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, 29 May 2009

BGH lifts ban on "real life horror film" Rohtenburg

From Germany comes the news that the Federal Supreme Court has lifted the ban on the 'real life horror film' Rohtenburg (decision of 26 May 2009, case reference VI ZR 191/08).

Some of our readers may recall the unsettling story of the "cannibal of Rotenburg", Armin Meiwes, who achieved international notoriety for murdering and eating a voluntary victim he had found via an internet ad (see the IPKat's report here). This cannibalistic crime was the inspiration for the film Rohtenburg which its makers had advertised as "real life horror film" and to which Mr. Meiwes took objection. The misspelling of Rotenburg as Rohtenburg was an intentional pun on the German adjective "roh" which translates into the English word "raw", as in raw meat. Mr Meiwes, who serves a life sentence for this crime, took the matter to court and stopped the imminent release of the film by means of a preliminary injunction arguing an infringment of his arguing an infringement of his general personality right as protected by the German constitution in its Articles 1(1), 2(1).

The courts of the first two instances, the Regional Court of Kassel and the Higher Regional Court of Frankfurt (case reference Az.: 14 U 146/07) agreed with the claimant and granted precedence of the constitutional protection of the personality over freedom of art. Both courts agreed that Rohtenburg, which was produced by the defendant, must not be distributed in Germany or shown in German cinemas. Both courts took the view that one can make a film about this murder and this film was protected by freedom of art. However, Rohtenburg had crossed the line, being a mere horror movie with a one sided 'monster portrayal' of the claimant and his crime, which tipped the balance in favour of the personality right. On appeal by the defendant the Bundesgerichtshof has now lifted this ban, assessing the case differently.

The Bundesgerichtshof's reasoning as set out in its press release of 26 May 2009 is translated and summarised below:

The press release starts by setting out the background of the case: the claimant has become well known as the Cannibal of Rotenburg through media reports about his crime and is currently serving a life term prison sentence for this murder. In March 2001 the claimant had killed, frozen and subsequently partly eaten a man. The defendant in the proceedings had produced a film which was based on this crime and which had been advertised as a "real life horror film". The biography and personality traits of the film's main protagonist and the storyline of the film mirror the real life crime and real life biography and personality of the claimant in almost every detail, while the claimant had secured a "comprehensive and exclusive deal" with a production company to exploit his story globally.

The press release continues by stating that the claimant was seeking a ban of the distribution and screening of the film and that his claim was successful in the lower instance court proceedings. However, on appeal by the defendant, the film producing company, the sixth civil senate of the German Federal Supreme Court has now annulled the lower court's decision.

The Federal Supreme court acknowledged that he film could heavily burden the claimant as a person because it brought the crime back to memory in a highly emotionalised way. However, after balancing the conflicting rights, the Federal Supreme Court disagreed with the Higher Regional Court of Frankfurt and gave precedence to the freedom of art and freedom of film over the protection of the claimant's human personality under the general personality right. The court further stressed that the general public had an information interest. The court went on to say that the film did not falsify or distort and did not question the claimant's claim to be respected as a human being. The film scenes did affect the claimant's particularly
protected 'core sphere' to privacy, however this information did directly refer to the crime and person committing the crime, and hence such details could be included. Furthermore, the court noted that all details of the crime had already been known to the general public, also due to the claimant's assistance. The claimant had not contended that the depiction in the film had any new or additional negative consequences for the claimant, particularly with respect to his re socialisation into society."

When comparing the Frankfurt court's earlier decision with the Federal Supreme court's view as set out in its press release, this Kat's initial 'gut' reaction is that the Federal Supreme court did get it right. Both courts, the Frankfurt court as well as the Federal Supreme Court, appear to have raised the same points but have clearly balanced freedom of art and film and the general personality rights differently (all of which are proteced as human rights under the German constitution). It appears from the press release that the Bundesgerichtshof seems to have given more weight to the fact that the claimant had sold his story to the media and that the film had not revealed anything new. It should be mentioned though that in its decision the Frankfurt court had stressed that there was a need of guidance from the Federal Supreme Court for the fairly new phenomenon of cases where a claimant had "sold his story". The press release also notably did not include any comment concerning the "one sided portrayal" of the claimant as a monster, a point the Frankfurt court had found decisive. In short: a very interesting decision and this Kat can not wait to get her hands on the full decision.
Please click here to retrieve the press release.

Thursday, 28 May 2009

Musicians object to political song use

The IPKat notes a letter in today's Times from the Musicians' Union and the Features Artists' Coalition, protesting at the use of songs by the their members on a compilation put together by the British National Party.

They note that many of their members 'have no legal right to object to their music being used in this way' and add that:

'we would also like to raise awareness of the terribly low level of moral rights accorded to musicians in this country and we call for these to be reassessed so that musicians are able to object to their music being used in situations which contravene their beliefs and morals'.
The IPKat can see the correspondents' point of view. If one can object to one's trade mark being used in an unsavoury context, then why not one's literary, musical or artistic work or one's performance, which if anything, is more personal to the author than a trade mark is to the company that it represents. The Kat seems to remember the Musicians' Union raising just this concern at the time that performers' moral rights were brought into force in the UK. The IPKat is somewhat puzzled though. Can the performers not rely on their economic rights? If they've dispensed with them, can they not persuade their labels to take action? Aside from the political ramifications, sure they record labels and the authors of the underlying copyright works don't want the BNP making use of their copyright-protected works for free.

Top Patent Blogs: your chance to vote!

Gene Quinn's IP Watchdog weblog is conducting a poll of the Top Patent Blogs. This is not the first time that this exercise has been conducted (polls of this sort seems to be very popular in the United States) but it is the first time it's being conducted with an enhanced methodology. As Gene explains, there are:

" ... 50 patent blogs for you to choose from. Question 1 asks which patent blog is your favorite, and question 2 asks which patent blogs you regularly read. Only one selection is permitted for question 1, but multiple selections are permitted for question 2. For each question 1 vote a total of 2 points will be awarded. For each question 2 vote a total of 1 point will be awarded. Each computer will be allowed only one opportunity to vote, so that we do not run into an American Idol situation where diehard fans can vote hundreds of times and skew results".
Voting will continue until 30 June 2009. Once voting is complete the results will be tabulated and the Top Patent Blogs will be announced some time at the beginning of July 2009. 

To his great excitement, the IPKat notes that he has been listed among the 50, along with some of his personal favourites (PatLit, IP:JUR and Spicy IP are listed too, which shows that not all the blogs on the ballot box are from that prolific jurisdiction, the United States). If you feel that you can vote for him with a clear conscience, please do so by following the simple instructions here.

Wednesday, 27 May 2009

Conquistador rebrands vanquished British banks

Via the BBC website comes news that the all-conquering Spanish bank Santander, having mopped up a giant chunk of the British banking industry in the form of the Abbey, Alliance & Leicester and Bradford & Bingley Savings, is to rebrand them all as Santander with effect from the end of 2010.  

Right: Santander's conquistadors model their new UK staff uniforms

While traditionalists will mourn the passing of these great High Street names, shareholders may feel less disappointment if any savings through brand rationalisation are passed on to them in the form of higher dividends.  They weren't real banks in most consumers' minds anyway -- just souped-up building societies where British savers could spend many happy hours engaging in their favourite pastime: queuing.

The search for Mr Bradford and Mr Bingley here
How to pronounce Leicester correctly, but with an American accent, here
The Abbey here
Why cats like Santander here
Other famous shop names that have disappeared from British High Streets here, here and here

Hatemail Woman in Facebook Dead Cat Bag Privacy Horror Scandal

The IPKat has just received news of a terrible tale involving a dead cat, not to mention some serious issues involving live humans, thanks to Allard Ringnalda (Research assistant, Centrum voor Intellectueel Eigendomsrecht, Utrecht University, and the co-author of a book which the IPKat would love to read if it wasn't for his linguistic ineptitude). Allard writes, on behalf of his institute and, in particular on behalf of the IPKat'd scholarly friend Professor Willem Grosheide, as follows:

"Last week, a Dutch artist known by the name of ‘Tinkebell [IPKat note: real name, Katinka Simonse] published a book --Dearest TINKEBELL-- which contained a collection of hate mail. She received this hate mail during the years 2004-2008 after she – and I am sorry to have to tell you this – killed her cat (who is reported to have been seriously ill at the time), skinned him, and made him into a purse [IPKat note: This appears to have been the subject of a book published in 2004, My dearest cat Pinkeltje]. This work of art (its interpretations vary from a protest against the treatment of animals and pets to a comment on fashion) attracted quite some attention through her website, and some 1,000 visitors felt the urge to inform the artist about their disapproval of this type of art. I’ll not reproduce the expletives used in these e-mails here, but I’m sure you can imagine their content.

Those e-mails led to a new project, the book titled Dearest TINKEBELL. Not only does this book contain all the hatemail received by the artist; it also holds all sorts of information about its senders. Every e-mail is accompanied by photographs and information (‘profiles’) from the senders, found on various publicly accessible websites (such as FaceBook and LinkedIn). It allows the reader to find out what the sender of the e-mail lookes like, where they live, what their hobbies are, where they work … The result is a rather interesting experiment in anonymity, online privacy, shame, and voyeurism. However, as I’m sure you’ve guessed, there is also a very interesting legal dimension to it.

The publication of the book is presently causing some sort of a stir among (legal) scholars in the Netherlands, and perhaps reporting it will lead to some interesting comments on your website too. The book raises all sorts of interesting questions on privacy, copyright (both in the e-mails, which would probably be protected by copyright under the recent Endstra-Tapes case law of our highest court [see here and here], and on the publically available material (pictures, text) on websites), libel, the need for an exceptio artis, etc. If you’re interested, you can find more information in an English translation of an article that appeared in a newspaper last week, which describes the project and the contents of the book. It is found here".
The IPKat is horrified to think what is done to cats for the sake of art, even if they are fast coming to the end of their ninth and final lives. However, from the point of view of the publication of letters not intended for publication, he remembers fondly William Donaldson's The Henry Root Letters, in which a hilarious set of genuine celebrity responses to a set of well-aimed hoax letters from a wealthy wet-fish merchant became a popular read without seeming to draw any threats of legal action.  

Right: never trifle with a kitten ...

The same formula was adopted by Brian Bethell in The Defence Diaries of W. Morgan Petty, when he published genuine responses to the protagonist's hoax letters in support of the attempt to make his home at 3 Cherry Drive, Canterbury, a Nuclear-Free Zone (Merpel adds: how are the mighty fallen -- you can now purchase this work for just one penny from Amazon].  Nowadays he suspects people would sue, since (i) we live in litigious times, (ii) no-one except the IPKat and his readers has a sense of humour any more and (iii) there is no implied licence to publish a response to a hoax letter.   But let's hear from the readers: what do you have to say?

More than one way to kill a cat here
More than one way to skin a cat here

Tuesday, 26 May 2009

It's June .. and it's JIPLP

The June 2009 issue of the monthly Oxford University Press flagship publication, the Journal of Intellectual Property Law & Practice, has been published (you can read a list of its current contents here). Features of particular interest in this issue are

* Linda Haller (Melbourne Law School) writing on the current state of the law on conflicts of interest involving the patent attorney profession;
* Giles Pratt (Freshfields Bruckhaus Deringer) considers how far you can enforce US judgments in the UK, and adjudicate on US IP claims in the UK, in the light of the ruling of Mr Justice Mann in the Star Wars litigation;
* Per Eric Alvsing and Anna Moller (Advokatfirmen Vinge) explain the lowly status of the photograph on the cover of a compact disk, when contrasted with the disk's contents;
* P. Gavin Eastgate and Jeffrey M. Weimer (Reed Smith) discuss Re Ciprofloxacin Hydrochloride Antitrust Litigation, in which the US Federal Circuit accepts the validity of a "reverse payment" in settlement of a patent dispute, where the patent owner buys off the challenger;
* There's also a lovely "In Person" interview with Indian IP guru, lawyer, scholar, Nicole Kidman devotee and podcaster Shamnad Basheer.
This month's editorial discusses the remote possibility and hypothetical charms of a World Intellectual Property Court (you can read it in full here). 
To write for JIPLP, click here. To subscribe, click here. For an online or hardcopy inspection copy, click here.

Monday, 25 May 2009

Teaching IP to mixed-education classes: is there any research?

The IPKat has received this query from his scholarly friend Thorsten Lauterbach (Lecturer in Law and Course Leader for Postgraduate International Law Programmes at the Aberdeen Business School, The Robert Gordon University, Scotland). He writes:

"Dear IPKat

Are you aware of any research on the teaching of IP Law to a multicultural/ international postgraduate cohort of students? I am involved in the teaching IP in a module that is both taken by MSc International Trade and LLM International Commercial Law/IT Law students from China, Nigeria, India, UK/EU and many other places. In addition, the educational background of the cohort is varied, with many having an undergraduate law degree, but others (especially in the International Trade course) having business, economics and public policy degrees.
All of this makes pitching IP law content at the right level very tricky; I would be most grateful if there was a way to get in touch with others who have similar experiences.  And, indeed, if there was research available, I would be most interested in devouring it!".
The IPKat has had a good deal of practical experience teaching mixed groups of this nature, and knows how difficult it can be, but he has no knowledge of any research on it. Pitching the subject correctly is pretty tricky when the same class contains both those who have already studied IP and those who have not, and those who have a grounding in common law and those whose legal education is in the civil law tradition. Basing the teaching around specific problems rather than on legal principles is one way of tackling the difficulties, but there may be better ways.

If any reader has any comments or suggestions, can he or she please send them to Thorsten  here.

Teaching cats here and here
Cats and 'interspecies communication' here

Friday, 22 May 2009

Interflora v M & S: Another AdWord referral to ECJ

"This is another case about Google AdWords and registered trade marks". This is the opening sentence of the England and Wales High Court's decision on an interim injunction in Interflora, Inc. Interflora British Unit v Marks and Spencer PLC Flowers Direct Online Limited, [2009] EWHC 1095 (Ch). The decision can be retrieved by clicking here.

The claimant, Interflora which operates the largest flower delivery network in the world, had filed a interim injunction to stop Marks and Spencer (M & S) and others from using 'Interflora' as a sponsored Google Adword search term, as well as the misspellings 'Intaflora' and 'Inter-flora'. M & S also operates a flower delivery service via its website which enables orders to be placed online.

The High Court did not grant an interim injunction and, as so many other national courts before, Mr Justice Arnold decided to refer the "Adword" matter to the European Court of Justice.

While the actual questions are still outstanding, (para 104 "I think it is right that the parties should have the opportunity to consider my judgment in L'Oréal v eBay, which is being handed down at the same time as this judgment, before finally committing themselves.") Mr Justice Arnold's reasons for a referral are set out in paragraphs 93 pp:

93 In the particular circumstances of this case, I concluded that the better course was to refer questions to the Court of Justice now, for the following reasons. It is common ground between the parties that guidance from the ECJ will at some point be necessary to enable this court to resolve the dispute. That being so, if I could be reasonably confident that all the necessary guidance from the ECJ would be forthcoming in its judgments on one or more of the existing references, then it might well make sense for to me to do as M & S urge and stay the proceedings until sufficient guidance is available: compare Johns v Solent SD Ltd [2008] EWCA Civ 790 and Boehringer Ingelheim KG v Swingward Ltd [2008] EWCA Civ 83, [2008] ETMR 36. For the reasons given by counsel for Interflora, however, I consider that there is at least a real possibility that the rulings by the ECJ on the existing references will not clearly resolve all the issues of law which arise in the present case. A further factor which supports this conclusion is the risk that one or more of the existing references may be withdrawn as a result of settlements. I also note that the Bundesgerichtshof considered it appropriate to make a further reference notwithstanding the references which had already been made.

96 Thus the choice comes down to making a reference now or leaving it to the trial judge to make a reference. The advantages of making a reference now are that it will reduce the delay in resolving this dispute and that it may obviate the need for trial altogether or at least reduce the scope of the trial. The main disadvantage of making a reference now is that the facts have not been fully determined. I am satisfied, however, that the factual situation is sufficiently clearly defined to enable the questions of law which arise to be posed and answered.

99 I should add that an additional factor which I have taken into account in reaching this conclusion is that I have decided to refer questions to the ECJ for a preliminary ruling in L'Oréal SA v eBay".

High Court: L'Oréal v eBay - ebay wins again?

Eagerly awaited and just out today is the UK High Court's decision in L'Oréal v eBay [2009] EWHC 1094 (Ch). Update: Please click here to retrieve the decision.

While the Kat has not yet seen the actual decision, early media reports inform the Kat that eBay has again emerged successful from a trade mark infringement action brought against it by cosmetics giant L'Oréal. In similar fashion to the Tribunal de Grande Instance de Paris in the recent French proceedings (see the IPKat's report here), the High Court appears to have considered that eBay has met its legal obligation to combat fake products.

Paris-based L'Oréal, which had brought similar proceedings in several European countries, had argued that online auction site eBay did not do enough to prevent the sale of counterfeit goods such as perfumes and cosmetics. Broadly speaking L'Oréal's position was that eBay should be liable for counterfeit and parallel imported goods sold via its website, and that eBay should do more to prevent the sale of such trade mark infringing goods. After today's decision, there are now three decisions in favour of eBay (UK, France and Belgium), one decision in favour of L'Oréal (Germany) and one decision (from Spain) still outstanding.

According to a report by Kathy Sandler of Dow Jones Newswires, the court appears to have taken the view that the relevant European trade mark law provisions and the eCommerce Directive "were unclear, referring such issues to the European Court of Justice for further guidance".


Update: the decision, which comprises of 482 paragraphs and certainly deserves an in depth analysis, can now be retrieved by clicking here. Based on what the Kat has been reading so far though, it appears at least open whether eBay has "won" (as initially reported in the media and above) pending a referral to the ECJ. In the meantime, Mr Justice Arnold's conclusions (paragraphs 481, 482) are set out below:

i) The Fourth to Tenth Defendants have infringed the Trade Marks. In the case of the Fourth to Eighth Defendants the goods they sold were put on the market outside the EEA and L'Oréal did not consent to those goods being put on the market within the EEA. In the case of the Ninth and Tenth Defendants, the goods they sold were counterfeits.

ii) Whether the sale by sellers on the Site of testers and dramming products and of unboxed products amounts to an infringement of the Trade Marks depends upon questions of interpretation of the Trade Marks Directive as to which the law is unclear (see paragraphs 319-326 and 331-342 above). Although these questions are academic so far as the acts committed by the Fourth to Tenth Defendants are concerned, they are potentially relevant to the question of what relief, if any, L'Oréal are entitled to. Accordingly, guidance from the ECJ is required on these points.

iii) eBay Europe are not jointly liable for the infringements committed by the Fourth to Tenth Defendants.

iv) Whether eBay Europe have infringed the Link Marks by use in sponsored links and on the Site in relation to infringing goods again depends upon a number of questions of interpretation of the Trade Marks Directive upon which guidance from the ECJ is required (see paragraphs 388-392, 393-398 and 413-418 above).

v) Whether eBay Europe have a defence under Article 14 of the E-Commerce Directive is another matter upon which guidance from the ECJ is needed (see paragraphs 436-443 above).

vi) As a matter of domestic law the court has power to grant an injunction against eBay Europe by virtue of the infringements committed by the Fourth to Tenth Defendants, but the scope of the relief which Article 11 [of the Enforcement Directive] requires national courts to grant in such circumstances is another matter upon which guidance from the ECJ is required (see paragraphs 455-465 above).

I shall hear further argument on the precise formulation of the questions to be referred to the ECJ. The parties should exchange proposed drafts of the questions in advance of that hearing. The parties should also consider the guidance given by Arden LJ in Horvath v Secretary of State for Environment [2007] EWCA Civ 620 at [80]."

Thursday, 21 May 2009

OHIM-IPO class heading conflict case

The IPKat reports on Daimler v Sany [2009] EWHC 1003 (Ch), a request for summary judgment, which was refused on 14 May by Mr Geoffrey Hobbs QC, sitting as a Deputy High Court judge.

Daimler sued Sany for trade mark infringement, claiming that Sany's device mark caused confusion with and took unfair advantage of, or caused detriment to the well-known Mercedes Benz figurative mark. The Mercedes mark was registered in Classes 7 and 12 and Sany had applied to register its mark in Classes 7 and 12, together with a statement supporting the application saying that Sany had been using the mark, or had an intention that it would be so used.

Sany counter-claimed for part-cancellation of Daimler's mark. Daimler had specified the goods for which the mark was registered by giving the class headings for Classes 7 and 12 in the Nice Classification.

Mr Hobbs QC noted that there was an inconsistency in approach between OHIM and the IPO - the former allowing class headings as clams to all goods and services within a particular class, the latter objecting to wide and vague specifications, and also taking a literal approach to what is covered by class headings (e.g. Class 15 is entitled musical instruments, so specification adopting the class heading would only cover instruments and not, for example, music stands, which are included in the class). The Deputy Judge noted that he did not think that there was room for such a divergence to co-exist in the European trade mark system, and for these purposes led to a real issue that could not be decided via a summary judgment.

Daimler couldn't sidestep the issue by seeking to rely on those goods for which it had clearly used the mark, and which were clearly included in Sany's specification. There were issues concerning the goods for which Daimler's mark should remain registered and these would impact on the question of similarity of goods, which would impact on the question of confusion. It was also an open question whether the marks were similar enough to cause confusion.

The IPKat isn't too sure what could be done at trial that would resolve the conflict between OHIM and the IPO. Is a reference to the ECJ in the offing, he wonders...?

Mercedes the Cat here

Aerotel yet again

The IPKat was in the middle of writing about a (to him, at least) rather interesting turn on the Symbian/Aerotel view of excluded matter under the UK Patents Act 1977 (more below, for those sufficiently interested), when the very familiar name of Aerotel appeared yet again in his inbox. This time, Aerotel have again appeared in the Court of Appeal, with an argument about the same (already expired) patent that was the central theme of the judgment in Aerotel/Macrossan back in October 2006, and again before Lord Justice Jacob. The judgment is available from BAILII here.

The patent, GB2171877, was upheld in the original Court of Appeal judgment (here), but was then revoked the second time round by HHJ Fysh QC in the Patents Court in May 2008 (here). As this Kat thought at the time, it seems that the patent should really have been revoked the first time round, if only a proper attack had been made on it.  The first alleged infringer, Telco, didn't have a proper go, and gave up before the Court of Appeal decided the matter.  The second alleged infringer, Wavecrest, did have a proper go and relied more on the safer ground of novelty and inventive step, which resulted in the patent being found wanting for the latter.

Rather than taking another pot shot at the alleged inconsistencies of EPO case law, Jacob LJ, in dismissing Aerotel's appeal, chose to have a go at them this time for being a patent troll. Aerotel's barrister, Henry Carr QC, had attempted to argue that one reason the minor difference between what was known at the priority date and the claimed invention in the patent (essentially pre-payment rather than post-payment of phone calls) should be seen as being inventive was because the patent had been so commercially successful. Jacob LJ was, however, having none of this and put his arguments as follows:

"Mr Carr submitted that commercial success was a powerful factor in Aerotel's favour here. I do not see that. For here there is a counterquestion to "why not done before?" It is "why was it not done after?" A grateful market did not immediately fall upon this invention, saying "this is the answer to our problems." When the invention was made known absolutely nothing happened. The world beat a path to the door of Ralph Waldo Emerson's inventor of a better mousetrap, but the path to Aerotel's door remained untrodden.
I must explain. Aerotel does not itself make or sell anything. It is a company formed to exploit the present patent and its corresponding patents in other countries, particularly the US. The priority date is January 1985 and the application was published in Europe in 1986. Yet no one is said to have used the invention until 1994. From then on there was increasing use, but none of it was by virtue of anything done by or with Aerotel. A variety of telephone prepayment businesses just started up: there is no suggestion that any of them even got the idea from the Aerotel patent. There is no suggestion that any one of them came seeking a licence. Mr Carr's skeleton argument asserts that the invention "helped change the industry" and "created a new market which did not exist before". Nothing like that was proved and it is totally improbable.
So how then did Aerotel make money from the patent? By litigation and the threat of litigation against users. And principally in the US. That is unimpressive, for it is notorious that at least from the middle-90s the US patent litigation scene had become immensely pro-plaintiff. A defendant faced with the possibility of litigation had to take into account all of the following matters: (1) the right of the patentee to insist upon jury trial (juries are apt to be pro-plaintiff); (2) the general level of damages awarded in the US – by juries; (3) the real possibility of triple damages for wilful infringement; (4) the fact that even if a defendant won he would have to pay his own, very considerable, legal costs; and (5) the fact that until the decision of the Supreme Court in eBay v MerckExchange U.S. No. 05–131 (2006) there was a strong view that even a non-exploiting patentee who won would get an injunction as of right.
We know that Aerotel entered into licensing arrangements. But we know little more than that. There is no evidence as to why people took licences. I see no reason to suppose they did so for any reason other than the considerable downside risk they would avoid" (paragraphs 30-33).
This now seems to be the end of the line for Aerotel, in the UK at least.  The IPKat supposes that we (IP professionals and academics, that is) should thank them for being the catalyst for spurring a renewed debate on what the exclusions on patentablity mean in Europe.  After all, would we have had the recent referral from the President if Aerotel/Macrossan had not happened? Merpel, however, thinks that it would have happened anyway, it just needed the right McGuffin to kick it all off.

What the IPKat was reviewing at the time he was interrupted was a recent decision from the UK-IPO that may help those who are confused about how things now stand in the UK in relation to the exclusions under section 1(2).  This decision (available here) related to an application made in the name of Toshiba for a computerised system for determining the length of cable runs in a 3D model.  The invention itself, however, was not the interesting thing.  What was interesting to the IPKat was the following wording, which seems to be now standard for UK-IPO decisions relating to excluded subject matter:
"The interpretation of section 1(2) has recently been given further consideration by the Court of Appeal in Symbian Ltd’s Application [2008] EWHC Civ 1066. Symbian arose under the computer program exclusion, but as with Aerotel, the Court gave guidance of a more general nature on section 1(2). Although the Court approached the question of excluded matter primarily on the basis of whether there was a technical contribution, it was quite clear (see paragraphs 8-15 of the decision) that the structured four-step approach to the question in Aerotel was never intended to be a new departure in domestic law; that it remained bound by its previous decisions which rested on whether the contribution was technical; and that any differences in the two approaches should affect neither the applicable principles nor the outcome in any particular case. Indeed the Court at paragraph 59 considered its conclusion in the light of the Aerotel approach. It therefore remains appropriate for me to apply the Aerotel test, but with due regard to the clarification that Symbian provides as to when a computer program makes a technical contribution."

If anyone thought that Symbian really changed anything at the UK-IPO, the IPKat thinks that they are probably either overly optimistic or mistaken. The test, such as it is, is now still the familiar 4-step Aerotel test, but bearing in mind that computer programs can make a technical contribution, contrary to what the 4-step test might suggest. To the IPKat's eye, this seems to be a fudge. Either the whole EPO approach, problem-solution and all, should be used, or none of it. To rely on such a mish-mash of different approaches (which are now apparently incompatible at the EPO) doesn't really make anything clearer, and doesn't seem to help examiners in making the right decisions. Or is that the point?

INTA Report and Micro-Rant, Day 4, 20 May

Here's the IPKat's final report from Seattle, host to this year's (131st) Meeting of the International Trademark Association. Setting his alarm clock for 7am with the full intention of getting a few hours' sleep, the Kat bounced out of bed at 5.48am, startled into consciousness by the dreadful thought that it was already the afternoon back in Europe (i.e. his email in-tray would be enticingly full again). This apprehension was indeed fulfilled when he later logged on.

The IPKat's first serious task, after the statutory round of breakfasts, was to attend the Regional Update on Africa. There were only 75 minutes available and more than 50 countries to get through, which meant we'd have to travel at the rate of just about one jurisdiction every 60 seconds or so (allowing for moderators' comments, changes of speaker, people having to breathe etc). The team, ably led by Gerard du Plessis (Adams & Adams), responded admirably to this challenge. Gerard's colleague Simon Brown did most of the Country-a-minute stuff, giving a bird's eye view of recent national and regional developments that left us almost sensing the imperious twitch of the lion's tail. He was followed by immaculate presentations by David Maema (Isame, Kamau & Maema, Kenya) and August Mrema (Mkono, Tanzania) which touched on all sorts of tasty questions such as (i) why does Tanzania have two separate trade mark registration systems, (ii) how Rwanda is changing from a civil law Francophone country to a common law Anglophone one, (iii) how ambitious -- and how advanced -- are the plans of the East Africa Community to form a common market and (iv) how Africa is home both to laws which are enacted but are not in force and laws which are in force but have not been enacted.

The next session the Kat attended, and the last for 2009, was also his biggest disappointment -- partly because it was the session he had most looked forward to. This was on the exciting topic of "Latest developments in internet law and the impact of blogging on trademarks". The fault was not with the speakers. Rachel Matteo Boehm (Holme Roberts & Owen) and Ian Ballon (Greenberg Traurig) were clearly knowledgeable and had obviously gone to some considerable effort to provide current and authoritative information. The problem was in the session itself. There was nothing to warn the audience that this session was a throwback to the USTA -- the old United States Trademark Association -- and that it was aimed at local attorneys who wanted to collect their CLE points rather than to the members of the International Trademark Association who had come to enhance their understanding of problems that do not belong exclusively to the United States (the words "CLE" were mentioned twice in the presentations, but the Kat doesn't recall any mentions of other countries at all).

[Beginning of micro-rant]: The IPKat does not know who designed this element of the programme and how it was decided to handle it the way it was handled, but he has the following messages for the person or persons unknown:
1. The internet is not owned by the United States; nor is it coextensive with the territorial borders of the United States.

2. Neither the internet nor disputes arising from its use are exclusively governed by United States law.
Right: angry kat piccie by Piez

3. An international organisation such as the INTA owes it to its members to provide an approach to subjects which is not parochially focused solely on the legal issues of any single jurisdiction.

4. There is no valid reason for excluding, in a session at an international gathering of this nature, any reference to developments in France and Germany -- two civil law jurisdictions which have a rich and varied body of case law and jurisprudence on the trade mark/internet interface.

5. It is worth questioning the wisdom of the INTA circulating under its own logo, for the benefit of this audience, a shortlist of trade mark-related weblogs. This creates the appearance of endorsement or approval of certain weblogs by the INTA, yet it omits some of the leading trade mark weblogs entirely. No non-English-language blogs are listed (for example Le petit Musée des Marques is omitted, despite its influence and popularity in the French-speaking world and its archive going back to 2004; Germany's MarkenBlog is not there. Nor is Boek 9 from the Netherlands, Lvcentinus in Spain or the exotic, colourful bilingual Catch Us If You Can !!! from Italy). The hugely popular Spicy IP, from India, is also absent -- as is the poor little IPKat ...[end of micro-rant here]. 
Now that he has typed this all up, the IPKat is already feeling a lot happier. The rage is abating. As is well known, the IPKat is hugely fond of the INTA and does all he can to persuade his friends (and his not-yet-friends) to join it. He has participated in its workings for many a long year and fervently hopes that this micro-rant will mean either or both of two things: that sessions intended for the whole membership will be better balanced, and/or that sessions intended for our US colleagues who seek CLE points will be clearly flagged as such. 

And now for something lighter ...

The IPKat's INTA Oscars

Best session: since modesty prohibits the IPKat speaking the truth about his own session on privilege and ethics in cyberspace, he will gallantly nominate the session on due diligence: the good humour, natural presentation skills and narrative exegisis of the speakers turned a traditionally turgid subject into quite a zappy one.

Best reception: for warmth of hospitality and quality of chopped liver, the annual feeding frenzy provided by Sanford T. Colb is hard to equal. For a small fee the IPKat promises not to name and shame the firms who had all their hosts standing in a line outside the reception, but no-one inside to talk to guests once they'd deposited their cards and entered.

Coolest venue: The Waterfront, Pier 70 -- it's almost inconceivable that lawyers work in this lovely location, with its comfortably blazing log fire, the breathtaking views and the amusingly simple death-trap of highly polished pebbles, though rumour has it that those employed at Graham & Dunn are capable of doing so.

Best audio-visual aids: it just had to be keynote speaker Elle Macpherson -- there were no other contenders.

Nicest person: Cathy Lee, the ever-smiling wheelchair-bound attendant at the Convention Center who had a cheerful word for even the gloomiest participant.

Most annoying example of arbitrary exercise of power: the posting of sentries around the bottleneck between the registration area and the reception zone in order to encourage two one-way systems for those entering and exiting, thereby narrowing the bottleneck still further.

Most-desired object: the glorious white full-sized unicorn you can see through the window of the FAO Schwartz concession, Macy's -- for which the IPKat is still yearning ... [you fool, says Merpel: if unicorns don't exist, how can you tell if this one's full sized or not?]

The Kat has now packed his bags and is ready to return to the Old Continent -- but he's already looking forward to returning for next year's Meeting, Boston 2010.

Wednesday, 20 May 2009

INTA Report, Day 3: Tuesday 19 May

Emerging early from his lair, the IPKat's first date of the day was with the LinkedIn Madrid Protocol Group, whose breakfast meeting he joined at 7.30am prompt. This meeting, hosted in the US Bank Centre Building by Leydig, Voit & Mayer Ltd, was conducted dynamically by Alfred Strahlberg (shown, right, with UK-based trade mark celebrity and bonnie fighter Shireen Smith), who expertly led the assembled experts through a selection of problems and solutions relating to the gap between users' demands regarding international trade mark filing and the resources and ability of the World Intellectual Property Organization's International Trademark Bureau to discharge its functions effectively. 

Issues raised in this genuinely businesslike but good-natured gathering included the slow progress of recordals, slow responses and non-responses to communications from representatives, the sending of data via fax when an email notification would be better, and uncertainties concerning the commencement of the period from which the five-year non-use term is calculated. Readers wanting to know more about this highly articulate and well-informed group, or who simply want to let Alfred know about their personal experiences in dealing with WIPO, should email him here.

With his understanding of the Madrid System duly enriched, the IPKat then marched up the hill to the Convention Center, where he spent a pleasant couple of hours sampling the exhibits before deciding to attend the session on Due Diligence. Many people consider that this subject is only marginally less thrilling than watching paint dry -- though a good deal more lucrative -- but those attending the session must have come away with the impression that it is actually a species of extreme sport. Karen Fong (Rouse) kicked off with a wonderful parody of Elle Macpherson when she sketched out a scenario in which her family business, the House of Fong, had fallen into the hands of her two sisters whose neglect made it a prime target for a rescue package. Bret Parker (Wyeth) then listed the Top Tips for Due Diligence while frankly conceding that some were, er, a good deal less significant than others.  Sarah Anne Keefe (Womble Carlyle Sandridge & Rice) spoke on the various levels of risk posed by different types of IP sale and what can be done to reduce the odds on disaster, while James Buchan (Gowling Lafleur Henderson) related various due diligence war stories, which included Volkswagen's purchase of the Rolls-Royce car business (which failed to secure rights to the famous ROLLS ROYCE trade mark) and the King Kong/Donkey Kong dispute.

To his great disappointment the Kat missed the European trade mark regional update. He set out in time to get there, but kept getting hijacked/waylaid by a succession of people he would have been very pleased to see any other time than this. Compensation came in the form of three delightful receptions, culminating in a trip to the Chinese Toom at the top of Smith Tower where a congeniality [this seems a better word than flock, swarm or bevy] of George Washington alumni demonstrated that, whatever TV serials may suggest,  you don't have to be rude and absrasive in order to be an effective lawyer.

Having splished and splashed his way across the city, the Kat then repaired to his hotel and began to write ...

Tuesday, 19 May 2009

INTA Report, Day 2: Monday 18 May

The first official fixture on the IPKat's list for the day was the Professors' Breakfast. Usually this event is an opportunity for a little harmless networking: each Professor at the Breakfast Table stands up and says who he or she is, everyone laughs politely and we all discuss the two eternal questions (What can we do for the INTA? What can the INTA do for us?). This year's format was different, the assembled academics being treated to presentations by David Gooder (Jack Daniel's) and Mike Yaghmai (eBay). David spoke about the problems posed by the counterfeit spirit industry and of the benefits derived from the formation of the International Federation of Spirit Producers (IFSP), while Mike waxed lyrical on the virtues of eBay's VeRO take-down scheme for suspected fake sales sites. Both presentations were of good quality, but were they a good idea?

Right: David Gooder (Jack Daniel's) lectures the professors

An official but unattributable source suggested that this was what the professors really and truly wanted, but the IPKat's own little survey suggests the opposite: IP professors are actually far happier talking than they are when they're listening, and they're happiest when they're talking to one another. INTA, please take note for next year! And don't forget the IPKat's yoghurt ...

The next big thing for the IPKat was the job of moderating the Professors' Panel session, "The Hitchhiker's Guide to Privilege and Ethics in Cyberspace and the Real World". He was fortunate to find a packed room humming with eager anticipation, three professors who knew their stuff and kept to the timetable, and three terrific topics to keep the serried masses on the edges of their comfy seats.  John T. Cross (left) explained what privilege was, how it did-or-didn't work, who was entitled to it, why trade mark practitioners other than fully qualified lawyers raise tricky issues, and why the AIPPI proposals on privileged communication with IP advisers are unlikely to be adopted.  David Hricik then spoke of the stringent and inconsistently-applied rules on ethics in the US as they affect investigations made by IP owners in contemplation of infringement litigation. Finally Tom Folsom launched into a provocative argument that, in cyberspace, it was more important to address infringement in terms of nailing down uses of words that misdirected or blocked off the flow of information than to mark out territories for exclusive use or control. 

After lunch the Kat crept into the cavernous Salon 6A, where he joined a disappointingly small audience in listening to three very positive and lively papers covering the current legal position in Chile (Juan Pablo Egana) and Brazil (Sandra Leis), as well as a round-up of the almost endless regional and international initiatives on IP enforcement in which Mexico has been involved in recent years (Martin Michaus).  No-one -- not even INTA -- can stop registrants wandering round the receptions and nibbling other people's peanuts for an hour and a quarter, or worshipping at the local shrine of Nordstrom. However, it does seem a shame that so much effort and expertise went into the preparation and delivery of some excellent current wisdom by a panel with nearly a century of practice between them, when so few of the 7,000+ INTA-ites were there to benefit from it. 

Two more treats were in store for the Kat. First, the 5th Annual Meet the Bloggers session, generously hosted at the Pier 70 Waterfront offices of local IP practice Graham & Dunn, thanks to Seattle Trademark Lawyer, blogger Michael Atkins. For three hours or more, seasoned intellectual property lawyers swapped cards, anecdotes and aspirations with enthusiastic neophytes, while those who were there for the sheer pleasure of it all could sip their ale while gazing wistfully out to sea (left).

Finally, the Kat paid his respects to this year's President, Richard Heath, who had thoughtfully combined his Silver Wedding Anniversary celebrations with this year's INTA Meeting so that he could make sure he had all his trade mark friends to celebrate with him Happy Anniversary, Mr and Mrs H, from all of us!

Monday, 18 May 2009

INTA report: day one, Sunday 17 May

The IPKat was hampered in his attempt to bring you a picture of events in Seattle on the first day of the International Trademark Association (INTA) 131st Annual Meeting by his inability to be in several places at the same time. Still, he covered a good deal of ground (pedometer reading 20,901 paces) since he first ventured off to the Convention Center for registration.

The first big event of the day for him was to read the INTA Daily News, expertly published by Managing Intellectual Property and designed to provide lots of interesting reading material even when there hasn't been much news yet. Two things in this issue caught the Kat's eye. The first was the inclusion of ENCARTA in a list headed "Popular Microsoft Brands". The second was a quote from INTA Madrid System Subcommittee chair Nadine Jacobson:

"This [news of the one millionth trade mark registration under the Madrid System] shows that the Madrid System is still very attractive after more than 100 years ...".
The IPKat thinks the Madrid System wasn't very popular at all until the 1990s, when the Madrid Protocol gave it sufficient appeal for most of the world to stop ignoring it, but the world is big enough for more than one opinion.

Much of the rest of the afternoon was spent darting between a selection of pleasantly beery receptions and wandering round the Exhibition Hall, where more than 90 publishers, service suppliers, organisations and trade mark practitioners have set out their booths -- some quite lavishly. Finally at 5pm came the big treat of the day, the Opening Ceremony. Usually this is a bit of an embarrassment, with a small scattering of dutiful registrants dutifully sitting themselves at random around a cavernous hall in order to hear the speeches while their many colleagues are frolicking around in the sunshine. This time, though, the auditorium was packed; the audience was rapt. Some cynics might say that this was in some way connected to the choice of Elle Macpherson (left) as keynote speaker.

The IPKat can however assure readers that nothing was further from the truth. He has it on good authority that the assembled masses had come only to pay homage to a dashing redhead with peachlike complexion and a winning smile -- the lovely Richard Heath (right), who melted all our hearts with talk of expanding private/public partnerships, putting the can on ICANN so far as introducing more general top-level domains is concerned, establishing regional councils and coordinating their assault on counterfeiting, and so on.

Following on from Richard and a neat double-act by the Meeting Co-chairs Katrina Burchell and David Grace came Elle Macpherson herself [historical query: is this the first time in INTA's history that neither the President nor the keynote speaker had American accents?]. Elle spoke eloquently and fluently of her brand -- Elle Macpherson Intimates.

The presentation, delivered to a backdrop of photographs of the speaker which many of us would get sacked for looking at over the internet during work hours, focused on the development of the brand from a series of casual but consistent decisions made early in the model's career (she called herself "the accidental executive") to the point at which it had become a commercial product and a vehicle for corporate responsibility. 

Funding of the business came from Elle's successful modelling career which, while it made her feel increasingly insecure and objectified, provided her with the financial independence to escapethe tyranny of the camera lens and pursue her own business objectives. She emphasised the key lesson which her mentors taught her: "learn to listen; listen to learn".

It was apparent that Elle's notion of corporate responsibility was not a limited and trivial one, but rather one that applied across the board. She mentioned how brand-based businesses flourished in the boom-time of the 1980s and 1990s, describing this as "a culture of debt-fuelled consicuous consumerism" which has since collapsed. It would be sad if our generation were to be defined by notions of consumer waste, at a time when issues such as durability, sustainability and carbon footprints have risen to the fore. If BP could shift their brand ethos from "British Petroleum" to "Beyond Petroleum", this was proof that the face of a brand could be redefined in response to public concerns and consumer demand.

Elle also spoke powerfully about the communication of a brand's ethos. Gone were the days when communication was one-way, from brand owner to consumer. The internet has now redefined channels of communication, both interactively between brand-owner and consumer and between consumers themselves. Citing the recent climb-down by Marks & Spencer over its two-tier pricing policy for brassieres, she added: "Global society has become hardened to brand insincerity", this being one of the objectives which her own brand sought to avoid.

After explaining the 'lyrical poem' of her brand's key values -- faith, intimacy (which is not synonymous with sex), spontaneity, evolution, rebel, tribal, true -- she closed with a chilling reminder that consumerism and consumption are not the same thing: "for some the choice is not between brands of shoes but between shoes and food".

Sunday, 17 May 2009

CFI rules in Elio Fiorucci dispute

The CFI has delivered its judgment in Elio Fiorucci v OHIM, a case concerning the ability of a designer who assigns his business and related IP to another company, to object when that other company tries to register his name as a Community trade mark.

Elio Fiorucci effectively sold all of his IP rights and all the rights exclusively to use the designation “FIORUCCI” and exclusively to manufacture and sell the clothes and other goods bearing the name “FIORUCCI” to Edwin & Co Ltd in 1990. In 1997, Edwin applied to register ELIO FIORUCCI as a CTM in Classes 3, 18 and 25. The CTM was registered in 1999, but in 2003 Fiorucci applied to have the mark invalidated under Art.51(1)(c) and Art.52(2) CTMR. The mark was invalidated by the Cancellation Division, but that decison was annulled by the Board of Appeal. The designer appealed to the CFI.

The CFI partially annulled the decision.

The Art.51(1)(c) case was a textbook application of Elizabeth Emanuel. The public is used to businesses being conducted under the names of designers, even when the designers are no longer involved. Thus neither the mark itself, nor its use by Edwin, was liable to mislead the public, as the Board had correctly found.

The Art.52(2)(a) case was more complicated. This article allows for marks to be invalidated when their registration would be prohibited under national laws regarding the protection of personal names. Article 8(3) of the Italian Codice della Proprietà Industrial states that ‘If they are well known, the following may be registered as a trade mark by the proprietor, or with the consent of the latter or of the persons referred to in paragraph 1: personal names...’ The Board said that this did not apply here because it applied only where the renown attached to a person’s name results from a ‘first use outside the market’, which was not the case with regard to the applicant’s name.

The Board was in a difficult position here as there was no case law on the provision. However, the CFI found that it had erred.

The Board's decision made a distinction between different sectors that was not to be found in the Italian Act, and was unworkable. Even if the name had been used or registered as a trade mark, Article 8(3) could still apply, particularly because the name could be the subject of an additional registration in an different class of goods or services. Also, learned writings from Italian commentators did not support the Board's position. Finally, Mr Fiorucci had gained a reputation outside the commercial field by virtue of his cultural persuits.

The IPKat can't help but feel sorry for the Board of Appeal here, since it had to interpret a provision of national law which appears to have been the subject of very little previous litigation.

Saturday, 16 May 2009

Pirate Bay: more allegations against Judge Norström

More allegations in the Pirate Bay case (see earlier posts here and here): Wired reports that lawyers for Frederik Neij, Gottfrid Svartholm Warg, Carl Lundstrom and Peter Sunde, who were found guilty of breaking copyright laws by a Swedish Court in April, are now accusing the "....Swedish courts of secretly steering the case to a hostile judge".

Photo from

According to this latest report Pirate Bay's defense lawyers allege that the presiding judge in the Pirate Bay case, Tomas Norström, may not have been chosen randomly as required under Swedish law. Per Samuelson, one of the lawyers, told Swedish television station SVT: "We’ve found some things, particularly about the random selection. It doesn't seem to have been random.” Mr. Samuelson did not elaborate further what these 'things' may be.

Whether the latest allegations have any merit or have to be regarded as a solely tactical move is unclear and the IPKat predicts that this is not the last we will hear from Pirate Bay's defense team. Our readers may recall that it was previously revealed that Judge Norström was a member of the Swedish Copyright Association as well as a board member of the Swedish Association for the Protection of Industrial Property and thus may have been biased.

Friday, 15 May 2009

Meet the Bloggers, Meet the Profs

IPKat team member Jeremy is now in Seattle, where he is gearing himself up for several days of intensive networking, discussion and education at the 131st International Trademark Association Meeting (click here for full programme). Apart from the Meet the Bloggers get-together (hosted this year by Seattle Trademark Lawyer Michael Atkins), to which all readers are cordially invited (details here), his main preoccupation is the session on Monday 18 May that will be held on "A Hitchhiker's Guide to Privilege, Ethics and Law in Cyberspace and the Real World". Don't be fooled by the line-up of speakers (Professors John T. Cross, David Hricik and Thomas C. Folsom) into thinking that this is mere theory: although the speakers are academics, the subject is a real live one -- a subject that many practitioners and their clients have yet to wake up to. Come to this session, which Jeremy is moderating, and you won't be disappointed!

More on keywords... and a clarification

The European Court of Justice (ECJ) has now published the official translation of the question the German Federal Supreme Court (Bundesgerichtshof) recently referred to the ECJ in the keyword case "bananabay" (BGH I ZR 125/07), now called " GmbH v BBY Vertriebsgesellschaft mbH" (Case C-91/09). The question is set out below. IPKat readers may recall the IPKat's earlier translation attempt which can be accessed here if you are linguistically inclined and/or would like to compare whether the Kat got it right.

"Is there use for the purposes of Article 5(1)(a) of Directive 89/104/EEC where a third party provides as a keyword to a search engine operator a sign which is identical with a trade mark, without the consent of the proprietor of that trade mark, so that, on inputting the sign identical with the trade mark as a search term into the search engine, an electronic promotional link to the third party's website advertising identical goods or services appears in an advertising block set apart from the list of search results, that link is marked as a sponsored link and the advertisement itself does not comprise the sign nor contain any reference to the trade mark proprietor or to the products it is offering for sale?"

This Kat would like to take this opportunity to stress that the Bundesgerichtshof did not refer the following question to the ECJ, as erroneously reported by several commentators recently. (Please also see the IPKat's post here which includes the IPKat's original prediction what the Bundesgerichtshof's question might be based on the court's advance press release.) While this Kat is rather flattered that her Adword question made it into so many articles, she feels that this point needed to be clarified:

"Does the use of a third party's trade mark as a keyword/Adword on identical goods/services constitute trade mark infringement under the Directive?"

Thursday, 14 May 2009

"McCurry is also an existing Scottish name"...

From Malaysia reaches us the news of the outcome of an "eight year trade mark battle" over the use of the mark "McCurry" for restaurant services between P. Suppiah the owner of an Indian restaurant in Jalan Ipoh, Malaysia and fast food giant McDonald's.

According to a report by Malaysian news site "The Star" McDonald's filed a law suit against Mr. P. Suppiah in 2001 trying to stop him from using the prefix "Mc" because it could cause confusion and could lead consumers to associate his "McCurry Restaurant"restaurant with McDonald’s. The problems appear to have started after Mr. Suppiah re-branded his restaurant as "McCurry"; after it had previously been known under the perhaps less evocative name "Restoran Penang Curry House (KL) Sdn Bhd".

McDonald's reportedly argued that the prefix "Mc" had to be considered as a trade mark and that through the use of the prefix "Mc", in combination with the word "Curry", McCurry Restaurant had misrepresented itself as being associated with McDonald’s. While the first instance court had initially ruled in McDonald’s favour in 2006, the Court of Appeal has now decided in Mr. Suppiah favour.

Artwork from

While the IPKat can see some merit in McDonald's arguments, particularly because Mr. Suppiah's restaurant not only served Indian food but also "common Western dishes like hot dogs" and apparently used the colours yellow and red for his restaurant's get up, the Malaysian Court of Appeal disagreed. Judge Datuk Gopal Sri Ramis is cited as saying that "reasonable persons" would not associate McCurry with the McDonald’s mark. The judge reportedly added that the fact that McCurry Restaurant chose the name ‘McCurry’, could not by itself been interpreted that it sought to obtain an unfair advantage from the usage of the prefix ‘Mc’. The judge further emphasized that McDonald's did not have a monoploy in the prefix Mc:

"... you have to look at the plaintiff's getup or logo as a whole ... it consists of a distinctive golden arched 'M' with the word, McDonald's, against a red background."

[In contrast] "... the defendant's (McCurry) signboard carried the words 'Restoran McCurry' with the lettering in white and grey on a red background with a picture of a chicken giving a double thumbsup and with the wording, 'Malaysian Chicken Curry'."

McDonald’s can file an appeal against the decision in the Malaysian Federal Court. According to a report by the Chicago Tribune, McDonald's is said to be disappointed with the court's ruling, but has so far declined to comment. And so, for the time being, the last word goes to happy Mr. Suppiah who is quoted as saying "McCurry is also an existing Scottish name".

Wednesday, 13 May 2009

BREAKING NEWS: eBay beats L'Oréal in France

In what some cynics would describe as a rare victory for a foreign internet business on French soil, eBay has emerged successful from the trade mark infringement action brought against it by cosmetics giant L'Oréal. According to information from the IPKat's friend Stephanie Bodoni (Bloomberg), the trial court considered that eBay had met its legal obligation to combat fake products.

Right: L'Oréal's products are appealing -- but will the company do likewise?

The Tribunal de Grande Instance de Paris has now called for the warring companies to go to mediation in order to develop together a constructive course of conduct that must be placed before the court by 25 May for its approval.

In the court's view, eBay had acted in good faith by establishing means to fight counterfeits on its online auction platform”. Added Judge Elisabeth Belfort, in her 24-page decision this morning,

"Preventing counterfeits will only be effective through a close collaboration between rights holders and eBay.”
This ruling is eBay’s first victory in a French court, less than a year after the same company was ordered to pay compensation to Hermès International and LVMH Moet Hennessy Louis Vuitton SA (see IPKat post here; see also here).

L'Oréal has sued eBay not only in France but in at least four other jurisdictions, claiming that the auction site profits from sales of fakes and that it goes too far by asking brand owners to help police auctions. It was its contention that eBay’s software bids on behalf of buyers, handles payments and ensures the delivery of goods, making it not merely a venue or a means through which sales are conducted but an actual participant in its customers' sales. The company had sought sought 3.5 million euros to compensate it for the loss allegedly inflicted by eBay in terms of undermining its distribution system, as well as the appointment of an expert to tally up its income lost to counterfeiters.

eBay says it does all it can to fight fakes, employing a team of 2,000 people and allocating an online crime-fighting budget of US$10 million a year. Far from being a pirates' haven, eBay says that fewer than 0.2 percent of the 2.7 billion listings on eBay’s site last year were identified as potentially counterfeit.

The IPKat believes that judgment is currently awaited in an action in England and Wales between the same parties, heard by Mr Justice Arnold earlier this year.

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