For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

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

Tuesday, 28 February 2006

GILLETTE DEFENCES DECISION: WHAT THE FINNISH COURT SAID


Finnish trade mark attorney Jukka Palm of Berggren has provided the IPKat with a summary of the Finnish Supreme Court's decision in the Gillette case. This is the home leg of Gillette v LA Laboratories, in which the ECJ clarified the requirements for the applicaiton of Art.6(1)(c) of Directive 89/104. Jukka writes:

The Finnish Supreme Court rules in Gillette third-party use case

In Gillette Company & Gillette Group Finland (GC) v La-Laboratories Ltd Oy (LA), the Finnish Supreme Court has on 22 February 2006 (decision 2006:17) dismissed the action against the defendant who marketed razor blades under its PARASON FLEXOR trade mark. The decision is based on the interpretation of the ECJ’s preliminary ruling (case C-228/03).

LA had attached into its packagings red stickers which stated: ‘All Parason FLEXOR® and all Gillette SENSOR® HANDLES are COMPATIBLE with this razor blade’.

The Court held that the reference to GC’s trade marks was the only way to inform consumers about the intended purpose of LA’s razor blades. The court stated that such information is useful to consumer only when this sort of message is presented in an easily understood and perceived form.

The court reasoned that LA’s razor blade packaging featured the brand name PARASON FLEXOR ‘clearly and with bigger lettering’ and the sticker’s text merely clarified that those blades can be used with Gillette Sensor razors as well. In these circumstances the defendant’s use gave no impression that there would be a commercial link between these two undertakings.

The majority of the Court held that LA’s sticker was a ‘mere neutral announcement’ regarding the compatibility of Parason Flexor razor blades and Gillette Sensor handles. Therefore the defendant did not present its product as an imitation of the plaintiff’s well-known product. Quite to the contrary, the red sticker contributed LA’s efforts to capture consumer’s attention.

The Court concluded that defendant’s methods must be allowed in order to promote the undistorted system of competition in the EU market.

Two of the five judges partly dissented and stated that LA’s and GC’s trade marks had been presented side by side with identical letter size and typeface. Such a usage might create some confusion in the market place at least in the eyes of a consumer who superficially familiarizes with the product in question. As this sort of a risk was minor, the defendant had not acted contrary to the honest business practices. There was also no reason to require that a disclaimer should have been used in these circumstances in order to clarify that there is no link between these two undertakings.

The court concluded that the defendant’s use of GC’s mark was the only way to inform consumers even though this sort of statement could have been made much more neutrally by informing merely “This razor blade is compatible with Gillette Sensor handles”. The Finnish Supreme court chose to stress the importance of promoting competition within the EU market. In my view it cannot be ruled out that courts in some other member states might reason that usage such as LA’s would not be necessary for conveying neutral consumer information but the defendant was seeking to gain an unfair commercial advantage. The language used by the ECJ in case C-228/03 left room for dissimilar interpretations in different member states (see also Ipkat 18 May 2005).

There is also a new surprise twist in this case. According to Finnish newspaper Kauppalehti the claimant could possibly be fined for abusing its dominant position.

The IPKat says thanks Jukka - he's often filled with curiosity over what happens to the parties after the ECJ references.

Monday, 27 February 2006

COPYRIGHT CLAIMS


Is rap torture?

Comedy story of the week – but with a serious side. Ireland Online reports that Michael Winterbottom, director of The Road to Guantanamo has discovered that Guantanamo detainees are played the music of rap star Eminem at full volume as a form of torture. Winterbottom argues that Eminem should take the US Government to court for copyright infringement.

The first example of infringement of moral rights by context? the IPKat asks. Merpel says that if we was Eminem he’d keep very very quiet about the fact that his music is considered a form of torture.


Da Vinci Code case

The Guardian (and pretty much everyone else) reports on the opening day in the Da Vinci Codes case. It is claimed that Dan Brown, the author of the Da Vinci Codes lifted the theme of the novel from an earlier non-fiction work, the Holy Blood, which argued that Jesus and Mary Magdalene had a secret child, the descendants of which the Church was now trying to hide. Brown claims that he had not even read the book at the time that he wrote the synopsis for the Da Vinci Codes. The trial, before Peter Smith J, is expected to last two weeks.

Perhaps the IPKat is missing something here, but surely it’s trite law that an idea can’t be protected by copyright, particularly where it’s one based on supposed fact.

Sunday, 26 February 2006

BEER AND CHAT


Don't forget...

Tomorrow (Monday 27 Feb) Christopher Wadlow is coming to QMIPRI to talk about the harmonisation of European unfair competition law. Take your places by 5.30pm. For more information, direct your carrier pigeon towards Ilanah.


Budweiser case - now in English

The European Court of Human Rights has (finally) made its Budweiser decision available in English - thanks to Veronica Baressi for tipping the IPKat off. As the IPKat previously reported, registered trade marks are counted as 'possessions' protected under Art.1 of Protocol 1 of the European Convention on Human Rights but applications for trade marks since, although they may have financial implications for the applicants, they do not give rise to a 'legitimate expectation' of registration and may be opposed by third parties.
The slight twist is that no 'possession' comes into being where the sytem allows opponents a fixed period to oppose the registration after the mark is registered, as appears to be the case in Portugal, until after that fixed period has expired.

Saturday, 25 February 2006

IP FOR YOUR LEISURE TIME


March EIPR

March’s tantalising issue of the European Intellectual Property Review has been unleashed. Peel back its cool, grey exterior for the following delights:

*Paul Edward Geller on Dissolving Intellectual Property;
*Joes J Izquierdo Peris (OHIM) on two years of the registered Community design;
*P Akester (Cambridge) and R Akester (UCL) on digital rights management;
*Winifried Tilmann (Lovells) on harmonising EPC and national patent practice;

Cool and grey - just like the EIPR

*Maurice Gonsalves (Mallesons Stephen Jaques) and Patrick Flynn (Banco Chambers) on Australian dilution law;
*Paul Stephenson (St James’s Chambers) on comparative advertising;
*Comments on Oakley v Animal from Martin Howe (8 New Square) and counterfeit goods in South Africa from Lee-Ann Tong (University of Cape Town);
*The usual book reviews and news
*A letter from France – the first in a six-monthly series providing an overview of recent French IP developments .


IPKat film club

Friend of the IPKat Carina Badger has informed the Kat of 2006’s must-see movie for patent pedants, copyright and trade mark everywhere. Snappily titled Intellectual Property, it tells the story of an inventor who must prevent his inventions becoming ‘casualties of the cold war’ (whatever that means). Don’t all rush out at once though – the film isn’t due to be released until August.

Friday, 24 February 2006

NOT MADE IN CHINA


The People’s Daily Online reports on the furore surrounding an application for three Community trade marks containing the term NOT MADE IN CHINA. The mark has been branded ‘discriminatory’ against Chinese products and a disgrace to Chinese dignity. OHIM is expected to make a decision on registrability in about a year’s time.


The IPKat says that the mark is certainly not deceptive. Is it contrary to public policy though? Perhaps more interestingly, is a mark which tells consumers about the qualities that goods do not have descriptive? Often the answer must be yes (e.g. CONTAINS NO CARBS) but is a mark truly descriptive where it tells consumers that goods do not have a quality which they would not expect the goods to have in any event. For example, would a registration of DOES NOT CONTAIN ELEPHANTS be descriptive of chocolate?

View the applied for mark here

Thursday, 23 February 2006

ANIMAL CRACKERS


Not so Quick-ly…

The IPKat’s mate, Tibor Gold writes:

I don’t think the paras you picked out are all the essential ones…
In very telegrammese shorthand:
Appeal rejected, Opp Div + BoA upheld.
There is incontestable verbal similarity between the word components and that is more important than the drawing of the rabbit, partly because drawings of jovial cartoon characters of animals are common in the catering trade, size-wise, too, QUICKY is significant and non-negligible.

There is great phonetic similarity. Regard must be had to oral use (telephone order)
Conceptually one cannot exclude that francophones of FR + BX have sufficient knowledge of English to understand ‘quick’ and from there to ‘quicky’ but in any case the phonetic similarity cannot ‘neutralise’ (newspeak for outweighed by) the conceptual differences.

Given a quasi-identity of the goods, the visual similarity and the phonetic quasi-identity the BoA was entitled to find a risk of confusion, enhanced by the usage of the ‘alimentary sector’ of distinguishing its various lines by using sub-brands which is how the later mark could be perceived by the targeted public

The IPKat, duly chastened, says thanks Tibor!


From rabbits to donkeys

eDonkey to be precise. Estelle Derclaye has informed the IPKat that a joint operation by Swiss and Belgian police has shut down the Razorback2 server, which is used by a third of the users of the eDonkey P2P website. The server contained 170million pirated files and was one the largest of approximately 200 index servers on the eDonkey file-sharing network. The owner of the server has been arrested and the computers used for it have been seized.

The IPKat can’t help but be pragmatic about this. By now those who create unauthorised P2P networks have got to know what’s coming to them. He’s rather interested though by the prospect of fake servers, allegedly created by RIAA, in order to trap downloaders – see the discussion among eDonkey users here.

BBC coverage here
More on eDonkey here

LOUSY PATENT - EVEN AMENDING IT WON'T HELP; QUIDS IN WITH SUMMARY JUDGMENT


Even amendment can't help

The IPKat tripped over this on BAILII: it's yesterday's decision in Ferag AG v Muller Martini Ltd [2006] EWHC 225 (Ch), a Patents Court ruling of Mr Justice Lewison.

Ferag, a print-finishing company, had a patent for methods for cutting or trimming printed products and complained that Muller Martini's machine infringed it. Muller Martini, denying infringement, said the patent was invalid as being neither new nor inventive. Ferag decided to launch a patent infringement action and applied to amend claim 1 of its patent. Muller Martini maintained that the amendment, read in the light of the patent's specification, was unclear.

Lewison J ditched Ferag's claim. The invention, whether in its original or amended form, was obvious in the light of the prior art. The IPKat feels sorry for Ferag: this is another of those cases where the patent owner had gone to great lengths to make his invention look and sound inventive: indeed, if as much invention had been shown by the inventors as was shown by Ferag's legal team, the outcome might have been quite different.


Quid pro quo

This little morsel appeared on Butterworths' continuingly excellent All England Direct subscription service. Quid Novi Ltd and another v Innvotec and others, another Chancery decision of Mr Justice Lewison yesterday, this time being in the field of copyright.

Quid Novi, who had a business plan for a tax-efficient scheme for carbon trading, alleged that substantial parts of the plan had been copied by B on behalf of Innvotec. The plan had been supplied to B, who had a general outline of its content in mind when he wrote the allegedly infringing document. But it was denied that he had copied the bits of the plan set out in Quid Novi's claim. Suing for copyright infringement, Quid Novi sought summary judgment. No, said Innvotec, the case had to go to a full trial because (i) B might have copied from a document other than the plan and (ii) without disclosure by Quid Novi, it was not possible to show that its plan was an original work in the first place, since B had relied on certain research which he had detailed in the plan.

Lewison J gave summary judgment in favour of Quid Novi. He ruled as follows:

* Once a claimant’s legal rights had been determined, and the determination of those legal rights would in the ordinary way have resulted in a judgment, he ought in principle to be given judgment unless very strong reasons existed to the contrary.

* Having regard to the state of the evidence both at the time of the application and as it might have been after disclosure and trial, there was nothing to suggest that Innvotec had a real prospect of successfully challenging the originality of the plan or of establishing that B had copied from a source other than the plan.

* There being no other compelling reason for the issue of copyright infringement to go to trial, the court would grant summary relief in respect of certain items identified in the particulars of copying.
The IPKat is a bit anxious about this. While he likes the idea of summary judgment and disapproves of using disclosure (discovery) as a fishing expedition in the hope of finding some flaw in an IP owner's case, he wonders how the learned judge could have regard to "the state of the evidence ... as it might have been after disclosure and trial": it's a neat trick and certainly beats the hassle of hearing the real evidence when you're pretty certain the defendant's an infringer. Merpel wonders if the defendants' eyes were too close together and they had a sort of shifty look about them ...

GOOGLE COPYRIGHT DEFEAT


Another legal blow for Google is reported by Crescent News. The search engine has lost a Californian copyright case at the preliminary injunction stage. At issue were the thumbnail images that Google provides as part of its “image search” service. Perfect 10, a pornographic magazine, convinced Judge Matz that displaying these images could be classed as infringement. However, its claim that Google was also liable for secondary infringement if users clicked on the thumbnail images, which took users to the full-sized image as hosted on the copyright owner’s website did not have a sufficient likelihood of success at trial to serve as the basis of a preliminary injunction. The case will go to trial at an unspecified time in the future.


The IPKat is a great fan of the Google image search but can see why reproducing someone else’s copyright works would be classed as infringement.

Wednesday, 22 February 2006

A QUICKIE FROM THE CFI; IT CONFERENCE - AND A COMPETITION!


En vitessse - un quickie

Bonjour, mes braves, dit l'IPKat. Aujourd'hui nous avons ce jugement, que n'est pas traduit en anglais: c'est l’affaire T-74/04 Société des produits Nestlé SA contre l'Office de l’harmonisation dans le marché intérieur, Quick restaurants SA.

Nestlé sought to register, as a Community trade mark, the QUICKY rabbit (above, right: in the CFI transcript the rabbit mark is accompanied by the subscript word "QUICKY") for goods in Classes 29, 30 and 32. Quick Restaurants opposed, citing earlier Benelux (and other) registrations in Classes 29, 30, 32, 33 and 42 of its own Quick signs (left) and of the word mark QUICKIES in Classes 29, 30 and 42. A likelihood of confusion under Art.8(1)(b) of Regulation 40/94 was alleged.

The Opposition Division upheld the opposition in respect of numerous goods and services and Nestlé, having appealed unsuccessfully to the Board of Appeal, tried its luck with the Court of First Instance - which dismissed the appeal. On the similarity of the respective marks the CFI had this to say:

"49 ... il convient d’analyser la similitude visuelle entre les éléments verbaux QUICKIES et QUICKY, puis, au cas où une telle similitude serait constatée, de vérifier si l’élément graphique ou figuratif additionnel, propre à la marque demandée, est susceptible de constituer un élément de différenciation suffisant pour écarter l’existence d’une similitude visuelle des signes en conflit aux yeux du public de référence .... En d’autres termes, il est nécessaire de déterminer si, d’un point de vue visuel, le dessin du lapin constitue l’élément dominant de la marque demandée, c’est-à-dire domine à lui seul l’image que le public pertinent garde en mémoire, ou si, au contraire, il est un élément distinctif d’intensité égale ou inférieure à l’élément verbal constitué par le mot « quicky ».

50 Les éléments verbaux QUICKIES et QUICKY présentent incontestablement une similitude sur le plan visuel. En ce qui concerne l’importance qu’il convient d’accorder au dessin du lapin comme élément de différenciation entre les deux signes en conflit, celui-ci ne saurait constituer l’élément dominant dans l’impression d’ensemble produite par la marque demandée, au point que l’élément verbal QUICKY en deviendrait négligeable. En effet, lorsqu’une marque est composée d’éléments verbaux et figuratifs, les premiers sont, en principe, plus distinctifs que les seconds, car le consommateur moyen fera plus facilement référence aux produit en cause en citant le nom qu’en décrivant l’élément figuratif de la marque ... Par ailleurs, l’élément verbal QUICKY n’est pas écrit en petits caractères et sa représentation graphique correspond à la largeur du dessin du lapin. En outre, il occupe, dans la marque demandée, une place aussi importante que le dessin, puisqu’il est placé de façon très visible, immédiatement sous le dessin.

51 Ensuite, il y a lieu de relever que l’élément figuratif de la marque demandée, à savoir le dessin d’un lapin, pourrait être perçu par le public davantage comme un élément décoratif de l’étiquette des produits désignés que comme le signe indiquant l’origine des produits. En effet, comme la requérante l’a admis lors de l’audience en réponse à une question du Tribunal, l’utilisation d’un animal jovial et animé, par exemple un dinosaure ou un lapin ressemblant à un personnage de dessin animé, est un procédé qui est utilisé par les fabricants de produits alimentaires pour capter un public jeune, notamment les enfants. Cette utilisation fréquente de différents animaux pour ce type de produits a pour conséquence une banalisation de leur usage et de leur caractère distinctif, lequel, ce faisant, tend à être considérablement diminué".
According to Babelfish this means:
"49. ... it is advisable to analyze the visual similarity between verbal elements QUICKIES and QUICKY, then, if such a similarity would be noted, to check if the element graphic or figurative additional, specific to the required mark, constitutes a sufficient element of differentiation to draw aside the existence of a visual similarity of the signs in conflict to the eyes of the public of reference ... In other words, it is necessary to determine if, from a visual point of view, the drawing of rabbit constitutes the element dominating of the required mark, i.e. dominates with him only the image that the relevant public keeps in memory, or if, on the contrary, it is a distinctive element of intensity equal or lower than the verbal element consisted the word "quicky".

50. Verbal elements QUICKIES and QUICKY incontestably present a similarity on the visual level. With regard to the importance which it is advisable to attach to the drawing of rabbit like element of differentiation between the two signs in conflict, this one could not constitute the element dominating in the overall impression produced by the required mark, so much so that verbal element QUICKY would become negligible about it. Indeed, when a mark is made up of verbal and figurative elements, the first are, in theory, more distinctive than the seconds, because the average consumer will more easily refer to the product in question by quoting the name than by describing the figurative element of the mark ... In addition, verbal element QUICKY is not written in small characters and its chart corresponds to the width of the drawing of rabbit. Moreover, it occupies, in the mark requested, a place as important as the drawing, since it is placed in a very visible way, immediately under the drawing.

51 Then, it is necessary to raise that the figurative element of the required mark, namely the drawing of a rabbit, could be perceived by the public more like a decorative element of the label of the indicated products that as the sign indicating the origin of the products. Indeed, as the applicant one admitted at the time of the audience in answer to a question of the Court, the use of a jovial and animated animal, for example a dinosaur or a rabbit resembling to a character of animated drawing, is a process which is used by the manufacturers of foodstuffs to collect a young public, in particular the children. This frequent use of various animals for this type of products has as a consequence a vulgarizing of their use and their distinctive nature, which, by doing this, tends to considerably being decreased".
The IPKat is anxious that he has missed something and very much hopes that his friends will correct any errors by posting a Comment below. Merpel, having conducted a brief tour of the internet, wonders whether the real problem with the rabbit is that Nestlé seems to use it in so many different poses ...

See also Case T-348/02 Quick Restaurants SA v OHIM, a case that was translated into English so long after it was initially decided that the IPKat forgot to carry on looking for it.


IT Conference Reminder

CLT's 8th Annual Information Technology Conference (full programme here) takes place on Tuesday 21 March at Jurys Great Russell Street Hotel, London. There's a strong cast of speakers, including
* Jon Fell (Pinsent Masons, right) on recent e-commerce developments and management of online risk;

* the ever-popular Robert Carolina (Origin Ltd) on how US regulation impacts on IT contracts;

* Andres Guadamuz, the celebrated TechnoLlama (left), tackles software patenting issues on both sides of the Pond and asks what it all means to us mere mortals;

* competition law guru Christopher Stothers (Milbank Tweed, Hadley & McCloy) on the aftermath of Microsoft v European Commission and

* David Morris (Slaughter and May), asking how far database protection encroaches into our daily IP existences.
And here's IPKat Competition no.4: SPOT THE FISH. The winning prize - free admission to the conference (that's worth £495 plus VAT, if you pay it).


This is a painting of Jesus distributing some loaves and fish. The IPKat has no problem with the loaves - but he can't find the fish. To enter the competition, please mark the spot on the picture where you think the fish ought to be, then return it to the IPKat at this address. The best entry wins!

ON HIS TRAVELS ...


Kat in transit

IPKat co-blogmeister Jeremy will be in Israel for a few days. This coming Sunday, 26 February, he'll be in Tel-Aviv and he has some spare time in the afternoon if any of his local friends in the area wants to say hello to him. If you're there and you're interested, let him know here. He'll be based at the office of law firm Herzog Fox & Neeman.

PATENT PREOCCUPATIONS


ECJ patent reference

The UK Patent Office’s nifty service notifying webjunkies about cases referred by national courts to the ECJ has unearthed a reference from the Supremo Tribunal de Justiça. The Court asks "Does the Court of Justice of the European Communities have jurisdiction to interpret Article 33 of the TRIPs Agreement?"

The IPKat reminds readers that Art.33 of the TRIPs Agreement reads:

"The term of protection available [for a patent] shall not end before the expiration of a period of twenty years counted from the filing date."

The IPKat hopes that the answer is no. Doing this through an Art.234 reference would amount to harmonisation of patent law through the back door.


Supreme Court to hear patent case

Forbes reports that the US Supreme Court has agreed that it will review a federal appeals court decision that prevents drug company Medimmune from challenging a Genentech patent. Medimmune claims that the Genetech patent was procured in breach of the antitrust laws. However, the federal court found that Medimmune, as a licensee, was barred from challenging the validity of a patent which it was licensing.


The IPKat understands the symmetry of this rule – if you don’t like the patent, don’t take a licence in the first place. But at the same time he reckons that if there are grounds for invalidating the patent which should the licensee, who has one of the strongest interests in the patent’s continued existence (or lack thereof) be barred from relying on those grounds?

Tuesday, 21 February 2006

RUNNING OUT OF APPELLATE PATENT JUDGES; GOOD IP WRITING; MOLEHUSBAND, WHERE ARE YOU?


Two-man appeal team disapproves of consensual revalidation of invalid patents

Are they running out of Court of Appeal judges in English patent cases? The IPKat wonders, having found this on Butterworths' All England Direct service. It's Halliburton Energy Services Inc v Smith International (North Sea) Ltd, a decision of a two-man Court of Appeal (Lords Justices Rix and Jacob).

Halliburton owned two patents, the validity of which successfully was challenged by Smith. Before Halliburton's appeal got very far the parties entered into a worldwide settlement agreement, in result of which Smith no longer planned to oppose the appeal. Halliburton, however, was intent on getting its patents back. What then should the Court of Appeal do? In recent years the practice of restoring the patent without argument had arisen, subject to the recording of a comment that the fact that the patent had been restored did not mean it had been held valid or ruled on.

Halliburton and the Comptroller argued that, in view of rule 52 PD 13.1 of the Civil Procedure Rules (an appeal court should not normally allow an appeal unless the decision of the lower court was wrong), that practice was wrong and that the Court of Appeal could not reverse an order for revocation except after a review of the merits.

The Court of Appeal agreed that the previous practice was inappropriate: the Court of Appeal should not restore an invalid patent unless the decision to invalidate it was wrong. The court had, therefore, to hear the merits of the appeal.

This seems perfectly sensible to the IPKat, particularly if you take account of the interest of third parties who would never want the expense or inconvenience of litigating the validity of the patent but who, once it was struck down on the merits following a trial, were confident to manufacture the product or use the process covered by its claims. Merpel's not so sure. If the system worked well enough in the past, it seems a shame to change it merely because it's wrong in principle. And wouldn't innocent third parties get some protection from the courts if they turned out to be infringing a patent that was miraculously revalidated by consent after they began working it?

And who would have won if the two judges disagreed? Lord Justice Jacob is the Big Patent Chief, but isn't Lord Justice Rix the senior appellate judge by some three years ...?


Good IP writing course

A couple of weeks ago the IPKat asked if anyone was interested in a course on how to write good, crisp, clear, coherent prose on the topic of intellectual property law. Initial response has been excellent and, in the next couple of weeks, the IPKat will be offering some dates and further details. The cost will not exceed £55 for half a day (if you bring your own sandwiches) and may be less; the course will be in London.

If you've not yet put your name down, now's the time to do so. Just email the IPKat here and let him know. Oh, if you're putting down someone else's name - as a couple of correspondents have apparently done - make sure that he or she knows about it first!


Mountain out of a Molehusband

A valuable piece of intellectual property has gone missing: it's the classic public service film sequence featuring a fictional driver, one Reginald Molehusband, who demonstrated how not to park a car. Played by actor Ian Gardner, the Molehusband role was broadcast hundreds of times in the 1960s and 1970s - but no-one seems to have a copy. Any reader who knows how or where to lay hands on it should email the IPKat here, so he can claim the reward ... or, better still, contact the BBC directly here.

Bad parking here
Good parking here
Free parking here

IN THE BEGINNING THERE WAS THE ©; COPYRIGHT WORLD


Papal copyright: royalties on the way

An apparently reputable source has emailed the IPKat to inform him that the Vatican is considering exploiting the copyright in Pope Benedict XVI's writings and speeches. He writes:

"The Italian publishing world is aghast. The demand by the Vatican to respect copyright in the pontiff's writings and to pay for their use has triggered a hot debate: should an institution which exists to spread the word of God be putting a price on papal writ? Unthinkable, say some authors. Not so, counters the Vatican: the authors are being paid for their efforts, so why not the church? While the question is pondered, the new papacy is shaping up as a publisher's dream. Benedict's first encyclical, God is Love, is a best-seller.

... After [Cardinal] Ratzinger was elected pope on 19 April, the Holy See's No. 2 official, Cardinal Angelo Sodano, signed a decree assigning in perpetuity and worldwide the copyrights of all Benedict's works - including the hundreds he wrote before becoming pope - to the Vatican's publishing house, Libreria Editrice Vaticana, known as LEV. La Stampa's Vatican correspondent, Marco Tosatti, and his Italian publisher, were hit with €15,000 (US$18,500) in copyright fees for Pope Ratzinger's dictionary, a slim volume of the pope's thoughts on abortion, freedom, conscience and other issues that was rushed out after his election. Vatican lawyers also demanded 15 percent on sales plus €3,500 (US$4,200) in legal fees, Tosatti said.

In Lev's defence its spokeswoman, Francesca Aida Bucciarelli, cites Tosatti's own preface to the book: "Everything you will find, from the end of this introduction on, belongs to the pen and voice of Joseph Ratzinger". Tosatti said the demand for payment "seems to go against the very spirit of the church". Bucciarelli concurred that publishers have reprinted encyclicals in the past, even though the Vatican issued a similar copyright decree a month after John Paul's 1978 election. "But not only did they not pay for the rights, they were making money off it!" she said.

Copyright: an Islamic perspective here, here and here
Copyright: a Jewish view here
See what copyright did to the Messiah here


Latest Copyright World

The IPKat's February issue of Copyright World , published by Informa, has just surfaced from beneath the pile of bills that inevitably follows his end-of-year excesses. What's in it, you ask? The answer is
* "Feeding the Frenzy", by the IPKat's former colleague Rajita Sharma together with Cynthia Kernick (both of Reed Smith). This is nothing to do with piranhas. Rather, it's a bit of friendly advice on what to do (and not to do) if you plan to make commercial use of a celebrity shot or still;

* "Copyright Goes to the Ball", by Freshfield Bruckhaus Deringer IP associates Paul Joseph and Giles Pratt. This piece seeks to review the key copyright cases of 2005 on the premise that copyright, the Cinderella of intellectual property, has taken centre stage.

* Martin Kretschmer (Professor of Information Jurisprudence at Bournemouth University) asks what you do with rights you don't need, questioning the validity of the old "more is better" knee-jerk philosophy.
The IPKat can't help wondering: if you have IP rights, you don't have to use them - but if you don't have any, you don't have the option of neglecting them either.

Monday, 20 February 2006

INSTITUTIONAL ROUND-UP


USPTO to double number of patent examiners

The Director of the US Patent Office has announced that the Office will recruit an extra 1,000 examiners over the next five years according to the Milwaukee Business Journal. This will represent a doubling of the Office’s examiner caucus [it’s not often that an English person gets the excuse to use that word]. It is hoped that this recruitment drive will help the Office to deal with its 600,000 patent backlog.

The IPKat says more power to the US Patent Office – so long as the patent fees don’t double to pay the new examiners’ salaries.

Is WIPO harming developing countries?

The Financial Times reports that Consumers International, an NGO, is claiming that developing countries are suffering as a result of implementing more stringent copyright laws than their international obligations demand. In particular, Consumers International alleges that the developing countries are being given bad advice by WIPO. This advice is allegedly being re-enforced by misleading WIPO model laws which include clauses that go further than countries’ international obligations and which fail to include permitted flexibilities and exemptions from protection. The problem is said to be particularly acute in the field of exemptions for educational use. According to CI:

“As a result, copyrighted educational materials in these countries are expensive and consumers are being priced out of access to knowledge.”

The IPKat says that these are serious charged indeed. He hopes that WIPO will make it crystal clear to all countries (including those who do not necessarily have the funds for expert legal counsel in the field of copyright) which of its policy statements correspond to legal obligations and which are recommendations only.

IAM


Latest IAM - with bonus

The February/March 2006 issue of Intellectual Asset Management, published by Globe White Page, carries a massive supplement entitled IP Value 2006. This supplement, subtitled 'Building and enforcing intellectual property value: an international guide for the boardroom', is an interesting collection of things every boardroom will indeed want to know about (transfer pricing, securitisation, proposed US tax reform, enforcement of US patents outside the US, outsourcing) together with things which - if they ever got as far as the boardroom - would be regarded with surprise, curiosity or alarm (how to file a patent in Venezuela, fighting pirates in Cyprus, limits to free speech in Argentine trade mark law).

The IAM itself reports on the evolution of the new terminology of "I-stuff" (a term the IPKat has yet to hear anyone use seriously; Merpel adds, don't search for "I-stuff" on the internet unless you've a strong stomach). There are also good reports on how US patent infringement cases are becoming fewer in number but more valuable and on the resurgence of IP in the Japanase economy.

Full contents of current issue here.

Sunday, 19 February 2006

CHRISTOPHER WADLOW COMES TO QMIPRI


Next Monday (27 February) Christopher Wadlow, Reader at Norwich Law School and author of The Law of Passing-off: Unfair Competition by Misrepresentation, is speaking at Queen Mary Intellectual Property Research Institute.


His subject is 'Unfair Competition Law in the European Community: Is harmonisation already upon us?' and the talk begins at 5.30pm.

All are welcome and as ever, there's no charge, but please contact Ilanah to confirm your attendance.

Saturday, 18 February 2006

TRADE MARK MUSINGS


More lemons

The IPKat would like to thank Udo Pfleghar, Robert Harrison, Tibor Gold and Chris Stothers and Dave Landau (in no particular order), all of whom came to the Kat’s aid in deciphering the Second Board of Appeal’s decision on the registrability of the smell of lemons. Dave writes

A very rough and ready and fast translation of the main parts of the Lemon decision from the OAMI BoA:

The applicant applied for the smell of lemon in respect of soles for shoes and footwear in general. The examiner rejected the application in that did not comply with article 7(1)(a) in relation to article 4 in that the sign described as the smell of lemon could not be represented graphically. The examiner invited the applicant to comment. The applicant replied by referring to case R 156/1988-2 - the smell of recently cut grass. The applicant claimed that the description of the trade mark, together with the indication of the type of mark, identified the mark perfectly. The applicant argued that the Regulation did not establish any specific requirement in relation to the graphic representation of smell marks that differed from that in relation to three dimensional and colour marks. The description of the mark was perfectly suitable for examination , search and registration for interested parties such as OHIM, applicants or potential opponents and the public at large. The smell of lemon is a smell that all the world recognises. The examiner does not allege that he does not know what the smell of a lemon is. The representation allows for the identification of the precise form of the smell. Since the representation is sufficient to understand the trade mark, the mark is capable of distinguishing the goods.

The applicant made comparisons with sound marks for which musical scores are accepted as being a means of graphical representation. The applicant also put in documentation relating to a new collection of shoes with various scents including one of lemon. These emanate from another proprietor.

The applicant requested a speedy resolution to the matter as it was suffering severe prejudice from competitors who were imitating its distinctive sign.

The examiner maintained the objection and the applicant appealed. The examiner made specific reference to the Ralf Sieckmann case.

The BoA stated that the appeal had to be rejected. The description of the mark does not fulfil the legal requirement of being graphically represented. The BoA said that the general question was whether in the case of smell marks is it possible to satisfy the requirement for graphic representation with a verbal description. The response has to be in the negative given that exactly the same question was dealt with by the ECJ in the Ralf Sieckmann case.

The BoA stated that non visible signs such as smell and taste can in theory be Community trade marks. It points out that there is, unlike in some parts of the world, no requirement that the trade mark can be seen. This is confirmed by the Ralf Sieckmann case. Smells, in spite of not being visible, can fulfil the requirement for having a distinctive character and so can be Community marks.

The description of a smell, even though graphic, is not an admissible representation of the sign, of the smell , since it is not sufficiently precise and objective. A description in words is a mere approximation of the smell, it is not sufficiently clear, precise and objective (as per para 70 of Ralf Sieckmann). The BoA rejected that claim of the appellant that the Ralf Sieckmann case should not be applied as the description "balsamically fruity with a slight hint of cinnamon" was not clearly associated to a smell unlike the applicant's mark, that case related to services rather than goods and the use of the trade mark to the services had not been shown. The BoA referred to the clear pronouncement of the ECJ that "in respect of an olfactory sign, the requirements of graphic representability are not satisfied by a chemical formula, by a description in written words, by the deposit of an odour sample or by a combination of those elements". Such a clear legal pronouncement by the highest court in the Community, in such clear and concrete terms, does not allow for any further analysis.
The IPKat reckons the Board is being really rather forthright here. It seems to be clearly stating that a verbal description of an olfactory sign will never be sufficient. This is a departure from the usual approach of not ruling out any type of sign from registration in theory, even though in practice it may be impossible to show an example of a sign that meets the requirements.

Questioning the average consumer

The Daily Telegraph reports that the best way to be good shopping decisions when it come to major purchases is to pay them little attention. Researchers at the University of Amsterdam that found that people made better purchasing decisions when they were distracted after being told about the qualities of the goods than when asked to make the decisions straightaway. Said Prof Ap Dijksterhuis:
"Your brain is capable of juggling lots of facts and possibilities at the same time when you let it work without specifically thinking about the decision. But when you are specifically thinking about a problem, your brain isn't able to weigh up as much information. I sit on things and rely on my gut."
The IPKat points out that this flies in the face of the received wisdom of the ECJ, that purchasers of expensive goods to which they pay particularly special attention during the purchasing decision are less likely to be confused by a potentially conflicting trade mark.

BERNE BLOCKBUSTER


Berne, Baby, Berne! It's the new OUP blockbuster

International Copyright and Neighbouring Rights: the Berne Convention and Beyond is the second edition of Sam Ricketson's scholarly work on the world's premier copyright treaty, which coincided with the Convention's centenary celebrations in 1986. Published by Oxford University Press, this work has grown in depth as well as length, having expanded to over 1,600 pages spanning two handsome volumes (right). Responsibility for the erudition has now been shared with internationally renowned US legal scholar Jane Ginsburg.

For the record, Sam Ricketson is Professor of Law at the University of Melbourne. Jane is the Morton L. Janklow Professor of Literary and Artistic Property Law, Columbia University School of Law, was Visiting Goodhart Professor of Law, Cambridge University Faculty of Law (2004-05). IPKat co-blogmeister Jeremy, who has pleasurable memories of Sam, then a keen young Herchel Smith Research Fellow at Queen Mary, burrowing into the recondite byways of Berne lore when working on the first edition, wishes the second edition well.

As the OUP website states:

"This magisterial commentary deals both with the history and with the modern application of the major international agreements affecting copyright and related rights. In particular, it analyses the interpretation and application of the following conventions: the Berne Convention for the Protection of Literary and Artistic Works 1886-1970, the Rome Convention for the Protection of Performers, Phonogram Producers and Broadcasting Organisations 1961, the WIPO Copyright and Performances and Phonograms Treaties 1996 and the TRIPS Agreement (so far as it affects copyright and related rights).

The organization of the text separates historical review from doctrinal analysis of the current application of the Berne Convention's provisions. The latter exposes gaps and ambiguities in the current text and, in a third section to each of the central chapters, considers the extent to which subsequent international instruments have resolved those questions. Issues concerning new technologies and digital networks thus receive in-depth treatment. The authors analyse questions of subject matter coverage, copyright ownership, duration, nature and scope of rights, and exceptions and limitations to copyrights protection.

Extensive analysis of private international law matters also figures prominently in this edition, with two chapters devoted to problems of international jurisdiction and choice of law".
Details: Price £225; current ISBN (ISBN-10) - 0-19-825946-8; future ISBN (ISBN-13) 978-0-19-825946-6. Rupture risk - nearly inevitable if you attempt to lift both volumes simultaneously.

Friday, 17 February 2006

YEDA TRANSCRIPT; PERKINELMER WINS; CROATS COLONISE VIENNA


Yeda Yeda Yeda

The ruling in Rhône-Poulenc Rorer International Holdings Inc and another v Yeda Research and Development Co Ltd [2006] EWHC 160 (Ch), which the IPKat blogged earlier today, is now available in full on BAILII.


Lacking the benefit of hindsight

GE Healthcare Ltd v PerkinElmer Life Sciences (UK) Ltd and another [2006] EWHC 214 (Pat), a Patents Court decision of Mr Justice Kitchin, has just surfaced via All England Direct.

GE sued PerkinElmer for infringement of a patent for a ‘scintillation proximity test’, which had a priority date of 18 August 1997. PerkinElmer, who sold an imaging system in the UK called ‘ViewLux' (right), together with a US company brought a counterclaim for revocation of the patent or for a declaration that the US company was entitled to the patent. Accordingt to PerkinElmer the patent was invalid because it wasn't novel and involved no inventive step having regard to common general knowledge. Kitchin J ruled that, even being careful to avoid hindsight reasoning, GE's invention was obvious in light of the general common knowledge and the patent would be revoked.

The IPKat doesn't believe that you can eliminate hindsight when considering inventive step. That's what makes it so annoying. If you agree, tell the UK Patents Office and they'll propose abolishing it.


Croats take Vienna by storm

The IPKat is delighted to learn that, by Vienna (Classification) Notification No.24, the World Intellectual Property Organization has announced that the Republic of Croatia has acceded to the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks.

Victorious Croats (left) will protect the figurative elements of Viennese pastries (right) as trade marks

The Agreement enters into force for Croatia, on 9 May 2006 - better known as The Day of the 5K Run at this year's INTA Meeting in Toronto.

22 Vienna members here
Figurative elements of Marx here and here

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