For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Tuesday, 31 August 2010

Trade secrets: still useful if properly deployed

Above: never mind microwaves -- they don't even make adverts like they used to ...

Trade secrets have been a lively topic for IPKat readers recently. Neil's posting on "Term of Trade Secret Protection: the Dirty Little Secret" (here) has generated some good comments, while Christopher F. Marki's "The Case Against Patents" (here, flagged on this weblog here) extols trade secrets in his own industrial sector as a far superior tool to patents has also sparked off some thoughts. The IPKat received the link to Marki's piece from Ron Camp (Kilburn & Strode), who now writes:
"I thought [Marki's post] might be of interest as one of the few examples I am aware of that sets out the usefulness of know-how, but I agree that the author is working in a specialist field where protection by know-how happens to be appropriate. The extent to which companies rely on trade secrets and know-how is normally something of an unknown quantity to outsiders, as otherwise it wouldn't be secret!

I guess it comes down to "horses for courses": the microwave field has long relied heavily on know-how. In the 1970s, the Plessey company managed to tweak what was a fairly standardised process for making ECL logic circuits to allow frequency dividers to operate at the then-astronomical rate of 1.2GHz, about twice as fast as the best the competition could manage. They had the field to themselves during the many years it took for the competition to catch up.

When I was with the patent department of what used to be a large UK-based multinational electrical company, we relied on both types of protection as appropriate for the technology and the needs of the business. A pile of patents (the more the better) was certainly absolutely essential for most businesses when it came to periodic cross-licence negotiations with competitors: individual patents were rarely significant per se (for the representative situation in that particular field of technology, see GEC Avionics' patent [1992] RPC 107). However, where the invention related to manufacture of an improved version of a known type of hi-tech component, and the means by which the component had been processed during manufacture to obtain the improvement was not apparent from inspection of the device, the usual practice was not to patent, because how would you police such a patent?

On the other hand, relying solely on know-how can be dangerous: I am aware of one business which -- due to bad advice from their own legal advisers who were not well versed in patents -- had traditionally relied solely on know-how, nearly came to grief when their new and highly innovative product fell foul of a competitor's patent: only the ability to file a US patent application 11 1/2 months after the first public disclosure of their new product gave them sufficient bargaining power to negotiate a cross-licence and stay in business.

A UK Intellectual Property Office web page here gives the following advice on the situations where trade secret protection might be appropriate:

If it would be difficult to copy the process, construction or formulation from your product itself, a trade secret may give you the protection you need.

My own experience is that a trade secret can also be appropriate where a manufacturing process involves a processing step that is very easy to perform but which no-one would think of performing. A process that requires specialist equipment to carry it out, is arguably more readily detectable than a process which involves the use of something that would be found in any manufacturing establishment and which would therefore not involve the "infringer" in the purchase and installation of equipment that he had not hitherto needed".
Thanks, Ron, for your valuable comments.

Fake report stuns EU shoppers

The Telegraph, among other online news services, leads today with a report -- "Fake goods are fine, says EU study".

Right: the EU has authorised the importation of a large consignment of fake Santas to help distribute this year's counterfeit gifts to European consumers.

The piece runs along these lines:
"They are an impulse holiday purchase that many buyers later have second thoughts about – the fake Louis Vuitton bags and Rolex watches picked up for a song abroad.
While shoppers are happy with the price, there are often nagging doubts about the items' quality, their legality and who ends up profiting.

However, such worries are, it seems, over. A new EU-funded report has declared that it is OK to buy fake designer goods. The study, co-written by a Home Office adviser [And therefore at the expense of the taxpayer. Naturally, all traders in fakes pay all their taxes], says consumers benefit from the market for knock-off designer clothes at knock-down prices. It also rejects the complaints of designer companies, claiming that losses to the industry as a result of counterfeiting are vastly exaggerated – because most of those who buy fakes would never pay for the real thing [does no-one buy bags believed to be genuine on eBay and other online sales sites, assuming they're getting the real thing at a bargain?]– and finding that the rip-off goods can actually promote their brands [Sure. "If you like the fake, you'll just love the real thing ..."]. The report adds that the police should not waste their time trying to stop the bootleggers [They won't save much wasted time, since they don't try very hard to stop them anyway].
It disputes claims that the counterfeiting of luxury brands is funding terrorism and organised crime, and argues there is little public appetite for tough law enforcement measures as consumers enjoy the bargains offered by the illegal trade, which has been estimated to be worth £1.3 billion in the UK [If victims are complicit, it's not surprising they have no appetite for tough enforcement. Do people who buy stolen goods or smuggled cigarettes and alcoholic drinks have much of a stomach for tough measures against their suppliers?].
Professor David Wall, who co-authored the report and advises the government on crime, said the real cost to the industry from counterfeiting could be one-fifth of previously calculated figures [there might be a genuine methodological issue here: many have questioned the basis of self-assessment of damage, especially based on the assumption that each fake sold equals one full-price retail sale lost].
"It's probably even less," he said. "There is also evidence that it actually helps the brands, by quickening the fashion cycle and raising brand awareness." [Of course it quickens the fashion cycle -- just as hares have to learn to run faster if they are to escape from the foxes]
He added: "We should be focusing on the trade in counterfeit drugs, dodgy aircraft parts and other stuff that really causes public harm. At a time when there is no more public resources for police, and they are being asked to do more, law enforcement should be focusing on other things." [Is the Kat dreaming, or is much -- if not most -- of the cost of bringing counterfeit traders to book borne by the IP rights owners themselves, since the police are reluctant to put together a case ab initio?]
While the UK authorities target those who trade in fake goods, the government has decided against criminalising consumers who buy them. But tourists purchasing counterfeits in other countries can face prosecution. In France, the maximum fine for buying fake goods is 300,000 euros (£246,000) or three years in jail. During a crackdown in Italy earlier this summer, a tourist was fined 1,000 euros (£825) for buying a fake Louis Vuitton bag for seven euros (£6) from a vendor at the resort of Jesolo, near Venice. [Poor old designer companies: this must do dreadful damage to their brands and their competitiveness, if today's report is to be believed].
Holidaymakers also face having counterfeit purchases seized at ports and airports as they return to Britain, if they are detected by the UK Border Agency.
...
But police and leading designer brands last night rejected the study's findings. A spokesman for Louis Vuitton said: "The sale of counterfeit goods is a serious offence whose revenue funds criminal organisations at the expense of consumers, companies and governments." A representative from Burberry added: "Counterfeiting is taken extremely seriously. Where a case is proved, Burberry will always push for the maximum penalty."
The Association of Chief Police Officers said faking fashion goods was "not a victimless crime". "Businesses, individuals, and the public purse all suffer as a result of such activities," said a spokesman ..."
Merpel says, you silly Kat: can't you tell that this is actually a fake report? The genuine report says that counterfeits aren't actually the best thing in the world and that we should all be responsible shoppers and stamp them out.

By a remarkable coincidence, a forthcoming article in the Journal of Intellectual Property Law & Practice, "Who's deceiving whom? The curious case of the ‘counterfeitee’" by Matthew J. Elsmore, discusses the issue of culpability of the consumer for feeding and stimulating the market for counterfeit products. The abstract of his article reads as follows:
"Legal context: This article seeks to investigate whether consumers ‘getting away with it’? As far as anti-counterfeit rules are concerned, whether the consumer purchases the real trade mark or the fake trade mark on a consumer-facing item, there is no meaningful distinction.
Key points: Consumers consume genuine and counterfeit goods; more and more of the latter it seems. That certain consumers are somehow persuaded to buy fake trademarked goods is a hotly debated and politicized topic as global trade and IP meet. All the subsequent regulatory emphasis and political focus is on the counterfeiter; a target that remains far from grasp. Civil and criminal trade mark liability for the counterfeiter and the obligations for state actors are apparently not deterring professional infringers.

Practical significance: Is a reconfiguration needed? It is clear that the overwhelming majority of counterfeits do not mislead or even confuse consumers as to trade mark authenticity. Is this why the consumer, an important actor in IP law, and especially trade mark law, disappears altogether from the anti-counterfeit radar? Yet trade mark regimes are partly about aligning legal standards with the consumer's perceived level of attentiveness; there appears to be a puzzle here. By first asking whether consumer liability should be addressed, this article airs views for and against a legal status as ‘counterfeitee’. The article seeks open up this aspect of the discussion surrounding counterfeiting with enough gusto for all of us (as IP specialists and consumers) to reconsider our role in the global trade of counterfeit goods".
This article is not yet published in paper format, but subscribers can already access it and read it in full on JIPLP's website here. Non-subscribers who want to purchase short term access to it can click here and scroll down to "Purchase short-term access".

Many thanks, Mark Summerfield (Watermark), for drawing this issue to the Kat's attention.

Tuesday tiddleywinks

There's still just about time to book for the first of the IPKat's two "How to Write an Effective IP Press Release" seminars, since it takes place on Tuesday 7 September at the Holborn offices of Collyer Bristow (if you can't attend this one, the second takes place on Tuesday 5 October at the Holborn offices of Olswang LLP). All are welcome: those who write IP press releases (whether for government, industry and commerce or private practice) as well as those who sign them off. Tea/coffee and biscuits will be provided. For further details, click here.


The IPKat's friend Aaron Wood is looking for a patent specialist to be a co-presenter in a series of seminars and workshops on which he is working. The ideal candidate should be experienced in presenting (or be willing to get experienced) and be comfortable presenting seminars, giving workshops and leading/facilitating group activities and panels (or be keen to learn!). If this is of interest please email Aaron here with the subject line "Co-Presenting"."


Competitions in progress. This coming Sunday, 5 September, is the closing date for the "Must-Have IP Accessory" competition, for which the prize is complimentary admission to the IP and Fashion: Handbags at Dawn conference on 21 September (details of competition and link to conference here). The closing date for the "CIPA Menu" competition, for which the prize is complimentary admission to this year's CIPA Congress (details of competition and link to Congress here) is 17 September. A third competition, IP Finance's "IP begging email" effort, closes on Sunday 3 October: the prize is admission to this year's IP and Finance conference on 20 October (you can see the competition and programme details here).


Have you been keeping an eye on the latest developments regarding procedural reform of the Patents County Court for England and Wales? If not, you are probably in the majority. But don't worry, patent attorney and professor Paul Cole has written a very useful and timely piece on PatLit here. If you're thinking of embarking upon a little course of patent litigation, read this first!

Monday, 30 August 2010

Use of a Community trade mark in just one country

IPKat team member Jeremy is currently composing a chapter of a book -- about which he will be telling readers quite a lot when it's good and ready -- on trade mark law. His task is to tackle the following subject: "Interpretation of the conditions of territorial use of a Community trade mark in light of the Joint Statement [of the Council and the Commission of the European Communities on the use of a CTM in only one country]". He hopes to have his chapter finished in the next ten days or so: meanwhile, he'd be delighted to hear from any readers who either

* have very strong feelings on the subject which, they feel, have received insufficient attention and discussion so far, or

* have recently written anything on this topic themselves, which might have escaped Jeremy's attention.
If you can help Jeremy make his chapter (i) perfect, (ii) better than it might have been or (iii) at least acceptable, please email him here.

If this subject hasn't yet excited you, read the earlier IPKat posts here, here, here and here

Monday miscellany

While litigation is often described in military terms, it is a less frequent occurrence for skirmishes between military groups to be fought out in court. Here however is news of a set of thoroughly confusing manoeuvres between the Combined Armed Forces Federation UK (CAFF) and the British Armed Forces Federation (BAFF), in which, on an appeal heard by the Kat's friend Anna Carboni (here), BAFF biffed CAFF with a successful operation which, if expensive, will cost the vanquished trade mark applicant dearly (the original decision, noted here by the IPKat, considers, inter alia, the recovery by the successful party of a mileage allowance in respect of a 310 mile journey). Thank you, Sang Nkhwazi, for the link.


Are you feeling a little bit historical or theoretical? If so, this could be for you! Registration is now being accepted for the 2010 workshop of the International Society for the History and Theory of Intellectual Property (ISHTIP), 24 to 26 September, American University Washington College of Law. There's an all-star cast lined up, waiting to impose their stamp of authority upon the proceedings, and with the promise of true scholarship ahead. Details and booking here.


Trade mark folk: do you want to participate in the major survey by World Trademark Review (WTR) into how industry is preparing for new generic top-level domains? This survey will be live until at least 15 September so a post any time over the next couple of weeks will help. According to WTR:
"It is now almost certain that new gTLDs will launch. So the trademark community is best advised to stop trying to improve the policy and focus instead on strategy. External counsel must work out how to build business models around new gTLDs. Meanwhile, brands must answer much more than the question of whether or not to apply to run a new gTLD registry; they must plan how to react to new spaces on the internet, how to restructure their internal teams accordingly and how to continue building and protecting their brand online".
Adds WTR, this research is an editorial, not a commercial, endeavour. The results will be independent and therefore to the benefit of industry as a whole -- and WTR will be sharing them with the IPKat and other cooperating blogs. You can access this survey here.


CPDcast informs the IPKat that it is the largest provider of online CPD for legal professionals in the UK The company, part of the Informa group, boasts than 400 legal podcasts on its site on a diverse range of topics. These include criminal copyright infringement (here), current issues in European pharma and biotech patent litigation (here) and ownership and control of IP in joint ventures and collaborations (here). Students are offered free unlimited access to CPDcast's podcast directory (here).


Trying to provoke the IPKat into saying something controversial, Ronald Camp (Kilburn & Strode) has sent him this link to a neatly composed piece by Christopher F. Marki (Marki Microwave) entitled "A Case Against Patents". The Kat notes the four points made against patents --
1. Patents create a false sense of security,
2. Trade secrets are more important than patents,
3. Would you really sue over patent infringement? and
4. A patent is NOT a product
-- are not a case against patents but rather a case against some the misunderstandings and false expectations which patents can cause to those who pursue them.

Sunday, 29 August 2010

Patents and genes: some new titles

The IPKat has recently found himself confronted with three new titles that, in their very different ways, address issues arising from the patentability of genetic material. In this post he says a little bit about each of them.



Gene Patents and Collaborative Licensing Models: Patent Pools, Clearinghouses, Open Source Models and Liability Regimes is the tenth volume in the Cambridge Intellectual Property and Information Law series. Edited by Geertrui Van Overwalle (University of Leuven, Belgium/University of Tilburg, the Netherlands), this book brings together the thoughts of more than 30 contributors and brings their combined brain-power sharply to bear on the book's focal point: striking the right balance between the positive and negative aspects of both the patent monopoly and the weapons that are developed to combat it.

So what precisely is this book about? Let the publisher, Cambridge University Press, explain:
"Concerns have been expressed that gene patents might result in restricted access to research and health care. The exponential growth of patents claiming human DNA sequences might result in patent thickets, royalty stacking and, ultimately, a 'tragedy of the anti-commons' in genetics. The essays in this book explore models designed to render patented genetic inventions accessible for further use in research, diagnosis or treatment. The models include patent pools, clearing house mechanisms, open source structures and liability regimes. They are analysed by scholars and practitioners in genetics, law, economics and philosophy. The volume looks beyond theoretical and scholarly analysis by conducting empirical investigation of existing examples of collaborative licensing models. Those models are examined from a theoretical perspective and tested in a set of operational cases. This combined approach is unique in its kind and prompts well founded and realistic solutions to problems in the current gene patent landscape.

• Descriptions of major models currently used to deal with patent thickets enable the reader to develop a complete view of the models and evaluate existing operational examples
• Case studies describe how each model functions, and the critical evaluations enable the reader to compare the advantages and disadvantages of the various models
• Concluding chapters analyse and compare solutions put forward by the various authors, thereby examining openings for the future".
Says the IPKat, while the interplay of legal, ethical, technical and commercial considerations may not be as complex as the genetic map of an organism, it is sufficiently convoluted area to require a multidisciplinary approach. This book provides that approach and leaves the reader with a very positive feeling that, the current patent system, as checked and balanced by competition law and enhanced by attainable win-win contract licensing strategies, possesses the necessary qualities to achieve the desired ends: disclosure of and access to technical information, its availability for use, protection both for investment and for development and the protection of the various public interests. Merpel adds, it is also refreshing to see how much thinking and writing has been done outside the United States: the bibliographies contained quite a few names and writings that were quite unknown to her and which, she feels, have definitely enriched her view of the topic. Both Kats are ashamed that their algebra isn't up to it and that they struggle terribly with some of the economics, even when the authors really do make an effort to assist them by explaining their terms pretty clearly. Maybe in another life ...

Bibliographic data: Hardback. xxxv + 477 pages. ISBN 13: 9780521896733. £75 (US$120). Web page here. Rupture factor: small.



Justice In Genetics: Intellectual Property and Human Rights from a Cosmopolitan Liberal Perspective is an offering by Louise Bernier, Professor and Head, Law and Life Sciences Program, University of Sherbrooke, Québec, Canada. According to publisher Edward Elgar,
"Providing new insight into the ideas surrounding one of the longest running and hotly debated governmental issues – the global access to healthcare challenge – Louise Bernier develops an original theoretical framework that builds upon cosmopolitan liberal theory. This groundbreaking analysis offers a useful justification for engaging in a global and more equitable redistribution of health-related resources.

The author examines if and how this theory of distribution translates into positive law and analyzes the barriers to legal compliance and global distributive justice in health. Other topics analyzed in this book include intellectual property and international human rights, and the extent to which the philosophy and structure of each of these normative systems furthers the goal of distributing benefits equitably and globally; the use of strong and original normative landmarks to justify relying on a cosmopolitan approach to global justice based on health needs; and the social, political, economic and legal obstacles and opportunities resulting from the commercialization of the quickly evolving field of genetics.

Ultimately, the book exemplifies the groundwork needed to initiate policy discussions and to eventually undertake concrete changes to achieve international redistribution of the resources emerging from genetics. As such, it will be of great value to students and scholars interested in health, law, human rights and intellectual property".
Says the IPKat, if you are not a Cosmopolitan Liberal you may not find yourself nodding in comfortable agreement with the author's position. However, a casual look at the sources and materials upon which she has drawn soon shows that she is far from alone in expressing her sentiments: you can pretty well compile a Who's Who of People Who Don't Like the Patent System from her footnotes. Having said that, Louise Bernier has raised a case against the current state of IP which is entitled to an answer, part of which is based on the fact that, in a hierarchy of human values, we appear to have placed issues of healthcare and access to medicines lower than wealthcare and access to the means of continuing to stay alive. Merpel adds, in her conclusion Professor Bernier affirms that new forms of commercialisation of IP should be explored -- on this basis the positive approach taken in Geertrui Van Overwalle's book (reviewed above) might well commend itself to her.

Bibliographic data: xiii + 255 pages. Hardback. ISBN 978 1 84844 315 0. Price £65 (with online discount from the publisher, £58.50). Web page here. Rupture factor: small.



Patents for Chemicals, Pharmaceuticals and Biotechnology: Fundamentals of Global Law, Practice and Strategy, now written by Philip W. Grubb and Peter R. Thomsen, is the welcome Fifth Edition of what used just to be plain good old Grubb. The IPKat has all four earlier editions on his bookshelf and will happily jettison any number of less worthy titles to accommodate the Fifth and subsequent editions. Oxford University Press, the fortunate publisher of this work, introduces it as follows:
"The chemicals, pharmaceuticals and biotechnology industries worldwide rely upon being able to patent inventions in order to protect investment in research and development, and to reap commercial rewards. An increasingly globalized sector requires a global perspective, and Philip Grubb's highly acclaimed book guides the reader through the legal and procedural complexities of the British, European, Japanese and US patent systems, and explains in detail the role of patent practitioners (both in-house and in private practice) in maximizing the commercial potential of their client's or company's innovative products.

This eagerly awaited fifth edition provides vital updating to take account of the latest legal developments, while retaining focus on the relevant technology and industry practices that sets it apart from more general books on patent law and procedure.

Patents for Chemicals, Pharmaceuticals and Biotechnology provides the reader with a complete description of the techniques and industry know-how that underlie successful patent practice and portfolio management and will be invaluable to all patent agents and practitioners working in the area of patent law. With its lucid and accessible presentation and practical approach, this book will also be welcomed by scientists, researchers and managers without a legal background".
Reviewing this work is a pleasure. Clear print, equally clear articulation of the law; helpful glossary; lots of examples. This book is actually of great value not just for readers with a chemi-, pharma- bio- bias but serves very well as an explanation of the operation of the patent system even for those whose interests lie in other spheres. There is enough comparison of the UK, Europe and the United States to enable the reader to identify those points at which problems are going to arise, even though it may take more than a flip through these pages to find the answer. But a European reader who has to get his American counterpart on the phone will at least be able to brief himself well before he dials.

Bibliographic data: Hardback. xlv + 537 pages. ISBN13: 9780199575237, ISBN10: 01995752. Web page here. Rupture factor: substantial.

The Term of Trade Secret Protection: The Dirty Little Secret

Should trade secret protection be limited in time? On first glance, the correct answer would seem to be-- "no". Don't we teach students that one of the basic trade-offs between patents and trade secrets is that the patents provide robust protection for a fixed period of time while trade secret protection is valid only as long as the confidential information remains secret.

Like any risk that is further bathed in uncertainty, the owner of a trade secret lives in a quantum-like world where the next wave may bring with it unwanted disclosure of the information, either because of reverse engineering or malfeasance. Stated otherwise, hovering over the potential for an unlimited term of protection is the ever-present risk of disclosure. Win the jackpot, like say Coca-Cola, and the two converge, where the specific trade secret benefits from a seemingly limitless term of protection. Lose the lottery, and the owner of the erstwhile trade secret can only hope that it has extracted enough value, either by way of first mover advantage or otherwise, to justify the time and effort in adopting the trade secret route.

While the foregoing represents the canonical view of the question, it appears that there are challenges to this commonly-held wisdom. The first heresy comes from the world of legal practice. This Kat suspects that there are few readers who who have not encountered a clause in a grant for the right of use of a trade secret that provides for a fixed time limit for the secrecy undertaking. This form of clause seems more typically to emanate from the party who is the recipient of the disclosure, and that makes perfect sense. It is difficult to come up with circumstances in which the disclosing party has an interest in limiting the period of time that the recipient is obligated to maintain secrecy of the information. The only situation that I can come up with is where the disclosing party actually intends to compete with the recipient, and the contractual ability to disclose the trade secret might actually confer a competitive advantage on the disclosing party. But such a scenario seems pretty far-fetched.

The argument most typically raised by the recipient in favour of a fixed time limit for the secrecy undertaking is one of mutual convenience. The claim goes something like this:"Because of the rapidly changing circumstances in the industry in which the secret is being used, the contractual term for the secrecy obligation (say five years for purposes of discussion) provides a degree of certainty to both parties. In any event, within five years, the value of the information will be nil. But to avoid any possible dispute that there has been an unauthorized disclosure, the parties agree in advance on the period in which the trade secret will be protected. In so doing, both parties can then go with their business."
To be honest: I am not certain that I fully buy into this claim. But if confidential information falls within a rapidly changing technology, the disclosing party is often prepared to accept this time limation, especially where that party can try to leverage its consent on this point to obtain concessions on other contractual provisions. Whatever the reason, the facts on the ground of trade secret practice indicate that the holy canon extolling the value of a potentially unlimited term of protection frequently does not square with the behaviour of the parties.

Professor Mark Lemley, at the end of a wide-spanning defence of trade secret protection ("The Surprising Virtue of Treating Trade Secrets as IP Rights", Stanford Law Review, vol. 61, no. 2, November 2008), suggests another reason why an unlimited term for trade secret protection might not be appropriate. He writes (at p. 353):
"But is not clear that this indefinite term properly strikes the balance between providing incentives to invent and ensuring that the world benefits from the new invention. It may be that after a certain period of time the additional incentive from the prospect of secrecy is marginal, while the costs of maintaining secrcy are not. ...One possible implication of treating trade secrets as IP rights, then, is that the law should provide that trade secrets "expire" after a certain period [footnote omitted]."
Lemley argues that there are potential various advantages in providing legal incentives to maintain secrecy of inventions in certain circumstances. From this vantage, what is key is how to best calibrate these incentives. One way to conceptualize this calibration is establish a fixed period of time for protection of the trade secret, after which the value of the secrecy is outweighed by the various costs in maintaining such secrecy. Having raised the point, however, Lemley is very chary about actually proposing how such a time limit might work. He concludes that "[i]t may be too hard to decide on a start date, and therefore an end date, and compelling disclosure of informatiom at the end of the term may also prove problematic."

But, as we have described above, parties to a transaction involving a trade secret often themselves do a form of balancing act between maintaining secrecy and allowing ultimate disclosure. Stated otherwise, there is no reason to try and fix some set of principles for best calibrating the term of trade secret protection; parties are already reaching a private resolution to the issue. Merpel oberves that, given the nature of trade secret protection, that is the way that it should be.

Saturday, 28 August 2010

Blogs and EP Oppositions

Once a patent has been granted by the European patent office, Article 99 EPC allows for a nine month period when anyone can oppose it. Oppositions are filed on only a small fraction of patents that are granted by the EPO. Most are granted unnoticed by everyone except the people concerned. Even for those who do pay attention, the cost of filing an opposition will act as a fairly strong deterrent to all who do not have deep pockets or a strong case (preferably both), together with the nerve to see the process through to its, often protracted, end. This should be borne in mind when reading the following.

European application 01309765.4, filed in 2001 by Open Business Exchange Limited (later changed to OB10 Limited), was granted as EP1220114B1 by the EPO on 29 October 2008. According to the EPO Register, this is the only patent that OB10 have had granted by the EPO, and is also the only application they have filed (and which has been published). The patent relates to a way of translating electronic invoices from one format to another, using software that translates an incoming invoice into a standard format and then translates the invoice from the standard format into another format for output. This allows businesses to issue invoices in their own format and ensure that whoever receives the invoices gets them in their own chosen format.

On May 30 2009, a blog post was written about the patent, claiming that the patent was invalid because it was an "attempt to patent an old pattern [sic] known from middleware products and VANs". As well as citing some prior art known to him, the author of the post, Mikkel Brun, mentioned that there was a 9 month period for opposition (helpfully providing a link to the appropriate form) and stated the following:

"I urge suppliers of Middleware products and service providers to send an opposition to the patent. This could hit you hard! I have been told that an opposition has to be made for each individual country covered by the patent [IPKat comment: this is wrong - one is enough], so it is not a trivial task lying in front of us."

Mr Brun then followed up with another post on 6 June 2009 detailing further references and comments about why in his view the patent was invalid.

A total of 19 notices of opposition were subsequently filed against the patent, between 10 July 2009 and the final date of 29 July 2010. Thirteen of these were filed in the last 3 days which, though slightly risky, is common practice for attorneys used to working towards tight deadlines. Except for one notice filed by Certipost NV, all were filed by European patent attorneys on behalf of their clients. Only one has since been withdrawn. Most, if not all, of the opponents must therefore have been willing to spend substantial sums of money (most likely thousands of Euros) in getting proper advice and having their notices filed for them, together with paying the official opposition fee in each case.

As a result, at the latest count, the prosecution file runs to 7833 pages. This is a lot of material to get through, and would make dealing with and defending the oppositions somewhat time-consuming. In their letter of reply to the oppositions, the proprietor's attorney stated:

"It is believed that the large number of oppositions is due to a blog created by one Mikkel Hippe Brun which can be seen at http://blog.schemaworks.com. For example, the blog has EPO Form 2300 available as a download to enable opponents to launch an opposition [IPKat comment: this is wrong - the blog only provides a link to Form 2300 hosted on the EPO's website, and provides no clues as to how it should be filled in].

Whilst it is accepted that any person may give notice of opposition under Art. 99 EPC, it is submitted that setting up a blog to inundate the proprietor with oppositions is an abusive process which puts the proprietor as a relatively small company at a significant disadvantage. The proprietor requests that the Opposition Division bears this in mind during the opposition procedure, particularly with regard to requests for extension of time and an award of costs, if deemed appropriate."

I can see how such a large number of oppositions being filed against a patent could make its proprietor a bit annoyed, but I fail to see how anyone could be held to blame for this merely as a result of publicising the fact that i) a patent has been granted and ii) an opposition could be filed, together with some ideas that might be useful in opposing the patent. If that was the case, then perhaps the IPKat himself should be worried, after he pointed out the possibility of an opposition in another case, after which several oppositions were filed.

The main function as far as I see it of the opposition procedure is to provide a way of getting patents that should not have been granted off the register before they become much harder to remove once they become purely national rights. The EPO examination procedure, thorough though it is, is not perfect, and cannot be expected to always pick up the sort of prior art that someone working in the field of technology in question would know of. This seems to be one of those cases, and I would not be surprised if the patent does not survive being opposed. It may be hard on the proprietor, but if you play the game you have to face the possibility of others playing it too.

Friday, 27 August 2010

Friday fantasies

"Tom, Tom the piper's son
Stole a tune and away he ran.
But now he's in a dreadful plight --
He forgot about the copyright!"
IP and Music is among the conference topics you can find listed on the IPKat's Forthcoming Events sidebar. Don't forget to check it out!


Around the blogs ... even if you're from China. It seems that the IPKat's weblog is not the only one to be blocked in China. The block apparently extends to all blogs hosted by Google, according to one Chinese reader. While some cunning souls seem to have found "ways" to circumvent the block, others merely content themselves by reading the email circulars -- which are not blocked.


Another list of ten juicy topics for which the Journal of Intellectual Property Law & Practice (JIPLP) seeks authors appears on the jiplp weblog here. If you'd like to write on one of these topics, just follow the simple instructions. And while we're on the subject of authors, it is not generally known that IPKat team member Jeremy is also the Intellectual Property panellist on the board of the Journal of Business Law (JBL). If you've written -- or are writing -- a piece which might suit that publication (and case notes are particularly welcome), email Jeremy here and let him know.


The fact that parallel importation of branded goods into the United Kingdom has been a subject of both interest and concern this week (see earlier IPKat post here) has led a couple of readers to email the IPKat to ask him what the position is with regard to the United States -- where what we call parallel importations are known as "gray goods". The Kat wouldn't dare answer these questions since his competence stops somewhere in the East Atlantic, but he has a handy little book by David R. Sugden, Gray Markets: Prevention, Detection and Litigation, published in the US by Oxford University Press last year. The book offers a good deal of legal and commercial information, breaking the subject down by industry and commercial sectors most affected. At US$ 185 for its 342 pages, it's rather more expensive than the average US paperback law book, but if you or you client have got a gray goods problem, it's a snip. Incidentally, the author doesn't shy away from eBay issues and all sorts of other tough topics. Web page: here.


Taking the Mick? Here's another poetic gem from Tony McStea, who tells the IPKat, "I write very strange responses to office actions". Here is one such response; wisely, the US attorneys involved in this matter removed the following before responding to the office (The Department of Cultural Allusions states that, if you were born too late to remember 1965 or have a poor recollection of iconic songs of that era, the sheer length and detail of this Wikipedia entry will soon put you right):
I can't get no satisfaction
I can't get past office action
Tho' I've tried
I confide
All I've plied
Simply died
I can't get no!
I can't get no!

While I'm workin' at my desk
Comes a man who's on the Internet
Says how great 'Murr'can patents be
But he couldn't be a man 'cos he doesn't have
The same Examiner as me
I can't get no!
No! No! No!

Boo hoo hoo!
I'm in the poo!

I can't get past office action
I’m bein’ driven to distraction
Can’t abide
No scope wide
I confide
Hurts my pride
I can't get no!
I can't get no!

While my head is in a whirl
I’m amending this and I’m CIPping that
While my toys from buggy hurl
There is no point interviewing next week
‘Cos I see I’m on a losing streak
I can't get no!
No! No! No! etc. etc.
Prior art: this illustration (above right) is of The Rolling Stones before they had wrinkles -- and you have to be very old to remember them looking like that.

For those who read this weblog religiously ...

This weblog doesn't have a regular religious column, and doesn't intend to start one now. But every so often the Kats are concerned with religious topics -- two of which are mentioned here.


Several readers have sent links to this story about giant electronics retailer Best Buy, which is threatening to sue Fond du Lac (Wisconsin) priest Reverend Luke Strand. The bone of contention here is Reverend Strand's "God Squad" Volkswagen Beetle which, says Best Buy, sports a logo on the clergyman's Volkswagen Beetle which is identical to its own "Geek Squad" design. Reverend Strand has stopped using the logo, following receipt of a cease-and-desist order. As usual, the news reports can't make up their minds if this is a copyright matter or a trade mark dispute.

"Geek Squad" is a Best Buy subsidiary which sells computer-related services to customers. It's known for its use of a black Volkswagen Beetle with a catchy sticker logo on its front door. Said a spokesman for the church: "They feel that the shape and the font of the logo and the fact that it's on the Volkswagen bug causes confusion with their Geek Squad", adding that the minister had "driven the 'God Squad' around Fond du Lac for a "number of years" as a "creative way to bring God to the streets." The IPKat thinks he has just seen the light, recalling that his own car has a Rev counter ...


The second story concerns Richard Taylor (joint UK head of patents in law firm DLA Piper's Intellectual Property and Technology Group and, for his sins, the IP/IT columnist for the famously unread Law Society Gazette). Richard confesses that, in his spare time, as is appropriate for someone with an interest in trade marks, he has an interest in art and symbolism. He explains:

"A few years ago I wrote a book on symbolism and imagery in churches, called How To Read A Church. The book inspired a BBC TV series, called "Churches: How To Read Them", which I wrote and am presenting. The series starts next Wednesday, 1 September, 8.30pm on BBC4. It consists of six episodes, so running on Wednesdays through September and the first couple of weeks of October. Here's the trailer, which is quite fun".
The IPKat, who understands that the publicity folk are making a lot of the "IP specialist-turned-presenter thing", is sure that readers will find this quite in-spire-ing.

Thursday, 26 August 2010

Police, pirate tapes, poverty and politics: a sad tale

The IPKat is not a Siamese Kat and therefore rarely has the chance to peruse the Bangkok Post. It was however with great interest that he read a remarkable Opinion which sheds light on the social reality of life in a developing nation and the position occupied by the rule of law, social solidarity in the face of poverty, the function of the police and the status of copyright infringement within a society's scale of values.


Right: Samran swore blind he hadn't been rummaging round the garbage in search of pirate CDs, but the telltale dirt on his face and paws gave the game away ...

The article reads, in relevant part, as follows:
"When police act selectively

... Thailand is ... known throughout the world as a shoppers' paradise for pirated CDs and DVDs and fake brand-name wristwatches, handbags and garments. These illegal products are available in most shopping malls and on pavement stalls along Bangkok's streets and in provincial cities.

Despite their ubiquitous presence - oftentimes right next to a police station - the vendors are rarely arrested, let alone prosecuted and convicted for reasons well-known to both law enforcement officers and the sellers of pirated or copied products.
On Monday [16 August] one such vendor, Surat Maneenoprattanasuda, a temporary employee of City Hall, was found guilty of selling pirated VCDs without a licence under the Motion Pictures and Video Act, and was fined 133,400 baht [that's about US$ 4,250] by the Criminal Court.
Normally such a case would warrant just a few paragraphs in a newspaper. But this one made the front page of the mass-circulation Thai Rath newspaper .... Also, it attracted the attention of PM's Office Minister Ong-art Klampaibul, who paid a visit to the convict's family to show his sympathy and to pledge legal help.
According to Mr Surat's version of the story, besides working as a temporary employee at City Hall, he also collects saleable scrap from the garbage to make extra income to feed his family, which includes two young daughters. On the day he was arrested by Hua Mark police, ... he was selling the scraps he'd collected, which included some 30 pirated CDs and old shoes. He claimed that two other vendors who were also selling pirated CDs and DVDs right next to him were left untouched by the five policemen.
There appears to be no doubt that Mr Surat was caught while selling pirated CDs. But what is most troubling about the case is that the police appear to have applied a double standard in arresting Mr Surat while ignoring the two other vendors. Worse still, despite the circumstances, the public prosecutor in charge decided to press ahead with the case in court, which handed down its verdict in accordance with the prosecution's evidence.
Kayasit Pisawongprakarn, the director-general of public prosecution for criminal cases, was quoted by Thai Rath as saying that if he'd been aware of the case in the first place, it would not have reached court. He cited the case of a boy who'd been caught by police for stealing a few salapao or Chinese buns to feed his starving sisters - a case which the prosecution dropped.
It is quite heartening that assistance is pouring in for Mr Surat with expected free legal counselling from the Law Society to fight the case in the Appeals Court. Hopefully, he will be finally granted justice.
But while the media and public attention is focused on the victim of what is seen as an injustice against a poor man, it is hoped that this will not be just a case of a flash in the pan which will go away once the Press stops writing about it. The issue at stake which, so far, has not been addressed is the double standards practised by the police in this particular case, and the police corruption in general. Unless the issue is discussed in earnest, any hope that Mr Surat's case will serve as a warning to all the vendors and producers of pirated VCDs and DVDs of the consequences of the new anti-piracy law, can only be wishful thinking.
Indeed, so long as money speaks loudest, it will be business as usual for entrepreneurs of fake and pirated goods in Thailand."
Says the IPKat, it's difficult to know what to make of this episode in which there are many losers and, with the possible exception of the Prime Minister's Office in terms of its attempt to gain credibility with voters by latching on to a cause with which voters may well sympathise, no real winners.

Siamese cats here and [if you can bear it] here
More on cats and rubbish here, here and -- to show there's justice in this world -- here

Thanks are due to the IPKat's grand old friend Guy Selby-Lowndes for unearthing this item.

Déjà-vu and Golden Balls: now it's Gucci's turn

IPKat readers will remember the ongoing battle of Inez and Gus Bodur to steer their Community trade mark application for GOLDEN BALLS through to grant in the teeth of vigorous opposition from the owners of the BALLON'D'OR trade mark (see earlier post here; this decision is under appeal). Well, the Battling Bodurs are at war again, this time with an even bigger adversary. Let Inez and Gus tell you the story in their own words:

"We have another UK trade mark based on Gus and his ice cream van called Gussy The Ice Cream Man [above, right] and we published our first book in 2008, Gussy's ABC Book, and all the illustrations were done by our daughter Chloe Bodur. We also published Gussy's 123 Book last year which was also illustrated by Chloe.

Daunts and many other book stores sell them and you can buy them online, but as you know due to our legal dispute [over the GOLDEN BALLS trade mark] we could not take things forward with this or do any promotions or merchandise etc.
We applied for the Community trade mark at OHIM and guess what? Another big fish has decided to oppose this, it is GUCCI (see left for a typical representation of its mark in use), yet again we do not see how our books shaped in an ice cream van for toddlers can be confused with one of the largest fashion companies in the world. They are now owned by a French company, so it is déjà for us.
There is a two month cooling off period as you know and we have no choice, but will do most of this without lawyers as we have had a practice run already.
It should be in the Ham & High [Hampstead and Highgate Express, here] today as they called to see how we were".
The IPKat has shown the Bodurs' mark to various females within his vicinity, these being persons with known shopping habits, and not one of them thought the sign had anything to do with GUCCI. He very much hopes that peace and common sense will prevail. If for any reason it doesn't, readers will be hearing more on this topic. Merpel says, on these facts if there were any likelihood of confusion or possibility of consumers making a link between goods bearing the respective marks, I'd be more worried about damage to my brand if I were selling children's books than if I were Gucci.

The Bodurs' UK registration and Community application can be seen on the IPO website here.
Gussy's ABC Book here
Gussy's 123 Book here

Regulating the IP professions: need for more transparency and trust?

The IPKat has picked up scent of a story that IPReg (the UK's Intellectual Property Regulation Board, set up by the Chartered Institute of Patent Attorneys -- CIPA -- and the Institute of Trade Mark Attorneys to undertake the regulation of their respective professions) is meeting on this very day in order to discuss a proposal to increase the fee for regulating practitioners by a handsome and inflation-busting 40 per cent. Cats don't have nests and are not usually sensitive to nest-building operations by regulatory bodies, but a little bird has suggested that this may be the case here and has commented to the IPKat as follows:

"It was expected that IPReg's eye-watering ”startup” costs might reduce after the first year. However, IPReg now wants to employ another person full-time to get the required proportions as between lay and professional members. They also want to set up IT infrastructure to duplicate what is freely available".
The suggestion is also made that the meeting has been timed for today so that CIPA, the senior body within the IP professions in the UK, will have only one council meeting before IPREG's budget has to be approved, so it will be bounced into approving the budget on the basis that there isn't time to query it.

The IPKat does not know whether this is true and hopes that it is not, but feels that this is not the sole issue. He senses that there is a degree of unease or distrust, and some fear, of IPReg within the IP professions; he also feels that all of this can be cured by transparency on IPReg's part, backed by strong and effective public relations. He doesn't know if anyone has any figures, but he wonders whether IP professionals have more complaints about IPReg than the general public has about them.

Merpel is curious to know which countries outside the UK have regulatory bodies for the IP professions that operate in similar ways, and what the experiences of those countries might be.

IPReg's position on fees, and table of current fees, here.

Wednesday, 25 August 2010

Nokia fakes case: silence over official submission

The IPKat's post yesterday ("British customs attract international attention", here) was mild enough, but it has drawn a response from a tireless fighter for justice for rights owners and consumers, the Anti-Counterfeiting Group's Ruth Orchard, which has inspired him to return to the theme with greater resolve. Writes Ruth:

"Since you ask about whose and what opinions were sent to Her Majesty's Government (HMG), here are the comments submitted by the Anti-Counterfeiting Group (ACG) here and MARQUES here to the Intellectual Property Office (IPO) International Policy Directorate in February, in response to the request they sent to 'interests'. Interestingly, the question the IPO asked its 'Interests' (in order to advise HMG how it should respond) was different to the question posed by the Court of Justice of the European Union (ECJ):

Whether customs authorities should detain goods bearing a Community trade mark that are in transit through the EU from a non-Member State to another non-Member State, in the absence of evidence that they will be diverted onto the market in Member States.
We understood that responses to this question would provide HMG with stakeholder views and contribute helpfully to its own intervention. (ACG's response - which I hope does not betray too much of the extreme frustration we all feel! - was sent with Nokia's prior input and approval, on behalf of all our members, for whom this is a very important issue). But we don't know if HMG actually made any observations to the ECJ, although we did ask at the time - the IPO reply was:

"I am afraid that it is not government policy to comment on whether or not the UK proposes to intervene in specific cases. The case details you are requesting will be available to the public in the Curia website in due course".
The Curia website does not contain anything other than the actual case and the question referred to the ECJ and I can't find any public record of Member States' interventions (we asked our colleagues in other EU countries to lobby their own governments to intervene, as well).

Just to add to the excitement, we also still don't know whether the ECJ will accede to the Court of Appeal's request to join the Nokia referral with another transit case (brought under a previous Customs Regulation), Case C-446/09 Koninklijke Philips Electronics N.V. v Lucheng Meijing Industrial Company Ltd and others. The question from the Philips case (which the INTA submission refers to, but doesn't replicate, in its submission) is:

Does Article 6(2)(b) of Council Regulation (EC) No 3295/94 of 22 December 1994 (the old Customs Regulation) constitute a uniform rule of Community law which must be taken into account by the court of the Member State which, in accordance with Article 7 of the Regulation, has been approached by the holder of an intellectual-property right, and does that rule imply that, in making its decision, the court may not take into account the temporary storage status/transit status and must apply the fiction that the goods were manufactured in that same Member State, and must then decide, by applying the law of that Member State, whether those goods infringe the intellectual-property right in question?
The IPKat says, here is an opportunity for the IPO and the British government to engage in a little valuable PR by engaging with an important organisation representing IP rights owners -- owners who at their own expense and inconvenience strive to police their markets and keep them free from poisonous, dangerous and economically damaging fakes. The answer the ACG received to its question is downright insulting. It may not be the British government's policy to comment, the government after all being sovereign and free to do whatever it wishes, without any sense of accountability to the companies which -- while lacking the vote-- contribute billions of pounds to the Exchequer through their taxes. It is however the IPKat's policy to comment: come on, tell us -- are you supporting the IP community or not? Surely you are not laying yourselves open to the accusation (which no polite Kat would make) of being so pusillanimous that you can't even tell the ACG whether you propose to intervene in this case?

Wednesday whimsies

If you downloaded the original version of the unofficial Simmons & Simmons English translation of the Opinion of the assembled Advocates General in Case 1/09 (on whether the proposed scheme for a European and European Union patent court was lawful: see earlier IPKat post here), please note that it has been superseded by a later version, which you can read here.


The IPKat is delighted to inform his readers that the public proposal phase of the European Inventor Award 2011 is now open: the whole of Europe can join in the search for its finest inventors. The European Commission and the European Patent Office have been presenting the European Inventor Award to outstanding inventors since 2006. Anyone can put forward inventions and inventors: individuals, small and large enterprises, universities and research institutions -- even patent trolls -- can enter themselves or propose another inventor for the Award. A jury featuring prominent figures from science and business will judge entries on their degree of innovation and commercial impact and on their contribution to social and economic progress.

The 2011 Awards fall into five categories - Industry, SMEs, Research, Non-European Countries and Lifetime Achievement. Three finalists in each category will be invited to the awards ceremony in Budapest in May 2011, where the winners will be announced. Information about how to take part and entry forms are available here. The deadline for submissions is 16 September 2010.


"IPO unveils new research programme" is the big news this week from the UK's Intellectual Property Office. According to yesterday's press release, the new programme on IP and its value to the British economy has been unveiled by Intellectual Property Minister Baroness Wilcox, for the edification of the great British public (left). There wasn't anything else of substance in it, except for the skilful deployment of the usual words 'key', 'role', 'proper evidence', 'innovation, 'assessment', 'returns', in such a manner as to comfort the reader that, er, today's programme looks pretty much the same as yesterday's. Well, almost. The tail-end of the press release says there will be "... a look at firms using alternatives to patents to protect innovation". Can this be a serious commitment to evaluate second-tier patent protection at last, wonders the Kat.


If you are based in China and are reading this post, can you please email the IPKat here and let him know? He has been receiving reports that this blog is being blocked by the Chinese. The IPKat assumes that this must be retaliation for the criticisms which this weblog has from time to time dished out to the British government, which has a cordial relationship with China, since the Kat can't think of anything he has written about the Chinese themselves that would merit such a response. Merpel adds: for people who like statistics, China ranks 51st in the list of 143 countries from which IP enthusiasts visit the IPKat website.


This Kat has been among those who have sided with Lord Justice Jacob in his vitriolic criticism of the reasoning of the Court of Justice of the European Union in Case C-487/07 L'Oréal v Bellure when the case returned from that Court to the referring court for final determination (see IPKat post, "Trade mark ruling muzzles free and honest speech, says Court of Appeal", here). There is another side to the argument though, one which is eloquently and succinctly articulated by the Kat's friend Gert Würtenberger in a piece to be published in JIPLP and which, on account of its contribution to the debate, is being made available to everyone on the jiplp weblog here.


Trade marks for the blind. Last Friday the IPKat asked readers here if they could contact law student Alex Pope if they had any information or advice for him on "Trade marks for the blind". Alex tells me that the response has been magnificent. He has sweetly thanked the IPKat, who takes this opportunity to thank you all for your kindness in assisting him. Meanwhile, presumably under the byline "Trade marks for the blind drunk", only from the inimitable Christopher Morcom QC (Hogarth Chambers) could the IPKat have expected to receive the following neat parody of a well-known limerick:
"On the chest of a barmaid from Yale,
Were tattoed some brands of good ale.
While on her behind,
For the sake of the blind,
Was the same information in braille"
Now the IPKat understands what it really means to be called to the Bar ...

Tuesday, 24 August 2010

Stig-ment of the imagination?

In "Top Gear Stig legal wrangle goes to court", the BBC has reported a brisk dispute between the Beeb itself and popular publisher HarperCollins over the publication of a book that reveals the identity of BBC's Top Gear TV programme participant The Stig. The BBC is seeking injunctive relief. "Tame racing driver" The Stig never removes his helmet on the show and, the BBC maintains, the book's publication will breach contractual and confidentiality obligations following "an attempt by an external party to profit from unauthorised use of the Top Gear brand, one of the BBC's biggest and most watched shows in the UK and around the world".


Several newspapers have already carried speculation that the character's true identity is former Formula Three driver Ben Collins, based on the financial reports of his company.

HarperCollins has expressed its disappointment that the BBC has "chosen to spend licence fee payers' money to suppress this book" and says it will vigorously defend the perfectly legitimate right of this individual to tell his story".

According to the IPKat, the intriguing thing about this story is that the BBC spokesman is reported as identifying the primary reason for a confidentiality and copyright suit as protecting the BBC against an attempt by an external party (HarperCollins, actually) to profit from the unauthorised use of the Top Gear brand. This confusion between causes of action might not reflect the usual press ignorance about IP. Instead it probably genuinely identifies why the BBC has sued in this case -- the mighty corporation is only a frustrated brand owner trying to protect brand values but against activities that are not infringing its trade mark rights.

Merpel says, the BBC is trying to protect the entertainment value is something that is entertaining only because it is secret. The Stig's real identity doesn't matter at all - what matters is the fact that it isn't known. In other words, the value of this secret is only the fact that it's a secret, since that gives it entertainment value -- and entertainment value is real value for an organisation whose business is entertaining. She adds, HarperCollins might be better advised to publish a children's book revealing Father Christmas's true identity. The BBC would have no basis for stepping in to stop that!

People whose true identities were supposed to be secret here, here and here
Peopl whose true identifies we wish were secret here and here

Sun in August? Summery but not so summary

Readers may remember this dispute as Sun Microsystems Inc v M-Tech Data Ltd and another (noted by the IPKat here), but it has resurfaced today -- at a time when Court of Appeal judges should be out in the sun, not judging it -- as Oracle America Inc (formerly Sun Microsystems Inc) v M-Tech Data Ltd and Lichtenstein [2010] EWCA Civ 997. The Court consisted of Lady Justice Arden, who delivered the judgment, aided and abetted by the Master of the Rolls and Lord Justice Tomlinson.

Sun owned a series of UK and Community trade marks comprising or consisting of the word 'Sun' for computers, computer hardware, computer software and computer peripherals. M-Tech, a UK company, supplied computer hardware in the "secondary market" for hardware originally sold by major manufacturers like Sun and its rivals. M-Tech bought 64 Sun disk drives from a US broker and sold them in the UK. Sun sued for trade mark infringement, alleging that M-Tech had put the drives on the UK market without Sun's consent. M-Tech maintained however that, since Sun hadn't shown where the drives had been first marketed, its attempt to enforce its trade mark rights was contrary to Articles 28 to 30 of the EC Treaty since its effect would be to prevent the attainment of a single market in hardware. Further, the enforcement of Sun's rights in this way was contrary to Article 81 of the EC Treaty and therefore prohibited.

Sun, maintaining that there was no evidence to suggest it had ever consented to the importation of these drives into the EEA, sought and obtained summary judgment, having furnished evidence that the drives had initially been placed on the market outside the European Economic Area (EEA). According to Mr Justice Kitchin:

* The court had to ask whether the claimant had a 'realistic' as opposed to a 'fanciful' prospect of success, one which carried some degree of conviction and which was more than merely arguable.

* In reaching its conclusions the court should not conduct a mini-trial, but had to take account of evidence that could reasonably be expected to be available at trial.

* The court should not be hasty to reach a final decision without a full trial where reasonable grounds existed for believing that a fuller investigation into the facts of the case would add to or alter the evidence available to a trial judge and so affect the outcome of the case.

* Summary disposition was not appropriate in any area of law that was still developing.

* 'Consent' -- the parallel importer's favourite defence to a trade mark infringement -- had to be a pan-European concept under harmonised European law. It was thus up to the European Court of Justice to supply a uniform interpretation of the concept of 'consent' to the placing of goods on the market within the EEA. In view of its serious effect in extinguishing the exclusive rights of proprietors of trade marks, consent had to be expressed in such a way that an intention to renounce those rights was unequivocally demonstrated. While such an intention would normally be gathered from an express statement of consent, it was conceivable that consent might be inferred from the facts and circumstances surrounding the placing of the goods on the market outside the EEA that unequivocally demonstrated that the proprietor had renounced his rights.

* Implied consent to the marketing within the EEA of goods put on the market outside that area could not be inferred from the mere silence of the trade mark proprietor, from the fact that the proprietor had not communicated his opposition to goods placed on the market outside the EEA being placed on the market within the EEA or from the fact that the goods carried no warning of a prohibition on their being placed on the market in the EEA.
The Court of Appeal, in a relatively short decision, granted the defendants permission to appeal, since M-Tech was entitled to argue that Articles 28 to 30 and 81 of the EC Treaty prevented Oracle from obtaining summary judgment for trade mark infringement. Reminding the parties that the fact that this application for permission to appeal was allowed didn't mean that M-Tech wouldn't have to substantiate its defences, the court directed Oracle to call for a case management conference as soon as possible, perhaps for the strange reasons that (i) it has the potential to establish an industry precedent and (ii) it looks like a good prospect for a reference to the Court of Justice of the European Union. Thus the court said (at para. 41):
“... This case clearly has important financial and economic implications not just for the parties but also for others involved in the grey market in Oracle, and possibly other, computer hardware and goods. The economic function of parallel imports and the grey market is controversial”,
adding ominously (at para. 42):
"If M-Tech's allegations are established, the trial judge will have to consider whether to make a reference to the Court of Justice to enable him to decide the issues in the action. In the absence of any material change in European Union law or in M-Tech's case, there would be a strong case for a reference by the trial judge. The point is not acte clair, and in this case where the issues involve questions of economic policy likely to affect the European Union as a whole and where this court has already considered the points of European Union law in issue, there would be a good reason to make a reference without waiting for the case to reach this court again".
The IPKat is unhappy. He thinks that, strictly speaking, the Court of Appeal is correct to say that, as it stands, the raising of Euro-defences under the Treaty or its renumbered successor in title the TFEU is not likely to be a strong candidate for summary judgment. If this is so, parallel traders can routinely plead Euro-defences and thereby avoid summary judgment and cause havoc among legitimate rights owners.

Summary judgment here and here
Summery judgment here

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