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.

Wednesday, 31 May 2006

MORGAN STANLEY TAKES ON MEOW


Morgan Stanley takes on Meow

The IPKat's friends Marty Schwimmer (Trademark Blog), Margaret Marks (of Transblawg fame) and Cedric Manara, not to mention the redoubtable Markenblog, all spotted the National Arbitration Forum UDRP decision of 22 May 2006 in Morgan Stanley v Meow, Claim Number FA0604000671304 (full text here).

To keep a long story short, the respondent, "Meow, Baroness Penelope Cat of Nash DCB", said it let Mr Woods (a human) use the mymorganstanleyplatinum.com domain name registration in providing a service. The Arbitration Panel said:

"Respondent maintains that it is a cat, that is, a well-known carnivorous quadruped which has long been domesticated. However, it is equally well-known that the common cat, whose scientific name is Felis domesticus, cannot speak or read or write. Thus, a common cat could not have submitted the Response (or even have registered the disputed domain name). Therefore, either Respondent is a different species of cat, such as the one that stars in the motion picture “Cat From Outer Space,” or Respondent’s assertion regarding its being a cat is incorrect.

If Respondent is in fact a cat from outer space, then it should have so indicated in its reply, in order to avoid unnecessary perplexity by the Panel. Further, it should have explained why a cat from outer space would allow Mr. Woods to use the disputed domain name. In the absence of such an explanation, the Panel must conclude that, if Respondent is a cat from outer space, then it may have something to hide, and this is indicative of bad faith behavior.

On the other hand, if Respondent’s assertion regarding its being a cat is incorrect, then Respondent has undoubtedly attempted to mislead this Panel and has provided incorrect WHOIS information. Such behavior is indicative of bad faith. See Video Direct Distribs. Inc. v Video Direct, Inc., FA 94724 (Nat. Arb. Forum June 5, 2000) (finding that the respondent acted in bad faith by providing incorrect information to the registrar regarding the owner of the registered name); see also Quixtar Invs., Inc. v Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that use of false registration information constitutes bad faith).

Respondent cites Morgan Stanley v Michael Woods, FA 604103 (Nat. Arb. Forum Jan. 16, 2005), in which the Panel found that Complainant had failed to prove bad faith registration and use. But that case must be distinguished from the present case, because in that case the Respondent was Mr Woods, and not a cat or someone who has misled the Panel by pretending to be a cat.

The Panel finds that Respondent’s assertions that it is a cat provide sufficient evidence to conclude that the Respondent registered and is using the disputed domain name in bad faith. And this despite the fact that the Panel, unlike Queen Victoria, is amused".

The Panel might be amused, but the two thoroughly articulate pussies who run this blog are not...

Feline vocalisation here and here
Teach your cat to speak here
Computer-generated talking cat on TV delights Iowa woman here
The Cat from Outer Space here

APPLICANT GUTTED AS SAUSAGE FAILS TO MAKE ITS MARK; NOW FOR SOME VEG ...


Applicant gutted as sausage fails to make its mark

Case T-15/05 De Waele v OHIM is the Court of First Instance (CFI)'s offering on Community trade mark law for today. De Waele applied to register as a three-dimensional mark an empty twisted sausage skin (right) for a variety of products. After the usual argy-bargy with the Examiner and the Board of Appeal, De Waele had got the mark registered only for milk products, including cheeses. This didn't satisfy him, probably because you can't hope to sell milk and cheese in an empty sausage skin and hope to get away with it. Anyway, he appealed to the CFI, seeking registration

"as far as it concerns ‘gut for making sausages’ in Class 18 or, at least, in so far as it concerns ‘gut for making sausages intended for professional buyers’".

Below: the three-striped sausage mark, much favoured by adidas

The CFI has stumbled over a few banana skins in its time, but it wasn't going to make any mistake here. Said the CFI, dismissing the appeal:
"25 The applicant complains that the Board of Appeal assessed the distinctiveness of the mark applied for in relation to the perception on the part of end consumers, even though it accepted that gut for making sausages is bought by those in the business.

26 In that respect ... in respect of goods which serve as packaging for other goods, it has been held that, even if, in principle, it is those in the business and not end consumers in general who acquire such goods, they none the less acquire them with a view to subsequent sales of the packaged goods to end consumers and that, accordingly, account must also be taken of the latter’s perception ...

27 The applicant’s argument that he would sell gut only to manufacturers of charcuterie cannot invalidate that analysis. It should be noted that end products which must be packaged adopt the shape of the packaging, so that a three-dimensional mark protecting the shape of the packaging may be used without distinction both as the mark of the packaging and the mark of the end products. Accordingly, if the packaging manufacturer owning the mark sells its goods to several manufacturers of the end product, as the applicant claims to do, that mark can be an indication of origin only in respect of the packaging, and only vis-à-vis manufacturers of the end product. In that case, consumers of the end products, faced with goods of the same shape but not of the same commercial origin, will not be able to establish a link between the shape of the goods and their commercial origin. On the other hand where, as in the cases resulting in the judgments in Brown cigar shape and gold ingot shape and Shape of a white and transparent bottle, cited above, there is only one manufacturer of the end products using the shape in question, that shape will be capable of being used, provided that it is sufficiently distinctive, as a mark of the end product.
28 The use of a mark as a mark in respect of packaging or as a mark in respect of the end products is a marketing choice made by the proprietor of the mark which is liable to be altered after its registration and cannot therefore have any bearing on the assessment of its registrability ...

29 Accordingly, even though the applicant states that he sells gut for making sausages to several manufacturers of charcuterie, it is perfectly possible for him to alter that choice once registration has been obtained by selling his product to only one manufacturer of charcuterie or by manufacturing his own. That would result in the shape registered for gut being used as a mark for charcuterie products packaged by him, without its distinctiveness vis-à-vis consumers of those goods having been examined".

Above, right: a sausage seeking to escape from the sizzling heat of Alicante

Pick the bones out of that, says the IPKat. Merpel adds, presumably the appearance of the 3D mark would depend on what the sausage manufacturers did with it after it left De Waele's hands; that's not what I'd call a trade mark.


Now for some vegetation ...

European Community Plant Variety Protection is a handsome and informative book which has recently been published by IP hot-shots Oxford University Press. Written and edited into impeccably lucid English, this tome is the work of the IPKat's friend Gert Würtenberger together with Bart Kiewiet and Paul van der Kooij, plus Martin Ekvad (whose name appears on the book's cover, in the list of contributors and as having contributed chapters 4 and 5, though his name is not on the OUP website).

According to the publisher's blurb,

"This book is intended as a practical guide to the European Community plant variety protection system under Council Regulation (EC) 2100/94. This system was introduced to enable breeders to protect in Europe new varieties of plants with a tailor-made intellectual property right. The plant breeding industry is an important sector in the European Community with an increasingly competitive atmosphere forcing breeders to protect their products and enforce their IP rights against competitors.

This book provides a systematic approach to the Community plant variety protection system. The authors explain how to obtain plant variety protection and how to enforce rights to that protection. They also consider various interpretations of the provisions of the Regulation as well as the strengths and weaknesses of the system.

The book covers the world's largest system for plant variety protection, and will be the only comprehensive up-to-date resource on Community Plant Variety Rights".
The book is not a light read; it is a very serious account of the law indeed. The IPat was surprised, indeed embarrassed, to discover quite how much plant variety protection law there is, and how sophisticated is the analysis of the issue raised that cannot conveniently be determined by general principles of intellectual property law. He congratulates all the contributors and the publishers for the effort they have expended and for the very high quality of the resulting work.

Bibliodata. Price £95 (hardback); ISBN-10: 0-19-928616-7, ISBN-13: 978-0-19-928616-4; Publication date 27 April 2006. xxxiv + 311 pages. Rupture factor: not heavy, though the book has some sharp corners ...

BALLAGH BLASTS THE TARDY STATE; AMBIGUOUS TO READ


Ballagh berates the tardy State

Deirdre Kilroy (LK Shields, Dublin) has told the IPKat about some juicy Irish litigation over the EU resale royalty right. Directive 2001/84, which requires EU Member States to legislate for artists to be able to receive a share of the resale of their art works. should have been implemented on 1 January 2006. The Irish - who in former times were said to have no word for "mañana" because that concept conveyed too great a degree of urgency - have still not implemented the Directive. Now artist Robert ("Riverdance") Ballagh has commenced legal proceedings against the State for its failure to implement the Directive on time, maintaining that he is facing financial loss. Counsel for Mr Ballagh says his client has a painting currently up for sale with a guide price of between €20,000 and €30,000, for which no droit de suite can yet be levied.

Below: Robert Ballagh's "Homage to Inges". An art critic writes, er .. it seems he's better at bosoms than he is at faces.

The action has been adjourned, but the IPKat hopes to bring you further news when it breaks. It is now accepted that any State's failure to implement a Directive may lead it to face an action for damages, but it seems a tragic waste of effort and resources to have to start suing governments when the law of droit de suite - whether it is a good thing or not - should take up very little legislative time and space, and when EU Member States weren't exactly caught off-guard by it, having five years to get their Act together.

Merpel adds, if you can organise five entries for the Eurovision Song Contest in the time you can't organise one small Bill, this speaks volumes for the superiority of private enterprise over public endeavour.

The IPKat and Merpel agree on something else: the IP Enforcement Directive provides for collective actions on behalf of aggrieved rights owners in infringement proceedings. They hope that forcing governments to implement IP legislation is also something that can be shouldered by collective actions rather than leaving it to the initiative - and the expense - of an individual litigant such as Mr Ballagh.

More on Robert Ballagh here
Find impoverished artists here


Ambiguous to read

The IPKat mentioned the other day how company name Helphire could be read either as help-hire (which is what it intended) or as hel-phire (which is how the Kat instantly visualised it); he asked readers if they know of any further examples of this phenomenon.

Well, first he'd like to thank all of his readers who sent in the URL of Powergen's Italian subsidiary, www.powergenitalia.com. He had no idea that quite so many people visited the blog ... Sadly, he has learned that the site is a spoof (this has the regrettable consequence that he must now re-write one small chunk of his lecture notes). Still, he thanks Jonathan Moore for two further URLs, http://www.whorepresents.com/ and http://www.ipanywhere.com. A slightly longer list of domain names that don't work has been provided by Philip Cooper (Crossguard). Many thanks to you both.

Tuesday, 30 May 2006

FLIGHT DATA PACT SHOT DOWN; LATEST IPQ


Flight data pact shot down

Right: Luxembourg judges return from a raid on the Commission's Belgian HQ

The BBC has just reported this morning's ruling of the European Court of Justice in Joined Cases C-317 and 318/04 European Parliament, supported by the European Data Protection Supervisor v European Council, supported by the European Commission that the EU-US agreement requiring airlines to transfer passenger data to the US authorities was not founded on an "appropriate legal basis". Till now, within 15 minutes of each flight, European airlines have given US authorities 34 items of personal information concerning each passenger, including their names, addresses and credit card details. Washington has warned that it will impose heavy fines and deny landing rights for any airline failing to comply with the agreement and that passengers will be subject to long security checks on arrival, if the data is not sent in advance.

The US says this data is used to combat terrorism, but the European Parliament has consistently opposed handing over the passenger details to the US, arguing that the US did not guarantee adequate levels of data protection.

The ECJ has given EU Member States until 30 September 2006 to find a new legal solution "for reasons of legal certainty", so there should be no short-term effect on travellers. The European Commission took its decision to permit the supply the information under the EU Data Protection Directive, but the court said that the directive does not govern the transmission of data collected for security purposes.

Above: the Europeans have proved they mean business when protecting personal data.

Given the choice, the IPKat would prefer to know his flight was terrorist-free,even if it meant him ending up on a mailing list which delivered him unwanted advertisements. Merpel, however, would prefer to know that the Parliament and ECJ really were keeping a check on what the European Commission was up to, since it's not much more accountable than the government in China (see today's earlier blog).

Right: a nightmare for personal data-gathering - Tibbles has a thousand names ...

Full text of Directive 95/46 on the protection of individuals with regard to the processing of personal data and on the free movement of such data here.
Further reports and comments in the EU Observer, WSTM-TV and the Independent Online.
Naming of cats here.


Latest IPQ

Issue 2 for 2006 of the sweet little purple-and-white Intellectual Property Quarterly, published by Sweet & Maxwell, has now been published. The IPKat notes some jolly good stuff in it too, even if the IPQ is following the modern trend of allowing articles to carry titles that are almost as long as the articles themselves.

Catherine Seville (right) has written a challenging and entertaining piece on how copyright policymakers can learn more from 19th century history than from contemporary economics;Duncan Matthews has fastened his steely intellect on shifts in TRIPs policy regarding affordable access to expensive medicines. Then there's Muriel Lightbourne, on the implementation of the FAO treaty and IP rights. Not to forget pieces by Jakkrit Kuanpoth (patents and access to medicine in Thailand) and Arye Schreiber (a plea for English law to grow up and recognise a tort of invasion of privacy) ...

CHINESE PIONEER HOLISTIC APPROACH TO PIRACY; FROM APOPLEXY TO APOTEXY


Chinese pioneer holistic approach to piracy

This piece from The Age is one of the most astonishing pieces that the IPKat has ever read. To keep a long story short, not content with infringing IP rights on an ad-hoc basis, one or more enterprising Chinese thieves have duplicated an entire business, setting up a counterfeit NEC operation that not only ran its own manufacturing operations but even "licensed" its IP to other local enterprises.

Left: Rest in Peace, industry as we used to know it ...

The IPKat cannot believe that, in a repressive regime in which one can scarcely visit a website without attracting the attention of the authorities, an entire operation of this nature can have been unlawfully duplicated without the knowledge, if not the blessing, of the Chinese government. Everyone seems to be so terrified of offending the Chinese, but they're not the slightest worried about offending us because, it appears, while they are happy to take our technology and our money, they respect neither us nor our culture. To save time and trouble, why don't we just hand over all our technology, all of our know-how and all of our money right now, and then go and liquidate ourselves? Merpel agrees and wants to know, are we the victims of our greed, our naivety or our plain stupidity?


From apoplexy to Apotexy

Having let of rather too much steam, the IPKat thinks it's time to calm down now, so what more appropriate for relaxing the mind than a complex patent post-infringement appeal? Somehow, in the excitement of last week, the IPKat missed this gem from BAILII: the decision of the Court of Appeal for England and Wales in the most unusual case of SmithKline Beecham Plc and others v Apotex Europe Ltd and others (heard by the Chancellor Sir Andrew Morritt and Lords Justices Moore-Bick and Jacob). This ruling, blessed with the neutral citation [2006] EWCA Civ 658, was given on Tuesday 23 May and dealt with (i) an appeal by Apotex and others against the decision of Mr Justice Lewison that their claims in restitution and for the recovery of third party loss had no real prospect of success and (ii) a cross-appeal by SKB against the decision that a claim in estoppel was arguable and should go to trial.

The ancient history of this case was that SKB sued Apotex for infringing its paroxetine hydrochloride patent. Apotex denied infringement and attacked the patent's validity. SKB then pressed for, and got, an interim injunction ordering Apotex not to deal in any similar pharmaceutical preparation; in return, SKB gave a cross-undertaking in damages. The patent was later held valid, but to SKB's disappointment Apotex was held not to have infringed it.

Apotex and its Canadian manufacturers, who were not parties to the original action, then sought damages on the cross-undertaking. Lewison J ruled that the Canadians could not recover the losses they sustained and that Apotex could not claim their losses as third party losses under the cross-undertaking.

He also said that he couldn't rule in summary proceedings on Apotex's claim that SKB was estopped from denying that the Canadian companies were entitled to claim their losses under the cross-undertaking, since that would involve a mini-trial. The Canadians argued that they were entitled to recover in restitution that part of SKB's extra profits that they would have enjoyed themselves, if the interim injunction had not been made, and that the court had power to ensure that a litigant who had used its procedures in order to gain an advantage and then lost on appeal would disgorge that benefit to a party adversely affected by the "wrongful order". Apotex argued that a party identified in the cross-undertaking as one whom the injunctor would compensate could claim compensation not only for itself having been prevented from doing the restrained acts but also for others who were adversely affected by the injunction. SKB argued that (i) inter partes estoppel could not operate to expand or contract the effect of a court order, (ii) an estoppel could not be used as a key element of a claim and could not operate to create a legal relationship where there was none, and that (iii) in any event the evidence put before the court was inadequate to justify estoppel.

The Court of Appeal dismissed Apotex’s appeal but allowed SKB’s cross-appeal. In its view

* there was no rational basis for any third party to claim restitution of benefits that accrued to a "wrongful" injunctor and no action lay by a party, except in very limited exceptions involving abuse of process, for recompense for damage caused by litigation itself.

* SKB had undertaken to the court to compensate Apotex, but that did not create any contract between those parties.

* SKB’s cross-undertaking in damages was given to the court, not to Apotex. Whatever passed between the parties could not affect the scope of what was actually undertaken, or the scope of the injunction itself.

* the Canadians sought to use estoppel in order to create a legally binding agreement where there was none and no intention to create one, which estoppel could not do.
Left: the Mounties may get their man, but they don't get their damages on a cross-undertaking given to someone else.

The IPKat agrees with the Court of Appeal's ruling, which was crispy articulated for the court by Lord Justice Jacob. However, he has some sympathy with the trial judge for not wanting to strike out the estoppel argument. While it didn't seem to him to be an argument that would work, the very fact that it took the Court of Appeal 27 paragraphs in order to deal with it does rather suggest that it was fairly arguable-ish.

Monday, 29 May 2006

PATENT WORLD; DESPERATELY SEEKING ...



Patent World

The June 2006 issue of Patent World, published ten times a year by Informa, has materialised a couple of days early. The IPKat liked the feature on the limits to rubber-stamping patent dispute settlement agreements by the Addleshaw Goddard triumvirate of Brian Whitehead, Stuart Jackson and Richard Kempner - the takeaway message is that you can't "settle" a dispute on terms that resurrect a patent that the trial court has invalidated (but does it really take three men to write fewer than two pages of prose, asks Merpel).

There's also a neat piece by CPA's Aileen Buchanan, rebranding "patent trolls" as "non-patenting entities" (or NPEs) and looking at patent policy in the light of the recent eBay/Mercexchange ruling (noted here by the IPKat).


Desperately seeking ...

IPKat co-blogmeister Jeremy has mislaid his copies of issues 6 and 7 of Intellectual Asset Management and 176 of Trademark World (April 2005). Does anyone one have a spare copy they don't mind parting with? If so, please let Jeremy know here.

AT LAST, A FUN I.T. GLOSSARY; OH, HELL!


At last, a fun IT glossary

The IPKat has taken to dipping into International Technology Law & Business: A Practical Glossary, compiled by lawyer Colm MacKernan and published by Aspatore Books.

Colm practises with the quite original firm of London-based solicitors known as Origin. When he's not writing IT glossaries, he represents high-technology companies on complex contentious and non-contentious international matters. In keeping with his international ethos, he is qualified to practise in England & Wales, the Republic of Ireland, New York and the District of Columbia Bars as well as before various US Federal Courts.

The book itself contains an alphabetical list of terms which include acronyms, general legal terminology, IP- and IT-specific legal terminology and usage which has developed through the exigencies of practice and commerce. Definitions and explanations are succinct and frequently cross-referenced, often helpfully garnished with the addition of the author's sometimes tongue-in-cheek personal take. The IPKat's favourite entries include Easter Bunny, Epistolary Incontinence, the Lake Wobegon Effect and the No-Horse Plaintiff.

Book details: Publication date 2006. ISBN: 1596224053, 312 pages. Price from the publisher's website US$49.95 plus $3.95 shipping. Paperpack. Rupture factor: negligible - this tome is small and lightweight.


Oh, Hell!

The ethos of many a company name depends on how you read it. A perfect example of this is found in today's Telegraph, which reports on a takeover bid for vehicle hire and accident management company Helphire by CVC Capital Partners. The name Helphire is plainly derived from "help-hire", but the IPKat read it as "hel-phire" (= hellfire). He wonders is his readers have any more examples of this phenomenon. If so, please post them below or email to him here.

Sunday, 28 May 2006

GUERNSEY OPENS IP OFFICE; EURODEFENCES AGAIN


Guernsey sets up IP office

The IPKat has learned from his friend Alex Turnbull that the Bailiwick of Guernsey Intellectual Property Office will be opening on 1 June 2006 to receive trade mark registrations, although designs will remain a re-registration process and patents still await further legislation.

Background on Guernsey here and here
Guernsey cows here


Doncaster 1, Bolton 0

The IPKat's attention has been drawn to Friday's decision of the Court of Appeal [2006] EWCA Civ 661 (Lord Justices Mummery and Longmore, Mr Justice Lewison) in Doncaster Pharmaceuticals Group Ltd v Bolton Pharmaceutical 100 Ltd. This is the second recent Court of Appeal ruling that summary judgment on an IP infringement action may not be given where a Eurodefence is raised, the first being Sportswear v Stone Style, noted here by the IPKat). The IPKat hopes to make further comments on this case when he's had a chance to read it carefully. In the meantime, he offers you these words from Lord Justice Mummery:

"I doubt, however, whether the decision to have or not to have a trial of the action is much affected by the fact that it is heard by a specialist judge. I see no objection, for example, to the use of judges or deputy judges, who are not intellectual property specialists, to hear and decide applications for summary judgment in this field. I mention this topic and wish to say a little more about it for two reasons. First, as a result of hearing some recent appeals against the grant of summary judgments in a variety of areas of law, I have some general concerns about the use of the summary judgment procedure. Secondly, I am aware of views recently aired in the profession questioning the "efficiency" of using non-specialist judges for summary judgment applications in intellectual property cases.

In my opinion, the decision whether or not an action should go to trial is more a matter of general procedural law than of knowledge and experience of a specialised area of substantive law. All judges, specialist and non-specialist, are experienced in procedure and practice. Procedural justice is the judicial specialisation par excellence. It may take a little longer for the application to be opened to a non-specialist judge, but that may be no bad thing. I am confident that all judges to whom such applications are likely to be made will have the necessary procedural expertise to sort out those cases that can properly be disposed of without a trial. (I add that the leading practitioners' text book on trade mark law (Kerly 14th edition 2005) contains no discussion of summary judgment procedure in infringement actions. That is an indication that the decision whether or not to grant summary judgment is more one of general procedure and practice than specialist expertise in substantive trade mark law.)

I also wish to say a few words about the litigation expectations and tactics of claimants and defendants. Claimants start civil proceedings (including intellectual property actions) in the expectation that they will win and often in the belief that the defendant has no real prospect of success. So the defence put forward may be seen as a misconceived, costly and time-wasting ploy designed to dodge an inevitable judgment for as long as possible. There is also a natural inclination on the part of optimistic claimants to go for a quick judgment, if possible, thereby avoiding the trouble, expense and delay involved in preparing for and having a trial.

Everyone would agree that the summary disposal of rubbishy defences is in the interests of justice. The court has to be alert to the defendant, who seeks to avoid summary judgment by making a case look more complicated or difficult than it really is".
IPKat co-blogmeister Jeremy raised the issue of whether specialist judges should be deployed in applications for summary judgment in an article published in the first issue of the Journal of Intellectual Property Law and Practice (you can read it in full here) and he is most unconvinced that the questions he has raised have been fully answered here. He also wonders how relevant Lord Justice Mummery's personal experience is, given that His Lordship has been sitting in the Court of Appeal for the past decade, while great changes have (i) actually or (ii) apparently occurred at trial level in the High Court.

Left: the IPKat is roaring for further review of this very difficult issue

The IPKat calls for a full and thorough review of (i) the deployment of specialist judges and (ii) the availability of Euro-defences as a bar to summary judgment in IP infringement actions. If specialist judges make no difference here, perhaps we can dispense with them in all cases. And if Eurodefences can block IP protection, perhaps a Brussels-led rethink of the balance between IP protection and competition law is needed.

THINKS AND DRINKS



June EIPR

It’s not even the bank holiday, and yet the June European Intellectual Property Review is already gracing subscribers’ doorsteps. Inside they’ll find:

* Simon Chapman and Jenny Holmen (FFW) on new gTLDs and what they mean for IP owners;
* IPKat co-blogmeister Ilanah on the concept of embellishment in trade mark law:
* Tony Ciro (La Trobe University) and Mark Fox (Indiana University) on competition v copyright protection in the digital age:
* Alexandra Sims (University of Auckland) on the public interest defence in copyright law:
* Vanya Bromfield and John Runeckles (White and Case) on securitisation of IP:
* Michele Boote (Addleshaw Goddard) on the ECJ’s Picasso decision;
* Julia Clark (Hogarth Chambers) on the Court of Appeal in Philips v Remington;
* Gunter Poll (Rechtsanwaltskanzlei Poll & Ventroni) on technologically new types of exploitation under German law;
* The usual case notes and book reviews.


Desperately seeking beer

No, the IPKat hasn’t finally hit the bottle. Instead, he’d love to get his paws on an English version of the Finnish Supreme Court’s judgment in the Budweiser case. If anyone can help him out, please drop him an email here.

OCH IP; COPYRIGHT WORLD


Och IP

"Och aye" is about the only Scottish lingo the IPKat knows, so he's very grateful to leading Scottish intellectual property practice Maclay Murray & Spens for publishing "A Guide to Scottish Court IP Jargon". This handy pocket guide has getting on for 20 pages of terms, most of which are not IP-specific and will be helpful whatever your legal interest. Some terms are "Scottish to English", others are "English to Scottish". The IPKat is desperately impressed. Merpel, however, will take some persuading before she utters in court the words "awa' an bile yer heid" (politely translated as "get lost").

If you want a copy, why not send MMS' head of IP Gill Grassie an email? If you ask her very nicely, the IPKat's sure she'll let you have one.

How to speak Scottish here
Haggis website here (adult advisory)


Copyright World

The IPKat's copy of the May issue of Copyright World, published ten times a year by Informa, leads with a feature by the Field Fisher Waterhouse pair Nick Rose and Louisa Albertini on the problems faced by copyright owners who bring infringement actions against competitors who are marketing similar works (one problem, Merpel notes, is that the fact that a competitor's work is similar doesn't mean it's a copyright infringement ...).

Right: peas in a pod may be similar, but need not be infringing ...

There's also a note on the US "thumbnail" litigation in Perfect 10 v Google by Daniel Glazer and Karina Camacho (Sullivan & Cromwell), in which a California Federal District Court ruled that Google's incorporation of miniaturised images of photographs into its Image search facility can be an infringement of copyright, althou the framing and linking to full-size images would be unlikely to be either direct or contributory infringement.

Also of note is a neat warning by Robert Watson and Stephen Carter (Mewburn Ellis) on the "first disclosure" rule for the protection of unregistered Community designs.

Friday, 26 May 2006

ZYWIEC ANTI-COUNTERFEITING PARODY; FAKIN' IT



Zywiec anti-counterfeiting parody

The IPKat's Polish friend the talented Mr Rychlicki has sent him this video clip of an anti-counterfeiting parody which is based on an advertising movie made by the Polish brewery that owns the ZYWIEC trade mark for its apparently delicious beer. Says Tomasz,

"their whole campaign was based on the comparison that there may be different beer brands but they are almost as good as "Zywiec" and this "almost as ..." means a lot".
Tomasz also mentions this clip on his website here.


Fakin' it: plagiarism in Gateshead

The Second International Plagiarism Conference 2006 takes place in Gateshead (North East England) at The Sage, from 19 to 21 June 2006. According to the conference webbie:
"The 2nd International Plagiarism Conference, which is being managed by Northumbria Learning, aims to highlight the many and varied approaches to the issues being adopted by universities and colleges both in the UK and further afield. The conference will again provide delegates with many opportunities to discuss and debate the complex issues of plagiarism in a convivial and stimulating forum.

Themes to be covered during the conference include managing change in institutional plagiarism practice and policy, embedding plagiarism, plagiarism and institutional risk management and ethics in teaching, learning and assessment".
Programme here.

A FATE WORSE THAN BETH; PEOPLE'S TRADE AGREEMENT


A fate worse than Beth

Yesterday evening, under the auspices of the Institute for Public Policy Research, IPKat co-blogmeister Jeremy attended a presentation by New York University Law School's Professor Beth Noveck, "The Peer to Patent Project: Community Patent Review". A swift but inattentive reader, Jeremy saw the words "Community patent" and opted to attend in the comfortable knowledge that he would be learning something about Community patents. Fortunately, he came away with something far more precious.

Professor Noveck treated her small but select audience to a magnificent articulation of two things: (i) the desirability of involving a wider community than merely patent examiners in the assessment of the validity of patent applications, particularly with regard to prior art and (ii) the feasibility of doing so. Citing instances of peer power being harnessed by modern electronic media - the best example being Wikipedia - she then explained the basis of a pilot study to be undertaken in the United States. Professor Noveck's presentation was followed by a supporting talk by Roger Burt (IP law counsel, IBM Europe) on why peer-to-patent review of patent applications was worth attempting in an effort to secure fewer, but clearer and more presumptively valid patents.

The IPKat says, there's a lot to be said for this imaginative attempt to speed up patent examination while also making it more reliable. Leaving things the way they are now, not just in the US but wherever patent examiners are overworked and under-resourced, would be a fate worse than Beth.

Right: it's a dog's life for patent examiners ...

Merpel agrees: the UK Patent Office already supports a web-based scheme for interested members of the public to comment when the Comptroller is asked to give a non-binding opinion on a patent's validity or on an infringement issue. While it's early days yet, she's sure that this will yield more than a cosmetic dividend.

Peer to patent project here


People's Trade Agreement

The IPKat's amico italiano Andrea Glorioso has drawn his attention to the People's Trade Agreement. Struck between the Presidents of Bolivia, Cuba and Venezuela on 29 April, the PTA has some content which is of interest/relevance to those of us who are concerned with IP.

Right: Bolivian president Evo Morales, a leading force behind the FTA

Andrea suggests we look in particular at

* Article 3 (transfer of technology)

* Article 4 (exceptions to copyright? mass acquisition of rights by the government?)

* Article 10 (protection of cultural diversity? copyright? traditional knowledge and traditional cultural expresions?)

* Article 11 (broadcasters' rights?)

* Article 13 (again, technology and know-how transfer).
The accompanying Action Plan also features those two popular gate-crashers at the Great IP Banquet, traditional knowledge and traditional cultural expressions.

Left: will fat cats get a raw deal from the FTA?

Not yet having had the time to read it himself, the IPKat suggests we bear this in mind, read it carefully and judge it on its merits. If its content is inimical to IP or misconceives its rationale, we should not shout it down but should carefully address the issues it raises. That way we'll all be the wiser. Merpel says, is this the way that developing countries will seek to face down US-friendly Free Trade Ageements? Let's watch this space and see what happens.

Traditional cultural expressions here (not for those of a delicate disposition)

HAVE YOU CHANGED YET? WHOOPS, IT'S THAT IP REVIEW AGAIN


Have you changed yet?

An info-note from OHIM President Wubbo de Boer reminds the IPKat that, while all OHIM websites ending in .int will carry on working for the time being, they will be replaced by .eu top level domain names at the end of the transition period. At the end of this period (why won't they tell us now when that date is, moans Merpel) the .int addresses will cease to function, so let's all change them now. The main Office domain name will be www.oami.europa.eu; emails will have to be sent to name.surname@oami.europa.eu - get it?


Whoops, it's that IP Review again

Sorting out his pile of papers, the IPKat has just rediscovered his copy of the Spring 2006 issue of IP Review, which he read on the flight to Toronto for the International Trademark Association Meeting and then promptly mis-filed. It's grown to 44 pages (if you count the covers as pages), leading with an article on eBay's "community approach" to IP protection.

The IPKat thinks it's quite fashionable nowadays to knock eBay, since it's used by many people for selling counterfeit or infringinging products. In truth, however much eBay does - short of closing itself down - will never be enough to satisfy any business that finds itself competing with illicit products sold via internet market sites. However, the level of eBay's concern and its willingness to talk with IP owners is a reassuring step in the right direction.

There's also a very pro-patent exploitation piece by Thinkfire V-P Peter Spours and some cute photos from the CPA/IAM "The Business of IP" conference.

For details of this issue and for archival materials from earlier issues click here

Thursday, 25 May 2006

SHARED NAMES


The problem

The Prague Daily Monitor reports that Anheuser-Busch has triumphed in the Hungarian leg of the Budweiser saga. The Court of Appeals has ruled that Budweiser is not a geographical indication because it does not refer to the place where Budvar's beer is produced, since the official name of the town in southern Bohemia is Ceske Budejovice, not Budweis, which is the German translation.

The IPKat notes that the Budweiser case demonstrates the immense difficulties that can occur when traders coincidentally or even deliberately but in goods faith select the same names.

The answer


The IPKat observes that these problems will be addressed in a forthcoming conference run by CLT on 20 June at the Cafe Royal, London. The conference benefits from a wealth of top-class speakers drawn from practice (the bar and solicitors), OHIM, the Patent Office and academe. Its aims and objectives are as follows:

"The European Court of Justice has told us that the essential function of a trade mark is to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin.

In other words, a trade mark must unequivocally point to the goods of one undertaking to do the job of being a trade mark. As consumers we know this to be the case. A mark which we gives us an unclear message about who is responsible for the goods that we are buying will be of little use when selecting products or trying to make a repeat purchase of previously satisfactory goods.

To best fulfil this function, it might be thought that a single mark should only be used by a single owner and that the concept of ‘Sharing Names’ would conflict with this function. To some extent, this conflict has been recognised. The growth of protection against trade mark dilution on dissimilar goods, and widening understandings of confusion and passing off, have limited the situations in which it will be permissible to use a mark which is the same or similar to another trader’s marks on dissimilar goods.

In the real world though, things aren’t so simple. Some people argue in favour of sharing names. They claim that there are an infinite number of verbal combinations that could be used as trade marks and that, therefore, there is no problem in granting a ‘monopoly’ in a word to an undertaking. While this is true in theory, there are clearly some trade marks which are more effective than others and, in the interests of competition, these marks may have to be shared.

Away from the theory, there are practical reasons for recognising that it is sometimes fair to allow more than one trader to use the same mark. In some cases, undertakings will begin to use the marks in circumstances where they could not reasonably be expected to know of the existence of the other undertaking. This becomes a particular problem with the growth of the internet, where the same mark may unexpectedly come into conflict in completely unconnected jurisdictions. In other cases, such as those associated with family fallout, there may be good reasons for allowing both sides to use the personal names of someone connected with the undertaking. The question in these cases is how these marks can be shared in a way that causes (i) the least harm to the businesses of the respective users and (ii) the least consumer confusion?

In other cases, such as in co-branding and ingredient branding situations, and in cases concerning collective marks, both parties are happy to share the marks. The challenge then is once again to avoid consumer confusion, and also to ensure that the sharing takes place under an agreement that has sufficient safeguards in place if relations turn sour.

This conference analyses the legal problems faced by those who want to, or have to, share names. It aims to suggest practical solutions to these problems, and tips for avoiding them in the first place.

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