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, 30 November 2007

Friday flappings

A couple of welcome snippets from Tom Cowling (partner, Swan Turton): the first is an item from The Register concerning a US blogger who was pressed to remove the AVIS logo from a posting on his weblog. The post discussed a ruling on the constitutionality of car rental firm immunity from certain negligence suits and he used the Hertz and Avis logos by way of decorative illustration.

Right: the disputed logo

This piece cites another IPKat reader, Lee Curtis (Pinsent Masons, UK), who said the use was unlikely to constitute trade mark infringement because the blogger was not using the trade mark in the course of trade, adding that it was possible that the use might represent infringement of the copyright in the image itself. The IPKat notes that, while the appearance of the logo on a trade mark-related blog such as this one would be considered quite normal, since issues relating to the appearance, context and infringement of trade marks are discussed regularly, the appearance of the same logo on a post relating to immunity from negligence suits might cause the casual reader to assume that the post is discussing the negligence of the logo's owner. Merpel adds, the fair dealing provisions under copyright law would probably allow the illustration of the logo here, within the context of review or report of a news item, but not in the case of an article on immunity from negligence suits.

The second piece from Tom, via MSN, deals with Motown legends the Four Tops (right), who successfully invalidated a complete mouthful of a trade mark -- VISCOUNT OLIVER’S AMERICAN DREAM THE LEGENDARY FOUR TOPS -- in Class 41 (live entertainments), obtaining supporting injunctions. Remarkably, judge (Mr Justice Warren) ordered Four Tops tributary Viscount Oliver Miller (left) to pay the band £2,032.75 for them to take steps to disseminate and publish the order, including placing an advertisement to that effect in Stage magazine. Tom has procured a copy of the order (which has not been posted on BAILII), through the kindness of Alexis Grower (McGrath & Co.), who acted for the Four Tops. Let the Kat know if you'd like to see it. Asks Merpel, is this the first time a UK court has made an order relating to the dissemination of a court order since implementation of Directive 2004/48 on the enforcement of IP rights?

TIPLO -- The Intellectual Property Lawyers' Organisation -- is holding its Christmas Dinner Meeting on Thursday 6 December at the Old Hall, Lincoln's Inn, London. Star speaker is the well-known Irish wit and raconteur, Cliff Kennedy (MacLachlan & Donaldson); the title of his seasonal address is "I am not British. On the contrary".

Right: another wannabe auditions for the TIPLO Singers

Click here for tickets. More importantly, recruits are anxiously sought for the newly-formed TIPLO Singers who will be performing under the vigorous baton of Anna Carboni. Please email Anna here if you'd like a wonderful opportunity to sing some lovely carols with IP-friendly alternative lyrics. Says the IPKat, the ability to keep a straight face may prove more useful than the possession of a fine singing voice ...

Thursday, 29 November 2007

INTA brochure now available

The online brochure for the International Trademark Association's 130th Annual Meeting in Berlin, Germany, is now available here. The Meeting runs from 17 to 21 May 2008. See you there?

What ales the patent system?

Like most other intellectual property journals, the Oxford University Press monthly Journal of Intellectual Property Law and Practice (JIPLP) has a somewhat mercenery tendency to sell itself for a price. Complimentary copies can be scrounged from the editor and free inspection copies can be picked up following a visit to the website -- but the basic principle is that you get what you pay for and that, therefore, if you don't pay, you don't get.

Right: the IPKat takes an active interest in the Great Free Beer Debate

Unusually, JIPLP is giving away an entire article as a Christmas present to the world. Says IPKat team blogger Jeremy, who edits JIPLP, "this article was just so funny, we couldn't keep it to ourselves". Accordingly you can read it now, without even waiting for Christmas, by clicking here.

The subject of this largesse is "The great free beer debate or, what ales the patent system?", by intellectual property master craftsman David Musker. Any similarity between the subject of this article and the software patent debate is purely imaginary, of course. Says the IPKat, it's brave of David to exchange the security of a career writing patents for the life of a fiction writer. Wait, says Merpel, aren't they the same thing?

AG advises ECJ to reject OBELIX appeal

Back on 27 October 2005 the IPKat recorded the decision of the Court of First Instance in Case T- 336/03 Les Editions Albert René v OHIM, Orange A/S. In short, Orange applied to register MOBILIX as a Community trade mark for telecommunications-related goods and services in Classes 9, 16, 35, 37, 38 and 42. René, publishers of the Asterix stories that featured a character called Obelix, opposed, citing its earlier Community and national trade mark registrations of the word OBELIX for a large number of goods and services and pleading a likelihood of confusion.

Partially annulling the decision of the Opposition Division, the Board of Appeal allowed the opposition in respect of certain goods and services in Classes 9 and 35 but rejected it in respect of all the others. René appealed.The CFI dismissed the appeal. Attempts by René to admit fresh evidence to support the contention that OBELIX was a well-known mark (and therefore that it was entitled to protection under Article 8(5) of Council Regulation 40/94) were rejected. Nor, having failed to oppose the application on the basis of Article 8(5), could Rene raise that ground of opposition on appeal to the CFI. As to the likelihood of similarity of MOBILIX and OBELIX, the words were at best only slightly similar in visual terms; any aural similarity was however negated by their conceptual dissimilarity.

Today the European Court of Justice has received the Opinion of Advocate General Trstenjak in Case C-16/06 P, on appeal from the CFI. All in all, there were six grounds of appeal:

"... the Judgment of the Court of First Instance violates Article 63 CTMR and general principles of Community administrative and procedural law in that it concluded, contrary to the contested Board decision, that the conflicting marks, OBELIX and MOBILIX, are not similar, thereby taking a decision to the detriment of the Appellant on an issue that had not been properly raised, and thereby exceeding the competence of the Court of First Instance when reviewing decisions of OHIM Boards of Appeal in a case like the present one.

... the Court of First Instance, even if that Court was entitled to decide the issue of similarity of the conflicting marks to the detriment of the Appellant, violated Article 8 (1)(b) CTMR in that it applied erroneous legal criteria in determining that the conflicting marks, OBELIX and MOBILIX, are not similar, as well as in determining that some of the conflicting goods and services are similar, while others are not.

... the Court of First Instance violated Article 74 CTMR in refusing to accept that the OBELIX mark was well-known and highly distinctive.

... the Court of First Instance violated Article 63 CTMR and its own Rules of Procedure in that it declared inadmissible the Appellants claim before that Court to annul the contested Board decision on the grounds that it had not applied Article 8 (5) CTMR to the case at hand.

... the Court of First Instance violated articles 44 and 48 of its own Rules of Procedure in that it declared inadmissible the claim, presented in the alternative at the hearing, that the Court remand the case to the Board in order to allow the Appellant to establish the reputation of the mark OBELIX.

... the Court of First Instance violated Article 63 CTMR and its own Rules of Procedure, in particular Article 135 (4) thereof, in that it declared inadmissible certain documents introduced before the Court of First Instance".
In an Opinion running to 114 paragraphs the learned AG has recommended that the ECJ dismiss the appeal on all grounds. The IPKat feels that this was a tedious and complex attempt by René to summon procedural minutiae in support of its position where the real issue -- the fact that the opposition went against it on an assessment of the facts -- was not amenable to challenge before the ECJ. Merpel says, it's strange how these things happen: I never even began to connect OBELIX and MOBILIX with one another till I read the grounds of opposition.

More on Obelix here

Wednesday, 28 November 2007

New UK Patents Rules 2007

The IPKat was musing only last week on where the proposed new UK patents rules had got to, after they were announced by the UK-IPO earlier this year. As the old saying goes, be careful what you wish for, as you might just get it.

(Right: some rules the IPKat would prefer to see implemented; get the t-shirt here)

Considerably later than the promised date of 1 October, the new rules are, according to the UK-IPO, due to come in on 17 December 2007. As if EPC2000 (coming into force a mere 4 days earlier: see IPKat posts here, here, here and here) was not enough for patent practitioners to be dealing with in the run-up to Christmas, we will also have to deal with an entirely new and renumbered set of UK rules too. The Patents Rules 2007 (SI 2007/3291), the Patents (Fees) Rules 2007 (SI 2007/3292) and the Patents (Compulsory Licensing and Supplementary Protection Certificates) Regulations 2007 (SI 2007/3293) will all come into force on the same day. At the time of writing, the SIs have not yet been published, but the above links should work when they are.

The UK Office says,

"The new Patents Rules are a completely modernised set of rules which govern procedures concerning patents and SPCs. In particular, they:

* reform provisions on patent litigation at the Office - introducing flexible and user-friendly procedures, and clearer case-management powers
* better reflect current working practices such as electronic filing of patent applications
* include simplified and updated administrative requirements
* abolish Forms 11, 53 and 58 (with associated fees)
* introduce newly-clarified provisions on SPCs, bringing consistent provisions on patents and SPCs together for the first time
* implement detailed provisions concerning recent EC Regulations on the extension of SPCs for paediatric medicines and on patent compulsory licences for certain pharmaceutical products.

User should also note that, under the new Rules, the Office will no longer be able to treat post as having been received earlier than it actually was. The current "postal deeming" arrangement [under Rule 97] will cease to apply to any document posted to the Office in connection with a patent or patent application, where that document was posted on or after 17 December.

The new Patents (Fees) Rules reflect the restructured Patents Rules, including the abolition of certain Patents Forms and the inclusion in the Patents Rules of SPC matters.

The Patents Regulations make related changes to the Patents Act 1977 in respect of SPCs and patent compulsory licences. In particular, the Regulations amend the Act so that it is clear which provisions of the Act apply to SPCs, and what modifications, if any, are necessary.

The Regulations also provide a basis in the Act for the new rules which implement the recent EC Regulations on the extension of SPCs for paediatric medicines and on patent compulsory licences."

The IPKat knows that many people will be quite furious with the new rules, and in particular the way in which they are arriving: late, with very little warning, and heavily modified for no good reason. The rules do not seem to achieve anything of significance, while causing a great deal of pain and sheer annoyance to many people. The IPKat would like to point out just a few reasons why (in no particular order of importance):

1. Welsh. As regular readers will know (see previous posts here and here), the IPKat is quite sceptical about the utterly stupid, pointless and wasteful new provision to allow applications to be prosecuted (if not granted) in Welsh. How about also allowing applications to be prosecuted in Gaelic, Urdu or Polish, which are also widely spoken in the UK?

2. Abolishing Rule 97. This can only increase costs for applicants, as attorneys will need to check, check and check again that their documents arrived in good time at the Patent Office. The Royal Mail will inevitably lose practically all business from patent attorneys, while courier companies will continue to rake it in from those who need to know that their documents arrived on time. Even then, we know that things can go missing (anyone seen a couple of computer discs?). The real point of the old rule was, although it hardly ever needed to be used, that it provided a very useful reassurance that a date would not be lost as long as a document was posted on time.

3. The Patent Office. The new rules, along with all other relevant legislation, use the 'old' name, which is still the legally correct one. The name UK-IPO currently has no legal standing at all, as far as the IPKat can work out. Can anyone point out how the new name has changed things for the better? Even slightly? Why should we not carry on using the proper name until they change it properly?

4. Even the UK government can't keep up with their own legislation, as shown on the UK Statute Law Database (does anyone actually use this?), which now has a version of the Patents Act 1977 that is several years out of date. How do they expect (not to say demand) everyone else to keep up?

5. Renumbering. (The IPKat is carefully avoiding the use of expletives, as some people may be easily offended.) How on earth does changing the number of every single provision in the rules actually help anyone, other than those who, for whatever OCD or autistic spectrum-related reasons, find pleasure in keeping things in proper integer order? Was anyone in practice actually unable to understand where or what rules 6A to 6C were? In any case, how long will it be before we see new rules creeping inbetween the numbers?

6. Time. This is probably the biggest annoyance, at least for patent attorneys. Until the SIs are actually published (see above), we have no idea what form the rules will take. This list or rants is therefore only based on the draft rules (which, in line with previous 'consultations', the IPKat suspects will be the exact form of the final version). Will the final rules actually be the same as the draft rules, or will there be some changes? Will the numbering be the same? Will responses to the consultation (also not yet published) have had any effect at all? We simply do not know. Until the real rules are published, there is no point putting into action the many new procedures that patent firms have to do to take them into account, since they could have to be done all over again. Even assuming the new rules are published today (28 November), this gives everybody less than 3 weeks to prepare. Is this fair? At least the EPO gave the profession a whole year to prepare for EPC2000 after the new rules were finalised.

The IPKat will stop ranting for now, and leave it to others to comment if they wish.

SpamArrest leaves bitter taste for Hormel

CNN Money reports that the US Trademark Trials and Appeals Board (the appeal body of the USPTO) has allowed the trade mark SPAMARREST to proceed to registration, despite objections from Hormel, the makers of SPAM pork luncheon meat. The Board found that consumers were clever enough not to be confused, and that SPAMARREST would not dilute Hormel’s trade mark. The main plank of the lack of dilution finding was that Spam had become the generic word for junk email, and the TTAB held that where a word has become generic, traders in that field shouldn’t be stopped from using the term for what it is generic for, even if the term remains a viable trade mark in its original field of use. The TTAB tied this on to the requirement in US dilution law that the trade mark must be distinctive before it qualifies for dilution protection.

The IPKat isn’t sure about the TTAB’s reasoning. If a mark has a second meaning, there’s no reason why it can’t remain distinctive (take APPLE for example), though certain uses may not lead to the use of the word being associated with the trade mark owner. What this does go to show though is that trade mark law is firmly in the hands of consumer perception. The fact that consumers have taken the SPAM mark for themselves and granted it a different meaning is decisive, however unfair that may seem to Hormel, who invented the word.

Read the full TTAB decision here.

"What consumers want, what they really, really want ..."

This Monday the Olswang Convergence Consumer Survey 2007 was published. Conducted in conjunction with YouGov, this -- the third annual review -- sampled the attitudes of more than 1,500 18-to-55 year old British consumers and over 250 young-to-middling teenagers. Unsurprisingly it revealed that convergence continues to strengthen its grip on UK households, as a large number of homes have networks installed and the computer is becoming a true entertainment device.

Right: little Johnny turns the dials in an inreasingly frustrating search for iTunes ...
Every month, over 30% of respondents stream or download movies and TV content, while even greater numbers watch the range of free content that is already available on websites such as YouTube (63%) as well as streaming music (42%) and accessing podcasts (33%). Also unsurprisingly, people are much less willing to pay for audiovisual content, with free content being consumed by approximately three times as many people as paid content and those not yet consuming also being around three times more interested in free content.

The survey provides strong endorsement for those looking to make advertising, rather than payment, the business model for online content. While 84% of respondents said they found online adverts intrusive and 75% claim they actively try to avoid pop-up adverts, consumers are prepared to suppress this antipathy in their quest for free content, 46% of respondents being willing to put up with adverts if this means they can get TV or movies for free.

Following the trend of previous years, respondents are even more determined not to pay, getting frustrated at the lack of free content. This year, only 12% of respondents confessed that they either already pay or are willing to pay for downloaded or streamed movies or TV shows, while 49% want their content only if it's free. Among respondents who own up to unlawful downloading of film and TV content, the survey reveals a notable divergence: 20% of infringers actually pay, or are willing to pay, for content, suggesting that many are "content junkies" who just want whatever they can lay their hands on, whether they pay for it or not.

Left: the consumer's appetite for free content is not always fulfilled

The survey revealed a degree of confusion surrounding what content consumers are legally allowed to use on their home computers. Possibly due, at least in part, to a significant amount of national press coverage, 75% now recognise that downloading music from an unofficial file sharing site to a computer is unlawful, with similar results for downloading movies (73%) and TV shows (67%). However, once people have a disk in their hand, or a track on their computer, there is greater uncertainty: only 33% believe taking the content from a DVD and putting it onto a computer ("ripping") is unlawful. Once on the computer, only 26% believe copying that content to a portable device is illegal. These activities are currently mainly infringements in the UK at least in theory, although the Government is currently considering whether to introduce a "format-shifting" exception in line with the recommendation in the Gowers Report.

Copyright owners still face an uphill battle to persuade consumers that rules on content use, enforced by DRM, are fair. Consumers are also still confused about the purpose and effect of DRM. One third support DRM's aim to protect content from people who haven't paid for it, but 71% believe that, once they have bought some content, they should have the freedom to transfer that content between all their personal devices. At the same time only 12% think that, once they have bought something, they should be entitled to give it away to their friends. And only 8% support the use of DRM to control what happens to content once they have paid for it.

Even with heightened pressure against unlawful downloading, consumers are not worried about getting caught: the main reason for not infringing in this instance is moral guilt, with 34% of respondents believing it's wrong, with the second most common reason being the consumer's desire for quality authorised files (33%), this reason being especially common among 16 and 17 year olds.

Right: he thought he had the perfect way to hide the fact he'd been downloading unlicensed material on to his MP3 ...

Other highlights of the survey:

* 65% of respondents are not interested in watching TV channels or TV or movie clips on mobiles;

* 30% receive photos on their phones, and 17% receive videos, from friends at least once a month;

* Respondents who are not already streaming to their mobiles show the most interest in sideloading music or podcasts from their computers, with 15% being definitely or possibly interested in this latter activity, rather than acquiring content through the mobile network;

* 17% of respondents use video-on-demand technology, with a further 25% expressing interest in such a service;

* 68% of respondents are registered with a social networking site. Hot favourites are Facebook (44%), Friends Reunited (32%), Myspace (26%) and Bebo (16%). 43% of Facebook users use it every day.
Short newsy version of the survey here; full text (all 148 pages) here
If you want to be notified when the Fourth Annual Survey is available next year, email here to register your interest

Tuesday, 27 November 2007

One man's mark is another's descriptive appendage; What VITA FIT really says

The Court of First Instance gave its ruling this morning in Case T‑434/05, Gateway, Inc. v OHIM, Fujitsu Siemens Computers GmbH. Fujitsu Siemens applied to register the words ACTIVY Media Gateway as a Community trade mark for numerous goods and services in Classes 9, 35, 38 and 42. Gateway opposed, citing a vast flotilla of registered and unregistered marks containing the word GATEWAY, alleging (i) a likelihood of confusion, (ii) dilution of its well known mark and (iii) earlier unregistered rights of more than local significance that would prevent use of the applied-for mark.

The Opposition Division -- basing its decision solely on the UK registration of GATEWAY for the sake of convenience -- refused the opposition, holding that there was no likelihood of confusion on the ground that the marks were neither identical not similar. The Board of Appeal dismissed Gateway's appeal: it didn't matter how great was the reputation of Gateway's earlier marks if they weren't sufficiently similar in the first place. Gateway appealed further to the CFI, which also dismissed the appeal. Said the CFI, consumers of the relevant goods and services would regard the word "Gateway" in ACTIVY Media Gateway as being no more than a descriptive component of a complex mark, the dominant element of which was the word ACTIVY itself. within the context of the application, "Gateway" could not be said to perform an independent distinctive role of the sort envisaged by the ECJ in Case C‑120/04 Medion [2005] ECR I‑8551 (see IPKat comment here).

Says the IPKat, this decision seems fair enough -- it's the sort of stuff a trade mark owner can expect to face on a regular basis when he opts for a word mark that has a descriptive, allusive or metaphorical flavour to it. Merpel's more distressed by the thought that anyone should have come up with ACTIVY as part of a trade mark. To this English reader, at least, it looks more like a typo than anything else.

The IPKat is delighted to discover that his new-found talent for modern European languages has not deserted him. Last week he posted this item on the German text of a Community trade mark opposition appeal to the Court of First Instance in Rechtssache T‑111/06 Wesergold Getränkeindustrie GmbH & Co. KG v Harmonisierungsamt für den Binnenmarkt; Lidl Stiftung & Co. KG. (the VITA FIT/VITAFIT case).

Right: now that he has started to master the lingo, the IPKat looks forward to making further acquaintance with German culture.

Now his learned friend Kathrin Vowinckel -- who speaks German even better than the IPKat does -- writes to say:

"You are correct that both the Opposition Division and the BoA have upheld the opposition.

The BoA primarily based its decision on the following points : (1) the goods covered by both marks are identical; (2) there are visual differences between the marks, because the older mark was a mere word mark whereas the application included word and device elements, even if the device elements only play a secondary role; (3) the marks are phonetically similar, because a normal consumer paying average attention will hardly notice the difference between "vitafit" and "vitalfit"; (4) the older mark, irrespective of its narrow scope of protection, was not purely descriptive. Even though the words "Vita" and "fit" are words used in the German language, their combination "vitafit" does not have any clear meaning in German. Rather, it is a mark which implies healthy life and performance, but it does not directly describe the relevant goods or their characteristics. (5) Finally, the Appeal Division of the German Trade Marks Office had ruled that the marks were not confusingly similar, but the BoA did not feel bound by this decision - moreover, as it was not a final decision (it seems that the German Patent Court in the meantime reversed the decision of the German Trade Marks Office).

The CFI agrees. The goods covered by the relevant marks were considered identical, and the BoA was correct to compare, in particular the word elements "vitafit" and "vital-fit" without having to take account of the "&" and its pronounciation as "und" (= "and") because the average German consumer will see this device element as being of low distinctiveness (the Court does not really say "distinctiveness" - it says that the device element will have a low formative effect on the mark).

The rest of the decision merely deals with procedural matters relating to the right to be heard and related rights".

New UKIPO image search gets a road-test; You can't put a patent application "on hold"

The IPKat thanks his friend Graeme Fearon (Head of Intellectual Property, Thring Townsend Lee & Pembertons) for this little item:

"An early Christmas present from UKIPO

One of the commoner gripes of UK trade mark lawyers is that UKIPO’s public database does not allow proper searching for identical or similar marks. Until now, you’ve been restricted to simple searches for the word elements of marks, and then only where the element starts with a specified string of characters or is an exact match. For anything more sophisticated than this, you’ve had to rely on subscription services (not cost-effective for occasional enquiries) or begging favours from fellow professionals.

But UKIPO has recently unveiled (with an almost total lack of fanfare) an improved
search facility. The options on offer include word and/or image searches and more flexibility with the position of search terms within trade marks. You can filter results by reference to Nice class, filing date and mark status. There are even helpful online guides provided in case it’s all a bit much.

Sounds good? Well, on a trial run I went looking for the famous Bass triangle mark (UK 0000914, not its more glamorous cousin UK 0000001), without any success.
It’s not UKIPO’s fault that its image search engine is based on the
Vienna classification system, nor that Vienna is somewhat quaint (“Smokers' Requisites“ and “Fabulous Beings”, anyone?) It’s also not UKIPO’s fault that you have to guess how a mark was originally classified.

But why are UKIPO’s drop-down menus too narrow to display the whole title of a category? Category 25 (Ornamental Motifs, Surfaces Or Backgrounds With Ornaments) comes over as “Ornamental Motifs, Surfac”. And why are whole categories omitted? 26 (Geometrical Figures and Solids) and 27 (Forms of Writing, Numerals) are nowhere to be seen. Navigating the byzantine paths of Vienna is bad enough, without having to make do with half a map. Since I’m guessing that the Bass triangle belongs in category 26.3 (Triangles etc) I never stood a chance.

On the plus side, results are displayed clearly and quickly and the glitches mentioned above should be easy to fix. We should then have a significant upgrade of the trade mark professional’s toolbox, perhaps no match for subscription services (searching for lookalikes and phonetic similarities will remain awkward), but better than what we’ve been used to.

The proof of a pudding is, of course, in the eating and so far UKIPO’s festive offering is only half-done. Here’s hoping that, once it’s fully baked, it’s as mouth-watering as it promises. Pass the brand-y butter!"
The IPKat is pleased that UKIPO keeps doing all those little things to show it really cares. Merpel adds, Graeme has described this search facility as an early Christmas present; let's hope it doesn't end up as a turkey ...

In his capacity as an extra High Court judge, Lord Justice Pumfrey was in action yesterday, disguised as Mr Justice Pumfrey, in Bernard Edgar Anning's appeal [2007] EWHC 2770 (Pat). This is a sad little case, affirming that the time table for processing a patent application, with its many deadlines, must not be taken lightly. A patent application can either proceed or not proceed -- but you can't just put it "on hold". If your intention is to put your application on hold, it will be taken as an intentional refusal to comply with any requirement imposed by the UK patent legislation.

Monday, 26 November 2007

Chinese internet cafe copyright case

China Daily reports that a consortium of 5 Hollywood studios is suing and Eastday Bar in China for copyright infringement. appears to be an online cinema which claims to have copyright authorisation for more than 30,000 films, while Eastday Bar is a chain of internet cafes. It is alleged that Eastday Bar installed software allowing customers to access 13 films and that helped them.

The IPKat is a little confused by the facts here. It’s not clear if is (a) authorised at all or (b) authorised, but only for certain types of uses. While the IPKat’s not generally for making those who provide internet services (in the widest meaning of the world) liable, he thinks there’s a stronger case for it if the providers deliberately set out to attract customers by making copyright infringement possible on their premises.

More recent periodicals

The November/December issue of LexisNexis Butterworths' Intellectual Property and Technology Cases contains full headnoted texts of just four judicial decisions, but they are of considerable substance:

* Nichia Corporation v Argos Ltd (Court of Appeal, England and Wales, noted here by the IPKat) - A majority verdict (Jacob LJ dissenting) on the extent to which disclosure of documents in patent litigation should be permitted;

* Lunan Group Ltd v Edwin Co Ltd (Chancery Division, England and Wales, noted here by the IPKat) - should a hearing officer in trade mark infringement proceedings take account of the fact that two arguably confusingly similar marks (FIORELLI and FIORUCCI) had been parallel-traded with no confusion on the part of the relevant public?

* Case T-215/03 SIGLA SA v OHIM (Court of First Instance of the European Communities), the "VIPS" case, in which the CFI ruled on how the Board of Appeal should approach appeals in which two different grounds of opposition are levelled against the Community trade mark applicant;

* Case C-29/05 OHIM v Kaul (European Court of Justice, noted here by the IPKat): is it mandatory, or forbidden, hear fresh evidence in Community trade mark appeals, or is there a true path between these conflicting positions?

The autumn 2007 issue of Oxford University Press' scholarly quarterly International Journal of Law and Information Technology has now been published. It can usually be relied on to feature something tasty for IP enthusiasts, and this issue is no exception. Multiqualified lawyer Jeffrey C. J. Lee has written a very good piece entitled "The ongoing design duty in Universal Music Australia Pty Ltd v Sharman License Holdings Ltd--Casting the scope of copyright infringement even wider". You can read the abstract here (if you like P2P and don't see why internet service providers should be liable for third party content, prepare to be depressed... )

The fourth and final issue of Sweet & Maxwell's Intellectual Property Quarterly for 2007 carries four articles:
* A short, well-focused analysis by the IPQ's founder editor, John Adams, of the passing of the burden of IP royalty payments;

* Eritreian scholar Senai W. Andemariam considers the TRIPs Art.31 bis proposal of 6 December 2005;

* Louise Davies takes a robustly critical view of the Group B+ initiative towards global patent harmonisation;

* A dissertation by Christian Stallberg on the legal status of academic employees' inventions in Britain and and Germany and the consequences of that status for R&D agreeements.

The photos may be appealing, but the prospect of litigation isn't

The IPKat's friend Birgit Clark has sent him news of two recent German decisions on the availability of preventive injunctions to prevent the publication of photographs. They are decisions VI ZR 265/06 und VI ZR 269/06 (both from the Bundesgerichtshof).

Right: not all swimmers object to being photographed in the German media, even without their clothes on.

The full text of the decision is not yet available but in a press release the court summarised the cases as follows:

"The claimant, a well-known former swimmer, objected to the publication of photographs and articles in several magazines published by the defendant. These photographs, which had been taken secretly in 2005 during a holiday on the island of Sardinia, showed the claimant and her partner, inter alia, on the beach in front of the hotel. The articles that accompanied the published photographs used the claimant’s name in their headlines and subtitles like “Flirting and loved up on holiday” (“Turtelnd und verliebt im Urlaub")

The defendants had already provided pre-trial “cease and desist” undertakings to refrain (under criminal penalty) from re-publishing the same photographs. The claimant, however, did not want to settle the matter but decided to bring legal actions in two of the cases. She filed for a permanent injunction to prevent the defendant distributing images of her that showed her in her personal everyday life. The appeal court had already judged this claim as being too far-reaching but ordered the defendants to desist from publishing future photographs that were in their “core” similar to the photographs to which the claimant had objected pre-trial.

The 6th Civil Senate of the Bundesgerichtshof which is, inter alia, responsible for “general personality right” matters, dismissed the claims in their entirety in both cases.

The court pointed out that the unlawfulness of the earlier publications was not under dispute, following the “cease and desist” undertakings the defendant had provided pre-trial. However, whether the claimant was also entitled to preventive injunctive relief with respect to future photographs that were “in core similar” could not be predetermined. In order to judge the lawfulness of a publication, it was necessary to balance the conflicting interests, that is the interest of the public to be informed and the interest of the claimant to protect her “sphere of privacy” (Privatsphäre), based on the specific merits of each new case. Such balancing of conflicting interests could not be conducted with regard to photographs that had not been made known yet and because it was not yet known in which context such photographs would be published. The court stressed that this was especially true as it was important to consider the accompanying text that goes with the photographs, when balancing the conflicting interests of the claimant and the defendants".
The IPKat thinks that is unfortunate that the balancing of interests can't be done without the claimant having to go to court on each separate occasion on which a photograph is published, in order to get a cease and desist order against the further publication of a photo which, by virtue of the fact that has been published, has already lost much of its commercial novelty value and is unlikely to be published again. This effectively gives the media a massive victory.

Learn to swim here
Learn to take photos here

Software patents at the High Court

The IPKat was very pleased to be contacted by a little bird who was present on the first day of the High Court hearing of the appeal by Astron Clinica & others against the Comptroller General of Patents. The little bird shall, on their request, remain anonymous, but let’s arbitrarily call him Greenfinch (this has nothing to do with his/her real name). The IPKat has previously commented on the background to the appeal here and here.

The case relates to the UK-IPO's practice, following their interpretation of the Court of Appeal judgment in Aerotel/Macrossan, of refusing patent claims directed to computer program products even when such claims refer to claimed methods that are otherwise seen to be allowable. The patent applications in question had method claims that were all deemed to be allowable, but were refused solely on the grounds of having computer program product claims. The decision at the UK-IPO was not the first to refuse such claims under the new practice (the first was Western Geco), but it is the first to be appealed from the UK-IPO to the High Court.

The appellants allege that the UK-IPO’s practice undermines the ability of British industry to protect inventions reliant upon the development of new software. Each applicant has developed novel software, the control and distribution of which they say is critical to the success of their business. Nicholas Fox of Beresford & Co. said in the lead-up to the appeal,

Copyright protection only protects code against copying. In contrast, patent protection enables a company to monopolise an invention even if competitors independently come up with the same idea. In order to protect their commercial interests companies need patent claims directed towards the products and processes that are sold in the market place. In the case of computer based inventions this means that claims to disks and downloads embodying an invention are required.

In Court, the appellants argued that software on a disk represented a "dormant technical effect in waiting", analogous to a medical pill that just sat there doing nothing until the patient took it. Using the same principle, the software would produce a technical effect when run on the computer. [IPKat comment: this seems a new argument, and an interesting approach, but arguing by analogy is rarely helpful; after all, medicines themselves are not excluded under section 1(2)]

They argued that, following the landmark IBM decision T 1173/97 at the EPO, a computer program product is not excluded from patentability under Article 52(2) and (3) EPC if, when it is run on a computer, it produces a "further technical effect" which goes beyond the normal physical interactions between program and computer, i.e. between software and hardware. The EPO approach has been broadly consistent in its decisions since then.

Another point was that, from 13 December 2007, EPC 2000 will come into force. This would bring in an ability [under new Articles 105a-c] for central limitation or revocation of a European patent. The appellants argued this meant that if an EP(UK) patent was infringed and the claims revoked by a British Court, this would effectively mean revoking the claims in other EU states where the patent was perfectly valid. [IPKat comment: this seems entirely wrong, as there is to his knowledge no provision in EPC2000 to cause this to happen. Can any other readers enlighten him on what the argument was?]. At this point, Mr Justice Kitchin commented in a rhetorical question ‘So that would leave us effectively an island again ?’

The appellants also argued that this point had not been addressed in Aerotel/Macrossan, nor in the previous Court of Appeal decisions of Gale or Fujistu, and that a completely new point was being discussed.

Colin Birss, acting on behalf of the UK-IPO, then addressed the court. He agreed that the point of law had not been argued before. He argued, however, that Gale had addressed the point as such, in that if the invention was just software on a floppy disk then it was not patentable. He said,

M’Lord I have to ask what is the contribution. Patents are given for something new. In one line M’lord that’s it.

In Greenfinch’s humble opinion, this case is sure to be an epic, with five companies being represented under this banner [IPKat comment: I think there are only four now, one having pulled out after having their European application granted]. Greenfinch has it on apparently good authority that the case is sure to go all the way to House of Lords. He further wonders wonders whether the UK will be happy with being an island.

Unfortunately, that is where our little bird had to leave it. The hearing went on for a further two days, so if any other IPKat readers could let him know what went on he would be most grateful.

Sunday, 25 November 2007

Recent periodicals

The December 2007 issue of Sweet & Maxwell's monthly European Trade Mark Reports is now out. It's pretty fat, but much of the weight can be put down to the annual index. Cases covered in this issue include

* Antartica Slr v OHIM, the Court of First Instance's ruling that Antartica had no right to register the word and figurative mark NASDAQ in the face of the very well-known NASDAQ stock exchange price quotation service;

* Game Group plc v First Internet Technology Ltd, a .eu domain name dispute in which an adverse registrant of the url nearly, oh so nearly, got away with it;
* the ruling in European Court of Justice Case C‑17/06, Céline SARL v Céline SA (see IPKat comments here), that the same principles that govern other forms of trade mark infringement apply equally to alleged infringements through the use of a business name.
As usual, if you know of any interesting European trade mark case that should be reported in full in the ETMR, just email the IPKat here and let him know.

The November issue of the ETMR's little sister the European Copyright and Designs Reports is also available. This issue of the six-times-a-year title contains reports on five cases, including

* ADAGP v Editions Fernand Hazan, a French Cour de Cassation ruling on whether the paintings of the famous impressionist were part of the public domain or if any further copyright could be squeezed out of them;

Right: Monet -- a great painter, but doesn't his garden look a little untidy?

* SCRL Soc. Belge des Auteurs, Compositeurs et Editeurs v SA Scarlet - a Belgian dispute as to whether an internet service provider was liable for an act of copyright infringement following peer-to-peer use.

Saturday, 24 November 2007

Triumph of Style over substance?

Last Wednesday, 21 November, Mr Justice Norris gave a ruling in the Chancery Division (England and Wales) in UK Channel Management Ltd v E! Entertainment Television Inc and another (see here for an earlier post on this dispute). Channel ran a home and lifestyle channel under the name 'UKTV Style', while E! sought to launch a new channel called 'The Style Network'. Channel owned a Community trade mark for the figurative mark 'UKTV Style' (above, right). In May 2006 E! applied to register, also as a Community trade mark, a logo incorporating the word 'Style' for the broadcasting and production of TV programmes. Channel objected to that registration on 29 May, then sued in the UK for trade mark infringement and passing-off.

In this application Channel sought permission to amend its particulars of claim. E! objected to Channel's amendments, saying that they constituted an attack on Community trade mark opposition proceedings. Accordingly, E!, argued, permission to amend should be refused out of respect for the Community process.

Norris J was not impressed with this objection and allowed Channel's amendments. In his view it was the original pleadings, not the proposed amendments, that raised the spectre of duplicative process. The proposed amendments did not take the case into territory that had not already been covered by the original pleadings.

Sadly, the LexisNexis Butterworths note doesn't give any clue as to what the original particulars and the proposed amendments are about. Says the IPKat, this is irritating, because in their absence there's no point in reporting the case at all. Adds Merpel, this is in the traditional BBC radio style of news, though: it's just like "A woman was found dead in a house in North West England last night. A man is helping police with their inquiries": quite probably true, but not much use.

Friday, 23 November 2007

Friday flashes

To sign the SpicyIP online petition to put pressure on the Indian government to create a modern patent database and to make patent office decisions available online, click here.

The IPKat has learned via Stephanie Bodoni (Bloomberg) that this week the European Union approved plans to open access to cheaper medicines for poor nations, letting developing nations with limited or no pharmaceutical production import generic copies of patented drugs from other World Trade Organization countries. This decision, which was apparently made without any discussion, according to a statement by the bloc's foreign ministers, crossed the last hurdle to ratification by the EU of the changes to TRIPs (the Agreement on Trade-Related Aspects of Intellectual Property Rights).

Slightly embarrassed, the IPKat confesses that he can't remember who sent him news that the Software Freedom Law Center has filed copyright lawsuits against two US companies, High-Gain Antennas and Xterasys, alleging that they are redistributing software in violation of the GNU GPL (General Public License). Says the SLFC, the two companies are distributing BusyBox -- a lightweight set of standard Unix utilities commonly used in embedded systems licensed under GPL version 2 -- without meeting the GPL requirement of providing access to the source code of their implementation. High-Gain vigorously denies the allegations; Xterasys was not available for comment.

One-Click lives again

The infamous Amazon "One-Click" patent, which has been going through re-examination in the US thanks to the efforts of determined New Zealander Peter Calveley, has apparently squeezed through the system yet again with the help of a few crafty amendments.

In the notes of an interview held on 15 November, the US examiners stated that the following proposed amendments "appear to place the claims in condition for patentability", although they made the caveat that further review and search would be required (whatever that might mean).

[Note: for those reading this via the IPKat email service, you may need to go to the web version to see the claims]

To this Kat's trained eye, the amended claims seem to be simply stating that the scope of the invention is now limited to it being used independently of a "shopping cart model". This is how the invention appears to be used in practice (right: taken from Amazon have, however, apparently given up on the general claim to one-click shopping, which was shown to be previously known.

Although Mr Calveley is claiming that this result is "mission accomplished", the IPKat fails to see how this is really much of a success. Amazon have come away with claims that cover the thing they presumably really want to protect, and the case demonstrates many of the things that are seen by some to be wrong with the US patent system (to see how Amazon fared in Europe, see the previous IPKat post here).

More details can be found through the USPTO Public PAIR system for US 90/007,946, and on Peter Calveley's blog here.

Quick fix for Kitfix

A novel and unprecedented issue arose in an England and Wales Chancery Division case before Mr Justice Mann earlier this week, Kitfix Swallow Group Ltd v Great Gizmos Ltd [2007] EWHC 2668 (Ch), drawn to the IPKat's attention by his friend Simon Haslam: should a court stay English proceedings for infringement of a Community trade mark in which there is a counterclaim for revocation, pending a ruling of OHIM on the same trade mark?

Right: this is what happens if you use sequin craft kits ...

Kitfix owned a Community registered trade mark for the words SEQUIN ART for craft kits using sequins. Great Gizmos was the English distributor of Hong Kong-manufactured craft kits for making pictures out of different coloured sequins, and bearing the name "Sequin Art". Kitfix alleged infringement and passing off; Great Gizmos said the mark was entirely descriptive and non-distinctive for the goods in question and denied passing off.

This January Kitfix issued its claim form. Great Gizmos served its defence and counterclaim in March. A case management conference was fixed for September 2007. However, in late August, 4M - the Hong Kong manufacturer of Great Gizmos' products - commenced proceedings in OHIM for a declaration of invalidity of the SEQUIN ART mark. That prompted Gizmos to apply for a stay of the English proceedings pending a decision in OHIM. The likely date of the English trial was June/July/October 2008, while the OHIM proceedings - which were themselves initially stayed - would be likely to generate a decision in or about January 2009, suggesting that there would be a three to six month gap between the dates in which each of the proceedings would generate a decision.

Great Gizmos' arguments in favour of a stay were cumulatively quite impressive: (i) the mark's validity was highly questionable; (ii) once the trade mark issues were disposed of, and in particular the acquired distinctiveness point, there would be little left in the passing off claim anyway; (iii) OHIM proceedings are much cheaper than the £200,000 likely to arise from the English proceedings; (iv) it was unjust that a small company - indeed a distributor - should be obliged to run such large costs risks, particularly when it was prepared to undertake not to sell any more products pending a final determination of the matter in OHIM; (v) apart from the passing off claim, there was nothing in issue in the English proceedings that was not also in issue in OHIM; (vi) both proceedings were at a relatively early stage; (vii) there was a risk of inconsistent decisions if the English proceedings were not stayed and the OHIM proceedings continued; (viii) there was no prejudice in terms of trading because Great Gizmos had given its undertaking not to trade while the OHIM proceedings were live.

Mann J dismissed the application for a stay. In his opinion there was no useful analogy to be drawn with the extensively analysed practice of granting stays in patent law. On this he said:

" ... the operation of patents law and trade mark law have in common the existence of European institutions operating to come extent in parallel with national courts. That means that the potential for concurrent actions, and the need to consider staying proceedings, is common to both. However, it does not follow that the answer for one is the same as the answer for the other. So far as patents are concerned, there is a presumption in favour of staying English proceedings over EPO proceedings – see Glaxo Group Ltd v Genentech Inc [2007] EWHC 1416 (Pat), and the cases referred to there. However, in that case, Lewison J, having considered the jurisprudence, and having emphasised that the presumption is very much a rebuttable one, ended by indicating that the Court of Appeal might like to consider whether the presumption should still represent the starting point. He drew attention to the difference between the approach in patent cases and the approach in more general commercial cases. His survey of the law indicates to my mind that I would have to be very cautious before adopting the current patent practice by analogy.

However, there is an even more significant reason in this case why the patent cases do not provide a useful starting point. ... the Regulation contains various provisions which provide for some of the conflicts which may arise, and they certainly do not compel the presumption that currently arises in patent cases".
He then cited Article 100(2) of Regulation 40/94:
"The Office, when hearing an application for revocation or for a declaration of invalidity shall, unless there are special grounds for continuing the hearing, of its own motion after hearing the parties or at the request of one of the parties and after hearing the other parties, stay the proceedings where the validity of the Community trade mark is already in issue on account of a counterclaim before a community trade mark court. However, if one of the parties to the proceedings before the community trade mark court so requests, the court may, after hearing the other parties to these proceedings, stay the proceedings. The Office shall in this instance continue the proceedings before it",
on which he commented:
"The first sentence of that paragraph has direct application to the present case. There is a counterclaim before the English Community trade mark court raising the issue of the validity of the mark. That means that the OHIM proceedings should be stayed unless there are "special grounds" for continuing them. In these circumstances there is therefore a strong presumption in favour of the national court. That is not necessarily an end of the matter. It remains open to one of the parties to the national court proceedings to persuade the national court to stay those proceedings, and if that happens then the OHIM proceedings will revive. However, it is plain that the approach to the national court cannot conceivably be based on a presumption in favour that the OHIM proceedings should continue. If anything, the presumption would be the other way, but I do not think that the answer to this case lies in presumptions".
Mann J agreed that there were certainly factors in this case that could justify a stay, particularly in terms of the costs incurred, the binding nature of the OHIM decision within the UK and the willingness of Great Gizmos to give undertakings. However, no stay would be granted for the following reasons:
* in a modern commercial context even a delay of three tro six months is of some real significance - particularly if you consider that the OHIM proceedings are potentially subject to lengthy and time-consuming appeal procedures;

* on the facts it was not entirely clear that OHIM was seised of the issues in question and would be able to determine them;

* this was not a case in which the claimant had deliberately sought out an advantage in attacking a minnow and allowing the shark to swim free. The manufacturer was not in this jurisdiction, so it was hard to see who else the claimant could have sensibly sued in England other then the English distributor;

* the passing off claim would remain live even if the trade mark proceedings were resolved.
The IPKat says, this just goes to show how useful a passing-off claim can be in trade mark infringement proceedings, even if it is only a relatively minor issue: it can help make the difference between a stay or no stay. Merpel adds, there's a postscript to this ruling: OHIM has now stayed its own proceedings, "until the final outcome of the national procedure before High Court of Justice, Chancery Division Intellectual rights".

Louis Vuitton, the dogged pursuit of parody and Britney Spears

Roshana Kelbrick (Department of Mercantile Law, Unisa) has sent the IPKat news of the failure of luxury handbag-maker Louis Vuitton's claim that a Las Vegas company infringed its trade mark with its furry "Chewy Vuiton" dog toys. A US Circuit Court of Appeals (judgment here) has affirmed the trial court's ruling that Haute Diggity Dog's toys were just a harmless parody. According to the court,

"the juxtaposition of the similar and dissimilar — the irreverent representation and the idealized image of an LVM handbag — immediately conveys a joking and amusing parody. The furry little 'Chewy Vuiton' imitation, as something to be chewed by a dog, pokes fun at the elegance and expensiveness of a LOUIS VUITTON handbag, which must not be chewed by a dog".
Other parodies manufactured by the same defendant include "Chewnel No. 5," "Furcedes" (left) and "Sniffany & Co."

Louis Vuitton, which also makes some pet products, objected that the dog products used the same geometric symbols and colour combinations as its own products. The court was not however convinced that there was sufficient similarity to cause any consumer confusion. So far Haute Diggity Dog's successful defence of its product portrayals has cost it over US$300,000.

Ben Challis (Music Law Updates) writes to tell the IPKat: "Five Eight reports that Sony BMG and MTV Online have been found guilty of violating counterfeiting laws in a Britney Spears video. Luxury goods manufacturer Louis Vuitton brought forward the case after noticing a similarity between in-car upholstery in the video for 'Do Something' [isn't that 'Do Somethin', asks the IPKat] and its own Cherry blossoms design. A Paris civil court has ordered the two companies to desist from broadcasting or marketing the video and fined them E80,000 apiece", He adds that he received this:
"Good afternoon,

In connection with a court proceeding in France brought by Louis Vuitton, a judgment was entered against SONY BMG this week regarding the music video for the Britney Spears track “Do Something. The original video included a short shot of Vuitton fabric contained on the interior of a pink Hummer vehicle. The court held that this video infringed Vuitton’s rights.

Please confirm and take down if live on your service the below.

Britney video 'Do Something' USZM20500003

Thanks in advance".

Thursday, 22 November 2007

Is Tarragona substantial?

A potentially delicate reference of a trade mark law question from the Juzgado de lo Mercantil 3 de Barcelona was made to the Court of Justice of the European Communities in Case C‑328/06 Alfredo Nieto Nuño v Leonci Monlleó Franquet.

Right: A Spanish lawyer gets into training for an encounter with the ECJ

Nuño owned the Spanish trade mark FINCAS TARRAGONA for estate agency and related services in Class 36. Franquet, an estate agent in Tarragona, had however publicly and continuously used the name FINCAS TARRAGONA, in Spanish (= FINQUES TARRAGONA in Catalan) to designate his own business. Nuño sued for trade mark infringement and Franquet, denying infringement, said that the name under which he carried on his business was a well-known earlier trade mark, which he had been using since 1978. He counterclaimed for the annulment of the registration of Nuño’s trade mark.

The national court wasn't sure how to progress from here: Franquet used his non‑registered mark only in the city of Tarragona and its surrounding area, but not elsewhere in Spain. Accordingly it decided to stay the proceedings and refer the following question to the Court of Justice for a preliminary ruling:

"Must the concept of trade marks which are “well known” in a Member State, referred to in Article 4 of [the Directive] be taken to indicate solely and exclusively the degree of knowledge and establishment in a Member State or in a significant part of the territory of that State, or may the determination of whether a mark is well known be linked to a territorial scope which does not coincide with that of the territory of a State but rather with an autonomous community, region, district or city, depending on the goods or services which the mark covers and the persons to whom the mark is actually addressed, in short, depending on the market in which the mark is used?"
It its inimitably lifeless prose the Court opined as follows:
"Article 4(2)(d) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks is to be interpreted as meaning that the earlier trade mark must be well known throughout the territory of the Member State of registration or in a substantial part of it"
Says the IPKat, this response still leaves the referring court to take the bull by the horns and rule on whether Tarragona and its surrounding area are a "substantial part" of the territory concerned (you can read the facts and figures on Tarragona here). It may not be a substantial part of Spain, but it could be regarded as a substantial part of Catalonia -- being one of 17 autonomous communities within the Kingdom of Spain. Merpel adds, what a welcome change to find an ECJ ruling that's so short: the whole judgment only takes up 21 paragraphs, inclusive of the order of costs.

Vital signs; More on enabling disclosure and inventive step

The IPKat spotted another non-English Court of First Instance decision yesterday on Community trade marks (it's in German and French only): Rechtssache T‑111/06 Wesergold Getränkeindustrie GmbH & Co. KG v Harmonisierungsamt für den Binnenmarkt; Lidl Stiftung & Co. KG.. So far as the Kat can tell, Wesergold applied to register the sign depicted here as a Community trade mark for non-alcoholic drinks and fruit drinks/juices in Class 32. Lidl opposed, citing an earler German registration of the word mark VITAFIT for fruit juices, fruit drinks and nectars in the same class. Lidl alleged a likelihood of confusion, citing similarity of the marks and identity/similarity of the goods.

What happened next? The IPKat's not too sure. He thinks the Opposition Division and the Board of Appeal upheld the opposition and that the CFI has dismissed Wesergold's further appeal -- but his katty whiskers tell him that he has missed something significant along the way. As usual, can some kind person email him here and let him know.

Last Sunday this weblog published a note (here) on a recent patent case in which the learned judge (Mr Justice Kitchin) said, at para.204:

"... an earlier publication will only deprive a patented invention of novelty if it discloses the invention and ... the skilled person would be able to perform the disclosed invention if he attempted to do so by using the disclosed matter and his common general knowledge. In my judgment the same approach must apply to obviousness. There can be no justification for finding that a "near miss" which does not enable the claimed invention nevertheless renders it obvious".
Team blogger Jeremy took issue with this, commenting:
"While the notion that a disclosure must be enabling is crucial to novelty, I don't see why it should be a sine qua non for obviousness: if it were, then how does the 'obvious to try' criterion stand, where something that exists in the prior art does not in fact constitute an enabling disclosure but suggests clear lines of thinking that will lead to what the patent applicant believes to be an invention?"
Now Trevor Cook (Bird & Bird) has come to the judge's rescue. Says Trevor:
"I think that you are being somewhat unfair on the Judge by omitting to quote para 205, and with which para 204 ought be read in conjunction, and where he goes on to repeat his earlier finding (at para 203) that the patent in which these claims for obvious but non-enabled desiderata appear, is insufficient. Insufficiency and obviousness are in a sense opposites, and so I can see some logic to his approach".
The IPKat, who is more concerned with statements of law that students will pick up and run around with than with whether the judge's findings were correct, wonders what his readers think.

Hot stuff for the LA courts

Jim Davies, Miri Frankel, Simon Haslam -- these are just a few of the IPKat's friends to have sent him news of the altercation between the US band Red Hot Chili Peppers and Showtime over the use of the word Californication -- this being the name of the band's 1999 album and a hit single.

The band alleges unfair competition, dilution of the value of the name and unjust enrichment, claiming that the title is "inherently distinctive, famous ... and immediately associated in the mind of the consumer" with the band. Injunctive relief is sought in a Los Angeles court against the broadcasting of Showtime's TV series of the same name, as well as an account of profits.

The television series stars David Duchovny as a novelist suffering from writers' block and a mid-life crisis, together with a character named Dani California -- coincidentally the title of another Red Hot Chili Peppers song released in 2006.

The IPKat suspects that it won't be difficult to monitor the progress of this action, what with so many of his friends giving him a welcome hand!

Watch Dani California live here
California Dreamin here (nostalgia trip for those who remember when hit songs could be 2min 28 secs long and you could understand the words)
Chili recipes here
Chili pepper and arthritis, cancer and obesity

Wednesday, 21 November 2007

So who's the king of the Castell?

In addition to the TEK cancellation application (noted here by the IPKat), the Court of First Instance heard another Community trade mark appeal yesterday in Case T‑149/06 Castellani SpA v Office for Harmonisation in the Internal Market; Markant Handels und Service GmbH. Castellani applied to register the sign pictured here as a figurative Community trade mark for "alcoholic drinks (except beers)" in Class 33 (this was later narrowed to "alcoholic beverages except beer, liqueur, sparkling wine and Champagne"). Markant opposed, citing earlier German registrations of the marks CASTELLUM ("wines, with the exception of sparkling wine", in Class 33 and CASTELLUCA "wines", in Class 33), maintaining that on account of the similarity of the parties' respective marks and the identity of their respective goods there existed a likelihood of confusion of the relevant consumers in Germany.

The Opposition Division disagreed. In its opinion the parties' marks were simply too different to induce confusion, notwithstanding the identity of their respective goods. The Board of Appeal however reversed this decision and allowed the opposition. In its view, given the visual and conceptual similarity of the trade marks and the identity of the goods in question, there was a likelihood of confusion between the applicant's sign and Markant's CASTELLUCA mark. Castellani appealed.

The Court of First Intance annulled the Board's decision. After stating the law the CFI applied it to the facts:

"49 ... the goods covered by the conflicting marks are identical. ... it is therefore necessary to compare only the conflicting signs.


52 ... as regards the visual comparison, the trade mark applied for is a compound mark, composed of a word element, ‘castellani’, and a figurative element, consisting of two horizontal lines with a turreted crown in the middle and a shield with a castle with two towers, surmounted by a crown with two palm branches and a Latin cross in the centre.

53 With regard to the significance to be attached to the figurative element as a distinguishing feature, that cannot be the dominant element in the overall impression created by the trade mark applied for. In the present case, it is clear, ... that the figurative elements of the mark in question will be perceived as an illustration of a castle and that those elements have but a weak distinctive character. In the case of a product like wine, a representation of a castle is not an element that allows the relevant public to perceive that figurative component as dominating the image they retain of the trade mark applied for. On the contrary, consumers usually describe and recognise wine by reference to the verbal element which identifies it, since this element designates in particular the grower or the estate on which the wine is produced ... Therefore, the dominant element of the contested trade mark is its verbal element, namely the word ‘castellani’.

54 The Board of Appeal also stated, at point 19 of the contested decision, that the first part of the signs, which in its view was visually the most prominent, namely ‘castell’, was identical. It is true that the word elements ‘castellani’ and ‘castelluca’ have a certain degree of visual similarity, since they are of the same length and the first seven letters are identical and placed in the same order (‘c-a-s-t-e-l-l’). However, although the consumer’s attention is often caught by the first part of words ..., ... the use of the word ‘castle’ is very common for that particular category of goods. The consumer is presented with such a variety of names and goods containing a territorial designation associated with the words ‘castello’, ‘castel’, ‘château’, ‘Schloss’ or ‘castle’ that, in order to be able correctly to identify a wine whose name begins with one of those words, the consumer must examine the suffix attached to it very carefully. In the present case, the final letters of the conflicting signs, that is, ‘a’, ‘n’ and ‘i’ in the contested trade mark and ‘u’, ‘c’ and ‘a’ in the earlier mark, are different.

55 Accordingly, in the overall visual assessment of the signs, the difference established between the word elements ‘castellani’ and ‘castelluca’ is sufficient to rule out any visual similarity between the competing signs.

56 As regards the phonetic comparison, contrary to the Board of Appeal’s finding ..., the dissimilarities between the signs, due to the difference between the suffixes – ‘ani’ in the trade mark applied for and ‘uca’ in the earlier mark – are sufficient for them to be distinguished aurally in German, in spite of the fact that the prefixes (‘castell’) are the same. If the relevant public pronounces the suffixes in question in German, the element ‘ani’ will be pronounced [ani] and the element ‘uca’ pronounced [uka].

57 As regards the conceptual comparison, the Court considers to be incorrect the Board of Appeal’s finding ... that the average German consumer is likely to associate the two marks in the same way with the word ‘Kastell’, which means castle in German, so that the competing signs are conceptually similar.

58 ... the use of a word meaning ‘castle’ is common in the wine sector. Germany is the fourth biggest world market in terms of wine consumption. Although a large share of that market is covered by German wines, the predominant share consists of imports. Germany’s main suppliers of wine are Italy, France and Spain. Consequently, the German consumer is accustomed to seeing a large number of trade marks for wine whose name begins with ‘Schloss’, ‘castello’, ‘château’, ‘castel’ or ‘castle’ when purchasing wine in a specialist shop, a supermarket or a hypermarket or when choosing a wine from a wine list in a restaurant. He will therefore attach less significance to the prefix and closely examine the suffix of the mark on the bottle label.

59 Secondly, the trade mark applied for contains an Italian family name, which will be recognised as such by the target public. Since Italian food and wine and Italian goods are widely available throughout Germany, the average German consumer is accustomed to identifying an Italian name and associating it with a family. It is highly unlikely that the average German consumer will associate the trade mark applied for with the German word ‘Kastellan’. The earlier mark suggests the Castle of Luca or is associated with the town of Lucca, the capital of the province of Lucca in Tuscany, Italy. It follows that there is a conceptual difference between the two signs.

60 Thus, contrary to the finding in the contested decision, when making an overall assessment of the marks at issue, the visual, phonetic and conceptual differences between the conflicting signs are sufficient, in spite of the identical nature of the goods covered, to preclude the resemblances between them giving rise to a likelihood of confusion on the part of the average German consumer".

The IPKat says that the CFI could have added some weight to its analysis, on facts that could have gone either way, by mentioning that, when spoken, the words "Castellani" and "Castelluca" are pronounced by the German consumer with a stress on the third of the four syllables. This would serve to heighten awareness of the differences between them.

Taste wine in a castle here
Learn how to pronounce German correctly here
Cat castles here and here

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