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).

Friday, 31 January 2014

Friday fantasies

There must be a word for it.  Frank Hafner (European Patent Office, EPO) has reminded the Kats that it's time to tell their readers all about the EPO's Search Matters conference.  This is not just another EPO event, a small sample of the almost 100 which the office organises each year. Rather, says Frank,
"Search Matters is one of our key events, addressing patent search professionals from business, academia and IP firms. It provides a unique opportunity to meet more than 40 examiners along with some patent information experts from the EPO [what an awesome prospect, murmurs Merpel, who wonders if the English language, with all its stolen wealth of words, has a special collective term for patent examiners]. Participants can also put questions – including queries about searches in specific technical areas – direct to individual examiners, one on one". 
Date: 3 and 4 April. Venue: The Hague. For more information, to view the programme and the workshop abstracts, just click here.

Is this the symbol
of European copyright?
European copyright: brittle or bendy?  "Copyright in the EU: In Search of (In)Flexibilities" is the title of a piece which, when duly topped and tailed, will grace the pages of the Journal of Intellectual Property Law & Practice (JIPLP). The author is fellow Kat Eleonora, who asks two big questions: "Are Member States entitled to alter, ie broaden or restrict, the scope of the exclusive rights harmonised by the InfoSoc Directive? May Member States decide (as the UK did) not to transpose the full language of exceptions and limitations once they chose to implement a certain exception or limitation from Article 5 catalogue into their national laws? No in both cases, says Eleonora but, if you want to know why, you'll have to read her analysis. It's a powerfully reasoned piece which this Kat can confidently recommend. Conveniently, Eleonora has parked it on SSRN, just here.

Altus: soon to be
a thing of the past ...
Around the weblogs 1.  On Afro-IP, Caroline Ncube relates the tale of a South African wine brand dispute (Alto v Altus) which ended with Altus preferring a name change (to Fenix) to the prospect of defending a trade mark infringement claim. Elsewhere on the same blog, Afro Leo posts a note on the plain packaging issue -- this time in South Africa, where the incomparable Louis Harms has raised the spectre of "unintended consequences".  Class 46's latest blogposts feature an OHIM Board of Appeal decision on whether PAOLA for rum might be confused with VILLA PAOLA for wines, noted by Pedro Malaquias, a General Court ruling on whether GOLDSTEIG and a figurative mark containing "Goldstuck" might be confused for a variety of edibles in Class 29, potted by Laetitia Lagarde, and this piece by Tomaz Rychlicki on the legal interest of foreign companies (in this case Aldi, from Germany) in Polish opposition proceedings, when genuine use must be proved.

Around the weblogs 2.There's another characteristically colourful CopyKat post from Ben Challis on the 1709 Blog, which reflects both his enthusiasm and his breadth of coverage of copyright. Still on the issue of copyright, but mainly a pleasantly pastel yellowy-green, is Copyright See-Saw, the brainchild of veteran copyright guru Mihaly Ficsor Sr. From its name comes a clue to the blog's leitmotiv -- the balancing of competing interests (a topic that is continuing to exercise the brains and the imaginations of copyright's finest policy-makers). A Katpat for Peter Munkacsi for tipping us off.

Kenyan patents now at your fingertips. From Katfriend and Afro-IP blogger Isaac Rutenberg comes news that Kenya's Center for Intellectual Property and Information Technology Law (CIPIT), at the Strathmore University Law School, Nairobi, has launched a full-text searchable database of Kenyan issued patents. Isaac's Afro-IP blog announcement is here, and the link to the actual database is here. The same website also has searchable Kenyan Intellectual Property Tribunal cases that, like the patents, are currently not otherwise available online. Well done, says the IPKat: it's good to see an academic institution doing things that palpably benefit not just students and researchers but the entire business and technology community.

Assignment and licence-back of a trade secret: no yawning matter

For those who like to live on the edge of IP, you cannot beat an assignment and licence-back of a trade secret. This is so both because of the peculiarities of both. First, consider trade secrets. With no registration, no international arrangements, no single accepted definition and the challenge of trying getting one’s arms around a right that is by definition secret, trade secrets stand separate and apart from all other IP rights.

Most importantly for our purposes, while trade secrets are nominally about secrecy, in matter of practice they are often more about how to control disclosure. Unless the only person using the trade secret is its creator, which is seldom the case, any use of a secret will invariably involve its disclosure to more (sometimes many more) than one person. This means that disclosees must be carefully vetted. If a trade secret is disclosed in an unauthorized manner by a person to whom disclosure has been made, there may not be any quantity of judicial award that is of a sufficient magnitude to compensate for the fact that the trade secret smoke is out of the bottle. It is the challenge of this dialectic between secrecy and disclosure that confers upon trade secrets their unique, almost idiosyncratic IP character, both legally and in practice.

There is also a special, almost idiosyncratic aspect to the assignment and licence-back of an IP right Generally speaking, in such an arrangement, a party purports to assign certain IP rights to a third party and immediately thereafter receives a licence back from the new owner to use the assigned IP right. This kind of arrangement appears usually to be driven by tax concerns or by an interest in consolidating the IP in a single entity. However, putting tax and corporate considerations to one side, in most situations where an assignment and licence-back is entered into, there is no real change in the nature of the use by the parties with respect to the relevant intellectual property right. This is because the erstwhile owner continues to use the IP right as a licensee, usually more or less in the same manner as it did prior to the assignment. To a degree, as a practical matter, “the more things change, the more things stay the same.”

Traditionally, the legal challenge of an assignment and licence-back arrangement is most acute where a trade mark is involved. This is especially so in those jurisdictions, such as the United States, which still require that goodwill in the mark be transferred from the assignor to the assignee, on the one hand, and whether the assignee/licensor has put sufficient quality control provisions into place for the use of the mark by the licensee, on the other. The law in such circumstances has come to recognize the validity of such arrangements where the assignor can continue to use the trade marks as a licensee, provided that the requirements of transfer of goodwill and quality control are met.

But what about the assignment and licence-back of a trade secret? As noted above, the essence of both an assignment and a licence is the fact that the owner of the trade secret has agreed to disclose it to a third party. That seems self-evident, as neither the assignee nor the licensee will agree to the transaction unless the trade secret has been disclosed to it. But it is not self-evident that such disclosure needs to take place in the assignment and licence-back situation. Consider the assignment and licence-back of confidential manufacturing technology, where the assignor/licensee resides in one country, but the assignee/licensor is found in another. The arrangement has been fashioned for tax or corporate considerations, whereby the assignee/licensor does not engage in any manufacturing activity. In fact, there is no actual disclosure of the trade secrets from the assignor to the assignee. Both before and after the transaction, the trade secret remains wholly within the care of the assignor/licensee, who continues to make use of the confidential manufacturing technology as if the transaction had never occurred.

And so the question: since there has been no disclosure of the trade secret to the assignee, can the transaction be challenged as a sham? For instance, if there are tax benefits associated with the transaction, can the arrangement later be rejected for tax purposes? Or consider a situation in which the assignor securitizes all of its IP rights, including the trade secrets that are the subject of the transaction, and the secured party later seeks to realize on these trade secrets assets. Will the secured party be able to enforce its security interest in the trade secrets against the assignor/licensee, which was not a party to the security agreement, since it is only the assignor/licensee that has “possession” of the asset. This Kat is not aware of any decisions regarding these questions; he would be delighted if any Kat readers might be able to shed some light.

Grumpiness when rhetoric does not match reality

This Kat is grumpy about pretty much everything at the moment.  He is weary of explaining to clients and patent attorneys outside Europe that, contrary to what they may have read in announcements from official sources that no, the Unitary patent will probably not be cheaper than their European patents as currently validated; it certainly won’t be quicker; and the 2014 start date is a figment of some official’s imagination.  (UPDATE 1 Feb 2014 - this Kat posted about a similar outbreak of grumpiness when Austria ratified the UPC agreement last year.)  He has been pondering the reputational damage and waste of time and energy involved when official announcements  fail to actually reflect the reality of what has been achieved, with the result that it falls to professional advisors to disabuse expectant applicants and explain to them the real position.

This sin of over-hyping has been a constant bugbear of the PPH system (and was being complained about by sabbatical Kat here).  It has always been the case with PPH that, in return for actually rather onerous and significantly expensive administrative requirements (submitting copies of office actions and translations together with claim correspondence tables), the only thing that is offered is accelerated processing.  Not preferential treatment on substantive matters.  Not a presumption of allowability, let alone “rubber stamping” of a decision of another patent office.

Even with the global system,
it's still a complex network!
So when this Kat read the announcement by our dear blogmeister of another development of the PPH system the other week, another small part of him died inside.  What has really happened is that a bewildering pattern of bilateral agreements has been partly replaced by one overarching agreement in respect of some, but not all, the participating countries.  This is lovely.  But the fact is that practically the scope of the new agreement is very similar to what was in place before, and actually, when an application had been allowed in one jurisdiction previously, it was the work of moments to determine which countries were eligible for PPH based on this development.

So now let’s turn to the UK IPO announcement.

This will significantly simplify the process for businesses, and help to cut the time and cost of seeking patent protection in key global markets. Er, no it won’t.  The process involved is exactly the same as before.  The time taken to grant may be quicker as compared with the non-PPH system, but the time spent dealing with each patent office will likely be the same, and may actually be more (because of the requirement to file copies of office actions, translations, and correspondence tables), and so be more expensive.

It will also help cut the global problem of patent backlogs.”  Er, really?  Each office still has the same size backlog, it is just that the order of cases in the queue is shuffled.

“The new Global Patent Prosecution Highway pilot is a real step forward. It is a significant achievement that brings together, and more closely aligns, the work of the key global patent offices. The real benefit is to businesses and other applicants, who will see patents handled more quickly and efficiently across global markets. This will reduce complexity and time and cut costs.”  The only word in this that seems true is “quickly”.

Although the use of bilateral PPH arrangements is increasing (the UK recently signed an agreement with China during the Prime Minister’s visit in December) the UK has been working to establish a PPH framework that covers multiple countries to better allow businesses to protect their intellectual property in overseas markets.”  This Kat entirely fails to see how the PPH acts to “allow businesses to protect their intellectual property in overseas markets.”

Confidently, but miserably, expecting his mewing to fall on deaf ears, this Kat wants to issue a plea – please can official announcements about legislative developments be congruent with what has actually occurred?

Healey, Jensen dispute: Carr drives on

No reverse for Jensen.  Healey Sports Cars Switzerland Ltd v Jensen Cars Ltd [2014] EWHC 24 (Pat) is a Patents Court, England and Wales, decision of Katfriend Henry Carr QC (sitting as a Deputy Judge of the High Court) on 24 January 2014. It's not a very big case and isn't posted on BAILII (you can access it here or download it here) -- but even a small case can have some significant content.

Healey Sports and Jensen Cars both claimed to own the United Kingdom trade mark registration for the word JENSEN in relation to motor vehicles, parts, accessories etc. In proceedings before the Trade Mark Registry, Hearing Officer and Katfriend Allan James had to address two separate disputes.

Tomorrow's Jensen
In his first decision the Hearing Officer concluded that five registered trade marks for the word JENSEN and which were owned by Healey Sports should be revoked for non-use. In his second decision the Hearing Officer subsequently held that Jensen Cars' opposition to Healey Sports' application for an international registration of trade mark 1057115 succeeded in part, and that Healey Sports failed in its application to invalidate Jensen Cars' United Kingdom trade mark 2529258, which was registered in February 2010 for vehicles and their components: spare parts for cars (Class 12), retail services connected with the sale of vehicles and parts and fittings (Class 35), maintenance and repair of automobiles (Class 37) and assembling of vehicle parts and their components (Class 40).

Now here's the first really interesting bit of this case ... 

Yesterday's Healey
In reaching his decision on revocation for non-use, details of the appearance of Healey Sports' JENSEN trade mark on its website and an accompanying press release relating to the forthcoming launch of a new car were submitted as evidence of genuine use, as were photographs of a prototype of the new car (referred to as a ‘platform’). The Hearing Officer held that, if the requirement was for the use of the marks to be in relation to goods already marketed or about to be marketed, the use on the website and in the press release in relation to a car that did not exist at the time, and which was at least a year away from being unveiled, did not appear to qualify as genuine use. In his view, neither the press release nor the website provided sufficient information about the specification for the new car to permit potential customers to decide whether to register a serious interest in buying one. Nor was there any evidence, despite the passage of time, of anyone expressing any interest in purchasing the new car, as a result of the press release, the website or otherwise.

Vintage Carr
Healey Sports appealed on the ground that, among other things, while the Hearing Officer had correctly set out the law in relation to genuine use, he had failed to apply it to the facts. A question also arose as to whether there had been genuine use of Healey Sports' international registration M828978 JENSEN as of its international registration date of 11 June 2004. If there had been, Healey Sports contended that it should succeed on both appeals on the basis that the date of its registration pre-dated Jensen Cars' registration date, since its registration was for goods and services that were identical to those for which Jensen Cars' UK mark 2529258 was registered.

Vintage Kat
The Deputy Judge dismissed Healey Sports' appeal. In his view there was no error of law or principle in the Hearing Officer’s approach. Further, it was not possible to tell from the photographs whether the platform existed during the five year period, since they were undated and exhibited in relation to a witness statement dated about a year after the relevant period for proof of genuine use had expired. Nor was the Jensen mark visible on the platform shown in the photographs. The press reports were not use of the mark by Healey Sports, and could not therefore be relied on as such.

... and here's the next interesting bit, even though it's obiter

Henry Carr QC let off a bit of steam on a matter that, this Kat suspects, may have been troubling him for some little time. He said, at [10]:
“Some parties to Registry proceedings may consider that it is simpler, more efficient or more cost effective to have evidence of fact given by their legal representatives. This appears to have been adopted in the present case. I make no criticism of the solicitors who have carried out their clients’ instructions in the present case. However, this view is plainly misconceived. It is likely to lead, as in the present case, to such evidence being given little weight, on the basis that the person giving it has no knowledge of the relevant facts. There is no reason that such evidence should carry more weight in the Registry than in Court proceedings”.
Quite right, says Merpel. Clients shouldn't expect their legal representatives to do all that hard work to get a case to trial and then expect them to give evidence too. And no-one would in any event expect a gentlemanly barrister to make a criticism of solicitors ...

This Kat is indebted to a kind member of the Bar, who was anxious not to be identified as the supplier of a PDF of Henry Carr QC's decision; he is awarded a suitably anonymous Katpat.  The case is also picked up on LexisNexis, where it is unaccountably described as being to do with patent revocation.  Naughty, naughty!

Thursday, 30 January 2014

Why Copydan may become a landmark case for the future functioning of copyright levies in Europe

Milly can't wait to receive her
early Valentines Day gift:
the Svensson judgment
Yesterday this Kat discovered (thanks to Twitter, in particular @cyberleagle) that the Court of Justice of the European Union (CJEU) will issue its judgment in Case C-466/12 Svensson [here, on which see independent opinions by the European Copyright Society (here and here) and ALAI (here)] on 13 February 2014 [this is probably because, muses Merpel, the CJEU intends it as a love gift for EU copyright enthusiasts].

Amidst excitement [or concern, depending on what your views are] for CJEU activism in the area of copyright, Svensson is certainly not the only case on which a decision is keenly awaited.

Amongst others, lovers of all things copyright levies are probably looking forward to the decision in Case C-463/12 Copydan Båndkopi [on which see 1709 Blog post here], a reference for a preliminary ruling from apparent copyright-loving Member State Denmark, seeking clarification as to copyright levies and their calculation, including consideration of technological protection measures [on TPMs, see the recent decision in Case C-355/12 Nintendo v PC Box: here and here].

Today the IPKat is delighted to host a super-sharp and thorough analysis of the Copydan case and its potential implications by Katfriend and IE Law School Professor Javier Ramirez. Although incidentally Javier is currently also Vice President for Regulatory Affairs (EMEA) at Hewlett-Packard, he wrote on a personal/professorial [is there are a difference, wonders Merpel?] capacity to tell the IPKat the following:

Javier Ramirez
"In the absence of the European Commission taking firm action to rationalise the functioning of copyright levies in the internal market, the CJEU has become the key instrument to set the principles under which copyright levy schemes must operate to conform to EU law.

Given the long line of cases already dealt by the CJEU [Case C-467/08 Padawan, Case C-462/09 Thuiskopie, Case C-277/10 Luksan, Joined Case C-457/11 to C-460/11 VG Wort, Case C-521/11 Amazon and, pending of Court judgment, Case C-435/12 ACI Adam], one may wonder whether Case C-463/12 Copydan may become a landmark judgment for the future of copyright levies and, even more, for the development of legitimate digital licensing models in Europe.

The answer is that, yes, Copydan may become a landmark case in this respect.

Firstly, the CJEU will specifically have to address some core principles not addressed in prior judgments. For example, in what cases the “de minimis” rule (Recital 35 in Directive 2001/29/EC, the 'InfoSoc Directive') applies, or whether a distinction in the application of levies is required depending if primary function of the devices is private copying (of protected works) or not.

More importantly, it is likely that the CJEU will also shed light on some core issues that were only partially addressed in earlier cases, including:

1.  Whether copying in the context of licensed online business models may be subject to additional compensation by mean of levies

In VG Wort the CJEU touched upon the role that rightholders’ authorisation plays in the requirement of fair compensation, providing some cryptic indications about the differences between exceptions and limitations. However the CJEU did not clearly deal with content licensed through digital platforms nor consider the InfoSoc Directive’s goal of fostering a legitimate digital internal market (Recital 2) where rightholders cannot be prevented from using contractual relations to ensure fair compensation (Recital 45 and Article 6, para 4, sentence 4). Furthermore, it did not deal with the role that the harm principle and the “de minimis” rule must play on
De minimis harm?
the definition of the level of compensation, and whether consent and/or payment implies that no additional compensation is due by means of levies (Recital 35); because either no harm or minimal harm is caused, or harm has been compensated by other means (eg, by the licence payment).

Consequently the Copydan judgment may be critical for the future of digital licensing models in Europe, especially if the CJEU follows Copydan and Austria’s position - and not the views of the Commission and the UK, amongst others - and concludes that rightholders are precluded from licensing their right of reproduction in Member States where a private copying exception has been transposed and, as a result, are arguably prevented from the normal exploitation of their works in the online environments, as required by the three-step test (Article 5, para 5) and Recital 45.

2.    Whether the mere ability for reproduction is sufficient to trigger application of levies

In Padawan, the CJEU resolved that use for private copying can be presumed when reproduction devices are made available to natural persons acting for private purposes. Then the CJEU referred to the “possible” harm that will be caused. However, this should not be interpreted as meaning that mere suitability for reproduction is sufficient to apply a levy to a device to compensate for any “potential” harm. The principles of harm, fair balance and the necessary link between application of compensation and the making of copies within the scope of the exception must be considered together with the prohibition of unjust enrichment and the right of property of those obliged to pay. All these imply that setting of levies must follow a two-step process:

1.  Step one: determine the categories of devices subject to payment of levies and its amount. In order to do this, it is necessary to assess statistically which device categories are actually used for private copying and make an objective quantification of harm resulting from typical use.

2.  Step two: following the determination in Step one in accordance with the criterion of harm, it is legitimate to presume and charge the levy to natural persons who acquire those devices for private purposes upon the basis that each individual is an average consumer making the average amount of private use copies.

3.    How the exoneration of business users must be practically implemented

In Amazon, the CJEU indicated its preference for the implementation of “a priori” exemptions of business users from payment of private copying levies. It provided that only if sufficient practical difficulties exist (in all cases) for such exoneration, then it can be substituted by a right of reimbursement which is effective and does not make repayment excessively difficult.

The Copydan judgment will be important because it should address how the exoneration of business users must be implemented in multi-level distribution systems, where a levy has to be paid by a producer or importer who does not sell directly to end-users but through resellers and cannot know if final users will be business or private users. Consequently the CJEU will have to decide whether the alternative option recommended by Mediator Vitorino of shifting the obligation to pay the levies to the retailer who is in direct contact with the end-user - and may filter between business users and consumers, for example by requesting VAT numbers - will be a least onerous choice, more compliant with the principle of proportionality and the principle of fair balance between concerned stakeholders.

4.    How the principle of equal treatment affects the categories of devices subject to levies and the level of compensation

In VG Wort, the CJEU provided that the fundamental right to equal treatment under Article 20 of the Charter of Fundamental Rights of the European Union must be respected, but this does not prevent applying the levy only on one of the devices that are used in a chain of devices and by taking into account the level of harm caused (whilst the harm from each reproduction may not differ substantially, the number of reproductions produced may differ, and therefore the amount of compensation should be different).

Non-discrimination principle exam question:
Should Eric and Gustave be treated differently?
In compliance with settled case-law, the principle of non-discrimination or equal treatment requires that comparable situations must not be treated differently and that different situations must not be treated in the same way unless such treatment is objectively justified. In the levy context, the stick yard will be whether there is an identity or not between the compared devices attending to a variety of factors (primary users being private or business users, harm resulting from average use of those devices, reproduction of works as primary or ancillary function, different technologies, etc.). This is aligned with the mandate that “when determining the form, detailed arrangements and possible level of such fair compensation, account should be taken of the particular circumstances of each case” (Recital 35).

Advocate General Cruz Villalón Opinion on the Copydan case will be delivered on 3 April 2014. Let’s stay tuned."

Thanks so much Javier for this analysis of current EU framework for copyright levies and the potential implications of the forthcoming Copydan case. What do readers think? What should the future of levies be? In any case, those who wish to engage in further discussion with Javier, can do so by emailing him at

Having a bash at cross-undertakings: a boxing dispute in three rounds

Damages cross-undertaking:
a knock-out blow ...?
Cross-undertakings in support of interim injunctive relief are an increasingly important, and frightening, part of intellectual property law. While it is only right and proper that a defendant who has been wrongly ordered not to do something for a period of months or years should be compensated for his loss of ability to trade profitably, the prospect that an unsuccessful claimant might have to pay out a vast sum of money to the wrongly-enjoined defendant can have a chilling effect on the launch of infringement litigation in the first place -- particularly if the claimant is a relatively small business and the defendant is a big one.

Under the laws of boxing, unlike those of IP litigation, the contestants tend to be more or less the same size: heavyweights slug it out with fellow heavyweights, while featherweights flap around with their peers.  The dispute discussed below comes from the world of boxing, but follows the rules of IP litigation.  It is brought to you by Katfriend and occasional contributor Aaron Wood (Swindell & Pearson Ltd):
Jab, Cross, Cross-Undertakings

What happens if you succeed in a trade mark infringement action in respect of a broad range of products, but the final injunction only covers a selection of those products? Or if the final injunction misses a range of goods for which you originally sought relief?

These questions were the subject of Round 3 of the proceedings between Frank Warren’s Boxing Brands (BBL) and four defendants, the main defendant being Queensberry Boxing IP. Round 1 [refereed by Mr Justice Sales in December 2012] resulted in the grant of an injunction and an order for a speedy trial (there being proceedings before OHIM). Round 2 [before Mr Justice Birss in August 2013, noted by the IPKat here] was the final hearing which concluded that infringement had occurred in relation to clothing.

It later transpired that the judge in Round 2 had not been made fully aware that the dispute went beyond mere clothing and extended to items of sports equipment. The judge ordered a further hearing to resolve this point. The defendants provided a detailed list of the items of sports equipment and BBL provided a statement of case which relied upon further rights not relied upon in Round 2. Birss J permitted these rights to be relied upon as this reliance arose from knowledge of what goods were actually in question, and also permitted the defendants to amend their counterclaim for invalidity, made in Round 2, to incorporate the rights now relied upon by the BBL.

In Round 3, at [2014] EWHC 91 (Ch), Birss J considered the defendants' argument that, if items in the list did not infringe, an enquiry on the cross-undertaking would be necessary; on this issue he concluded that BBL was correct that the dispute was about clothing and that the defendants did not have an active intention to market a boxing equipment brand without clothing before they lost in the main trial.

Why is it called a "ring" if it's
not round but square?
Concluding that there was infringement as against most items, with the exception of certain specialist products (tote buckets, gym fitness training equipment, corner pads and boxing rings, punch bags, punch bag utilities), Birss J observed that, of these items, only corner pads and punch bags had been ordered prior to the injunction. Of the items the defendants intended to order, most were held to infringe. Birss J emphasised that the judge has a discretion as to whether to order an enquiry on the cross-undertaking, but decided no such enquiry would be ordered. He was not convinced that the defendants ever intended to launch a “free-standing” equipment range but added that, if he had concluded that most items of equipment did not infringe, he might have ordered such an enquiry (albeit with misgivings as to the proportionality of such an enquiry). Since however there was no intention to launch a range of goods consisting of the narrow range of goods which did not infringe, there could be no loss. If they now chose to launch the narrow range, he concluded that this was a new idea.

This seems an sensible outcome in the circumstances. The defendant may feel that it has been put to some cost since, if it now launches the reduced range of products, that launch will be at a substantially later time than if it had received the final injunction last year. This is arguably not BBL's fault, however. As the judge noted, the defendant did not really lose an opportunity by virtue of the injunction being too wide in scope, since it was not an opportunity that it had pursued or would reasonably have pursued prior to the injunction. Coming only a few days after the decision of Sales J in Astrazeneca (& Another) v. KRKA, d.d. Novo Mesto (& Another) [explained and analysed on PatLit, here], litigators will now have a better view of how enquiries on cross-undertakings will be handled
Thanks, Aaron, for this explanation!

Rules of boxing here and here
Rules of civil litigation in England and Wales here and, if you're unlucky, here

Of hockey sticks and disk brakes: claim breadth and added matter

A katpat goes to Paul England (Taylor Wessing LLP) for writing up an appellate decision published earlier this week on added matter in amended patents which offers a bit of tempting speculation about the breadth of claims.

The rule on added matter is that “...a patent application or patent may not be amended in such a way that it contains subject matter which extends beyond the content of the application as filed. If it has been so amended, and the added matter is not or cannot be removed, the patent will be invalid.” This neat description comes at the beginning of the decision of the Court of Appeal for England and Wales in AP Racing Ltd v Alcon Components [2014] EWCA Civ 40, a nuanced decision overturning the first instance order to revoke AP Racing's patent GB 2 451 690. Specifically, the court deals with the relationship in such cases between the breadth of a granted claim, and what is disclosed in both the specification of the granted patent and its corresponding application.

In essence, the patent application and granted patent in question are for disk brake calipers used in motor vehicles, and particularly the asymmetrical peripheral stiffening bands (“PSBs”) associated with the caliper body – embodied in the application as having a “J” or hockey stick shape.

The granted patent contained materially the same disclosure as the application, but dispute focused on whether the following feature of claim 1 of the granted patent was disclosed in the application:
“in which each of the stiffening bands has a profile that is asymmetric about a lateral axis of the body when viewed in plan.”
Two particular points arose in argument:

1. Is there a clear and ambiguous disclosure in the application of PSBs asymmetric about the lateral axis of the caliper body?

On this, the Court of Appeal held that, although not expressly stated in the application, it would be abundantly clear to the skilled reader that the PSBs were, individually, asymmetric about a lateral axis of the caliper body, and that the presence of the PSBs had the effect of giving the overall shape of the caliper body an asymmetric appearance.

2. Nonetheless, if only a class of generally hockey stick shaped PSBs is disclosed in the application, does the claimed feature contain added matter?

Answering this, the Court of Appeal said, depends on whether it is legitimate to add features to a claim which describe the invention in more general terms than a specific embodiment. Summarising authorities from the British courts and the Technical Board of Appeal of the European Patent Office, the Court of Appeal concluded that it was clear that the law “does not prohibit the addition of claim features which state in more general terms that which is described in the specification.”

In this case, the application would be understood by the skilled person as disclosing that the asymmetrical design of the PSBs was significant in imparting stiffness to the caliper, and that the hockey stick-shaped PSBs were “necessarily asymmetrical”. It must then be asked whether any disclosure has been added to this in the granted specification. The description of the PSBs in claim 1 as “asymmetric” must be read as part of that disclosure. From this, the skilled person would understand that the claim covered asymmetric PSBs generally. The skilled person would also understand that the PSBs were exemplified by the hockey stick shapes described in the specific embodiments. The skilled person would not, therefore, learn any new information about the invention from the granted patent.

In summary, what the Court of Appeal seems to be saying is that the skilled person would understand the breadth of the claim in question to be supported by a co-extensively broad disclosure in the application. Although the Court of Appeal never suggests this analysis, the case invites comparison with sufficiency cases in which the principle of an inventive concept derived from the specification can have a general application across a claim.
This Kat notices that the composition of the Court of Appeal again yokes together two specialist intellectual property judges (Lords Justices Floyd and Lewison) in the panel of three (the other member of the court being Lord Justice Longmore), and that both made substantive contributions to the published decision [the same phenomenon occurred in Fage v Chobani where the same three judges, on the same day, rendered a passing-off appeal].  He wonders whether this more collegiate approach will have a substantial impact on the quality of intellectual property decisions in the Court of Appeal, where we have so frequently been accustomed to the sole IP expert delivering a single judgment with which the other judges concur.

Merpel, who has been admiring Louis Wain's "Hockey", above, was a little anxious that all those cats might be hurting themselves and each other when playing so rough a sport.  Then it occurred to her that even a bruising game of hockey might turn out less painful than a bout of patent litigation ...

Red bus caught in crossfire of gay/not-gay free speech fracas

This is NOT an intellectual property case, but nearly could have been ...  Core Issues Trust, R (On the Application of) v Transport for London & Another [2014] EWCA Civ 34 is a fascinating ruling of the Court of Appeal, England and Wales (Lord Dyson MR, Lord Justice Briggs and Lord Justice Christopher Clarke) since it isn't an intellectual property case at all, but has the potential to raise so many IP issues. Also, it's about Red Buses, a popular preoccupation of both the IPKat's weblog and of his friends on the 1709 Blog and Art & Artifice. Thirdly, what must have been one of Lord Justice Briggs's final trial rulings before he became an appeal judge was upheld this week in Fage v Chobani, noted here, this Kat was wondering what he was doing at the moment since he has kept out of our sight for so long.  Anyway, Core Issues v Transport for London explains everything -- and here it is.

Core Issues (CI) was a Christian organisation which was formed with the objective of supporting homosexuals "who voluntarily seek a change in sexual preference and expression", a.k.a. sexual re-orientation. In furtherance of its aims, CI sought to place an advertisement on London buses which featured the rubric "NOT GAY! EX-GAY, POST-GAY AND PROUD, GET OVER IT" (an example of CI's advertisements can be seen on the right).  This text may seem a little puzzling to people who don't walk the streets of London, but there was some rhyme and reason: it was in response to a very striking advertisement by gay rights campaign organisation Stonewall, which read: "SOME PEOPLE ARE GAY, GET OVER IT!" (see illustration, below left).

Bus advertisements are managed by Transport for London (TFL).  Under TFL's advertising policy, no advertisement is approved if it is "likely to cause widespread or serious offence" or "related to matters of public controversy or sensitivity". After CI's proposed advertivement was leaked to the press, TFL began to receive complaints from members of the public. TFL's director of marketing, Mr Everitt, stated that he had contacted TFL's chairman to seek his opinion, but that it was he -- Everitt who had made the ultimate decision to refuse to run the advertisement. Who was TFL's chairman? None other than Boris Johnson, Mayor of London, who was standing for re-election as Mayor at the time. CI went to court to challenge the decision to refuse to carry its advertisement on the bases that (i) TFL's decision was motivated by the improper purpose of advancing Boris Johnson's re-election campaign and (ii) it was in breach of Articles 9 and 10 of the European Convention on Human Rights (ECHR) [freedoms of (i) thought, conscience and religion and (ii) speech].

Mrs Justice Lang, at first instance, dismissed CI's challenge.  Subsequently CI obtained a copy of an internal email from the Mayor's office stating that the Mayor had "instructed [TFL] to pull the advert".

On appeal by CI, the Court of Appeal was required to determine whether TFL had indeed exercised its power for the improper purpose of furthering the Mayor's election campaign, rather than fulfilling the objectives of its advertising policy, as well as considering whether TFL's interference with CI's right to freedom of expression was justified under the ECHR.  TFL maintained that, even if it had to make another decision, it would still inevitably refuse to accept CI's advertisement, so the court should therefore withhold relief.

The Court of Appeal dismissed one half of the appeal and sent the other half back for what should be a most entertaining and instructive further hearing.

* Central to the finding at trial was the judge's acceptance of Everitt's evidence that the decision was made by him and not by Boris Johnson.  The significance of this was that TFL's interests in implementing its policy and avoiding causing offence happened to coincide with those of the Mayor -- and the email on which CI relied unequivocally stated that the Mayor instructed TFL not to run the advertisement. Everitt had not provided a full explanation for this; nor had TFL obtained statements from the Mayor or anyone else involved. This was a most unsatisfactory state of affairs, since it was impossible to decide what, if any, part was played by the Mayor in TFL's decision and whether the decision was taken for the purpose of promoting his election campaign.

* Where a decision is shown to be unlawful, the court should be wary of refusing relief on the grounds that the decision-making body would reach the same decision if it were to act lawfully, particularly where the unlawfulness was the exercise of a power for some ulterior purpose such as the furtherance of a political interest.

* Since the court should be astute to perform its constitutional role as guardian of the rule of law and to grant appropriate relief, it was in the interest of justice that a further enquiry be conducted as to whether the decision was instructed by Boris Johnson and made for an improper purpose. This could only be done by adding him to the proceedings as a defendant. Accordingly this action would be remitted to the judge for further directions.

* TFL's policy on the acceptance of bus advertisements was introduced in order to give effect to its duties under the Equality Act 2010 section 149 [on public sector equality]. TFL's policy was lawful and its decision was justified because (i) CI was not faced with a total prohibition on publishing and disseminating its message since it had other ways of getting that message out, (ii) the advertisements were very prominent and would be seen by, and cause offence to, large numbers of the public in central London -- particularly for those who were gay, for which this would constitute an interference with the right to respect for their private life under Article 8(1) of the ECHR; (iii) while TFL had acted inconsistently by accepting Stonewall's advertisement but refusing CI's, that inconsistency was outweighed by other factors including the risk of encouragement of homophobia.

* If the trial judge subsequently found that TFL's decision was instructed by the Mayor or made for an improper purpose, it would be quashed. However, if the judge found that TFL's decision was not unlawful, it would stand.

True, says the IPKat, this isn't a copyright case -- but it raises all sorts of issues.  For one thing, there's the question of copyright in Stonewall's original advertisement text and the artwork that comprises the advertisement.  How far, if it all,  does CI's advertisement infringe any of Stonewall's copyright? Are there issues of de minimis? Would this be an appropriate case for a defence of parody or, in the United States, fair use (and could the facts be forced to fit within the scope of "fair dealing" or any other defences under the Copyright, Designs and Patents Act 1988)? Then there's passing off. Could Stonewall, which trades as a registered charity, maintain that the CI advertisements would be taken as its own, perhaps diverting members of the public and donors and eroding Stonewall's goodwill?  On another level entirely, what about the commercial value of a sponsorship or endorsement from Mayor Boris Johnson: how might this be affected.

Merpel's attention was completely elsewhere: she was contemplating the star symbol which Stonewall uses as a logo, which reminded her strongly of the star used by Danish-based pharmaceutical company Lundbeck. Might this happy coincidence be used as a basis for the co-branding of events, services and products or, if that were not to occur, might the two parties be sitting down together to hammer out the terms of a coexistence agreement ...

Boris Johnson quotes here
Boris as Americans see him here
Boris as a Pratt here

Wednesday, 29 January 2014

Wednesday whimsies

The IPKat is proud to bring you news from this blog's very own tuna labelling correspondent, Jeffrey Belson. As reported previously on this weblog, in 2012 the World Trade Organization (WTO) Appellate Body decided in favour of Mexico in the long-standing Mexico v USA dolphin-safe labelling dispute. The US reaction to this defeat was to tighten rather than loosen the criteria for use by anyone of the US Department of Commerce label. Perhaps not unpredictably, the move has not attuned Mexico and the USA to peaceful coexistence where tuna fishing and marketing are concerned. The dispute drags on, with an angry Mexico finally getting its way in demanding that a WTO Compliance Panel be established. Here's the freshest, most mercury-free information we have.

Around the weblogs. First, happy birthday Synapse!  This Taylor Wessing item is just completing its first year and prides itself on offering second-to-none coverage of news and analysis on legal and commercial issues in the European life sciences sector.  If you're suffering from confusion or déjà-vu, you may recall that the IPKat recently wished a happy birthday to the Sinapse blog, all the way from India, which has now been online for five years.  Meanwhile, Prince has demonstrated his unerring talent for demonstrating the truth of the maxim "you only hurt the one you love", by suing his fans again: here's Patrick Goold's take on the 1709 Blog.  There's also some notable news from France, where Frédéric Glaize posts on Class 46 a handy piece on how purely internal use of a trade mark within a company can be use in the course of trade.

Racing for registration?
Additional good news for international patent folk.  In an earlier post ("A touch of the Waldorfs: the International Patent Forum 2014", here), this Kat reported that there was a generous £300 discount for readers of this weblog who planned to register that event.  He failed, however, to mention that there was a bigger discount for an even more favoured class of persons: in-house patent and IP attorneys, who are entitled to attend for absolutely nothing if they register using this form.  Well, if that isn't an incentive to be an in-houser ..., says this mouser.

Overbooked ...
Overbooked IP event plus waiting list = ?  Yesterday morning, at precisely 10.28 am, the IPKat and Merpel launched an exciting event scheduled for the afternoon of 1 April, "Online copyright + enforcement = happiness?" in the lovely edifice that is the Blackfriars HQ of law firm Bristows LLP.   Remarkably, less than three hours later, all 120 spaces had been booked up by quick-off-the-mark registrants.  We have now opened a waiting list which you can join via Eventbrite here. We're also discussing possible options with our hosts, including but not limited to a spot of live streaming, depending on the level of interest and demand.  Meanwhile, we're all looking forward to a fascinating and challenging programme the fruits of which will be written up on this weblog.

Is this the sort of partnership
they have in mind ...?
INTA 1: the perfect pairing?  From Milesh S. Gordhandas (Coordinator, Europe Representative Office) comes news that the International Trademark Association (INTA) is organising a conference on "Maintaining the Perfect Partnership" in New York on 4 to 5 March. This, says Milesh, offers a great opportunity for European counsel to learn (rectius: learn more) about the US market, enabling them to meet with various US-based counsel (historical note: this follows up an event that INTA organised in London in 2009 called “Creating the Perfect Partnership”. According to the best available information, this event is less focused on legal education than on practical aspects involved in in-house and outside counsel relationships, such as communication, fees and budgeting, ethics and understanding of the client’s business. Details are available here. Merpel likes the idea of perfect partnerships when it comes to brands: even though, being a Kat, she can't really tell the difference, she does think "Bacardi and Coke" slips off the tongue more smoothly than "Rum and carbonated cola beverage flavoured with vegetable extract".

INTA 2: trifle at the Eiffel!  On Monday the Kats mentioned that the same organisation was holding a pre-Annual Meeting reception in London on Monday 24 February. But that's not all. We now learn from Annual Meeting co-chair David Stone that, together with INTA CEO Etienne Sanz de Acedo, he will also be hosting a pre-Meeting reception in Simmons & Simmons's Paris office on Wednesday 12 February 2014.  To register just click here.

Too Schlossed to tell CASTEL from CASTELL?

By the time this Kat got down to reading the decision of the Sixth Chamber of the General Court of the European Union in Case T‑320/10 Fürstlich Castell’sches Domänenamt Albrecht Fürst Zu Castell-Castell v Office for Harmonisation in the Internal Market (Trade Marks And Designs) (OHIM), Castel Frères Sas, dating back to 13 September last, it was no longer topical and he decided not to write it up. However, now that it is heading on appeal to the Court of Justice of the European Union (CJEU) as Case C-622/13 P, it has regained its pristine topicality -- so here it is.

In April 2002 Castel Frères applied to register as a Community trade mark (CTM) the word CASTEL for ‘alcoholic beverages (except beers)’ in Class 33; the word was duly registered as a CTM. In October 2007 Fürstlich applied for a declaration that this mark was invalid, basing its application on an earlier geographical indication (GI) consisting of the word ‘Castell’, this being a protected term for wines in Germany, France, Greece, Italy and Spain [Hmm, sniffs Merpel, it wasn't a very protected term if CASTEL managed to slip on to the CTM register without anyone apparently noticing ..].

In June 2009 the OHIM Cancellation Division rejected Fürstlich’s application for a declaration of invalidity. Fürstlich then appealed to the Second Board of Appeal which in turn, in May 2010, dismissed its appeal.  The Board of Appeal acknowledged that the term ‘Castell’ was a German indication of geographical provenance for wines, protected in Germany, France, Greece, Spain and Italy, which was perceived as such by the relevant public. However, the disputed CTM differed from the earlier GI inasmuch as the former was spelt with a single letter ‘l’ while the latter was spelt with two letters ‘l’. This difference in spelling was likely to create, first, some distance and, secondly, a conceptual difference between the earlier GI and the disputed mark [With respect, this reasoning is total nonsense. This particular Kat has two letters 'l' in his surname, a fact to which a surprisingly large proportion of correspondents, including a substantial number of lawyers, trade mark attorneys and publishers, are apparently oblivious].

The Board of Appeal added that the disputed mark, in the light of its being commonly used in the wine sector and meaning ‘castle’, was perceived by the relevant public as having that meaning, whereas the earlier GI was perceived by that public as a geographical name, namely that of the German wine-producing municipality of Castell. Accordingly CASTEL would not be perceived by the relevant public as designating a place in Germany that was renowned for wine production; it was not therefore descriptive of the geographical origin of the goods. Finally, since the disputed mark did not contain or consist of a GI, there was no need to examine it in the light of Article 7(1)(g) and (j) of the Community Trade Mark Regulation [which deal with misleading use of geographical terms and wrongful use of GIs for wines and spirits].

Fürstlich then applied to the General Court to have the decision of the Board of Appeal annulled. Castel Frères opposed the application and also argued that it was inadmissible as an abuse of rights. Why? Because Fürstlich had filed an application to register the word sign CASTEL as a trade mark at the German Patent and Trade Mark Office while the invalidity proceedings before OHIM were ongoing.

Fortunately, and showing a little common sense as well as legal understanding, the General Court annulled the decision of the Second Board of Appeal.

* The argument on which Castel Frères sought to base its plea of inadmissibility, that Fürstlich had filed an application to register the word sign CASTEL at the German Patent and Trade Mark Office while the invalidity proceedings before OHIM were ongoing, was not submitted before the Board of Appeal. What's more, in any action brought against a decision of one of OHIM’s Boards of Appeal, an argument alleging an abuse of rights cannot play any part as regards the admissibility of that action.

* As to the definition of the relevant public, since the goods covered by CASTEL were everyday consumer goods intended for the general public, the relevant public was thus comprised of the average consumers of those goods. The relevant public by reference to which the absolute ground for refusal must be assessed is the average consumer in the Member State in which the place designated by a GI is situated. Thus the German Patent and Trade Mark Office was best placed to assess the relevant facts and the perception of the relevant consumer in relation to the earlier GI.

* How would the relevant public view the mark?  A geographical name is liable to designate the geographical origin of the category of goods concerned if that name designates a place which is currently associated, in the minds of the relevant public, with the goods in question, or if it is reasonable to assume that that association may be established in the future. In this case, since the Board of Appeal found that the relevant public was able to perceive the term ‘Castell’ as a GI for wines, it also found (i) that that term was sufficiently known to the relevant public as the name of a place where wine is produced and (ii) that that geographical name was associated with the category of goods concerned -- ‘alcoholic beverages (except beers)’. This being so, the term ‘Castell’ designated a place that was sufficiently known to the relevant public for the production of wines and was thus associated, for that public, with the category of goods concerned.

Mungo checks the reference books
for guidance on pronouncing 'll' ...
* The Board of Appeal found that there was a difference between the earlier GI and the disputed mark, in that CASTEL had a single ‘l’ while "Castell" had two ‘l’s.  This was insufficient to outweigh the resemblance which existed between them: it was a minimal difference in spelling and did not constitute a perceptible difference from the point of view of the relevant public between CASTEL and the term used to designate the wine‑producing municipality of Castell. Such a difference did not therefore create on the part of the relevant public an impression sufficiently far removed from that produced by the geographical name referred to by the earlier GI [CASTEL and Castell do sort of sound the same, thinks Merpel, but this doesn't seem to have been an issue.  The Welsh pronounce a doubled 'l' differently, which is presumably a matter of significance here].

* This conclusion applied even though CASTEL and "Castell" had differences in meaning which gave rise, according to OHIM, to a perceptible difference between them.

* The fact that the term ‘castel’, in conjunction with other terms, appeared frequently in the wine sector played only a limited role in the relevant public’s perception of the disputed mark. Consequently, the relevant public in the present case would not perceive the disputed mark affixed to a bottle of wine as meaning only ‘castle’, but would understand it also as an evocation of the geographical name referred to by the earlier GI.

Dedicated CTM enthusiasts might at this point be thinking "haven't there been other cases in which a different view has been taken with regard to the meaning of 'castle', or whatever?"  That would be correct. In Case T‑149/06 Castellani v OHIM – Markant Handels und Service (CASTELLANI) [noted by the IPKat here], when the General Court held, in assessing the existence of a likelihood of confusion, the German consumer of wine was accustomed to seeing a large number of trade marks for wine the names of which began with ‘Schloss’, ‘castello’, ‘château’, ‘castel’ or ‘castle’. Nevertheless, the fact that the relevant public may attribute the meaning of ‘castle’ to the term ‘castel’ in the case of marks which begin with that term cannot prevent that public from also establishing an association between that term and the geographical name referred to by an earlier GI when it is used on its own, as was the case here.


The UK Intellectual Property Office wants your opinion as to whether the British Government should take an interest in this appeal. If you'd like to comment on this case, please email by the surprisingly generous deadline of 7 February 2014.

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