For the half-year to 31 December 2015, the IPKat's regular team is supplemented by contributions from guest bloggers Jani Ihalainen, Nikos Prentoulis and Mark Schweizer.

Birgit Clark is on Sabbatical till the end of the year

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Friday, 28 August 2015

"Simple Past, Present Continuous ...Future Perfect?" GFIP Conference Report V

This Kat encountered some technical issues that prevented him from completing his final report on the GFIP 2015 programme earlier. He does so now. The GFIP programme broke out into two parallel sessions for each of the two afternoons; one track focused on legal issues and the other on IP strategy. This Kat would have loved to have been able to report on both tracks, but various natural laws made that impossible. What follows is a summary of the sessions on trade secrets and copyright respectively.

This Kat had the privilege of speaking first at the trade secrets programme. After having first made the empirical case for the practical importance of trade secrets in technology and innovation, he addressed the two principal characteristics of trade secret law: (i) the centrality of trust, morality and sharing in creating, using and protecting trade secrets; and (ii) the lack of legal uniformity governing trade secret protection (unlike patents, there is no talk about harmonizing trade secret protection) and the legal difficulties that flow from this. Anecdotally, a US academic cornered this Kat afterwards and we agreed that perhaps the major reason why trade secrets are not taught as a part of most (all?) law school curriculums is that it is simply too complex and uncertain.

What followed was perhaps the most spirited “point-counterpoint” of the entire GFIP programme. In the one corner, Hsu Wei-Fu, General Counsel and Vice-President of MediaTek, located in Taiwan, made a sustained, indeed passionate plea in favour of expanding trade secretion protection, especially by strengthening the relevant criminal procedures available. This has been the approach recently adopted in Taiwan and, in the speaker’s view, it came not a minute too soon, this being the only way to better combat employee theft of a company’s valuable trade secrets. In the other corner, Professor David Llewellyn, Deputy Dean at the Singapore Management School of Law and well known to many Kat readers as a joint author of both Kerly’s Law of Trade Marks and Trade Names and Intellectual Property: Patents, Copyright, Trade Marks & Allied Rights (what we used to simply call “Cornish”, after the founding author of the treatise). Au contraire, in the view of Professor Llewelyn, who took issue with the very notion of trade secrets as property, since it did not satisfy the legal definition. Further, he argued against any attempt to codify trade secret protection as inherently doomed to uncertainties in construction and interpretation. As well, Llewelyn emphasized that cultural differences are part and parcel of trade secret protection.

The first speaker at the Copyright session was the influential Professor Andrew Christie, Professor of IP Law at the University of Melbourne. Professor Christie focused on that most challenging of copyright questions, how to find the balance in the law between public and private interests. In that light, he considered recent developments at the international, regional and even extra-territorial levels. Perhaps the most notable development at the international level is the continued progress of seeking to reach agreement on a Broadcasting Treaty, which will extend protection to internet transmissions. At the regional level, maybe the most interesting example surrounds the potential IP provisions of the (itself potential) Trans-Pacific Partnership (TTP). Relying on non-formal information (I think this Kat heard the word “leak”), one provision is reputed to extend the term of protection beyond the current international provisions (although at the session a person with knowledge said that this was not on the table). As for extra-territorial effect of a national copyright law, Professor Christie invited the audience to consider possible Australian legislation, which would enable site-blocking where even the infringement takes place outside the country. Professor Christie wondered if these developments were in the aggregate tilting too much in favor of the right holder.

The audience was then treated to a double Kat feast, as fellow Kat Eleonora considered what was happening to copyright in her own backyard, the EU. She recounted the historical antecedents of EU legislation in copyright, dating back to the 1980s against the backdrop of using harmonization as a means to remove impediments to competition and free movement of goods. A number of harmonizing directives followed. With a new EU Parliament and Commission, the interest in legislative reform to better align EU legislation with the demands of the digital era led to a request for public consultations in 2014, resulting in a record number of received responses. Where this will all lead remains uncertain, she emphasized, bringing the example of geo-blocking and the possible implementation of digital exhaustion.

Eleonora was followed by Tan Tee Jim, SC, head of the IP and Technology Department at the firm of Lee & Lee in Singapore. He considered two main issues: (i) the impact of new technology on copyright; and (ii) the potential use of copyright as a bullying tactic. Mr Tan compared the result of two well-known US Supreme Court cases — the 1984 Betamax case and the Aereo decision of 2014 — and the arguably inconsistent approach taken by the court in bringing technological developments to bear on the copyright law. As for so-called copyright bullying (also described as copyright trolling), he mentioned in particular the example of the Dallas Buyers Club, where the cease and desist letter has been used as the means to demand monetary compensation of thousands of dollars in settlement of a single download of a movie by the letter’s recipient [on which see Jani's recent Katpost here].

Fashion Law and Debates - from Balenciaga to DVF

I see IP everywhere. Everywhere.  Including a reasonably trashy beach read in Spain. El sigh.

Flicking through my sandy copy of El Pais, I noticed a familiar face.  That of IP and Fashion scholar Susan Scafadi, standing next to fashion designer Diane Von Furstenberg (DVF).  There it was, three glorious pages (en espanol) detailing the growth of Fashion Law, in particular that of IP and contract law.  No longer the last dress on the sales rack, Fashion Law is on trend.

Scafidi is quoted as describing the academic resistance to the establishment of Fashion Law. Fashion law was considered 'frivolous' but is now a popular and growing academic discipline which covers IP, contract law, finance and employment law.  (I can sympathise; my interest in the economics of fashion and IP has not always met with enthusiasm by fellow economists. Fashion Economics is instead an application of economics.)

Scafidi and DVF (president of the Council of Fashion Designers of America) have, for years, been pushing for increased IP protection in the US for fashion.  Arguments in favour of this often suggest that EU IP protection, particularly copyright, for fashion is vastly superior than the US. However, scholars such as Johanna Blakely (discussed here) argue that copying is essential to the fashion industries.

IPKat readers, please do correct me, but I find it hard to see how EU copyright laws protect fashion in a way that, in practice, has much more market impact than the US approach.

El Pais repeats the arguments that IP is essential for creativity and counterfeiting is ruining everything.  Complete with the usual dodgy statistics and a 3D-printing panic thrown in for good measure. The diamante-encrusted-bias-cut sky is falling!! (And it's as hideous as it sounds.)

I found more IP at the Balenciaga museum (#humblebrag). The museum is a shrine to the prodigal son of Getaria.  Credited with popularising the baby-doll dress, Cristobal Balenciaga was a prominent designer in the mid-20th century. He was, reportedly, very copied:
"The aura surrounding 'the Balenciaga' was practically a social aspiration, meaning that copies of models created by Balenciaga were very appreciated and sought-after, despite not being made with the same standards of manufacturing and fabric quality. 
Balenciaga himself with appropriate
monochrome solemnity
Professional buyers from department stores went to the presentations of the collection seeking models that were easily identifiable with the designer and that also had a novel touch.  They purchased the Balenciaga models already completed (they were not toiles) in order to be able to copy them (sic) a large number of items with the label 'inspired by Balenciaga' or 'Adapted from an original Balenciaga.' 
The desire for a Balenciaga is mentioned in March 1962 Harper's Bazaar: 'Every woman virtually uses one form of his creations, either directly or indirectly,' alluding to the existence of both legal and illegal copies." (Balenciaga museum text, 2015)
There was no detail on licensing, but 'legal and illegal copies' implies that that the house of Balenciaga also licensed designs. The museum text also hints at aspirational aspects of fashion and status conveyed by designs.

Balenciaga is also noted for resisting previewing his collections to the press at the standard four weeks ahead of retail delivery.  This wiki article cites that he sought to limit the proliferation of his designs via press coverage in order to limit copying (interestingly enough, suggestions that the equally revered Dior would copy Balenciaga silhouettes.)

The similarities between the now historical concerns of Balenciaga echo that of the Scafidi-DVF movement. The unifying theme is that copying inhibits innovation and creativity, and is bad. However, there are hints of an untold story here - that of licensing of designs and that of designers copying each other.  For IP to incentivise innovation and creativity in fashion, it needs to balance rewarding existing designs and encouraging future designs.  The lobbying arguments of large, established houses seem one-sided and focus on benefitting existing rights holders.  However, their success may come at the cost of the unrepresented future innovators - who naturally do not have a lobby.

To round out my Spanish sojourn in IP, was the ubiquitous street sales of counterfeit handbags and shoes. More sangria please.

(P.S. Secretly, and I'm guessing most IPKat readers will feel the same, I like seeing IP everywhere.)

Thursday, 27 August 2015

Armor, Glory and ... religion in a US trade mark clash

This GreeKat learns from the Washington Post that US-based sports apparel company, Under Armour, has initiated trade mark infringement proceedings against Armor&Glory, a small company producing, in its own words, "inspirational apparel". At issue is use by Armor&Glory of, no surprise, the mark  "Armor&Glory".  It seems that Under Armour justifies its trade name and is quite vigilant in protecting its trade mark rights; it has entered into IP rows with Nike, adidas (as a defendant though) and Sketchers in the past.

But the factual background in this case is different, not only because of the (tiny) size of the defendant, but also because of the story behind the allegedly infringing mark. According to Armor&Glory's founder, Terrance Jackson, the idea behind the venture came in 2013 following his disappointing attempt to dress his then 3-year-old son with anything not including skulls and crossbones [a rather exaggerated statement this blogger thinks]. As for the name, "the full armor of God" cited in Ephesians 6:11 was Mr. Jackson's source of inspiration. He is quoted to say that “When God gave this [name] to me, I never thought once about those guys. We don’t even spell it like them.”[hmm, that does not sound like a sound trade mark defense].

Regardless of spelling, Armor&Glory's market impact appears minimal. According to the story, "it has so far made less than $100,000 in revenue since 2013 — about 0.003 percent of Under Armour’s sales just last year. The company’s online store sells $20 shorts and $25 shirts designed largely for a core Christian audience, with slogans like “Be spiritually attractive” and 'Put on God’s armor and receive His glory.'".  
This may be why trade mark bullying psychology is put forth by Armor&Glory (and to a certain extent by the Washington Post's piece). The company has even started a crowd-funding campaign on its web page for expected legal costs. 

HANDS OFF (my armour)!! 
Of course, trade mark bullying can be an easy "accusation" to mouth in David vs. Goliath cases. For better or worse, Under Armour owns several registered trade marks incorporating "Armour" and Armor&Glory is not the first "Armor"-related case they have gone after. IP lawyers also know well that vigilance in protecting trade marks and brand integrity usully leaves little room to cherry-pick battles. So is this vigilance or bullying? 

BGH: not so fast, look-alike fasteners

Whether features of a (usually three dimensional) sign that was formely protected by a patent can be the object of a valid trade mark registration has been the subject of quite a few decisions (see C-48-09 P (LEGO brick), IPKat post,  joined Cases C‑337/12 P to C‑340/12 P (Yoshida knives), IPKat post, and TrafFix Devices, Inc. v. Marketing Displays, Inc., the leading US Supreme Court decision on the subject).

Trade mark owners have generally not fared well when the sign for which protection was sought was the object of an expired utility patent. Courts consider trade marking such shapes to be an extension of the limited term of the patent and contrary to public policy.

However, a key question which has not been addressed with a lot of attention by most courts is what exactly is the object of a utility patent. It is not the specific embodiment of the technical teaching used to illustrate the teaching, it is the technical teaching as described in the claims. It is possible that this technical teaching can be achieved by shapes that look quite different from the examples given in the patent specification and from the products actually placed on the market by the patentee.

In a recently published decision (I ZR 107/13), the German BGH has taken a more nuanced look at the issue - not in the context of (harmonised) trade mark law, but rather in the context of (largely) unharmonised unfair competition law. Still, the decision is interesting beyond Germany.

The claimant, Austrian Schnabl Stecktechnik GmbH, was the owner of a patent for a method of fastening electrical installations (tubes) to a wall (the decision does not state the patent number, but I believe it to be EP 0 105 865 B1). The method uses eccentric teeth fixed to a rod that is inserted into a pre-drilled hole and will expand when the rod is being pulled from the hole. This has the advantage that little force is needed for inserting the rod, but a large force is required to remove the rod from the hole. The figures from the patent show the principle quite clearly.
Figures from Schnabl's expired patent
Schnabl used an exclusive distributor for distribution of its fasteners in Germany. This distributor sold 90% of the fasteners to whole-sellers who in turn sold them under their own branding to end users (electricians). After expiration of the patent, the distributor began marketing its own fasteners, which bear a striking resemblance to Schnabl's products (see image).

Schnabl's fasteners (on the left) and the distributors fasteners (on the right)
Schnabl sued for unfair competition, claiming that its products had "competitive originality" ("wettbewerbliche Eigenart"), i.e., the relevant consumers associated their shape with a specific origin, and the distributor's use of nearly identical shapes led to confusion and/or exploitation of the original products' reputation. The first instance court sided with Schnabl. On appeal, the Oberlandesgericht Frankfurt reversed and dismissed the complaint. The reputation of Schnabl's products was based on the shape of the rod and its teeth, not the attached rings, bars etc. The rod and its eccentric teeth was subject of the expired patent and its appropriation by a competitor could not be prevented after expiration of the patent. In any case, since Schnabl's products were sold in Germany under different brands, the relevant consumers - we come to who that actually is - would not associate their shapes with a single source.  

On appeal, the BGH lifted the second instance's decision and remanded for further factual findings. The BGH held that the mere fact that a product had been within the scope of protection of a now expired patent did not prevent a finding of passing off if the shape of the product was not the only way to perform the (formerly) patented teaching (para. 24):
An element formerly protected by a patent (here the push-rod with its eccentric teeth) can form the basis for competitive originality of a product if the specific shape of the element is not technically necessary, but may be replaced by a different design that serves the same technical purpose without loss of quality.
In other words, in the area of (unharmonised) competition law, the BGH applies the "alternative shape" test that the CJEU explicitly rejected in the domain of harmonised trade mark law ("As to the question whether the establishment that there are other shapes which could achieve the same technical result can overcome the ground for refusal or invalidity contained in Article 3(1)(e) [Directive 89/104/EEC], second indent, there is nothing in the wording of that provision to allow such a conclusion.", C-299/99 - Philips v. Remington).

The BGH then goes on and states, more controversially in my opinion (para. 36):*
In case of an (almost) identical copy, a stricter standard applies with regards to the legality of appropriating features of the prior art that adequately solve a technical problem than in case of more limited resemblance. In case of an (almost) identical copy, the copier cannot, in principle, defend itself by argueing that it is merely appropriating an adequate technical teaching no longer protected by patent. If the copying of formerly protected elements leads to an (almost) identical copy, the competitor is reasonably requested to use another adequate ("angemessene") technical solution, unless the risk of confusion about the origin of the goods can be countered by other measures, such as labeling.
In other words, you cannot simply put a product on the market that corresponds to the specific examples of an expired patent and assume you are safe. If the product that looks like the specific example has acquired competitive originality, you have to use another "adequate" technical solution. The key term being "adequate" - I would assume that this means the alternative solution is in no way inferior to the specific embodiment of the patented teaching marketed by the patentee, but the BGH does not give much guidance on what an "adequate" solution is.

In the case at hand, affixing a label to the products was not possible. While the distributor used its own brand on the packaging and in its promotional material, the findings of the lower court did not show that this was sufficient to prevent confusion about the origin of the products. The lower court also had not made any findings as to whether another "adequate" technical solution was available - Schnabl argued that competitors used eccentric teeth on their fasteners that looked quite different from Schnabl's without incurring any disadvantages.
Schnabl's fastener (top) and alternative forms allegedly achieving the same technical effect (bottom)
The lower court had also failed to find whether the whole-sellers, rather than the end-users, perceived the shape of Schnabl's products as an indication of origin. It was improper to only consider the end-users as the relevant public. The BGH therefore remanded the case to the OLG Frankfurt for further factual findings.

* German original of the crucial para. 36 (references omitted):

Bei einer (nahezu) identischen Nachahmung gilt allerdings im Hinblick auf die Zulässigkeit der Übernahme von Merkmalen, die dem freien Stand der Technik angehören und der angemessenen Lösung einer technischen Aufgabe dienen, ein strengerer Maßstab als bei einem geringeren Grad der Übernahme. Bei einer (nahezu) identischen Übernahme kann sich der Nachahmer grundsätzlich nicht darauf berufen, er habe lediglich eine nicht unter Sonderrechtsschutz stehende angemessene technische Lösung übernommen. Würde die Übernahme solcher Merkmale zu einer (nahezu) identischen Nachahmung führen, ist es einem Wettbewerber regelmäßig zuzumuten, auf eine andere angemessene technische Lösung auszuweichen, wenn er der Gefahr einer Herkunftstäuschung nicht auf andere Weise - etwa durch eine (unterscheidende) Kennzeichnung seiner Produkte - entgegenwirken kann.

Thursday thingies

This Kat was delighted to see that the 12th edition of the Butterworths Intellectual Property Law Handbook is now published, though he was a little surprised to read about it online since he hasn't yet received his Consultant Editor's complimentary copies.  This lovely volume is now well over 2,200 pages in length, thanks mainly to the superlative efforts of British and European legislators.  There's no news yet as to whether, and if so when, the 7th edition of the Butterworths E-Commerce and IT Law Handbook, for which he is also Consultant Editor, might be coming out.  Watch this space and he'll let you know.

Old Nick, new face. Next Tuesday, 1 September, between the hours of 5 and 7 pm, outspoken IP blogger Michael Factor (IP Factor) will be inhabiting the sacred inner sanctum of The Old Nick, Sandland Street, and relishes the chance to discuss intellectual property practice and professional ethics. Do feel free to join Michael (as various members of the IP social media fraternity will be) and give him a chance to share some thoughts.  Michael has kindly offered to pay for the drinks ...

Forthcoming events.  Apart from the usual suspects, listed on the IPKat's Forthcoming Events page, here is one that is coming up sooner than the organisers realised pretty soon: it's the British IP Day, coming up on 10 September 2015 from 9.00 - 13.00, at 10-11 Carlton House Terrace, London, SW1Y 5AH. Organisers are the UK Intellectual Property Office and the Office for the Harmonisation of the Internal Market. This Kat understands that there will be an opportunity for attendees to discuss their own proposed topics; if you would like to contribute, please send your suggestions to in good time before the event. More information is reputedly available here.  

An interior view of Taylor Wessing's venue
On the subject of forthcoming events, registrations for this year's JIPLP-GRUR Int London seminar have now topped the 80 mark -- but there's still a bit of room for a few more souls who have a passion for intellectual property litigation.  This event, which takes place on Tuesday 8 September. "The impact of the Intellectual Property Enforcement Directive (Directive 2004/48) on national litigation" and the venue is the London office of law firm Taylor Wessing LLP (here). The two speakers are London-based barrister Michael Edenborough QC (Serle Court) and Hamburg-based lawyer Wiebke Baars (Taylor Wessing), with JIPLP editor Jeremy Phillips in the chair.  A panel discussion will take place following the presentation of the two papers, led by Anna Carboni (partner, Redd solicitors and an Appointed Person to hear trade mark appeals), Paul Stevens (Olswang CEO and former head of litigation, Olswang LLP) and Mark Owen (Taylor Wessing).  Anna and Paul are both members of the JIPLP editorial board. The panel-led discussion will be followed by questions and comments from the floor and a reception. Registration commences at 2.30 pm for a 3.00 pm start. The formal proceedings should be concluded by 6 pm and the reception will finish by 7 pm. Admission is free and it is believed that there will be some CPD credit. If you'd like to attend, just email Jeremy Phillips at with the subject line "Enforcement". 

Catching the scent of the
elusive Triennial ...
The Triennial Hasselt-Genk.  You may not yet have heard of it, but the Triennial Hasselt-Genk is an innovative Belgian multidisciplinary arts festival. For its 2016 edition the festival will focus on the complex and rich relationship between trade marks and art. The curator's goal is to approach this relationship in an active, participative and critical way in order to motivate festival-goers to think about IP rights in general and about trade marks more specifically.  Through 10 exhibitions, social artistic projects and an academic conference, the arts festival aims to not only address the professionals in art and IP but also to reach out and raise awareness to a more general audience.  With this goal in mind the festival organisers are looking for the support of this weblog's readership, seeking to identify trade mark-and-art-related cases that might not otherwise have found their way on to their desks. If you have any interesting case law and/or examples of art/artists struggling with trade marks which you think should be showcased, please email artistic director Pieter Jan Valgaeren at 

Not an utter clutter ...  One of this Kat's regular readers dropped him a line a day or two ago to tell him about some work that has recently been undertaken by a group of economists on a UK Intellectual Property Office (IPO) project regarding trade mark register clutter. The resulting report has now been published by the IPO with the title “Cluttering and Non-Use of Trade Marks in Europe”.  You can read it here. The document is 118 pages long.  This topic is somewhat controversial, since some people say the trade mark register is full of over-wide and unnecessary bits of registrations, others say that this is just a sign that the system is popular and works well, while others say that clutter is all the fault of users of the trade mark system who always seem to want to register the same words and images as marks. Other people work in the pharmaceutical sector and fly into paroxysms of rage when any clutter-denier opens his or her mouth.  Anyway, Kat readers can make up their own minds -- as they usually do.

BVI to go sky-high. Beginning next Tuesday, 1 September 2015, the British Virgin Islands (BVI) welcomes its modern new trade mark regime. However, the welcome may be a qualified one since along with the new laws come new (and much increased) fees. Previously charging some of the most modest official fees in the Caribbean region, the BVI is for example hiking the new official fees for single class registrations from a range of soar from US$10-40 per mark to $250 for the first class and $150 for each additional class in a multi-class registration (Katpat to Katherine Van Deusen Hely, founder of Caribbean IP, for this update, following up on her earlier news about the new law).

Around the weblogs.  IP Finance, via Mike Mireles, takes a look at the Trump brand and the impact on it of the eponymous Donald Trump's political campaigning. The Aistemos patent analytics blog has posted a couple of provocative items this week: one speculates as to why patent litigation insurance is offered for businesses that face threats and demands from patent trolls but not for the trolls themselves; another wonders whether there are any prospects for more private sector involvement in the patent examination process.  The jiplp weblog offers another four IP books for review, which the reviewer can keep once he or she done the reviewing. On the subject of books, PatLit notes a handy new one on US patent law for European readers. The 1709 Blog has a red, white and blue CopyKat round-up from Ben Challis and a somewhat critical piece by IPKat blogmeister Jeremy on the value of a UK copyright goodwill mission to share 'best practices' with the visitors' Chinese counterparts.

Wednesday, 26 August 2015

“Simple Past, Present Continuous…Future Perfect?” GFIP Conference Report IV

The second plenary session today addressed the topic of IP Value Creation—Strategies for the 21st Century. But first a word about the conference organization, This Kat heard many attendees marvel at the level and detail paid to the organization and on-site management of the event. From the speakers’ perspective, we were particularly well looked-after. IPOS and the IP Academy should be warmly complimented for their efforts.

If you liked The Economist's piece on patents,
you'll just adore this board game ...
Four speakers offered various perspectives on the issue of IP value-creation. First up was Ian Harvey, formerly the head of the well-known English technology commercialization company BTG and today affiliated with Tsinghua in Beijing and Imperial College in London. His mantra is that IP is the currency of innovation. However, there is still a disconnect between IP and those that are responsible for looking after it in a company, and the low level of awareness of IP at the corporate manager level. Even more telling, from his experience, IP is still not a boardroom item. The challenge remains how to bring the IP professionals into the mainstream of the company’s business considerations. Mr Harvey’s most rousing moment was his impassioned criticism of the last week’s cover story in The Economist, “Set innovation free! Time to fix the patent system” (this Kat is in full agreement and Kat readers can expect further comments on a truly appalling piece of IP populism upon this Kat’s return home).

Following Ian Harvey, a familiar face from previous GFIP events, Kenichi Nagasawa, Director and Group Executive at the Corporate Intellectual Property and Legal Headquarters of Canon, took the audience through a series of fascinating slides on how Canon manages its IP interests. The degree of sophistication in the way Canon handles its IP matters were an eye-opener for a not insignificant number of the audience. This Kat, for one, is eagerly awaiting the opportunity to get his Kat-paws on the slides for further study and reflection.

Etienne: a Loire
unto himself?
From the multinational tech world of Canon, we turned to Etienne Sanz de Acedo, the kinetic CEO of the International Trademark Association (INTA). Etienne (as he is wont to be called), identified three topics that posed a challenge to the commercial viability of trade marks, namely (i) counterfeiting: (ii) bad faith registrations; and (iii) providing a proper valuation for a company’s trade marks and other IP. In response to a question for the audience, he mentioned plain package labelling as a further issue of concern. He noted generally that business people need to better understand IP as a company asset.

... and not just global trade?
The final speaker, and in some ways a complement to the presentation by Mr Nagasawa, was Karen Law, Group General Counsel at Digital Domain Holdings, a media company. Ms Law has previously worked for a number of years in a senior IP capacity at Alibaba. If Mr Nagasawa represents the approach used by the high tech product world, Ms Law represents the IP challenge posed to media companies. As she mentioned, her entire experience at Alibaba had been in the context of online products. What was particularly interesting for this Kat was her several references to co-branding activities as a means for obtaining greater market share and enhancing one’s goodwill. Even more, these co-branding activities were not simply arrangements to use together marks from two or more entities, but also entailed establishing a joint venture in the furtherance of the co-branding efforts.

“Simple Past, Present Continuous…Future Perfect?” GFIP Conference Report III

After an evening where speakers and attendees alike sought to find their bearings in the large expanse of the Marina Bay Sands Hotel (and no doubt tried to decide when to go the top of the hotel to indulge in the famous swimming pool and vista from the 57th floor). This Kat has not yet found the time to take the plunge—but he will.

The two plenary sessions of the second day of the programme moved from discussions on national, regional and international aspects of IP to a consideration of two main pillars of IP practice—the courts and the creation of value from IP. As in previous GFIP programmes, the judges’ plenary session is a particular favourite of the attendees. The four judges participating in this programme were George Wei (Supreme Court of Singapore), Sir Colin Birss (High Court, England and Wales), Cheng Yongshun (former Deputy Chief Judge, Beijing High Court IP Tribunal) and Randall Rader (former Chief Judge, U.S. Court of Appeals for the Federal Circuit).

Justice Wei focused on the judicial challenge posed by the need for construing key IP notions that are not further defined or explained in the relevant statute. He mentioned three salient examples. The first is determining obviousness/inventive step. The difficulty in fixing a test and then applying it is well-known in the jurisprudence of numerous countries. From the world of trade marks, Justice Wei addressed the issue of how to “graphically represent” scent marks against the need that the representation serve as notice to the public. Then turning to copyright, he focused on how to determine when “authorizing infringement” has occurred. Of particular interest were his comments on the difficulty that a judge faces when existing case law confronts arguably changing circumstances. He mentioned Lord Neuberger’s recent decision in the recent UK Supreme Court Starbucks "NOW" case in this regard [this Kat has previously expressed his own views on this case].

Mr Justice Birss was of the view that IP cases are characterized by three particular features: (i) many cases have an international aspect: (ii) often they are technologically complex; and (iii) IP cases tend to be high profile. Against this backdrop, he considered how to achieve a judicial balance between predictability and discretion in reaching the “right” result. He highlighted how this balancing can lead to decisions favouring one over the other by referring to the recent US Supreme Court case in the Kimble Spiderman dispute [on which see the AmeriKat here] and the UK Supreme Court decision in Virgin [noted by the IPKat here]. In Kimble [see here for this Kat’s view of that case], predictability was preferred, while in Virgin the court overruled 100 years of precedent. Mr Justice Birss suggested that it was difficult to reconcile these two results (although he also admonished the audience to remember that nothing said in his presentation in any manner would bind him when called up to render judgment in a given case). He particularly intrigued the audience by his suggestion that the common law system of trial, with the high costs involved, might well seek to learn from the trial system in Continental law systems.

Balancing acts: best when not "amorphous"
Justice Rader, in his inimitable style of presentation, bemoaned the current state of IP (and in particular patent) court-made jurisprudence. He described how this jurisprudence has resulted in three types of risk: (i) unintended consequences; (ii) less predictability and (iii) the absence of statutory basis for some results. Echoing Mr Justice Birss, Judge Rader also mentioned the high cost of patent litigation as a fundamental problem for which few practical solutions have been implemented. He was particularly critical of the approach taken by the US Supreme Court, which is wont to apply various forms of an “amorphous” balancing test when ruling on cases before it. In Judge Rader’s view, such an approach is less appropriate for IP cases, where more bright-line rules would better serve the interests of the parties.

The final judge to speak was Judge Cheng. As with his Chinese colleague He Zhiman, who spoke yesterday, Judge Cheng spoke with refreshing openness about judicial IP matters. His focus was on the development of the court system in China as it applied to IP matters and how such challenges might better met by the establishment of specialized IP courts in 2014. Three main problems were described regarding the courts as they dealt with IP issues: (i) inexperienced judges: (ii) inconsistent decisions and (iii) uneven distribution of cases loads across different regions. To address this, specialized IP courts have been so far been established in Beijing, Shanghai and Guangzhou. As well, other measures, such as the submission of amicus curiae briefs, are being considered.

“Simple Past, Present Continuous…Future Perfect?” GFIP Conference Report II

The second plenary session for Day 1 was devoted to the topic of ASEAN Economic Integration 2015—Opportunities, Interoperability and Synergies in IP. ASEAN, the Association of Southeast Nations, is a political and economic organization consisting of 10 member states—Singapore, Indonesia, the Philippines, Malaysia, Thailand, Brunei, Cambodia, Laos, Vietnam and Myanmar. The economic clout of ASEAN surprised this Kat. Its total population is 625 million residents and its GDP is estimated at $2.6 trillion dollars, which in the aggregate makes it the 7th largest economy in the world. Because of this 2015 ASEAN Economic Integration, special attention was given to developments in the region.

The substance of the panel presentation was divided into two parts. The first speaker, Dr Cham Prasidh, Cambodian Senior Minister for Industry and Handicrafts, spoke candidly about his country’s need for assistance from other member countries in connection with creating an effective IP infrastructure. Singapore and IPOS were prominently mentioned in this connection. Following Dr Prasidh, each of the three other speakers on the panel—Mr Tan Yih San, Chief Executive of IPOS, Mr Pushpanathan Sundram, currently managing director of EAS Strategies and former Deputy Secretary General for the ASEAN Community, and Ms Audrey Yap, of the Singapore law firm of Audrey & Partners, talked about various aspects of how the economic integration of the region, including IP aspects.

The challenge at the national level is whether a free flow of goods can occur in the absence of robust IP protection. In this context, Mr. Tan referred to the ASEAN IPR Strategic Action Plan and speculated whether it will be possible to one day achieve regional integration of IP throughout the region. Mr Pushpanathan Sundram noted that the ASEAN member countries are in the aggregate the recipient of more foreign direct investment than China. Ms Yap focused on a number of companies that have achieved success across various countries with the ASEAN regime and the part played by trade marks in facilitating this success.

This Kat notes that one of the parallel sessions for Day 2 of the programme is “ASEAN-IP Strategies and Risk Management”, where the IP aspects of ASEAN economic integration are covered in greater detail. Unfortunately, this Kat was unable to unable to attend this parallel session.

“Simple Past, Present Continuous…Future Perfect?” GFIP Conference Report I

The Global Forum on Intellectual Property 2015 (GFIP), under the auspices of the Intellectual Property Office of Singapore (popularly known as IPOS) together with the Singapore IP Academy just completed its two-day event (25 to 26 August) at the well-known Marina Bay Sands Hotel (right). The GFIP is the flagship event of the week-long IP Week@SG, now in its fourth year. This year’s GFIP took on particular meaning in light of the 50th anniversary festivities celebrated in Singapore earlier this month.

It's not how you punch,
but who you punch ...
This year’s theme is “Simple Past, Present Continuous…Future Perfect?” The reach of the programme has expanded from the early days, to a regional event attracting delegates from all over Asia and now, increasingly, from Europe and North America as well. This Kat can confirm this—at a communal meal that he took part in prior to the event, he quite by chance met an attendee who had arrived from Houston, Texas (15 hour flight to Tokyo followed by a 7 hour flight to Singapore). It would seem that the mix of IP legal practitioners, policy makers, members of the judiciary, academics and business professionals is finding an increasingly international profile, allowing Singapore to rightly feel that it is “punching above its weight in world IP matters.”

... and how strictly you can
maintain IP discipline
Day 1 of GFIP began with brief words of welcome from Ms Chiam Lu-Lin, Executive Director of the IP Academy, Deputy Chief Executive of IPOS, and the Chair of the IP Week Organising Committee. She emphasized three aspects to the programme theme: Trends, Tension and Ties. She was followed by the Opening Address given by Guest-of-Honour, Mr K. Shanmugam, Minister for Foreign Affairs and Law for Singapore. The Honourable Minister stressed the importance of IP for the Singapore economy, backing this up with a variety of economic data, In that light, he stated that it is of paramount importance that Singapore maintain “a strict IP regime,” such that one can be assured that its IP “is safe in Singapore.” Singapore is on course in its goal of being the IP hub for Asia.

The first plenary session addressed directly the theme of the conference, focusing on the evolving architecture of the global IP system and the influence of national IP systems and the tension between the territoriality of IP rights and the global scope of IP exploitation. First to speak was Dr Francis Gurry, Director General of the World Intellectual Property Organization. Dr Gurry articulated the promise and challenge of an international system based on multilateral relationships. He also restated his vision for “a seamless global digital marketplace” based in the development of business models resting on legal principles. He also emphasized that, in his view, at least in the near term, IP harmonization was more likely to be limited to procedural subjects.

Dr Gurry's address was followed by comments from senior officials from the Japanese Patent Office and the State Intellectual Property Office of China. Speaking on the Japanese situation, Commissioner Hitoshi Ito reviewed the ongoing efforts of the Patent Office to continue to improve its patent services, including regarding the speed of the services, quality and extent of international cooperation. Mr He Zhimin, Deputy Commissioner of the Chinese Office recounted the four stages that China has undergone in developing its patent law system. He elaborated on the current aspirations to formulate a full-fledged IP strategy and forcefully articulated that, while China had succeeded in aligning itself with the international IP system, it would also seek to find its unique path when appropriate. With refreshing candour, he described in some detail in this regard China’s efforts to strengthen the enforcement environment. The final speaker of the session was Dr Stanley Lai, chairman of the board of IPOS and a leading IP practitioner in Singapore, serving as the head of the IP practice at Allen & Gledhill. Dr Lai traced the development of Singapore over its 50 years and the role played by IP. He speculated on how Singapore can seek to flourish by focusing on certain niche markets, for which IP protection will be central.

Tuesday, 25 August 2015

Rule of Reason curbs Basic Instinct as trade mark loses its appeal

This may be one of those instances in which the title of a blogpost is more entertaining than the post itself. This post features Case C-400/14 P Basic AG Lebensmittelhandel v OHIM),  Repsol YPF SA intervening, a Court of Justice of the European Union (Sixth Chamber) decision dating back to 16 July. It's not a judgment but a 'reasoned order' -- a rather lower species of decision, binding but not normally likely to hit the headlines.

So what was this case about? In March 2008 Basic applied to register as a Community trade mark (CTM) a figurative sign, shown on the right, which featured the word ‘basic’ in lower case letters. 
Registration was sought for a large number of services in Class 35, including ‘retail and wholesale services relating to foodstuffs, fresh fruits and vegetables, alcoholic and non-alcoholic beverages and syrups, effervescent tablets and other preparations for making beverages, mail order (except transport) or internet retail services, all in relation to beverages and foodstuffs’ and also for some services in Class 39, including ‘distribution of staple foodstuffs, pastry and confectionery, ices, prepared meals’.  

Six months later Repsol opposed, relying on its own earlier CTM, shown on the left, which contained the word ‘basic’ in upper case letters. Repsol's mark covered ‘commercial retailing of tobacco, press, batteries, playthings, goods for cars, accessories and spare parts for cars, lubricants, fuel for cars; advertising; office functions’ (Class 35); ‘building construction; repair; installation, service stations (petrol stations); repair of vehicles; maintenance, greasing and washing of vehicles; repair of tyres’ (Class 37) and ‘distribution of staple foodstuffs, pastry and confectionery, ices, prepared meals, tobacco, press, batteries, playthings, goods for cars, accessories and spare parts for cars, lubricants, fuels and fuel for cars, transport; packaging, storage and supply of goods of all kinds, including fuels; travel arrangement’ (Class 39). Said Repsol, given the similarity of the marks and the identity or similarity of their respective goods and services, there existed a likelihood of confusion of the relevant consumers under Article 8(1)(b) of the CTM Regulation 207/2009.

Basic Instinct: Marjorie
rehearses the notorious
"leg-crossing" scene
In May 2010 the Opposition Division upheld the opposition in respect of some of the services in Class 35 and all of the services in Class 39. In July 2010, Basic appealed.  The First Board of Appeal found that there was indeed a likelihood of confusion as regards Basic’s application to register its sign in respect of ‘retail and wholesale services relating to foodstuffs, fresh fruits and vegetables, alcoholic and non-alcoholic beverages and syrups, effervescent tablets and other preparations for making beverages, mail order (except transport) or internet retail services, all in relation to beverages and foodstuffs’ in Class 35 and the ‘distribution of staple foodstuffs, pastry and confectionery, ices, prepared meals’ in Class 39. Consequently, it upheld the opposition by refusing to register the CTM for those services. However, the Board of Appeal found that the other services in Class 35 were different from the services covered by the earlier mark and therefore dismissed the appeal with regard to them.

Basic then applied to the General Court to annul the decision of the Board of Appeal in so far as it had upheld the opposition, maintaining that the Board of Appeal had misapplied Article 8(1)(b).  The General Court dismissed this application and Basic appealed against the decision of the General Court to the Court of Justice of the European Union (CJEU).

The CJEU dismissed Basic's appeal in its entirety.  The significant bits of the CJEU's reasoned order are as follows:

* Under Article 181 of the CJEU's Rules of Procedure, where an appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the CJEU may at any time, acting on a proposal from the Judge-Rapporteur and after hearing the Advocate General, decide by reasoned order to dismiss that appeal in whole or in part -- and that was what the CJEU decided to do here.

* Basic had argued that the General Court, in drawing a distinction between ‘retail services’ and ‘distribution services’ assessed the similarity of the services at issue without actually defining the scope of ‘distribution services’ -- a term which Basic wanted the Court to define in a way that would prevent it from being similar to either wholesale or retail services.  This was not in fact the case: the General Court explained that distribution and wholesale services had an intermediate function and contributed to the attainment of the same ultimate objective, which was the sale to the end consumer. 

In accordance with the case-law of the CJEU, the legality of the decisions of the Boards of Appeal must be assessed not on the basis of a previous decision-making practice of those Boards of Appeal, but solely on the basis of the CTM Regulation.  It cannot therefore reasonably be objected that the General Court did not take those decisions into account in analysing the merits of the Board of Appeal’s decision.

This appeal looks like a bit of a no-hope, straw-clutching exercise -- and this is exactly why Article 181 of the Rules of Procedure exists. The CJEU doesn't seem to have much scope for refusing to accept appeals or for deciding which cases come before it, so the 'reasoned order' is the neat way out. This Kat doesn't think that there is any ground on which to appeal against or set aside the CJEU's decision to use its Article 181 facility either, though he is happy to be put right on this.  Adds Merpel, when parties feel aggrieved by a decision, it can be difficult for them to live with it: the urge to appeal is what one might call a Basic Instinct.

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