor writes:

"I can say that it's a Treaty that replaces the 1994 one, modernizes it due to eg electronic communications, more multi-class countries, more unusual marks etc; however it has no substantive law, it's entirely procedural about the MAXIMUM any Patent Office may demand from applicants and right-holders when applying for registration, renewing, recording licences and assignments, changes of register details generally; plus the info that may be demanded from representatives.

The IPKat presents pictures of Tibor before (left) and after (right) his three weeks in the hot and sweaty tropics.

It turned into a very political negotiation with LDCs demanding technical aid and assistance to develop their laws, rules, staff and technology....".
The IPKat thanks Tibor for taking the trouble to let him know what's happening.

... and off to Singapore again!

The IP Academy Singapore hosts its inaugural Global Forum on Intellectual Property 2006 on 21 and 22 August 2006. There's a marvellous all-star cast of speakers too. According to the Forum's website:
"The IP Academy is pleased to present its inaugural Global Forum on Intellectual Property 2006 (GFIP 2006) on 21 and 22 August 2006 at the Raffles City Convention Centre, Singapore.

GFIP 2006, one of the largest and the only multi-disciplinary IP forum in Asia Pacific to-date, will bring together some of the world’s most influential IP figures to explore and discuss new IP trends and to harness business opportunities in a setting conducive to creative thinking.

The theme of GFIP 2006 is "Tilting the Global Balance in the IPR landscape : The Strategic Implications of the growth in the Asia Pacific region". A distinguished line-up of international speakers and panelists will consider and address how Asia Pacific’s growing economic influence, led by China, India and the Middle East, will exert an increasing influence on global IP creation, protection, exploitation and management.

GFIP is expected to draw about 400 delegates from various IP related fields around the world".
Details are available here.



The March 2006 issue of Butterworths' Intellectual Property & Technology Cases, which supports its online IP&T service, contains five cases: the Court of Appeal for England and Wales decisions in BHB v William Hill (on how useless the sui generis database right really is), Ultraframe v Eurocell (on patent and design infringement - this must be about the 100th time these two have met in court, moans the IPKat) and Oakley v Animal (on how UK IP implementation of EU harmonisation directives is totally valid and boringly uncontroversial again, despite the unexpected court appearance of King Henry VIII (right) at first instance).

Concluding the issue are Soffass v OHIM (the Nicky/Noky Community trade mark case before the Court of First Instance) and the highly publicised defeat of the Picasso estate by OHIM in the PICASSO/PICARO battle before the European Court of Justice).


Nurtured by the rich soil of rural Oxfordshire, Lawtext's occasional Bio-Science Law Review has now produced its fifth issue for the fondly-remembered year 2004-2005. As usual, it's worth waiting for if you like a good bio-legal read.

Right: the dangers of addictive varieties of catnip go wider than merely issues of joint ownership

This issue contains Margaret Llewelyn's musings on the new compulsory exploitation right, introduced by Article 29 of the Community Regulation on Plant Variety Rights (the IPKat missed this when it first occurred ...), as well as a bright piece from Vicky Clark (VC Legal - the Kat thinks she's a sole practitioner) on shared ownership of research results - this is about the worst thing the IPKat can imagine, so he's glad that Vicky sounds a warning about the dangers that joint ownership can generate.

Patent World

The April 2006 issue of Informa's popular Patent World has a first-off-the mark piece by Taylor Wessing's Gary Moss and Benjamin Grzimek on some procedural aspects of the BlackBerry patent litigation in Germany and the UK.

Left: nanotechnology seeks to shrink the microcat still further

There's a highly topical article by Freshfields Bruckhaus Deringer's Peter Hendrick and B. J. Berghuis van Woortman on the current position regarding detention of infringing goods as they enter the EU - a subject that many people assume concerns trade marks and copyrights rather than patent rights. Also worthy of note is the issue's special focus on patents in nanotechnology which, in keeping with its subject matter, is very small ...

Tuesday, 28 March 2006


The IPKat has heard from the World Intellectual Property Organization (WIPO) that the Singapore Treaty on the Law of Trademarks has just been adopted, today. The WIPO press statement reads, in relevant part, as follows:


A new international treaty on trademarks, to be known as the Singapore Treaty on the Law of Trademarks ... was adopted on March 28, 2006 by member states of ... WIPO. The new treaty concludes efforts by WIPO’s member states to update the 1994 Trademark Law Treaty (TLT) and bring it in line with the technological developments of the past decade.

[Message of thanks etc from Dr Idris (left), followed by lots of boring padding that will presumably be of great interest to non-IP readers]

The Singapore Treaty deals mainly with procedural aspects of trademark registration and licensing. By agreeing to common standards in that area, member stares [the IPKat thinks this should be "states" create a level playing field for all economic operators that invest in branded goods. More than that, the Singapore Treaty creates a dynamic regulatory framework for brand rights. Due to the creation of an Assembly of the contracting parties, the Treaty has a built-in review mechanism for administrative details of a less order, although of great practical importance for brand owners.

The Treaty recognizes developments in the branded goods industry and marks a new approach to securing investment in product differentiation. Brands are no longer confined to stickers or labels on goods; today, the brand stands for the product’s identity. Creativity and investment goes into the development of brands, and it is vital for the industry to be able to secure that investment. New rules applicable to all types of trademarks, as contained in the Singapore Treaty, address those needs. The Singapore Treaty takes into account the advantages and potential of electronic communication facilities, while recognizing the varying needs of both developing and developed nations. During negotiations some developing and least developed states expressed concern about their ability to fully benefit from the Treaty. These discussions resulted in a firm commitment by industrialized countries to provide adequate technical assistance and other forms of support to strengthen the institutional capacity of those countries to enable them to take full advantage of the Treaty"

The IPKat is pleased that so many diplomats and government officials have been made so happy - and that this happiness has resulted in the creation of yet another Assembly. Merpel says, I've just conducted a search of the WIPO website for "Singapore Treaty" and received the following response:
"No results were found for your search.

Your query is too restrictive.
You might want to try: singapore treaty".
Can someone please throw us a link to the Treaty text so we can give it a read?


Computers & law – call for papers

The VIth World Computer Law Conference is taking place at the University of Edinburgh between 4-8 September 2006.

Contributions are sought in all legal aspects of the information society, but papers on IP aspects are particularly welcome.

If you want to take part though, you’d better get your skate on – abstracts of no more than 600 words are due in THIS FRIDAY (31 March).

Full details, including where to submit your papers, are available here.

Peter Panned

The BBC is attempting to combat the sale of Blue Peter badges on eBay. The badges, featuring the Blue Peter ship’s logo, are given to children who contribute to the Blue Peter television programme and enable them to gain free access to all sorts of nice touristy places. Blue Peter editor Richard Mason said:
"We know how hard children work to earn a badge, and we are doing our best to ensure that this long-standing Blue Peter institution is not undermined."

The IPKat can’t quite work out what the BBC’s objection is here. From Mason’s comments, it looks like he’s afraid of the diminution in the exclusivity of the badge, and so is mounting some kind of quasi-dilution argument. If the badges are fakes then he can understand the BBC’s position. More difficult issues arise if the badges in question are genuine Blue Peter badges. The IPKat reckons that there would be no exhaustion of rights defence here because the badges have been given away, rather than put on the market in the EEA, but it seems pretty rough if recipients can’t dispose of something that they have been given.


Off the record - should sound recording copyright be extended?

The IPKat's friend Ben Challis has just written a piece on his blog, Music Law Updates, asking whether the UK recording industry should have new obligations as well as new rights if the copyright term for sound recordings is extended from its current 50 years to a whopping 95 years.

The IPKat notes that, 50 years ago, most people knew the same songs (whether they liked them or not) because there was a more homogenous culture - but now that the market has been so segmented by age, aspiration, ethnic origin and other factors - and fashions in music change so quickly, he reckons that it will only be in a small minority of cases that sound recordings will have much more than quaint curiosity value after 50 years anyway. Merpel asks, what will benefit the public more: extension of protection so that businesses will be tempted to invest in the continued provision of old recordings in enhanced formats, or the refusal to extend rights in order that a competitive market be allowed to develop for the provision of those recordings?

Pork pies go to Luxembourg: but what is the question?

The IPKat has recently posted his musings on Northern Foods Ltd v DEFRA (the Melton Mowbray Pork Pie case, judgment on BAILII here). That decision has resulted in the reference of a single, remarkably fact-specific, question for a preliminary ruling by the European Court of Justice:

Right: Melton Mowbray pieman in search of the perfect pig ...
Left: this little piggie finds a cool way of escaping the Melton Mowbray pie-makers.

The IPKat thanks Michael Edenborough for his kindness in letting him have sight of the Order for the reference. Merpel says, this should have the ECJ judges scuttling off to get their gazetteers and road maps.


The IPKat is grateful to Simon Malynicz, who has provided him with a copy of Eversheds’ rather marvellous English translation of Advocate General Ruiz-Jarabo Colomer’s Opinion in Adam Opel. The IPKat apologises for the length of this post, but he though it was justified, considering the importance of the case.

Opel manufactures cars and has used OPEL BLITZ as a trade mark for its cars for many years. In 1990 it successfully registered OPEL BLITZ as a German figurative mark for various products, including toys. The mark was used for model cars which were manufactured under licence and distributed through Opel’s parts distribution network. Autec produced remote-controlled toy scale model cars which it sold under the mark CARTRONIC. These model cars were replicas of the Opel Astra V8 Coupe and bore the protected mark on their radiator grills in the same place as the full-sized car did. However, the CARTRONIC and AUTEC marks appeared on instructions for use, packaging and remote controls. Opel argued that the use of the marks on the remote-controlled cars was the use of identical marks on identical goods and thereby constituted infringement under Art.5(1)(a) of Directive 89/104. This argument was countered by Autec. The Landgericht Nurnberg-Furth referred questions to the ECJ asking whether the use of a trade mark on model cars would infringe that trade mark and if it did, whether a defence would be available.

The Advocate General advised the ECJ to rule as follows:

* The interpretation of Art.5(1)(a) arises out of the BMW case. There the ECJ stated that the application of the article depends on whether the use of the mark is to distinguish goods, i.e. whether it is used as a trade mark or for other purposes. These alternatives formed the basis of the analysis of the ECJ’s case law on the matter.

* The effect of the Arsenal case is that the trade mark owner is given ‘absolute’ protection, in the sense that he is granted protection independently of the risk of confusion since confusion is presumed. However, this does not meant that the trade mark owner gets complete protection against all parties in all circumstances. Generally, the ECJ has taken a teleological approach to construing Art.5(1)(a), stating that it protects the specific interests of the trade mark owner, so that the mark may fulfil the functions which are proper to it, i.e. of guaranteeing to consumers the origin of the product.

* In this case, the OPEL emblem figured on the body of the scale models with a resemblance that enabled recognition, in principle, of the identity of the products in question for the purposes of Art.5(1)(a), but this was a matter for the national judge to evaluate.

* Arsenal also laid down the limits beyond which the trade mark owner cannot exercise his powers under Art.5(1), namely, he cannot stop an identical sign from being used if the later use cannot harm the rights of the registered owner. This means that some later sues for purely descriptive purposes are excluded from the scope of the provision.

* The Budweiser case described how one can ascertain whether damage has been done to the earlier mark, saying that damage has occurred where the later use accredits a material link in the course of trade between the products of the later user and those of the trade mark owner. It should be determined whether the relevant consumers perceive the later user’s sign as designating the trade mark owner. This is a matter for the national court to determine.

* The use of a sign in accordance with the rules described in BMW is the only use not to fall within the scope of Art.5(1)(a). The defences in Art.6 come into play where the registered sign does exercise the function of a trade mark but, for public interest reasons, later users are entitled to profit from the advantage of their use. This lies in contrast to use for a purely descriptive purpose that does not damage the function of a trade mark and so which is not counted as infringement under Art.5(1). Use which does not damage the function of a trade mark is an open category which must be completed on a case-by-case basis. Unlike the Art.6 defences, these non-damaging used are not derogations from protection and so do not require a restrictive interpretation.

* In this case, the use of the OPEL BLITZ trade mark constituted use which differed from the proper function of a brand. It is only recently that car manufacturers have realised the economic potential of scale models realisable through merchandising, meaning that it was difficult to imagine that the public would automatically associate the emblem with the cars of the manufacturer of the full-sized cars. Moreover, there was a risk that too strict a view of infringement would give car manufacturers a monopoly in the miniatures market. Also, on the facts referred by the national court, consumers did not make the requisite material link in the course of trade between the later user’s products and those of the registered proprietor. While consumers established a link between the miniature and Opel’s real car, they did not establish a link between the later goods and the model cars manufactured for Opel by its licensees, which would be necessary under Art.5(1)(a). Furthermore, the miniature cars and the real cars could not be classed as identical goods.

* Since the second and third questions were posed only if the answer to the first question was positive, it was not strictly necessary to answer them. However, the Advocate General made a number of comments.

* Since the Art.6 defences are a derogation from Art.5, they had to be interpreted strictly. Here it was hard to argue that the reproduction of Opel’s trade mark on the miniature cars could be considered to be an indication of the type of classification. However, the use of the emblem was within the scope of other characteristics as referred to in Art.6.

* The recent case law of the ECJ gave clear guidelines as to the nature of honest practices in industrial and commercial matters, which the Advocate General summarised briefly. Miniatures toys could not be considered to be imitations or replicas of the trade marked gods (Gillette mentions whether the defendant’s goods imitate the claimant’s goods as a factor relevant to honesty) since the toys imitated the cars themselves, rather than the models of the cars. In Budweiser, the ECJ had said that honest practices should be assessed by taking into account whether the commercial name of the defendant would be understood by the target public as indicating a link between the defendant’s products and holder of the trade mark and also, whether the defendant should have been aware of this. The renown of the earlier mark in the Member State where it was registered was also relevant. The use by Autec of its own AUTEC and CARTRONIC trade marks meant that Autec’s behaviour was honest in full compliance with commercial practice. There was no abuse of the OPEL trade mark, which was exactly where nay consumer would expect to find it, on the radiator grill.
In principle the IPKat welcomes the Advocate General’s attempt to clarify how BMW, Arsenal and Budweiser can co-exist (though he notices that Robelco is not mentioned) but in practice his solution is messy. He tries to balance trade mark use language with the Arsenal approach of the need to damage the way in which the trade mark functions, even though they don’t fit together easily. His attempt to define which uses don’t harm the function of a trade mark is to be welcomed, and is wider than the Court of Appeal in Arsenal’s holding that any use which isn’t descriptive will cause such harm.

However, his use of a material link as the test for such harm is difficult to understand. We can’t be talking about a mistaken belief about confusion because he himself says confusion is not required. What are we talking about then?

The IPKat wonders what the fate of BMW would have been under this test. The case there was run rather differently. Here the question is would consumers have linked the model Opel cars made by Autec with the model cars made under licence of the trade mark owner. In BMW, the argument was whether the use of the term BMW in Deenik’s statement that he serviced BMW cars counted as use of the BMW sign to refer to the cars that were the subject-matter of the servicing. In this case, the equivalent argument would be that the use by Autec of the Opel mark referred to Opel’s full-sized cars as the subjects of the depiction by the models, rather than to the models made by Opel.

Viewing the Art.6 defences as a derogation is problematic. Trade mark rights are themselves a derogation from the free movement of goods, and in the past the ECJ has been willing to recognise the defences as the meeting-point between free movement and private intellectual property rights and so as a generally good thing. The logic of the Advocate General’s decision is that the defences are a derogation from a derogation (that of trade mark protection from free movement of goods). This would leave the honest practices proviso as a derogation from a derogation from a derogation. The IPKat can’t begin to imagine what this must do to the width with which the honest practices proviso must be construed.

The IPKat is also refraining from making any comments about the AG’s foray into the nostalgic qualities of model vehicles. He won’t say anything about the AG having said that such toys appeal to those ‘requiring more imaginative contact with their postulates’. Filthy-minded Merpel however can’t resist a small snigger.

Monday, 27 March 2006


Shady shades

The IPKat was doing a trawl of the ECJ website (he has to amuse himself somehow) when he came across an Order in Case C-267/05 removing Oakley v Animal from the ECJ’s register following the withdrawal of the preliminary reference by the Patents Court. Oakley v Animal is the design case in which Peter Prescott QC’s decision that the UK design law was implemented ultra vires was overturned by the Court of Appeal.

Perhaps the IPKat is terribly backward, but he had no idea that this had happened. Can any of his readers shed any light on the subject (on or off the record – but please state if you want to go anonymous.

Oranges are the only fruit

Do any of the IPKat’s readers know what has happened to the Organon’s appeal against the USPTO’s refusal to register an olfactory mark for the taste of orange? The TTAB was meant to rule on the case on 7 December 2005 but neither the IPKat nor QMIPRI’s trusty librarian can find any trace of it. If the mark is registered it will be the US’s first taste mark.


Conor again - a rejoinder from Luke

Conor Medsystems is recent UK patent case that has now been elevated to a major talking-point (see IPKat blogs here, here, here and here). This time, it's the turn of Luke Dylan Ueda-Sarson to reply to Brian Whtehead. For ease of reference, Brian's comments are in red, Luke's in blue. Says Luke:

"Thanks for the latest installment in what seems to becoming the Conor Medsystems saga... I am quite enjoying this, since it is making me think hard about some fundamental points of patent law.

For what it's worth, I agree with Merpel's comments, in which case the judge is perhaps merely guilty of somewhat sloppy phraseology. It is certainly a more encouraging notion that the other possible reason!

However, I am puzzled by some of Brian Whitehead's comments, specifically by his usage of the word "claimed" - although it seems to me he is using it the same way as the judge, so is in good company!

As I understand it, Pumfrey said that when considering the question of obviousness, one must first ascertain the scope of the invention claimed.

I thought one ascertained the scope of the invention *claimed* by reading the *claims* and ascertaining their scope - otherwise one is ascertaining the scope of the disclosure as a whole, which is surely another thing entirely. If the two do not coincide, then that is a matter of section 72.1 c, ie. enablement and sufficiency of description, etc. Why it should figure into inventive step is less clear to me.

At the end of para 24, he concludes that there is no example given in the patent of the use of taxol-coated stents for the inhibition of restenosis at angioplasty sites. This leads him to conclude, at para 62, that the disclosure of the specification is merely that taxol may be incorporated into a stent, and not that such a stent would actually work.

Which would seem to be a matter for striking the relevant claims (which may or may not equate to "the patent") down for lack of enablement, if in fact the skilled person in the art had no basis for concluding it would.

The patent therefore does not claim, as such, a stent containing taxol for use in controlling restenosis. At best, it claims the idea of trying taxol in a stent.

Hmmm. I would refer you to claim 12. Here are the claims from the judgment:

"1. A stent for expanding the lumen of a body passageway, comprising a generally tubular structure coated with a composition comprising an anti-angiogenic factor and a polymeric carrier, the factor being anti-angiogenic by the CAM assay, and wherein said anti-angiogenic factor is taxol, or an analogue or derivative thereof.

6. A stent according to any one of claims 1 to 5 wherein said stent is a vascular stent.

[11. A stent according to any one of claims 1 to 5 for treating narrowing of a body passageway.]

12. A stent according to claim 11 for treating or preventing recurrent stenosis."

It seems to me that that is precisely what the patent is claiming!

Therefore, if it would have been obvious to the skilled man to try taxol, the patent is invalid for lack of inventive step. The likely prospect of success is irrelevant, as the patent does not claim that such a device would in fact be successful.

The patent may not disclose enough evidence to convince the hypothetical skilled worker of the time that such a device would be successful, but it most certainly does claim exactly that, right there in claim 12.

If the patent is at fault for claiming this, then surely this is a matter for sction 72.1 c, and not section a?

I sense some confusion here between what the patent claims - in the claims - and what the patent actually describes, outside the claims (which could be talked about as "claims" - but not in the patent law sense).

I was always given to understand that inventive step should be looked at on a claim by claim basis; if that is so, asking whether "the invention", singular, is obvious, is a non sequiter. It is true that the 1977 act refers to invention singular when referring to inventive step, but the PCT is very careful to talk about the "claimed invention" in this regard, and I do not believe the UK practice is to distinguish the two. Have I been mislead? If the UK (and EPO) regard "an invention" differently from say the JPO (which even in literature for the general public equates claims with inventions, this the enormous numbers of "inventions" patented every year -since each patent will contain many such "inventions"), and more importantly, WIPO, this has serious repercussions for inetrnational applications.

The judge constantly talks about "the invention" being obvious, but it seems to me this is because he is providing his own definition of what the invention is - and it is not what is actually being claimed...
For the record, this is the first time anyone has confessed to agreeing with Merpel, who is purring with delight. The IPKat says, it's always impressive to see how carefully people read and analyse the words with which judges choose to express their reasoning.

Temples of meat

The IPKat has learned from De Morgen, via Ananova, of the Temples of Meat exhibition, which will only be on display for three days - until it goes off. The work, by artist Jan Fabre, is being shown at the Museum of Modern Art in Ghent; it includes a coat made of steaks and a tent of bacon with sleeping bags of steak.

Left: Fabre is not the only meat artist to have caught Ananova's attention. This is Gabriela Rivera, who is pictured here wrapped in meat.

Fabre says:
"Meat is a very erotic material. A lot of my work is about the cult of decay and death. I also love to create something that will be destroyed after three days. It's a lesson in modesty for every artist who confesses his love for eternity."
Fabre said he worked through the night with his assistants to turn 100kg of steak, 15kg of minced meat and a few kilometers of Parma bacon into art.

The IPKat used to believe that, when it came to art, de gustibus non disputandum ("there's no accounting for taste"). Looks like there's no accounting for smell either. There seems no doubt that the fact that a work is executed in meat does not disqualify it from any copyright protection as an artistic work that it might otherwise enjoy. Merpel adds, the move from porn to meat might be characterised as a shift from cleavage to cleaver ...

Art by Bacon here
Decayed corpse chips with entrail salsa here
Phobia art here
Treatment for meat phobia here


More on Conor

The IPKat's friend Brian Whitehead (Addleshaw Goddard) adds to the debate on the Conor Medsystems case. He writes:

I refer to your blog on Conor Medsystems on 6 March (also commented on here) and the comments from Luke Dylan Ueda-Sarson about Pumfrey J's judgment (which can be read here in full on BAILII).

Luke wonders whether Pumfrey used the wrong test for obviousness. I think that he may have misunderstood what Pumfrey was saying. As I understand it, Pumfrey said that when considering the question of obviousness, one must first ascertain the scope of the invention claimed. Pumfrey, earlier in the judgment, looks at the specification of the patent in some detail. In para 12, he says that the patent is "lengthy", but "very little of it is about restenosis and stents". At the end of para 24, he concludes that there is no example given in the patent of the use of taxol-coated stents for the inhibition of restenosis at angioplasty sites. This leads him to conclude, at para 62, that the disclosure of the specification is merely that taxol may be incorporated into a stent, and not that such a stent would actually work. The patent therefore does not claim, as such, a stent containing taxol for use in controlling restenosis. At best, it claims the idea of trying taxol in a stent. Therefore, if it would have been obvious to the skilled man to try taxol, the patent is invalid for lack of inventive step. The likely prospect of success is irrelevant, as the patent does not claim that such a device would in fact be successful.

Accordingly, I do not think that Pumfrey did use the wrong test. I also do not think that the judgment adds anything to the ongoing "obvious to try" saga in Schering-Plough and Saint Gobain etc, as the prospects of success are not, on the particular facts of the case, relevant.

Of course, it may be me who has misunderstood the judgment, but that is my two pence worth!

The IPKat is feeling decidedly puzzled at this point: each argument he has read seems perfectly plausible to him and they can't both be right. If any of the judges who read this blog would like to make a ruling, the Kat would be most grateful. Merpel says, on balance, Brian Whitehead must be right. If we assume that Pumfrey J (i) knew the existing law and (ii) would not have sought to change it or apply it in an innovative manner without first flagging his intention to do so, we should examine the judgment on the basis that - if there is any discernible shift in the law's application - least departs from normal accepted practice.

Abstract of recent article on patent claim interpretation by Brian Whitehead and Richard Kempner here.

Sunday, 26 March 2006


It's Liffe, but not as we know it

The IPKat has retrieved this gem from BAILII: it's Liffe Administration and Management v Pinkava and another [2006] EWHC 595 (Pat), a rare decision of the Patents Court (Mr Justice Kitchin) last Friday on employees' inventions.

Pinkava, an employee of Liffe, the company that operated the London futures exchange, devised a system that permitted trading to take place through an electronic exchange of various types of financial instruments (credit default swaps, credit index swaps, interest rate swaps and overnight index swaps). Maintaining that he owned the inventions, Pinkava filed patent applications in the United States, where business methods are patentable, and later assigned them to his own company, De Novo.

Liffe sued Pinkava for misuse of confidential information and breach of contract, also seeking a declaration that it owned the US patent applications. Pinkava then commenced proceedings in the UK Patent Office for a declaration that he owned the inventions: these proceedings were then transferred to the High Court. Liffe denied that the inventions belonged to Pinkava, arguing that the inventions were made in the course of the Pinkava's duties and thus belonged to it under s.39(1) of the Patents Act 1977 (which provides that inventions made by employees in the course of employment duties, from which patents can reasonable be expected to result, belong to the employers).

Kitchin J allowed Liffe's claim. When applying the section 39 test, it was necessary to have regard to the normal duties of the employee and any duties specially assigned to him outside his normal duties. It was then necessary to ask whether the inventions in issue were made in the course of those duties and, if so, whether the an invention might reasonably be expected to have resulted from the employee carrying out those duties.

On the facts of this case, Pinkava's inventions were not made in the course of his normal duties but were made in the performance of a duty that had been specially assigned to him: the duty to create an exchange tradable credit derivative. Also, under the circumstances an invention might reasonably have been expected to result from the carrying out of those duties.

The IPKat notes how broadly applicable are the provisions that protect employers' rights in inventions made by their employees. Merpel reminds readers that the UK law, which was amended in 2004 to make it easier for employee inventors to secure a share of the benefit derived from an invention by their employers, still provides difficult obstacles to be overcome before a successful claim can be met.

More on Liffe here, and on Liffey here

Parallel traders, on yer bike ...

Here's a cute little trade mark decision from Mr Justice Lewison, Honda Motor Co Ltd and others v Neesam & others, decided in the Chancery Division this Friday and not yet available on BAILII - but neatly potted by Butterworths LexisNexis' All England Direct subscription service.

Neesam were the parallel importers into the EEA of motorbikes made by, and bearing the trade mark of Honda. These proceedings concerned certain motorbikes imported from Australia, the US and Hong Kong, which authorised motorbike dealers from those countries were not allowed to sell outside their recognised territory.

Honda sued for trade mark infringement, seeking summary judgment. Neesam resisted, arguing that the consent of Honda's subsidiaries in supplying the bikes had been enough to bind Honda itself, or at least that consent to their importation and resale could be inferred.

Lewison J gave summary judgment in part, there being no reasonable prospect that Neesam's defence could succeed in relation to bikes imported from the US and Hong Kong. The IPKat is looking forward to getting hold of the transcript of this judgment so that he can see why Australia is different.


First Arsenal v Reed, now Rangers v Gallacher
The IPKat is grateful to Hector McQueen of Edinburgh University, who sent him this morsel from his Scots Law News service:
On 17 February 2006 Sheriff Craig Scott of Glasgow acquitted Joseph
Gallacher of criminally infringing the registered trade marks of
Glasgow Rangers FC by selling hats and scarves bearing the word
“Rangers” or an “RFC” monogram without any licence from the club to
enable him to do so (see Dyer v Gallacher 2006 GWD 7-136). This was Mr
Gallacher’s second acquittal in a case of this kind – see previously No
221 - and was also despite developments in the mainstream case law in
this area since the first case, in particular the decisions of the
European Court of Justice and the English Court of Appeal that the use
of marks as badges of affiliation, support and loyalty is none the less
trade mark use (see Arsenal FC plc v Reed [2003] RPC (9) 144 (ECJ);
[2002] EWHC 2695 (Ch, Laddie J); [2003] RPC (39) 696 (CA)).
Sheriff Scott thought that the critical issue was whether the use complained of
in the case before him was liable to jeopardize the guarantee of origin
which was the mark’s essential function, and that the evidence was
insufficient to establish this. Scots Law News suggests respectfully
that this is just incorrect law, however sympathetic it may be to the
outcome of the actual case. Mr Gallacher remarked: "This was a big,
big victory for myself and other street traders. Trade mark laws are a
complex issue. Once again, there has not been a watertight case before
it has come to court." He should enjoy it while he can.
The full text of the judgment is available here

Don’t forget…

Tomorrow (Monday 27 March) at 5.30pm Judge Fysh is speaking at QMIPRI about 'Consenting to Parallel Imports: is Economic Linkage the Correct Test?'
All are welcome and no donation/loan/bribe is necessary, but please RSVP to Ilanah.


On Friday one half of the IPKat spent a pleasant day in Oxford at the IPI/Oxford Intellectual Property Research Centre/University of Oxford Centre for Competition Law and Policy IP Forum. The subject was Intellectual Property and Competition Law: Contemporary Issues.

Highlights included:

* Professor Steve Anderman (Essex) on the IP/competition law interface and how the two areas of law deal with the interface
* Professor Stefan Szymanski (Imperial) giving the economist’s view of IP and competition alw, and concluding that the public have a pretty bleak view of IP and so more erosion of IP law by competition law is likely.
* Christine Greenhalgh (Oxford) on her and Mark Rogers’ (also Oxford) empirical research on the interaction of competition, R & D and IP
* Dr John Temple Lang (Cleary Gottlieb Steen and Hamilton LLP, Trinity College Dublin and Oxford) on whether pre-standard royalty talks and royalty obligations breach Art.82 EC
* Alden F Abbott (FTC) on the US and particularly the FTC’s attitude to various arguably uncompetitive IP-related hot potatoes
* Josef Drexl (Max Planck) on the desirability of international competition law rules to match the international IP norms.
* Allen N Dixon on the competition law problems that practitioners are likely to face

While the IPKat found the day illuminating, he got a bit dispirited by the pathological approach of essentially all the speakers. The focus was squarely on how competition law can step in when IP rights are being misused. The IPKat would have liked to have seen more emphasis on the way in which IP law already tried to take the interests of competitors into account, and whether competition lawyers think that IP law is doing a good job of this. In particular, the IPKat would have been interested to know what a competition lawyer would have made of the trade mark law concept of the real and serious need to keep certain marks free for other competitors to use and the idea/expression dichotomy. There was some mumbling about IP rights given to ‘undeserving’ subject matter such as databases and the Magil-type compilation, but the fact that we’ve arguably got in wrong in these exceptional areas doesn’t mean that there isn’t sound, competition-based reasoning at work in the heart of the ‘core’ IP rights.

The IPKat also noticed a tendency among the competition lawyers to view IP rights as the equivalent of tangible property rights. This is an oversimplification, particularly when one looks at the limited ways in which certain IP rights can be infringed. This might work to the advantage of IP lawyers since competition lawyers seem to recognise that property rights are necessary in our economy but it’s hard to see how the analysis can be accurate if it starts on an assumption about a highly debatable premise.

Saturday, 25 March 2006


"The lawyers sleep tonight ..."

Neil Wilkof has sent the IPKat a link, which will perish on 21 April, to this CNN item. It tells the tale of three South African daughters of the man who wrote the song "The Lion Sleeps Tonight": they have just won a six-year battle for royalties in a landmark case that could affect musicians worldwide.

The father, Solomon Linda, died in 1962 at the young age of 53. He composed his now-famous song in 1939, in a hostel that housed black migrant workers in Johannesburg. According to family lore, he wrote the song in a matter of minutes and was inspired by his childhood tasks of chasing prowling lions from the cattle he herded. In keeping with Zulu tradition the song was sung a cappella. Linda's innovation was to add his falsetto voice, an overlay of haunting "eeeeeees" to the baritone and bass main line (this style is now called Mbube, 'lion', in South Africa). The song sold more than 100,000 copies over a decade, probably making it Africa's first big pop hit.

In the 1950s, when apartheid laws robbed blacks of negotiating rights, Linda sold the worldwide copyright to Gallo Records of South Africa for 10 shillings (less than US$1.70). Gallo apparently tried to sell the work in the United States, but American folk singer Pete Seeger (left) had by then adapted a version that he called "Wimoweh" (this song was a hit in the United Kingdom for the Karl Denver Trio). Subsequently, known as "The Lion Sleeps Tonight" and attributed to George Weiss, Hugo Peretti and Luigi Creatore, it became one of the best-known songs in the world.

South African copyright lawyer Owen Dean (right, of Spoor & Fisher) argued successfully, for Linda's heirs, that under the (long-expired UK) Copyright Act 1911, which was in force in South Africa at the time Linda composed his song, all rights reverted to the heirs, who were entitled to renegotiate royalties. This statute affects all countries that were part of the British Empire at that time, or around a third of the world.

The IPKat smiles at the thought that the lawyers, having made their kill, can now enjoy their feast and sleep soundly in the knowledge that they will for once be lionised by the creative professions. Merpel says, how did the Americans manage to credit so many composers for such a teensy-weensie bit of song?

Another history of the same song here
Words (in English and Zulu) here
Sleeping lions here

Copycat judge stands down

The IPKat is endebted to his friend Richard Donaldson for sending him this link to The Age, which (Australia) reports that a magistrate has temporarily stepped down after large slabs of a colleague's judgment were included without attribution in a decision that took more than three years to deliver. Jennifer Rimmer also failed to inform the parties that she later altered her judgment; she has however agreed to take two months' leave, during which she will undergo counselling.

Fellow magistrates blew the whistle on the 44-year-old, who was appointed from the Family Court registry in November 2001. Within months she was complaining about the workload and requesting more resources. The Chief Federal Magistrate, John Pascoe, said the court's Internal Judgement Committee told him last May that her decision in a sexual harassment case involving a Brisbane hotel had lifted key parts of a judgement by a Melbourne magistrate, John Walters.

The case was heard on 31 November 2001 [the IPKat says, oh no it wasn't- there's no such date], but Ms Rimmer did not hand down her decision until 1 April of last year. After repeated requests from Mr Pascoe, she altered her judgement to contain attribution, but failed to alert the parties — a remarkable lapse for a judicial officer and a fact of which Mr Pascoe says he became aware only two weeks ago. According to Mr Pascoe:

"The use of material without attribution ... is simply unacceptable in all areas of professional life".
The IPKat says Jennifer should come to England. There, s.45(1) of the Copyright, Designs and Patents Act 1988 says: "Copyright is not infringed by anything done for the purposes of parliamentary or judicial proceedings". Should be alright there, then. Merpel adds, there's also an interesting question whether a judge can assert his or her right to be known as the author of a judgment (and thus be entitled to attribution by a subsequent judge ... More to the point, should we send copyists away on leave and give them counselling?

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