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Wednesday, 12 November 2008

CFI ducks patent challenge, dismisses Lego appeal

The Court of First Instance of the European Communities (CFI) this morning gave its ruling in Case T‑270/06, Lego Juris A/S v Office for Harmonisation in the Internal Market, Mega Brands, Inc. (intervening). This was an appeal from OHIM's rarely-constituted Grand Board of Appeal. The Grand Board had upheld the decision of OHIM's Cancellation Division to cancel the registration of Lego's three-dimensional brick (right) as a Community trade mark for goods in Class 28 (games and playthings) on the grounds that (i) the mark consisted exclusively of the shape of goods that was necessary to achieve a technical result (Regulation 40/94, Article 7(1)(e)(ii)) and that (ii) the registration of a mark that was absolutely precluded from registration on that ground could not be saved by distinctiveness acquired through use under Article 3 of the same Regulation.

After admitting in evidence two fresh items that were not before the Grand Board -- subsequent judicial rulings from Germany and Hungary -- the CFI addressed the substantive issues and dismissed Lego's appeal. The appeal hinged on two pleas. The first was that the Grand Board had misapplied the absolute bar under Article 7(1)(e)(ii); the second was that the Grand Board had failed to identify correctly the nature of the trade mark itself.

As to Article 7(1)(e)(ii), the CFI said:

"37 ... the applicant essentially complains that the Grand Board of Appeal misinterpreted the scope of Article 7(1)(e)(ii) ..., and in particular the scope of the terms ‘exclusively’ and ‘necessary’, by considering that the existence of functionally equivalent alternative shapes using the same technical solution is irrelevant for the purposes of the application of that provision.

38 ... the word ‘exclusively’ ... must be read in the light of the expression ‘essential characteristics which perform a technical function’, used in paragraphs 79, 80 and 83 of Philips. ... the addition of non-essential characteristics having no technical function does not prevent a shape from being caught by that absolute ground of refusal if all the essential characteristics of that shape perform such a function. Accordingly, the Grand Board of Appeal was right to analyse the functionality of the shape at issue by reference to the characteristics which it considered to be essential. It must therefore be held that it correctly interpreted the term ‘exclusively’.

39 ... the expression ‘necessary to obtain a technical result’ ... does not mean that that absolute ground for refusal applies only if the shape at issue is the only one which could achieve the intended result. .... Accordingly, in order for that absolute ground for refusal to apply, it is sufficient that the essential characteristics of the shape combine the characteristics which are technically causal of, and sufficient to obtain, the intended technical result, and are therefore attributable to the technical result. ...

40 ... contrary to what the applicant claims, the Court of Justice, at paragraphs 81 and 83 of Philips, dismissed the relevance of the existence of ‘other shapes which could achieve the same technical result’, without distinguishing shapes using another ‘technical solution’ from those using the same ‘technical solution’. ...

43 ... Article 7(1)(e)(ii) ... precludes registration of any shape consisting exclusively, in its essential characteristics, of the shape of the goods which is technically causal of, and sufficient to obtain, the intended technical result, even if that result can be achieved by other shapes using the same or another technical solution".
As to the alleged failure to identify the characteristics of the mark correctly, the CFI said:
"70 ... the determination of those characteristics takes place, in the framework of Article 7(1)(e)(ii) ..., with the specific aim of examining the functionality of the shape at issue. The perception of the target consumer is not relevant to the analysis of the functionality of the essential characteristics of a shape. The target consumer may not have the technical knowledge necessary to assess the essential characteristics of a shape and therefore certain characteristics may be essential from his point of view even though they are not essential in the context of an analysis of functionality and vice versa. Accordingly, ... the essential characteristics of a shape must be determined objectively ..., on the basis of its graphic representation and any descriptions filed at the time of the application for the trade mark.

72 ... the applicant complains that the Grand Board of Appeal failed to identify the essential characteristics of the shape at issue and that it did not examine the shape at issue, but the Lego brick as a whole instead, including in its analysis invisible features such as the hollow underside and the secondary projections.

73 In this respect, it is apparent from the case-law that only the shape as reproduced ... above must be the subject-matter of the examination of the application for registration .... Since the function of the graphic representation is to define the mark, it must be self-contained, in order to determine with clarity and precision the precise subject of the protection afforded by the registered mark to its proprietor .... In the present case, ..., it is on the basis of that representation alone that the essential characteristics must be identified.

74 It is apparent ... that the Grand Board of Appeal did indeed examine the Lego brick as a whole and in particular identified ... the invisible hollow underside and secondary projections on the representation of the mark at issue as essential characteristics forming the subject-matter of the examination.

75 None the less, ... that analysis also includes all the visible elements on the graphic representation ... each of which, according to the Grand Board of Appeal, fulfils specific technical functions ... there is nothing in the file that calls into question the accuracy of the identification of those characteristics as essential characteristics of the shape at issue. ...

84 ... the applicant claims that the Grand Board of Appeal’s argument that a monopoly on a technical solution could be obtained by means of registering all shapes using that solution is unrealistic in the light of the requirements concerning distinctive character. However, even if the Court had to consider that the registration of such shapes is unrealistic, that would not call into question the finding that the shape at issue is functional. The applicant’s argument must therefore be rejected. ...

87 ... the applicant claims that its competitors do not need to copy the shape of the Lego brick in order to apply the same technical solution and that, in the absence of any risk of creation of a monopoly, Article 7(1)(e)(ii) ... does not apply. However, that argument is based on the erroneous assumption that the availability of other shapes incorporating the same technical solution demonstrates that the shape at issue is lacking in functionality, whereas ... according to Philips, the functional shape itself must be available to everyone. That argument must therefore be rejected."
The IPKat was hugely impressed by the range and subtlety of Lego's arguments, for which you have to read the judgment in full in order to gain a full appreciation of them. It seems to him, though, that (as sometimes happens) what Lego needed was better facts rather than better arguments. Merpel notes that the CFI was asked to draw a comparison between trade mark law and patent law, invoking the notion of the "technical solution". Prudently, given the huge headache this term has given European patent lawyers for the past 20-odd years, the CFI declined to take up this exciting jurisprudential challenge. It might make a good PhD thesis though.

Lego bricks here
Another brick in the wall here


Anonymous said...

Jeremy may I ask, who are these "European patent lawyers" you imagine to be suffering a 40 year long continuous "huge headache"? Do you mean the small number of UK lawyers with an interest in "European" patents, or do you mean UK-based European patent attorneys? Not sure such persons would feel comfortable to be announced as "European patent lawyers" given that, in the UK, "European" usually means "mainland European" and lawyer means solicitor or barrister. Frankly, I doubt there are any real "European patent lawyers" that have ever suffered a huge headache because of the presence in the EPC and its Regs of the word "technical". Now wot I fink is that "technical" is actually the cure for a lot of headaches just at the moment, at the CAFC and SCOTUS.

Jeremy said...

Dear anonymous,
From the irritable manner of your comment and the nit-picking nature of your content, I would infer that you are a UK-qualified patent attorney who got out of the wrong side of bed this morning.

The adjective "European" was intended to qualify "lawyer", a term that I use as a generalisation which embraces all those whose activities embrace the law -- whether as solicitors, barristers, patent attorneys, academics or paralegals.

The word "headache" is used metaphorically and does not describe a physical malaise.

If "technical solution" is a panacea rather than a headache, (i) why do so many people argue as to what, precisely, it means and (ii) why doesn't everyone instantly and happily perceive, in each computer software or business method related patent application, those elements that constitute a technical solution and those that do not?

Anonymous said...

Well Jeremy, a lot of people spend a lot of time arguing what is or is not obvious, but nobody suggests that the word "obvious" is out of place as a touchstone of patentability. Can't myself see why "technical" can't stand alongside "obvious". The US has "useful arts" and one of the Bilski dissenters construes "useful arts" as "technical". There might be a lot of argument, where you're sitting, what "technical" means. Where I am, there is a level of intelligent and constructive clarifying argument at TBA level that's appropriate to its crucial importance as a boundary line of patent eligibility. Hasn't your colleague David Pearce recently concluded that the Brimelow referral is built on sand? Sorry that I came across as irritated but, frankly, that's what I am. Never mind. That's what blogs are for, no?

Jeremy said...

Dear anonymous,
I concede that no-one seriously suggests that the word "obvious" is out of place as a touchstone of patentability. This doesn't mean that it doesn't give people substantial headaches, not least because (i) the judges find a need to keep reformulating "obvious" in terms that seek to imbue this manifestly subjective concept with layers of pseudo-objectivity and (ii) because, even once you have a (temporarily, it seems) agreed legal formula for what is obvious, there then follows a grand fight as to whether a disputed claim is obvious in the light of expert evidence, commonsense, general knowledge, normal lab practice, commercial success, hindsight, prejudice among those skilled in the art, not to mention what the Patents Court trial judges and their appellate Lords and Masters had for breakfast. Now that's what I'd call a headache -- at least if I were a litigant who had to pick up the tab.

At least we agree on one thing -- this is indeed what blogs are for! Thanks for taking the time and trouble to give us your thoughts.

Anonymous said...

Jeremy, I was hoping you would write something like that. The EPO deals with obviousness in about 30 minutes, after working through all other validity issues. No headache on obviousness there then, and yet the English litigation community gets the collywobbles anyway, perhaps because the billable hours are so small. Now we're on "technical", rather than "obvious" and, once again, the English litigation community throws a wobbly because Mr Steinbrener seems to be getting through Art 52 like a dose of salts. The headache for England is that things are all so simple, cheap and predictable at the EPO (except for the unavoidable, and so acceptable, deeply interesting "puzzle at the margin" of what's patent-eligible). You will remember (I can't) the name of the very old English case that pronounced that a puzzle at the margin is not a sufficient reason to pronounce a patent claim bad. You would think that those who criticize LJJ Rix and Pill for over-ruling Robin Jacob on the need for discovery in patent actions (because of a worry that it makes English patent litigation unnecessarily expensive) ought to be grateful to the EPO for reducing Art 52 "technical" and Art 56 "PSA" to such headache-free simplicity. How many of the obviousness factors on your list gave Lord Hoffmann a headache in the Taxol-eluting Angiotech/Conor case? I think on the quiet he's a student of EPO PSA. Why can't some very brave QC try pleading obviousness in the EPO PSA manner, up in front of an English judge? He might actually win the case for his client, with that line.

Anonymous said...

Nit picking at the nit picking from Anonymous 10:58am:

1. Since when has "European" when used in the UK only means continental European? I am proud to simultaneously be English, British and European (plus many things besides).

2. I might be wrong, but isn't the legal services act, when in force, going to specify that the term "lawyer" explicitly covers patent attorneys? If so, perhaps Jeremy can be forgiven for using the term European Patent Lawyer on the grounds he is not so much wrong as a bit early?

Was going to comment on the substance of the original blog post, but surely bickering over insubtantial details is really what blogs are for?

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