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).

Sunday, 30 November 2008

Obituary: Sir Hugh Laddie

The IPKat is deeply saddened to record the death of his friend Sir Hugh Laddie, who was laid to rest at mid-day today in Cheshunt Cemetery, to the north of London. Hugh had been ill for some time, though he continued to participate in IP affairs the month of his death, chairing the stellar Patent Enforcement Seminar that owed so much to his inspiration and efforts.

Born in April 1946, Hugh studied at Aldenham School and St Catharine's College, Cambridge, following which he read for the Bar. After a highly successful quarter of a century at the Intellectual Property bar, Hugh was appointed as a Patents Court judge in April 1995, a position he held for ten years before surprising his friends and admirers by resigning in order to become a consultant to leading IP practice Willoughby & Partners (now Rouse) and to plunge himself into a new career just over two years ago as Professor of Intellectual Property Law at University College London. There he founded the Institute of Brand and Innovation Law (IBIL).

Hugh's contributions to the intellectual property community, both in the UK and beyond, were immeasurable. As a co-author (with Peter Prescott and Mary Vitoria) of the much-loved, indeed much-cited, Modern Law of Copyright and Designs, he raised the bar for subsequent IP practitioners' texts with his perceptive and often pungent comments and his preparedness to come off the fence and give a gloriously honest opinion. His references of preliminary questions to the European Court of Justice demonstrated, among other things, how effectively he could construct a set of questions in order to sharpen the minds of jurists in Luxembourg (as in Zino Davidoff v A&G) and how boldly (in Arsenal v Reed) he could resist their responses when it seemed to them that the senior European court had usurped his own judicial functions as a trial judge. His contributions to patent law jurisprudence would fill a book by themselves.

Beyond the bench, Hugh was a warm and sharing individual. He enjoyed the hurly-burly of the Fordham IP Conferences in New York, where he could exchange arguments, ancedotes and wisdom with fellow-judges, practitioners and students on level terms. A keen supporter of the Intellectual Property Institute, his infectious enthusiasm and joy in participation provided a role model for many others. It was no accident that, in September last year, he was inducted to the Intellectual Property Hall of Fame, an honour which he did not seek but which, by common consent, he thoroughly deserved.

The IPKat is sure that those many readers of this weblog who knew Hugh, whether through crossing swords with him, being judged by him, working with him or merely enjoying his company over a pleasant meal, will join him in expressing his sincerest condolences to Hugh's family and in praying that they will be spared all further sorrow. We shall all miss him very much.

Friday, 28 November 2008

EC Copyright Term Directive - an update

credit: Flickr/yacht_boy
The IPKat received the following email from Martin Kretschmer providing a very informative update on what is happening with the proposed EC Copyright Term Directive, a subject the IPKat has commented on previously (here, for example).

"Dear colleagues,

Many of you have asked for an update. The process has become so complex that it is hard to provide a short summary.

Both European Parliament and Council of Ministers have to agree a joint text. The procedures run in parallel.

In the Council of Ministers, the French Presidency is pushing very hard to come to an agreement at the Competitiveness Council next week but there is considerable resistance. Only Estonia and Cyprus appear to have come out in favour. I believe an official ‘against’ position is recorded from Netherlands, Italy, Austria, Finland, Sweden – and a position ‘something for performers but not in this form’ from UK, Poland, Belgium.

It is very likely that the Directive will be pushed into the Czech presidency which takes over in January (and will be much less keen).

In the European Parliament, the lead committee is Legal Affairs (JURI). The rapporteur is Brian Crowley, an Irish party colleague of McCreevy, and strongly in favour. Feeding committees (which all can propose amendments) are Culture and Education (CULT), Industry, Research and Energy (ITRE), and Internal Market and Consumer Protection (IMCO).

Lionel Bently (who spoke as invited expert) and I both attended the JURI public hearing on 4 November. I attach Lionel’s address [IPKat comment: this has been uploaded to the IPKat's Google Groups site].

Tilman Lüder, head of the Copyright Unit at DG Market made a heated statement, attacking the joint academic position. He was subject to a point of order.

IFPI has been mounting a sustained operation, and we saw numerous industry lobbyists a work. In return, Open Rights made a valiant effort, and Open Rights’ sound copyright campaign is still a key ally (see here).

Several MEP assistants told me that they had received offers for concert tickets of famous artists. All the rapporteurs of the feeding committees had been cultivated, and wrote supportive reports BEFORE the public hearing (mostly asking for an inclusion of audio-visual performers). Within committee politics, rejection did not seem an option to most MEPs we spoke to. For MEPs it is troublesome that performer organisations speak in favour of extension. Critical MEPs lack a publicly persuasive lobby partner.

The feeding committees will vote in early December. Rufus Pollock, Lionel Bently and I have fed a number of amendments to receptive MEPs. There also have been moves from the European broadcasters (mandatory collective administration for extended term as applying to digital broadcasting archives). It has to be said that the broadcast lobbyists woke up much too late.

The only openly sceptical parliamentary group are the Greens. Sharon Bowles (liberal/ALDE MEP in JURI) [IPKat comment: as well as being a Chartered & European Patent Attorney] is making an effort with a set of amendments, linking extension to a registration system for instances of inadequate remuneration for the performer (administered via OHIM, the European Trade Mark Office in Alicante, and subject to licences as of right). EPP (centre right) and PES (socialists) as parliamentary groups appear to support 95 years.

The best we can hope for in the European Parliament is that there are enough irreconcilable amendments voted through in ITRE (11 December), so that JURI (scheduled vote 19/20 January) will ask for more time, or an independent study.

As we stand, a plenary vote is scheduled for February. Any spanner in the works may take us into the next parliament and a new commission (European elections: 4 June).

In the UK, DCMS is still sitting on the fence, but DIUS is holding the line (backed by Cabinet Office). link

Lastly, I attach a set of three amendments (mainly in Lionel Bently's words) that may form the nucleus of an acceptable way forward (if there is a stalemate between Council and Parliament) [IPKat comment: this has also uploaded to the Google Groups site]. The basic idea is to give an extension to performers only (life or 50 years, the current Greek law), and address the access issues via collecting societies. In addition, we propose a use-it-or-lose-it provision during the current term. This third amendment needs some work on procedure for recovering rights.

In summary, everything hangs in a delicate balance. Any appearance of dissent in the media will be important."
The IPKat congratulates Martin and Lionel for their efforts in keeping up the pressure against this proposed Directive, and hopes that sooner or later it can be killed off as it deserves to be. Merpel would like to point out that tickets to see Cliff Richard and the Shadows on their 50th anniversary tour go on sale in a couple of days; a snip at £60 each.

Friday flamboyancies

The IPKat's superbly-updated 'Forthcoming Events' feature, which occupies a large slice of space on the left-hand side-bar of this weblog's front page, currently lists 30 conferences, seminars and events for your delectation. FREE events are listed in a cheerful blue.

For those who love design registration, the good news is that a new edition of the International Classification for Industrial Designs (Locarno Classification) enters into force at the beginning of next year. OHIM will apply the 9th edition of the Locarno Classification as of 1 January 2009 for all the applications for registered Community designs filed on or after that date. Pending RCD applications and already-registered Community designs with a filing date before 1 January 2009 will not be reclassified. Nor will any option for their reclassification be available to the RCD applicant or proprietor -- not even at the time of renewal of the RCD. The major changes introduced are (i) introduction of a new class 32-00 with title “Graphic symbols and logos, surface patterns, ornamentation” for the products like get-up, graphic designs, graphic symbols, logos, ornamentation and surface patterns [the IPKat remains very unhappy about the registration of trade marks as designs. He's sure it wasn't something demanded by industry, and it certainly gives industry a few headaches]; (ii) the deletion of class 99-00 and reclassification of its products to other classes and (iii) the introduction of 99 new product terms [Merpel says, couldn't they have thought up another one and made it up to a nice round 100?]. For more detailed information visit the WIPO website here,

For those of you who really, really love design registration, MARQUES, the association of European trade mark owners, is hosting a Designs Forum in London next Thursday, 4 December 2008. The price is reasonable, the forum highly focused and the programme attractive (it's a rare chance to hear Martin Schlöttelburg who, although he modestly denies it, has been instrumental in the development of OHIM jurisprudence on design validity). Details and registration here.

The IPKat's friend Danny Friedmann has been productive again, this time writing a formidable article, "How do the People's Republic of China and Hong Kong Relate to each other regarding IPRs", which you can read here on his IP Dragon weblog.

A monster of a rather different calibre to the IP Dragon is Godzilla, who is the subject of an entertaining article by David Kravets, "Think Godzilla's Scary? Meet His Lawyers", published on Wired and brought to the Kat's attention by the vigilant Tomasz Rychlicki. The article opens promisingly:

"It's been 54 years since an atomic blast awakened the slumbering reptilian monster Godzilla, and the fire-breathing, fin-tailed beast has been terrorizing downtown Tokyo ever since — in more than two dozen movies, on television and in comics and cartoons. But Godzilla is a pussycat compared to the coterie of lawyers and investigators in Los Angeles and Japan who aggressively protect the radioactive behemoth from anyone who dares to appropriate his lizardly image for profit".
Who can resist the temptation to read on? This piece certainly explains the oft-noted phenomenon that IP lawyers tend to be at their busiest when there's a recession.

While the lawyers are busy, the super-heroes are having to struggle. Batman, the BBC reports, is going to have to fight the evil-doers of Gotham City without the comfort of being able to slip into his alter ego Bruce Wayne, who is about to be killed off. A quick thought here: does this count as abandonment? If the current owners of the goodwill manifest their intention to ditch the name, will there be a goldrush to register and otherwise exploit it, possibly for nefarious purposes? Meanwhile, Mr Wayne is reported to be seeing his lawyers about the possibility of an appeal against his death sentence.

Duncan Bucknell's IP ThinkTank is now operating a weekly podcast. Each Monday Duncan will host a call with one or more IP-ish people, including Shamnad Basheer and IPKat team blogger Jeremy, to talk about the latest developments in the world of IP (Duncan also promises other guests from time to time, such as Dennis Crouch). You can listen to the first podcast here. Duncan looks forward to receiving listeners' comments. The rest of us just cringe at the sound of our own voices and realise how good the 'real' professionals are when it comes to presentation.

The end of pharma patents as we know them? Now you can watch the whole show live ...

The IPKat is grateful to Dr Stephen Smith (Consultant Patent Attorney, NuPharm Intellectual Property) for letting him know that the preliminary report of the EC Inquiry into the Pharma Sector has just been published on the Competition website (well, I knew that of course, says the IPKat). Moreover, the proceedings of today’s public meeting about the Commission’s preliminary findings (stated by Commissioner Neelie Kroes, right, as being solely confined to reporting the facts and not making judgements) can be watched here live as a webstream (even the Kat can't pretend he knew that ...).

Merpel says, let's remind readers why this is so important. According to the Commission,

"The inquiry is a response to indications that competition in Europe's pharmaceuticals markets may not be working well: fewer new medicines are being brought to market, and the entry of generic medicines sometimes seems to be delayed. The inquiry will therefore look at the reasons for this.

In particular, the inquiry will examine whether agreements between pharmaceutical companies, such as settlements in patent disputes, have blocked or lead to delays in market entry. It will also look into whether companies may have created artificial barriers to entry (through the misuse of patent rights, vexatious litigation or other means). The sector inquiry does not aim to establish infringements of EC competition law by individual companies (Articles 81 and 82 EC).

The inquiry's findings will, if necessary, allow the Commission or national competition authorities to focus any future action on the most serious competition concerns, and to identify remedies to resolve the specific competition problems in individual cases".

G 2/06: No EP patents for human embryo stem cells

Rule 28(c) EPC states, "under Article 53(a), European patents shall not be granted in respect of biotechnological inventions which, in particular, concern [...] uses of human embryos for industrial or commercial purposes".  

The EPO Enlarged Board of Appeal has now decided (in G 2/06) that this forbids patenting of claims directed to products which, at the filing date, could only be prepared by a method that necessarily involved destruction of human embryos from which the products were derived, even if this method was not part of the claims.  It was not relevant whether, after the filing date, the same products could be obtained by other means that did not involve the destruction of human embryos.  

The Board also decided that it did not matter whether the patent application was made before the entry into force of Rule 28 (previously Rule 23d EPC 1973), because there were no transitional arrangements made when the rule was introduced, following the EC Biotechnology Directive

As announced by the EPO, this decision means that the patent applicant, the Wisconsin Alumni Research Foundation (WARF), will not be able to obtain European patent protection for their invention (dating back to 1998) relating to a process for obtaining stem cells from human embryos. 

More patent data available online

Via his friend Shabtai Atlow (Patent Attorney, NDS) the IPKat learns that it is now possible to search the Israel Patent Office (ILPTO) database online. Acording to the best available information:

"The Patent Office database contains updated information on Israeli patent applications and allows searches according to various criteria. For non-published applications, access is possible only to bibliographic data due to security considerations. Complete documentation is available for all accepted applications. Bibliographic data only is available for applications which have not yet been accepted.The database currently includes abstracts for all accepted applications for the years 1970-2000.

The direct link to the ILPTO online database is here.

To render the website in English, click the "English" button on the menu-bar at the top of the page. ... Search on the English site seems to work with Firefox without the IE Tab plug-in".

The IPKat is always pleased to learn of patent databases being both accessible and searchable. At a time when so many people criticise the patent system for its real or perceived deficiencies, it is important to remind them that the system has its monumentally valuable advantages too.

Thursday, 27 November 2008

Not in front of the children!

The IPKat's old friend and highly respected trade mark attorney Sally Cooper is highly indignant with regard to current UK-IPO trade mark registration practice. She writes:

"Can I add my voice to the growing (sound)wave of those beginning to wonder whether all is well at UK-IPO? Both Application M973025 for ASSHOLE for services in Class 38 and Application 2490640 for QRGASM (read that carefully) for goods in Classes 9, 16, 18, 25 and 26 were published in Journal 6757 on 17 October 2008. In my role as a good citizen, I wrote (separate) letters of observations to the Trade Marks Registry mentioning public policy/accepted principles of morality. Both letters were acknowledged by the Registry, which advised that my own letters had added nothing not already known to the Registry on examination/decision to allow applications to proceed to publication.

I cannot provide this correspondence because, being angry, I shredded all of same (though presumably it will have found its way to the Registry's own (unshredded) files). I'm still angry".

Class 38? That's telecommunications, says the IPKat. Not a problem with descriptive marks there unless you've got real problems with your service provider.

Right: currently licensed to the UK-IPO, on whose home page they lurk, are the Wallace and Gromit images in danger of tarnishment through association with applications for trade mark registration?

Merpel adds, in the light of the Grand Board of Appeal ruling, in Case R 0495/2005 G Application of Kenneth (t/a Screw You) [2007] ETMR 7, it's difficult to say that there's such a thing as a sign that's inherently offensive and contrary to good morality right across the Nice Classification: while A*****E will be regarded by most consumers as extremely unpleasant for most classes of goods and services, it's possible to think of relevant consumers of specific goods and services who might find the concept a turn-on. Neither the IPKat nor Merpel are exactly in favour of Q****M as a trade mark either -- the only thing that can be said about it is that, if it should ever come before an OHIM Board of Appeal in a Community trade mark opposition, they can almost visualise the paragraph of the decision which, in dealing with aural similarity, explains how this word would be pronounced.

Intel v CPM - ECJ judgment

As noted by the IPKat earlier, the ECJ today delivered its judgment in Intel v CPM. In this case, the Court of Appeal of England and Wales asked the ECJ to rule on what is required to prove a 'link' for the purposes of Art.4(4)(a) (Europe's dilution provision). To give the court its credit, it has waded in and hasn't tried to dodge the issue (though inevitably, and correctly, it has noted that a definitive question can't be given for some of the referred points as they are matters for the national courts to evaluate). This is what it said.

Preliminary points

A definition of detriment to distinctive character, which states that it is the equivalent of blurring: ‘such detriment is caused when that mark’s ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark. That is notably the case when the earlier mark, which used to arouse immediate association with the goods and services for which it is registered, is no longer capable of doing so.’
Confirmation that a link is required, but is not sufficient in and of itself, for establishing unfair advantage/detriment.

The relevant public: For the purposes of establishing the earlier trade mark’s distinctiveness and reputation [IPKat comment: since when was distinctiveness a requirement of Art.4(4)(a)?] and blurring and tarnishment is the average consumer of the goods covered by the earlier mark. For establishing unfair advantage, the relevant public is the average consumer of the goods covered by the later mark.

Proof: actual and present injury need not be demonstrated under Art.4(4)(a). A serious risk of future injury is sufficient. [IPKat question: is this true of Art.5(2) infringement as well?]

Establishing a link

Relevant factors:

  • The similarity of the mark,
  • the nature of the parties’ goods or services and whether their consumers overlap,
  • the distinctiveness of the earlier mark and whether the mark is unique or essentially unique
must all be considered, but the presence or absence of one or more of these factors won’t automatically meant that a link is or is not present.
The strength of the earlier mark may sometimes be helpful in establishing a link, particularly if the reputation is so strong that the mark is known outside of the group of usual consumers. It is for the national court to determine whether there is a link based on the facts before it. Confusion is not necessary (even though a link is always established where there is confusion).
The fact that, for the average consumer, the later mark calls the earlier mark with a reputation to mind is tantamount to the existence of a link.

Establishing harm

The stronger the link (i.e. the more strongly and immediately the earlier mark is brought to mind), the great the likelihood of unfair advantage/detriment. Thus, the likelihood of unfair advantage/detriment must be assessed globally, taking into account the factors relevant to establishing a link.
The factors suggested by the national court were insufficient to establish unfair advantage/detriment since they were all addressed at establishing a link.

Detriment to distinctive character

A mark doesn’t need to be unique to suffer detriment to distinctive character. However, the more unique a mark is, the more likely it is to suffer blurring [IPKat comment: why should this be? Surely the more distinctive a mark, the more it will take to harm its distinctiveness in a more than de minimis way?]
The first use of an later mark may sometimes be sufficient to give rise to actual and present harm, or a serious likelihood that such detriment will happen.
Proving detriment to distinctive character requires evidence of a change in economic behaviour of the average consumer of the earlier goods or services as a consequence of the use of the later mark, or some likelihood that such a change will occur in the future. However, the earlier user need not show that the later user has obtained commercial benefit from the use of the earlier mark. [IPKat comment: Aaargh! How can trade mark owners prove that a change in economic behaviour is caused by a reduction in the distinctiveness of their marks, rather than external factors such as, say, the credit crunch? And worse, how can they prove a likely change in economic behaviour, except by reference to things like how distinctive the earlier mark is, and circumstantial factors about the later user’s mark (such as how similar the two marks are)?]

IPKat assessment

Good points: the ECJ hasn’t dodged the issue. In fact, it has displayed a mature understanding of the issues involved in dilution. It has also specified a number of the factors which will be helpful in mounting a successful dilution case. Furthermore, it has rejected an actual dilution standard for Art.4(4)(a), which crippled the former US legislation on dilution and would be unworkable in registrability cases because the later mark will often not have been used yet.

Bad points: The need for an effect on the economic behaviour of consumers. How is this to be proved? Will sales figures be needed? How can we be sure that a decline in such figures will be caused by harm to the mark? Is such a requirement also needed for tarnishment and unfair advantage? Also, not much on what will cause blurring.

Points which remain unclear/undecided: Are the comments on not requiring likely dilution limited to Art.4(4)(a)? The IPKat hopes not, but the court didn’t’ expressly state that they refer to Art.5(2). Nothing really in this case about tarnishment, unfair advantage or due cause (which is fair enough since they weren’t covered in the referred questions).

European dilution: breaking news

Ace reporter Stephanie Bodoni (Bloomberg) has just circulated news that the European Court of Justice has ruled this morning that Intel Corp's brand reputation alone isn t enough to cancel a UK company s trade mark for the name Intelmark. There's still nothing on the Curia website and no press release from the court either.

More news and analysis will follow once the report is available.

For details of next Tuesday's Rapid Response Seminar on this decision and its impact on national law in several European jurisdictions click here.

Wednesday, 26 November 2008

Something missing?

The Office of Harmonisation in the Internal Market (OHIM) has issued a press release to commemorate the grant of its 500,000th Community trade mark. According to the text, in relevant part:

"The European trade marks and designs registration office, OHIM, has registered the 500,000th Community trade mark after enjoying more than a decade of unprecedented demand for Europe-wide protection of intellectual property. ...

The news that the “half a million mark” has been passed follows confirmation by Internal Market Commissioner Charlie McCreevy that the financial success of the Community trade mark means that the cost can be brought down sharply in a move designed to help SMEs in particular.

OHIM President Wubbo de Boer says: “We are in the fortunate position of offering a service that is very popular with both large and small businesses and which, in general, has seen growing demand.

“Registering our half a millionth Community trade marks is a very important milestone. I would pay tribute both to the vision of those who saw the need for Europe-wide IP protection and to the European and global customers who have put their confidence in us over the years.

“The cost of trade mark protection is a major concern for SMEs in particular, and I am particularly glad that we will be able, by mid-way through next year after the Commission brings forward its proposals, to cut the cost of having a Community trade mark by about 40% to around €1 000.”

Since 1996, OHIM has registered trade marks ranging from global brand-names to the logos used by small SMEs drawn from most countries in the world. Community trade marks include colours, words, pictures and even sounds".

The IPKat feels there's something missing from this exciting press release, but he can't quite work out what. Merpel says, you fool -- can't you see what's missing? The press release DOESN'T SAY WHAT THE 500,000TH COMMUNITY TRADE MARK IS!!!!!!! Can someone please put these impatient kittens out of their misery and tell them? And can someone please tell the Kats why OHIM might have imagined that anyone would be interested in publishing the news of its 500,000th CTM when the juiciest bit of information was left out? It's vaguely reminiscent of the uninformative and detail-free news items you hear on the BBC Radio ("Last night a person was found dead near at the outskirts of a park in the North of England. A weapon was found near the scene of the incident. A man is helping police with their inquiries ...").

Congratulations ... and a competition

The IPKat congratulates his friends Richard Ebbink, Ruprecht Hermans, Mark van Gardingen, Jan Brinkhof, Peter Burgers, from Dutch IP firm Brinkhof, for scooping two awards at Informa’s Worldleaders International IP Awards 2008 in the Europe/Middle East/Africa zone -- one award was for IP Law firm of the Year, the other being for Patent Litigator of the Year (Richard Ebbink). The photographic evidence suggests either that they had been transported to a location in Africa for their celebrations with Nelson Mandela or that they were waxing merry at Madame Tussauds.

The IPKat felt that this picture was good enough for a caption competition. What are the Brinkhof Boys saying? Or what words of wisdom has the illustrious Nelson Mandela just imparted? Do let us know! The winner gets free admission to CLT's Annual Intellectual Property Round-Up conference in London on 29 January 2009 (see programme details here). Entries to reach the Kat by email not later than 31 December 2008.

A gift to Pfizer

As the IPKat was walking along London's New Oxford Street yesterday, just round the corner from the heart of Legal London, he noticed a little shop, the San Ling Chinese Medicine Centre, which bore the accompanying "Herbal Viagra" advertisement in its window. Suspecting that there are quite a few Pfizer employees among his readers, the Kat thought he'd post these pictures as a gift to the company so they know where to go if they want to make enquiries of this particular product.

Merpel says, hang on there -- are you so sure that this isn't just a subtle form of brand extension by the pharmaceutical company.

Both Kats wonder if the sign will still be there the next time they pass the shop

Tuesday, 25 November 2008

IP seminars at the LSE

The IPKat commends the LSE's LLM IP Specialist Seminars, open to the public for no charge. All take place at the LSE's Central London campus.

The next talk is at 1pm on 5 December, when Professor Justin Hughes from Cardozo Law School in New York will speak on 'Copyright Liability on the Internet in Three Acts'.

Coming up in the new year are Pierre Valentin (Withers) on 'Who Decides What Is Art?' and Professor Sonia Kaytal on 'Contrabrand: Art, Advertising and Corporate identity'.

For further details, contact

The Kat Roars -- Parliament responds

A week ago, an item on this weblog ("IPKat rage over ECJ language issue") fulminated over the failure of the Curia website to furnish a version of the Advocate General's Opinion in Case C-497/07 Silberquelle GmbH v Maselli-Strickmode GmbH either in French or in English. Said the IPKat:

"The IPKat is enraged by the failure of the Curia to provide translations in French and English -- two languages that are very extensively used by businesses based outside the European Union and which are constantly assured that the EU offers a good, pro-competitive and business-friendly commercial environment in which to trade. Lack of money isn't an excuse. The EU has vast amounts to waste on trivial and inessential activities".
This has turned out not to be a miaow in the wilderness. Freshfields Bruckhaus Deringer partner Justin Watts, no doubt relieved to be able to take a brief break from his indoor rowing, wrote to his local Member of the European Parliament Andrew Duff MEP (right, Leader, UK Liberal Democrat European Parliamentary Party and Spokesman on Constitutional Affairs for ALDE, the Alliance of Liberals and Democrats for Europe), outlining the problem thus:
"Dear Mr Duff

I am writing to you as my MEP.

I have attached below the widely read blog of Professor Jeremy Phillips [member of the IPKat team]. He has for some time raised concerns over the continued delay and failure of the ECJ to produce its opinions and judgments in the most widely used languages of the EU and particularly in English. The instance referred to below (of an opinion being unavailable in English or French, but available in Spanish, German, Italian, Latvian, Dutch, Portuguese, Finnish and Swedish) is particularly ridiculous but is unfortunately it is more the rule than the exception.

Most opinions in intellectual property law are likely to be of interest only to intellectual property practitioners, a group among whom English is widely, almost universally, spoken. By failing to produce the AG's Opinion in English, it is withheld not only from the English and Irish contingent, but from nationals (and courts) in many other states who can read decisions in English but cannot read them in (say) Latvian.

The failure of the court to produce an English translation, or a French translation, of a critical opinion is ludicrous. This cannot be a question of money - the money has been made available to translate decisions into 8 languages. Any rational choice would suggest that English and French should be two of them. A decision based on population, frequency of language fluency, availability of translators, or contribution to budget would also have English and French translations near the top of the list.

I regard this as a major indictment of the EU's ability to spend my money wisely and administer systems well. Can you tell me how best one could wake the court's administrative processes up to the needs of the people it is supposed to serve?".
Deeply troubled by the situation, the good MEP wrote to the appropriate authorities, who told him that it can't be done. He reported back as follows:
"The facts of the matter appear to be these:

Case reports are made available in the language of the case, the language used in the application, and in the Court's language, usually French.

Likewise, opinions will be available at least in the language of the case and in French. In addition, the Court tries to translate opinions into the other EU languages to be ready before the judgment, but this is subject to the workload of the various translating departments. Some languages are available quicker than others because some translation departments have a higher workload or are permanently understaffed. English for instance has both problems.

Formally, all judgments will be published in all the EU languages, with the exception of smaller cases where French and the case language is the minimum. The Court aims to have the translation of the judgment in all the languages done before the publication of the judgment. However, this is again subject to the workload of the various translation departments.

The EU is short of money because the member states refuse to increase revenue. However, I accept that, even in these circumstances, not to put IPR opinions into EN is nonsense".
The MEP accordingly concludes:
"I will table a parliamentary question (to the European Commission) to ask them to act with the ECJ to rectify the matter".
Justin observes that the question might best be articulated so as to elicit an answer specific to IP cases, covering both failures and delays in translation. If the delay is long enough, it amounts to an effective failure. Judgments are supposed to appear in English, but in many cases the perception in the English profession is that the English version is months or years behind many of the other, less widely understood, languages.

The IPKat raises a hearty cheer. At last, a serious Parliamentarian is taking up the cudgel and is prepared to wield it. Merpel is sure that this will result in a knighthood at the very least.

Andrew Duff here
Plum Duff here
Damian Duff here
Mac Duff here

Monday, 24 November 2008

Pubs drink the health of High Court judge

The British Beer and Pub Association (BBPA) and the British Hospitality Association (BHA) are lifting their glasses to drink the health of Mr Justice Kitchin after he upheld their appeal against the decision of the Copyright Tribunal on the basis for the calculation of fees which their members have to pay for background music. The decision in Phonographic Performance Ltd and the appeal of the British Hospitality Association and other interested parties [2008] EWHC 2715 (Ch) was handed down on Friday. You can read it in full on BAILII here, or you can read shorter, less legalistic accounts from The Morning Advertiser and The Publican.

What was the dispute all about? As Kitchin J explained, it wasn't just about the money -- there was a serious issue relating to jurisdiction to deal with too:

"This dispute has arisen in the context of references made to the Tribunal by the Secretary of State of various new licensing schemes issued by PPL for the licensing of the public performance as background music of sound recordings in public houses, bars, restaurants, cafes, shops, stores, factories and offices. These schemes were developed by PPL following an amendment to section 72 of the CDPA [Copyright, Designs and Patents Act 1988] ... This removed what was perceived to be an anomalous gap in the protection afforded to sound recordings which allowed commercial entities to play broadcasts of those sound recordings within their premises without the permission of the copyright owners. The recordings now protected are referred to as "excepted recordings", reflecting the fact that they are excepted from the free use rights otherwise afforded by that section.

The new licensing schemes in issue are "delivery system neutral", that is to say they are not limited to the licensing of broadcast sound recordings but extend to all ways of playing background music in public, such as by CD or tape. This makes obvious sense and is an approach which is, at least in principle, supported by all the parties before me. It means that licensees do not need to take separate licences in respect of different delivery systems for the same recordings. However, the parties are deeply divided over the fees which PPL is charging. The Interested Parties say the new schemes represent a very substantial departure from the established tariffs in respect of non broadcast sound recordings and that PPL has sought to take advantage of the amendment to section 72 to introduce an unprecedented and wholesale increase in its rates. PPL contends that the new schemes are entirely reasonable having regard to, inter alia, comparable licences granted by the PRS, the commercial value of the public performance of sound recordings, the factors which must be taken into consideration .. and that, for many users, the new schemes contain increases that amount to only a few pounds per year.

... PPL submitted the new schemes to the Secretary of State ... . ... [who] referred them to the Tribunal. Thereafter, matters proceeded through the course of 2006 with the parties submitting detailed representations and skeleton arguments until ... HH Judge Fysh QC, as Chairman of the Tribunal, wrote to the parties expressing concerns about the extent of the Tribunal's jurisdiction and asking for a hearing. After a good deal of correspondence and a case management conference, the hearing took place on 8 November 2007 and gave rise to the decision against which both parties now appeal. In summary, the Tribunal held that

(i) a reference under section 128A is limited to a consideration of a licensing scheme in so far as it concerns the public performance of broadcast sound recordings only; and
(ii) the Tribunal has no power under section 128B to order back payments in respect of users who use sound recordings not contained
in a broadcast.

It also rejected the new schemes on a summary basis because they were not limited to licences to play broadcast music in public and indicated that the use of recordings delivered other than by broadcast remains covered by the established tariffs".

Kitchin J held that the Copyright Tribunal does have powers under the Copyright, Designs and Patents Act 1988 to set the value of both broadcast and non-broadcast music in one tariff. The opposite conclusion, apart from being unsupported by the law itself, would be "inconvenient, cumbersome, expensive, and involve a waste of judicial and public resources". The powers include the power to order back payments, but that was not a viable option in this situation. On the plus side from the PPL's point of view, the contention that those pubs that do not wish to play broadcast recorded music should be entitled to a refund was also rejected. The judge concluded by setting aside the decision of the Tribunal and remitting the references to a freshly constituted Tribunal for further consideration and directions in the light of his judgment.

The IPKat says, from an economic point of view this is a tough one to call. The recorded music industry and Britain's pubs are both endangered species and one might be forgiven for speculating as to which will survive the longest in the current commercial and techno-climate.

Linguistic laughs -- an expert writes

The IPKat's venerable and learned friend Dr Alexander von Mühlendahl is a man whose experiences both as Vice-President of OHIM and as an attorney in private practice have given him some precious insights into the linguistic problems that have beset Europe's Long March to harmonisation, the single market and a common understanding.

Right: the Verpiss-Dich plant, originally designated Coleus canina (presumably on account of its smell), is now thought to be a Plectranthus: see the IPKat note on Schrader v CPVO here

Prompted by David Keeling's recent post he tells the Kat:

"The laugh is certainly called for.

The original language of the Plectranthus case is German, and in that language all the terminology put on his pointed needle by David Keeling is indeed correct: the term in Article 7 of the Plant Variety Regulation is "Unterscheidbarkeit"; in the English it is "Distinctness" (English mother tongue/readers may know how to distinguish between distinctness, distinctivity, and distinctiveness). In French it should be -- the Article 7 term -- distinction, a term at times properly used in the French translation of the judgment (which may well be the original), but even there at times the "caractère distinctif" raises its head (e.g. in para. 25 of the judgment), while the proper term should have been "distinction".

The problem thus is one of proper translation, rather than sloppy language in the original. David, who in one of his past lives was at the ECJ's translation service, will know how difficult the task is.

Perhaps your readers may also chuckle at another translation "error":

The applicant in the case had claimed that the variety SUMCOL 01 for which protection was sought had already been marketed in the European Union in January 2001, under the designation "Verpiss Dich". A proper rendering in English would have been "Piss Off", but the translation service prissily chose "get lost" (in para. 12) (imagine the smell of the plant!)

As for the discretion that the CFI grants the CPVO, anything else would have come as a surprise, given the sometimes time-consuming and complicated examinations carried out by the CPVO and the participating national offices in determining stability, distinctness, novelty, etc. - it is difficult to imagine the CFI itself carrying out a re-examination or appointing experts to do so. Perhaps trade marks are indeed less complicated than plant varieties".
Plant samples here and here
Urine samples here and here
Why we love cat pee, but hate dog pee here
Thomas Bowdler here

Sunday, 23 November 2008

The new UK-IPO cartoon crew

A couple of days ago, the IPKat posted this about the new logo/name for the Patent Office. As one commenter confirmed, this is no joke.  The Secretary of State for Innovation, Universities and Skills, John Denham MP (not David Lammy - see comment below), applied for a UK trade mark for the new logo on 7 November 2008.  The application has now been published as TM number 2501853.

Another curious IPKat reader, Guy Selby-Lowndes, then looked a little further and noticed that, two days before applying for the new logo mark, five other applications were filed to register what appear to be the name and appearance of various cartoon characters, all in classes 09, 16, 28, 35 and 38.  Here they are, in glorious black and white:

TM Number 2501719:

TM Number 2501757:

TM Number 2501761:

TM Number 2501756:

TM Number 2501755:

The IPKat and Guy both wonder what the Secretary of State could possibly be up to.  Is he intending to publish an IP comic?  Will this be a development of the comic-style 2007 Annual Review, featuring Filament Fred (but none of the other characters)? If so, why the need for trade mark protection?  Is this all part of a masterplan to educate the children of this nation into the ways of patenting (the names certainly seem to evoke the various necessary conditions to making patents work)? Can other readers shed any further light on this? Merpel thinks the characters look a bit scary, and is particularly worried what Norvello is intending to do with that big spike he is carrying.

Temperatures rise in ECJ chocolate bunny melt-down

Via the IPKat's friend Stephanie Bodoni (Bloomberg) comes news of the fight over Lindt & Sprüngli AG's Community trade mark right to a chocolate Easter bunny wrapped in gold foil. This right was gained "honestly and fairly", said Lindt, and it should be able to block the making of copies by competitors, Lindt told the Court of Justice of the European Communities. Lindt, Switzerland's oldest chocolate maker, is denying an Austrian competitor's claims that it acquired its EU-wide protection in bad faith at a hearing this week in Case C-529/07.

Lindt's trade mark is being used to prevent the Austrian company Franz Hauswirth GmbH from making products that are allegedly confusingly similar to its 56-year-old trade mark rabbit, which is wrapped in gold foil with a bell and wears a red ribbon around its neck. "Here is a product that's been around for some 50 years and sold about 20 million times in the EU in 2000, when we applied for the trade mark", said Gesine Hild, Lindt's lawyer. "The company acted in good faith when it sought the right to exclude the use of that same product by others".

Franz Hauswirth GmbH has been making chocolate rabbits since 1960 in Austria. It faces the stark option of having to change the look of its own bunnies or to cancel Lindt's EU trade mark registration. Hild said that, while Lindt was aware of competing products in Europe when it applied for the EU trade mark in 2000, it didn't know of the Austrian company's products,. Three years later Lindt learned of Hauswirth's bunny at a fair in Switzerland where Hauswirth presented them as "a new product".

The ruling is expected in around a year from now.

More on the Battle of the Bunnies from the IPKat here and here

Saturday, 22 November 2008

Unwrapping the Law

"Unwrapping the Law: Reflections on Christo, Copyright Law and Conceptual Art" is the title of an LLM dissertation submitted this summer to Queen Mary, University of London, by Pauline Perlmutter. It's an enjoyable and well-written piece that takes a fairly cautious view of the role that copyright can play in this tantalising area, discussing Christo's Wrapped Reichstag (right) and Pont Neuf as well as speculating over the fictional case of the Wrapped Gherkin. This blogger read it with Wrapped Attention ...

If you'd like to have a look at this dissertation, you can email Pauline here and ask her for sight of it.

Christo here
Christmas wrappings here
Monte Cristo here

Friday, 21 November 2008

Hello? Is that the Property Office for Intellectuals?

The IPKat is not sure whether this is a joke, so he will let his readers figure it out for themselves.  According to an anonymous tip-off, the UK-IPO (the IPKat still prefers its proper title of 'The Patent Office') is to change its name again. This is, as readers will know, the second name change in just over a year.

The current logo.

The new logo.

Some may think the new logo is quite pretty. Others might even think that the change is in the logo only, and the name remains the same.  The IPKat, however, agrees with the tipper-off that something appears to be fundamentally wrong with it. The new logo appears to suggest that they (the patent office, that is) are the property office for intellectuals, rather than the office for intellectual property. The IPKat is now confused.  Merpel, however, is more concerned with that crown mark, which looks vaguely like the Office is getting royal pretensions. What does it all mean?

UPDATE (28/11/08): It's true! See here (before it all disappears to be replaced with something even more incomprehensible).

Friday frequencies

This week there are several new events listed in the IPKat's superbly-updated 'Forthcoming Events' feature, which occupies a large slice of space on the left-hand side-bar of this weblog's front page. The number of events currently listed is 31. FREE events are listed in a cheerful blue.

Congratulations to the Anti-Counterfeiting Group (ACG) for issuing this excellent leaflet that advises on how to be on your guard against fakes this Christmas, together with accompanying posters. Not just IP owners but trading standards officers, organisers of street markets and car boot sales, and indeed retailers of genuine products -- every one of these should be displaying this well-produced, readable and textually credible material where it might be read by the counterfeiters' best friend and constant ally, the shopper. Since the Credit Crunch may be a big spoiler for many people's Winterval celebrations this year, the temptation to fake it may be great, so warnings of this kind are particularly necessary.

Meanwhile, Merpel has been doing some swift research into the Credit Crunch. The UK IPO trade mark search facility reveals that Andrew Petit's CREDIT CRUNCHERS awaits advertisement in Class 29 (potato crisps), getting in just one day ahead of Frito-Lay's WALKERS CREDIT CRUNCH for the same goods in the same class (well done, Andrew!). However, Captain Beany (left) already registered CREDIT CRUNCH for chocolates in Class 30 on 4 July, three and a half weeks ahead of Sheridan Simove's application in respect of breakfast cerials in Class 30. Finally, Mr Narm Bari Osborn of Rochester, Kent, has applied to register CREDITCRUNCHFLIGHTS for various services in Classes 38 and 39. Psst! says the IPKat, wanna buy a second-hand coexistence agreement ...?

Who says the age of romance is dead? In a decision (case reference 21 O 3262/08) of 13 November 2008 (which is not yet final) the Regional Court of Munich I (Landgericht Muenchen I) decided that a lonely hearts ad can be protected by copyright law. The question was raised in a lawsuit between two dating agencies, which both specialised in wealthy high society clients. When perusing the advertisements of its competitor dating agency B, the claimant in the proceedings, dating agency (A) came across a lonely hearts ad for two clients, which the claimant not only identified as relating to two of its own (former) millionaire clients but which also seemed to be almost identical copies of the ads that agency A had penned and published to market these two particular clients. The only apparent difference was that one of the clients was one centimetre shorter in the allegedly copied ad. The claimant was not pleased that it had lost the client and was even more incensed by the plagirism of its ads. As such it consulted a lawyer and sent a cease and desist warning (Abmahung) to B. In the current proceedings the claimant sought to recoup the attorney's costs, which had been incurred by the cease and desist warning. In the course of the proceedings both parties argued as to whether the defendant, agency B had indeed copied agency A's ads. The defendant stressed that a description of identical people obviously had to result in a similar ad text. The parties also disagreed as to whether it should be permissible to copy such texts.

The judges decided in favour of the claimant and ruled that there was not the slightest doubt that the defendant had copied the text. Given the "inexhaustible diversity" of ways to describe an individual in such a lonely hearts ad, the defendant failed to convince the court that it had not copied the texts, only making very minor amendments. The court further decided that the lonely hearts ad in question was protectable under copyright law. The court was of the view that the lonely hearts ads showed an indivudual creative effort/labour in the way the ads' style and phrasing was tailored to its elitist client base. The court disagreed with the defendant that the description of the individual was already more or less predetermined. Such a predetermined description might - by way of example - be true for a vacuum cleaner but this did not apply in relation to an individual. The court further stressed that describing an individual not only used the "nearly inexhaustible diversity" of language but also allowed to "accentuate the whole spectrum of human perception". Furthermore, the selection of character traits and their linguistic implementation in the lonely hearts ad reflected an individual creative effort/labour on the side of the claimant. Thanks, Birgit Clark (who else?) for this fascinating item.

London-based solicitors Olswang held their second Open Source Summit last week, which was by all accounts a huge success. If you'd like to see the programme, it's here, and the slides are here. If you'd like further information -- or just want to record an interest in any future Open Source Summits, email Jeremy here.

Another blog-related milestone has been reached by Afro-IP, the intellectual property weblog piloted by IP livewire Darren Olivier and his four colleagues. During the 11 months of its existence this blog has posted well over 400 legal, commercial and political developments involving Africa, from tip to toe of this vast continent. The Afro-IP team is hoping to grow and would dearly like to hear from prospective bloggers who feel that they can handle the challenge, and the commitment, of spreading word about IP developments. The blog is already well covered in terms of South African input, but candidates from other African countries (or from outside Africa but who have inside information) should email Darren here and introduce themselves and tell him what they can do to help with the blog.

It's not yet available on BAILII, but Football Association Premier League Ltd and others v QC Leisure (a trading name) and others has just got a little more complex. Following an application to Mr Justice Kitchin, this case (noted by the IPKat here), which has been referred to the European Court of Justice (ECJ) so that some dreadfully technical questions can be asked, five further parties -- all being one way or other beneficiaries of the current set-up under which football broadcasting rights are partitioned between countries -- sought to be joined as parties to the ECJ reference. Kitchin J allowed them to do so, despite the objections of the defendants. Well done, LexisNexis, for picking this up on its subscription-based service.

Right: The IPKat has discovered one good way of avoiding ECJ references -- wear more stripes than even adidas can lay claim to (cat and other beautiful products available for sale from Andersen Studio).

Contempt of court in parallel trade proceedings

Another chapter in the tale of Honda v Neesam , bits of which have been reported by the IPKat(here and here ). The defendants in that case imported Honda bikes from Australia, which were sold in the UK. Ultimately it was found that Honda's trade mark rights were exhausted since Honda's consent to their sale in the EEA could be implied. The existence of that consent depended on Honda's expectations, as conveyed to the exporter from Australia, as to where the bikes were to be sold on leaving Australia. Honda's witness, Mr Hinton, originally claimed in his witness statement:

"From time to time, without having any continuous contact, Honda Australia deals with Lime Exports ("Lime"). Lime fulfils a useful role in servicing the Pacific Islands (e.g. Fiji, New Caledonia and Vanuatu) which Honda Australia does not have the capacity or desire to service. This is the only reason Honda Australia deals with Lime. Honda Australia advises Lime verbally that it is only allowed to sell to the Pacific Islands. By so advising Lime Honda Australia tries to ensure that product supplied to Lime finishes in the Pacific Islands. . . . Honda Australia does not authorise those to whom it sells to export, except to the Pacific Islands as mentioned above."
This implied a lack of consent to sale outside the Pacific Islands. However, documents that came to light in the course of the proceedings made it clear that the statement was untrue. The defendant's solicitors wrote to Hinton, pointing out that it was contempt of court to include in a witness statement verified by a statement of truth a statement that is false and that the witness does not honestly believe to be true. Hinton then made a second statement, admitting that what he had said in the first statement was untrue, but pointing out that his intention was not to mislead the court, but rather to protect Honda Australia's reputation in the eyes of the wider Honda group.

At trial, the defendant attempted to bring a private action for contempt of court against Mr Hinton. This was refused by Sir Andrew Parke, who held that it would be disproportionate for contempt proceedings to be brought since Hinton had already had a stressful experience, the expense would be great and the public interest of promoting the integrity of the legal system wouldn't necessarily be served.

Yesterday the Court of Appeal allowed an appeal on this point, and held that contempt proceedings could be brought. The contempt was serious since, if the falsity of the statement hadn't been uncovered, the defendant would be been liable to pay Honda hundreds of thousands of pounds in damages. The fact that the witness had had a difficult time in cross-examination was not relevant, nor was the fact that he had shown remorse for his lies (though this might be relevant to the sentence). The judge had been wrong to conclude that a contempt action in these circumstances wouldn't promote the integrity of the legal system. Instead it would be '
likely to have a salutary effect in bringing home to those who are involved in claims of this kind, of which there are many, the importance of honesty in making witness statements and the significance of the statement of truth'. The fact that the proceedings would be costly was relevant, but was given too much weight in the light of the seriousness of the contempt at issue. In any event, it would be the applicant for contempt proceedings who bore the cost, and not the public purse. There was also a question-mark over whether it was worth bringing proceedings at this stage since Mr Hinton had returned to Australia, and so was outside the reach of British contempt action unless he returned to England or appointed someone to accept service on his behalf, but this wasn't fatal since refusing the action on those grounds would send out the message that foreign witnesses wouldn't need to maintain the same standards of honesty as those in the UK.

The IPKat finds this decision hard to fault. Witnesses should know that it's wrong to lie in the witness box, or in a witness statement. Although the trial judge may have felt sympathy for the witness, Mr Hinton brought it on himself. Granted, he was trying to protect the reputation of his business, but this was at the expense of someone else's business, and their liability to pay a huge sum in damages. It's always going to be difficult to imply consent in parallel importation cases - at least this decision should make it clear that those who provide false evidence that suggests that there was no consent will feel the full force of the law.

Reminders galore

Coming up next Wednesday, 26 November, is CLT's one-day programme, "Copying Without Infringing", in which a series of speakers will discuss the extent to which the unauthorised use of another's IP right can be carried out before legal liability is incurred. A strong panel of speakers will be addressing an equally strong audience that includes in-house representatives of the pharmaceutical, luxury goods, household goods and healthcare, insurance, electronics, software, entertainment, leisure and public sectors. IPKat team blogger Jeremy is in the chair. Venue: Cafe Royal, Piccadilly (London). Brochure and booking details here.

The Rapid Response Seminar on trade mark dilution in the wake of NEXT THURSDAY'S European Court of Justice ruling in Case C-252/07 Intel Corp v CPM (UK) takes place on Tuesday 2 December, 11am to 3pm, at Hardwicke Building -- who are putting on this event with members of the Class 46 European trade mark weblog team. Booking details here. 3 CPD points available. Number attending (as of close of play yesterday): 40.

On the same day and round the corner, but not starting till 3.30pm, is "Intellectual Property as a Brand", an Intellectual Property Institute seminar at which Oxford academic Roya Ghafele introduces her original research, commissioned by the Institute, into attitudes towards IP. Venue: the lovely offices of Lewis Silkin, Chancery Lane. Refreshments kindly sponsored by Olswang. Details from Anne Goldstein.

The next IP Writing Course conducted by IPKat team member Jeremy takes place on Monday 1 December, 1.30pm to 4.45pm in the Fenner Brockway Room, Conway Hall, London. There are still a couple of places available. For details email Jeremy here.

One of the latest events this year is the IP Finance group meeting, "IP Term: What It Means in Finance Terms". Speakers are Anna Feros (from the host, Shepherd & Wedderburn), who speaks about patent term, and John Enser (Olswang), who speaks on copyright term. Date: Tuesday 16 December; the time: 5pm till 6.30pm. This event is free and all are welcome. If you're planning on coming, email Anna here so that we can all be forewarned. Number attending (as of close of play yesterday): 17.

Oh, and before I forget ... This coming Monday, 24 November 2008, Jeremy is giving a public lecture, "Co-existence or no existence", at the University of Leeds, 6-7pm. All details from Joan Loughrey here. Don't be fooled by the title -- it really is about intellectual property law.

Thursday, 20 November 2008

A lion roars ... a Kat laughs

Following his earlier post on Plectranthus ornatus, the IPKat was delighted to receive a missive (two, in fact) from David Keeling. Although he is a distinguished author in his own right, David is not as well-known as he might be, since some of his most heavily-read output comes from his work with the OHIM Boards of Appeal, where he has crafted his penmanship in anonymity since the previous century (David is the longest-serving Board Member). Anyway, David writes with regard to the Court of First Instance decision in the Plectranthus case:

"You will think me a dreadful pedant but I feel I have to point out that the issue under Article 7(1) of Council Regulation No 2100/94 is whether the plant variety is distinct, not whether it has distinctive character. Curiously this mistake is made not only in paragraph 63 of the CFI's judgment but also by the Board of Appeal in the Schräder case.

On a different note, I find it interesting that the CFI is prepared to exercise limited judicial review in the field of plant variety law but does the very opposite in trade mark cases. Presumably they think that trade mark law is easy - as it indeed it might be if they had not made it so difficult.

IP terminology is getting terribly difficult these days. We have distinctive character for trade marks, individual character for designs and just distinctness for plant varieties. There is a likelihood of confusion (or LOC as we say round here) with so many similar terms. What I am waiting for now is for the CFI to complicate design law by telling us that novelty and individual character are separate requirements which respond to different public interests. They will doubtless be telling us we committed an error of law by saying that two designs produced the same overall impression on the informed user, having regard to the designer's degree of freedom in developing the design, when we should have said that the designs were identical save for some immaterial features".
The IPKat hasn't stopped laughing yet, but suspects that there may be a number of CFI members who will never see the joke.

OHIM opposition quality standards - the Office responds

A little while back, the IPKat focused on the quality checking exercised by the Office for Harmonisation in the Internal Market (OHIM) in respect of its opposition decisions. He thought that the exercise was a good one, but was alarmed that virtually one opposition decision out of every five appeared to be potentially defective (though not necessarily wrong).

Right: intent on finding ways of spending its budgetary surplus, OHIM examiners are testing ways of making sure that Community trade marks are properly affixed to the goods for which they are registered ...

The November issue of OHIM's informative Alicante News (pdf here), carries a response on this topic -- as Vincent O’Reilly (Director, Department for Industrial Property Policy) promised. The text reads:

Quality checking of opposition decisions at OHIM
Last month the results of the OHIM quality check of opposition decisions made in the third quarter of the year were published. These attracted some comment in the professional community, including in the IPKAT blog, making this a good moment to give more details on the quality checking system we have been operating for some time.

The quality of decisions made in OHIM has always been an issue that has been accorded importance by the Office. In recent years increased efforts have been made to ensure that the measurement and improvement of the quality of decisions is more systematic and transparent both within the Office and to the outside world. The feedback that the checking provides to those involved in the decision making process is probably the most valuable output that the quality check programme produces.

Starting early in 2007 the Office established a system of reviewing decisions taken based on statistically significant random samples. The scope of the check covers not only opposition decisions but also the classification of lists of goods and services and decisions on absolute grounds for refusal (acceptances and refusals). The check was carried out weekly by a group consisting principally of legal advisors.

The target rate of error free decisions under each heading was published, as were the standards to be applied. The results of the check have been published on a quarterly basis.

All the information in respect of this programme is available at:

The Targets
For 2008 the Office decided on quality objectives for classification of lists of goods and services, absolute grounds for refusal as well as opposition. The target for oppositions was to produce at least 95% of decisions free from any error.

The Standards (what constitutes an error free opposition decision?)
A decision is error free when three aspects, namely, format, content and the outcome are all in accordance with the standards the Office has established. The format of an opposition decision is correct only if, among other things, it: clearly identifies the mark and the goods and services concerned and the parties. It must also summarise the relevant points made by the parties. In order for the content to be correct there must, among other requirements, be a correct comparison of the signs and goods and services. The whole content must be expressed in clear language.

The outcome of a decision must be in line with the Guidelines adopted by the Office. An incorrect outcome is where the decision wrongly either (a) upholds the opposition in respect of some or all of the goods and services concerned or (b) rejects the opposition in respect of some or all of the goods and services concerned.

Some commentators question whether including issues such as format and content
represent too great an emphasis on form over substance. The Office does not see it that way. The outcome is, of course, important but the Office aims to have a high standard in all aspects of the decisions being made In December last year the Office convened an external panel to review the quality checking system that had been established. The panel was generally satisfied with the approach of the Office but also made some suggestions, including a recommendation that errors be categorised for greater transparency
After giving a tabulated set of results for the year so far, the piece continues:

The checking process
The cases to be examined each week are selected automatically by a computer program. The number of cases and the program together ensure that the sample is sufficient to guarantee that the results on a quarterly basis can be relied as being representative of the overall output of decisions. The checks themselves are carried out by a group of four highly qualified and experienced staff. They individually examine the cases assigned to them before discussing those cases together where possible errors are detected.

The results of the weekly check are provided in writing directly to the examiners concerned as well as to their legal advisers and team leaders. In addition to the individual feedback, the process allows the group carrying out the check to identify
measures the Office needs to take to assist examiners in carrying out their decision making tasks. The measures include: coaching for individuals; general training on specific topics; improvement in standard letters and decision templates; clarification of Guidelines through amendments to the Manual of Trade Mark Practice.

Assessment of results in 2008
The Office is disappointed that it continues to fail to reach its targets. The appropriate response is not to reduce the targets or dilute the self imposed standards that have been established. The Office will redouble its efforts to ensure that the measures taken as a result of feedback from the exercise have a greater impact on improving quality. The Office is also looking to see what additional measures can be implemented to underpin the process of delivering quality output. Among other things, a tool to increase clarity and consistency concerning similarity of goods and services will be available in the coming year to help address one of the important areas of errors.
The IPKat is pleased that OHIM is willing to share information concerning its quality monitoring with its users, though he adds that, however much information is given, it is in the nature of things that paying users of the OHIM will always want more. Merpel says, it's a good sign when weblogs -- once thought of as somewhat scurrilous and subsersive organs of the media -- are able to participate in debates concerning matters of interest to the IP community of which they are part. The quality checking of this blog is largely done by its readers, who are quick to pounce on errors (real or imagined) and to suggest ways of improving the service, for which thanks are sincerely due.

Both Kats wonder how other offices perform quality checks on oppositions, both in the field of trade marks and in patents. Is it time to generate a set of objective criteria and methodology, rather than leaving it for each authority to determine for itself what its quality standards should be? And is this something that offices can sort out among themselves -- or should the initiative be backed by WIPO?

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