BREAKING: German FCJ declares AdBlock Plus legal

Germany’s Federal Court of Justice has today decided in a year-long dispute between the German news publisher Axel-Springer-Verlag and Eyeo, the Cologne-based company behind AdBlock Plus.

AdBlock Plus is a browser-addon that blocks banners, pop-ups and other ads. Eyeo claims it is being used on more than 100 Mio. devices around the world. Unwanted ads are listed in a ‘blacklist’ and automatically hidden from every website a user visits. However, Eyeo provides advertisers the opportunity to have their ads added to a ‘whitelist’, if they comply with certain standards that are set by Eyeo. Additionally, advertisers need to pay Eyeo to have their ads added to the whitelist. Once on the whitelist, ads will be shown to users even if they have AdBlock Plus installed.

Axel-Springer-Verlag took offence at this business model and took Eyeo to court in 2014, essentially requesting a ban of the software on the grounds of competition law. The Regional Court of Cologne dismissed the claim, Axel Springer appealed. Upon appeal, the Higher Regional Court of Cologne partially reversed the first instance decision and agreed with Axel Spinger that by requesting advertisers to pay in order to have their ads added to the whitelist, Eyeo displayed forbidden ‘aggressive commercial practices’.

Such practices are deemed illegal by Section 4a UWG, the German Act against unfair competition. Section 4a UWG reads:

“Unfairness shall have occurred where a person engages in an aggressive commercial practice which is suited to causing the consumer or other market participant to take a transactional decision which he would not have taken otherwise. A commercial practice shall be regarded as aggressive where, in the factual context and taking account of all its features and circumstances, it is suited to significantly impairing the consumer’s or other market participant’s freedom of choice by

1.  harassment,

2.  coercion, including the use of physical force, or

3.  undue influence.”

The Higher Regional Court found that Eyeo’s business model could be seen as an ‘undue influence’ in the sense of the law. The judges saw a large market power of Eyeo due to the sheer number of AdBlock Plus users. Advertisers would be excluded from access to customers and had to buy their way out of this situation. 

Eyeo took the case to the FCJ, which today ruled in the defendant’s favor (case No. I ZR 154/16). So far, only a press release is available and it usually takes several months before the written reasons are published. From the press release, it is clear that the judges saw no acts of unfair competition by Eyeo. They found that the provision of an ad-blocker does not constitute a deliberate obstruction of competitors (Section 4 UWG). The judges also denied a deliberate interference with the plaintiff’s business. According to the FCJ, it remains the end-users’ decision whether they install and use and ad-blocker. Because of this autonomous decision of the users, any interference would only be ‘indirect’. An indirect interference could not be considered unfair, the court found.

Finally, the FCJ disagreed with the Higher Regional Court regarding ‘aggressive commercial practices’ by Eyeo. The judges stated that AdBlock Plus was not suited to significantly impair market participant’s freedom of choice, especially with regards to the plaintiff, who is not a consumer but a large news publisher. The details of this argument remain to be seen once the written reasons become available.

Boards bite back but need real teeth - Guest Contribution

The EPO is not this GuestKat's natural habitat, and so she was glad to be reminded of the consultation on the new rules of procedures of the Boards of Appeal from Katfriend Gwilym Roberts of Kilburn & Strode.  The online consultation is open until 30 April 2018, and readers are able to participate here.  Over to Gwilym for some suggestions and analysis:

"The proposed new rules of procedure of the Boards of Appeal at the EPO are aimed at streamlining matters but should they go further? 

The IPKitten getting her contribution in

The EPO has been streamlining all kinds of things recently with the “early certainty” programme. Search, examination and latterly opposition have all been subjected to efficiency measures, and whilst the balance with quality cannot be ignored (as the 924-Examiner-letter to the Admin Council shows), there is no question that speeding things up is generally welcomed.

As we all know, the Boards of Appeal are independent and, sadly, slow. However, they are taking action themselves by issuing a consultation on various changes to the rules of procedure that they follow in lieu of the Guidelines. The consultation is open until noon on 30 April 2018 and is likely to attract huge interest from national institutes, practitioners and no doubt EPO Appeal Board members and Examiners. It seems, mostly, to address all the right problems, but in some ways possibly could learn from national law in ensuring that the proposed good practices are adequately enforced. Here are some key proposals:

More clarity over acceleration of appeal proceedings

• Proposed amendments to Article 10 codify and replace a Notice in a 2008 OJ regarding accelerated processing
• The grounds for acceleration must be “objectively verifiable”, and examples given mirror the existing reasons, i.e. where there are infringement proceedings or a licensee decision depends on the outcome of the appeal. Accelerated opposition, however, has been dropped as an example ground for accelerating the appeal of that opposition.
• Perhaps the greatest concern is that this can be dependent on various factors including the workload of the Boards. Whilst this pragmatism is welcomed in one sense, the problem at the moment is that the workload of the Boards makes it impossible to accelerate proceedings, so it’s difficult to see how this is going to change. There is also a question mark over transparency. It would be very useful if we could see what the proceedings pipeline looked like so that we could understand the reasons and prospects for acceleration or non-acceleration.

More clarity over “amendment (of everything)” in the proceedings

• The proposed new rules explicitly remind us of the primary object of appeal proceedings: “To judicially review the decision under appeal”. As a result, a range of provisions underpin this declaration, removing or discouraging opportunities for practitioners to reopen cases altogether, as everybody is wont to do at the appeal stage at the EPO. The definition seems reasonable, and the proposals permitting its implementation largely codify existing Board of Appeal practice; in particular as Article 12 makes very clear, “amendments” are extremely unpopular under the new system, whether of requests, facts, objections, arguments and evidence. This becomes progressively more difficult through the appeal proceedings as discussed for example at Article 13 and 15, and in a further useful codification, the minutes of the first instance proceedings are now explicitly part of the appeal proceedings permitting, presumably, easier recognition of when the case is being “amended”. This has interesting ramifications in that the minutes of the first instance proceedings are going to become extremely important for minimising wrangling between parties, and we can only hope that in future the first instance minutes will be structured so that all of these possible areas of amendment can be easily and consistently recognised. It’s also going to be extremely important for practitioners to review the minutes carefully as soon as they’re issued at first instance going forwards. This clampdown on amendment is one area where the Boards of Appeal could perhaps do with more “teeth”. As we all know, they have the ability to award costs, but as we also all know, they rarely ever do because it’s rather difficult to enforce. Where amendments assist with procedural expediency, great. But elsewhere we may see huge and pointless discussions between parties about what constitutes an “amendment” to the case without any real sanction and this becomes an area of significant concern if we are to maintain procedural expediency for the Boards.
• The Boards may be removing some of the practitioner’s freedoms in playing with their appeal cases, but they give something back as well by replacing the word “may” with “shall” in relation to issuance of a preliminary non-binding opinion. This is essential and really helps all the parties understand what’s coming, especially if it could be signed off by the whole Board so that there is less prospect of surprise at the proceedings by the other two members when they find out what they’re supposed to be thinking. There is also mention in the explanatory remarks accompanying the proposed rule changes of case management – so pivotal in UK proceedings - and this is another area where the Boards could really do with some teeth, to ensure that, at every stage of the proceedings, they have control over timings, amendments and general behaviour of the parties, underpinned by a stronger costs regime. This would undoubtedly focus the minds of the parties to the proceedings and contribute to an enhanced procedure.

Postponement

• A minor but potentially important detail is introduced in relation to the reasons which can be presented for postponing Oral Proceedings – a notable omission currently from the proposed list is religious holidays and it would seem to make sense for the Boards simply to reiterate the list of reasons already in the Guidelines for first instance Oral Proceedings.

Transitional Provisions

• Finally, in relation to transitional provisions, whilst there will be some leeway for practitioners to transition to the stricter rules of procedure, it does not look like the Boards currently go far enough and in particular don’t recognise that behaviour right now at first instance could be highly relevant in a future appeal under the new rules of procedure. A simple example would be practitioners not advancing every possible request at first instance (because there is currently a little bit more leeway in introducing them later in appeal, for example) – if this is not taken into account then normal current practice could be penalised unfairly.

We need to see greater speed from the appeal procedure at the EPO, even more so if it is to be a worthy competitor to any UPC that comes into force. Treating appeals a little more classically is certainly a reasonable step in the right direction and largely codifies existing case law, but there seems to be a lot still to be learnt from “tougher” jurisdictions such as the UK to bring parties a little more to heel. Consultation is welcomed, as EPO consultations always are, and everyone should have a good look at the proposed changes and work out how best to feed back if they want to make sure that they get the appeal structure they want rather than the one they deserve!"

REMINDER - IPKat comment moderation policy

This GuestKat is conscious that some topics tend to provoke a more robust debate than others.  While encouraging readers to contribute to the debate, she would like to remind contributors of the IPKat's comment moderation policy:

1.Strictly no anonymous posts, only pseudonymous. This is mostly for readability in long threads.
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Thank you!

Poor reception for jurisdiction challenge to global FRAND licence relief

Does the English Court have jurisdiction to grant relief in the form of a global FRAND licence in relation to a claim for infringement of UK patents, where UK sales account for only 1% or less of worldwide sales on which royalties are claimed? This was the subject of the decision of Carr J. in the Patents Court on Monday in Conversant Wireless Licensing S.A.R.L v Huawei Technologies Co. Ltd, ZTE Corporation and Ors [2018] EWHC 808 (Pat).  The answer - on the facts of this case as explained below - was "yes". 

Home of the global FRAND licence

Background

Conversant claimed to have made a number of offers for a global FRAND licence to the Defendants Huawei and ZTE (who manufacture and sell mobile devices worldwide) in relation to Conversant's patents declared essential to various ETSI standards.  Conversant alleged that no meaningful progress had been made with Huawei or ZTE in discussions over several years, who it said continued to infringe without taking a licence.  Huawei and ZTE disputed that Conversant had any valid SEP - maintaining that the patents were not essential or invalid.  Conversant commenced proceedings in July 2017, claiming that the Defendants were infringing 4 EP(UK) patents, and sought a determination of FRAND terms for its global SEP portfolio. Conversant's global portfolio of patents includes SEPS in over 40 countries. 

Huawei and ZTE have commenced proceedings in China seeking to establish invalidity and non-infringement of Conversant's Chinese patents, with decisions on validity and infringement expected by mid 2019.  In relation to Huawei, China accounts for 56% of its worldwide sales, and Conversant relies on its Chinese patents to claim royalties on a further share (19%) for sales in countries where it has no patents, since China is the place of manufacture of the alleged infringements.  The UK accounts for only 1% of worldwide sales on which royalties are claimed.  For ZTE, 60% of operating revenue was from China in the first 6 months of 2017, whereas only 0.07% of ZTE's turnover was generated in the UK. The Defendants' jurisdiction challenge was premised on the "China-centric" nature of their businesses and can be summarised as follows:

1. The English Court has no jurisdiction to decide these claims which are, in substance and effect, claims for infringement of foreign patents, the validity of which is in dispute.

2. Alternatively, the Court should decline to exercise jurisdiction to decide the claims, because England is not the proper or appropriate forum - China is the natural forum.

Justiciability

It was common ground that Art 24(4) (validity of IP rights) and 27 (court first seised) of the Recast Brussels Regulation would require the English Court to declare of its own motion that it had no jurisdiction to adjudicate upon cases concerning the validity of (non-UK) European patents.  The Court also assumed that the English Court had no jurisdiction to adjudicate upon cases in which the dispute concerned validity of non-European patents.  The Defendants however maintained that Conversant's claims are in substance claims for infringement of foreign patents - which therefore depend on the validity of foreign patents, which the English Court has no jurisdiction over.

Although Huawei did not formally challenge jurisdiction in Unwired Planet [2017] EWHC 711 (Pat), it did rely upon some jurisdictional arguments to support its argument that a global licence was not FRAND, including that a worldwide FRAND determination in the English Court would undermine existing infringement and validity proceedings in Germany.  Carr J. referred to the "simple" and "compelling" analysis of the judge in that case, where it was held that the Brussels Regulation and CJEU case law has nothing to do with what the terms of a FRAND licence should be.

"If a worldwide licence is FRAND then requiring Huawei to take and pay for one would not amount to determining questions of validity in relation to which courts of other Member States have exclusive jurisdiction under Art 22(4) [now 24(4)]. Taking Huawei’s example of the on-going German proceedings, the German courts would remain free to determine the relevant patents’ validity. A FRAND licence should not prevent a licensee from challenging validity or essentiality of licensed patents and should have provisions dealing with sales in non-patent countries. So if the German courts decide all the relevant patents are invalid (or not essential), that would simply result in whatever consequences the worldwide licence provided for. Since the licence is a FRAND licence those consequences are FRAND too. The binding nature and clarity of Art 22(4) are not thereby undermined and, most importantly, there is no risk of the decisions in England and Germany conflicting." (para 567 of Unwired Planet)

Applying that reasoning to the present case, there was nothing to prevent Huawei and ZTE continuing with their validity challenges in China.  The English Court could take the decisions of the Chinese Courts into account in setting the global FRAND licence terms, and further, the English non-technical trial was not scheduled until 2020, after the Chinese trials would be concluded.  Any licence would contain a mechanism for dealing with patents held to be invalid after the licence had been settled - the effect would be lower royalty rates.

The Court noted that there were other fundamental objections to the Defendants' jurisdiction challenge - they argued that the entire claim was not justiciable, whereas the claims for infringement of UK patents were properly justiciable in the English Courts.  Further, the judge recognised the commercial importance in having a forum whereby a global FRAND licence could be determined.

Forum Conveniens

The Defendants also contended that the most appropriate forum for the dispute was China.  The Court referred to the basic principle in Spiliada Maritime Corp v Cansulex Ltd [1987] AC 460 that "a stay will only be granted on the ground of forum non conveniens when the court is satisfied that there is some other available forum, having competent jurisdiction, which is the appropriate forum for the trial of the action i.e. in which the case may be tried more suitably for the interests of all the parties and the ends of justice."

The Defendants submitted that the primary commercial driver for Conversant bringing the proceedings in the UK was to obtain a declaration for a global FRAND licence, and that the UK patents were merely a convenient hook upon which to hang the enforcement of a global FRAND licence.  They also offered to have a global FRAND rate determined in China.

On the other hand, the CJEU in Owusu v Jackson [2005] QB 801 held that an English Court could not apply the doctrine of forum non conveniens to decline jurisdiction over a claim against a European domiciliary on the ground that the natural forum for the claims was outside Europe (albeit the CJEU in that case did not state whether this doctrine applied in cases concerned with the subject matter of Art 24).  The Claimant pointed out that the claim regarding the UK patents would therefore remain in the UK and result in bifurcated proceedings.  Further, there was significant doubt that the Chinese Courts would have jurisdiction to decide the terms of a global FRAND licence and/or infringement of non-Chinese patents.

The Court came firmly down on the side of the Claimant. A key factor in the Court's reasoning seems to have been that the Chinese Courts did not have jurisdiction to grant a global FRAND licence. The Claimant's expert stated that the Chinese Courts cannot take action unless empowered to do so by an explicit provision, and there is no provision enabling the Chinese Courts to make a finding as to FRAND on a global basis. Following a review of expert evidence on both sides, the judge concluded that "China is not an alternative available forum in which infringement of the UK patents can be determined, nor in which the terms of a global FRAND licence can be set". Further, the claims were properly characterised as claims for infringement of four UK patents, notwithstanding that the object of the proceedings was either a global FRAND licence or FRAND injunction. The global FRAND licence sought by Conversant sets different royalty rates for different territories "and it makes no difference where the bulk of sales occur".

So overall, a resounding defeat for the Defendants in their jurisdiction challenge. If Conversant were able to establish jurisdiction in these proceedings against ZTE with 0.07% of turnover in the UK, it is difficult to conceive of many scenarios where jurisdiction would be refused - provided of course you have a UK patent in play.  

The FRANDly long arm of the IPKat

Other

There were also issues regarding the purported service of the Defendants' Chinese entities in England (service was invalid - see paragraphs 76 to 97)), and applications for service out of the jurisdiction (permission to serve out was granted and an alternative method of service was agreed - see paragraphs 98 to 116).

Finally, a footnote - Birss J's FRAND judgment in Unwired Planet is the subject of a 6-day appeal due to be heard in May 2018. The IPKat will keep you updated.

From IP practitoner to murder mystery author: Roz Watkins and "The Devil's Dice" (a pity about that patent attorney in the opening scene)

This Kat has long dreamed of writing a mystery novel, but IP seems to have always gotten in the way. Not so for one-time patent attorney Roz Watkins. Having studied Natural Sciences at Cambridge and later working as a partner at a firm of

 patent attorneys in Derby, Watkins decided to leave the patent profession, ultimately in favor of becoming a writer of mystery novels. On March 8th, her first book, “The Devil’s Dice,” was published by the well-known publisher, HarperCollins. 

The book (to be published in German in 2019 and with a television option by ITV Studios) is intended to be the first of a series featuring Detective Inspector (DI) Meg Dalton. Reviews, including by the Sunday Times, have been uniformly enthusiastic. This Kat takes the opportunity to offer his thoughts about the book as well as to share with Kat readers an interview with the author, as she tells her story of moving from patents to fictional murder. 

Kat Review

This Kat has just finished, to his great reading pleasure, “The Devil’s Dice”. It is difficult to believe that it is Roz Watkins’ first published mystery novel. The plot is intricate but coherent, replete with the many surprises and twists that mark a quality mystery novel. No loose ends are left dangling, the bane of too many mystery stories. Watkins has an elegant writing style together with a sardonic wit, with full-bodied descriptions of persons, places and events, so much so that the reader feels as if he or she is on site as the story unfolds. And to boot, already in the first pages of “The Devil’s Dice”, a patent attorney meets his untimely end in an eerie cave with an overlay of a possible decades-long curse. What could be a more auspicious way to begin. [Later discussions by the victim’s surviving patent partners about how to fabricate prior art is an entertaining interlude.]

For a novel of this type to succeed, it must offer the reader a compelling main character, someone whom you wish to encounter again soon (think Adam Dalgliesh, John Rebus, or Bernie Gunther, whose creator, Phillip Kerr, tragically passed away on March 23rd). DI Meg Dalton has all the makings of such a character. She is at once resourceful, doggedly determined, and intelligent, but with a vulnerable personality extending over multiple dimensions. The reader feels her joy and shares her pain. Most of all, the reader wants to read more about her in the books to come.

Against this backdrop, IPKat was pleased to have the opportunity to conduct a written interview with the author, Roz Watkins, as follows.

Question 1: The first question must be: how did you decide to switch from being a patent attorney to an author of mystery books?

I enjoyed my time as a patent attorney but there were always so many things I was fascinated by, and that I never had the time or energy to explore. It sounds like a huge cliché and possibly a mid-life crisis, but I came to the difficult decision that, having only one life, I would make time to follow my interests.

I’d always wanted to write, but I had never really considered it as a career. After I left my patent job, I went on a learning frenzy, studying everything from psychology to animal training. I also bought two holiday cottages with my partner and we renovated and rented these out. When I was bashing out concrete mortar that should never have been used on original stone walls, and dealing with recalcitrant builders, I found my mind turning to murder… And I kept coming back to my long-held dream of writing a novel.

Everyone had told me it was practically impossible to get published by a mainstream press, but if you had a little talent and enthusiasm, surely this was a learnable skill? I decided I’d give it a go. I would try to learn how to write a publishable novel, by reading books on writing and studying published novels. I expected this to take at least five years, but I actually got a publishing deal within two years of starting. 

Question 2: How much has your science training at Cambridge and your work as a patent attorney helped you in your writing?

I think I approached the task of getting published quite strategically (see above). Many writers advise aspiring authors to write from the heart and keep persisting, assuring them that eventually they’ll write something that somebody wants to publish. This can happen, but many writers produce several books before getting published. I wondered if there was a quicker way!

Of course, you do have to write from the heart, and I include subjects in my books that fascinate or even anger me because that keeps me going when things get tough. But your technique can’t necessarily come from the heart – it probably has to be learned. (Unless you’re capable of writing an astoundingly original work of genius, which I decided I wasn’t.)

Question 3—You have mentioned how you developed your writing skills, at least in part, via an on-line course for aspiring authors. Could you share more about this experience and this ecosystem. 

I didn’t do an online course as such, but I joined a website called Scribophile, where writers critique each other. I learned a huge amount from reading and analysing other people’s writing, and I put my whole first book through the process, so each chapter had been read and commented on by several people. I also made friends on this course who later read my second book and gave me feedback on that. (I didn’t have time to put the second book through the whole process because I was on a deadline by then.) 

The internet has made so many things possible. I hunted out websites by literary agents and published authors, and I subjected myself to potential humiliation on websites devoted to first pages or synopses or agent submissions. And by joining Kindle Unlimited, I could read numerous books on writing craft for very little outlay. 

Question 4—What did you find the easiest and most difficult parts of writing “The Devil’s Dice”?

I love coming up with ideas, and I also love editing and fine tuning, so in that respect I’m lucky. Actually sitting down and writing the words is hard work, like drafting a patent specification. But the most challenging thing was trying to get the police procedure right. And that doesn’t necessarily mean completely accurate. 

My agent tells me drama always trumps realism, and of course you only have to watch an episode of Midsomer Murders to see that this is true. However, it pains me (and maybe this is my patent attorney nature) to get the facts wrong. So I had many long conversations into the night with a detective and Scenes of Crime office (over a drink or two). I try to add authentic details whilst accepting that my overall murder investigation process is inaccurate, because in reality it would involve hundreds of people sitting at computers scouring number plate data! 

Question 5— “The Devil’s Dice” is set in the Peak District in England, where you live, and includes patent attorneys, both dead and alive, as characters. Do you anticipate that your next books will also rely on settings and circumstances of which you are familiar? 

I threw my entire life into book 1! When I was writing, even though I wanted to get published, I never quite imagined it happening and I certainly didn’t envisage getting a three-book deal, so I didn’t worry about keeping anything back for future books. The setting of books 2 and 3 is still the Peak District, but the other aspects are not so familiar.

I obviously used and abused patent attorneys in "The Devil’s Dice", and it also has a lot of doctors. My mum was a doctor, so I knew about that job too. In book 2, the victim is a social worker, and my dad worked in that field, so I had a head start. My brother was a pilot so there may be some scope there. Book 3 is set in an abattoir, but I’m happy to report that none of my family have ever been involved in that profession, so I’m having to conduct some rather gruesome research. 

Question 6 —Are there mystery writers that you would consider models, or at least literary inspirations, for your own writing?

I love the way Sophie Hannah, Tana French, Lionel Shriver, and Kate Atkinson write. In terms of plot, Agatha Christie was incredible. As a child, I was a huge fan of the literary giants that are Enid Blyton and Dick Francis – you can learn a lot from them. 

Question 7—Can you give us any hints about the next two books in the series? At the least, will there be any more unfortunate events involving IP lawyers?

I’m so sorry to disappoint, but in books 2 and 3 there are no dead patent attorneys or unfortunate events of any nature involving IP. Possibly in book 4....

In book 2, out in March 2019, a ten-year-old girl is found running through the woods, barefoot and wearing only a blood-soaked nightdress. She has no memory of what happened to her, but her father is found stabbed to death in their nearby house. At first, DI Meg Dalton blames an intruder, but why had the girl's murdered father been so obsessed with the creepy statues in the woods, and with the girl's recent heart transplant?

In book 3, a young woman disappears from a night shift in an abattoir. He car is still there, but there is no sign of her. Disturbingly, a group of pigs kept overnight in the abattoir refuse their breakfast, and blood is found in their trough. Analysis of the blood shows... well, you’ve have to read the book to find out!

By Neil Wilkof 

Picture on lower right by PookieFugglestein, who has dedicated it to the public domain. 

What makes a family? Bridgestone opposition two tyred, fell flat

The application of the notion of a family of marks is a challenging aspect of trademark practice. Teo Xuan Lang of Drew and Napier discusses a particularly interesting result recently reached in Singapore.

There is no shortage of trade mark opposition cases involving proprietors who lay claim to families of marks. However, traders must be reminded that families of marks and/or their familial traits are not self-evident, and mere evidence of entries in the trade marks register is insufficient. What, then, is required as proof of a family? The issue recently arose for consideration in Bridgestone Corporation and Bridgestone Licensing Services, Inc. v Deestone Limited [2018] SGIPOS 5.

Background

Opposition proceedings were filed in the Registry against Thai tyre manufacturer Deestone Limited’s application for “ ” in Class 12 for “Automobile tires; Motorcycle tires; Bicycle tires” and other goods (the “Application Mark”).

The first opponent, Japanese tyre manufacturer Bridgestone Corporation, was the registered proprietor of the “” mark in Singapore in relation to various goods and services, including “Tires and tubes, vehicle wheels, bicycles and their parts” in Class 12 (the “Bridgestone Mark”). The second opponent was Bridgestone Licensing Services, Inc., a wholly owned subsidiary of the first opponent and the registered proprietor of the “” mark in Singapore in relation to “Tyres included in Class 12” (the “Firestone Mark”). (The registered marks shall be collectively referred to as the “Registered Marks”.)

The opponents argued, inter alia, that the Application Mark was similar to the earlier Registered Marks and was for identical or similar goods or services, such as to give rise to a likelihood of confusion. In so doing, they sought to argue that the Registered Marks constituted a family of marks by virtue of the common “STONE” suffix, which the applicant had incorporated into the Application Mark. However, the opposition was unsuccessful.

No family of “STONE” marks

The Hearing Officer first rejected the applicant's argument that the Registered Marks were not owned by the same legal entity and therefore did not qualify as a family of marks. She ruled that corporate family members could be regarded as a single source to consumers.To support the assertion of a family of marks, the opponents adduced evidence showing decades of use of the Registered Marks in Singapore. However, such use alone was insufficient to establish a family. The Hearing Officer held that—

“[u]ltimately the issue is not just whether the marks have been in use but whether consumers associate the marks which bear a common element as originating from a single source such that if there is another mark in the marketplace bearing that common element, the consumer is likely to be confused”.

This was not shown on the opponents’ evidence for the following reasons:

(a) There were separate and independent websites for the Bridgestone and Firestone undertakings, with but merely cursory references to each other.

(b) Tyres under the Bridgestone Mark and the Firestone Mark were distributed and sold through separate distribution channels in Singapore.

(c) There was no reference in invoices or advertising and promotional materials showing that the two undertakings came from the same family.

(d) Even if consumers knew of the corporate family, it was not clear to what extent they could conclude that the opponents had a family of “STONE” marks.

It was also held that if only two marks are in use, it is less likely that consumers will detect a common element between them and recognise them as a family. In such a case, the evidence required to show a family would need to be substantial.

No similarity of marks

Regarding the issue of marks-similarity, the Hearing Officer held that the Application Mark was “more dissimilar than similar” to each of the Registered Marks. She reasoned as follows:

(a) For each of the competing marks, the “STONE” suffix did not dominate the overall impression. Rather, distinctiveness lay in the marks as wholes.

(b) Visually, the marks have very different beginnings, which consumers will likely notice.

(c) Aurally, the marks have striking phonetic differences at the beginning, which are simple to pronounce and consist of sounds that are familiar to the public in Singapore.

(d) Conceptually, “BRIDGESTONE” and “DEESTONE” are invented words with no specific meanings. “FIRESTONE”, which has a dictionary meaning, bears no similarity to “DEESTONE”.

As marks-similarity is a necessary ingredient for all the grounds of opposition, the opposition failed in its entirety.

Conclusion

In respect of families of marks, the Bridgestone decision tells us that mere evidence of use is insufficient. First, use must be made of trade marks sharing common elements, which consumers may regard as belonging to a family. On the facts of this case, the evidence of use – where there were only two marks – was insufficient to substantiate the existence of a family. Second, over and above demonstrating use, the evidence must show that the common elements take consumers home to the same source. The opponents in this case had failed to identify themselves to consumers as constituting a single source. At the end of the day, it is the average consumer who will decide whether there exists a family of marks in the marketplace, and steps should be taken to educate the public of such matters.

Photo on lower left by LittleJerry and is licensed under the Creative Commons Attribution-Share Alike 4.0 International license.

IT Law Summer School returns to beautiful Cambridge

Downing College in Cambridge

Our friends at KNect 365 wish to let IPKat readers know that, also this year, the IT Law Summer School is returning to Cambridge for 5 days (30 July - 3 August) of discussions and learning in the stunning premises of Downing College.

The agenda includes sessions devoted to contracts, corporate matters, competition and copyright law, tech issues (eg, cloud and FinTech) and privacy/data protection.

The other good news is that IPKat readers enjoy a 15% discount on the registration fee, by using the following discount code: FKW82795IPKE.

Click here for further details and registration.

Premaitha's strike out gamble fails before Carr J in new Illumnia patent battle

Gingersnap tried to strike out Murphy...

Interim decisions are always full of interesting tidbits.  Nothing was more juicy than last month's decision from Mr Justice Carr in Illumnia v Premaitha [2018] EWHC 615 (Pat) in which he dealt with two applications brought by the defendants for (i) strike out of Illumina’s claim on the basis of abuse of process, and (ii) summary judgment against Illumina on the basis of issue estoppel.   Although shackled by time in reporting on the decision, the AmeriKat asked a new IP kitten, Constance Crawford (Bristows) to get her paws wet in her first Kat post.  Over to Connie:

"By way of background to this dispute, it is important to understand that since early 2015, these parties have been involved in multiple pieces of patent litigation. 

In mid-2017, not long before the trial in one of the ongoing claims, Illumina became aware of a further patent which it wanted to enforce against the same defendants. For numerous reasons, the parties agreed that a new action could not be accommodated within the current timetabled trial and, so, after being successful at trial, Illumina commenced a new action with respect to the newly discovered patent in September 2017. 

In response, the defendants argued that this new action should be struck out as an abuse of process or dismissed on the basis that Illumina is not entitled to bring these proceedings.  This was because the defendants argued that Illumina failed to raise this new action in the previous rounds of litigation.

(i) Strike out of Illumina’s claim on the basis of abuse of process 

Carr J summarised the legal principles concerning abuse of process at [5] – [21]. In brief, the court has to balance the right to a fair trial of the party bringing the proceedings against the unjust harassment or oppression of the party alleging that the new claim is abusive. The question is not whether the issue being raised now could have been raised in previous proceedings, but whether that issue should have been raised earlier.  

The court will rarely find that a later action is an abuse of process, but it is for the defendant to show that the new proceedings amount to unjust harassment or oppression. Carr J also made reference to the Aldi guidelines, which provides that where a party to proceedings becomes aware of a cause of action which could be brought as part of those proceedings, the proper course of action is to raise the issue with the court so that it can manage the issue so as to be fair to both sides.

Although Illumina had not brought the new proceedings to the attention of the court during the previous action, Carr J found that Illumina’s conduct did not constitute a breach of the Aldi guidelines. This was because Illumina had already disposed of the issue by obtaining the Defendants’ agreement that the new action should be stayed until after the trial had taken place in the previous proceedings. Carr J therefore held that it was acceptable for Illumina not to have sought directions in respect of the new claim at the CMC in the previous proceedings.   

To support their position that the new claim would be oppressive, the defendants argued, inter alia, that the new claim would: 

(i) give rise to exactly the same issues which have already been decided; 

(ii) create further commercial uncertainty;

(iii) prejudice business decisions and opportunities; 

(iv) result in duplication and additional expense; and 

(v) be an additional imposition on the court’s resources. 

Having reviewed the conduct of both parties with respect to the new action, Carr J dismissed all of these arguments. In particular, in respect of (i) Carr J stated that, on the likely basis of a different common general knowledge in the new action, the new proceedings would not amount to a collateral attack on the decision in the previous proceedings.

The defendants’ applications to strike out the new claim as an abuse of process were therefore dismissed.

(ii) Summary judgment against Illumina on the basis of issue estoppel 

The defendants’ application to enter summary judgment in respect of the new claim was brought on the basis of issue estoppel; namely, that it had already been decided that Illumina did not have standing to sue as it was not an exclusive licensee under the patents being enforced and that it should not be entitled to reopen this question.

Carr J explained the law on issue estoppel by reference to Keith LJ’s judgment in Arnold v National Westminster Bank [1991] 2 AC 93, where he succinctly stated that:  

“Issue estoppel may arise where a particular issue forming a necessary ingredient in a cause of action has been litigated and decided and in subsequent proceedings between the same parties involving a different cause of action to which the same issue is relevant one of the parties seeks to reopen that issue.”  

In the previous proceedings, Carr J had held that a particular agreement did not operate so as to grant Illumina an exclusive licence in respect of the patents in issue. Therefore, when Illumina brought the new claim on the basis of being an exclusive licensee of the relevant patent under the same agreement, issue estoppel arose. The defendants succeeded on their applications for summary judgment and Illumina’s new claim was therefore not allowed to proceed.  

However, unfortunately for the defendants, their success in this application is somewhat of a Pyrrhic victory. Whilst the court granted summary judgement against Illumina on the basis of issue estoppel as explained, the proceedings rumble on in respect of the other claimant, Sequenom, As a result, Carr J made it clear that Illumina could not be prevented from applying to be re-joined to the proceedings if it cured the defects in its exclusive licence arrangement. It is clear from the judgment that a new exclusive licence has been granted to Illumina and no doubt its lawyers have already prepared the application to be re-joined to the proceedings.

Tidbits to take away 

This judgment makes it clear that defendants will have to do more than just raise the common disadvantages of litigation (e.g. commercial uncertainty, prejudice to business decisions and opportunities, perceived waste of management time and increased costs) or common litigation issues (e.g. delay tactics) in order to substantiate that a new claim is an abuse of process. Crucially, the court must be convinced that a claimant’s conduct is such that it should be deprived of its article 6 rights to a fair trial. In patent infringement proceedings, striking out a claim for an abuse of process effectively provides an alleged infringer with a licence under the relevant patent in respect of past and future infringements (see [49] of the judgment). As would seem right, this is not something that the court will decide lightly; it must be provided with convincing evidence of oppressive behaviour by the claimant." 

Around the IP Blogs!

IPKat is here with your weekly tour of the IP blogosphere! 

Patents

A guest post on Written Description by Jason Reinecke reviews a forthcoming article in the Georgetown Law Journal, which asks the question "Can Patents restrict free speech?" (and answers that they do). In the article, the author Professor Tun-Jen Chiang argues that "patents that restrict speech are not exceptional, they are routine", particularly patents relating to methods of advertising, communication and sending or receiving information over the Internet. The authors cites US 6311211 which relates to a method for delivering electronic advocacy messages and therefore, it is argued, restricts political speech, and US 8357489 which claims a method of diagnosis comprising communicating test results to a patient, and therefore it is argued, restricts the free speech of a doctor in receipt of such test results. 

Professor Sean Tu (West Virginia University) and Chris Holt (LexisNexis IP) provide on Patentlyo a new data set and metric for US Patent Examiner activity. The data relate to the total number of office actions issued by every active Examiner from January 2012 to June 2017. To analyse the data, the authors use an Office Actions per Grant Ratio (OGR) metric, which divides an Examiner’s total number of Office Actions by the number of issued patents. The data reveal differences between the technology fields and Examiners at different levels of seniority. Full analysis is provided in a corresponding paper. 

IPwatchdog considers the abuse of Orange Book listings by branded pharmaceutical companies, a form of patent abuse relating to drug patents covering medicines subject to the Drug Price Competition and Patent Term Restoration Act of 1984, or "Hatch-Waxman Act". 

"Orange" Book Kat

Copyright

The CopyKat on The 1709 blog reports on the UK Governments release last week of its Industrial Strategy Plan to tackle on-line copyright infringement. CopyKat reviews some of the measures soon to come into force. 

Innovation industry

IP Draughts highlights a recently published report on University spin-outs by Anderson & Law. The report looks at funding patterns between 2011-2017 from the seven UK research councils and Innovate UK, and measures this against the creation of UK university spin-out companies, broken down into different technology sectors. The report cautiously concludes that the spin-out sector appears to be working, given that nine in ten UK spin-outs survive beyond five years, a higher rate than the overall success rate of UK start-ups. The report also provides a number of recommendations to the UK Government, research industry and Universities. One interesting recommendation is for Universities to consider introducing a clause in academic contracts that allows academics to take a break from their academic career to see if they are able to commercialise their research.

Trademarks

MARQUES Class 46 reports on the recent developments in the German "Black Friday" battles. The dispute concerns a German trade mark registration for "Black Friday", the Hong Kong-based owner of the trade mark (Super Union Holding Ltd), and PayPal. Enforcement of the trade mark by Super Union Holding has led to many German retailers using alternative phrases to "Black Friday", such as "Super Friday". PayPal and others brought cancellation proceedings against the trade mark on the grounds that the phrase "Black Friday" falls into the public domain and must be must be freely available to all market players to use for sales promotions and in advertising. The German PTO ruled that the term lacks distinctiveness and thus is not suited to identify commercial origin. 

"Black" Friday Kat

SPCs

On The SPC blog, Nicholas Fischer and Andrew Hutchinson (Simmons & Simmons) report on the latest referral to the CJEU by the UK Court of Appeal seeking clarity concerning the correct interpretation of Article 3(a) of the SPC Regulation, particularly what it means for a product to be ‘protected’ by a patent. 

Designs

Kluwer Trademark Blog provides the second installment of its analysis of the draft withdrawal agreement published by the EU Commission setting out a potential framework for trade mark and design rights (IPKat post). This second post looks at the implications for the holders of design rights. 

Sunday Surprises

Plenty events, interesting articles and opportunities to look forward to in the coming months!

The Law Society is looking for a new committee member. If you are interested in this great opportunity, click here for more information. The deadline has been postponed to Tuesday 17 April.

Events

On Thursday 19 April, PRS for Music will host the PRS Explores: Emerging Piracy Trends session delving into music piracy and new emerging piracy trends. As piracy evolves away from ad-funded models, pirates are moving towards crypto-currencies such as Bitcoin and finding other routes to turn a profit. The session will assess recent developments and future advances, and discuss ways the creative industries can find workable solutions to better safeguard creative content online. The event is free to attend, for more information and registration see here. 

In the framework of the Salone del Mobile in Milan, the law firms Mondini Rusconi Studio Legale and Avvocati Associati Franzosi-Dal Negro-Setti will organize a seminar/open round table discussing the Legal protection of design in the era of artificial intelligence: creativity, materials and technologies, bringing together to the discussion legal, design and technology practitioners. The event will be held on April 19, for more information, see here.

Also on 19 April, the Women in IP network of IP Inclusive will be participating in the AIPLA Women In IP Law Committee’s Global Networking Event in Cambridge, Manchester (hosted by Mewburn Ellis LLP, email Sarah Brearley) , London, Bristol (hosted by Haseltine Lake, email heremarketing@haseltinelake.com) and Glasgow. all types of IP professionals are welcome to attend the event, including paralegals, patent and trade mark administrators, patent searchers, IPO Examiners, trainees, patent attorneys, trade mark attorneys, IP solicitors and barristers. For more information on the signle events, click on the links of the relevant location.

OxFirst will host a Webinar on IP Valuation for Wealth Generation on 24 April, discussing about the how the adequate valuation of IP plays a crucial element in vital markets for technology. The talk will be hosted by Dr. Guriqbal Jaiya. For more information and for registration, see here.

AI Kat

9^th GRUR meets Brussels Workship: Artificial Intelligence, Robotics & IP - What’s at stake? Artificial intelligence is on the rise. This has legal implications not only for areas like safety and security, liability or contract law but also for intellectual property. The workshop aims at providing a concise overview of the emerging issues. The event will be held on 5 June, for more information and registration, see here.

IPKat has already talked about the Music and Copyright series of events organized by the Alexander von Humboldt Institute for Internet and Society (HIIG). We wanted to point out to two more workshops Copyright and Music in the Global South: Navigating International Agreements, Piracy Practices, and the Protection of Cultural Heritage and From Spotify to YouTube – Legal Potentials and Challenges for Platforms, taking place on 6 June and 13 September, respectively. For more information, see here.

Articles

A new article by academics Bhaven Sampat and Kenneth Shadlen looks at pharmaceutical patents in India. Using patent examining data, they find a sharp increase in the use of Section 3(d), which regulates ’secondary’ pharmaceutical patents, over time. Sampat BN, Shadlen KC (2018) Indian pharmaceutical patent prosecution: The changing role of Section 3(d). PLOS ONE 13(4): e0194714.

Decisions

GuestKat Mirko Brüß has previously written about Germany's approach to regulate "hate speech" here. The ('NetzDG') law was widely criticized for various reasons, one of them being that it incentivizes social networks to delete possibly lawful comments in case of doubt to avoid heavy fines. 

Another point of criticism was that while the law regulates the deletion of unlawful content, no mechanism was provided for users to have falsely deleted (legal) content restored. 

Apart from a lack of regulation in the NetzDG on this issue, a Berlin Court has just issued an ex-parte decision (case No 31 O 21/18) against Facebook, essentially obliging the social network to restore one of the plaintiff's post that had been deleted by the network. Due to the nature of ex-parte decisions in Germany there are currently no written reasons available. However, the German Newspaper “Zeit” reports some details of the case. The plaintiff had commented on an article in the "Basler Zeitung" (a Swiss Newspaper) and written: 

"Die Deutschen verblöden immer mehr. Kein Wunder, werden sie doch von linken Systemmedien mit Fake News über 'Facharbeiter', sinkende Arbeitslosenzahlen oder Trump täglich zugemüllt."

This roughly translates to:

„The Germans are getting dumber every day. This is no wonder, since they are fed with Fake News about ‘skilled workers’, dropping unemployment rates and Trump by left media outlets every day.”

Facebook deleted this comment and banned the plaintiff’s account for 30 days, citing a breach of Facebooks content guidelines and TOS. In court, the plaintiff argued that his comment did not breach any laws and that he had a “contract” with Facebook. This “contract” supposedly allowed Facebook to use the Plaintiff’s data (Cambridge Analytica, anyone?) while on the other hand obliging Facebook to publish any comment by the plaintiff that was within the rule of law.

It will be interesting to see how Facebook reacts to this judgment. Since the decision was made ex-parte, Facebook can now request an oral hearing, after which the court will again decide, this time with written reasons. This GuestKat is very much looking forward to a written decision on the case and will keep you updated on any developments.

Summer courses

This summer, the Institute for Information Law (IViR), affiliate of the University of Amsterdam, will hold its annual Summer Courses on International Copyright Law and on Privacy Law and Policy. The courses are held simultaneously from 2 to 6 July 2018 and take place in the city center of Amsterdam. Both courses are aimed at private sector lawyers, government officials, NGO staff, academics, PhD students and others involved in questions of copyright law. Enrollment is limited to 25 participants. For information on the faculty, program and application please visit the website of the International Copyright Law and Privacy Law and Policy Summer Courses. For questions, contact course organizer Stef van Gompel.

The University of Gdansk, Poland by the Centre for Intellectual Property Law, together with Chicago - Kent College, School of Law will organize the IP Law Summer School “IP in the Creative Sector”. The Summer School is project of international breadth, aimed to educate its participants in the scope of Intellectual Property Law. We will be focusing on the Creative Sector (including strong emphasis on Fashion Law), new technologies, but won’t be limited to that. For more information on this project, see here.

Image credits: Robocat (Battle Cats game), Dutch Nyancat