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

Tuesday, 31 October 2006



Good news for trade mark bores. The Sixteenth Session of the WIPO Standing Committee on Trade Marks will take place between 13 and 17 November in Geneva. On the agenda is some pretty juicy stuff, including

  • trade mark rights and literary titles
  • non-traditional marks,
  • opposition procedure,
  • trade marks and international non-proprietary names of pharmaceuticals, and
  • a request by Brazil to recognise certain customary names related to biodiversity and so to prevent their registration as trade marks by third parties.

What enters your nose - soon to be discussed at WIPO

The IPKat awaits the outcome with interest.

It's a miracle!

The IPKat learns from Gizmag of a recently granted US patent ‘Upright Human Floatation Apparatus And Propulsion Mechanism’, a.k.a. a device to walk on water. While others have attempted to produce devices with the same objective, according to the inventor, Yoav Rosen, they focused more on human-powered waterskiing. Rosen’s invention is more like a cross between a pair of shoes and a pontoon (flat bottomed boat).

'Some of us don't need silly shoes to walk on water' says Merpel (left)

The IPKat notes that there’s good news for readers – Rosen is looking for a partner with which to commercialise the technology.


Keep those costs down!

UK law firm Addleshaw Goddard is hosting a seminar, "Reducing the Cost of Intellectual Property Enforcement", which will take place on 23 November 2006 at its London offices, 150 Aldersgate Street, London, EC1A 4EJ. Sir Hugh Laddie (consultant to Rouse & Co. International) will be the keynote speaker, aided and abetted by Addleshaw Goddard partner Richard Kempner. Following the presentations there will be a round table discussion.

IPKat readers are reputed to be particular welcome. It's free and there are drinks and canapes for those who wish to get in some pre-Christmas calorie absorption training. Registration is at 4.30pm, with the serious matter commencing at 5.00pm. If you'd like to attend, fill in the form here.

Monday, 30 October 2006


Merpel's PlayStation - an expert responds

Last week, on this selfsame weblog, Merpel asked:

" ... but WHY can't I buy legitimate PlayStation and other Sony goods from whomsoever I want? Try selling the concept of non-global exhaustion of rights in a world which is now a global village."
Well, we now have a comment on the Sony v Pacific dispute which sparked off Merpel's comment. It comes from a distinguished IP practitioner who has requested anonymity. He says:
"I don't know the facts here, but I'd venture a guess that there are very good reasons behind it. The case looks like it is about IP rights but other factors are likely to lie behind a decision to prevent non-EEA imports. The instinct in practitioners is to say it is always driven by price, but I do not think that is, in fact, the case. The entire decision to oppose parallel imports can be, and often is, driven by non-price factors such as (i) differences in the offering in different markets in otherwise similar products and (ii) differences in regulation between EEA and non-EEA markets.

In relation to (i), quite often the products differ from one market to another. This is not necessarily about differences in quality (as in the old Colgate toothpaste case). The products may be technically similar in quality but differ in specification, because customers differ from one market to another. Memory capacity, mains adapters, the leads and connectors packaged with the product, and other things that accompany the product can make a significant difference to price, and are tailored to the local market expectation. Companies do not want to see products produced for a different market put on a shelf in a similar box with similar trade marks through competing retail outlets when, in fact, what is in the box may be different and the difference may not be fully explained or understood by the purchaser. Companies have to choose, for instance, whether a product is sold with very little memory and no connecting leads at a low price (but risking customer dissatisfaction when it proves effectively useless without a further separate purchase), or with loads of memory and all the connectors needed but at a higher price (which may put customers off, but those who buy will be happy). These sorts of differences can generate unjustified complaints from purchasers of parallel imports when the customer finds that the (grey market) product is missing something that all his friends got in their (legitimate) product.

In relation to (ii), there are very real differences in regulation between EEA and non-EEA markets. These may just mean that products require testing to verify that they meet EEA standards before they can be put on the EEA market, or it may even require changes in product specification. The latter is particularly true of products utilising the radio spectrum where there is often international inconsistency, making the use of products from one market illegal in other markets. This can, incidentally, even apply between one country and another within the EEA. It is frequently apparent from inspection of the product whether it has been verified as complying with EEA regulations. One has to remember that, if non-EEA products are imported without the manufacturer's knowledge that do not comply with EEA requirements, it is still very likely that the enforcement agency will take it up with the manufacturer. For the manufacturer to prove that the transgression is nothing to do with it may be difficult or impossible, and in any event will cost time and money.

I don't know whether any of that applies in this particular case, but it may do. One can hardly blame manufacturers for wanting to avoid unnecessary run-ins with the regulators.

The fact is of course that the law doesn't require proprietors to explain why they regard it as being in their interests to enforce IP rights against parallel imports. And, because the motivation is legally irrelevant, proprietors generally don't explain their motivations and the court (probably) wouldn't be interested in hearing about them. But it does not follow that there is anything wrong in wanting to ensure that products not intended for the EEA market are not sold on the EEA market; and in many cases there is quite a lot wrong, aside from IP matters, in allowing such parallel imports".


BLACA meeting

BLACA Chair, Uma ‘Copyright’ Suthersanen has asked the IPKat to tip his readers off about the forthcoming BLACA meeting entitled ‘Music Piracy: “Past and Present: Learn the Lesson”’. On the panel are Dr Isabella Alexander (University of Cambridge) and Hubert Best (Best & Soames).

It all takes place on 9 November at 6.15pm. You can go along without remunerating Uma or the BLACA coffers, even if you’re not a BLACA member, as long as you’re interested in becoming a member.

More details here (though note that the start time is 6.15, and not as shown on the website).

Would you like coffee to go with your humble pie?

Spotted in today’s Guardian:

A story headlined Starbucks, the coffee beans and the copyright row that cost Ethiopia £47m, page 1, October 26, confused two entirely different legal rights: copyright and registered trademarks. We said Ethiopia had filed copyright applications to trademark its most famous coffee names, when we should have said it had filed applications to register its most famous coffee names as trademarks...

Quite right, says the IPKat. There’s no excuse for such a mistake (though lots of people make it). What Merpel wants to know is, is there an irate IP lawyer out there who’ll admit to having tipped the Guardian off about its mistake?

Time for a private copying exception?

The Institute of Public Policy Research think tank is calling on the Gowers Review to ‘update the 300-year-old copyright laws to take account of the changes in the way people want to listen to music, watch films and read books’ by introducing a private copying exception. The IPPR cites survey evidence that 55% of the public have made such copies, and 59% think it is legal to do so.

The IPPR also calls for the review to reject the extension of the term of protection for sound recordings and for a cautious approach to DRM.

The IPKat favours such an exception. Why should consumers be forced to shell out to ‘upgrade’ their music collections each time a new medium is developed? He thinks it’s a bit misleading though to refer to the ‘300-year-old copyright laws’ as if things were frozen in aspic at the beginning of the 18th Century – a proposition that is clearly eroneous, bearing in mind the non-availability of recording music for another 200 years or so.

Sunday, 29 October 2006


On Friday, the Court of Appeal delivered its judgment in the Aerotel and Macrossan cases. The former required a ruling on the meaning of the ‘business method as such’ exception to patentability, while the latter also required a ruling on the ‘computer program as such’ exception to patentability.

The application in Aerotel was for a telephone system, claims 1 and 9 of which read:

"1. A method of making a telephone call from any available telephone, comprising: obtaining a special code by making a prepayment; inserting the prepayment in a memory in a special exchange and being allocated to the special code in the memory for use in verifying a calling party call; dialling the special exchange when a telephone call connection is desired; inputting the special code for verification; inputting the number of called party; verifying at the special exchange by checking the special code and comparing the prepayment less any deductions for previous calls in the memory with the minimum cost of a call to the called party station; connecting the called and calling parties' stations in response to said verification; monitoring the remaining prepayment less deductions for the running cost of the call; and disconnecting the call when the remaining prepayment has been spent by the running cost of the call.
9. A telephone system for facilitating a telephone call from any available telephone station, comprising:
means for coupling a calling party station to a special exchange;
memory means in the special exchange for storing customer special codes and prepayment information individual to each customer;
means for verifying the calling party responsive to a code transmitted from the calling party station to the special exchange so as to verify that the code matches the special customer code in the memory means and the calling party has unused credit; and
means for connecting said calling party station to a called station responsive to the verification."

The application in Macrossan (as summarised by Mann J) was for

an automated method of acquiring the documents necessary to incorporate a company. It involves a user sitting at a computer and communicating with a remote server, answering questions. ..
'The essence of the invention is that by means of posing questions to a user in a number of stages, enough information is gleaned from the user's answers to produce the required documents. Questions posed in the second and subsequent stages are determined from previous answers provided and the user's answers are stored in a database structure. This process is repeated until the user has provided enough information to allow the documents legally required to create the corporate entity to be generated. A number of document templates are also stored and the data processor is configured to merge at least one of these templates with the user's answers to generate the required legal documents. The documents may then be sent in an electronic form to the user for the user to print out and submit, mailed to the user, or submitted to the appropriate registration authority on behalf of the user'

Both were found to be caught by the exceptions by the High Court, and both resulted in an appeal to the Court of Appeal.

Their Lordships held that the correct approach to the exceptions is as follows

(1) properly construe the claim
(2) identify the actual contribution;
(3) ask whether it falls solely within the excluded subject matter;
(4) check whether the actual or alleged contribution is actually technical in nature.

This was said to be a ‘reformulation’ of the Merrill Lynch and Fujitsu tests.

Applying this test, Aerotel’s appeal was successful. The system was new,and constituted a new physical combination of hardware (steps 1 and 2). It was clearly more than a mere business method (step 3) and it was technical (step 4).

However, Macrossan’s appeal was unsuccessful. The contribution (step 2) was an interactive system which will do the job which otherwise would have been done by a solicitor or company formation agent. Questions are asked, the answers incorporated in the draft, and depending on some particular answers, further questions are asked and the answers incorporated.
Contrary to Mann J’s ruling, a business method need not be abstract, nor need it result in the completion of a transaction. Macrossan’s claim was for the business of advising upon and creating appropriate company formation documents, which clearly was not technical (steps 3 and 40. Thus the claim failed as an application for a business method patent.
Likewise, in relation to the computer program exception, the Court of Appeal ran the test thus:
There is no difficulty over step 1. Step 2 – what is the contribution? – is again straightforward. It is to provide a computer program (in practice probably an interactive website) which can be used to carry out the method. The hardware used is standard and is not part of the contribution. Step 3 – is the contribution solely of excluded matter? – is again easy. The contribution is just the devised program up and running. Step 4 – is that contribution technical? – is again easy. No. So the exclusion applies.

The UK Patent Office has responded, saying that it will consider the Court of Appeal’s decision, and will issue a Practice Notice in the next few days.

The IPKat always favours clarity and so he welcomes the Court of Appeal’s nifty four-step test. He also notes the exception range of sources drawn on by the court: EPO Board of Appeal decisions, decisions of the ECJ, German decisions, US decisions, the book of Job and academic writings (this one makes the IPKat particularly happy).

Friday, 27 October 2006


The IPKat brings you two news items from the BBC - one which was drawn to his attention by Simon Haslam (Abel & Imray), the other of which he found himself.

Fake Coke secret scam

Two men accused of plotting to steal trade secrets from Coca-Cola and sell them to rival PepsiCo pleaded guilty to conspiracy in a US federal court. They now face up to 10 years in prison and a fine of $250,000. A third defendant stands trial this November, being accused of stealing samples and giving them to the men to sell. According to the BBC the gang were trapped while attempting to steal fake information. The IPKat marvels at such ingenuity.

Oh Sting Where is Thy Death?

Former Nirvana frontman Kurt Cobain, having committed suicide in 1994, has overtaken Elvis Presley as the highest earning dead celebrity, according to US business website Presley headed the list for the last four years. Peanuts cartoon creator Charles Schulz was third, followed by John Lennon. Others in the Top Ten are scientist Albert Einstein, artist Andy Warhol, children's author Dr Seuss (Theodor Geisel), soul star Ray Charles, actress Marilyn Monroe and country singer Johnny Cash. Full details of earnings are available from the BBC here.

The IPKat notes the oft-quoted sentiment that death can be an inspired career move. He nonetheless mourns the fact that so many of his old favourites aren't on it. Merpel says, if these people are earning so much when they're dead, just think how much their publishers and recording companies must be making ...

Dead who made money when still alive here
Songs that made money out of death here and here

Thursday, 26 October 2006


Roller Coaster Ride for Software Writer

The IPKat stumbled across Sawyer v Atari Interactive Inc, a Chancery Division decision of Mr Justice Cooke from 19 October, on the LexisNexis Butterworths subscription service.

Sawyer wrote computer games which Atari developed and distributed. Between 1998 and 2002 Sawyer and Atari entered into four agreements under which Sawyer licensed Atari, in exchange for royalties, to publish the first two Roller Coaster Tycoon games, plus two 'add-ons' to the first of those games; Atari was under a duty to account to Sawyer for its sales. In May 2003 Sawyer told Atari he wanted to conduct an audit for the period 1 January 1999 to 31 March 2003, invoking the licence agreements. Atari said no in respect of sales prior to 26 July 2001. After reports produced by forensic accountants however showed accounting errors, Sawyer sued for breach of contract in that Atari (i) refused to let the audit take place, and (ii) under-accounted for the royalties to the tune of nearly $US5 million. Atari denied liability and counterclaimed for (i) the refund of allegedly overpaid royalties and (ii) breach of Sawyer's duty of exclusivity in respect of a third edition of Roller Coaster Tycoon that was offered to a different games developer. Sawyer applied to strike out the counterclaim and sought partial summary judgment. Cooke J agreed with Sawyer that there was no basis for the counterclaim, struck it out and entered partial summary judgment in favour of Sawyer.

This note gives little clue as to the niceties of the dispute, says the IPKat, but it does serve as a warning to not just software writers but any creative individual who enters into a licence with a publisher or product developer - make sure your audit and accounting interests are adequately provided for under the licence, or you may find it difficult, if not impossible, to substantiate your suspicions that you are being underpaid.

Latest version of Roller Coaster Tycoon 3 here

Two from the ECJ

Two fresh intellectual property rulings are up on the Curia website today. They both convey the same message - you can't monkey around with lending and rental rights.

Case C-36/05 Commission v Spain: by exempting almost all, if not all, categories of establishments undertaking the public lending of works protected by copyright from the obligation to pay remuneration to authors for the lending carried out, the Kingdom of Spain has failed to fulfil its obligations under Articles 1 and 5 of Council Directive 92/100 on rental/lending right. As the Court says (at paragraphs 28 to 29):

"... the Kingdom of Spain maintains that the cultural promotion objective takes precedence over guaranteeing that authors receive appropriate income. The freedom conferred on Member States by the Directive thus enables them to allow authors only very limited, symbolic remuneration, or even none. ...

It is true that cultural promotion is an objective in the general interest which allows the exemption, under Article 5(3) of the Directive, of certain public lending establishments from the obligation to pay remuneration. However, the protection of rightholders in order to ensure that they receive appropriate income is also a specific objective of the Directive ... It was precisely to preserve that remuneration right that the Community legislature sought to limit the scope of the exemption by requiring that national authorities exempt only certain categories of establishments from that obligation".

Case C-198/05 Commission v Italy is only available in French and Italian. It looks quite similar to Commission v Spain, though. The Court rules: "En exemptant du droit de prêt public toutes les catégories d’établissements de prêt public au sens de la directive 92/100 ..., la République italienne a manqué aux obligations qui lui incombent en vertu des articles 1er et 5 de cette directive". Or, as Babel Fish would have it:
"By exempting right of public loan all the categories of establishments of public loan within the meaning of directive 92/100..., the Italian Republic missed to the obligations which fall on to him under the terms of the articles 1st and 5 of this directive".
Not bad, eh, for a computer? But Merpel asks, if you stick a piece of French into a translation program and it comes out in English, who owns the copyright in the English translation ...?


The IPKat is grateful to John Halton for pointing out this piece from the Guardian about the attempt to Starbucks to stop Ethiopian coffee farmers from ‘copyrighting’ [sic] the names of three Ethiopian coffee bean types - Sidamo, Harar and Yirgacheffe – as trade marks. Oxfam is not happy about this and argues that, as a result, Ethiopian farmers are being deprived of up to £47m of revenue.

The IPKat says that the temptation to oversimplify this issue is massive. Amongst some there is a misplaced belief that IP is a shortcut to wealth. The underlying assumption is that big evil Starbucks is maliciously blocking a revenue stream to the plucky deserving Ethiopian coffee farmers. Taking a step back though, the IPKat has serious concerns about the suitability of the Ethiopian application. Taking a look at the USPTO Register, it appears that what we have is an application by the Ethiopian Government for the name of two coffee beans (unless the IPKat is misreading the USPTO Register, Yirgacheffe has been successfully registered), i.e. an application for two descriptive terms by an entity which isn’t truly the origin of the coffee. Yes, there may be distribution problems concerning the profits that can be made by selling cups of coffee containing Ethiopian beans, but the way to address that is to tackle the distribution problem directly, rather than subverting the principles of IP, which are meant to allow all traders to compete fairly, and to assume that an unjustified grant to IP rights will solve all the world’s problems.


Wacky patent


Einstein (right) isn't impressed

Read and enjoy.

Silly sausage?

The IPKat has learnt from the News & Star that the Cumberland Sausage Association is mounting an expedition to Turin to participate in the Salone del Gusto food festival. The aim is to promote the associaiton’s campaign to gain protected geographical indication status for the Cumberland sauage.

The IPKat isn’t convinced. Cumberland is currently used to describe a particular type of sausage, rather than geographical origin. To limit it to Cumbrian producers would be to seek to turn back the clock.

Wednesday, 25 October 2006



The IPKat begs to inform you of a fresh Court of First Instance ruling on an appeal from Alicante on a Community trade mark issue. It's Case T-13/05 Castell del Remei v OHIM, Bodegas Roda (ODA). Indeed, this case is so fresh that our friends in Luxembourg haven't had time to translate it, so it's only in French and Spanish.

It looks as though Castell del Remei sought to register as a CTM the word ODA in Class 33, for alcoholic beverages other than beer. Roda opposed, alleging a likelihood of confusion with, and the taking unfair advantage of, various earlier Spanish registrations for wines and spirits, also in Class 33, containing the word RODA. At this point, however, the IPKat's rudimentary French begins to fail him. Can any kind reader please supply the result and - if it's interesting - the reasoning that underpins it?


New York, New York

Here are a couple of American curiosities from the IPKat's colonial cousin Miri Frankel (Beanstalk), via the New York Times.

First, it seems that lawyers have come up with another way to make life difficult for taxpayers: Americans may face a patent infringement suit if they use a tax strategy someone else has already patented.

“I can’t even imagine what it will be like in 5 or 10 years”
says Dennis B. Drapkin, a tax lawyer with Jones Day in Dallas and chairman of a task force of the American Bar Association’s tax section. He continues:
“If anytime a lawyer or accountant gives tax advice, they have to find out if there is a patent on this”.
Don't read any further, the IPKat says, unless you really don't mind being depressed by developments that the legislature almost certainly never envisaged when they thought it would be a nice idea to foster innovation by offering patent protection. That's not the point, says Merpel: if you patent new ways of levying taxation, you can either stop the authorities using those ways or extract a juicy royalty from them.

The second feature chronicles the early days of New York's aggressive campaign to hold building owners liable for illegal distribution activities on their property and to make the recording of movies in theatres a crime. Using tactics the city employed to go after counterfeiting in the apparel industry, officials work to identify buildings where piracy operations are located and then take legal action against landlords and owners. Under nuisance abatement laws, the city can essentially take control of the properties, shutting down offices, floors or entire buildings, depending on how they are being used, and sue the landlords. This could result in substantial fines and could also force landlords and owners to post bonds and to submit new tenants for city approval.

Left: what's left of a commercial property after the anti-piracy squad have finished searching it.

The IPKat wonders how soon it would be before vast swathes of commercial property end up under public control. Merpel says, this is a nice interplay between intellectual property and the real, solid, old-fashioned sort of property.


Globes Online reports that the Israeli Patent Registrar has ruled that business methods cannot be patented in Israel. The application, by Eli Tamir, was for an invention consisting of coupons which were sold to consumers and which would be reduced in value as they were redeemed at relevant retailers. Although business methods are allowed by the USPTO, the Registrar noted that this was because business methods are patentable under US law. The same is not true in Israel. The Registrar also noted that, in order to comply with TRIPs, Israel has broadened the scope of patentable inventions from inventions in “industry or agriculture” to inventions in “any field of technology”.

The IPKat says that this makes sense – just because the US does things one way, this doesn’t mean the rest of the world has to too.

Tuesday, 24 October 2006


The IPKat is delighted to tell you about a couple of upcoming events organised by the Intellectual Property Institute, United Kingdom.

The 2006 Stephen Stewart Memorial Lecture. On Wednesday, 29 November 2006 Andrew Gowers - he of the “Gowers Review of Intellectual Property” - will be giving the prestigious Stephen Stewart Memorial Lecture. A former Editor of the Financial Times, Andrew joined Lehman Brothers as Head of Communications in June 2006; in December 2005 he was appointed to lead an independent review for HM Government of the UK's intellectual property regime. This event is hosted by Slaughter and May: the talk begins at 5.00pm and the evening concludes with discussion and drinks till 7.00pm. There's bound to be a big crowd (it's free!) so book early to avoid disappointment. Application form available here.

Government Copyright – Unlocking Public Sector Information Assets. On Wednesday 15 November 2006, with registration from 4.30pm, McDermott Will & Emery's London office is hosting "Government Copyright – Unlocking Public Information Sector Assets" starring Carol Tullo (and also concluding with discussion and refreshments). Carol is Director of OPSI and Controller and Queen's Printer, Cabinet Office. The subject is a powerful and controversial one; the speaker is an authority on it. Be there! The event is free for students, cheaper for IPI members and fairly priced for non-members. Application form here.


Not playing the game

The IPKat learns from the BBC, via his friend Simon Haslam, that PlayStation purveyors Sony plan to block attempts to import the PlayStation 3s console. Sony has said it will use the "full scope of the law" to block the importation of P3s into Europe before the official release date.

Above right: Sony is playing a cat-and-mouse game with unauthorised importers - and their Sony-loving customers. Below left: pirates bringing the new P3s to Europe.

The new console goes on sale in the US and Japan this November, but is not out in Europe until 2007. Says the IPKat, that's the whole point: the real game is seeing how many P3s you can import into the EU before you're allowed to do so. Merpel adds, there are probably easier ways of simultaneously alienating consumers, distributors and retailers - but not many ...

See earlier IPKat post on Sony enforcement activity here

Shoot to kill

Also, via Simon Haslam, the IPKat has discovered from the BBC that NetResult - a business engaged by the English football Premier League to monitor websites - has warned the YouTube website that the Premiership goals posted on YouTube by are infringing Premier League copyright. This news comes after YouTube removed nearly 30,000 files from its website after the Japan Society for Rights of Authors, Composers and Publishers objected that 29,549 music video, movie and TV clips had been posted without there permission. YouTube shows about 100 million clips per day. It is now owned by Google.

The IPKat suspects that YouTube will become a magnet for litigation, since Google has a large wallet and is well worth suing. The issue here is very similar to that faced by eBay and its VeRO policy (see recent IPKat post here). Merpel adds, this all dodges the really interesting issue: is there copyright in a goal as a dramatic work?

Half-baked, or hot potatoes?

This Friday, 27 October, at 9.45am - and not a minute earlier - the Court of Appeal for England and Wales gives its judgments in the two appeals of Macrossan v Comptroller General and Aerotel Ltd v Telco Holdings Ltd and others. These cases address two of the hottest potatoes for modern British patent law: Macrossan (see earlier IPKat post here) is an appeal against a refusal to grant a patent for an automated system for putting together company incorporation documentation, while Aerotel is an appeal against the refusal to allow an application to patent a means of routing pre-paid telephone calls.

Will the Court of Appeal uproot four decades of British case law and expand the scope of patent protection? Or will it upturn boiling cauldrons of coruscating wrath upon the appellants for having the temerity to waste its time? To find out, come to Court 63 on Friday to hear the decisions, or be patient a little and read them on the IPKat.

Monday, 23 October 2006


The IPKat brings you the excitement of the official OHIM statistics for 2006, which are now online and available here. Points of note include:

* 2006 marks the tenth anniversary of the CTM, and with it, the first batch of renewals. The stats show that the renewal rate was 60%;

* Top EU country for CTM applications is Germany (no surprises there, then);

* Top non-EU country for CTM applications is the US (no surprises there then either);

* There were no applications for olfactory marks during 2006. However, a small number of sound and colour marks were both applied for and registered during that period;

* Only one CTM application has ever originated from the Vatican City State. This puts it in the company of Iraq and Cuba. No further applications originating from there were made during 2006;

* The first CTM application from Papua New Guinea was received this year.


Fysh slips through net of design right claims

Bailey and Bailey v Haynes and Haynes, a Patents County Court decision of Judge Michael Fysh QC from 2 October, has been summarised on the Sweet & Maxwell Lawtel subscription service. It is not available on BAILII.

This action was brought by the Baileys, trading as Elite Angling Products, who alleged that the Hayneses, trading as Rags, infringed the design rights in the design of a polyvinyl alcohol warp knitted ladder-resistant micromesh bait bag which was used for catching freshwater fish.

Elite designed the "Elite Micro Mesh" which, it said, was protected against copying by UK and Community unregistered design rights under the Copyright, Designs and Patents Act 1988, section 213 and Council Regulation 6/2002, Article 3. According to Elite, design right subsisted in the shape and configuration of a three-dimensional structure made of the thread stitches found in parts of the mesh.

Rags admitted selling polyvinyl alcohol micromesh warp knitted ladder-resistant material but denied it was infringing any design rights. First, Rags said its own product was independently designed for it by a supplier in China. Secondly that product was not made "exactly or substantially" to Elite's design and did not therefore infringe it. Thirdly, the features relied on in Elite's design were dictated solely by the technical function that the design was to perform, i.e. to hold fish bait of a particular size, and was therefore unprotectable under Article 8(1) of the Regulation. Finally, Elite's design was an exact copy of the Atlas warp knit pattern that had been known for centuries and which was one of four basic warp knit patterns. Elite agreed that its product had used the known three point Atlas warp knit stitch pattern, but pressed ahead nonetheless.

Left: another example of mesh used as bait ...

Judge Michael Fysh QC dismissed the infringement claim. He viewed the merits of the claim as follows:

* The micromeshes were not identical in structure. However the notional addressee of the design, being an angler, would see a marked similarity between the two parties' products.

* On the evidence the designer of Elite's bait bag had not copied antecedent material, but had exercised only the minimum amount of skill and judgment required to imbue the design with originality; the design was not therefore commonplace.

* Since the basic appearance of the design was caused by use of the Atlas warp stitch method, the claimed UK design right would cover a "method or principle of construction" under section 213(3)(a) of the 1988 Act and was therefore excluded from protection.

* Rags' challenge to Elite's Community unregistered design right failed: since that design was not the only design capable of achieving the useful function of containing finer bait in certain circumstances, it was not excluded by Article 8(1).

* There was no evidence that a mesh made according to Elite's method had been made before. However on the evidence Rags had not copied Elite's design, which its Chinese supplier had designed.
The IPKat appreciates that judges can only work with the evidence before them, but he is a little uncomfortable at the ease with which independend design by a Chinese supplier can defeat a design right infringement claim. Given the vast amount of outsourced manufacture that takes place in China, as well as the known propensity of many Chinese enterprises to copy designs quite openly and unashamedly, it does rather seem that the level of protection accorded by design is even less in reality than the words of the law suggest.

Angling here
Anglepoise here
Anglicans here

Latest IP&T

The October 2006 issue of Butterworths' shiny black Intellectual Property & Technology Cases has now been published and the IPKat has been noting its contents. This month's selection is more on the technology side than the IP side, but it is not without significance for IP enthusiasts.

There are two decisions from the Queen's Bench Division of the High Court for England and Wales that deal with internet postings - Bunt v Tilley on the status of internet service providers as "publishers" in defamation law and Al Amoudi v Brisard on whether there exists a presumption that an internet posting has taken place within the jurisdiction of the English courts.

Other cases reported are Director of Public Prosecutions v Collins, in which the House of Lords lays down criteria for determining whether a message sent via a public electronic communications network is "grossly offensive" and C plc v P, a Chancery Division decision arising from a copyright and breach of confidence action in which the defendant exercised his privilege against self-incrimination in respect of indecent images that were stored on the computer that the claimant was entitled to search for evidence of infringement.

Sunday, 22 October 2006


Dob, dob, dob

United Press International reports that Boy Scouts in Los Angeles can work towards a badge for learning about ‘piracy’. To earn the Respect Copyrights Activity badge, scouts follow a curriculum produced by the MPAA which includes the creation of a video public service announcement and visiting a video-sharing website.

Please excuse the IPKat while he goes to be sick in the corner.

WIPO slip up

Chosun reports that WIPO made a bit of a mistake in its global patent survey. It seems that South Korea should have come third, but didn’t, because some EPO filings were counted twice. The EPO now slips down from third to fourth.

South Korea is given its rightful place in the charts

The IPKat is unimpressed.


IPtalk comes online

Inlex Conseil, based in Paris, France, has just sent the IPKat issue three of IPtalk, a magazine that provides lively and attractive updates on French and EU law - in English but from a Gallic perspective. You can read this and the two previous issues of IPtalk online here, on Inlex's blog-alike website.

The IPKat wishes IPtalk the best of luck in this venture, noting with relief what it says on page 2 about the Loi Toubon not being a basis for the refusal of registration of a trade mark in France. Merpel says, hang on - IPtalk is only one letter away from being an anagram of IPKat. Oh, what the 'ell!

French Without Tears here
Tears Without French here

Latest JIPLP

The October issue of the Oxford University Press monthly Journal of Intellectual Property Law and Practice has now been published. Major features in this issue include Brad Olson's piece on the unique provisions for the protection of vessel keels in the United States, Hidero Niioka's observations on the new American pastime of patent auctions and a masterly account by Arnauld Folliard-Monguiral of the legal implications arising from co-existence of trade marks inside the Community trade mark system.

View the full contents of this issue here; get a sample issue here; subscribe here; top 50 most frequently viewed articles here
To read the Editorial of this issue and all previous issues click here

Saturday, 21 October 2006


Good news for decision-browsers

UK patents enthusiast and campaigner for common sense David Pearce (Eric Potter Clarkson) has written to tell the IPKat: "The Patent Office has reintroduced a browsing facility for past decisions, available here. Apparently other material such as the guidance on the Patents Act 2004 is also due to reappear soon. Looks like our lobbying has started to pay off". Many thanks, David - and a big thank-you, too, to our friends at the UK Patent Office.

Gone but not forgotten

The past week has seen the death of two notable personalities who made major contributions to British intellectual property law. They were Charles Clark and Sir Robert Megarry.

Charles Clark (obituary here), himself an imaginative and innovative publisher with Sweet & Maxwell and later Penguin, was copyright adviser to the Publishers Assocation and helped bring to fruition the Copyright Licensing Agency. Charles was also a popular and articulate speaker in conferences: one of his favourite themes was that of setting a machine to defuse the threat of a machine - new technological means of infringing should be countered by new technological prevention measures more effectively than by the introduction of technology-specific legislation.

Sir Robert Megarry (above: obituary here) was a notable member of the British judiciary. As Vice-Chancellor of the Chancery Division he established the ground rules for a cause of action for breach of confidence in Coco v Clark (no relation of Charles Clark ...) and became the scourge of civil libertarians in Malone v Metropolitan Police Commissioners when he ruled, admittedly with some reluctance and distaste, that no duty of confidentiality was violated by the unauthorised tapping of a telephone conversation (the European Court of Human Rights has since ruled to the contrary effect).

Friday, 20 October 2006


Apple claims i and Pod

The IPKat's friend Miri Frankel drew his attention to this delightful snippet from The Onion. Further comment is superfluous ...

Latest IAM

The October/November 2006 issue of Intellectual Asset Management, published by Globe White Page, has now been published. The cover story, prepared by Victoria Slind-Flor, deals with the risk faced by US corporations that shareholder suits may call them to account for mismanagement of their IP portfolios. This is a terrifying prospect. The IPKat assumes that there will be a sequel, covering the risk - which may be greater - that shareholder suits will be brought against businesses that, through negligence or inadvertence, find themselves infringing third party rights.

Other topics of interest in this issue include benchmarking methodologies for assessing the quality of patent portfolios, the use of valuation techniques as a means of smoothing the path towards the conclusion of IP licences and a special focus on IP litigation strategies.

All about IAM here

WIPO hits the 25,000 mark

According to a data-rich press release the World Intellectual Property Organization's Arbitration and Mediation Center has just decided its 25,000th cybersquatting complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP), among other policies. The landmark decision involved a domain name to which the Red Lion Hotels chain took exception.

84 per cent of cases resolved so far have resulted in wins for the complainant which is not surprising, the IPKat says, when you consider what a lot of parasitic bad-faith registrations are made, wasting everyone's time and causing so much frustration to legitimate businesses, consumers and web-users alike.

For more about the UDRP and related information, click here.
Cybersquatting and double standards here.

The Lovemarks Effect

In May of each year the British Brands Group (BBG) hosts the Brands Lecture. This year's lecture was given by Kevin Roberts, the Worldwide CEO of Saatchi & Saatchi, on the subject "The Lovemarks Effect". A Lovemark is a "super-evolved brand that forges lasting emotional connections". The BBG has published the full text of Kevin's lecture in a handsome little booklet that is both enjoyable and informative - whether you agree with it or not. Well done, BBG, for enlivening yet another aspect of the continuing debate over brands and branding.

More on Lovemarks here; Love Marx here and here


The IPKat reminds his readers (i) that they can receive all IPKat postings on this weblog by email circular if they write to him here and ask to be put on the list; (ii) that details of the IPKat's planned Workshop Sessions on the Gowers Review will be posted in the next week or so; (iii) that they should not forget to have a lovely weekend ...


No hiding place

Judge Michael Fysh QC, sitting again in the Chancery Division of the High Court for England and Wales, gave a pretty helpful ruling for IP owners on Wednesday in KK Sony Computer Entertainment and another v Pacific Game Technology (Holding) Ltd [2006] EWHC (Ch) 2509 (reported here on BAILII).

Sony and its UK subsidiary marketed its latest PSP PlayStation console in over 100 countries, including the countries that form the European Economic Area. These PlayStations were protected by five Community trade marks, a UK registered trade mark, a UK registered design and a Community registered design and copyright in computer programs, menu icons, surface design and the user manual.

Pacific, a Hong Kong company, ran a website on which it offered various video games, consoles and accessories, video games and so on. Pacific also offered genuine Sony PSP consoles that were intended for sale in Japan only. According to Sony, by targeting customers in the UK and elsewhere in the EEA Pacific infringed its phalanx of IP rights. Sony went to court, seeking delivery up, disclosure of names, and an enquiry as to damages or an account of profits and costs. After Pacific earlier failed to persuade the court to refuse to hear the application on the ground of forum non conveniens, the court had to consider (i) whether Sony had agreed to the sale of those PSPs in the EEA - in which case its IP rights would have been exhausted - and (ii) whether Pacific, by offering the goods for sale on its website, had committed any infringing acts.

Judge Fysh QC allowed Sony's application for relief. In his view, the offer for sale had taken place not in Hong Kong but in the EEA. It was also plain that the offer had been made without Sony’s consent. The fact that the offer to sell was made via the intermediary of a website did not mean that the offer had not been made within the EEA:

"... It would make no sense if intellectual property rights in the EEA could be avoided merely by setting up a website outside the EEA crafted to sell within it" (para.27).
The IPKat agrees. It's hard to imagine that Sony had consented to the sale within the EEA of products that bear a label "FOR SALE AND USE IN JAPAN ONLY", in the absence of pretty cogent evidence to the contrary. Merpel says, that's all very well - but WHY can't I buy legitimate PlayStation and other Sony goods from whomsoever I want? Try selling the concept of non-global exhaustion of rights in a world which is now a global village.

No hiding place 2

Sweet & Maxwell's Lawtel subscription service picked up Celem SA and Celem Passive Components Ltd v Alcon Electronics Pvt Ltd, an extempore judgment of Mr Justice Warren in the Chancery Division yesterday.

Alcon supplied capacitors in India. Celem, who made premium high quality capacitors for which it had European patent protection, sued Alcon for patent, unregistered design right and copyright infringement by selling, offering to sell and importing allegedly infringing products into the UK. After Celem obtained permission to serve the proceedings on Alcon in India, Alcon applied to discharge that order: it maintained that permission to serve outside the jurisdiction should not have been granted on the grounds that (i) Alcon had never kept, sold, offered for sale or imported any product in the UK and (ii) the Indian courts were the forum conveniens (on which see the preceding item) for determining Celem's claim.

Warren J refused the application. Celem had shown that there was a serious issue to try: its intellectual property rights were in the UK and, if an English court did not deal with the patent infringement claim, an Indian court would be unlikely to do so. On this basis, if the patent infringement action was not the subject of resolution in the UK, Celem would have no redress.

The IPKat says this must surely be right. If it were not, then businesses trading outside the UK could nibble away at the commercial expectations of UK intellectual property rights holders without fear of reprisal. Merpel's a little surprised that Alcon even tried it on - surely this was settled a long, long time ago.

Celem here (earplugs needed); Alcon here
How capacitors work here


The Register reports that Hitachi has lost a patent dispute before the Japanese Supreme Court. Former Hitachi employee Seiji Yonezawa conducted research that is now used on reading optical disks, including CDs and DVDs and has been awarded 163 million yen (£733,000). Hitachi has criticised the decision.

The IPKat is split on this issue. It seems a bit rough to deprive creative employees from the benefit of a job well-done, and it also deprives them on an incentive to do their research above and beyond the call of duty. At the same time though, researchers are employed to do research, so it makes sense that their employees [correction: employers] should be able to benefit from this.

Thursday, 19 October 2006


Happy birthday® to you

The IPKat's Polish cousin, blogger, lawyer and web-artist Tomasz Rychlicki has drawn his attention to the announcement of a winner in the European Commmission's "Design a 50th Birthday Logo" competition. The winning device is depicted above; the runner-up is on the left and the third placed entry is below, right. This weblog salutes the winners and hopes that they didn't have too much trouble completing the application form.

According to the Press Statement,

"The winner, Szymon Skrzypczak, received the award of €6,000 euros. Tore Rosbo and Jenny Lundgren also received awards for the second and third best logos, €4,000 and €2,000 respectively. ...

Left: Mr Vidal-Quadras, pictured here in front of yet another set of logos.

According to Mr Alejo Vidal-Quadras, First Vice-President of the European Parliament, "The success of this logo competition throughout Europe demonstrates that we were right to put our confidence in young people to help us design the Europe of tomorrow. On behalf of the European Parliament, the institution who represents the European citizens, I would like to thank all the participants for their imagination and enthusiasm. I congratulate the winner for the very nice result, which expresses very well our common destiny".

The IPKat can report that the people's choice (right) represents an axiom that has become more apparent during the first fifty years of the European Union's institutions: "you can't teach an old dog new tricks". Merpel, who is horrified at this, prefers the more sympathetic device (left) that symbolises the constant trekking of the European Parliament between Brussels to Strasbourg.

Design your own logos here
Worst ever logos? Try here and here

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