Dictionary of Intellectual Property Law

Triad of protection

noreply@blogger.com (Peter Groves) — Sat, 14 Jan 2017 19:35:00 +0000

An expression apparently coined by Joachim Bornkamm, judge of the Budesgerichtshof (German Federal Supreme Court), now retired, and professor at the University of Freiburg, in his Stephen Stewart Memorial Lecture of 1999, to describe the three-part test for conflicts in the European Union trade mark system (double identity, similarity plus likelihood of confusion, and unfair advantage or tarnishment).

The second edition

noreply@blogger.com (Peter Groves) — Fri, 18 Nov 2016 11:04:00 +0000

I am about to start in earnest on a second edition of the Dictionary - so this is your opportunity to let me know what I should include. Headings only thank you - I am not seeking complete entries. Writing the definitions is my job - and it's what gives me enjoyment, especially when someone says to me "I didn't realise you were so funny!".

European Patent (partly revised definition)

noreply@blogger.com (Peter Groves) — Fri, 14 Oct 2016 18:29:00 +0000

Still a misnomer, although the European Union Patent [q.v.] will more closely resemble a European Patent than the bundle of national rights that the European Patent Office has been granting so far in its existence.

Although the patents making up that bundle are referred to as European Patents, they are effective only in the contracting states which the applicant has designated. In EPO documents, including published versions of the application and the granted patent, the letters "EP" precede the patent's number in much the same way that the letters "GB" would be used internationally to identify a UK patent (although there are better examples). If the patent is then the subject of legal proceedings, it will be referred to as a European Patent (UK).

Brexit

noreply@blogger.com (Peter Groves) — Fri, 14 Oct 2016 18:15:00 +0000

A blend of the words "British" and "exit" [from the European Union], coined by The Economist in 2012 but inspired by the earlier coining "Grexit" which dates from the time not long ago when Greek membership of the European Union seemed unsustainable. The main difference between the two might turn out to be that whereas Grexit was avoided, Brexit will become a reality, although it has frequently been described in the aftermath of the referendum of 23 June 2016 which gave the government its mandate to pursue it as a delusion.

The popular vote, in which 37.74 per cent of the electorate voted to leave, was advisory only, but this nicety may have been lost on many voters and it certainly does not appear to have had any influence on the government. The process of leaving the European Union requires the UK to give notice under Article 50 of the Treaty of Lisbon, and will be completed (unless all Member States agree to an extension, which is so unlikely that it can be ignored) two years later. The UK government has announced that it will give such notice by the end of March 2017, so the UK should cease to be a member of the EU on 1 April 2019. Whether the UK or what some of our politicians are pleased to call the "rump" EU will be the April Fools remains to be seen.

In the intellectual property law field, Brexit will not perhaps be quite as disastrous as in other areas. Indeed, repatriating intellectual property law and being able to ignore some idiosyncratic decisions of the Court of Justice could be a major improvement over the present situation. Primary legislation based on directives should survive Brexit unscathed, and secondary legislation under section 2(2) of the European Communities Act 1972 which implements EU obligations will, the government promises, be brought under some new statutory authority, so there will be no immediate changes to the law. The powers given under s.2(2) have been useful in that they have obviated a need for Parliamentary time to be found to change the primary legislation on copyright, trade marks and registered designs: in the future copyright law especially might have greater difficulty keeping up with technological change, but we might be spared other changes like the the Trade Marks (Proof of Use, etc.) Regulations 2004 which amended the anti-dilution provisions of the Trade Marks Act 1994 to remove the limitation to the situation where the parties' goods or services were dissimilar.

In two areas Brexit will have a significant impact on intellectual property law. First, owners of EU trade marks and registered designs will have to secure separate rights in the UK: some mechanism for achieving this is likely to be put in place before Brexit actually happens, but in the meantime applicants for EU rights are likely to consider applying for national rights in the UK too. Second, the Unified Patent Court agreement provides specifically that it must be ratified by the three states with the most European Patents in force, namely France, Germany and the United Kingdom, of which the UK might not feel any pressing urgency to take that crucial step.

Innovation patent (Australia)

noreply@blogger.com (Peter Groves) — Mon, 21 Sep 2015 04:18:00 +0000

The Dictionary contains a brief definition of 'innovation patent', a form of utility-model protection (or petty patent) known to Australian law. Now, following a report by the Advisory Council on Intellectual Property (ACIP) in May 2015 recommending that the government consider abolishing it altogether, IP Australia is seeking public submissions on the recommendation. ACIP had spent three years on its report before finding itself unable to come down in favour or against innovation patents, but it seems like an unloved intellectual property right which will have few supporters when the consultation closes (28 September). Having written that, I will probably be proved completely wrong.

PS: The Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Bill 2019 has now been passed by both houses of Australia’s Federal Parliament, abolishing the innovation patent system in mid 2021. It does not have retroactive effect and existing rights will not be affected. So I was not wrong.

Panoramic Freedom, Freedom of Panorama

noreply@blogger.com (Peter Groves) — Sat, 27 Jun 2015 21:08:00 +0000

From the German, Panoramafreiheit. The freedom to take photographs and make other images of buildings, sculptures and other features of the man-made landscape that may be protected by copyright. The 1709 Blog reports that the right is more liberally granted in the common law copyright countries than in the civil law world.

'via Blog this'

Innovation patent (Australia)

noreply@blogger.com (Peter Groves) — Fri, 19 Jun 2015 16:31:00 +0000

I included a short definition of "innovation patent" (basically, Australian for "petty patent") in the Dictionary. Now Warwick Rothnie's excellent Patentology blog reveals that the Advisory Council on Intellectual Property has suggested that the law on the subject be repealed.

Reversion, reversionary rights

noreply@blogger.com (Peter Groves) — Tue, 21 Apr 2015 10:48:00 +0000

It is common for copyright assignments, so as not to be unreasonably in restraint of trade, to be subject to statutory provisions cutting them short during the post-mortem term of protection. In UK copyright law (strictly speaking, in Imperial copyright) the Copyright Act 1911 dealt with the reversion of copyright in the proviso to section 5(2):

(2) The owner of the copyright in any work may assign the right, either wholly or partially, and either generally or subject to limitations to any particular country, and either for the whole term of the copyright or for any part thereof, and may grant any interest in the right by licence, but no such assignment or grant shall be valid unless it is in writing signed by the owner of the right in respect of which the assignment or grant is made, or by his duly authorised agent

Provided that where the author of a work is the first owner of the copyright therein, no assignment of the copyright, and no grant of any interest therein, made by him otherwise than by will after the passing of this Act, shall be operative to vest in the assignee or grantee any rights with respect to the copyright in the work beyond the expiration of twenty-five years from the death of the author, and the reversionary interest in the copyright expectant on the termination of that period shall on the death of the author, notwithstanding any agreement to the contrary, devolve on his legal personal representatives as part of his estate, and any agreement entered into by him as to the disposition of such reversionary interest shall be null and void.

This was tied up with the extension of copyright protection to 50 years post mortem auctoris in the 1911 Act. Under the 1842 Act it had been seven years PMA, or a maximum of 42 from first publication. Paragraoh 28(3) of Schedule 7 to the 1956 Act preserved the proviso, for certain types of assignment made before 1 June 1957 (when the 1956 Act came into operation). In Redwood Music v Francis Day & Hunter [1978] RPC 429 Goff J (at 434) noted that Parliament had not thought fit to continue with the proviso in the 1956 Act. Paragraph 27(1) of Schedule 1 to the 1988 Act again preserved the proviso, which was far from being a dead letter: an assignment made as recently as 31 May 1957 would have been prevented from dealing with the second half of the 50 year post mortem period of protection, so the proviso retains some potency even now. However, it is now settled that the proviso does not apply to post-1 June 1957 assignments: Novello & Company v Keith Prowse Music Publishing Co Ltd [2004] EWHC 766 (Ch). There, the parties both claimed copyright in various works by the celebrated English composer, Richard Addinsell (1904-1977), most famous for his "Warsaw Concerto", from the music to the 1941 film Dangerous Moonlight (known much less romantically in the United States, at whom as propaganda it was clearly aimed - just look at the clip to which I gave you the link above - as Suicide Squadron). Novello claimed under an assignment made in 2000, which would have been ineffective if earlier assignments dating from the 1940s and 1973 had dealt with the reversionary rights. The earlier assignments could not have included the reversion, but the 1973 instrument, Patten J held, did (and it is worth noting that it expressly mentioned that it was intended to ensure that the assignment of rights was dealt with under the 1956 Act).

In the United States, which is perhaps the only country which still retains reversionary rights for contemporary works and assignments, the rights revert after 35 years (with no consideration of whether the post mortem term has begun).

Tacking

noreply@blogger.com (Peter Groves) — Tue, 27 Jan 2015 07:46:00 +0000

A clever way of manipulating the priority system in international trade mark law. Described by Tim Satzmann in the Duets blog here.

Trade-mark

noreply@blogger.com (Peter Groves) — Mon, 26 Jan 2015 17:10:00 +0000

What's the point of writing something when it has already been said so well by someone else? This paragraph (there is more that you can read there) is reposted with his kind permission from Howard Knopf's Excess Copyright blog:

The hyphenated spelling of “trade-mark” had become something of an – ahem – trade-mark for Canada. It was a bold proclamation of independence and innovative thinking when Bob Kelly - an arcane and erudite veteran of the Department of Justice from a bygone era – came up with this bright idea. That hyphen was inserted in 1993 and served a useful purpose, since many people were confused between the American/WIPO spelling ("trademark") and the British spelling ("trade mark"), which the Brits still use. After all, isn’t the purpose of trade-marks law to avoid confusion? Canada had earlier used the British spelling. So - we are now following the American lead...Hopefully, this capitulation will appease the Americans and they will back down on term extension, prevention of parallel imports, repealing fair dealing, jail terms for petty infringers, ACTA implementation, the TPP and other aggressive efforts. As if!

Once upon a time, I was persuaded by a friend that the UK should move to making 'trade mark' a single word, drawing an analogy with the way 'copy-right' had gone. The relentless incoming tide of American cultural imperialism has since caused me greatly to regret ever entertaining such a view, and that Canada should have succumbed (even if the prizes mentioned in Howard's final sentence above might provide some justification) is most regrettable.

UGC

noreply@blogger.com (Peter Groves) — Wed, 12 Nov 2014 14:56:00 +0000

User-generated content: material created by users of an online service and uploaded to (for example) a website. An increasingly important class of material that may be protected by copyright.

Pioneer patent (US)

noreply@blogger.com (Peter Groves) — Fri, 06 Jun 2014 09:53:00 +0000

A patent disclosing a function so novel that the patent enjoys a broad range of equivalents, under the US Supreme Court's decision in Westinghouse v Boyden Power Brake Co. 170 U.S. 537 (1898).
The Court said there that the term 'is commonly understood to denote a patent covering a function never before performed, a wholly novel device, or one of such novelty and importance as to mark a distinct step in the progress of the art'. A sort of super-inventive step, then. The electrical telegraph and the telephone are often cited as examples. Perhaps the Dyson twin-cyclone vacuum cleaner ought to be on that list too.

Trade mark

noreply@blogger.com (Peter Groves) — Fri, 06 Jun 2014 09:22:00 +0000

I started thinking, in an idle moment as I drank my first (and, so far, only) coffee of the day, about the meaning of the phrase 'trade mark', or if you will the word 'trademark' (but I won't). First, I tried to remember (successfully) what the Russian for 'trade mark' is: товарный знак (tovarniy znak), which intrigued me when I first added it to my vocabulary because of the relationship between trade (товарный) and comrade (товарищ), a word which nowadays has no place in even an extensive Russian vocabulary. And now I find that it's similar (in appearance and sound, but not meaning) to твёрдый знак, the hard sign (ъ) of the Russian version of the Cyrillic alphabet (equivalent to the ultra-short vowel 'yer' in Bulgarian, it seems, which goes some way to explaining the different spellings in Russian and Bulgarian of the word for 'court', in the judicial not romantic sense). That знак can mean sign or mark is hardly surprising: its phonetic near-equivalent in English is amusing. Well, it is if you are easily amused.

Of course, the Trade Marks Act 1994 defines a trade mark with some precision. It means a particular type of sign. The 1938 Act defined it as a type of mark. A mark is something that appears on a surface, whether something put there deliberately which you'd want to keep or something that got there by accident and you would prefer to wash away or wipe off. A sign is something wider than that, and the word has been used in religious and other contexts to denote something intangible, so the use of that generic word instead of 'mark' is consistent with the registrability under the (no longer) new law of sounds, smells, colours and other exotica. And equally знак serves as a word for a letter of the alphabet (perhaps not properly referred to as a letter) or punctuation mark, and a sign used to identify a business. I wonder whether exotic trade marks are registrable under Russian law? Given that it bears a fairly close resemblance to EU trade mark law, it seems quite likely.

Interesting as that might be (is it?), I am more interested in the first word of the phrase. In the definition of 'trade mark' in section 68 of the 1938 Act, the mark is 'used ... in relation to goods for the purpose of indicating ... a connection in the course of trade between the goods and some person having the right either as the proprietor or registered user to use the mark ...'. In the 1994 Act (and the Directive from which it is derived) a trade mark is a sign which is capable of distinguishing the goods and services of one undertaking from those of other undertakings. Interesting shift from considering the use of the mark to the function of the sign. No wonder there is such confusion under the 'new' law about 'trade mark use'.

Revendication (French)

noreply@blogger.com (Peter Groves) — Thu, 24 Apr 2014 06:12:00 +0000

Patent claim.

Opting back

noreply@blogger.com (Peter Groves) — Thu, 23 Jan 2014 19:26:00 +0000

Trade mark protection may be secured in the European Union by designating it in an International application under the Madrid Protocol. The extension to the EU may fail, just as an ordinary application for a Community trade mark may fail, for many reasons - but a CTM is particularly vulnerable because of the possibility that there are prior national rights, such as an earlier trade mark, in one of the 28 Member States.

The procedure for an ordinary CTM application allows the applicant to convert (at no small expense) the application into a collection of national applications, omitting those Member States where there is a fatal problem. A trade mark owner who has designated the EU through the Protocol may choose to convert the designation of the European Union into either a national application filed directly with the Member States concerned (as would be the case with a directly-filed CTM) or a subsequent designation of those Member States under the Madrid system. This is known as 'Opting Back'. Subsequent designations must be submitted on form MM16, and will bear the date on which the designation of the EU was recorded in the International Register (Rule 24 of the Common Regulations, as amended). This enables the applicant to retain the cost advantages of the Madrid System, and reduces the effect of dependency and central attack for EU designations.

See WIPO Information Notice No. 2/2004, January 12, 2004.

Expedition to Luxembourg

noreply@blogger.com (Peter Groves) — Thu, 23 Jan 2014 18:08:00 +0000

The memorable phrase used by Jacob LJ in Budejovicky Budvar Narodni Podnik v Anheuser-Busch Inc [2009] EWCA Civ 1022 at [25], (2010) 33(1) IPD 33003, [2010] RPC 7 (20 October 2009) to describe a reference to the Court of Justice for a preliminary ruling on the interpretation of a point of European Union law.

Concrete

noreply@blogger.com (Peter Groves) — Thu, 09 Jan 2014 15:16:00 +0000

The nature of the tests to be applied in the European Union in determining whether a trade mark is barred from registration because it is devoid of distinctive character, descriptive, or generic (Article 3.1(b) to (d) of the Directive, Article 7.1(b) to (d) of the Community trade mark regulation). The mark has to be considered in the light of all the circumstances, including crucially the context of the goods or services for which it is to be registered, not in the abstract. Case C-299/99, Philips Electronics BV v Remington Consumer Products [2002] ECR I-5475, para 59 and 63.

MPAA Banned From Using Piracy and Theft Terms in Hotfile Trial | TorrentFreak

noreply@blogger.com (Peter Groves) — Fri, 20 Dec 2013 19:34:00 +0000

MPAA Banned From Using Piracy and Theft Terms in Hotfile Trial | TorrentFreak

LawProse Lesson #146: The IP bar’s special use of “comprise” | LawProse Blog

noreply@blogger.com (Peter Groves) — Tue, 17 Dec 2013 22:20:00 +0000

LawProse Lesson #146: The IP bar’s special use of “comprise” | LawProse Blog

Extended copyright

noreply@blogger.com (Peter Groves) — Tue, 08 Oct 2013 17:54:00 +0000

When copyright terms increased on 1 January 1996, the new terms were applied to existing copyright works. All works that were still in copyright on 31 December 1995, including works in which copyright would have expired on the stroke of midnight that day, had copyright extended where the new rules on copyright terms gave a longer term.

Revived copyright

noreply@blogger.com (Peter Groves) — Tue, 08 Oct 2013 17:51:00 +0000

When the term of copyright protection in the UK (and many other countries of the then European Community) was increased in 1995, copyright had already expired on existing works where some of the new, longer term still remained. The works of people who died between 1925 and 1945 were affected: James Joyce, Thomas Hardy, Kenneth Grahame, Edward Elgar, Gustav Holst, the list was long and very distinguished. Copyright was revived where a work was protected in another EEA state under that state's legislation relating to copyright and related rights. As Germany in particular had a longer copyright term than that in the UK for many works, this led to a number of works being brought back into copyright in the UK.

Where copyright was revived, transitional provisions and savings protected those who were exploiting or who wanted to exploit such a copyright work in the future. By the end of 2015, they will have run their course. These are:

Doing anything in pursuance of arrangements made before 1 January 1995 does not infringe revived copyright;
Issuing copies to the public made before 1 July 1995, which were made when copyright did not subsist, does not infringe revived copyright;
Anyone can use a work in which copyright has been revived as of right, subject only to payment of a reasonable royalty to the copyright owner (which can be determined by the Copyright Tribunal where there is no agreement); and
Doing something that would infringe copyright at a time where it is not possible by reasonable inquiry to ascertain the name and address of the copyright owner does not infringe revived copyright.

In Sweeney and Anor v. MacMillan Publishers Ltd and Anor [2001] EWHC Ch 460 (22nd November, 2001) the estate of James Joyce, who died in 1941, took action over a new ('reader's', as if it could have been for anyone else) edition of Ulysses. For some reason, the author and publisher had not availed themselves of the licensing of right provisions, and consequently were infringing.

Micawber point

noreply@blogger.com (Peter Groves) — Thu, 05 Sep 2013 09:47:00 +0000

Not necessarily limited to intellectual property cases. An approach identified (and, perhaps, named) by Jacob LJ in Les Laboratoires Servier and others v Apotex Inc and others [2008] EWCA Civ 445, where the appellants seemed to hope that a new crystalline form of the substance in suit would turn up one day. In Charles Dickens's 1850 novel, David Copperfield, Mr Micawber (based on Dickens's own father) lived in the hopeful expectation that "something will turn up".

Nation branding

noreply@blogger.com (Peter Groves) — Thu, 22 Aug 2013 21:13:00 +0000

Measuring, building and managing the reputation of a country, particularly with a view to distinguishing it from other countries. Bearing in mind the story told to me by a friend at INTA about a lawyer who had expressed surprise at learning that there are several different countries in Africa, it could be an art that ought to be more widely practised. Perhaps those countries which are doing it are those which least need to do so, like France which announced a national branding exercise on 28 June 2013, and specifically mentioned trade mark protection as a feature of the process. It even alludes to the trade mark aspect in the domain name, www.marque.france.fr/.

In Britain, which pioneered the technique with the "New" Labour government's "Cool Britannia" approach (in turn based on the "Britain (TM)" pamphlet by Mark Leonard of the think-tank Demos) nation branding is referred to as "public diplomacy". Lord Carter's Public Diplomacy Review (December 2006) offered a redefinition of British public diplomacy (p 72):

work aiming to inform and engage individuals and organisations overseas, in order to improve understanding of and influence for the United Kingdom in a manner consistent with governmental medium and long term goals.

Place branding

noreply@blogger.com (Peter Groves) — Thu, 22 Aug 2013 16:21:00 +0000

An umbrella term encompassing nation branding (qv), region branding and city branding (not qv, because it's pretty clear what those expressions mean once you've got your head round nation branding).

Doctrine of foreign equivalents

noreply@blogger.com (Peter Groves) — Thu, 22 Aug 2013 16:18:00 +0000

A rule applied in United States trademark law which deals not (as one might expect) with identical trade marks registered by the same proprietor for the same (or approximately the same) goods or services (which would be analogous to one meaning of the word "equivalent" in the patents field), but with the meaning of foreign words. Not to be confused with the doctrine of equivalents in patent law, which is another matter altogether.
The rule requires courts and the TTAB to translate foreign words to enable them to decide whether they are registrable, or whether they are confusingly similar to existing marks.
According to the Trademark Manual of Examining Procedure, the test for applying the doctrine is "whether, to those American buyers familiar with the foreign language, the word would denote its English equivalent", and in the case of marks that are descriptive or generic, whether it would have that connotation to the American buyer. It does not go to the status of the word in a foreign language: thus in Carcione v. The Greengrocer, Inc., 205 U.S.P.Q. (BNA) 1075 (E.D. Cal. 1979) it was irrelevant that the expression "greengrocer" has a generic meaning in the original version of the English language, raising the interesting question, where do American consumers buy fruit and veg?