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

Wednesday, 6 September 2006


Lawyers give their opinion for free

This heading isn't quite as altruistic as it seems, the IPKat explains. It's just that the Law Society of England and Wales has published, at no cost to readers, its comments on the European Commission's Proposal for a Directive on criminal measures aimed at ensuring the enforcement of intellectual property rights.

The Law Society's view is that the proposal is insufficiently thought out and that it contains serious flaws. It questions whether there is a proper legal basis for a directive that regulates criminal sanctions in such close detail and expresses anxiety as to the wisdom of criminalising patent infringement.

Left: proposals for punishment include taking pirates out to sea and making them walk the Euro-plank, a problem for EU Member States with no coastline ...

The IPKat says, whatever your position on the Law Society's comments, you can't accuse British legal practitioners of demanding an expansion of the law that will increase their own business. Merpel adds, if there is any doubt as to whether the EC Treaty provides a firm legal basis for a measure of this nature (and she guesses that the ECJ would say it did), any such doubt should be removed ahead of legislation. Otherwise we're going to have to contemplate the possible consequences of compensating IP criminals whose conviction was based upon the implementation of an unlawful directive - unless of course EU Member States can be persuaded to implement its provisions for their own sakes and not because the directive requires them to ...

Prisoners behind bars here
Different sort of bars here

Courts in a spin over eTyre tyranny

Now here's a curiosity - the IPKat has found, via BAILII, a dispute between a franchisor and a franchisee that ended up in court, presumably because there wasn't an arbitration clause in the franchise agreement. The case, Stone and Ashwell (trading as Tyre 20) v Fleet Mobile Tyres Limited [2006] EWCA Civ 1209, was more a contract dispute than an IP matter.

Left: how fashions in tyre branding change - the comfort of Bibendum gives way to the harsh modernity of eTyres

Essentially, Fleet (the franchisor) was taking a bigger percentage on the sale of eTyres that were bought on its website and then fitted by Tyre 20 (the franchisee). But what caught the IPKat's eye was the dispute over whether the franchisor, as owner of the eTyre brand, was entitled to force Tyre 20 to change its van livery and its stationery in order to promote the eTyre brand better. Tyre 20 didn't want to - after all, the franchise agreement allowed it to carry on doing non-eTyre work which was actually more profitable. The Court of Appeal, reversing the decision of a trial judge, agreed with Tyre 20's view that Fleet was in breach of its own agreements and that Tyre 20 could both treat the contract as having been repudiated and get damages for breach of it.

Merpel says, eTyres sound like a useful way to get a good grip when driving up the Information Highway.

The Siege of Tyre here

Use of green + yellow is not use of green

The IPKat thanks Duncan Bucknell for drawing his attention to Monday's decision of the Full Court of the Australian Federal Court in Woolworths Limited v BP plc [2006] FCAFC 132. For those too lazy to peruse Duncan's own site or to access the decision for themselves, the court concluded that, to establish that a colour has in fact become distinctive of goods or services, it is necessary to use that colour alone, as the trade mark. In this case BP, having consistently used green along with yellow, failed to establish factual distinctiveness of its green colour mark.

The IPKat notes the logic which, he thinks, can be compared with that of the European Court of Justice in Case C-353/03, the HAVE A BREAK case. In that case the applicant had used the slogan "Have a break ... have a Kit Kat", while the mark applied for was merely "Have a break". Unlike BP, where the colour green was used only with the unregistered colour yellow, the applicant in HAVE A BREAK had used that slogan together with the registered mark KIT KAT but the ECJ felt that - taking its proverbial global view - the fact it had been used only with another mark did not mean that it could not acquire distinctiveness through use. Indeed, the UK Registry has now accepted HAVE A BREAK for registration in respect of chocolate bars and confections.

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