The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Wednesday, 26 July 2017

EPO takes an ‘about turn’ on the patentability of products obtained by essentially biological processes

The IPKat faces down Broccoli 
At the end of June the EPO published a notice (see here) stating from 1 July 2017 plants and animals exclusively obtained by means of an essentially biological process will no longer be patentable.  With thanks to Gemma Barrett (Bristows) who explains what this means:  
"Many readers will be aware that the EPO's Notice represents a U-turn for the EPO following the decisions of the Enlarged Board of Appeal (EBA) in 2015 in the Tomato II and Broccoli II cases (G2/12 and G2/13). Here the EBA conducted a lengthy and in-depth legal analysis leading to the conclusion that a narrow interpretation of Art 53(b) EPC was appropriate and as a result plants and animals derived from essentially biological processes were in principle patentable, even if they were inevitably derived from such processes.

The law seemed settled until the European Parliament asked the EU Commission to consider various issues concerning the Biotech Directive (Directive 98/44/EC). The exclusion to patentability in the Biotech Directive is framed much like that in Article 53(b) EPC i.e. it expressly excludes from patentability essentially biological processes for the production of plants and animals but does not mention products derived from such processes. The Commission reviewed the context and provisions of the Biotech Directive and published a notice on 3 November 2016 (Notice 2016/C 411/03) concluding that the European Union legislators’ intention when adopting the Biotech Directive was to exclude such products from patentability. 
In response to the Commission Notice in November last year the EPO stayed all proceedings in relevant examination and opposition cases ex officio. This remained the situation until the EPO notice published at the end of last month.
The Commission’s Notice states that it is intended only as guidance and, in any event, the EPO is not bound by the views of the Commission nor any decision of the Court of Justice of the European Union (CJEU) on interpretation of these provisions. So why the change in position by the EPO? The EPO notice states that the decision has been taken by the Administrative Council to safeguard uniformity in harmonised European patent law. It seems the EPO wanted to avoid future divergent decisions on this issue around Europe for example between EU member states and between these member states and the EPO. In addition, the Biotech Directive itself is relevant to the EPO when considering patentability. The EPC Implementing Regulations were amended to include its main provisions and it is used as a supplementary means of interpretation (see Rule 26(1) EPC). In these circumstances the possibility of legal disharmony seemed inevitable.

Following the EPO notice the Administrative Council has amended Rules 27 and 28 of the Implementing Regulations to the EPC and these changes came into force on 1 July and apply to European patent applications filed on or after this date, as well as European patent applications pending at that time. The key provision in Rule 28(2) now reads:
“(2) Under Article 53(b), European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process.”
This may at first sight appear to be the end of the saga but is it? The Commission Notice is clear that it is a guideline document only, merely to assist in the application of the Biotech Directive, and only the CJEU is competent to rule on the interpretation of EU law. Hence there could still be a reference to the CJEU in the future."

Copyright protection of minimalist furniture design

Cross Frame Chair (1952)
In a recent decision, the Swiss Federal Supreme Court had the opportunity to clarify the requirements for the "individual character" of (super) minimalist furniture design.

The Swiss artist and industrial designer Max Bill (1908-1994) designed among others in 1952 the "Kreuzzargenstuhl" (cross frame chair) and in 1955/1964 a bar stool (see pictures). These were produced for decades by the furniture manufacturer Horgenglarus.

After Max Bill's death in 1994, his copyrights in his works were passed on to the Bill Foundation, which entered into a license agreement with Horgenglarus. In 2001, the Bill Foundation terminated the license. Horgenglarus kept manufacturing and selling the cross frame chair and bar stool designed by Max Bill, arguing that they did not enjoy copyright protection under Swiss law because they did not have the necessary individual character to be considered "works" in the sense of copyright law.

Bar Stool (1955/1964)
The Bill Foundation sued for copyright infringement before the Commercial Court of St. Gallen and prevailed regarding the cross frame chair, but lost on the bar stool. The Commercial Court held that all elements of the bar stool were known at the time of its creation, that it did not create or significantly influence a style of furniture design (as the Supreme Court's case law seemed to require for copyright protection of furniture designs) and if in doubt, copyright protection for works of applied art should be denied.

On appeal by the Bill Foundation, the Federal Supreme Court reversed the decision regarding the bar stool. It restated that the degree of individuality (originality)  required for a work to have individual character depended on the degree of freedom the category of works permitted. If the degree of freedom was limited, even minor deviations from known designs could convey individual character. On the other hand, if the design was entirely determined by technical considerations, there was no room for individual character. For chairs and stools, the degree of freedom was quite large, certainly their form was not determined exclusively by technical considerations.

The lower court had erroneously applied a "mosaic" approach to the assessment of individual character. It was irrelevant that all the elements of Max Bill's stool - the round seat, the three legs, the angle of the legs - were known in the prior art (see picture). Relevant was the overall impression of the design. The individual elements had never been combined in the way Max Bill combined them. The work was unique.

The design was also not determined exclusively by technical considerations. While each element served a technical purpose, the same purpose could be served by other forms (e.g., a square instead of  a round seat).


Prior Art for the Bar Stool
The Supreme Court then "clarified" (overruled, really) its earlier statements that a furniture design needed to start or substantially influence a new style in order to enjoy copyright protection. This was not absolutely necessary as long as the design in question was more than a mere work of craftsmanship or industry and showed a degree of individual artistic design.

While the Supreme Court left open the question whether for works of applied art the bar for individual character should be set higher than for other works (because they could also be protected by registered designs), it appears pretty clear that the Supreme Court now applies the same (low) standard for individual character to works of applied art as to other works (see the BGH's "birthday train" decision).

While this decision concerns Swiss law, UK courts likely will soon have to grapple with the question when a furniture design is a "work of artistic craftsmanship" in the sense of the Copyright, Design and Patents Act 1988 after the repeal of section 52 CDPA.

Decision 4A_115/2017 of 12 July 2017.

Disclaimer: the firm I am working for represented the Bill Foundation in the proceedings against Horgenglarus.

Tuesday, 25 July 2017

Geographical Indications: News from the UK and New Zealand

If you're a foodie and an IP enthusiast, no doubt Geographical Indications (GIs) are a favourite topic of discussion. Recently, two GI related developments have caught this kat’s eye, in the UK and New Zealand.

A geographical indication (GI) is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that particular origin. The GI identifies a good as originating in the territory where a particular quality, reputation or other characteristic of the good is essentially attributable to its geographical origin. The purpose of the GI is to inform consumers about a product’s geographical origin and a quality, characteristic or reputation of the product linked to its place of origin. [Protection is provided under the TRIPS Agreement] For example Greek Yoghurt (Kat post here) and the Cornish Pasty (Kat post here).

Kats keeping an eye on the Fish
In recent news in the UK, the country's oldest smoked salmon business H Forman and Sons has become the first London food producer of either food or drink to receive the hallowed European Protected Geographical Indication (PGI) status for our London Cure smoked salmon.

The GI status was granted after a four-year process and the award has been praised by Prime Minister Theresa May and the Mayor of London, Sadiq Khan. H Forman & Sons stated on their website that they welcomed the protection for their craft which they have been practicing for over 100 years.

Unavoidably, as is the case of anything regulated at EU level… someone whispers ‘what about Brexit?’ As Lance Forman, formerly a special adviser to Conservative MP Peter Lilley and now owner of H Forman & Sons said: “Nobody knows whether PGI status will be called into question when we leave the EU, it’s one of the things that’s up for discussion… I would imagine that if Britain is no longer part of PGI we will have our own scheme that mirrors it because there needs to be mutual respect.”

Evidently, being signatory to the TRIPS agreement, the UK will still continue to have GI protection but this will need to added to the ever growing list of new regulation required. Perhaps the UK might look over to New Zealand where such legislation has just been approved.

Just testing the geographical authenticity of this wine 
New Zealand has approved and published new regulations that establish the Geographical Indications Register for wines and spirits. The long awaited regulations set out the procedure for examining and registering a geographical indication under the Geographical Indications (Wine and Spirits) Registration Act 2006. The Act and regulations come into force on the 27th July 2017. The regulation is particularly relevant for the protection of the New Zealand wine brand, a reputation that was recognised by the Minister of Commerce and Consumer Affairs the Honourable Jacqui Dean.

After the 27th July 2017 it will be possible to apply to register a geographical indication in New Zealand for foreign and domestic GIs. The registration process, and the Register of Geographical Indications, will be administered by Intellectual Property Office of New Zealand.

It will be interesting to see how the legislation is applied in New Zealand and if/how the UK decide to legislate on GIs in the future.

Cats vs Fish Tanks here.
Photo credit: (fishtank) play4smee and (wine) Helena Jacoba

Monday, 24 July 2017

French Supreme Court : End of the trade mark dispute over 'Cheval Blanc'

'How long do you have to take legal actions against a deceptive mark?' was the last question asked to the French Supreme Court in a decade-long dispute between two wine-making companies, over the trade mark rights in the household name 'Cheval Blanc' (Cour Cass, Ch. com., 8 juin 2017, decision No 15-21.357 - here in French language). 'As long as the statutory limitation' will allow, the Court said. Yet, this answer does not quite clarify the crux of this claimant's matter...what should be the starting point of this limitation period...the day the mark was registered or the day the deceptiveness ended?

Estate of Château Cheval Blanc
The claimant in this dispute is the wine-making company trading as 'Château Cheval Blanc' based in St Emilion, a region of France well-known for its vintage. The company registered the work mark 'CHEVAL BLANC' for the class of goods 33, in 1933 and renewed its registration ever since. In 2008, Château Cheval Blanc assigned a competitor, Mr Chaussié and his company "Chaussié de Cheval Blanc",  in revocation of two of their trade marks and of their company's name.

The defendant has owned the word marks "Domaine du Cheval Blanc" (reading in English " Estate of Cheval Blanc") and "Chateau Relays Cheval Blanc", as well as the graphic mark featuring a horse head (see below) for the same class of goods (33) since their registrations in 1973 and 2003, respectively. The dispute had taken them to the Bordeaux Court of Appeal in 2012 which confirmed the dismissal of Château Cheval Blanc's claim by the judgement of first instance. Both decisions confirmed the defendant's right to use the place name "Cheval Blanc" in the context of his professional activities, including trade mark registrations and the name of his registered company. However, neither lower court responded to the claimant's argument on the deceptiveness of the mark, in their respective decisions. Château Cheval Blanc advanced that, even marks relying place names may be refused or revoked if deceptive. The claimant lodged their first appeal before the Court of Cassation on this ground, which was received by the highest civil court on  1 January 2014, the French Supreme Court. The Court of Cassation quashed the Court of Appeal decision for not addressing the question of deceptiveness, and referred the case back to them to perform the relevant assessments to this end.

In 2015, a different formation of the Bordeaux Court of Appeal heard the case upon referral from the Supreme Court. The appeal judges rejected for a second time the claimant's revocation for the latter had failed to comply with the (then) 30-year statutory limitation placed on legal actions. The Court of Appeal held that the claimant should have applied for the revocation of the word mark no later than 2003, counting thirty years from the registration of Chaussié's mark.
Chaussié's graphic mark registered in 2003

Following the Bordeaux decision, Château Cheval Blanc filed for a second appeal before the French Supreme Court arguing that the appellate Court had misinterpreted the provisions of the French Intellectual Property Code by concluding their right to legal actions against a deceptive mark had lapsed. The claimant argued that Article L 711-3 provided that the deceptiveness of a mark was unaffected by neither time nor use, and is a ground for revocation at any point within the period of the mark legally registered. Château Cheval Blanc thus submitted that their action against Chaussié's deceptive mark could not have lapsed, since deceptiveness is itself declared unaffected by time by Article L 711-3 which bases their action. The claimant also dispute the starting point for the limitation period picked by the Court of Appeal. In their view, the starting point of the time limitation of their action in revocation for deceptiveness could not have been the date of the registration of the mark because the 'vice' (of deceptiveness) of the disputed mark was still ongoing at the time proceedings were introduced. This, they contended, should have prevented any time from running, for the purposes of statutory limitation. Finally, the claimant appealed the decision of the Bordeaux Court to deny them damages for the prejudice they suffered from Chaussié's use of the phrase 'Cheval Blanc', they regarded to dilute the prestige and reputation of their business name and mark.

A Kat a bit touchy about her wine...
...who would not be?
The French Supreme Court rejected all claims for a second time. The highest court held that the fact that deceptiveness was unaffected by neither time nor use should not be interpreted as lifting statutory limitations on legal proceedings relying on Article L 711-3 as a primary cause of action. This response of the Supreme Court implies that, indeed, time does not affect claims of revocation for deceptiveness when the latter are introduced as a defence against infringement, but not otherwise. The question of the starting point of time limitations for the revocation of alleged deceptive marks was left unaddressed by the Supreme Court as it was a new argument introduced in appeal, contrary to procedural rules. The Court stressed that such grounds should be been raised in previous instances and could not be reviewed upon 'cassation' at this point, as it required an assessment of both facts and law for which the Court of Cassation has no authority, and the defendant should be given the opportunity to put forward a response to such claims. Finally, the Supreme Court confirmed the Court of Appeal's decision with regard to damages. The decision stresses that the claimant's prejudice in their reputation and name was unsupported by appropriate evidence.

One may question whether this decision will indeed be the finale of the dispute, as the question of the starting point of the statutory limitation of actions in revocation of marks of deceptive marks was left unanswered by the French Supreme Court. Should we expect yet another action from Château Cheval Blanc to clarify this point in the future?

The right of communication to the public ... in a chart

Right of communication
to the public?!
The right of communication to the public under Article 3(1) of the InfoSoc Directive has been subject to several (nearly 20) references for a preliminary ruling to the Court of Justice of the European Union (CJEU). Over time, this exclusive right has become increasingly complex, and yet absolutely topical to online exploitation of works and enforcement of relevant copyrights.

Article 3(1) of the InfoSoc Directive does not define the concept of ‘communication to the public’. This provision, in fact, only states that EU “Member States shall provide authors with the exclusive right to authorise or prohibit any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access them from a place and at a time individually chosen by them.” 

Lacking a definition of the notion of ‘communication to the public’, the CJEU has sought to determine the meaning and scope of this concept in light of the objectives pursued by the InfoSoc Directive, notably to ensure a high level of protection of intellectual property (Recital 24) and for authors. 

In its rich body of case law on Article 3(1) of the InfoSoc Directive, the CJEU has consistently stated that the essential requirements of Article 3(1) are an ‘act of communication’, directed to a ‘public’. In addition, the CJEU has also highlighted the importance of considering additional criteria which are not autonomous and are interdependent, and may – in different situations – be present to widely varying degrees. Such criteria must be applied both individually and in their interaction with one another.

So, what questions should you ask yourself when addressing communication to the public issues?

As part of my student materials [see here] and inspired by mandatory summer reading, ie magazines and their relevant quizzes, I have created a little - simplified - chart on the right of communication to the public post-Ziggo [C-610/15, also known as The Pirate Bay case]

If you are interested in a more extensive discussion of the requirements under Article 3(1) of the InfoSoc Directive, see this recent paper of mine here [presented here].



The chart can be also downloaded in PDF here. An alternative graphic representation of CJEU case law on Article 3(1) is available here.

Any feedback and comments are very welcome!

Event Report: The European Intellectual Property Teacher's Network 10th Anniversary Conference


The European Intellectual Property Teachers Network (EIPTN) brings together IP enthusiasts from across Europe to exchange ideas on best practice and innovation in teaching and learning activities relating to intellectual property. As long term readers of the IPKat Blog will no doubt remember, Blogmeister Emeritus Jeremy Phillips was a huge supporter of IP Education, and that was in fact the initial purpose of setting up this blog in 2003. THE EIPTN has been hosting discussion on best practices, new ideas and innovations in IP teaching for over 10 years [Kat post on the very first annual conference here!]

The 10th Anniversary EIPTN Conference (sponsored by the European Union Intellectual Property Office and the European Patent Office) took place at the University of Lund in Sweden at the end of June. Dr Jane Denoncourt (Chair EIPTN, Conference Convenor and Senior Lecturer at Nottingham Law School) reports on the event:

“Our annual two-day conference was hosted in Sweden by the vibrant Lund University. A very exciting year for the EIPTN as our host institution ranks 73rd in QS World University Rankings. The international EIPTN IP pedagogy conference attracted delegates from 20 countries. We kicked off with a Welcome event held at the elegant Faculty of Law in the centre of the ancient university town of Lund and were cordially received with glasses of bubbly and Swedish themed fare by Jur. Dr. UlrikaWennersten, a newly appointed EIPTN Committee member.

The EIPTN 10th anniversary gathering was a great opportunity to reflect on the past and future of IP education. IP educators generously shared their innovative work and we learned from some of the best IP education thought leaders in Europe. 
Alison Firth looking at the publications authored by EIPTN members

On Day 1 Kristina Eneroth (Associate Professor, Vice Dean of the triple crown School of Economics University of Lund) expressed her view that “brilliant research is no excuse for poor teaching”. An inspirational key note address by Marianne Levin, LL.D., PhD, honoris causa, Professor of Private Law Stockholm University ensured.  Marianne gave us her delightful ‘Memoirs of IP Law” which included a visually captivating presentation depicting how IP law has evolved from being ‘a little island to a big ocean’. Legal Advisor Louise Petrelius of the Swedish Ministry of Justice provided an encouraging update as to her involvement in the Unitary Patent and the Unified Patent Court that will rock the IP world.

In Session 1, we considered new approaches to IP education with presentations by Dr Sabine Jacques (University of East Anglia) who shared an amazing IP quiz game she developed to make learning IP fun. Thorsten Lauterbach (Robert Gordon University) spoke on flipping IP learning and the technology involved in making it work; Joe Sekhon (University of Portsmouth) explained how social media helps him to educate student entrepreneurs about IP. 

In Session 2, we applied ancient wisdom and modern thinking to IP education.  This provided a platform for Professor Laurent Manderieux and Jur. Dr.Gabriele Gagliani (Bocconi University) to communicate their use of the tried and true socratic method. The modern theme of diversity in access to IP education was shared by Caroline Coles (De Montfort University). Pavel Koukal,JUDr. (Masaryk University) entertained with a high profile Czech parody case and the use of Moot Courts to teach IP enforcement. 

Those relatively new to academia who have a role in keeping the teaching methods fresh, presented next. A lively introduction to IP Ethics and the ‘The Trolley Problem’ by Lauren Traczykowski(University of Birmingham) put a new twist on IP education. A series of music copyright awareness events designed by Haris Hasic (University of Travnik) which attracted high profile musicians followed. Hayleigh Bosher (University of the Arts London and IPKat) delivered an upbeat TED style talk on how she has succeeded in ‘Engaging Creative Students in IP Law Education’. Diane Nickl (EUIPO Academy) demonstrated the EUIPO Learning Platform and IP Content which is freely available online to IP educators. The EPO’s initiatives to promote IP in universities including research funding opportunities and study visits was the subject of Giovanni Arca’s presentation to the international group of IP educators and researchers. Day 1 ended after a walking tour of the stunning University campus and Swedish hospitality continued with a Gala Annual Dinner at the FinnInn Restaurant with Swedish folklore about the giant Finn.  
Conference attendees admiring the beautiful Lund

Day 2 began with talks on the theme of the ‘Future of IP Education’. The Chair of the UK IP Awareness Network, Professor Emirita Ruth Soetendorp discussed the impact of the UK Higher Education institutions IP policies on students.  Peter van Donger of the Netherlands PatentOffice shared the current trends in teaching IP. Dr Janice Denoncourt confirmed that £133 billion is the current estimate of the value of intangibles to the UK economy and that economic dependency on IP rights warrants the formal inclusion of IP law in the requirements for qualifying law degrees. The final session involved Nordic approaches to IP teaching led by Bente Fjeldberg, the Training and Development Manager of the Norwegian Patent Office.  Bente show cased their provocative TV programme ‘Patenting vs Research?’ made for the Norwegian Knowledge Channel that aired in October 2016.  A second TV programme is planned for Autumn 2017 which we are all keen to see.  The final session was a joint act with Ulrika Wennersten and her colleague Jur. Dr. Associate Professor Ulf Maunsbach (Lund University) who co-teach their innovative IP law case management module which involves Swedish lawyers mentoring IP students to conduct real IP cases in Swedish courts.

Two perfect days to perfect IP teaching and learning. Stay tuned for the announcement of the Harts Publishing Best Presentation Prize. Conference papers will be published in the Nottingham Law Journal and the Prometheus Critical Studies in Innovation journal with a Best Paper Prize sponsored by Routledge. 

We are extremely proud of our accomplishments in IP teaching in the EU and look forward to continuing to be at the forefront of developments in the field of IP education. Over the last decade, bringing together IP teachers in one place, has made us all aware of the strength of the network. To many of us, even those active in EIPTN for some years, the scale and reach of those achievements is a surprise.”

This is an annual conference, with the location for next year’s event still to be revealed. Keep up to date at and for further information about EIPTN see www.eiptn.org

Photos: Janice Denoncourt

Sunday, 23 July 2017

French Commercial Tribunal : clarity in paternity is key

The Commercial Tribunal of Lyon recently settled a dispute over the right of paternity in light design creations owned jointly by its authors (TGI de Lyon, Ch. 3 cab 3 C, 16 May 2017, L'Atelier Lumière and M. Nègre. v Les Eclaireurs and M. Goy - here in French language). In the decision, the tribunal reasserts the strength of this moral right by finding for infringement even in cases where the paternity is neither omitted nor incorrect but only "ambiguous".
Light design of 'Berre L'Etang'  by L'Atelier Lumière,
Pierre Nègre and Lucas Goy.

The parties to this case used to work together for the company "L'atelier Lumière" specialized in light design, also founded and managed by the claimant, Pierre Nègre. In 2008, the defendant, Lucas Goy, had left "L'atelier Lumiere" to set up a competing company trading as "Les Eclaireurs".

On his website, Goy shared photographs of six design projects he had contributed to during his time at L'Atelier Lumière. The light creations were presented as part of his design portfolio, together with other designs he had created throughout his career and since the foundation of his company. Whilst the website credited the works to Nègre and "L'Aletier Lumière", some reproductions also bore the name of the competing company.

Cat loving the back-light of this design
by Pottercraft Pictures
The claimant, Nègre, took issue with the fact that the reproductions of these light designs published would lead clients to believe that the competing company co-authored the works, breaching the right of paternity owed to his business (L'Atelier Lumière). He held that the mere reproduction of light design projects on Goy's website, created an unlawful form of "ambiguity" around the paternity of the works, even when the latter were credited correctly.

The claimant asked the Commercial Tribunal to order the take-down of the photographs from Goy's website, together with damages in the amount of 23,600 euros for breaching his company's moral right, 10,000 euros for moral damage ('préjudice moral'), and 247,400 euros for unfair competition and passing off. Nègre also also asked to have the outcome of the judgment published on the main page of the competitor's website as well as in at least three high-profile architecture magazines or newspapers, at the defendant's expense.

'Ambiguous' you say?
The Tribunal concurred that that the mere presence of the works on the company's website, even in the absence of wrongful credits, sufficed to breach of their owners' moral right as they were "ambiguous" about their paternity. The Tribunal thus ordered the take-down of the wrongful credits, and asked for any "ambiguity" with regard to the paternity of the works to be addressed. The decision awarded 10,000 euros in the form of damages for the moral right infringement and denied any publications of the judgment on the competitor's website or in the specialist press. However, the Tribunal rejected the claimant's request to prohibit the defendant, Goy, from referring to the light design works that he had co-created with Nègre on the website of his new company. The panel found the claim disproportionate, as it would prevent the defendant from accounting for his professional experience to clients and potential customers (unambiguously).

This decision evidences that the protection conferred by the moral right of paternity does not wither with collective ownership. It even extends to cases where credits are neither inaccurate nor omitted but merely "ambiguous". This certainly gives "teeth" to an old doctrine of authors' rights in the era of internet where companies' websites and online marketing strategies are ever so critical in attracting clientele.

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