|What?! February is almost Gone!!!!!!!|
Monday, 27 February 2017
“On January 27th, the Spanish Supreme Court published new regulations on appeals, which for the first time restrict the length of the appeal to 25 pages. This is likely to be received with horror by some IP attorneys, who have been quite accustomed to sending in at least three times that much. The Court complains about the “exorbitant length” of many appeals, which—
"far from facilitating judgment, increase the level of difficulty during the admission phase, hamper correct understanding of the appellant’s petitions, add confusion to the debate and frequently provoke that the really relevant arguments remain hidden in an accumulation of reiterated or even contradictory pleadings”.Surely not? The Court backs up its decision with an explicit reference to article 481.1 of the Civil Procedural Act which, paradoxically, calls for the legal grounds to “be set forth with the necessary length”. As if all this were not upsetting enough, attorneys are now faced with a regulation restricting the font size to “10 points in footnotes”. The upsetting part is of course not the 10-point font, but rather the very idea that footnotes might be used in a court submission. Such literary innovations have long been considered heresy by a profession which prides itself on tradition.
However, the new regulations are not limited to style and consolidate many substantive improvements in access to appeal. In the past, this depended entirely on meeting the technical criteria laid down in the statutory rules concerning economic value or contradiction of precedent. The Court will now in exceptional circumstances consider appeals where, “in the opinion of the Supreme Court”, there exists a need to create or modify case law due to the fact that the “social reality or the common opinion of the legal community has evolved in relation to a certain matter”. Although standard fare in other jurisdictions, this exercise of court discretion is the exception rather than the rule in Spain, which up to now has clung to the idea of a numerus clausus. The grounds of appeal were limited to those explicitly provided for by statute. This had not changed and the court has no discretion to refuse to allow appeals to proceed if these grounds are met. Indeed, this is a central aspect of the constitutional right of access of the citizens to the courts, one of the resounding successes of Spain’s democratic system.
These changes are evidence of the continuing modernization of the Spanish court system, which will be warmly welcomed by IP practitioners. As these ideas trickle down to the lower courts, they can only add to Spain’s current advantage in relation to the speed of proceedings: 12 to 14 months for a first instance judgment in a patent or trademark case, provided one picks the right court. This is due in no small measure to the fact that the Spanish procedure is one of the most front-loaded in the world – all documentary evidence and expert reports must be supplied with the claim, with no opportunity to do so later or to change legal and factual pleadings.”
Sunday, 26 February 2017
As recounted, clothespins first appeared in the 19th century. Before then, wet laundry was simply laid out to dry on bushes, tree limbs and other available natural platforms. The earliest clothespin patent issued in 1832 in the name of Samuel Pryor, being a bent strip of wood held together by a wooden screw, fashioned in one piece and which held the wet clothes by virtue of a gripping action. Unfortunately, as described by Anita Lahey, the devise was impractical because “… even dampness would cause the screw to swell, rendering the pin inoperable.”
The breakthrough occurred in a patent issued to David Smith in 1853. Smith, a resident of Vermont who was a prolific inventor in a number of different fields, described the defect of the then-current form of clothes as frequently being “detach[ing] from the clothes by the wind as is the case with the common pin and which is a serious evil to washerwomen.” His solution was a two-piece device, which contained two prongs with a small spring wedged in between. In the words of the patent—
“By pushing the two superior [upper] legs together the inferior [lower] ones are opened apart so that the instrument can be safely placed on the article of clothing hanging on the line. This done the pressure of the fingers is to be removed so as to permit the reaction of the spring C to throw the inferior legs together, and cause them to simply grasp the piece of clothing and the line between them.”It seems that some mass manufacture (in the terms of mid-19th century America) of clothespins had begun already in the 1840’s. Try as he could, this Kat could not find any account directly connecting Vermont with such manufacture before Smith’s invention. However, this Kat’s historian instincts suggest that already at least some of this production was taking place there, if for no other reason than the availability of lumber in the forests dotting the state. As well, that Smith chose to make an invention regarding clothespins points to the presence of at least a nascent industry as a spur for his inventive talents. In other words, the components were already being put into place for Vermont to become the center of the clothespin industry.
Moore’s invention seems to have perfectly filled the bill. As Moore described his invention, it was--
“… an improved article of manufacture, the clothes-pin described, consisting of the two clamps having the fulcrum-recess on their inner sides about midway of their length, the line-grooves in the beveled jaws, and the transverse grooves a on their outer sides in rear of the said line-grooves, and the spring composed of a single wire coiled at D, with the tangential arms E at opposite ends of the coil, with angular branches f at their outer ends, to engage the sides of the clamps and 5 prevent lateral displacement thereof, and the terminal parallel branches 9, oppositely directed to engage the grooves 011 the outer sides of the said clamps, substantially as specified.”
bad Kat pun once again) or less, walked across street and established a rival, the National Clothespin Company, whose hallmark was an improved and less expensive means for manufacture of the spring fulcrum. Allan Moore’s company overtook The United States Clothespin Company as the industry leader. By virtue of a reservoir of experienced labor, know-how, an ever-seeking inventive environment, as well as Vermont-based lumber, the state had become the Silicon Valley of wooden clothespins.
But its pre-eminence was short-lived. After World War I, European competitors, especially those from Sweden, could manufacture wooden clothespins for less. The automatic clothes dryer diminished demand in various markets. The United States Clothespin Company closed for good in the 1940’s. Later, Chinese imports became a further challenge. The National Clothespin Company held on until 2009 as the last U.S. manufacturer of wooden clothespins, although it still makes clothespins of the plastic variety. By then, Vermont as the Silicon Valley was long a thing of the past. [Still, it is worth noting that except for the Wikipedia entry for "Clothespin", which does not provide citations for some of these facts, this Kat found no corroborating on-line information, except for reports that the company had ceased manufacture of the wooden clothespin in 2009.] Be that as it may, maybe all that remains are patent citations, as late as in a 1998 filed application citing the Smith patent.This is testimony both to just how pathbreaking these 19th century patents were, but also the limits of how far even the most innovative patents can take an industry, whether or not it was the Silicon Valley of its time.
To view Rodney Dangerfield and his skit on “respect”, see here.
For the "Clothespin" steel sculpture by Claes Oldenburg in Center Square in Philadelphia, see here.
By Neil Wilkof
Image: Found Animals Foundation
Saturday, 25 February 2017
|View of the EUI campus |
(allegedly the one portrayed is also the villa
of Boccaccio's Decameron)
It is now the title of a workshop [that I have helped organizing] that has three irresistible features:
- It is about EU copyright;
- It is going to be held in Florence;
- It is going to be held in Florence in late April.
Back in 1992, Argos Systems Inc (ASI), an American company specialising in CAD systems for the design and construction of buildings, registered the domain argos.com. Several years later in 1996, Argos Limited, a well known UK retailer registered argos.co.uk. Argos owned various EU and UK trade marks for ARGOS but was too late to the domain name party to secure the .com.
Between December 2008 and January 2012, ASI's website included Google AdSense ads to all visitors. From January 2012 to December 2014, the website settings were reconfigured so that only visitors from outside the Americas saw the Google ads. The vast majority of visitors to argos.com came from the UK and Ireland with the majority of these visitors (83%) immediately leaving the site. Argos was understandably suspicious that the Google ads were left on for visitors outside the Americas with the intention of generating advertising revenue from Argos' name. They were particularly peeved that some of the adverts which appeared on argos.com were for Argos itself and its competitors. Argos alleged free riding and damage to the distinctive character and reputation of its trade marks.
ASI relied heavily on an indemnity in the contract between Google and Argos which conferred third party rights on ASI.
|Not to be confused with...|
Argos argued that the combination of the domain name argos.com plus Google ads (some of which included ads for Argos or Argos' competitors) amounted to trade mark infringement. This allegation failed for two main reasons: (1) Argos had consented to the use when it signed Google's terms and (2) in any event there was no targeting of UK consumers.
How did Argos consent?
It was common ground that the use of the domain alone was insufficient to establish trade mark infringement (or passing off). In order to succeed in its claim, Argos needed the domain name plus something else.
The judge found that:
- when it signed up to Google's advertising service, Argos had expressly and unequivocally consented to ASI's use of ARGOS in its domain plus adverts for Argos' goods and services. Therefore any claim founded on adverts for Argos appearing on argos.com was 'doomed to fail' because the Claimant had consented to this use.
- The clear terms in the AdWords terms, the judge noted that it had been open to Argos to block its ads from appearing on argos.com but had declined to use this feature.
- Even if Argos did not have direct knowledge of where its ads were appearing this knowledge was available to its advertising agency and was attributed to Argos under ordinary agency principles.
- those for Argos which Argos had consented to when it signed up for Google AdWords;
- those clearly not aimed at UK consumers (e.g. because the price was in dollars);
- those which may be aimed at UK consumers;
- those which were definitely aimed at UK consumers but were obtained as a result of cookie manipulation.
Friday, 24 February 2017
|Will pirates have |
a harder time now?
|Celebratory fika time |
for Swedish rightholders
The injunction enters into force on 28 February and will be in place for three years. The decision may not be appealed since the Patent and Market Appeal Court is in principle the last instance court in IP cases."
The common reading of the ECJ's (yes) recent judgment in case C-367/15 - OTK is that the Enforcement Directive (Directive 2004/48) does not compel Member States to introduce punitive damages for infringement of intellectual property rights, but allows for national law to impose punitive damages (see, e.g., the case reports on IPKat or Kluwer Patent Blog).
But a closer reading of the decision casts some doubt on this common understanding. In the answer to the question (for the background of the case see the IPKat post), the ECJ states "Article 13 of Directive 2004/48/EC ... must be interpreted as not precluding national legislation ... under which the holder of an intellectual property right that has been infringed may demand from the person who has infringed that right either compensation for the damage that he has suffered ... or, without him having to prove the actual loss, payment of a sum corresponding to twice the appropriate fee which would have been due if permission had been given for the work concerned to be used."
In the grounds for the decision, the Court further elaborates (paras. 29-31, emphasis added):
In addition, without there being any need to rule on whether or not the introduction of ‘punitive’ damages would be contrary to Article 13 of Directive 2004/48, it is not evident that the provision applicable in the main proceedings entails an obligation to pay such damages.
Thus, it should be pointed out that, where an intellectual property right has been infringed, mere payment of the hypothetical royalty is not capable of guaranteeing compensation in respect of all the loss actually suffered, given that payment of that royalty would not, in itself, ensure reimbursement of any costs — referred to in recital 26 of Directive 2004/48 — that are linked to researching and identifying possible acts of infringement, compensation for possible moral prejudice (...) or payment of interest on the sums due. Indeed, OTK confirmed at the hearing that payment of twice the amount of the hypothetical royalty is equivalent in practice to compensation of an amount remaining below what the holder would be able to claim on the basis of ‘general principles’, within the meaning of Article 79(1)(3)(a) of the UPAPP.
It is admittedly possible that, in exceptional cases, payment for a loss calculated on the basis of twice the amount of the hypothetical royalty will exceed the loss actually suffered so clearly and substantially that a claim to that effect could constitute an abuse of rights, prohibited by Article 3(2) of Directive 2004/48. It is apparent, however, from the Polish Government’s observations at the hearing that, under the legislation applicable in the main proceedings, a Polish court would not be bound in such a situation by the claim of the holder of the infringed right.
From the first sentence emphasized in the passages cited above it becomes clear that the Court of Justice explicitly did not address the issue of whether Article 13 of the Enforcement Directive prohibits punitive damages, because according to the Court, the amount payable in the present dispute does not amount to punitive damages.
The second emphasized sentence makes clear that a "compensation" that substantially exceeds actual damages suffered may constitute an abuse of right. This sounds harmless enough - but to assess whether the hypothetical (double) royalty exceeds the actual loss suffered, the actual loss needs to be calculated, and that is exactly what provisions setting a hypothetical royalty want to do away with, because it is difficult and costly. It also raises the question of burden of proof - generally, the burden of proof for losses suffered lies with the party claiming compensation (typically the rightsholder). Where the law provides for a double royalty payable irrespective of actual loss suffered, the burden of proof that the double royalty "substantially exceeds" the actual loss is however an exception that needs to be proven by the party invoking the exception, i.e. the infringer.
In sum, the judgment in C-367/15 - OTK leaves room for debate whether the statutory damages due in a specific case are permitted under the Enforcement Directive, and it specifically does not address whether "punitive" damages are permitted under the Enforcement Directive.
For the pointer I thank Guido Kucsko, Vienna.
Thursday, 23 February 2017
"In the Intellectual Property Office of Singapore case of AUDI AG v Lim Ching Kwang  SGIPOS 2, German car maker AUDI AG applied on 31 March 2015 to revoke and declare invalid Registration No. T0911230B for a stylised trade mark “AOne”, in the name of Lim Ching Kwang, a spare parts trader. The mark is registered in respect of Classes 7 and 12, of which the proceedings involved only the latter class. The grounds for revocation and invalidation are respectively Section 22(1)(a) and (b), and Section 23(1) read with Section 7(6), of the Trade Marks Act (TMA).
Revocation--In respect of the revocation application, the Registrar had to decide whether the mark has been put to genuine use in relation to the Class 12 goods it covers during the period of non-use alleged by AUDI. Taking into account all the relevant circumstances and the evidence tendered by Lim, including emails, quotations, purchase and delivery orders, invoices, and pictures of packaging boxes labelled with the mark, the Registrar found that Lim has made genuine and not mere token, colourable or internal use of the mark in relation to torque rod bushes during the relevant period.
The Registrar disagreed with AUDI’s argument that an instance of Lim’s use of “AOne” in plain font in an e-mail quotation does not constitute use of the stylised “AOne” mark as registered, stressing that the adduced items of evidence must be considered in totality. The Registrar was also sufficiently convinced that, on the balance of probabilities, another instance of Lim’s sale of torque bushes to a local company involved use of the mark as labelling on box packaging for the goods. This is even though the fact that “AOne” brand label stickers were shipped to Singapore together with torque bushes, when looked at in isolation, does not show that such use materialised. As noted, the evidence must be considered in totality.
Nevertheless, as Lim failed to show use of the mark in respect of all the Class 12 goods covered by his registration, the Registrar proceeded to decide that the limitation of the specification to “torque rod bushes” would be fair for the use made. AUDI therefore partially succeeded in revoking Lim’s registration with effect from 19 January 2015, save for this lone item.
Invalidation--As for the invalidation action, the Registrar had to decide whether the mark was applied for in bad faith. AUDI’s case was that Lim’s specification is overwhelmingly broad in reproducing the entire list of Class 12 goods in the Alphabetical List of the Nice Classification, and clearly it cannot be a realistic or bona fide intention to use the mark for all the goods. To support this, AUDI further relied on the modest scale of Lim’s business, judging from its paid-up capital.
The Registrar held that it is baseless to conclude that a specification is too broad merely because it encompasses all the goods in the Alphabetical List of the class concerned. Neither is paid-up capital a reliable indication of the present and future trading capacity of a business. Furthermore, it is legitimate and not prohibited by law to seek registration encompassing present as well as intended future uses of a mark, and applying for a specification wider than current trading scope does not impute a departure from established principles of ethical conduct or honesty in commercial dealings.
Although the mere length or breadth of a specification is no basis for a conclusion of bad faith, the Registrar further held that a lack of intention (at the time of filing) to use a mark for all the goods claimed can constitute bad faith, given that the form of application for registering a mark incorporates a declaration of actual or bona fide intention to use. Given Lim’s legitimate spare parts business and market expansion intentions, coupled with the lack of evidence of unconscionable conduct or moral impropriety on Lim’s part, the Registrar decided that the high standard of proof for a bad faith claim has not been met. AUDI therefore failed in this invalidation action.
This case illustrates how non-use of a trade mark can attract loss of registration rights. It also reflects the burden of proof associated with bad faith allegations, and warns that broad specifications may be scrutinised for bad faith allegations."
Rosie Burbidge brings readers a Polo story: the longstanding dispute between the Beverly Hills Polo Club’s UK licensee (Lifestyle) and its increasing defendants that concerns infringement of EU and UK trade marks and procuring breach of a licence agreement.
Eibhlin Vardy recaps the Court of Appeal’s answer to the question of “Can an employer be 'too big to pay' employee-inventor compensation under s40(1) of the Patents Act?” – the court has provided guidance on the relevance of this issue to the question of “outstanding benefit” in the long running dispute of Shanks v Unilever PLC and others  EWCA Civ 2.
InternKat Hayleigh Bosher
|No more counterfeiters.|
Eleonora Rosati speaks on the AG Szpunar’s “extremely interesting” opinion advising the CJEU to answer the question of the Dutch Supreme Court regarding the Stichting Brein, C-610/15 case in the AFFIRMATIVE.
* No more counterfeiters! Chanel, Apple, Bayer, LVMH (and more) write to President Juncker on revision to IP Enforcement Directive
“Can you just agree the confidentiality club regime with the other side?” -- the popular AmeriKat this time invites Kat friend Christopher Weber (Kather Augenstein) to explain the recent ground-breaking decision from Düsseldorf which is set to make litigating standard essential patents (SEP) in Germany a whole lot easier.