For the half-year to 30 June 2015, the IPKat's regular team is supplemented by contributions from guest bloggers Suleman Ali, Tom Ohta and Valentina Torelli.

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

Tuesday, 3 March 2015

The politics of US patent law reform

This weblog has carried so much material concerning patent law in Europe that one might almost be forgiven for assuming that everything has gone quiet in the world's favourite market for innovation and patent litigation -- the United States -- and that some of the most colourful personalities in the world of patent infringement have given up their litigious ways and have taken up chasing llamasBut this is not so, as this guest post by Kevin Winters suggests. Here Kevin gives us a glimpse of some of the stirring action in the seething cauldron of US patent reform. This is what he writes:
The politics of US patent law reform

Law reform can be a tricky process.  The experience in the USA and the attempts to reform its patent system are good examples of this.  
In January this year the House of Representatives saw the reintroduction of the patent reform bill: the Innovation Act 2015. Followers of IP developments will be well aware of how controversial the debate over patent law reform has become.  The main thrust of this proposed legislation is to deal with so-called patent trolls by changing the manner in which claims of patent infringement are handled in the US courts.  The new bill bears many of the same features of its predecessor: 
        The holder of a patent that files a lawsuit will need to provide greater detail in support of their case: it would need to include infringement charts showing how each limitation to each asserted claim in each asserted patent is found within each allegedly infringing product or process; 
        There would be the introduction of a presumption of attorney fees to the prevailing party for spurious claims of infringement; 
        In any lawsuit, the patent owner would be obliged to disclose the ultimate parent entity of any assignee of the patent; and 
        The courts will be required to establish the validity of the patent early on in the litigation process. 
The introduction of this piece of legislation was halted in the Senate last year, following fears that it was not proportionate to dealing with patent trolls, and could be detrimental to legitimate patent holders in the US.  Unfortunately these concerns have not disappeared.  Further, some commentators in the US have suggested that the bill does not take account of how much has happened in patent litigation since it was first introduced in 2014.  In particular, the Supreme Court has been unusually busy in dealing with patent law cases, and has taken some important steps to tackle spurious patent litigation.    There is however much support for the legislation, in both the political and commercial spheres, where there are those with the belief that the current patent regime is ineffective for dealing with patent trolling.  
Looking at the changes that the legislation proposes in the abstract, they seem to contribute to a robust system where cases are dealt with efficiently.  However when considered in context there are some concerns, particularly concerning the exact details of the proposed changes. The requirement that litigants go into greater detail in their pleadings regarding infringement could indeed help the litigation process.  However, lacking any guidance on exactly how much detail is needed, the courts will be left not knowing how high the standard of pleadings must be.  
Further, the Supreme Court has already heightened the standard of pleadings in civil cases, raising the question of whether greater detail is needed. In Ashcroft v Iqbal  556U.S. 662 (2009) the Court ruled that the requirement that a complaint have sufficient factual matter to be plausible will apply to all civil cases   though it is not yet known whether this standard will be different to what is ultimately passed into law.  
Additionally, objectively speaking, there is a risk that the presumption of attorneys fees could have a detrimental or chilling effect on smaller enterprises that may lack the resources to enforce their patents. This point was recently emphasised by a number of leading US universities in a letter to Congress, arguing that: 
The prospect of substantially increased financial risk would discourage universities and other patent holders lacking extensive litigation resources from legitimately defending their patents.  Moreover, this increased financial risk would deter potential licensees and venture capitalists from investing in university patents in the first instance, reducing the number of research discoveries that advance to the marketplace. 
The full letter can be accessed here

While it is true that the landscape of patent litigation has changed since the Innovation Bill was first introduced, the political landscape has also undergone a dramatic change: both the House of Representatives and Congress host a strong Republican presence that supports the passing of the bill.  Moreover there appears to be increasing pressure from the business sector to implement this legislative change.
What will happen next? How does the scene look from closer to the Capitol? This Kat is sure that we will soon hear from some of our readers ...

Seiko and Seiki in Singapore: "too well known to be confused"

It has happened before and it will happen again, but it's always a surprise when it does. Sometimes a mark is almost too well known for its own good. The worst case scenario is when it's so well-known that it becomes synonymous with the goods or services for which it's registered and ends up being generic.  A less bad case, but definitely a frustrating one, is where it's sufficiently well known that consumers are not considered likely to be confused between it and an uncomfortably similar mark.  In the European Union we have seen something like this, for example when the owner of the PICASSO Community trade mark came up against a later PICARO mark (see Case C-361/04, here). In this guest post Ng Qi Ting (Kass International, Kuala Lumpur) writes about a similar instance in Singapore which occurred last year:

While the Japanese company Seiko may be a pioneer in “exquisite workmanship” when it comes to timepieces, establishing itself as a famous brand to half the world, it certainly did not enjoy much success in its battle in opposing the trade mark SEIKI from securing a place in the trade mark registry of Singapore.

Choice Fortune Holdings Limited applied to register SEIKI for electronic goods such as television sets and disc players. In a natural course of events, Seiko Holdings Corporation, with its SEIKO trade mark also covering goods such as gramophones and metronomes in the same class, brought an opposition against the registration of SEIKI at the Intellectual Property Office of Singapore (IPOS). Said Seiko, Choice Holdings’ mark was confusingly similar to its own and the use of SEIKI would dilute its goodwill in SEIKO.

Regarding confusion, Seiko had to satisfy the familiar “step-by-step” approach, establishing that (i) the marks were similar; (ii) the goods were identical or similar; and, as such, and (iii) part of the public is likely to be confused.

The Registrar took the view that there are no strict formulae to adhere to when comparing the marks. It is the “first impression” created by a mark that matters. As the Registrar said:“the assessment of mark-similarity is more an art than a science, more of feel than of formula, though guided by principles.” In this instance, the Registrar found that SEIKI was visually and aurally similar to SEIKO, albeit to a low degree. In terms of conceptual similarity, the Registrar was of the view that, as Japanese is not a common language in Singapore, SEIKO and SEIKI  -- the latter being a word meaning "century" or "regular" in Japanese and also being a given name -- would simply be viewed as invented words with “Japanese-like characteristics” by the Singaporean public. Although the Registrar did not rule out the possibility of finding conceptual similarities between two marks that shared the same national characteristic, here the fact that both words sounded Japanese was too vague a concept for the Registrar to find conceptual similarity. It was also found that there was similarity in the goods represented, in that the goods covered by Seiko's mark overlapped with those of Choice Fortune.

Despite these findings of similarity, the Registrar held that the likelihood of confusion was minimal. Although visual, aural and conceptual similarities are to be taken into consideration when deciding whether the marks are similar, these aspects are not to be taken as a pre-definitive yardstick to make a finding of confusion. Other factors are to be taken into account and the finding of confusion should always be based on the facts in each case. Here the Registrar felt that the likelihood of confusion was low because the products represented by the marks were relatively expensive, and their consumers were unlikely to purchase them on a whim. On the contrary, their consumers would have made the necessary enquiries before purchasing them and, even at the point of purchase, those consumers would pay more attention.

As for dilution, SEIKO was recognised for timepieces by the majority of the Singaporean public, and the Registrar was not convinced that consumers would draw a mental connection between SEIKO and SEIKI was it is unlikely that any rational consumer would assume that Choice Fortune's electronic goods such as television sets and disc players emanated from Seiko. It was deemed implausible that the SEIKI mark would cause dilution in an unfair manner towards the goodwill in Seiko's mark. Seiko had thus failed to conciliate the elements under all the grounds raised, so SEIKI was allowed to proceed to registration.

What was significant here was that the existence of a long and established reputation could actually act against being able to establish likelihood of confusion.The more strongly a trade mark is ingrained in the mind of consumers, the less likely it is that confusion would arise. This was not a decision to give heart to owners of well-known brands.
You can read the decision in full here.

Warner-Lambert v Actavis Mark 4: harmony between parties in ‘lyrical’ patent dispute

Last Thursday, this Kat’s esteemed moggy friend and blogmeister Jeremy reported a High Court Order obtained by Warner-Lambert (part of the Pfizer group) mandating the NHS to release guidance about the prescribing of pregabalin.  The decision containing this order and the form of the guidance have both now been published – see here.  The full citation is Warner-Lambert Company, LLC v Actavis Group PTC EHF & Others [2015] EWHC 485 (Pat) (02 March 2015).

Rather than reproduce earlier posts, the IPKat would refer readers who are new to this saga to his earlier posts, here and here.

That this Order was made was intriguing to this moggy.  On the one hand, the Order can be seen as the logical consequence of a remark made in the first judgment, Pfizer’s application for an interim injunction, in which Arnold J noted:
" ... [all parties agreed that] the best solution to the problem which arises in this case is to try to ensure that prescribing doctors prescribe pregabalin for the treatment of pain by reference to the brand name Lyrica rather than by reference to the generic name pregabalin. That will ensure that pharmacists only dispense Lyrica when presented with prescriptions for pregabalin which are (at least so far as the prescriber is concerned) for pain without requiring the pharmacist to know the indication for which pregabalin has been prescribed.”
The generics companies seemed quite happy for such guidance to be issued since it reduces their liability in the infringement case.  (Merpel remarks that “They could hardly argue that the patent is not infringed because their pregabalin is not intended for use for treatment of pain, and at the same time resist issuance of NHS guidance to the same effect, now, could they?)  On this line of reasoning, why would the judge refuse the requested Order?

It was only after the pharmacist had queried
his third prescription for Lycra that Dr Mog
realised that there might be problems ...
However, on the other hand, in the same decision (to refuse interim injunctive relief), Mr Justice Arnold noted that Actavis had no intention (or, specifically, Warner-Lambert had not pleaded a case of subjective intention) to market its generic pregabalin for pain relief and that he considered that the Swiss-form claim would not be infringed by Actavis.  He considered there to be no serious issue to be tried and refused the interim injunction. How therefore, could the making of such an Order this time be justified?  One point is that since then Warner-Lambert had amended its case to plead a case of subjective intention, and, even though he did not find this case particularly compelling, in the second judgment Arnold J had refused to strike out Warner-Lambert's case or grant summary judgment, and had ordered the matter to proceed to full trial, because this was a developing area of law and a full trial should take place to establish all the facts before any appeal on the merits.

All parties accepted that section 37(1) of the Senior Courts Act 1981 gave the Court jurisdiction to mandate NHS England to issue guidance relating to the prescribing of pregabalin.  Mr Justice Arnold then had to consider whether or not to use that jurisdiction.

Citing Norwich Pharmacal, Pfizer argued that once NHS England became aware that it was mixed up in the wrongdoing of others, it came under a duty, which the Court had jurisdiction to enforce pursuant to section 37(1), to take proportionate measures to prevent or reduce that wrongdoing; in reply, Arnold J commented that the
 “obvious difficulty with this submission in the circumstances of the present case is that, if my previous judgments are correct, then it is not seriously arguable that Actavis are infringing the Patent.”
However, he then observed that:
 “it is well established that Norwich Pharmacal relief is available where there is an arguable case of wrongdoing based on the evidence available at the time of the application…[and that]… in my first judgment of 6 February 2015, I declined to strike out Warner-Lambert’s claim under section 60(1)(c), on the ground that this was a developing area of law and therefore the facts should be found before attempting definitively to decide what the law was, as being sufficient for this purpose.”
This moggy wonders whether the potential injury to the generics company was smaller in making this Order as compared to the originally sought interim injunction, tipping balance of convenience in Pfizer’s favour.

Additionally, the Court of Appeal has given permission to appeal Mr Justice Arnold’s refusal to grant an interim injunction.  Counsel for Pfizer drew analogy between this situation and “the situation where an injunction is sought pending appeal even though the patent has been held invalid at first instance, as to which see Novartis AG v Hospira UK Ltd [2013] EWCA Civ 583, [2014] 1 WLR 1264.”

These two factors, and in particular the second, were found to be persuasive and enough for Arnold J to Order NHS England to issue the requested guidance.

Following the IPKat’s previous post, one of our dear readers speculated as to whether Arnold might have relied on public law to justify this Order.  Pfizer argued in this manner, but the question was not considered in detail since there was no dispute as to the Court’s jurisdiction.

The only real point of dispute between the parties in this case was the ambit of the cross-undertaking in damages to be given by Pfizer.  Pfizer initially offered the cross-undertaking to NHS England and the Department of Health, but the defendants and some of the interested parties successfully argued that it should be extended in their favour.  The guidance issued by NHS England could impact on the business of the generics, and so this is perhaps unsurprising.  Indeed, the cross-undertaking was ultimately granted in favour of the Actavis group, the Teva group and Dr Reddy’s Laboratories, in addition to the public bodies.  Arnold J was held that the cross-undertaking should be made to the groups of companies since the injunction could result in some restructuring within those groups, and it would be inefficient to require the generics groups to have to approach the court every time some restricting occurred.

The material part of the prescribing Guidelines from the NHS to GPs and pharmacies, which are attached to the judgment, read as follows:
    Warner-Lambert Company LLC is engaged in a dispute with a number of generic pharmaceutical suppliers regarding pregabalin, which remains on patent for one indication, namely, the treatment of pain. As part of that dispute, the Court has required NHS England to issue this guidance. Our guidance is that, because of Warner-Lambert's patent rights:
    1. Pregabalin should only be prescribed for the treatment of neuropathic pain under the brand name Lyrica® (unless there are clinical contra-indications or other special clinical needs e.g. patient allergic to an excipient, branded product unavailable etc which apply to Lyrica®, when you should not prescribe Lyrica® or pregabalin)
    2. When prescribing pregabalin for the treatment of neuropathic pain to patients you should (so far as reasonably possible):
    a. prescribe by reference to the brand name Lyrica®; and
    b. write the prescription with only the brand name "Lyrica", and not the generic name pregabalin or any other generic brand.
    3. When prescribing pregabalin for the treatment of anything other than pain, you should continue to prescribe by reference to the generic name pregabalin.
    4. When dispensing pregabalin, if you have been told that it is for the treatment of pain, you should ensure, so far as reasonably possible, that only Lyrica®, the branded form of pregabalin, is dispensed. However, when dispensing pregabalin for the treatment of anything other than pain, you are not restricted to dispensing Lyrica®.
    To ensure that practitioners are readily able to recall and follow the guidance above, you should consider amending the operation of any electronic prescription system that is within your power or control to include a notice or advice box which uses the following or similar wording:
    "If treating neuropathic pain, prescribe Lyrica (brand) due to patent protection. For all other indications, prescribe generically."
    We will let you know should this position change. 
As always dear readers, I welcome your thoughts…

Thanks to Tim Belcher for authorial assistance when this moggy was very jetlagged.

Human rights and intellectual property: a new research handbook

For the third time in as many months this Kat welcomes a new book which modesty self-interest and personal involvement prohibits him from reviewing in person: it's The Research Handbook on Human Rights and Intellectual Property, published by his friends at Edward Elgar Publishing. The tenth volume in this series [there are more on the way, this Kat warns those who have adopted the Pokèmon philosophy of "gotta catch 'em all"], Human Rights is edited by respected scholar and European IP personality Christophe Geiger, of Strasbourg's CEIPI.  

Contributors to this volume include Laurence R. Helfer (who edited an earlier Edward Elgar collection of essays, Intellectual Property and Human Rights, published in 2013) and more Katfriends than it would be proper to list here, including a sprinkling of Queen Mary colleagues, the perceptive Philipp von Kapff (OHIM Boards of Appeal), New Zealand scholar Suzy Frankel and the ever-charming neo-Oxonian Dev Gangjee -- whose own volume in this series, on geographical indications, is keenly awaited.


Here's how the publishers describe this tome:
Research Handbook on Human Rights and Intellectual Property is a comprehensive reference work on the intersection of human rights and intellectual property law. Resulting from a field-specific expertise of over 40 scholars and professionals of world renown, the book explores the practical and doctrinal implications of human rights considerations on intellectual property law and jurisprudence.

The various chapters of the book scrutinize issues related to interactions among and between norms of different legal families and the role of human rights in the development of a balanced intellectual property legal framework. The innovative approach of the book is reflected in its structure: the first part provides a foundation for the human rights and intellectual property discourse; the second sheds light on the human rights implications for the development of intellectual property; and the third (characterised by a human rights perspective) is devoted to the specific issues of interaction between human rights and intellectual property.

Exploring in depth a variety of interactions between human rights and intellectual property law, the book will be of great interest to academics and experts working within human rights, intellectual property, development, international relations and international public law.
The field under review is a difficult one to address objectively, this Kat feels. People who write about human rights are generally people who believe strongly in their virtues and who like the notion of them being as widely applicable and properly protected as is consonant with civilised life in a well-ordered society: since society is made up of individuals, it is duty-bound to respect them.  The effect of this is that, it's not easy to find anyone who writes about human rights because he or she doesn't like them or, in our context, because there exists a strong conviction that they should be subordinate to merely commercial rights.  Intellectual property law, in contrast, covers a wider spread of views, from those who research and promote those laws because they passionately believe in them, to those whose interest is stirred by the dangers they pose if they are not properly framed within the parameters of competition policy and enforced within the context of the need to recognise the overriding imperative of human rights protection. This might explain why Professor Geiger's book has drawn on so long a list of distinguished contributors -- and why, in this Kat's opinion, the good professor deserves a decent katpat for all his effort. 

Bibliographic data:  Publication date April 2015 [though it seems to be published already ...]. xxiv + 727 pages. Hardback ISBN 978 1 78347 241 3;  ebook ISBN 978 1 78347 242 0. Price US$295 (online price $265.50). Rupture factor: not to be sneezed at.  Book's website here.

Other books in the same series are

Monday, 2 March 2015

Never too late: if you missed the IPKat last week ...

Welcome to the IPKat's first "Never Too Late" feature of the month.  We say goodbye to February with some sadness, since it has been this weblog's busiest month for site visits since its launch in 2003.  February brought in 147,988 "hits", despite having just 28 days.  Thanks, all of you, for your support. And now, in case any of last week's Katposts passed you by, here's the 35th weekly "Never Too Late" summary of last week's posts, recorded once again by our friend and highly valued colleague Alberto Bellan, who writes as follows:
SUEPO called off its proposed march on the British consulate in Munich last Wednesday in the face of potential liability for breaches of obligations under the European Patent Convention and Service Regulations -- but the union has called for a fresh demonstration on Tuesday 25 March, says Merpel.

Supreme Petfoods Ltd v Henry Bell & Co (Grantham) Ltd [2015] EWHC 256 (Ch) is another blockbuster judgment from Mr Justice Arnold in the High Court, Chancery Division, England and Wales. It is about a business that got a bunch of trade marks covering the somewhat unregistrable word "supreme", and then decided to bring proceedings against a defendant who wasn't using the word as a trade mark and whose use of it went back 20 years, recounts Jeremy.

Merpel re-sinks her paws in the hot story of the decision that Hague Court of Appeal issued in the sadly famous proceedings in SUEPO v EPO [on which see her earlier post here]. This time, the floor goes to nothing less than EPO's Emperor President Monsieur Benoît Battistelli.

Jeremy has just received a communication from a spokesman for the UK Intellectual Property Office (IPO). It is nothing less than the first public response of any national office to the current EPO unrest.

After his earlier note on Supreme Petfoods Ltd v Henry Bell & Co (Grantham) Ltd, Jeremy hosts this post of guest contributor Tim Behean (Sipara, Oxford), which focuses on just one aspect of this multifaceted ruling: burden of proof in so-called "double identity" actions in which the mark used by the defendant is identical to that of the claimant and the goods or services of the respective parties are exactly the same too.

Jeremy reports on the joint BLACA-IPKat event on sensory copyright [on which see earlier Katpost here].

Busy week of IP events for Jeremy, who this time recounts another tasty seminar entitled "Geographical Indications: FAGE, Feta, Fontina, and the battle for world markets".

Here Jeremy hosts the third in the series of posts from London-based law firm Bristows (where guest Kat Tom works) on its real-time experiment in litigating before the proposed Unified Patent Court (UPC). The first two reports are "A test-drive for the Unified Patent Court" (June 2014, here) and "A test-drive for the Unified Patent Court: Part II" (October 2014, here). This one too is masterminded by Alan Johnson and Alexandria Palamountain.

The European Patent Office publishes some patent data on which Katfriends at the Chartered Institute of Patent Attorneys have already pounced. Note the headline assertion that British business is failing to protect innovation, then read on, says Jeremy.

Following to the last events of the battle over the European Patent Office's governance, the Dutch Minister of Justice intervened with regard to the EPO's immunity from execution of court orders under international law, Merpel recounts.

The Court of Justice of the European Union (CJEU) issued its decision in Case C-41/14 Christie's France, a reference for a preliminary ruling from France seeking clarification as regards that peculiar creature of EU copyright known as artist's resale right, or droit de suite within Directive 2001/84 (the Resale Right Directive), and Eleonora is here to explain what that is about.

After the Patents Court ruling of Mr Justice Arnold in Warner-Lambert Company, LLC v Actavis Group Ptc EHF & Others, which Darren reported here, Jeremy has got some news to break on that painful patent war.

Valentina reports on a fresh trade mark dispute that the General Court has just decided, Pangyrus Ltd v OHIM, RSVP Design Ltd, Case T-257/11.

ZTE Corporation is ramping up to take advantage of the new legal environment that has resulted from the settlement between Qualcomm and the Chinese National Development and Reform Commission (NDRC) over claims that the company’s licensing practices had violated the country’s Anti-Monopoly Law, recounts Neil.

The UK Government will improve protection to make sure businesses are not exposed to unnecessary and baseless accusations ... in response to the Law Commission’s Report, reports Jeremy. That's cool!, says Hogan Lovells' Katfriend Alastair Shaw.

Birgit is back with one of her favourite topics: the interface between the naming of polar bear cubs and intellectual property rights.

Valentine’s Day makes Suleman think about relationships: the cruelty, the complexity and the cuddles. It is all about patent law and how subject matter ‘relates’ to other subject matter, he explains.

*****

PREVIOUSLY, ON NEVER TOO LATE

Never too late 34 [week ending Sunday 22 February] Bill Gates goes to China | Ms Swift's issue with trade marks | TMs and jurisdiction for on-line infringement cases | UK's Chartered Institute of Patent Attorneys and the EPO | Divani & Divani | UK first in global IP enforcement | SUEPO v EPO | Enterprise v Europcar [2015] EWHC 300 | Again on Cartier International AG and Others v British Sky Broadcasting Ltd and Others | Googling inventor clients | Code of ISPs' practice in Australia | Specialised IP Courts in China.

Never too late 33 [week ending Sunday 15 February] –- Evoking Audrey Hepburn’s image is not OK in Italy | Reasonable royalty and moral prejudice: new reference to the CJEU | CoA for England and Wales on parallel importations in Speciality European Pharma Ltd v Doncaster Pharmaceuticals Group Ltd & Madaus GmbH | The Logic of Innovation: Intellectual Property, and What the User Found There and Tritton on Intellectual Property in Europe reviewed | Italian baked goods’ trade marks in foreign megastores | Belmora LLC v Bayer Consumer Care AG and Bayer Healthcare LLC, Article 6-bis in Northern Viriginia | EU TM judges get together in CET-J | Chancery division on Dude’s copyright in Fresh Trading Limited v Deepend Fresh Recovery Limited and Andrew Thomas Robert Chappel | Sound-alike litigation in the music industry | Informal AC’s get together at EPO! | To Kill a Mockingbird reloaded | Personalised medicine.

Never too late 32 [week ending Sunday 8 February] –- Brazilian PTO’s delays | The Research Handbook on International Intellectual Property reviewed | Laura Smith-Hewitt | IP, women and leadership: the poll responses | Decline of West’s trust in innovation | Wikipedia public domain photos |CJEU in Case C-383/12 P Environmental Manufacturing LLP v OHIM | The Nordic IP Forum | The future of EPO’s BoA | Warner-Lambert v Actavis Mark 2 | Dragons' Den: where entertainment meets mis-advice? | Hospira v Genetech Mark 1, the Appeal | Litigation-Proof Patents: Avoiding the Most Common Patent Mistakes and Patent Portfolios: Quality, Creation, and Cost reviewed | Italy and San Marino’s friendship on IP is over| Problems and imperfections in biotech patenting: realities on the ground and trying to fix the system.


Never too late 31 [week ending Sunday 1 February] -- Women in IP, a MIP’s perspective | Another linking reference to the CJEU | Catarina Holtz on Disciplinary authority over the EPO BoA | EPO pays to say that patent examiners’ life is truly cool | You can’t name your daughter ‘Nutella’ | CJEU in Arne Forsgren v Österreichisches Patentamt | Blocking injunctions in Greece | IPEC and bondage in Haiss v Ball | Present and future of patent profession | Belgium asks CJEU: does the Enforcement Directive allow cost-capping in IP litigation? | Dutch diverge with English as Novartis prevails on Zoledronic Acid in Netherlands | Slogan and TMs | The coffee capsule wars | Declining public trust in innovation | IPEC’s ruling in Global Flood Defence Systems& Another v Van den Noort Innovations BV & Others | Again on CJEU ruling in Case C-419/13 Art & Allposters | Biotech financing: the risk components, ‘going long’ and patents as knowledge currency. 

Monday miscellany

Finding Stockholm wasn't so hard but, try as
she might, Gina couldn't locate that Brewery ...
Forthcoming events. Some readers don't take the trouble to check out the IPKat's Forthcoming Events page since they assume that, with so many of the Kats being based in England, it's only English events that are on the list.  This is not so!  The list contains plenty of non-UK events.  For example, C5's Pharma & Biotech Patent Litigation Forum (here) takes place in Amsterdam's Hotel Okura on 19 and 20 March. Less than a week later the Nordic IP Forum assembles in The Brewery, Stockholm, on 25 and 26 March 2015: details here. Later in the year the Office for Harmonisation in the Internal Market (OHIM) is holding an IP Mediation Open Day in Alicante on Monday 15 June 2015. If you are interested, you can find all the details here.  The first two of these events offer handsome registration fee discounts to IPKat readers; the third is free.



On the subject of forthcoming events, let's not forget the Queen Mary Journal of Intellectual Property monthly list of events for March, which you can peruse here.  If nothing else, this shows that the number of IP events coming up seems to be very much on the increase.



Better late than never. It seems that the Court of Justice of the European Union's Translation Unit has finally managed to catch up with itself. This Kat learns that the English language versions of Advocate General Bot’s Opinions in Cases C-146/13 Kingdom of Spain European Parliament, Council of the European Union and C-147/13 Kingdom of Spain Council of the European Union were finally made publicly available last Thursday. These Opinions, delivered on 18 November of last year, deal with such sensitive topics as the use of the enhanced cooperation mechanism for the establishment of a unitary patent system, the question of effective control of a non-EU institution, non-discrimination and judicial review. For a summary of the issues raised and the Advocate General's take on them, see this earlier Katpost here



Fashion event in Soho. Katfriend Tania Phipps-Rufus writes to tell this Kat that she is hosting an event at Condé Nast College of Fashion, 16–17 Greek Street, Soho. Perhaps unsurprisingly the subject is "Fashion, Law & Business", and there is a particular focus on intellectual property as it affects the fashion sector. The event will be on 18 March at 6.30 - 8.30pm. Tickets for the event are available here. There are Super Early Bird and presumably ordinary Early Bird reductions for early registrants but, since the very most it can cost you even if you miss all the deadlines is only £20, it sounds agreeably affordable.



Burk's Law. Not to be confused with Burke's Law,  this year's three LSE Leverhulme Public Lectures are being delivered by Professor Dan Burk over the next two weeks (between Friday 6 and Friday 13 March) at the London School of Economics.  The topics?  The Gene Patent Controversy [nothing to do with Burke's Law star Gene Barry, notes the IPKat], The Software Patent Puzzle and Patenting Information Technologies. These are public events and no tickets are required. Just turn up and look intelligent. Click here for details.


Around the weblogs. Always full of surprises, Mark Anderson's IP Draughts explains why, if you are looking to register a company name, you can register "OMG F**K :–) Limited" straight off but need permission before you can register "Sheffield University Patent Licensing Institute".  IP Finance hosts a request to participate in a short survey on patent ownership being run by Aistemos. On SOLO IP, Barbara Cookson points out that the OHIM Board of Appeal decision in Canal Plus, designed to prevent unused marks being used to oppose later registrations, does not yet seem to part of UK law.  

Struggling to understand trade mark infringement issues? Here's my checklist

IPKat readers might remember that a few months ago I posted my Copyright Infringement Checklist, ie a list of the main aspects to consider when addressing potential infringement issues. 

I named it after myself not just because both cats and Kats are notoriously vain, but - importantly - because it was intended to be neither authoritative nor exhaustive.

Now that I have finished the trade mark part of my undergraduate intellectual property law course at the University of Southampton, I have prepared another checklist, this time for alleged trade mark infringement cases. 

Again, the aim is simply to help my students when thinking about potential infringement issues, considering that (again) I have not been able to find many useful summaries/tables.

Any feedback/suggestions on how to improve it are - as usual - very welcome.


ROSATI TRADE MARK Infringement Checklist*
Main aspects to consider when addressing potential infringement issues

Trade mark infringement is about 7 essential things

(1)  Use (NB: non-exhaustive list!)[1]
                            i.          Person affixes sign to goods or packaging thereof;
                          ii.          Person offers or exposes goods for sale, put them on the market or stocks them for those purposes under the sign[2] or offers or supplies services under the sign, or offers or supplies services under the sign;
                         iii.          Person imports or exports goods under the sign (NB: currently goods in mere transit do not fall under this category);
                         iv.          Person uses the sign on business papers or in advertising, including comparative advertising.[3]

(2)  Without consent[4]

(3)  In the course of trade (= “used in the course of a commercial activity with a view to gain and not as a private matter”)[5]

(4)  In the relevant territory
·        UK for UK trade marks, EU for Community trade marks;[6]
·       For online uses, Bently and Sherman hold the view that targeting required.

(5)  Of a sign
·        Same hyphoteses as in relative grounds for refusal of registration:
1)  Identical marks for identical goods/services[7];
2)  Identical marks for similar goods/services[8] + likelihood of confusion (including association)[9];
3)  Similar marks[10]  for identical/similar goods/services + likelihood of confusion (including association);
4)  Identical/similar marks for dissimilar goods/services + earlier trade mark has a reputation + use would take unfair advantage of/be detrimental to character/repute trade mark.[11]

(6)  Where such use affects one of the functions of the registered trade mark[12], eg:
·        Indication of origin;
·        Quality;
·        Advertising;
·        Investment.

(7)  And no defences are available to defendant (NB: for some defences additional “honest practices” requirement)
·        Trade mark should be removed from register;
1)  Because it is invalid = should have not been registered in the first place
                                                                    i.          Absolute grounds for refusal of registration, eg lack of distinctive character, descriptive, “forbidden” shape, public policy/morality, bad faith, etc;
                                                                  ii.          Relative grounds.[13]
2)  Because it should be revoked
                                                                    i.          Non-use
·        Within 5 years from registration;
·        Use suspended for uninterrupted period of 5 years.
                                                                  ii.          Trade mark has become generic;
                                                                 iii.          Trade mark used to deceive consumers.
·        Use of another trade mark (UK trade marks only);
·        Use of one’s own name/address;[14]
·        Descriptive use, including use to indicate intended purpose;
·        Comparative advertising[15];
·        Local use;
·        Exhaustion;
1) put on the market[16]
2)  “without consent[17]
3)  no “legitimate reasons
                                                                    i.          Alteration of goods
                                                                  ii.          Change of packaging
                                                                 iii.          Change of mark
                                                                 iv.          Advertising
·        Freedom of expression (NB: no codified defence as such).





* The addition of “Rosati” not only means that I am the author of the checklist, but also (and most importantly) that this is not (necessarily) authoritative. It is just something to consider when dealing with potential infringement issues.
[1] Key case on notion of “use” is Google France.
[2] Key case on notion of “under the sign” is Céline.
[3] Key case on comparative advertising is L’Oréal.
[4] Cf trade mark exhaustion sub (7).
[5] Key cases on notion of “use in the course of trade” are Arsenal and Céline.
[6] Use in one Member State alone can suffice: see DHL.
[7] Key case on notion of identity is Sadas.
[8] Key case on notion of similarity of goods/service is Canon.
[9] Key case on likelihood of confusion is Puma.
[10] Key case on notion of similarity of signs is Puma.
[11] Key cases on trade marks with a reputation are Yplon, Adidas-Salomon (use of a trade mark as embellishment) Intel (notion of “link”), L’Oréal, Interflora.
[12] Key case on functions of a trade mark is Interflora.
[13] See supra sub (5).
[14] Key case is Céline.
[15] Key case is L’Oréal.
[16] Key case is eBay.
[17] Might be problematic when a licence is in place: see Dior.

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