The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy
InternKats: Rose Hughes, Ieva Giedrimaite, and Cecilia Sbrolli
SpecialKats: Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Thursday, 31 July 2008

MP4 players stopped in their tracks

The IPKat has heard from his friends at international IP firm Howrey that earlier this month in Sisvel v Sosecal, the President of the District Court of The Hague ruled confirmed that, notwithstanding that unhelpful ruling of the European Court of Justice in Case C-281/05, Montex Holdings Ltd v Diesel SpA (noted in "Diesel can't strip Montex of its trousers", here, by the IPKat), you can still seize transit goods in the Netherlands under Council Regulation 1383/2003 -- the provision that allows the suspensive detention of goods when they enter the European Union so that you can find out if they're infringing or not.

Montex v Diesel appeared to rule that detention was not possible where the allegedly infringing goods were not intended for the country through which they were being transported and where they were destined for release into the market in another country in which their marketing would be lawful. But in Sisvel v Sosecal (July 18, 2008) the President of the court disagreed.

What actually happened was this: the Dutch customs detained a stock of MP4 players under Council Regulation 1383/2003. These players came from China, were intended for South America and were re-loaded in The Netherlands, where they were detained by customs. Sosecal said that, since the players were only in transit in the Netherlands, they couldn't be seized.

Left: if ECJ rulings won't prevent seizure of transit goods, try painting them with "anti-seize"!

The President however concluded that Montex v Diesel was a trade mark case while the alleged infringements before him involved patents. In any event, Montex v Diesel only dealt with the interpretation of the trade mark harmonization directive (Directive 89/104), not with the provisions of Council Regulation 1383/2003. He also held that the ECJ's ruling in Case C-383/98 Polo Lauren v Dwidua should be read as holding that the right of suspensive detention under an earlier Regulation that Council Regulation 1383/2003 replaced remained applicable -- and there was nothing in Montex v Diesel to suggest that the ECJ had changed its mind.

The IPKat is surprised at this analysis. It doesn't accord with his view of the thrust of the ECJ's decisions in Montex v Diesel or Case C- Class International v Colgate, and he wonders if it could survive an appeal. Merpel says, isn't Sisvel a licensor of much-loved Dutch electronics giant Philips? But this couldn't be of any bearing ...

Combat seizures here
Seize the day here
How not to spell seize here

No love lost in Barrow

The IPKat is rather amused by the dispute between Barrow and Blackburn Borough Councils reported in the North West Evening Mail. On 23 May, Blackburn launched its new logo - a green 'B' with the bottom part of the B elongated so that the logo represented a heart on its side and the word 'Blackburn'. The trouble is, in 17 March Barrow had launched its new logo for its 'Love Barrow' campaign - a pink'B' with the bottom part of the B elongated so that the logo represented a heart on its side and the words 'Love Barrow'.

Barrow is none to pleased and appears to be thinking of infringement action. Unfortunately, it's not clear to the IPKat what that infringement action will be. Here the article takes a turn which IP lawyers won't like too much. Barrow Borough Council's regeneration officer notes that Barrow will have automatic copyright protection but adds that the mark has been registered with the UK Copyright Registration Service. The article goes on to note that there are 'two ways to copyright a trade mark' and notes that it doesn't matter whether the copying is coincidental or not, so long as there are substantial similarities.

The article also records that Barrow paid £140 for their logo, while Blackburn paid £60,000. The designer of Blackburn's logo is recorded as having said "Ours is more wide ranging, and I think looks a lot better.”

The IPKat is appalled at the levels of inaccuracy in this report, particularly since some of the statements seem to have come from a lawyer. He would be very surprised if a council would spend £60,000, only to copy another council's logo. Apart from anything else, the two regions aren't that far apart, and a similar logo would (a) be found out very quickly and (b) wouldn't have the distinctiveness that a good advertising campaign would need.

Indian PPL has no right to enforce copyright

By a strange coincidence, only minutes after posting the piece below about German copyright owners being able to sue for damages for infringement of their dramatic performance rights even though the right to perform the music has been assigned to a collecting society, we have some news from India, from the IPKat's old friend Mustafa Safiyuddin (DSK Legal).

Right: learning the ropes -- training for PPL inspectors enables them to mix with infringing Indian performers without attracting attention

This news is all about -- you probably didn't guess it -- whether collecting societies can enforce right in respect of unauthorised public performances. The Delhi High Court delivered a salient ruling earlier this month in Phonographic Performance Limited v Hotel Gold Regency and others (MANU/DE/0942/2008), on which Mustafa says:

"In a landmark decision, Phonographic Performance Limited v Hotel Gold Regency and others, the Delhi High Court held that copyright societies such as PPL, representing the interest of the music companies, cannot initiate copyright infringement actions to protect the interest of their members against unauthorized public performances of sound recordings. According to the Court, the Indian copyright statute only permits a copyright owner or its exclusive licensee to initiate an action for infringement. Since the copyright society PPL is neither the copyright owner or the exclusive licensee of the sound recording of its member companies, it is debarred from initiating such actions against unauthorized communication of the sound recordings to the public through a radio broadcast or a telecast or any other public performance. This decision will create enormous difficulties for the copyright society PPL and its member music companies in enforcing their copyrights and can have a deep impact in the collection of royalties for public performances of sound recordings.

Music companies such as Saregama have granted authorizations to PPL to administer their right of communication to the public in respect of their sound recordings and to administer such right by the grant of licences and collection of royalties. The music companies’ agreements with PPL also authorize PPL to initiate any actions for the enforcement of their rights for which authorizations were granted to PPL. Nevertheless the Delhi High Court held that PPL merely had the authority to administer the licences and collect royalties from the licensees -- but the statute did not permit PPL to initiate a copyright action. This is in view of the statutory provisions which only authorize a copyright owner or its exclusive licensee to initiate an infringement action and PPL was neither the copyright owner nor an exclusive licensee.

By way of further elucidation, the court held that the authority that a copyright owner gives to a copyright society for the collection of fees relates to the fees in respect of the licences granted by the copyright societies. It is arguable that such an authority to an agent like PPL would include the authority to recover royalties from delinquent licensees by filing a civil suit. However, the situation is entirely different where persons to whom no licence has been granted by the copyright society unauthorisedly uses the copyright work. In such cases where no licences have been granted to such a person, the copyright society would have no authority to file a suit against such persons either for infringement or for recovery of royalties or for damages. The suit, if any, would have to be filed by the copyright owner or its exclusive licensees".
The IPKat feels some sympathy with copyright owners here, who were almost certainly not alert to the problem, or its very simple solution, at the moment at which they entrusted the administration of their rights to the PPL. Doubtless a lot of paperwork and inconvenience will result if PPL is to be vested with the necessary powers. Merpel says, not all is lost -- presumably the copyright owners can still sue in their own names.

See post and comments on Spicy IP here
Cats of India here

Beauty, Beast and Hunchback score dramatic victory

The IPKat recently received this newsflash from the 24IP Law Group, Munich. It concerns a recent decision from Germany on a copyright issue of some substantial interest to those who love fundamental copyright concepts.

Right: Beauty (left) and the Beast -- if you can recognise them from the song routines, it's a dramatic performance

The note reads, in relevant part:

"The Federal Court of Justice (Bundesgerichtshof, BGH) decided on 3 July 2008 (File no.: I ZR 204/05) the conditions under which a performance of a musical should be considered as a “dramatic performance” in terms of the German Copyright Law (Urheberrechtsgesetz).

Disney Enterprises Inc. is the owner of the exclusive right of use and performance of the musicals “Beauty and the Beast”, “The Hunchback of Notre Dame”, “Lion King” and “Aida”. Disney sued a German concert promoter who had staged several shows under the title “The Musical Starlights of Sir Andrew Lloyd Webber and the Disney Musical Productions”. Both the Regional Court and the Appeal Court in Frankfurt decided in favour of Disney. The Federal Court of Justice has now dismissed the final appeal of the concert promoter.

In Germany a creator and copyright owner must assign the performance rights of a work of music to GEMA (Gesellschaft für musikalische Aufführungs- und mechanische Vervielfältigungsrechte), the German Performance Rights Organisation. The owner reserves the rights to stage performances of musical shows. Business in musical shows has become highly profitable in Germany and there has been a debate of the extent of the rights assigned to GEMA. The question for the court was to decide whether it was allowable to perform excerpts of a musical by merely paying the licence fee to GEMA – or whether the copyright owner’s permission was required (including an extra fee).

The Federal Court of Justice decided that a dramatic performance takes place when “a meaningful development of a story line” is identifiable. If only elements of a story line or of a piece of music are strung together without any context, then this cannot be considered to be a dramatic performance. It is not relevant whether the development of the story line could be understood by the audience. The Court held it to be sufficient that the audience could identify a single element of the story line, such as a scene of the work. These requirements were met in the Disney case. Some of the key scenes were reproduced and several of Disney’s most famous songs were arranged with appropriate costumes and stage design. This resulted in the audience being able to recognise the complete work and can therefore be considered to be a dramatic performance under the terms of the Copyright Law.

The decision of the Federal Court of Justice strengthens the rights of copyright owners of works of musical art in Germany. In the past they had no legal means to stop the reproduction of scenes or parts of their work .... They had to be content with the copyright fee paid to the Performance Rights Organisation. Copyright owners will now be able to stop shows being put on without their permission and artistic control. If necessary, it should be possible to obtain an interim injunction within hours to prevent a show being staged".
The IPKat says this looks right in theory, though it will send a few impresarios scurrying back to the drawing-board to devise more risk-free shows. Merpel says, presumably many people in the past have paid their GEMA fees in good faith and no-one has yet thought to sue them ...

Beauty and the Beast here
Lion King characters singing "It sucks to be be me" here
For dyslexics only: number of Google hits for "Loin King": 42,500

Wednesday, 30 July 2008

Can evidence of use that is no use still be of use?

Minimax GMBH & Co v Chubb Fire Ltd, a Chancery Division decision from England and Wales, was handed down yesterday by Mr Justice Floyd. It has not yet been posted on BAILII, but was noted this morning by the subscription-only LexisNexis Butterworth service.

Way back in 2005 the Trade Marks Registry ruled on Minimax's application to revoke two of Chubb's trade marks -- one for the device pictured on the right and the other for the word MINIMAX itself. According to Minimax neither mark had been used for a period of five years. The hearing officer agreed on the evidence that there had been no genuine use of the marks during that period.

Minimax had previously applied to register mark MINIMAX; Chubb, minus its two earlier registered marks, now opposed, claiming that use by Minimax of that mark was liable to be prevented by the law of passing off and the hearing officer agreed. Reaching a decision without the benefit of either an oral hearing (since neither side asked for one) or cross-examination, he concluded that Chubb indeed enjoyed goodwill and a reputation in MINIMAX in respect of fire extinguishers, their servicing, refurbishment and embellishment. The evidence on which Chubb relied in this hearing was the same as that it relied on in the 2005 hearing, delivered in the form of a witness statement made by its commercial manager. Given that the parties' marks were identical, the hearing officer upheld Chubb's opposition and refused the application. Minimax appealed.

Yesterday Floyd J allowed the appeal. In his view the hearing officer had treated the evidence of Chubb's commercial manager as evidence of Chubb's continued use of the MINIMAX mark, concluding that there had been sufficient evidence of Chubb's goodwill and reputation in it. Since this was the wrong approach the court would review the evidence itself. Doing so, there did not appear to be any detectable proper basis for holding that Chubb had retained a sufficient residual reputation in the mark to be able to succeed in an action for passing off against Minimax's future use of the mark applied for. Any evidence of use was scant or trivial.

The IPKat guesses that Chubb must have been really annoyed with itself, having both lost control of the rather attractive MINIMAX mark and then being unable to stop its rival getting hold of it. But, in terms of log-term business strategy, was this opposition ever likely to achieve anything other than mild nuisance value? Merpel says, since Chubb could not in any event stop Minimax using its own name, was this a bit of a dog-in-the-manger opposition?

Dog in a manger here
Dog à manger (Korean style) here
Dog à manger (American style) here

Wednesday, whatever ...

Last week, in "Judge in Privacy Damages Romp with 4 Barristers" (here), the IPKat speculated that the profit to the News of the World newspaper through breaching Max Mosley's privacy rights must have exceeded the aggregate of the damages awarded (£60,000) and an estimated £830,000 costs. On this, Phil Cox -- whom the Kat graciously thanks -- responds:

"It is very difficult to put an accurate figure on this. From my insiders I have been informed that advertising sales teams tend not to sell directly against a story like that, and therefore the real reason for running the story is to generate extra copy sales at the news-stand. This will in turn help with their circulation figures which is what the paper ultimately sells advertising from. You can see that it all ties in.

However, has the paper ultimately won or lost in this case? Myself and my friends, ad sales and publishers, feel that NotW won out in this case, most likely having increased their circulations enough during this period to justify the near GBP 1M payout. They have also deliberately further entrenched their brand as a gossip rag, which unfortunately helps sell copies in the UK.

It is also clear that running these stories is a part if their business model and they analyse the risk and reward for each story but most likely they will analyse their legal costs annually as well. If they end up having 20 of these cases a year, you would soon find them winding their necks in. Thus Max Mosley has in some ways caused them some damage".

Two little milestones were achieved yesterday, both by intellectual property blogs. The Class 46 European trade mark law blog -- manned by a team of supporters of European trade mark proprietors' organisation MARQUES -- picked up its 250th email subscriber. Meanwhile, the IP Finance weblog, which focuses on those tricky niche areas where intellectual property and money matters collide, notched up email subscriber number 100. The IPKat knows that these are just arbitrary numbers, which have no inner meaning of their own, but for anyone who has ever written for a blog and who wonders "does anyone out there ever read me?", each milestone can take on the proportions of a monument.

Tuesday, 29 July 2008

Recent periodicals

The July 2008 edition of that venerable serial, the Modern Law Review, has just arrived. This weighty journal has included the occasional IP article in the past, but in this issue there are two, both of which are well worth a look.

* Justine Pila from Oxford University, examines “An intentional view of the copyright work”, by looking at the old classic cases of Walter v Lane and Interlego through the eyes of Hyperion Records (noted here by the IPKat);

Right: All aboard the Interlego Express!

* Phillip Johnson, 7 New Square, has penned “Dedicating Copyright to the Public Domain” which is, unsurprisingly, about whether it is possible to dedicate copyright to the public domain (some organisations like Creative Commons provide the facility to do just this). He concludes, that such a dedication is no more than a copyright licence -- and a revocable licence at that.

The July/August 2008 issue of Informa's bimonthly Copyright World has a most eye-catching cover, even though the IPKat's not 100% sure what it symbolises. The cover story, "International Music Industry Tackles Baidu", is an offering from the Field Fisher Waterhouse duo of Ed Wilkie and Hamish Porter on attempts to bring the Chinese ISP into line over the issue of infringing downloads. There's also a quick-off-the-mark piece by IPKat team blogger Jeremy on a recent reminder from the European Court of Justice that, while the sui generis database right was buried some years ago, it seems to be rising from the grave. The contents of this issue, and lots of other little bits and pieces, can be reviewed here.

The front cover is an anaemic white, brightened only by its logo, but the International Journal of Law and Information Technology (IJLIT), published three times a year by Oxford University Press, often has some colourful content for IP enthusiasts. This issue does too: there's an article, "Looking for zero-sum or win-win outcomes: a game-theoretical analysis of the fair dealing debate", by Yu-Lin Chang, whose excellent doctoral thesis submitted to Queen's University, Belfast, was examined last year by IPKat team blogger Jeremy. Everything you ever need to know about the IJLIT here.

In stark contrast to IJLIT's blinding white is the gleaming black of Butterworths' Intellectual Property & Technology Cases law reports. The July 2008 issue, which has just reached the IPKat, contains reports on four cases: the European Court of Justice ruling in case C-275/06 Productores de Musica de Espana (Promusicae) v Telefonica de Espagna SAU, as well as three British cases of which one -- the decision of the Court of Appeal for England and Wales in the controversial Procter & Gamble v Reckitt Benckiser design air freshener design dispute (see IPKat note here), is likely to be the most heavily-thumbed by anxious readers.

Whoops, the IPKat almost forgot the July/August issue of Patent World (ten times a year, from Informa). The cover story, by veteran Aussie IP trooper Michael Dowling (Allens Arthur Robinson), looks at May's WIPO-AIPPI conference on client privilege in communications with IP professional advisers. Says the IPKat, with the INTA giving over a chunk of one of its sessions at next year's Seattle Meeting to client-attorney privilege and reviewing the WIPO/AIPPI scenario, this subject is one which is going to run and run. You can read all about Patent World and the contents of this issue here.

Nominet DRS changes go live today

Today's the day that Nominet's new Policy and Procedure for .uk domain name dispute resolution service (DRS) comes into operation. You can read the revised Policy and Procedure documents here, together with a summary of the principal changes. Complaints filed before today's date will be processed in accordance with the previous Policy and Procedure.

Right: strenuous efforts have been made to keep the Nominet Experts in tune with key developments...

If you want to know more, but either can't understand the information on the Nominet website or can't be bothered to read it, you can make human contact the Nominet Dispute Resolution Service team by phoning +44 (0)1865 332211 or by aiming your email here.

Says the IPKat, even a Kat should be able to comprehend the changes, which are handily listed below as 11 key points. In essence, according to the summary:

1. The process remains the same as it was except that, where the person complained against does not respond, the complainant has the option of obtaining a summary decision from an Expert, at a cost of £200 plus VAT [says Merpel: that's quite cheap for an Expert with a capital "E"; you can usually only get an expert with a small "e" for that sort of price]. For that price the expert won't write a full decision, but he will certify that the complainant has proved won his case.

2. If there is a response, the case goes into mediation it'll cost £750 plus VAT, as at present, for a full decision.

3. It is now conceded that rights may exist in descriptive terms that have acquired a secondary meaning [this is good news not just for trade mark owners but for marketing managers who are hopelessly addicted to the use of descriptive terms for their branding].

4. "... certain activities are not in themselves an Abusive Registration, but ... cases of this kind will depend on their particular facts" [er, ...].

5. The Reply stage is affirmed to be no more than an opportunity to respond to new matters raised in the alleged villain's response.

6. is probably important, but too boring to list here.

7. The complainee can pay for an Expert decision if the Complainant declines to pay, in order to request a finding of Reverse Domain Name Hijacking.

8. A "likelihood of confusion" factor has now been introduced [once again bringing the criteria of the DRS system a little closer to those of trade mark law], and it is emphasised that the threatened use of a domain name may be evidence of an Abusive Registration, reflecting both previous Expert decisions and English law.

9. Thre's now an Expert Review Group, drawn from Nominet’s existing panel of independent experts who provide decisions where the parties do not resolve their differences amicably. Members of this group will only (i) provide a peer review function of decisions before they are published and (ii) form the panels for appeal hearings.

10. The word limit for submissions in the complaint and response rises to 5,000 words [Merpel wonders: is that long words or short words? Do hyphenated words count as one or two? And, if submissions exceed that length, do panellists stop reading at 5,000 words or can they choose the 5,000 words they want to read?].

11. Evidence can now be attached electronically [To the parties? Or, disappointingly, only to their emails?]. The online forms have also been revised, to enhance their functionality and their aesthetic appeal.

Says the IPKat, the new Policy and Procedure suggest that Nominet is edging forward, with one eye on past experiences, another eye on future needs and an ear to the needs of the complainants. He wonders what those of his readers who use the DRS system regularly will say, though.

Monday, 28 July 2008

Recent books reviewed

David Bainbridge's Legal Protection of Computer Software (formerly known as Software Copyright Law), seems to have been around a long time. Indeed, it has, since this title has now notched up its fifth edition, published by Tottel earlier this year. The IPKat was not particularly excited when the first edition emerged -- perhaps because the subject-matter itself was so confusing and fast-changing -- but he can say with some confidence that it is a book that has matured through time and it is now a very handy little volume. It is also a perfect example of a work in which the whole is better than the sum of its parts: there aren't any passages that leave the reader speechless in admiration, but it packs a very large number of spot-on references to UK and European law past and present (neither precedent-based systems nor those which lack that discipline can allow themselves the luxury of living solely in the present) and it sensibly declines to provide a generalised account of the voluminous US case law, seriously crossing the Atlantic only in order to explain US doctrine on non-textual copying -- without which the UK's case law is more difficult to appreciate.

Above all, the text assumes no advanced knowledge on the part of the reader and Professor Brainbridge is not afraid to do some entry-level writing, right down to starting the book with a glossary [though the IPKat wouldn't have split its content between technical and legal terms since so many of his former students wouldn't have been sure which words they didn't understand were technical and which legal ...]. The book also addesses the IP/competition law interface which, however much we may grit our teeth in dealing with it, is a live part of EU law that will not go away, especially now that the telecoms sector has so skilfully locked itself into standard-setting bodies. With luck, the sixth edition will have lots of exciting stuff on wikis, blogs and use-generated content -- though the software protection issues concerning these areas are not as sexy as their daily applications.

Bibliographic data: xli + 439 pages. Paperback, £90. ISBNs 1845924509 and 9781845924508. Rupture factor: minimal. Website here

The IPKat is always prejudiced in favour of authors of of IP books whose surnames begin with "Kat", and Public Broadcasting and European Law,
by Irini Katsirea, is no exception. According to the blurb provided by publishers Wolters Kluwer, the question that lies at the heart of this text is this:

"Although EU Member States share a tradition of regulating public broadcasting for the public interest, such regulation has been in decline in recent years. It has been challenged by the emergence of commercial television sworn to the market logic, as well as by satellite services and the Internet. EU law and policy has, under pressure from powerful global forces, abetted that decline. The question thus arises: Do cultural values still matter in European national broadcasting?".
The author examines the challenges posed to public service obligations by European Union media law and policy, picking on six jurisdictions for her in-depth analysis -- France, Germany, Greece, Italy, the Netherlands, and the United Kingdom -- and shows how the commitment of les six to public broadcasting regulation is caught between the Scylla of national political pressures and the Charybdis of market sovereignty. While money and national culture slug it out, the European Commission tries to pour oil on troubled waters with its 'country of origin' principle and European quota rule, via the Television without Frontiers Directive. All of this provides the legal and factual background for an academic soap opera as the various interests pair up, split off, desert their causes and then return to their fold.

The IPKat thinks that Irini has done a jolly thorough job. It's not exactly a laugh-a-minute subject matter, but she has succeeded in making it plausibly interesting to the lay reviewer who would otherwise have spent little of his time pondering it. He would have liked to have seen Sweden among the countries covered if time and resources had permitted, since that jurisdiction has over the years taken its deeply moral, proto-socialist responsibilities for media nannying a good deal further than some of Europe's more laisser-faire countries.

Bibliographic details: xxxii + 445 pages. Hardback. ISBN: 9789041125002. Price in euros €120 and in US dollars $158. Rupture factor: low. Web page here.

Always attracted by bright covers, the IPKat couldn't take his eyes off Brands: Law, Practice and Precedents, authored by solicitor Clive Lawrence and published by Jordans. We learn from the publisher that
"Brands: Law, Practice and Precedents brings the principal bodies of law which affect creation, management, exploitation and protection of brands together in one place, and considers them with particular emphasis on the way in which they are used best to fulfil the branding objectives of organisations today".
There's not a lot of law that deals with creation and management of brands, but that's more than made up for by the law that governs their exploitation and protection. And once you've got past that you can read the precedents: there's a Co-existence Agreement, a Design Comission Agreement, an Endorsement Agreement, a Copyright/Design Right Assignment, a Trade Mark Assignment, a Consultancy Agreement, a Merchandising Agreement and a PR/Advertising Relationship Agreement.

The IPKat is not totally sure who the readership is: there's a lot of law in this book, presented in terms of relative simplicity that suggest it may be designed for the non-specialist. Yet it's not a student text book, nor does it pretend to be an encyclopaedic work of reference. The Kat suspects that it may well be aimed at the in-house brand manager. If he's right, then the book may be just the right level for him: it will never turn him into a lawyer if (as is likely) he isn't one already, but it will enable him to do those two neat party tricks that so many in-housers never really learn: (i) to recognise when he has enough of a problem to go and talk to a lawyer about it and (ii) to understand enough of the lawyer's response to be able to act confidently upon it.

Bibliographic details: xxxviii + 543 pages. Hardback, plus CD containing precedents. ISBN: 978 1 84661 102 5. Price £120. Rupture factor: not insubstantial. Web page here.

New Ofcom code for TV advertising

Last Thursday the UK's Office of Communications (Ofcom) published a new Code on the scheduling of television advertisements. This revision, said to be shorter and simpler than its predecessor, follows changes to the European framework of advertising regulation as set out in the Audio Visual Media Services (AVMS).
The new rules, which you can access here, come into force on 1 September 2008.

Right: the IPKat surfs the channels in search of his favourite advertisements ...

According to Ofcom, the new Code makes no changes to the amount of TV advertising or the number of advertising breaks in most programmes. The main changes are as follows:

*the removal of rules that require a 20 minute interval between advertising breaks within programmes, a rule that annoyed viewers by forcing the first and last breaks to be scheduled very close to the beginning and end of some programmes;
* broadcasters may now transmit one advertising break for every 30 minutes of a film, instead of one for every 45 minutes;

* there will no longer be any restrictions on advertising breaks in documentaries, current affairs programmes and religious affairs programmes.

The IPKat has taken a little look at the Code, which seems to him to be almost as brand-friendly as a TV advertising code can be. He feels that the truth of the matter is that the person watching the TV has a split personality. So far as programme-makers are concerned, he is a viewer -- to be educated, amused, entertained and stimulated. But to the advertiser he is a consumer -- to be won over and converted into a goodwill-driven income stream. It is the watcher's desire to be a viewer that makes him literally a sitting target for the advertiser. Merpel adds, as the advertising media become more fragmented in the Web 2.0 era, mass TV advertising will only remain relevant for brands relating to goods and services for which every viewer is a potential customer (eg food, financial services); perhaps these mega-brands, if not yet given endangered species' status, need the special degree of nurture which an advertiser-friendly code bestows upon them.

One step beyond Praktiker: shopping centres as trade mark applicants

The English, it has been said, are a nation of shopkeepers. How strange, then, that a matter as fundamental as the right of a shopping centre operator to register its name as a trade mark should have had to wait so long for a definitive ruling. This has now been given, last Friday, by Mr Justice Floyd (Chancery Division, England and Wales) in Land Securities plc, Capital Shopping Centres plc and Hammerson plc v Registrar of Trade Marks [2008] EWHC 1744 (Pat).

This was a decision in respect of three joined cases, which were heard together in order to determine the question of whether the operator of a shopping centre could register a trade mark for the services it might provide (White Rose, Victoria Centre and Eden Quarter being the names at stake). In each case an application was made by a shopping centre operator and registration was refused. The applicants collectively maintained that, although shopping centre operators did not generally retail goods to the public, they offered a number of services, including

(i) selecting an attractive location with good transport links; (ii) providing a well-designed building or group of buildings, with a suitable layout; (iii) selecting and attracting a suitable mix of retail outlets; (iv) selecting and attracting a suitable mix of other facilities; (v) providing an attractive and comfortable ambience; (vi) providing facilities such as car parks, toilets and creches; (vii) providing convenient opening hours; (viii) providing information and assistance to customers; (ix) providing specialist assistance such as language assistance and facilities for the disabled; and (x) providing loyalty schemes of various kinds.
In support of the applications, evidence was furnished that shopping centres made extensive use of branding, undertaking advertising, publishing magazines and issuing loyalty cards. The Registrar was unmoved by their please. In his view (i) the services specified in the applications were not services within the meaning of Council Directive 89/104 and (ii) the specifications of the services lacked the requisite degree of clarity.

Floyd J allowed the applicants' appeals. In his view
* the word "services" within meant services which were of the kind that were "normally provided for remuneration". However, the definition of "remuneration" did not have to be a narrow one, relating to income that was separately itemised separate invoices. Thus it could include the services of a shopping centre operator, which carried on activities of "a commercial character". Nor was there was no reason in principle why a shopping centre operator could not be said to be providing services.

* one would not expect legislation concerned with trade marks to afford protection to activities which were wholly altruistic. Though a shopping centre operator might be remunerated in a way that was directly related to the custom which it attracted, even if that was not so, its services were not provided in a purely disinterested fashion.

* in each of these three cases the applicants had been providing services.

* the applications should be remitted so that the specification of goods/services could be properly designated.
The IPKat agrees with the judge's analysis and also with his conclusion that no reference to the European Court of Justce for a ruling on a preliminary question was needed here, since necessary principles could be extrapolated from its earlier ruling in Case C-418/02 Praktiker Bau- und Heimwerkermärkte AG [2005] ECR I-5873 (see IPKat notes here and here) where the applicant was a provider of retail services rather than, as here, a shopping centre operator. Merpel says, my favourite bit of the shopping centre is where you line up to take things back ...

Shopping for cats here
Cats in need of retail therapy here

Friday, 25 July 2008

Friday frisks

Once again, the IPKat urges you to check out the 'Forthcoming Events' feature, which you will find in the left-hand side-bar of this weblog's front page. It contains some fresh entries which you may not yet have seen.

The SOLO IP weblog carried a feature
earlier this week on the increasingly burdensome regulatory environment in which solicitors in the UK practice. While compliance with demands for information and the fulfillment of other obligations presents little difficulty for large and even medium-sized law firms with substantial administrative and managerial capability, it can make things very hard for small practices and sole practitioners -- many of whom work in the field of intellectual property. If you'd like to attend a meeting to discuss these matters, email Shireen Smith here.

This week saw the publication in the online version of the European Union's Official Journal of Commission Decision of 3 June 2008 adopting implementing rules concerning the Data Protection Officer pursuant to Article 24(8) of Regulation (EC) No 45/2001 on the protection of individuals with regard to the processing of personal data by the Community institutions and bodies and on the free movement of such data. The IPKat wonders why it has taken so long to adopt these rules, since Regulation 45/2000 dates back to December 2000.

The IPKat has been delighted to learn, from his friend Susan Sneddon (Maclay Murray & Spens), that a new (and 4th) specialist IP judge has been appointed to the Court of Session in Scotland with effect from 21 July 2008. Says Susan, "We think this reflects the trend towards an increase of IP litigation in Scotland generally". The new judge is Lord Malcolm who, under his maiden name of Colin Campbell QC, was Senior Counsel for Norton in the patent infringement action of Organon v Norton joined with the Petition of Arrow Generics for revocation of the Tibolone patents (see IPKat note here). Scotland now has four IP judges: Lord Emslie, Lady Smith, Lord Hodge and Lord Malcolm. For the sake of judicial impartiality, you can check out some Scottish clan conflicts here.

The IPKat's friend Pamela Chestek is an in-house lawyer who composes a lively little blog called Property, Intangible (subtitled 'A blog about ownership of intellectual property rights'). On Wednesday, Pamela asked her readers the following question: "What does it mean in various countries to assign a mark without the goodwill? Is there really any difference between U.S. practice and practice in other countries, other than we have to insert specific words in our agreements?". If this is an issue that you'd like to take up with Pamela, she'll be thrilled to hear from you.

In the news again is easyGroup, which may be doing a spot of litigation in the UK in order to remind the world of its deep and meaningful attachment to the word 'easy'. Some have criticised the company for its aggressive stance, but it looks as though it may have some substantial justification this time around. The Telegraph has reported that easyGroup is threatening Northmpton-based Indian restaurant easyCurry with legal action if it doesn't do something about its name and get-up by Monday morning.

Restaurant owner Naz Uddin said he offered to change the typeface and colours, but refused to remove the word "easy" from the restaurant's name: "We agreed to change the capital letter so it's all lower case and said we would change the colour but they said that's not enough. They're not happy because the word easy is still in the name". For easyGroup, managing director Anthony Robb-John, responds: "We won't let the public be misled. We do not hold ourselves out as owning 'easy' but we do own lots of trade marks. If people are using those names then we will take the appropriate court action".

BMI/ISP agreement; costs in the PCC

What have the BMI and ISPs agreed?

Yesterday the IPKat (in slightly sleepy state) was greeted with the news that British Music Rights (BMI) and the 6 leading UK ISPs (Tiscali, Virgin Media, BT, Orange, Carphone Warehouse and Sky) had reached an agreement on tackling illegal downloaders of copyright content. The IPKat thought it was a little odd that no one really seemed to be saying much on what the parties were actually agreeing to do, and then he went about his business.

It seems that the IPKat wasn't the only one who was confused. Today PC Pro reports that Carphone Warehouse has said that it will neither cut off their customers' internet access, nor will it divulge customer details without a court order. Instead, a Carphone Warehouse spokesman said:

"What we have agreed to do is to write to our customers and advise them there's been an alleged infringement. We're very clear that we don't know if that's the case or not, we've just been told there has been and we want to advise them of that".
The IPKat is rather suspicious of voluntary codes of practice like this one. It's one thing if an industry is agreeing to self-regulate. It's quite another if an industry is agreeing to self-regulate for the benefit of another industry, but the people who are really bearing the brunt of this are the ultimate consumers. The IPKat also wonders, what's in it for the ISPs here?

The desk drawer worth £100,000

Over to a costs cases in the Patents County Court. Anglia Autoflow Ltd v Wrightfield Ltd was a copyright case concerning ownership of a bespoke piece of software. The case was eventually abandoned by the claimant after a DVD came to light which showed early development stages of the defendant's software which indicated that it had been independently created. The said DVD was found by an employee of the defendant well into the litigation in his desk while he was looking for something else.

HHJ Fysh QC SC found that the defendant had failed to make a reasonable se
arch since 'his material was where one would expect it to be; it was not hidden away in some unexpected place. Moreover the file suffix ('.cxp') is the suffix for an Omron programme and the earlier version could I think, have been found in response to a search under 'Okeford', 'Faccenda', 'Easyload' or '.cxp'. The file name itself, I would have thought, would have been indicative of potentially relevant material for disclosure.' Additionally, the defendant had been rather 'cavalier' in preparing for the litigation, and had made (possibly by inadvertence) a number of misleading statements. Both of these factors justified a reduction in costs payable by the claimant of 20% (a claimant that abandons a case would normally be liable for 100%).

The thing that struck the IPKat though was the quantum of costs involved. Although the program cost the claimant £10k, the costs incurred in this case were almost £1million. The IPKat (perhaps naively) thought that the PCC was meant to be a less costly venue for IP litigation.


British tabloid newspaper publishing practices are in the news again, following the judgment in yesterday's highly-publicised ruling of Mr Justice Eady in Mosley v News Group Newspapers Ltd [2008] EWHC 1777 (QB).

Right: in a desparate attempt to deflect press attention from his next orgy, Max Mosley and his friends resort to a cunning disguise

Max Mosley, President of the Fédération Internationale de l'Automobile (FIA) since 1993 and a trustee of its charitable arm, the FIA Foundation, objected to the publication of an article in the News of the World newspaper. This article, headed 'F1 BOSS HAS SICK NAZI ORGY WITH 5 HOOKERS', was billed as an exclusive and ran under the subheading "Son of Hitler-loving fascist in sex shame". The article in question concerned an event, described as a party by Mosley and as an orgy by the newspaper. The text was accompanied by images taken from clandestine video footage and a concealed camera at the event itself. A sequel, published the following month under the banner "EXCLUSIVE: MOSLEY HOOKER TELLS ALL: MY NAZI ORGY WITH F1 BOSS", was mainly a purported interview with one of the women who participated in the event, who had filmed it with a camera supplied by the newspaper and concealed in her brassiere.

Mosley alleged breach of his of privacy under Article 8 of the European Convention on Human Rights (ECHR), seeking exemplary damages. He argued that the content of the published material was inherently private in nature and that there had existed a pre-existing relationship of confidentiality between the participants. The public display of this private event was thus unlawful.

Eady J, awarding a new UK record sum of £60,000 damages, agreed. In his 236-paragraph judgment he said as follows:

* The clandestine recording of sexual activity on private property was a proper subject-matter for the engagement of Article 8 of the ECHR.

* The woman with the concealed camera had committed an "old fashioned breach of confidence" as well as a violation of Article 8 of the ECHR.

* Mosley had a reasonable expectation of privacy in relation to his sexual activities, albeit unconventional, carried on between consenting adults on private property.

* There was no evidence that the event was intended to be an enactment of Nazi behaviour or adoption of any of its attitudes; nor indeed was it so. There was some bondage, beating and domination which seemed to be typical of sado-masochistic (S and M) behaviour -- but there was no public interest or other justification for the clandestine recording, for the publication of the resulting information and still photographs, or indeed for the placing of the video extracts on the News of the World website .

* The mere fact that this behaviour was viewed by some people with distaste and moral disapproval gave no justification for the intrusion on Mosley's personal privacy in the light of modern rights-based jurisprudence.

* Exemplary damages were not available in a claim for infringement of privacy.
This decision has been criticised in many quarters as destroying the ability of the UK press to reveal the shady facets of publicly prominent figures, suggesting that revelations of the pecadillos of politicians might now go unannounced. The IPKat wonders whether this criticism is founded on the assumption that we might be kept in the dark as to significant information that would cause the electorate to lose confidence in its leaders. If so, it seems that the countervailing public interest is also protected under the ECHR and we have -- at least in theory -- nothing to worry about. In this case, nothing turns on whether Max Mosley attends orgies, keeps sheep in his living room or eats prunes for breakfast and the decision looks right. We have all become habituated, indeed well-nigh addicted, to a constant flow of personal information concerning so-called celebrities; perhaps we should ask ourselves why this is so.

Merpel wants to know this: presumably each revelation by the News of the World brought attention and an increase in advertising revenue and web-traffic. Even if it has to fork out £60,000 plus an estimated £830,000 in costs, it must surely have profited pretty healthily from this escapade. Can anyone confirm this?

The IPKat's favourite S & M practice here
The IPKat's favourite S & M publisher here

Thursday, 24 July 2008

Researchers: are they workers?

The IPKat didn't see this one coming because it isn't really an IP case at all -- though it seems to him that it does have repercussions for IP in a big way. It's Case C-94/07, Raccanelli v Max-Planck-Gesellschaft zur Forderung der Wissenschaften eV, a reference to the European Court of Justice from the Arbeitsgericht Bonn (Germany) for a preliminary ruling.

Right: Max Planck -- the face that launched a thousand institutes

This reference related to Article 7 of Council Regulation 1612/68 on freedom of movement for workers within the Community, which says:

"1. A worker who is a national of a Member State may not, in the territory of another Member State, be treated differently from national workers by reason of his nationality in respect of any conditions of employment and work, in particular as regards remuneration, dismissal, and, should he become unemployed, reinstatement or re-employment.

2 He shall enjoy the same social and tax advantages as national workers ...

4 Any clause of a collective or individual agreement or of any other collective regulation concerning eligibility for employment, employment, remuneration and other conditions of work or dismissal shall be null and void in so far as it lays down or authorises discriminatory conditions in respect of workers who are nationals of the other Member States".

Raccanelli, an Italian, was engaged as a junior researcher at one of Germany's Max Planck Institutes, these being private law associations operating in the public interest. The Institutes operated two different schemes for junior researchers who were working on their doctorates: (i) a grant contract and (ii) an employment contract. The main difference between them was that the recipient of a grant was under no obligation to work for the institute and could devote himself entirely to work relating to his thesis, while the latter were required to work for the institute and might use its facilities for thesis purposes only outside normal working hours. Additionally, grant recipients paid no income tax or social security, while employed researchers paid income tax and social security contributions. Raccanelli maintained that he was an employee who was being discriminated against; the Institute said he wasn't an employee at all. Following a bout of litigation, the Arbeitsgericht Bonn referred various questions to the ECJ which held as follows:

"1. A researcher in a similar situation to that of the applicant in the main proceedings, that is, a researcher preparing a doctoral thesis on the basis of a grant contract concluded with the Max-Planck-Gesellschaft zur Förderung der Wissenschaften eV, must be regarded as a worker within the meaning of Article 39 EC only if his activities are performed for a certain period of time under the direction of an institute forming part of that association and if, in return for those activities, he receives remuneration. It is for the referring court to undertake the necessary verification of the facts in order to establish whether such is the case in the dispute before it.

2. ...

3. In the event that the applicant in the main proceedings is justified in relying on damage caused by the discrimination to which he has been subject, it is for the referring court to assess, in the light of the national legislation applicable in relation to non-contractual liability, the nature of the compensation which he would be entitled to claim".
It seems to the IPKat that, if a ruling or legal interpretation is capable of deeming a person to be an employee even where he is apparently only a doctoral student, that same ruling might be analogised in order to make him an employee for the purposes of (i) the 'employing' institute being able to assert ownership or lesser entitlements to inventions and other IP created by him in the course of his research or (ii) the doctoral student being able to claim an entitlement to compensation for the benefit or use of any patents resulting from his research. This needs to be carefully thought out, he says. Merpel says, but shouldn't one draw a distinction between a "worker" and and "employee"? They're not the same thing at all.

Workers of the World Unite here
Workers' Playtime here

Narnia domain name dispute concludes

The IPKat previously reported (here) the plight of a Scottish couple who had registered the domain name, claiming that they had done this as a birthday present for their son. The proprietors of the various copyright works of the late CS Lewis, and the associated trade marks, were not impressed by this and began proceedings at the WIPO-run domain name dispute resolution service (link). The decision has now issued, and is available here.

The facts of the case, as summarised in the decision, immediately lead one to suspect that the motives of the respondents were not quite as they had alleged:

"The Complainant owns trademark, copyright and other proprietary rights in the literary works of C.S. Lewis. This includes valid and subsisting trademark registrations in various countries for the term “narnia” and other NARNIA-composite marks. “Narnia” is the name of a fictional country in C.S. Lewis’ “The Chronicles of Narnia”, a series of seven children’s books. The first book in this series was published in 1950, and the works since have been adapted for film at least twice - in the film “The Chronicles of Narnia: The Lion, The Witch and The Wardrobe,” and more recently in the film “The Chronicles of Narnia: Prince Caspian”. The Complainant also owns and operates web sites at and, which provide information about the “The Chronicles of Narnia” books and the movies, their history and characters.

The Respondent, together with his wife, runs the Saville-Ferguson media and PR agency. The Respondent registered the disputed domain name on September 29, 2006, shortly after the dotMobi sunrise period for trademark owners had closed. The disputed domain name resolves to a parked web page provided by Sedo, containing “sponsored links” to commercial websites, including links to websites offering for sale merchandize and apparel related to “The Chronicles of Narnia” books and movies.

Between September 28 and 30, 2006, the Respondent also registered the following domain names:,,,,,,,,,,, and With the exception of, all of these domain names resolve to parked websites provided by Sedo.1

On June 17, 2008, two weeks after the filing of the instant Complaint with the Center, the Respondent registered the domain names and"
After hearing arguments from both sides, the panel was unconvinced by the respondent's claims that they had acted in good faith, and concluded as follows:
"The Panel cannot envision any plausible, good faith basis upon which the Respondent could have concluded that he was free to appropriate the Complainant’s distinctive and widely known NARNIA mark for use as a personal email address. The Respondent was well aware of the Complainant and the Complainant’s mark, and the Respondent clearly had notice that the Policy was applicable to domain name registrations in the dotMobi registry. Equally disturbing to the Panel at this point is the Respondent’s registration of the and domain names subsequent to the filing of the Complaint in this matter, and the implications these registrations hold both in terms of the good faith requirement implicit in paragraph 2 of the Policy and, ultimately, the Respondent’s motivation in registering not one but three domain names appropriating the Complainant’s mark."
Unsurprisingly, the panel ordered that the domain name be transferred to the complainant.

The IPKat is not at all surprised by the decision, but is a little dismayed (and, perhaps naively, shocked) by the apparently blatant manipulation by the respondents of their story when it first appeared in the media a few weeks ago. It seems to the IPKat that they knew exactly what they were doing, and their actual motives had very little to do with simply getting a nice birthday present for their son. Instead, their acts of registering so many domain names now makes them appear like classic cybersquatters, but perhaps with a particular talent for tales of fantasy.

Comptroller not a mere rubber-stamp for patent restorations

Another decision that slipped by last week was the ruling of Mr Justice Mann (Patents Court, England and Wales) in Matsushita Electric Industrial Company Ltd and others v UK Intellectual Property Office, a decision that has so far only made the columns of the subscription-only LexisNexis Butterworths service.

Matsushita owned four patents for which no renewal fees were paid on the due date (9 December 2005). Those fees remained unpaid on 25 April 2006, the latest date of the extended statutory period for late payment. On 9 October 2006 -- 10 months after the original renewal date, Matsushita applied for restoration of the patents, invoking s.28(1) of the Patents Act 1977 ("Where a patent has ceased to have effect by reason of a failure to pay any renewal fee, an application for the restoration of the patent may be made to the comptroller within the prescribed period... "). By s.28(3) of the same Act it is provided that

"If the Comptroller is satisfied that the failure of the proprietor of the patent

(a) to pay the renewal fee within the prescribed period; or

(b) to pay that fee and any prescribed additional fee within the period ending with the sixth month after the month in which the prescribed period ended,

was unintentional, the Comptroller shall by order restore the patent on payment of any unpaid renewal fee and any prescribed additional fee... ".
These applications for restoration were supported by a witness statement prepared by
Computer Patent Annuities (CPA), which asserted that the failure to pay the necessary renewal fees had been unintentional.

The Patent Office wrote to ask for further details of the reasons behind the non-payment, but CPA took the view that, for the purposes of s.28(3), a mere assertion to that effect was sufficient. Accordingly Matsushita was not obliged to provide any further information. Following more correspondence, the hearing officer wrote to Matsushita and asked that it put in further evidence, as requested, or its applications would be refused. Matsushita failed to do so and the hearing officer refused their applications. Matsushita appealed.

The issue arose as to whether the Comptroller-General of Patents (the comptroller) should be 'satisfied' that the failure to pay the renewal fees had been unintentional, as required by s 28(3) of the Act, if merely presented with a mere assertion to that effect and nothing more.

Mann J dismissed the appeal. Describing the restoration of a patent as a serious, significant act with proprietary effect, not a casual administrative step, he affirmed that s.28(3) required that the Comptroller should be satisfied that the failure to pay the renewal fee had been unintentional. The mere assertion that the failure to pay renewal fees was unintentional would not suffice. If it could, the Comptroller's role would be reduced to a purely clerical one. This was objectionable in principle and would amount to letting an applicant make such a decision and to decide as a matter of law what was necessary to prove that the non-payment was unintentional.

The IPKat doesn't blame Matsushita for persisting with a lost cause, since the patents in question were probably worth a great deal more than the cost of the initial ruling and subsequent appeal -- but, even aside from the matter of principle involved, he didn't feel that the wording of s.28 offered much hope. Merpel asks, if the sanctity of the continued existence of a patent is such an important thing, don't you think that the two-bites-of-the-cherry system of allowing both late renewals and post-lapse restorations sends out the wrong message to patent owners?

Restoration here, here and here
Custom rubber stamps here and here -- and bouncing letters here

Wednesday, 23 July 2008

eSure v Direct Line - the end of the line for brand experts?

Today the Court of Appeal delivered its judgment in eSure's application for permission to appeal against Lindsay J's decision to uphold Direct Line's opposition against its application to register a mouse on wheels. The opposition was based on a likelihood of (a) confusion and (b) unfair advantage/dilution of Direct Line's red telephone on wheels. Both marks related to insurance services.

The IPKat offers his services as an expert in all cases involving a mouse

eSure in particular questioned Lindsay J's reliance on expert evidence in establishing confusion, and also questioned his using different standards for similarity of marks for establishing confusion and dilution.

Arden LJ delivered the leading judgment, granting permission to appeal, but dismissing the appeal:

  • Lindsay J had erred. There is no threshold level of similarity between marks required under Art.5(1)(b), nor did Vedial say that there was one.Instead, it is the case that if there is no similarity at all then there can be no likelihood of confusion to be considered. However, the finding didn't affect the outcome of the case because the judge had found that the minimum threshold had been met and so she didn't make a final finding on this issue.
  • The judge had upheld the Hearing Officer's finding on similarity of marks for the purposes of s.5(3), but had overruled the Hearing Officer's finding on the same issue under s.5(2). This, eSure argued, was inconsistent. eSure further argued that the way to resolve this inconsistency was to reject the expert evidence under both subsections and so find in eSure's favour on both issues. Not so, found Arden LJ. Another way was to restore the Hearing Officer's finding under s.5(2). Contrary to Lindsay J's finding, the Hearing Officer had been entitled to reach his conclusion that there was indirect confusion (and therefore that the opposition succeeded under s.5(2)) based on his own judgment, and in the absence of additional evidence. The ECJ has left it for national courts to determine how they assess if allegations of similarity or confusion are proved. The approach in the UK is to treat what the average consumer would make of the marks and the link between them as a jury question. In the absence of a jury, it is for the judge to not only put himself in the place of an average consumer, but also to consider whether he, as a potential buyer, would have been confused. Although the relevant cases on this (e.g. GE Trade Mark) predated harmonisation, the principles were derived from the law of evidence, and so could still apply today.
  • Since the judge had been wrong to interfere with the hearing officer's decision, the hearing officer's finding that there was a likelihood of confusion was restored and so the opposition would succeed on s.5(2). Consequently, there was no need to examine the grounds of appeal under s.5(3).
  • Her Ladyship concluded with two general observations: (1) she questioned the role of expert evidence in such cases (Lindsay J had relied heavily on the evidence of a branding expert) . In particular, it would be wasteful for an expert to be called on issues where a tribunal is in a position to form its own view, and the unnecessary calling of experts could have an impact on costs; (2) she spoke strongly in favour of the practice instigated by the late Pumfrey LJ of requiring the parties to seek directions as to the scope of methodology of any consumer survey at the case management stage.

Jacob and Maurice Kay LJJ also gave concurring judgments. Both placed particular emphasis on the fact that there was absolutely no need for a branding expert to be called to give evidence on questions which could easily be settled by the judge. Jacob LJ questioned whether the expert was in fact an expert on confusion between trade marks (as opposed to on branding) and on whether it was evidence at all, or merely assertion. Maurice Kay LJ also called for the Trade Marks Registry to exclude such evidence from its hearings.

Jacob LJ also noted that this was a case which 'suffered greatly from over elaboration in both evidence and argument' where things have become complicated unnecessarily.

The IPKat reckons their Lordships are sounding a little grumpy. He reckons that he would too. Perhaps it's the Kat's imagination, but trade mark cases do seem to have been growing increasingly long over the past couple of years or so. The Kat finds this a tad surprising since, on confusion at least, the ECJ's case law in relatively clear (subject to the odd bit of fuzziness round the edges). Perhaps part of the problem is reliance on evidence that ultimately ends up not being of that much use to the court. This is expensive for the both the parties and the court system, and hopefully this judgment will curb the tendency.

One the subject on experts, the IPKat notes that the Court of Appeal particularly directed its comments on expert evidence to experts produced to testify on confusion issues. He notes that Lindsay J at first instance relied heavily on the expert's evidence in relation to s.5(3). He hopes that the same principle will apply - experts may be experts in branding, but they're unlikely to be experts in the legal question of what constitute detriment or unfair advantage.

New blog on the block ... for SPCs

"Rising from the ashes of the expired patent" might seem a trifle dramatic for a weblog theme, but there's a new blog on the block and it's aimed at a subject which is as important as it is neglected -- the extension of patents, particularly through the mechanism of supplementary protection certificates (SPCs) which is favoured within the European Union.

Right: the phoenix -- an apt theme for SPCs?

Piloted by IPKat team member Jeremy together with his friends Rob Stephen and Catherine Katzka, this niche blog is

"dedicated to the issues that arise when supplementary protection certificates (SPCs) extend patents beyond their normal life -- and to the respective positions of patent owners, investors, competitors and consumers. The blog also addresses wider issues that may be of interest or use to those involved in the extension of patent rights".
Jeremy, Rob and Catherine hope to put together a handy bundle of source materials and further reading on SPCs and, if sufficient interest emerges, to help build a little community of people who are concerned about how patent extension works, in theory and in practice, and who want to share their thoughts with others.

You're welcome to visit The SPC Blog here.

Good news for anyone who doesn't want to translate a European patent

The IPKat has received the following good news from Andy Cloughley (MSK Patents):

"You may recall that Germany slipped up in its implementation of the London Agreement, to the extent that it was accidentally due to come into force only on 1 September 2008.

Right: London celebrates in traditional style

We have recently been informed that the new law correctly implementing the London Agreement has now been officially published in the Bundesgesetzblatt and that it has entered into force with retroactive effect, as of 1 May 2008. This makes it definite that no translations need to be filed for any European patent for which the mention of grant was published on or after 1 May 2008.".

"Of course, this was widely expected", Andy adds, "but it's nice to know for certain". The IPKat knew it all along, of course. He couldn't tell anyone, though, because then they'd know how quickly he'd mastered German.

Retrospective legislation here
Earlier IPKat post and vast follow-up correspondence on 1 May and the London Agreement here

Blunting the edge of a declaration of invalidity

Last Friday Mr Justice Warren, sitting in the Chancery Division (England and Wales), gave a ruling in Rousselon Freres Et Cie v Horwood Homewares Ltd, [2008] EWHC 1660 (Ch). This was a follow-on from an earlier hearing (noted here by the IPKat) in which the same judge held that kitchen knife-maker Rousselon was entitled to invalidate Horwood's trade marks for knifes in Class 8: both marks contained the striking name SABATIER and there was a likelihood of confusion since the dissimilarities between the parties' respective marks were not sufficient to undo the dominant effect of their shared name.

After Warren J held that Rousselon was entitled to a declaration that Horwood's trade marks were invalid, Horwood sought suspension of that declaration pending the outcome of its application to invalidate or revoke Rousselon's own registered marks. The judge was asked to deal with two issues: (i) did the court have jurisdiction to suspend the making of the declaration and (ii) if so, should that discretion be exercised?

Warren J's answers were "yes" and "yes". He explained that the court had jurisdiction to suspend the making of a declaration of the invalidity of a trade mark not only where an appeal against that decision was pending but in other circumstances too, so long as its jurisdiction was exercised in a manner that was appropriate to a stay of execution and which did not cast aspersions on the validity of the original judgment. In global terms, a declaration of invalidity had implications that far exceeded its effect on the parties to the litigation. This was because, since a registered trade mark was a property right enforceable against the world, the effect of a declaration of invalidity was the irreversible consequence that everyone else in the world could rely on it. It was not disputed that, pending Orders for revocation and declarations of invalidity were often suspended pending an appeal, so the court clearly had jurisdiction to suspend its order here -- and there was no reason to doubt that the same jurisdiction was available in other circumstances. On the facts, jurisdiction to suspend the declaration was appropriate here.

The IPKat, having read the original judgment and counsel's submissions arguing against the stay (see paragraph 18 of last week's judgment), made a little wager with himself that Rousselon would emerge victorious -- which just goes to show how important it is to hear both sides of an argument before reaching one's conclusions. Merpel says, once again it seems a shame that a dispute such as this has had to go through one battle before the Hearing Office and two High Court hearings in order to reach the stage at which it is still necessary to determine whether the trade marks of the applicant for a declaration of invalidity were themselves invalid. Can it be that, when a dispute first arises before the Registry, it is more difficult to impose a case management structure on it than is the case for disputes which are initiated at High Court level?

How to carve a roast here
What a carve-up! here

Tuesday, 22 July 2008

Sound Copyright - time to take action

The IPKat received the following email from the Sound Copyright campaign run by the Open Rights Group and would like his readers to know about it.

"Dear Sound Copyright supporters,

Many of you will have read in the last week that, as a result of intense lobbying, the EU Commission disregarded the balance of evidence and formally accepted the proposal to extend the duration of copyright for sound recordings. Writing in the UK press Dave Rowntree, the drummer from Blur, explained why this proposal would be damaging for Europe's creators and consumers. He hasn't been alone in voicing his concern:

[IPKat comment: and the IPKat, of course; see also here, here and here]

Fortunately, the battle isn't lost. You can help us campaign for a rational copyright policy in four ways.

>> How you can help 1:

We need more people to show their support. Over 12,500 people have signed our petition, so tell your friends and help us spread the word across Europe so that you can be heard in Brussels:

>> How you can help 2:

The full texts of the proposal and the relevant impact assessment are open for collaborative commenting. Please help us challenge their arguments and point out evidence that disproves their claims.

>> How you can help 3:

The UK Intellectual Property Office, the government body charged with ensuring balance and fairness in Intellectual Property, has asked the public and all those with an interest to make sure their voices are heard, and contact the UK-IPO by the end of August. Remember, always be polite and considered when explaining why term extension concerns you.

You can find out which government body in your country is responsible for intellectual property policy here:

>> How you can help 4:

Show your support for our work by joining or donating to the Open Rights Group. Check out for more information on our campaigns.

Thanks again - we'll keep you updated.

The Sound Copyright Campaign

Run by the Open Rights Group and EFF"
The IPKat encourages his readers to show their opposition to this proposal, and join it in whatever way they feel is most suited. Alternatively, you could try telling the IPKat why the Commission's proposals are justified, as he remains to be convinced.

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