jiplp

Tallinn Airport cannot monopolize the word ‘airport’

2012-01-27T09:41:00.000Z

Author: Anneli Kapp (Käosaar & Co, Estonia)

Tallinna Lennujaam AS v M&A AS, The Harju County Court Decision 2-10-47190, Estonia, 31 May 2011

Journal of Intellectual Property Law & Practice (2012), doi: 10.1093/jiplp/jpr207, first published online: January 22, 2012

The Harju County Court in Estonia has dismissed an action filed by Tallinna Lennujaam AS requesting the transfer of the domain name ‘lennujaam.ee’ (airport.ee), registered in the name of M&A AS.

Legal context

The rules of the Estonian Domain Disputes Committee regulate claims for handing a domain name over to an applicant, but an action can still be based on regulations provided in the Trade Marks Act regarding the infringement of trade mark rights.

The Supreme Court in Estonia found in its Decision 3-2-1-4-06 that the legal protection of the owner of a registered trade mark is derived from Article 14(1) of the Trade Marks Act, according to which the proprietor of a trade mark has the right to prohibit third parties from using similar signs in domain names in the course of trade.

Facts

Tallinna Lennujaam AS (Tallinn Airport Ltd) operates and develops airports belonging to the company which are located in Estonia, including Tallinn Airport. On 29 March 2009, Tallinn Airport was named after Lennart Meri, the president of the Republic of Estonia from 1992 to 2001. Lennart Meri, the first president of the newly independent Estonia, had become a national legend whose character and heritage symbolized statesmanship as well as national pride and the arrival of Estonia on the world stage.

Lennart Meri

The plaintiff affirmed that LENNART MERI TALLINNA LENNUJAAM was a well-known trade mark because the majority of the Estonian population who used the services provided by Tallinn Airport Ltd did so by identifying the ‘lennujaam’ (‘airport’) as LENNART MERI TALLINNA LENNUJAAM. There was thus a likelihood of confusion on the part of the public as many customers had been confused by believing that the website ‘lennujaam.ee’ belonged to Tallinn Airport. Further, the plaintiff contended that the domain name was confusingly similar to the business name Tallinna Lennujaam AS. The plaintiff declared that the domain name ‘lennujaam.ee’ in the defendant's name damaged the reputation of the well-known trade mark LENNART MERI TALLINNA LENNUJAAM and misled the average consumer by giving the impression that there was a commercial connection between the plaintiff and the defendant.

On 13 September 2007 the domain name ‘lennujaam.ee’ was registered in the name of AS M&A (defendant), a sole shareholder of Baltic Tours AS, one of the oldest travel agencies in Estonia. The domain name was used by Baltic Tours AS to sell holidays, business trips, and flight tickets, including tickets for flights from Tallinn Airport.

The defendant argued that there was no likelihood of confusion, because the data of the service provider had been indicated on the website and, moreover, the defendant had been active in a different field of commercial activity (booking and selling of flight tickets) to the plaintiff (airport operating and providing aerial navigation services).

According to the defendant, the statement about LENNART MERI TALLINNA LENNUJAAM being a well-known trade mark was unsubstantiated, considering the fact that Tallinn Airport had only borne the name of Lennart Meri for less than one year, so it could not rule out that the name combination had not yet become well known. Further, the defendant pointed out that the plaintiff had not even determined the extent of legal protection of the putative well-known trade mark. The domain name ‘lennujaam.ee’ was neither identical nor confusingly similar to the trade mark LENNART MERI TALLINNA LENNUJAAM. The defendant declared that the domain name ‘lennujaam.ee’ referred to the characteristics of the services provided on that website and had become customary in good faith business practice. The defendant added that the plaintiff had no right to prohibit the third parties from using the word ‘lennujaam’ (‘airport’) due to its descriptive character.

The defendant claimed that the plaintiff had acted in bad faith by filing the action three years later than the date on which the plaintiff became aware of the alleged infringement of its rights by jeopardizing the investments made for using the domain name ‘lennujaam.ee’ and causing the defendant significant and unjustified costs in connection with the civil action.

Analysis

The judge, having taken into account previous court practice and special literature in the field of trade marks and domain names, concluded that a domain name can have a similar purpose to a trade mark because of its distinguishing, descriptive, and advertising characteristics on the internet. Accordingly, the determination of the extent of legal protection of a domain name should be guided by the Trade Marks Act.

Although, during the hearing, the judge explained to the plaintiff that the relevant evidence should be submitted in order to prove the fact that it was a well-known trade mark, the plaintiff continued to plead that a fact which the court should deem to be a matter of common knowledge did not need to be proved—thus the trade mark LENNART MERI TALLINNA LENNUJAAM should be declared well known without submitting any evidence in support of that proposition. The judge declared that, for the purpose of recognizing a trade mark as being well known, the duration and extent of the use should be taken into consideration and the realization of reputation cannot take place in such a short time. Therefore, the judge did not recognize LENNART MERI TALLINNA LENNUJAAM as being a well-known mark.

The judge noted that, even if the trade mark LENNART MERI TALLINNA LENNUJAAM had been well known, the likelihood of confusion between the trade mark and the domain name was not identified. The judge emphasized that the word ‘lennujaam’ (airport) is customary in the current language and should be free to use, so the plaintiff was not allowed to monopolize the word ‘airport’. Further, the word ‘lennujaam’ is an element of the trade mark LENNART MERI TALLINNA LENNUJAAM which is not subject to protection.

Practical significance

The ‘lennujaam.ee’ case illustrates that the registration of a pertinent and memorable domain name can give a good advantage in business activity. The implementation of such action would have created the situation where the airport operator could interfere in other companies' economic activities by monopolizing the word ‘airport’. If the judge had agreed with the plaintiff's claim that the domain name ‘lennujaam.ee’ infringed its right to its business name Tallinn Airport Ltd, this kind of interpretation would have been unreasonable and contrary to the meaning of regulation of the exclusive right of the trade name.

The dismissal of the action shows that the exclusive right of the well-known trade mark owner is still restricted by such goods and services with which the trade mark became well known and that the scope of legal protection is based on the form of the trade mark in which it became well known. The decision also shows the importance of submitting the relevant evidence during the proceedings.

Protecting product shapes and features: beyond design and trade marks in Australia

2012-01-25T09:26:00.000Z

Author: Amanda Scardamaglia (Swinburne University)

Peter Bodum A/S v DKSH Australia Pty Ltd (2011) 92 IPR 222, Full Court of the Federal Court of Australia, 5 August 2011

Journal of Intellectual Property Law & Practice (2012) doi: 10.1093/jiplp/jpr206, first published online: January 22, 2012

In what has been described by Bodum's lawyers as a landmark legal battle that is possibly the first of its kind in Australia, the Full Court of the Federal Court of Australia has found in favour of the Danish designer and manufacturer of coffee plungers, protecting the distinctive shape and features of its Chambord plunger from imitation, in the absence of design or trade mark registration.

Legal context

The tort of passing off and the related statutory cause of action for misleading and deceptive conduct protect the reputation or goodwill embodied in or attached to certain indicia, including trade marks, trade names, the get-up or packaging of goods, or other forms of activity or material used by a trader, which have acquired a secondary meaning as being distinctive of the trader's goods or services. While these complementary causes of action are widely and successfully used as an adjunct to claims for trade mark infringement, in Australia, the majority of recent claims for passing off and misleading and deceptive conduct based on the reputation in a product's get-up alone have failed.

Some of these cases, including the recent Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 84 IPR 12 decision, failed because the courts found that no secondary reputation subsisted in the features of the product, independent of the trader's distinctive trade mark or other indicia. In other cases, such as Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (2000) 100 FCR 90 and Dr Martens Australia Pty Ltd v Rivers (Australia) Pty Ltd (1999) 95 FCR 136, the courts held that the respondents had sufficiently distinguished their products from the applicant.

That is not to say that a trader has not successfully protected the get-up of its goods in a claim for passing off and misleading and deceptive conduct. See for example Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd (2002) 55 IPR 354.

Bodum goes further, with the Full Court of the Federal Court of Australia recognizing the applicant's reputation in the get-up of its goods, independent of any proprietary rights in the shape or design of its product. In doing so, this decision has raised a number of questions, particularly as to its significance and interpretation in the future. For example, does the decision have the effect of providing quasi design or trade mark protection for the design or shape of a product via the tort of passing off and the statutory prohibition of misleading and deceptive conduct? Or does the case reflect the proper application of the principles of passing off (and misleading and deceptive conduct) which, according to Deane J in Moorgate Tobacco (1984) 156 CLR 414 at 445, have been adapted over time ‘… to meet new circumstances involving the deceptive or confusing use of names, descriptive terms or other indicia to persuade purchasers or customers to believe that goods or services have an association, quality, or endorsement which belongs or would belong to goods or services, of, or associated with another or others’.

Facts

Bodum is a Danish designer and manufacturer of coffee plungers. Its signature coffee plunger is the Chambord, which it has manufactured and sold since the 1950s, although Bodum's Australian subsidiary has only been selling this coffee plunger since the 1980s. Bodum brought proceedings against DKSH, who began importing and selling the Euroline coffee plunger in Australia in 2004. The basis of the claim was that DKSH had adopted the distinctive shape and features of Bodum's Chambord for its Euroline plunger and had engaged in passing off and misleading and deceptive conduct in breach of sections 52 and 53 of the Trade Practices Act 1974 (Cth) (which are now section 18 and section 29 of Schedule 2 of the Competition and Consumer Act 2010 (Cth)). There was no claim for infringement of any registered design or of any shape trade mark, as Bodum had not sought such registration for its Chambord product.

Bodum alleged that DKSH's Euroline plunger embodied each key feature of the Chambord (or features that closely resembled the Chambord). Further, Bodum claimed that although DKSH's packaging and instruction leaflet were marked with the name ‘Euroline’, its product was not marked with any branding or insignia so as to distinguish the Euroline from the Chambord. Thus in advertising or selling the Euroline without any distinguishing labels or branding, DKSH had falsely represented to consumers that the Euroline was the Chambord, or was made, promoted, and sold with the licence, sponsorship, or approval of Bodum: by doing so, consumers were misled and deceived as to the true position or were likely to be misled and deceived as to the true position in breach of sections 52 and 53 of the Trade Practices Act 1974 (Cth). It was also claimed that DKSH had engaged in passing off the Euroline as the Chambord, or as a product sponsored or approved by Bodum.

At first instance, Middleton J dismissed the application (Playcorp Group of Companies Pty Ltd and Another v Peter Bodum A/S and Others (2010) 84 IPR 542). Middleton J accepted that the Bodum brand has a significant reputation in the homeware market, but he did not consider that Bodum had acquired a secondary meaning or reputation in the features of the Chambord plunger. Rather, Middleton J found that the reputation acquired in the Bodum brand was ‘… distinctly tied to its products being properly labelled and sold in conjunction with reinforcing packaging and, significantly, by reference to the Bodum name’. Critical to his reasoning was the fact that

Bodum's presence and dominance has created a situation where it is a well-known brand of some level of sophistication with a separate and distinct identity from look-alike products. This separate identity — its get-up — is never isolated from the Bodum Chambord Coffee Plunger … In this sense, Bodum could be said to be ‘a victim of its own success’ [citing Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 81 IPR 354 at 13].

Even if Bodum had acquired a secondary reputation, Middleton J remained unsatisfied that DKSH's products were sufficiently similar to give rise to the misrepresentation alleged by Bodum. Thus in applying, the ‘with or without’ test, Middleton J found that the absence of the Bodum name and logo on the Euroline plunger meant that a reasonable consumer would understand that the Euroline was not a Bodum product; accordingly, no reasonable consumer was or would likely be misled or deceived by DKSH's adoption of the features and shape alone of the Chambord plunger. Nor would a case for passing off be made out.

Bodum appealed the decision to the Full Court of the Federal Court, where Greenwood and Tracey JJ (Buchanan J dissenting) overturned the trial judge's decision, allowing the appeal.

Analysis

On appeal, the majority found that Middleton J had erred in failing to examine the evidence relating to Bodum's secondary reputation in the shape and features of its coffee plunger. Thus, reviewing the evidence which the trial judge failed to consider, the majority found that Bodum enjoyed a substantial reputation in the features and shape of its Chambord plunger, as those features had become distinctive of the product and its maker. Contrary to the argument of the respondent, the Full Court found that ‘[t]he reputation in the features of the Bodum Chambord Coffee Plunger had been reinforced over time by Bodum's use of its trade mark but that use did not diminish the substantial reputation in the aesthetic features of the product itself’.

As to whether DKSH had sufficiently distinguished its goods from Bodum, the Full Court also disagreed with Middleton J. Noting that the question is ultimately a matter of impression, Greenwood J (with whom Tracey J agreed) noted:

… the adoption on the box of a non-distinctive and descriptive trade mark Euroline for a rival product which for all practical purposes embodies all of the features (that is, copies those features) of the product exhibiting the pronounced and substantial reputation … of the Bodum Chambord Coffee Plunger, is not sufficient to distinguish the rival product from the distinctive product sought to be copied. This is especially so as the rival product and the Bodum product are regularly displayed outside the packaging for each product notwithstanding that it may be that the products are displayed in stand-alone fashion, proximately located to the packaging and in some locations in front of the boxes. It would have been a simple matter for DKSH to mark its name prominently on the box or mark its trade mark and product name prominently on the rival product itself (or at least as prominently as Bodum marks its product) or both. A plainly distinctive differentiating trade mark might also have been selected for use on the box and on the product.

The court concluded that members of the relevant class were likely to think that the largely indistinguishable product embodying the Chambord features was the Bodum product, a version of the Bodum product or in some way sponsored or approved by Bodum.

Practical significance

Despite suggestions to the contrary, this decision does not extend the penumbra of the law of passing off and misleading and deceptive conduct into the domain of designs and shape trade marks. In fact, the majority of the Full Court was at pains to emphasize this point at [266], in clarifying that

… Bodum does not contend that it is entitled to a de facto monopoly in the features of the Bodum Chambord Coffee Plunger or, put more precisely, that it is entitled to remedial relief of any kind on the footing that DKSH has no right to import, sell and offer for sale a rival coffee plunger exhibiting the features of the Bodum Chambord Coffee Plunger.

Thus rather than render design and trade mark protection redundant, this decision appears to encourage manufacturers of products with distinctive designs to protect them under the registered design system and possibly register those designs as a shape trade mark, in order to obtain the kind of monopoly protection referred to.

In the absence of registration, the only thing Bodum was entitled to claim, and what the Full Court found, was that DKSH could not adopt the distinctive features of the Chambord coffee plunger without sufficient distinguishing labelling, so as to ensure that no false representation is made to potential purchasers.

As a consequence, nothing in this decision changes the position set out in Interlego AC v Croner Trading Pty Ltd [1992] FCA 624: in the absence of any infringement of a formal IP right, a rival trader may enter the market and copy the product of another and seek to take some of its market share—so long as the rival does not mislead or deceive the public or pretend that its goods are those of another trader. This decision does, however, highlight to rivals the importance of sufficiently distinguishing their goods, something which the courts have long required [Parkdale Custom Built Furniture Proprietary Limited v Puxu Proprietary Limited (1982) 149 CLR 191].

So while there is no substitute for the protection afforded by the registered design and trade mark system, this decision provides another avenue of protection for traders against rivals with products using similar designs. A manufacturer will only succeed if it has acquired a secondary reputation in the design and the rival has failed to sufficiently distinguish their products.

February JIPLP, with special commercial focus, now online

2012-01-23T18:25:00.000Z

Neil J. Wilkof

The February 2012 issue of the Journal of Intellectual Property Law and Practice (JIPLP) is now available online in its entirety for the benefit of subscribers to the electronic version of the journal. Non-subscribers can access the contents page for this issue and can also purchase short-term access to its articles and Current Intelligence notes.

This issue, which has a focus on transactional and commercial issues, has been guest-edited by a founder member of the JIPLP editorial board -- the distinguished writer, lecturer, commentator and blogger Dr Neil J. Wilkof. Neil also writes the February editorial, which you can read in full here:

"Do we need a rationale for IP sublicensing?

This is the third time that JIPLP has sought to dedicate an issue to commercial and related aspects of IP rights. The focus is to explore various legal aspects of the manner in which IP rights are exploited.

Against this backdrop, let us consider the following question: should we care about the rationale for various types of IP licensing? More likely than not, this matter has not occupied most readers of this journal. For those engaged in IP licensing, the concern is not over any underlying justification, but rather over the nitty–gritty of the licensing arrangement. The questions that occupy us centre on what right is being licensed, under what terms, and for what financial consideration. Any examination of licensing or sublicensing first principles usually does not arise.

That said, it is our view that our collective resistance to addressing first principles has inhibited our ability to provide robust answers to certain questions with respect to IP licensing. In support of my contention, consider the following: In the course of recently giving a public lecture on the subject of sublicensing, I sought to raise the question: what is the rationale for sublicensing? The limited attempts that have been offered to provide an answer seem to focus on patent licensing and to offer agency law as the justification for sublicensing. The problem is that, in addition to the paucity of judgments that support this view, there is case law holding that a licence in fact creates no agency relationship, at least with respect to trade marks. Not only that, but many IP practitioners have been witness to a licence agreement that provides explicitly that no agency is created between the licensor and licensee.

Pushing back against the need for a rationale for sublicensing, two responses were raised. The first maintained that it is ultimately unnecessary to enter into any consideration for the justification of sublicensing in order to engage in it. Just as we ultimately do not need to reach any single resolution about a justification for patents or copyright in order to practise patent or copyright law, so too it is unnecessary to find any rationale for sublicensing. As Nike is wont to say—‘Just Do It’.

The second response is to suggest that there is no need to inquire independently into the justification for sublicensing. The answer can be found simply by analogy to the law of real property. The sublease has been around for longer than any one of us can remember. No one seems to inquire about the justification for the right to grant a sublease. Nevertheless, the right to grant a sublease is unassailable. Given that, and that there are judgments in certain jurisdictions that have explicitly recognized the applicability of lease law principles to IP licensing, the case for sublicensing has been made out, and no further inquiry is needed.

Let's test these push-back responses by posing a follow-up question that I asked the audience that day. Assuming that there is a sublicence in place, in the event that the main licence is terminated, what is the fate of the sublicence? Assume as well that there are no back-to-back provisions in either the main licence or sublicence. The answer would seem to be tied directly to what is the legal rationale for a sublicence—yes, no, maybe?

If the licensee/sublicensor is the agent of the licensor, what do agency principles inform about this situation? Ditto if the analogy to real property is applicable. But what happens if the common-law rules of agency, or the law of real property, are not identical under continental law regimes? And what happens if a trade mark licensing is involved? There, the licensor may not want the sublicensee to continue to use the mark, especially if the relevant jurisdiction requires quality control with respect to the use of the mark by the licensee or sublicensee, and the licensor does not wish to take the necessary steps to ensure that quality control is maintained.

Two observations flow from this battery of questions. First, in my heart of hearts, I believe that we would be better able to provide robust answers if we had a firmer understanding of the first principles that govern sublicensing. Secondly, the rationale for sublicensing may not be monolithic, but rather depend upon the specific IP right being sublicensed. In my humble opinion, both propositions warrant further consideration".

Undercover among the intellectuals (two books reviewed)

2012-01-22T22:03:00.001Z

The Global Governance of Knowledge: Patent Offices and their Clients, Peter Drahos, Cambridge University Press, 2010, ISBN: 9780521144360, Soft cover, 368 pp. Price: £25.99

Intellectual Property, Human Rights and Development: The Role of NGOs and Social Movements, Duncan Matthews, Edward Elgar Publishing, 2011, ISBN: 9781847207852, Hard cover, 304 pp. Price: £75.00

Book review by Christopher Wadlow (Professor of Law, UEA Law School, University of East Anglia, Norwich, UK)

What's it like to work in an intellectual property office, and what kind of intellectual is one likely to find there? Einstein and Housman we know about, but their brief tenures at the Swiss and British patent offices ended more than a century ago, so they hardly count. Are these offices filled with intellectuals in the sense of highbrow, cultured, bookish folk, who might otherwise have gone on to become harmless university professors, fussing over their footnotes; or might they be haunted by intellectuals of another colour altogether, red in thought and deed, from Noam Chomsky to Naomi Klein, from Russian anarchists to Mexican Zapatistas?

When the UK's Patent Office changed its name to the ‘Intellectual Property Office’, no less, with ‘Intellectual’ on a line of its own and more than twice as prominent, I was overcome for a moment by the thought of Concept House transformed into one of Brassaï's seedy left-bank cafés, where louche Parisian habitués and conspiratorial Russians émigrés would assemble at dead of night to drink absinthe and vodka, smoke Gauloises and Sobranies, foment revolution and insurrection, and discuss … Just what? Gustave Eiffel's attempted appropriation of the image of his eponymous tower, perhaps, and Bernard Edelman's celebrated response?1 The registration of ‘Anarchy’ as a trade mark for soap,2 and sports goods?3 The place of Alfred Nobel's dynamite patent in ‘the propaganda of the deed’?4

The first of these two books, by Peter Drahos, has left me sadly disillusioned in this respect, but delighted in others. Drahos is on fine form in The Global Governance of Knowledge, and his well-judged sense of satire is all the more effective for being used to season the dish, rather than smother the flavour. The added piquancy is very necessary since, by his own admission ‘patent office administration … is an excruciatingly dull topic’.

Drahos has conducted interviews at 45 patent offices, and among users and other interested parties, and the result is anything but excruciating to read, although his message is a disquieting one. The core of the book is about patent offices and the way they work, both individually, and increasingly in coordination with one another. There are chapters on the EPO, on the US and Japanese offices, and on trilateral cooperation. There follow individual chapters on the coming generation of patent offices of comparable importance: India, China, South Korea, and Brazil. These case studies are framed by an approximately equal number of chapters in which Drahos expresses his own reservations about the present functioning and future development of the global patent system. Two of his particular concerns are the ‘gaming’ of the system by patent attorneys and their clients for short-term gain in individual cases, but to the long-term detriment of the system as a whole, and the mindlessness with which a one-size-fits-all mentality has been propagated from the developed countries, to the least developed ones. One does not have to buy into every aspect of Drahos's philosophy to agree that there are serious issues here, and there is nowhere where you will find them better documented, or more elegantly presented.

Like Peter Drahos, Duncan Matthews also employs an interview-based methodology and, like Drahos, he has had foisted on him by his publishers a title which is too ambitious by far for what he is really concerned to cover. Just as Drahos's contribution is more accurately described by its subtitle, so Matthews's is about non-governmental organizations, and the role they play in the complex relationship between IP protection, human rights, and development. For this book is the work product from a year spent researching NGOs from the inside; a year embedded inside NGOs, as it were, at the front line of the war against AIDS, HIV, and other human crises.

If that sounds like a mission for PC Mark Kennedy5 then disappointment looms once again. If it is easy access to recreational drugs, running street-fights with les flics, and the all-night debauchery of Le Bal des Quat'z'Arts that you are looking for, then quite frankly the Quaker United Nations Office in Geneva isn't likely to be your scene. Not that Duncan Matthews isn't on the lookout for cheap drugs, but in an entirely blameless sense, unless you happen to be the chief executive of a member of the pharmaceutical industry. His interest is in the success which NGOs have had in promoting human rights objectives, whether in the sense of facilitating access to medicines through compulsory licensing, or allowing indigenous peoples to share in the success (or in the case of the San people of South Africa, the failure) of commercial embodiments of their traditional culture. Unlike the Seattle stone-throwers, these NGOs operate scrupulously within the law, and they pursue their objectives through legal norms and institutions, pitting human rights laws against the IP paradigm of the USTR and the WTO.

Between the introduction and the conclusion, three chapters out of eight have a thematic focus, and three concentrate on specific geographical areas. The first two substantive chapters after the introduction deal with public health and access to medicines, and with agriculture, genetic resources, and traditional knowledge. There follow the three national surveys, for South Africa, Brazil, and India, before we revert, in the final two chapters, to the linkage between IP, human rights, and development, and the role of the NGOs. The style of the book is very much in the academic model with, for instance, a lengthy bibliography, and an introduction precisely setting out the research objectives and methodology, and comparing the former to the pre-existing state of the art.

Thoroughly commendable as Matthews's approach may be in principle, it is not without its problems. The first is that NGOs constitute a very diverse ecosystem. To make the exercise manageable, Mathews deliberately confines his attention to NGOs in the sense of social movements of a particular kind, so as to exclude (for instance) industry lobby groups, associations of IP owners, associations for the improvement or advancement of IP, and associations of IP professionals. A back-of-the-envelope exercise in fitting names (or rather acronyms) to these categories shows that some very big beasts indeed have been excluded from consideration at the very outset. Secondly, he concentrates, as the subtitle indicates, exclusively on the role of this kind of NGO in relation to a limited range of rights-related issues, typically in medicine and agriculture, and in relation to a limited range of strategies by which those aims are pursued.

Fieldwork is always time-consuming, and limitations such as these are perfectly valid in terms of setting the parameters for a research programme. In the wider context, however, there is much more to be said about NGOs in relation to IP than is attempted here. Some (the ALAI, for instance) have been around for longer than the Global IP system itself, taking that as beginning with the Paris and Berne Conventions. Many have had observer status at WIPO (or its predecessors) for a century or more. On the other hand, and as Matthews acknowledges, most of the NGOs of the kind with which he is concerned came to be interested in IP very much later, so late in fact, that few (if any) of them were so much as peripherally interested in the original TRIPS negotiations prior to 1994.

This leads to another common feature of these NGOs, which is that very few of them have IPRs as their primary concern, even in the sense of being opposed to them. Rather, each has an agenda of its own, with which IPRs may engage, for better or for worse, and to a lesser or a greater degree. Their primary concerns are typically with advancing or protecting the social and economic rights of specific disadvantaged minorities, and they tend to see IPRs, and even human rights for that matter, mainly, if not exclusively, in terms of their particular cause. This may be a valid and even necessary perspective for social activists, but it is, by definition, an incomplete one. Ironically, it is little different, in principle, from the narrow-minded instrumentalism that put IPRs high on the agenda for the GATT/WTO Uruguay round in the first place. If Naomi Klein is missing from these pages, as she is, then so is Amartya Sen.

Although major sections of the taxonomic tree have been omitted altogether, the NGOs which remain are both diverse, and very numerous. Some of them are world-renowned ‘brands’ in their own right, like Oxfam or Médecins sans Frontières. Others have a prominence which depends on a single dominant personality, such as James Love's Knowledge Ecology International, formerly Ralph Nader's Consumer Project on Technology. Many, however, are as unknown to fame as they are to Fortune. This is how it should be, if grassroots NGOs are to be ‘owned’ by the people they are supposed to represent, rather than by wealthy (albeit well-meaning) absentee activists, but it makes for rather difficult reading whenever the focus changes rapidly. The sheer number of NGOs referred to leads to most of them being denoted by their initials or acronyms, and many of these are not only unfamiliar at first sight, but entirely meaningless to the inexpert reader. To confuse matters further, acronyms are also used for (inter alia) government departments, international organizations, legal instruments, medical conditions, and chemical compounds. The (very necessary) list of abbreviations runs to six and a half pages, from the inscrutable (3D and A2K), to the familiar (WHO, WIPO, and WTO), although WIMSA makes an appropriately whimsical intrusion to upset the dignity of that triad.

Of these two authors, Peter Drahos has at least ten years more experience in this type of research, and it is he who is the more successful in transforming his raw material into a coherent and eminently readable narrative. Small touches illustrate the deftness of his technique, such as his decision to begin his globetrotting (metaphorically, at least) in the tiny island state of Kiribati, whose population of 100,000 manages to support a patent office all of their own, with 20 granted pharmaceutical patents. In one respect at least, Drahos also has the easier hand to play. Patent offices may have proliferated to an absurd degree, but there are still fewer than 200 of them, they resemble one another more than they differ, and we have a reasonably clear expectation of what they are supposed to do. His ecosystem is relatively small and eminently manageable.

Duncan Matthews, in contrast, has to deal with at least a tenfold increase in the global number of players, and a proportionate increase in their diversity and degree of unfamiliarity to the reader. Matthews is also ill-served by his publishers in two avoidable respects. His text is frequently broken up by badly placed boxes of primary legal materials, presented with unnecessary prominence, and the notes (which are often needed to make sense of the narrative) are set as chapter endnotes rather than as footnotes. It is, unfortunately, rather dated since, although the book was published as recently as 2011, the fieldwork was carried out in 2005–2006. In the final analysis, there must be a lot more to say about NGOs (of all stripes) in relation to the workings of the global IP system than there is room to say here, but others will doubtlessly follow where Duncan Matthews has led the way, and this is an eminently interesting introduction to their world.

*************************************

Footnotes

1 Bernard Edelman and Edgar Roskis, “Beyond the frame”, Le Monde Diplomatique, July 1997, http://mondediplo.com/1997/07/photo (English translation of “La rue privatisée”, http://www.monde-diplomatique.fr/1997/07/EDELMAN/8838).

2 2550631 (Unilever, plc).

3 E3618303 and 2311581 (logo, with characteristic initial A in a circle, Stateside Skates Ltd).

4 John Merriman, The Dynamite Club: How a bombing in Fin-de-Siècle Paris Ignited the Age of Modern Terror (Houghton Mifflin Harcourt, New York 2009).

5 Paul Lewis and Rob Evans, ‘Mark Kennedy: A journey from undercover cop to “bona fide” activist’ The Guardian (10 January 2011).

Fakes in transit: seminar materials now available

2012-01-19T18:58:00.000Z

Yesterday's Fakes in Transit seminar, which was kindly hosted in the High Holborn, London, office of Olswang LLP, provided a great platform for JIPLP editorial board members and contributors to discuss a topic of vital and highly current interest with readers and not-yet-readers alike. A packed audience of 95 enjoyed the following presentations:

* "Customs and Border Control" by Phillip Johnson (PowerPoint available here)

* "The Court of Justice rulings in Nokia and Philips: what are they and what do they mean?" by Marius Schneider (PowerPoint available here)

* "The Commission's Proposal for a new Regulation concerning customs enforcement of IPRs" by Olivier Vrins (PowerPoint available here)

We hope to post a first-hand report of the seminar in the not-too-distant future.

Following the success of this event, JIPLP looks forward to holding further seminars on topics of keen interest and high importance and which, like this one, offer CPD points and make no admission charge. Details of any further events will be posted on this weblog.

Some tips for better style

2012-01-12T21:56:00.000Z

Editing articles and Current Intelligence notes from authors around the world, I am exposed to all manner of literary devices and techniques. Some enhance the reader's understanding and enjoyment of the written word. Others do not. This post seizes the opportunity to mention some recent phenomena which authors are politely invited to avoid:

Folly with footnotes: in common with most other reputable and readable journals, JIPLP uses only one level of footnotes. In the past month I have encountered an article blessed with two sets of footnotes, one in numerical order and referring to materials at the foot of each page, the other (strictly speaking, a set of end notes) in alphabetical order and referring the reader to materials which followed the article's concluding paragraph. I have also today met my first footnoted footnote -- probably the ill-begotten offspring resulting from the union of inaccurate copy-and-pasting and careless proof-reading. Please supply just one set of footnotes, referring to material at the foot of the page.
Badinage with brackets (or playing with parentheses): some contributors deploy these devices so subtly that they convey a degree of meaning that editors and readers may easily miss. What is the shade of difference between "a likely award of damages" and "a (likely) award of damages", for instance? Or "the putative defendant" and "the (putative) defendant"? Some other authors use consecutive brackets which, with no unbracketed text between them, look a little like a line of textual railway carriages chugging their way across the page. Two consecutive pieces of bracketed text are aesthetically unappealing even if intelligible and should not be used.
Dissection with dashes: properly used, a dash can create an admirably dramatic effect. However, like many dramatic gestures, the dash loses its power almost in proportion to the extent to which it is employed. To put it another way, " However—like many dramatic gestures—the dash loses its power— almost—in proportion to the extent to which it is employed". Loss of power through excessive use is not confined to the dash, though. Exclamation marks are similarly afflicted.

Three more books for review

2012-01-11T21:35:00.000Z

The Journal of Intellectual Property Law and Practice (JIPLP) has received three more books for review. If you would like to review one of them, please email Sarah Harris at sarah.harris@oup.com by not later than next Monday, 16 January, explaining why you are qualified to do so.

Copyright Law and the Progress of Science and the Useful Arts (Alina Ng, published by Edward Elgar Publishing)

"The American Constitution empowers Congress to enact copyright laws to ‘promote the progress of science and the useful arts’. This book offers the first in-depth analysis of the connection between copyright law as a legal institution and the constitutional goal of promoting social and cultural advancement.".

For further details of this publication, click here.

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The Essentials of Patent Claim Drafting (Morgan D Rosenberg, published by Oxford University Press)

"The Essentials of Patent Claim Drafting is a practical guide to the drafting of patent claims in U.S. patent applications. The actual mechanics of assembling both basic and complex claims are covered in-depth from simple mechanical cases to complex chemical and pharmaceutical cases. The emphasis is on the how-to of claim drafting, rather than on the history and theory of claiming. It contains multiple examples for all types of claims which a practitioner is likely to draft, and provides an easy reference for the drafting of particular types of claims. The Essentials of Patent Claim Drafting is written primarily for novice patent attorneys and patent agents, as well as law students and those studying for the Patent Bar Exam".

For further details of this publication, click here.

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Trademark Surveys (James T Berger and R Mark Halligan, published by Oxford University Press).

"Trademark Surveys: A Litigator's Guide is a legal guide on developing and critiquing trademark surveys. In addition to describing the process and different types of surveys that may be employed, the authors provide strategic insight into how best to use these surveys to save time and money. The last chapter offers practical considerations when requesting the services of a survey expert, and the appendices provide a series of sample survey protocols.".

For further details of this publication, click here.

Border Measures book: special offer to jiplp blog readers

2011-12-25T08:41:00.001Z

JIPLP contributor Olivier Vrins and editorial board member Marius Schneider have edited the second edition of their encyclopaedic Enforcement of Intellectual Property Rights through Border Measures: Law and Practice in the EU, to which JIPLP editor Jeremy Phillips has also contributed a chapter. With getting on for 1,200 pages, this weighty tome is expected to be on sale during the first half of next year.

According to the publishers, Oxford University Press (OUP),

" ... Providing a practical analysis of anti-counterfeiting and anti-piracy measures at the borders of the European Union, this book deals with all aspects of border measures under Regulation (EC) 1383/2003. It includes a thorough description of the implementation of the regime and also looks at areas of national law, giving a coherent and comprehensive overview of the application of the border measures regime within the European Union.

Fully updated in the second edition to include the two more recent Member States of Bulgaria and Romania, the work provides important guidance for intellectual property rights-holders on the practical application of border measures in these two Member States. Coverage of the legislation and guidance is also updated to include commentary on Commission Regulation 1172/2007, which created a new application for action form for the applications based on a "Community right", as well as the DG TAXUD manual for filing applications for action under Regulation 1381/2003. Updates to case law include important recent decisions in relation to goods in transit, sanctions against traffickers when a case has been settled under the simplified procedure, Community applications for action, and the ECJ's Advocate-General's opinion on the use of information provided to an intellectual property rights-holder during a border seizure of goods.This second edition also considers the UK HMRC's fundamental changes to its detention and seizure procedures in respect of goods infringing trade mark and copyright.

New material includes a new stakeholder mapping section explaining the respective roles of the many international organisations that are active in the enforcement of intellectual property rights such as WIPO, WCO, WHO, OLAF, EUROPOL, and INTERPOL as well as a new chapter on organized crime in light of its increasing occurrence within counterfeiting networks".

This work is priced at £225. However, OUP is offering a 20% discount to readers of the jiplp weblog as well as to those attending the forthcoming JIPLP seminar on Fakes in Transit (details here). To avail yourself of the 20% discount, quote promotion code ALSCHN11 if ordering directly by phone to +44 (0) 1536 452640 or via the book's web page at http://ukcatalogue.oup.com/product/9780199692934.do

JIPLP goes green for 2012

2011-12-24T19:30:00.002Z

For 2012, JIPLP's cover
colour is this very
distinguished green

The January 2012 issue of the Journal of Intellectual Property Law and Practice (JIPLP) is now available in full online. Subscribers to the online version of the journal can read it in full; everyone can read the contents here -- and access to individual features can be purchased on a pay-per-view basis. The editorial for this issue can be read in full here:

"Open minds, open innovation

Not so many years ago, the term “open innovation” was unknown to the intellectual property community. While the concept existed, there was little evidence that it existed, or that it was likely to gain any currency at all, before the publication in 2003 of Henry Chesburgh's Open Innovation: The new imperative for creating and profiting from technology. Since then, the term has gained momentum in common parlance. However it is only in the past year or two that open innovation is becoming something that is more widely and positively spoken of as something which a business might participate in, rather than as something rather strange and risky, to be indulged in by others — preferably in North America and the Asia-Pacific.

What exactly is open innovation? According to Henry Chesburgh, it is a paradigm that assumes that businesses both can and should use external ideas as well as internal ideas, and internal and external paths to market, when seeking to advance their technology. Since the boundaries between a business and its environment have become more permeable, it is increasingly for innovations to flow both inwards and outwards. In a world of widely distributed knowledge, no-one can afford to rely entirely on their own research: it makes better sense to buy or take a licence from other companies. In terms of outward flow, internal innovations which a business owns but doesn't use should be licensed out or shared through joint ventures or spin-offs.

As a way of doing things, this is not exactly rocket science and has been around for a long time. However, in the past this approach has generally been Plan B, when the preferred option of growing, protecting and monopolising one's own innovation needs to the point of self-sufficiency could not be achieved. The importance of Chesburgh's contribution is in the paradigm shift in corporate thinking: open innovation is portrayed as Plan A, the ideal option which both reduces R&D costs and focuses them more efficiently, which leads to improved quality and more consumer choice, and which is not merely open in the inward-outward sense but which encourages greater transparency of licensed technology itself.

It seems to me that one of the most interesting potential effects of open innovation is to shift the balance of importance as between different intellectual property rights. A closed innovation model places the greatest emphasis upon control of intellectual assets by a single proprietor: the exclusionary role of patents for inventions and, to a lesser extent, statutory design monopolies, are valuable tools for achieving this end, as is the role played by contract and general legal principles regarding the protection of trade secrets such as manufacturing know-how. With control of a market secured by such means, the role of the trade mark is relatively small. This is because a trade mark is not generally capable of excluding a product or a technology from the market: all it can do is to prevent its commercial exploitation under a particular name or origin-identifier.

Once open innovation is practised, the inevitable consensual sharing of technology diminishes the importance of the most exclusionary monopoly rights. Given the typical effects of open innovation such as the development of products and processes for an entire market rather than for a specific manufacturer, competing products will increasingly use the same parts and accessories, will operate in the same manner and will therefore decreasingly compete in terms of proprietary features which are difficult for the consumer to compare. At this point, the trade mark assumes a far greater importance since it is the one statutory right over which a business—even if it chooses to share its use through licensing or franchising—cannot afford to lose control. It is also the one intellectual property right which is capable of both storing and growing any goodwill which its owner attracts, thus enhancing a business's value".

If open innovation hasn't reached you yet, there's a good chance that it soon will. And when it does, be sure to keep an open mind when you assess its benefits".

Terminus appeal hits the buffers

2011-12-21T17:29:00.001Z

Earlier this year, JIPLP published a Current Intelligence note by Thorsten Lauterbach, "Copyright: A narrow defeat is still a defeat: integrity clipped before its best-before date" (Journal of Intellectual Property Law & Practice (2011) 6(6): 371-373; doi:10.1093/jiplp/jpr024). According to the abstract:

"The Stuttgart Higher Regional Court in Germany, balancing the right of integrity under copyright attributed to the architect of a work of architecture and the right to property held by the owner of the building, recently found against the grandson of Paul Bonatz, the architect of the Stuttgart terminus rail station and in favour of Deutsche Bahn AG, which sought to demolish part of that station during the construction of a new underground station.".

Thorsten has just informed us of the latest news in this dispute:

"You may recall my short comment on the author’s rights dispute revolving around the Stuttgart terminus station. Well, on 9 November the last word has now been spoken by the Federal Court of Justice (Bundesgerichtshof).

The Stuttgart 21 project (turning the railway terminus into an underground through station) had led to an author’s rights dispute between the owner of the terminus station and buildings, Deutsche Bahn AG, and the grandson of Paul Bonatz, one of the author-architects of the terminus building. The project required the destruction of both side wings of the terminus, as well as the grand staircase leading to the station hall. The author’s grandson, Peter Dübbers, sought to protect the author personality rights of his grandfather which he regarded as violated by the partial destruction of the original building. The remedies he pursued with this action were reconstruction of the north-west wing, and cessation of the imminent destruction of the south-east wing and the grand staircase (for a more detailed treatment of the legal arguments, see my earlier Current Intelligence note).

Having lost in both instances, the last throw of the dice was an appeal against denial of leave to appeal (Nichtzulassungsbeschwerde) before the Federal Court, since the Stuttgart Higher Regional Court (Oberlandesgericht) had refused leave to appeal.

On 9 November the Federal Court confirmed the decision by the Higher Regional Court and dismissed the appeal by Mr Dübbers. An appeal to the Federal Court would only have been in order if the legal issue was of fundamental significance, or if a decision was necessary in order to develop or ensure consistency of the law. The decision of the lower court was regarded as free from errors of law; in addition, it did not raise issues which had not been dealt with sufficiently by prior Federal Court jurisprudence. Accordingly Mr Dübbers’s case was without legal foundation. In Dübbers’ view the case did indeed raise a fundamental legal issue, namely in respect of the significance – and arguably the gradual lessening the value – of author’s personality rights. However, the Federal Court did not agree.

This brings an end to the legal action. It follows the political decision taken by the people of Baden-Württemberg on 27 November in a rare referendum to continue with this polarising project".

Addendum: Thorsten has now provided a link to the decision (Az. I ZR 216/10, in German) of the Federal Court, which you can read here. If you prefer it, there is also a shorter press notice (No. 186/11, also in German) here.

Books for review

2011-12-12T08:09:00.002Z

Here are three newly published books, which need suitably qualified reviewers for JIPLP. If you would like to review one, please email Sarah Harris at sarah.harris@oup.com by not later than Thursday 15 December and let her know why you think you should be the reviewer.

Copyright And The Public Interest In China

By Guan H. Tang, Shanghai University of Finance and Economics, China)

November 2011 304 pp Hardback 978 0 85793 106 1
Hardback £79.95 online price £71.96.
Details of this book can be found here.

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Intellectual Property, Pharmaceuticals And Public Health: Access to Drugs in Developing Countries

Edited by Kenneth C. Shadlen, London School of Economics and Political Science, UK, Samira Guennif, Université Paris 13, France, Alenka Guzmán, Autonomous Metropolitan University-Iztapalapa, Mexico and N. Lalitha, Gujarat Institute of Development Research, India).

November 2011 352 pp Hardback 978 1 84980 014 3
Hardback £85.00 online price £76.50
Further details of this book can be found here.

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Die europäische Patentanmeldung und der PCT in Frage und Antwort

By Gerard Weiss and Wilhem Ungler

8. Auflage 2011. 478 Seite(n), gebunden.
ISBN 978-3-452-26819-8. sofort lieferbar EUR 118,00
Further details of this book can be found here

The Marmite Election

2011-12-08T22:45:00.000Z

This year's Christmas special is "The Marmite Election" by Christopher Wadlow (Professor of Law, UEA Law School at the University of East Anglia in Norwich, UK, and a member of the editorial board of JIPLP). As the abstract explains:

Marmite (for those who do not know it) is a yeast-based condiment which, in the UK at least, is frequently used as a spread for toast or sandwiches. The advertising slogan, ‘Marmite: You either love it or hate it’ encapsulates the strongly differentiated responses which its unique taste provokes.

For the 2010 UK general election, Marmite's proprietors, Unilever, ran a fictitious televised election campaign of their own, between imaginary ‘Love’ and ‘Hate’ parties. Perhaps in response to this, or perhaps in retaliation for being identified with the Hate Party, the British National Party apparently formed the intention of transmitting a party election broadcast in which the party leader, Nick Griffin, would have addressed his audience with a large image of a jar of Marmite floating above his right shoulder. Unilever objected, and an interim injunction was ordered to prevent the broadcast being transmitted in this form.

This article comments upon the decision by which Arnold J banned the BNP from using the name and imagery of this popular, but controversial, food condiment; and its legal basis in terms of trade mark infringement, copyright infringement, and passing-off. It concludes by briefly comparing the legal protection accorded to a branded decoction of brewers' dregs to that claimed, with considerably less success, for other ‘intellectual properties’, living and dead, whose owners had cause to complain that their names, words, or images were appropriated for political purposes in the course of the 2010 General Election.

As a goodwill gesture, this splendidly researched and beautifully executed piece is freely available to everyone who visits this site. You can access it in html and pdf formats. Enjoy!

British court finds rivastigmine patent obvious

2011-12-08T18:19:00.000Z

Author: Christopher Hayes (Atlantic Chambers, Liverpool)

Generics UK Limited (t/a Mylan) v Novartis [2011] EWHC 2403 (Pat), (Floyd J), 30 September 2011

Journal of Intellectual Property Law & Practice (2011), doi: 10.1093/jiplp/jpr191, first published online: December 6, 2011

A court has invalidated Novartis' patent and SPC for rivastigmine as being obvious in light of prior art.

Legal context

The analysis of the inventive step of a patent requires a multifactorial assessment of technical subject area. The British courts and the EPO use slightly different frameworks to assess the inventive step. In this case, the Patents Court for England and Wales has stated that the same conclusion would be used using the EPO approach. The current case looks at the validity of a pharmaceutical patent, for the enantiomeric drug rivastigmine.

Facts

Rivastigmine is sold under the brand name ‘Exelon’, for the treatment of Alzheimer's disease (AD). Rivastigmine is an enantiomer: it contains a carbon atom which forms chemical bonds with four different chemical groups. Such enantiomers can exist in a right-handed or left-handed form. Often the first time such molecules are synthesized, the product will contain a mix of equal amounts of both enantiomers. Such mixtures containing an equal amount of both enantiomers are called racemates. The racemic mixtures can then be resolved into their individual enantiomers, for subsequent testing of their pharmacological properties.

Novartis held a patent for rivastigmine, UK 2,203,040 (the '040 patent) which had a priority date of 4 March 1987, which expired on 29 February 2008. The '040 had the benefit of supplementary protection certificate (SPC) which extended the period of protection until 30 July 2012. Generics UK commenced proceedings for the revocation of the '040 and the SPC on 3 March 2011. Given the proximity of the expiration date of the SPC, this matter proceeded to trial very quickly. In a little over six months, the matter was heard at trial on 5–7 September 2011.

The only attack brought forward by Generics UK was that the '040 patent was invalid for lack of inventive step. In consequence, the SPC for rivastigmine would also be invalid for failing to be covered by a basic patent. The obviousness case was based on the state of the current general knowledge (CGK) at the priority date and two publications.

Turning to the prior art publications, the first was a patent application by Weinstock (EPA 193,926) which disclosed the racemic mixture. The second publication was also by Weinstock from 1986 and was entitled ‘Pharmacological activity of anticholinesterases of potential use in the treatment of Alzheimer's disease’.

Floyd J found that, at the priority date, the clinical features of AD were known. Acetylcholine was a known neurotransmitter, and it was understood how acetylcholine was synthesized and acted on synaptic receptors. It was also known that there was a link between the pathology seen in AD and the acetylcholine system and it was postulated that the enhancement of the acetylcholine signalling system might be of therapeutic benefit in AD disease. This hypothesis was supported by some reported clinical data using the drugs physostigmine and tacrine.

Physostigmine was known to counteract the effect of overdoses of anticholinergic drugs and had also been shown some efficacy in AD. Physostigmine had severe limitations as a potential treatment; it caused intolerable side effects of therapeutic doses (or doses close to therapeutic) and has duration of action of typically 30 minutes. Although there were other hypotheses, the cholinergic was regarded as the most promising to yield potential drugs to treat AD.

Analysis

For the purposes of the obviousness analysis, it did not matter whether one started with the Weinstock publication or with the application. The necessary steps were to start with choosing the racemate, resolving the racemate into its constituent enantiomers, and then finally preparing a medicinal compound containing rivastigmine for the treatment of AD.

The Weinstock articles showed that the racemate was the most promising candidate disclosed from the other compounds taught to choose for further research. Therefore it would be obvious to choose the racemate to start from.

It was further agreed that this racemate could be easily separated and that the skilled team would consider resolving a racemate into its enantiomers at the priority date. The evidence was that, since the advantages of an enantiomer cannot be predicted in advance, the skilled team would resolve the racemate to test the properties of the enantiomers. The judge therefore concluded that there was nothing inventive in deciding to resolve the racemate into the enantiomers, although it was noted that the absence of evidence from Novartis on the invention history assisted Generics UK in this regard. Once rivastigmine has been resolved, Floyd J considered it would be obvious to formulate it into a pharmaceutical composition.

Floyd J concluded that using rivastigmine for the treatment of AD was conceptually obvious from the Weinstock articles. It would also be obvious to resolve the enantiomers, and the chemistry involved in the resolution would be found to be unproblematic to the skilled team. Formulating a pharmaceutical composition of rivastigmine would be entirely obvious.

Although Floyd J applied the Windsurfing formulation to determine whether the '040 contained an inventive step, he said that his result was consistent with the problem–solution approach employed by the EPO. The problem was how to achieve the desired effect from an enantiomer starting with the racemate taught by the Weinstock articles, and the solution could be found in the common general knowledge.

In conclusion, the '040 patent was obvious and as a result the rivastigmine SPC was also invalid.

Practical significance

In the two most recent UK cases involving the obviousness of pharmaceutical enantiomer patents, Lundbeck (House of Lords) and Daiichi (Court of Appeal), the patents were held to be inventive, although the priority dates were later than in these cases.

Floyd J pointed out that an obviousness analysis will always turn on the facts of the individual case. In this case, the evidence was that the chemistry involved in the resolution of the enantiomers was straightforward and posed no problems to the skilled team to produce the enantiomers from the racemate, whereas, in Lundbeck and Daiichi, the chemistry involved in resolving the individual enantiomers from their respective racemates was not straightforward.

Although the judge reached a different conclusion regarding the validity of the rivastigmine enantiomer patent when compared with the enantiomer patents at issue in Lundbeck and Daiichi, he distinguished the cases based on their respective facts. It appears that a key difference was that the resolution of the enantiomer in this case did not involve any invention. Indeed, the resolution of the racemates into the single enantiomers in Lundbeck and Daiichi required invention.

Novartis's case on obviousness was not aided by the fact that it did not lead evidence on the history of its invention. Although the patentee is not obliged to bring forward such evidence, this case illustrates the importance of this type of evidence, particularly where validity is at stake. This case shows that patentees should be reluctant not to lead evidence of their invention story when resisting an obviousness attack.

Latest issue; aspirational branding and urban looting

2011-12-04T16:47:00.000Z

The December 2011 issue
is the last to bear this colour.
Next month JIPLP launches
its smart new look for 2012

The December 2012 issue of the Journal of Intellectual Property Law & Practice (JIPLP) has been online for a little while now, but there has been so much going on that I forgot to let everyone know. The online issue is available to all online and online/hardcopy subscribers as part of their subscription package. non-subscribers can access the contents here and can purchase access to articles even if they are not JIPLP subscribers. Subscribers and non-subscribers alike can also see what has been available on the JIPLP Advance Access feature, where articles, Current Intelligence pieces and book reviews are posted weeks, and sometimes months, ahead of their paper publication date. Again, this service is part of the subscription package, but non-subscribers can also pay for access.

The Editorial for this issue, 'Property! What property?', takes a look at the relationship between aspirational branding and urban looting. You can read it in full here:

"Property! What property?

This editorial was penned while shocked shopkeepers dig through the wreckage of their High Street stores in search of salvageable stock, while weary police sift through the ashes and the rubble in pursuit of evidence, forensic or otherwise, that will lead to a conviction. It is England's summer season of riots and looting, of random mindless violence and—in contrast—some curiously selective theft.

Desirable brands have been among the targets of the looters who, excited by the prospect of owning high fashion wear or cool sports clothing that lies beyond their immediate budgets and short-term expectations, have simply helped themselves. Some have hidden their faces under hoods and behind balaclava helmets, while others have taken no such precautions to preserve their anonymity. All have performed before an audience of security cameras and, as I write these words, many have already been visited by the enforcement agencies, charged and even sentenced for their criminal offences.

It is not just product brands that have suffered this treatment. Some popular High Street retail outlets have been ravaged too, their mannequins stripped, shelves cleared and carrier bags purloined as a handy means of making off with stolen property. Only e-tailers were spared, discounting the apocryphal tale of the young lad who smashed his computer screen in a hopeless attempt to raid an eBay vendor.

In November 2010 an editorial in this journal, entitled “IP and the Moral Maze”, decried the divorce which had taken place between the morality of intellectual property and the economics of it. That editorial argued that, for as long as intellectual property is seen merely as a means of adjusting the barriers between the trading territory of its owner and that of its competitors, and is shorn of its moral dimension, it will remain difficult to raise a persuasive case that copying is somehow wrong.

It now seems, at least in the consumer dystopia of England 2011, it is not merely intellectual property that has come adrift from its moral roots since the same fate has befallen physical property, both real and personal. Stealing an expensive and desirable pair of branded sports shoes is not just a question of taking possession of chattels without legal justification: it is a statement that one has bought into the aspirations which the brand conveys to those who wear it and that, as such an aspirant, one has a greater right to the shoes than does, for example, the inherently non-aspirational limited liability company which owns it. To put it another way, in terms of the aspirationally magnetic call of one leading brand owner, if you are a “Just do it” sort of person, you just do it.

What, if anything, can be done? This was never a problem when branding was a concept linked to cattle rather than to consumer goods and when trade marks reflected little other than a connection in the course of trade—but the genie of aspirational branding has been let out of the bottle and there's no chance of getting it back in. It sells goods, builds loyalty and makes both brand owners and consumers happy.

Is there such a thing as sensible aspirational branding? There was, once. Some readers may wish to ponder Disney's “small world” ethos, harking back to the 1960s, and its step-sister in Coca-Cola's 1970s “one world” aspiration, based on “I'd Like to Teach the World to Sing in Perfect Harmony”. Laudable as these aspirations are, one senses that they are worlds away from today's brands which compete in what is not so much a race to the bottom as a sprint to the edge: a brand must have ‘edge’ if it is to maximise its pulling power among young, brand-conscious purchasers.

So is there a way of branding that will foster a responsible attitude towards the property of others while yet remaining attractive, dynamic, unconventional and daring? Is there a way we can train consumers to keep their loyalty within manageable bounds? In short, can we use branding as a way of teaching respect for property, both physical and intellectual? And if these questions can be answered in the affirmative, who will take the risk of implementing such techniques in the volatile consumer markets of today?".

Infringements in transit: current law, future prospects

2011-12-02T14:27:00.000Z

If the contents aren't on sale, or intended for sale,
in the EU, they can't be counterfeits, can they?

The Journal of Intellectual Property Law & Practice (JIPLP) is delighted to announce a seminar on Wednesday 18 January 2012, from 3pm to 6pm, on the topic "Infringements in transit: current law, future prospects". This event is kindly hosted by law firm Olswang LLP in its London office, 90 High Holborn.

The speakers are Marius Schneider (Eeman & Partners, Brussels), Olivier Vrins (Altius, Brussels) and Phillip Johnson (Visiting Senior Fellow, Queen Mary, London), and panelists are Michael Edenborough QC (Serle Court), Paul Stevens (Olswang LLP) and Lucy Nichols (Nokia). Jeremy Phillips will be in the chair.

Marius, Phillip, Paul and Lucy are members of the JIPLP editorial board, and Olivier is the author of a deep analysis of proposed reform, "The European Commission's proposal for a regulation concerning Customs enforcement of IP rights", which was published in the November 2011 issue of JIPLP. Marius and Olivier are the editors of the authoritative Oxford University Press publication Enforcement of Intellectual Property Rights through Border Measures: Law and Practice in the EU, the second edition of which will be published shortly.

The programme is provisional at this stage, but it is envisaged that Phillip will explain the framework of EU legislation on the suspensive detention of goods, Marius will discuss the Nokia and Philips rulings and Olivier will address prospects of reform. The final version of the programme will be published in due course.

Admission is free, refreshments will be provided and it is expected that there will also be CPD points.

If you'd like to book yourself in, please email me here with the subject line "Fakes in Transit seminar". Please don't expect an instant acknowledgement, but I'll do what I can.

Protection of geographical indications against translation, generic use, evocation, and other potential enemies

2011-12-01T08:08:00.000Z

Author: Miguel Angel Medina González (Elzaburu, Madrid)

Bureau National Interprofessionnel du Cognac v Korkein hallinto-oikeus, Court of Justice of the European Union (First Chamber), joined cases C-4/10 and C-27/10, 14 July 2011

Journal of Intellectual Property Law & Practice (2011), doi: 10.1093/jiplp/jpr182, first published online: November 29, 2011

The ECJ has confirmed the applicability of EC Regulation 110/2008 on the definition, description, presentation, labelling, and the protection of geographical indications (GIs) of spirit drinks in assessing the validity of a trade mark registration that contains a GI, even where registration took place before the regulation entered into force, and that a mark which contains a protected GI must be refused or invalidated, where its use would lead to any of the situations referred to in Article 16 of the regulation.

Legal context

Two national trade mark applications containing elements protected under GI regulations were filed in Finland. It is an accepted fact that the TRIPS regulations have been incorporated into the applicable EU regulations.

In its judgment, the court dealt mainly with questions concerning the temporal and direct applicability of certain regulations (EC Regulation 110/2008 and previous EC Regulation 1576/89 as amended by Regulation 3378/94, among others) and their compatibility with the principles of legal certainty and protection of legitimate expectations. The court also explored the prohibition of registration of trade marks containing a GI protected by EC Regulation 110/2008 or such an indication in the form of a generic term or a translation when they cover spirit drinks which do not meet the requirements set for use of the GI. Articles 14, 15, 16, and 23 were analysed.

Another topic addressed was whether such trade marks are liable to mislead the public in the way referred to in Article (1) (g) of the Trade Mark Directive (TMD)—which is the same under the current TMD (2008/95/EC) as in the previous TMD (89/104)—and whether registration of trade marks which contain elements infringing Regulation 110/2008 can be prohibited on the basis of Article 3 (2) (a) of the TMD by a Member State. This article provides that a trade mark is to be rejected or invalidated if its use can be prohibited by virtue of legislation other than the trade mark law of the Member State in question or of the Community.

Facts

The Finnish company Gust. Ranin Oy applied to register two trade marks consisting of bottle labels in Class 33. One of them, No 226350, had ‘Konjakit’ (‘Cognacs’) as its specification of goods and the other, No 226351, was for ‘liqueurs containing konjakki’.

The first included the expression COGNAC L&P HIENOA KONJAKKIA Lignell & Piispanen ‘Product of France’ ‘40%’ ‘Vol 500 ml’; and the second included ‘KAHVI-KONKAKKI Café Cognac Likööri – Likör – Liqueur’ ‘Lignell & Piispanen’ ‘21%’ ‘Vol 500 ml’.

Both trade marks were registered and subsequently opposed by the Bureau National Interprofessionel du Cognac (BNIC). The opposition was accepted against the first and rejected against the second. Appeals were filed by the applicant and the opponent. The appeal of the applicant was upheld, while that of the BNIC was dismissed. As a result, both registrations were granted, against which the BNIC appealed in the Supreme Administrative Court (‘Korkein hallinto-oikeus’), which referred certain questions to the ECJ for a preliminary ruling.

Analysis

The first question of the Finnish court refers to the applicability of EC Regulation 110/2008 in assessing the validity of a trade mark registration that contains a GI protected by the regulation, where registration took place before the regulation entered into force.

The ECJ stated that EU measures must not take effect from a point in time before their publication, but there may be clear exceptions depending on their terms or general scheme or where their purpose so demands and legitimate expectations are duly respected. The court finally concluded that Article 23 (1) of EC Regulation 110/2008 clearly makes it possible to refuse or invalidate a trade mark registered before the entry into force of the regulation.

The court added that, in the present case, there is no question as to the applicability of the TRIPS time limits, as the trade mark was not registered before 1 January 1996 or before the date of protection of the COGNAC GI, these two situations being foreseen in TRIPS.

In its second question, the Finnish court asked whether Articles 16 and 23 of EC 110/2008 preclude the registration of a mark containing a protected GI, or such an indication in the form of a generic term and translation, and which is registered for spirit drinks which do not satisfy the conditions for the use of that GI.

Regarding Article 23, the ECJ considered that, according to paragraph (1), registration of a mark which contains a GI registered in its Annex III (eg COGNAC) is to be invalidated, if its use would lead to any of the situations referred to in Article 16 of that regulation. As a result, national authorities must refuse or invalidate the registration of a mark if it is used in such circumstances and is not covered by the temporary derogation provided for in Article 23(2) of that regulation (which incorporates the temporal derogations provided by TRIPS).

As to Article 16, it considered that it refers to situations in which the marketing of a product is accompanied by a reference to a GI in circumstances liable to mislead the public as to the origin of the product or, at the very least, to set in train in the mind of the public an association of ideas regarding that origin or to enable the trader to take unfair advantage of the reputation of the GIs concerned.

The court stated that the extent of the protection must be assessed in light of the rule in Article 15(4), whereby the GI may be borne only by spirit drinks which meet all the specifications in the technical file concerning the GI and reiterated that Articles 15 (3) and 14 (2), respectively, provide that GIs cannot become generic and cannot be translated on the label or in the presentation of a spirit drink, and that this is applicable to ‘Cognac’.

Of the situations provided for in Article 16, the ECJ considered that, in relation to point (a), the ‘spirit drinks’ covered by the relevant marks were ‘comparable’ to the spirit drink covered by the GI ‘Cognac’ and therefore the marks make a ‘direct commercial use of a geographical indication in respect of products which are comparable’, but which are not covered by the GI.

As to point (b), the ECJ declared that the use of ‘Cognac’ for spirit drinks which do not meet its specifications may be categorized as an ‘evocation’.

Practical significance

A bit of light in the sometimes confusing mix of European Union regulations concerning GIs
An important question is that of the applicability of the prohibitions under EC Regulation 110/2008 (which are stronger than those in the previous Regulation 1576/89) to those trade marks already registered before the entry into force of Regulation 110/2008.

The question of which regulation may be applicable, particularly in cases of conflict between GIs and trade marks, where the applicable EU regulations have gone through amendments after a certain trade mark and a certain GI were protected, seemed to be open to discussion. This is particularly true in the case of wines, where amendments have been particularly frequent and sometimes it is even difficult to know exactly which rule was in force at a certain time. This decision points in a certain direction which could be a guideline for future cases and other products, like wines.

A bit of shadow over the concept of ‘evocation’
The ECJ has made reference to the concept ‘evocation’ in previous judgments, including for example Case C-87/97 Cambozola v Gorzonzola or C-132/05 Parmesan, and provided as an illustration a situation where the image triggered in the mind of the consumer by the new trade mark incorporating part of the protected designation was that of the product whose designation was protected. It is rather shocking that the court now mentions as ‘evocation’ a situation where the trade mark does not include a part of the protected designation as used to be the case (eg Cambozola or Parmesan), but the expression ‘Cognac’ as such (Paragraph 58 ‘… Cognac for spirit drinks which do not meet the relevant specifications may therefore be categorised as an evocation’).

Other aspects of interest
The ECJ also referred to the non-generic nature of protected GIs and to the prohibition of translations.

The fact that the specifications of goods covered by Trade Mark No 226350 are ‘Cognacs’ may seem to be a generic use and suggest no intention to make the products comply with the specifications of use of the GI. The situation is clearer in the case of Trade Mark No 226351 for ‘liquors containing konjakki’, which then are not ‘Cognac’.

The decision also appears to conclude that a protected GI cannot be translated.

Proof reading

2011-11-30T16:47:00.000Z

"Now, is that 'i' before 'e'
except after 'c' ...?"

I recently received an email advertisement for a proof-reading service which contained, inter alia, the following text:

" ... We are offering an efficient service to help you and your colleagues ensure that your academic and professional work is written in perfect English. We will check the grammar and style of your work and return it to you to meet your requirements and deadlines.

If your research has too many English spelling and grammar errors, or if the publisher’s style guide has not been followed, your research may be rejected without due regard to its content. We strongly suggest sending the document to us for editing and proofreading before submission, particularly if English is not your first language.

We can provide you with a professional proofreading service at a very reasonable rate. All our proofreaders are highly qualified native English speakers. Many work as leading academics in their fields and all have extensive experience of proofreading to the highest standards. We ... [cover] all academic areas including ... Law ...

... All you have to do is send us your document ... with the deadline and we will guarantee delivery of a perfectly written document to give you complete confidence when you submit your work. The fee is worked out on a flat rate (£7.99 per thousand words or 0.799 pence per word), so you know exactly how much the proofreading will cost in advance. ..."

This service is provided by one of a large number of companies which vie with each other for the custom of authors. Sadly it is my impression that, even at the relatively modest sum which these companies charge, virtually no use is made of their services by anyone who submits material for publication in JIPLP. This is a pity, since poor-quality text distracts peer reviewers and incurs extra, quite unnecessary labour for the editing and production staff. Good-quality proof reading would benefit not merely those contributors who are not native English-speakers but those who are and who, because they have never learned the rules of their native language or have forgotten them, sometimes produce texts of woeful quality.

JIPLP does not make the engagement of a professional proof-reader a condition for the submission of articles and Current Intelligence notes; nor does it propose to do so. However, we wish to remind readers that an error-free page of text is not a sign of pedantry; it is evidence that its author has attained a degree of proficiency in communicating his or her thoughts which cannot be impeached for fostering distractions. If you don't wish to engage the services of a professional, do at least remember to check for textual imperfections yourself!

Interflora: the last word on keyword advertising?

2011-11-29T18:26:00.000Z

Author: Darren Meale (SNR Denton UK LLP)

Interflora Inc v Marks & Spencer Case-C323/09, Court of Justice of the European Union, 22 September 2011

Journal of Intellectual Property Law & Practice (2011) doi: 10.1093/jiplp/jpr180, first published online: November 23, 2011

Several years of Court of Justice jurisprudence on the legality of an advertiser using a competitor's trade mark to trigger the display of sponsored listings on search engines have come to a conclusion. Having already largely approved the practice, the Court of Justice has now, in the interests of fair competition, declined to give famous marks any additional rights to prevent it. But uncertainties remain, particularly as regards the application and effect of some of the newly emerging functions of a trade mark.

Legal context

When European trade mark law was first put together, Google, along with most of the internet, was very much a series of twinkles in their eventual creators' eyes. It is thus hardly surprising that, some 20 years later, those laws have repeatedly struggled to cope with technological and commercial practices which were barely imaginable when they were drafted. Alongside online piracy, search engine keyword advertising is a prime candidate for trade mark law's biggest headache. In a series of judgments which are likely to conclude here, the Court of Justice (ECJ) has explained how the old laws apply to an entirely new form of advertising which has arrived to both the delight and the despair of brand owners.

Facts

When consumers searched on Google for the term ‘interflora’, as well as seeing ‘natural’ results for the famous network of independent florists, they also saw sponsored listings—advertisements—for Marks & Spencer's online flower delivery service. This was because M&S had ‘bid’ on Interflora's well-known trade marked name, paying for its advert to be displayed when a user searched for its competitor. This practice, referred to here as ‘keyword advertising’, has been considered a useful advertising tool by some brand owners. Others, however, have sought to prevent it by asserting their trade mark rights. Interflora is one such brand owner: it sued M&S for trade mark infringement in the High Court of England and Wales.

The case was heard by Mr Justice Arnold who, in 2009, sought guidance from the ECJ on the application to keyword advertising of Articles 5(1)(a) and 5(2) of the Trade Marks Directive (Directive 89/104, now replaced by Directive 2008/95) as well as the substantially identical Articles 9(1)(a) and 9(1)(c) of the Community Trade Mark Regulation (Regulation 40/94, now replaced by Regulation 207/2009). Those questions, as addressed by the ECJ, now provide guidance on two issues:

whether keyword advertising adversely affects any of the functions of the trade mark used, in particular the essential function, advertising function, or the investment function; and
whether, without due cause, keyword advertising takes unfair advantage of or causes detriment to the distinctive character or repute of the trade mark used.

Guidance on the first issue has been largely repeated from earlier ECJ jurisprudence, so contains few surprises. The second and perhaps crucial issue has now received its first full consideration.

Analysis

The ECJ did most of the hard work on keyword advertising in a set of judgments which began before Interflora commenced but which concluded after the High Court's 2009 reference: Joined Cases C-236/08 to C-238/08 Google France [2010] ECR I-2417, 23 March 2010. Additionally, keyword advertising enjoyed consideration in Case C-278/08 Die BergSpechte [2010] ECR I-2517, 25 March 2010; Case C-91/09 Eis.de, 26 March 2010; and Case C-558/08 Portakabin Ltd v Primakabin BV [2010] ECR I-0000, 8 July 2010. Arguably, this body of jurisprudence rendered a proportion of the reference in Interflora redundant by the time the ECJ came to consider it (around half of the questions the High Court had originally posed were withdrawn in light of these decisions).

Issue 1: Article 5(1)(a)/9(1)(a) and the functions of a trade mark
Google France and the cases which followed it established that advertisers ‘used’ a trade mark when indulging in keyword advertising, and that such use was ‘in relation to’ the goods and services for which the trade mark was registered. The ECJ in Interflora confirmed this.

Following a long line of ECJ jurisprudence stretching back to Arsenal v Reed Case C-206/01 [2002] ECR I-10273, Google France also held that, notwithstanding that keyword advertising involved use of an identical trade mark for identical goods or services—putting it squarely in the purview of Article 5(1)(a)/9(1)(a)—such use only infringed if it was liable to have an adverse effect on one of the functions of the mark. While everyone knows that the ‘essential’ function of a trade mark is as a badge of origin, the ECJ judgment in L'Oréal Case C-487/07 [2009] ECR I-5185, 18 June 2009, confirmed that trade marks have any number of functions. Three were considered in Interflora—only one need be affected for infringement—the essential function; the advertising function and the investment function.

Essential function
In Google France, the ECJ held that keyword advertising would infringe Articles 5(1)(a)/9(1)(a) in circumstances where the advert made it difficult for consumers to work out whether the advert originated from the trade mark proprietor or a person economically linked to it as opposed to some unconnected party. In such a case, the essential function of the trade mark—as a badge of origin—would be affected.

The ECJ in Interflora confirmed this approach, considering it in light of Interflora's nature as a network of independent florists. Would the essential function of the mark be affected if internet users wrongly gained the impression from the advertising that M&S was part of the Interflora network? Yes, held the ECJ. However, it qualified this conclusion by noting that internet users are to be considered reasonably well-informed and reasonably observant and so it would not be enough if merely ‘some’ had ‘difficulty grasping that the service provided by M&S is independent from that of Interflora’. While this is ultimately a question to be answered by the national court on the facts, the ECJ's view was that, in the case of a network as large and diverse as Interflora's, internet users may find it ‘particularly difficult’ to work out whether an advertiser is in or out of the network. The ECJ thus hinted that in a case such as Interflora, it is up to the advertiser to make sure its advert uses sufficient words to enable the user to make the distinction.

Advertising function
The greater the number of advertisers which bid on a particular keyword, the more it costs each of them to do so. Thus M&S's bidding on ‘interflora’ made it more expensive for Interflora to do the same, forcing it to either do less advertising or spend more on the same. That might appear a good basis for an argument for impairment of the ‘advertising’ function, but that argument has already been rejected by the ECJ in Google France.

The ECJ in Interflora took the same view, although it stated that keyword advertising would not be adverse to the advertising function ‘in every case’, suggesting it might be in some. It then sought to justify its decision not to consider the above ‘repercussions’ as sufficiently ‘adverse’. Trade mark law, it said, was not in place to protect a proprietor against ‘practices inherent in competition’. Further, keyword advertising's general aim was to offer an internet user an alternative to whatever he or she had searched for (the ECJ implicitly acknowledging that this is a good thing). Finally, and hinting at what would impair the advertising function, the ECJ stated that keyword advertising does not have the effect of ‘denying the proprietor of … the opportunity of using its mark effectively to inform and win over consumers’. The author questions this assertion—it might well deny a proprietor this opportunity if he cannot afford the increased costs of his advertising.

Investment function
The trouble with many of the functions which are ascribed to trade marks following L'Oréal is that they are little more than buzzwords. The ECJ has now given one such buzzword, ‘investment’, some context. The ECJ says that a trade mark may be used ‘to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty’, which sounds suspiciously like saying that a trade mark can attract goodwill. Investment can be made in a mark, says the ECJ, by advertising but also by other (unspecified) commercial techniques. Any ‘substantial interference’ with this goal of reputation acquisition or preservation will amount to an adverse affect on the investment function which a proprietor may prevent. The ECJ adds that, where a trade mark already enjoys a reputation, the investment function is impaired by a use which ‘affects that reputation and thereby jeopardises its maintenance’. Note that there is no requirement here of ‘substantial’ affect, and it is not obvious whether the ECJ is referring to a trade mark which enjoys a reputation in the Article 5(2) sense (see below) or in some other sense. The conclusion here is therefore unclear.

In a nod to fair competition, this guidance is qualified by the ECJ's remark that it is not enough ‘if the only consequence of [the] use is to oblige the proprietor of that trade mark to adapt its efforts to acquire or preserve’ its reputation. Again this is hardly clear. Would not the proprietor only be forced to adapt because otherwise his reputation would be in jeopardy or otherwise interfered with? While it is helpful to know something about what some of the myriad functions of a trade mark mean, on this one we remain only a little wiser.

Issue 2: Article 5(2)/9(1)(c) and the additional protection afforded to famous marks
Trade marks with a reputation—often termed ‘famous’ or ‘well-known’ marks—gain additional protection under European trade mark law. The Google France cases, and the jurisprudence which predates Interflora, approached keyword advertising from the point of view of the protection given to all marks, not just the famous. That jurisprudence has largely been seen as giving advertisers the all clear to indulge in keyword advertising.

However, for the most part, advertisers will bid on the trade marks of their most successful competitors: many, if not most, of the trade marks bid upon will be famous ones. Following the ECJ's judgment in L'Oréal, which came in for heavy criticism from the Court of Appeal in England and Wales and elsewhere, famous brand owners' rights have been significantly bolstered, at least as regards their ability to prevent ‘unfair’ advantage taking. Thus the ECJ set itself up for something of a collision: on the one hand, Google France says keyword advertising—which undoubtedly allows an advertiser to gain an advantage off the back of his competitor's mark—is ok, while on the other L'Oréal regards all forms of advantage taking of marks with a reputation (like the INTERFLORA mark) as unfair. Which side would prevail?

Rather than unravel all of the previous Google France-led case law, the ECJ appears to have continued to find in support of keyword advertising, with favourable findings in respect of the limbs of Article 5(2)/9(1)(c) concerning both detriment to distinctive character (or ‘dilution’) and unfair advantage.

Dilution
Dilution is the whittling away, over time, of the distinctiveness of a mark such that it loses its ability to distinguish one trader's goods or services from another's. Interflora's concern was that M&S's practice would cause INTERFLORA to become a generic term for any flower delivery service. The ECJ was not convinced, holding that unless an internet user is confused by an advert, the advert will only serve to present M&S's service as an alternative offering, thereby preserving the distinctiveness of the INTERFLORA brand (an argument not without its counters). This means that dilution is effectively a non-runner in any attack on keyword advertising: if a proprietor needs to show confusion before it can start arguing dilution, it will already have succeeded on other trade mark grounds, and need not bother further.

Unfair advantage
The ECJ noted that keyword advertisers do obtain a ‘real advantage’ from bidding on their competitor's famous brand names, noting that because of the fame of those names, a large number of consumers will search for them and thereby see competitors' keyword adverts. In L'Oréal, the ECJ held that such ‘riding on the coat tails’ of a mark's reputation is unlawful where the advantage taker neither provides financial compensation to the brand owner in respect of it, nor makes its own marketing efforts. This much criticized decision, given to render smell-alike look-alike imitation perfume products unlawful, led the ECJ in Interflora to the inevitable conclusion that keyword advertising also took unfair advantage of marks with a reputation.

However, noting that keyword advertising is essentially about traders presenting consumers with alternative products and services, the ECJ chose to save it from unlawfulness as follows. Taking unfair advantage under Article 5(2)/9(1)(c) is only unlawful if it is done ‘without due cause’. Presenting one product as an alternative to another, absent any confusing, dilution, tarnishment, or any other wrongdoing, was fair competition, and so while the ECJ was not prepared to rule that the advantage taken is fair, it did conclude that it was with due cause, and therefore lawful. In doing so it indicated that the harsh approach in L'Oréal might be reserved for ‘imitation’ products, although quite what those are is not clear (see ‘Trade marks: Owners of famous brands given wide rights to prevent the use of their trade marks in comparative advertising’ JIPLP (2010) 5(8): 550–552).

Practical significance

With this decision, the ECJ has now covered almost all the bases so far as trade mark law and keyword advertising are concerned. However, it is now for Arnold J and the High Court to apply the ECJ's guidance to conclude Interflora and M&S's dispute. The ECJ has given a fairly clear steer on some points: the author anticipates that M&S will now prevail against Interflora as regards Article 5(2)/9(1)(c), on the basis that it is only taking advantage with due cause so as to present alternative products. However, the ECJ's guidance on the investment function is far from enlightening and the case could go either way on that (although the author suspects Arnold J might be reluctant to give such an imprecise function too strong an effect). Moreover, the unique nature of Interflora as a network, and the ECJ's comment that consumers might find it ‘particularly difficult’ to work out whether M&S is a part of that network, provide a firm pointer to the High Court that Interflora should ultimately prevail under Articles 5(1)(a)/9(1)(a). Arnold J may not agree.

Most cases of keyword advertising, however, do not involve brand owners which are comprised of Interflora-like networks. Aside from this complication, it now appears that the ECJ has given the go ahead to ‘normal’ keyword advertising, and most advertisers may now indulge in it in relative comfort. But not everything is perfect. To the extent they have now been defined, many of the functions of a trade mark (such as investment) remain vague and opaque, all but guaranteeing future disputes as to their meaning, whether in the context of keyword advertising or elsewhere. Further, if the internet continues to evolve at the astounding pace it has in the past decade, we may find this entire body of law redundant in five or so years, in which case we shall have to start the whole process all over again when the next big thing comes along.

How to abbreviate Europe's senior court: time to ask again

2011-11-29T05:59:00.000Z

In January of this year the jiplp weblog reported that, following a poll of its readership, a handsome majority voted to retain "ECJ" as the preferred abbreviation of the highest court in the Court of Justice of the European Union. 69% of respondents opted for ECJ, while just 25% favoured CJEU. We wrote at the time:

"We'd be grateful if contributors of future copy would please bear this in mind when submitting material for publication".

It has however become apparent that the proportion of contributors using CJEU in preference to ECJ has steadily increased, to the point that a preponderant majority of manuscripts submitted to JIPLP use CJEU and the journal is becoming somewhat isolated in its use of ECJ. Accordingly I have decided to put the matter to the vote again, to ascertain whether readers agree that the time for change has arrived. The poll appears at the top of the jiplp weblog's side bar and will be open for a week.

Euro-injunction mechanism in Community designs: Samsung Galaxy Tab European ban partially lifted

2011-11-24T09:58:00.000Z

Author: Séverine Mas, avocate

Apple Inc. v Samsung Electronics GmbH and Samsung Electronics Co. Ltd, Düsseldorf Tribunal of first instance (Landgericht), Germany, Press Release No 013/2011 of 9 September 2011 concerning case No 14 c O 194/11

Journal of Intellectual Property Law & Practice (2011) doi: 10.1093/jiplp/jpr181, first published online: November 23, 2011

The 14th Civil Division of the Düsseldorf Tribunal of first instance confirmed an interim decision preventing the German firm Samsung Electronics GmbH from selling the Samsung Galaxy Tab 10.1 in the whole of the European Union, on account of a potential infringement of a Community design registered by Apple. The ban was, however, restricted to the German territory for sales by Samsung Electronics Co. Ltd, based in South Korea.

Legal context

The court examined its authority to grant a European injunction in the case of a Community design infringement, in application of Articles 82 and 83 of the Community Designs Regulation (EC Regulation 6/2002), following two interim decisions rendered on 9 and 16 August by the same court.

Facts

In a preliminary injunction (9 August 2011), the Düsseldorf court of first instance prohibited the sale, import, export, and interim storage of the Samsung Galaxy Tab 10.1 in the whole of the EU except in the Netherlands, on the grounds that it potentially infringes Apple's Community design rights (Community design 000181607 for the iPad product).

However, the President of the Düsseldorf court announced on 16 August that execution of that decision was suspended. The announcement stated that the court did not have jurisdiction to grant a European-wide injunction forbidding a company based outside the European Union to commercialize its products in the EU. The ground stated for the suspension was that the court was asked to examine an interim matter and thus did not have such far-reaching powers.

The decision for the appeal filed by Samsung against the 9 August injunction, following the court hearing of 25 August, was rendered on 9 September.

The Landgericht maintained the injunction against Samsung Electronics GmbH, a German company, confirming the prohibition of selling the Samsung Galaxy Tab 10.1 in the EU, and in particular, the prohibition of producing, offering for sale, commercializing, importing, exporting, or storing the product for these purposes.

With regard to Samsung Electronics Co. Ltd, based in South Korea, the court has, however, limited the ban to the German territory. The European-wide ban was lifted.

Analysis

Competition is fierce in the tablet PC market, and registrations of IP rights are some means of obtaining a competitive advantage. The current context is part of a legal strategy between Apple products and Android-based smartphones and tablet PCs (Android is an open-source operating system created by Google, used by several manufacturers including Samsung).

The mechanism of the European injunction in favour of Community design owners allows Community design courts to prohibit the sale of a product potentially infringing a Community design, in the whole European Union territory, without examining the grounds for the claims (ie the validity of the design registered). As the German decision has not yet been published, we assume that the injunction was based on Article 85 of the Community Designs Regulation. The Regulation on Community designs requires that in proceedings for an alleged infringement action, the courts treat the Community design as valid (Article 85 of the Regulation). Validity can only be challenged through a counterclaim for a declaration of invalidity, or by way of counterclaim in so far as the defendant claims that the Community design could be declared invalid on account of an earlier national design right belonging to the defendant.

The Düsseldorf Landgericht's summary judgment of 9 August is an exceptional decision, given its scope and potential consequences. We should, however, bear in mind that the tribunal had no choice but to consider the design as valid. Acting on an interim matter, the court could not examine the grounds of the claims. It could only examine the existence of IP rights on which the claims were based.

This leads on to the validity of the Community design. Apple's registered Community design may be seen as so basic that the ‘individual character’ condition of Article 6 may be absent. In addition, the shape of the design can be considered being dictated by the functionality of a tablet PC (Figure 1).

Apple's registered design for a handheld computer

Design law requires that the form of a design not be solely dictated by its technical function (Article 8 of the Regulation). It is therefore questionable that a simple rectangular, flat geometric shape be registered as a Community design for a tablet PC. The shape in itself could be seen as being dictated by the functionality of the apparatus, which is to provide a tactile screen for interaction with the user.

In conclusion, it is possible that the design may be declared invalid in the future. The legal issue at stake would then fall under the realms of unfair competition rather than of industrial property rights.

Practical significance

A similar provision relating to trade marks allows national courts to grant Euro-injunctions in favour of trade mark owners (Article 98 of the Community Trade Mark Regulation). The extent of jurisdiction on Community design infringement depends on the international jurisdiction criteria stated in Article 82 of the Community Designs Regulation. Article 82(1) states that infringement proceedings

shall be brought in the courts of the Member State in which the defendant is domiciled or, if he is not domiciled in any of the Member States, in any Member State in which he has an establishment.

Article 85(2) states that if

the defendant is neither domiciled nor has an establishment in any of the Member States, such proceedings shall be brought in the courts of the Member State in which the plaintiff is domiciled or, if he is not domiciled in any of the Member States, in any Member State in which he has an establishment.

If the claimant or the defendant is domiciled or has an establishment in the Member State, the Community Design Court will have authority to grant a Euro-injunction based upon the Community Design Regulation, Article 83(1). If, however, the court is acting only so as to stop potential infringement in the Member State in which the act of infringement has been committed or is going to be committed—the forum loci delicti (Article 82(5))—it will not have the authority to grant a Euro-injunction (Article 83(2)).

In the present case, the defendants were Samsung Electronics GmbH (based near Frankfurt) and Samsung Electronics Co. Ltd (headquartered in South Korea). The reasoning behind the suspension of the execution of the original 9 August decision is that the court only had jurisdiction to grant a Euro-injunction towards Samsung's German defendant. With regard to Samsung Korea, the company is not viewed as an ‘establishment’ in the sense of the Regulation. This may be due to a problem of translation of the European Regulation into German. In the German version of the text, the term ‘establishment’ is translated as ‘Niederlassung’. This can mean either an independent company or a subsidiary.

In order for Article 82(1) to apply, Samsung Electronics GmbH would need to be considered a subsidiary of Samsung Electronics Co. Ltd (South Korea). This seems not to be the case. Due to the plaintiff's headquarters being situated in California, Article 82(2) could not be applied either.

The appropriate form of action in order to obtain a Euro-injunction would have been for Apple Inc. to have applied to the courts of Alicante in Spain, where the OAMI is situated (Article 82(3)).

Industrial property offices have a great responsibility in maintaining a healthy market, by being cautious before granting industrial property rights. The combination of Articles 83 and 85 of the Community Design Regulation creates a powerful instrument for corporations. Aggressive registration of questionable designs followed by summary injunctions seeking a European ban is an effective technique for eliminating competition.

In the case of abusive procedures, there is little in the way of compensation for victims if the design is subsequently invalidated. This current state of affairs may limit healthy competition and place a brake on innovation in the European Community market.

Books for review in JIPLP

2011-11-22T11:40:00.000Z

The following books have been offered to the Journal of Intellectual Property Law and Practice (JIPLP) for review. If you would like to volunteer to review one of these titles, please email Sarah Harris at Oxford University Press at sarah.harris@oup.com by Sunday 4 December and let her know your particular interest or expertise in the subject that would qualify you to tackle the task. After that date, you will receive either confirmation that your offer to review has been accepted or a grateful acknowledgement of the fact that you have offered, even though the review has been given to another. Suitably qualified volunteers to review who are unsuccessful will be given priority when next they request to review a book.

JIPLP is committed to making sure that books which are sent for review are actually reviewed, so please do not volunteer to review one of the titles unless you are genuinely prepared to deliver. If you do not review the book, you will be asked to return it so that it can be sent to another reviewer. This policy is not intended to make life hard for reviewers, but rather to give a better deal to publishers and authors who depend on reviews as a means of drawing the attention of their works' intended readers and purchasers -- and who also benefit from even critical feedback.

The books on offer are as follows:

National Developments in the Intersection of IPR and Competition Law: from Maglite to Pirate Bay
Edited by Hans Henrik Lidgard.
Hart Publishing, Oxford.
Publication date: May 2011 400pp hbk 9781841139449 £55.00
More information concerning this title is available here

Intellectual Property, Competition Law and Economics in Asia
Edited by R Ian McEwin.
Hart Publishing, Oxford.
Publication date: October 2011 368pp hbk 9781849460873 £75.00
More information concerning this title is available here

Refusals to License Intellectual Property: Testing the Limits of Law and Economics
Ian Eagles and Louise Longdin.
Hart Publishing, Oxford.
Publication date: December 2011 272pp pbk 9781841138732 £65.00
More information concerning this title is available here

Handbuch des Fachanwalts Informationstechnologierecht
Michael Lehmann and Jan Geert Meents
Carl Heymanns Verlag
2. Auflage 2011. 1708 Seite(n), gebunden.
lieferbar. EUR 168,00. ISBN 978-3-452-27399-4
More information concerning this title is available here

Die europäische Patentanmeldung und der PCT in Frage und Antwort
Gerard Weiss and Wilhem Ungler
Carl Heymanns Verlag
8. Auflage 2011. 478 Seite(n), gebunden.
ISBN 978-3-452-26819-8. sofort lieferbar EUR 118,00
More information concerning this title is available here

Electronic Communications Law: Competition & Regulation in the European Telecommunications Market (second edition)
Paul Nihoul and Peter Rodford
Oxford University Press.
More information concerning this title is available here

Know-how-Schutz in Deutschland zwischen Strafrecht und Zivilrecht - welcher Reformbedarf besteht?
Björn Helge Kalbfus
Carl Heymanns Verlag
1. Auflage 2011. 424 Seite(n), kartoniert
ISBN 978-3-452-27597-4. EUR 114,00
More information concerning this title is available here

Bits and pieces

2011-11-18T11:59:00.000Z

By now, all subscribers to the print edition of the November 2011 issue of JIPLP should have received their copies. If you've not yet received yours, you can check the contents here and see what you're still missing. Incidentally, some 20 items are available on JILP's Advance Access service while they await their paper publication dates.

Some of our editorial board members have been on the move. Newly-appointed Andrew P. Bridges is now with Fenwick & West, San Francisco, California (you can email him here), while Neil J. Wilkof, who has been on the editorial board since the journal's inception, is now of counsel to Dr Eyal Bressler & Co., Ramat Gan, Israel (you can email him here).

Notice to all prospective authors: please, please, PLEASE -- when submitting articles for publication, do try to bear in mind the fact that JIPLP has a house style. While we try to be as flexible as possible and want to help our authors gain the publication of their submissions, we have to bear in mind the interests of our readers too. In particular:

While authors rejoice in the publication of longer articles, most readers prefer shorter ones. If your subject matter is too long for an article 7,500 words or thereabouts, ask whether you actually have two separate articles on your hands.
JILP's footnotes should appear at the bottom of each page, not at the end of the article. They should refer to sources cited in an article and should not be bibliographic exercises in scooping up all the articles you've found on Google.
If you are writing on a topic which is tangential to IP but nonetheless of importance to it, spell out its relevance to JIPLP readers. Any article which contains no mention of the words "intellectual property" or of any specific IP right will be rejected since it is unfair to expect subscribers to a quality specialist journal to read through an apparently irrelevant piece in order to work out why it should be of interest or importance to them.
There has in recent months been a disconcerting trend towards the inflation of credits. Whereas formerly an author might acknowledge support from a research assistant, a colleague, a professor or a funding body, the credits are starting to read like Oscar acceptances. If this continues, I shall consider the launch of a fresh website on which authors can gratefully praise their partners, their pets, their cars and anything else that occurs to them. These items would link back to the original JIPLP article, in the event that the reader was curious enough to want to read it.

Harmony with the rest of the world? The America Invents Act

2011-11-13T18:29:00.002Z

Author: Toshiko Takenaka, Professor of Law and Director, CASRIP, University of Washington

The America Invents Act, 16 September 2011

Journal of Intellectual Property Law & Practice (2011) doi: 10.1093/jiplp/jpr175, first published online: November 11, 2011

President Obama has now signed the America Invents Act (AIA) into law, following a process which began when Congress and US industry first sought to overhaul the US patent system in 2004 and which draws US practice closer to the patent laws of the rest of the world than has previously been the case.

Legal context

During discussions to review patent infringement remedies, US industry was increasingly divided in their views with respect to a grant of injunction and adequate damages to compensate infringement. With the development of case law to resolve the different views (see eBay Inc. v MercExchange, LLC, 126 S. Ct. 1837, 164 L. Ed. 2d 641, USPQ2d 1577 (US 2006), Lucent Techs. v Gateway, Inc., 580 F.3d 1301, 92 USPQ2d 1555 (Fed. Cir. 2009), the industry was finally able to reach an agreement for all controversial issues in patent reform and convince Congress to pass a reform bill (see HR 1249 (AIA), 112th Congress: 2011–2012 (here)). However, the terms of America Invents Act represent a lot of compromises between competing interests of different sectors of US industry, including large multinational firms, universities, and non-profit research labs and independent inventors, which will lead to a lot of uncertainty for US courts and the US Patent and Trademark Office (USPTO) as to how to interpret these terms.

Facts and analysis

Here are the most important aspects that will affect interests of European patent owners for their patent procurement and enforcement in the USA.

First-inventor-to-file (FITF)

The patent community worldwide has been excited by the news that the USA has finally adopted the first-inventor-to-file (FITF) system (AIA, section 3) that US lawyers describe as a first-to-file system to join the rest of the world for patent harmonization. However, there is still a big question mark as to whether the USA gives priority between two independent and identical inventions based on the date of filing. Many view the novelty and priority under the AIA as the first to publish in which the first to invent is established only through a disclosure.

Prior art (AIA, section 3)

New section 102(a) is comparable to EPC Article 54 in defining an invention which is part of the state of art before the effective filing date. It not only lists a broad definition of such invention, an invention which is available to the public as provided in EPC Article 54(2), but also examples of such inventions, an invention being patented, described in a printed publication, in public use or on sale. These examples are copied from the current patent statute and are associated with the peculiar interpretation of these examples based on the first-to-invent policy. For example, ‘public use’ includes an inventor's own secret but commercial use (Metallizing Eng'g Co. v Kenyon Bearing & Auto Parts Co., 153 F.2d 516, 517–8 (2d Cir. 1946)) excludes experimental public use (City of Elizabeth v American Nicholson Pavement Co., 97 US 126, 134–5 (1877)). Because US courts usually retain an interpretation of the term through its case law, unless the interpretation is expressly repealed by Congress, it is likely that US courts would interpret the definition of the state of art under the AIA differently to that of the EPC, Article 54. Despite this ambiguity, the AIA has removed the geographical limitation with respect to public use and sale and has thus harmonized with the EPC and Japanese Patent Act (JPA) in adopting worldwide novelty.

A new section 102(a) also provides a prior right which is comparable to the prior art under EPC Article 54(3), an invention described in a patent or patent application pending at the USPTO, to constitute the state of art if the patent application is filed before the effective filing date of the claimed invention under examination as long as the application is published after 18 months from the effective filing date or upon an issuance of patent (some US patents are not subject to 18-month publication, according to 35 USC 122(b)(2)(B)). Because the effective date is defined to include a foreign priority date under the Paris Convention and the PCT filing date, the AIA expressly repeals the Hilmer doctrine (from In re Hilmer, 359 F.2d 859, C.C.P.A. 1966) and gives the patent a defeating effect as of the priority date. Thus, the AIA's prior right provision is in line with the EPC as well as the JPA in giving the patent a defeating effect as of the priority date. However, it differs from the EPC and JPA by making the prior right reference available for not only novelty but also non-obviousness. Unlike the EPC, a prior right reference does not apply to applications which name the same inventor(s) or are owned by the same person or subject to an obligation of assignment to the same person to avoid the self-collision problem. This approach is in line with the JPA.

Grace period (AIA, section 3)

Contrary to the perception of US lawyers that FITF is a first to file, FITF is in fact a revised version of a first to invent. The definitions and underlying policy of disclosures excluded from the state of art make clear that the AIA still follows a first-to-invent system, although the period that the inventor can rely on the first to invent is limited to the 12 months from the filing date and the evidence to establish the first to invent is limited to a disclosure.

The new section 102(b) is comparable to EPC Article 55 in defining a disclosure of an invention which is removed from the state of art. The grace period, to take advantage of this exception to remove disclosed inventions, is 12 months and thus twice as long as the grace period under the EPC and JPA. The scope of inventions removed from the state of art is much broader than that of the EPC. Section 102(b) removes two classes of disclosed inventions from the state of art. The first class includes inventions which are disclosed by an inventor, joint inventor, or a third party who obtained the invention directly or indirectly from the inventor. Removing this class of disclosures is familiar within the first-to-file world because these disclosures are also excluded from the state of art under Article 9 of the Draft Substantive Patent Law Treaty (World Intellectual Property Organization, Draft of Substantive Patent Law Treaty, Article 9 (here).

The second class of inventions is most controversial because of the complexity and ambiguity in defining the class. The definition reads: ‘the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor, a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor’ (§ 102(b)(1)(b)). US lawyers and academics read the definition to remove from the state of art any disclosure of an invention after the first disclosure which falls into the first class as long as the inventor files an application within the 12-month grace period regardless of such disclosure made by another inventor who independently developed the same invention. In other words, the definition of second class should read to give priority based on the date of disclosure. This view is foreign to the first-to-file world, where a disclosure gives rise only to a patent-defeating effect. However, US lawyers who are trained in the first-to-invent world view the disclosure as evidence of invention which gives rise to priority for obtaining a patent as well as the patent-defeating effect. This interpretation is supported by some discussions in Congress where a sponsor of the AIA bill emphasized the protection of an inventor by giving the priority based on his or her disclosure (22 June 2011, H4420-4452 (here)).

The first-to-file trained lawyers would read the definition in line with the grace period provisions under the non-prejudicial disclosure under EPC Article 55, JPA Article 30, or Article 9 of the Draft Substantive Patent Law Treaty. For them, these provisions should read to remove from the state of art only certain types of disclosures by the inventor or derived from the inventor. This is because the grace period is an exception to the first to file and covers only minimum acts of inventors. In contrast, under the AIA, the grace period is an exception to the first to invent in barring inventors from obtaining a patent after 12 months from the filing date. That the AIA follows a first-to-invent system is further confirmed in that the subject matter resulting from both classes of disclosures is prevented from constituting a prior right. Non-prejudicial disclosures are not exempted from the first-to-file principle under either the EPC or the JPA.

Accordingly, ‘disclosure’ plays an important role in establishing the priority. However, the AIA does not include any definition of disclosure. Although the ‘disclosure’ should at least exclude a confidential sale and secret use, a non-confidential commercial offer of an invention or a public use of an invention may constitute a disclosure. The AIA does not suggest what degree of public access is necessary in order to rise to disclosure for establishing a priority. Because the FITF provisions will apply to applications with effective filing dates after 16 March 2013, we have to wait for a long time to determine how the US courts will interpret ‘disclosure’.

Derivation procedure (AIA, section 3)

Interference proceedings that determine priority based on the first to invent are restructured as derivation proceedings. The new proceedings will determine whether an invention of an application or a disclosure during the grace period is derived from the applicant. There is no proceeding to determine priority based on disclosures during examination if competing applications claim early disclosures during the grace period to establish the priority. Once a patent is granted, a first to disclosure may use the new post-grant review for challenging the priority.

Prior user rights (AIA, section 5)

The AIA will expand the scope of inventions to which a defence of infringement based on a prior use of an invention applies. Currently, a defence based on prior use is available only with respect to a method of doing or conducting business (see 35 USC §273). Under the AIA, the defence will be available for a process, a machine, manufacture, or composition of matter used in a manufacturing or other commercial process regardless of the field of technology. A substantial commercial use of the invention must be made at least one year before the earlier of either the effective filing date or the first disclosure of the invention claimed in the patent against which a defence is asserted. However, this defence is not available if the patent against which this defence is asserted was owned or to be subject to an obligation of assignment to universities at the time of invention. This defence will apply to any patent issued after 16 September 2011.

Multiple proceedings for challenging validity (AIA, section 6)

The AIA makes the US patent system complex and unique in offering multiple options for challenging patent validity at the USPTO in addition to invalidity challenge options at US courts. The AIA will provide three inter partes proceedings:

post-grant review;
inter partes review; and
a special post-grant review for business methods.

The post-grant review and the special post-grant review are new inter partes proceedings in contrast to the current inter partes reexamination which will be renamed as the inter partes review with some important revisions. The ex parte reexamination will remain as it is with a very minor change and interference proceedings. A comparison of the four proceedings is provided in the table below [If your screen shows only a partial version of the table, click it and you should be able to read it in its entirety].

TV Catchup paused as High Court refers to Europe

2011-11-08T17:01:00.000Z

This Current Intelligence note refers to the then-pending ruling of the Court of Justice of the European Union in Case C-403/08 Football Association Premier League and Others, which has since been delivered here.

Authors: Joel Smith and Emily Mallam (Herbert Smith, London)

ITV Broadcasting Ltd and Others v TV Catchup Ltd [2011] EWHC 1874 (Pat), Patents Court, England and Wales, 18 July 2011

Journal of Intellectual Property Law & Practice (2011), doi: 10.1093/jiplp/jpr156, first published online: November 4, 2011

The High Court has referred to the ECJ questions concerning communication of films and broadcasts to the public.

Legal context

This was a copyright action brought by ITV Broadcasting Limited and others (‘ITV’) against TV Catchup Limited (TVC). TVC had previously applied unsuccessfully for summary dismissal of the action on the basis that ITV had no chance of succeeding at trial.

Facts

TVC operated a live streaming service of broadcast television programmes over the internet so that users could watch live television on their computers, tablets, and smartphones. The material streamed included programmes and films in which ITV owned the copyright. In order to take advantage of this service, users had to create an account and agree to certain terms, confirming that they held a valid TV licence and that they would restrict the use of TVC to their country of residence.

The TVC service was supported by advertisements which were shown before the live stream of the broadcast. Any advertisements that formed part of the live stream were shown unaltered. Since further advertisements surrounded the TVC live stream, TVC was in direct competition with ITV.

The TVC service was administered by capturing the broadcast signals using a single domestic television aerial, processing them through several servers. At no stage during the streaming process was any of the stream stored on a permanent storage medium. However, at each step, a small amount of data from the video stream (a few seconds worth) was held in the memory of the servers for the purposes of buffering the live stream.

ITV alleged that TVC infringed its copyright in two categories of work; broadcasts and films. The alleged infringement occurred by (a) communicating the works to the public and (b) making, or authorizing the making of, transient copies of the works in TVC's servers and on the screens of users.

TVC's defences in relation to broadcasts

Denying infringement by communication of works to the public, TVC argued that

the amended version of section 20(1)(c) of the Copyright, Designs and Patents Act 1988 (‘CDPA’) which creates a general communication to the public right in respect of broadcasts, was invalidly enacted and
in any event, what TVC did was not a ‘communication to the public’.

As to making or authorizing the making of transient copies of broadcasts, TVC argued that

the copies were not substantial parts of the works relied on and
section 28A of the CDPA, which says that the making of temporary copies that have no independent significance will not infringe copyright, applies.

TVC also raised a defence under section 73(2)(b) of the CDPA, which allows broadcasts to the re-transmitted by cable.

TVC's defences in relation to films

TVC raised the same defences in relation to films, save that there was no challenge to the validity of the legislation on communication to the public insofar as it related to films.

Analysis

Was section 20(1)(c) of the CDPA ultra vires?

Article 3 of Directive 2000/29 on the harmonization of certain aspects of copyright and related rights in the information society (the ‘InfoSoc Directive’) established a general ‘communication to the public’ right for broadcast copyright owners. The Copyright Related Rights Regulations 2003 introduced a new section 20(1)(c) and section (2) to the CPDA, which now reads:

(1) The communication to the public of the work is an act restricted by copyright in-
(a) a literary, dramatic, musical or artistic work,
(b) a sound recording or film, or
(c) a broadcast.
(2) References in this Part to a communication to the public are to a communication to the public by electronic transmission, and in relation to a work include-
(a) the broadcasting of the work;
(b) the making available to the public of the work by electronic transmission in such a way that members of the public may access it from a place and a time individually chosen by them.

TVC alleged that (i) since this amendment required primary legislation, it could not be implemented via the 2003 Regulations and (ii) the Regulations were drafted on the mistaken assumption that Article 3 of the InfoSoc Directive required Member States to extend an exclusive right over communication to the public to broadcasts. ITV (and the Secretary of State) argued that, to the extent that the amendment went further than required, it fell within the powers given to the Secretary of State under section 2(2) of the European Communities Act 1972: this confers a general power to legislate to satisfy European obligations.

Floyd J rejected TVC's submission that section 2(2) was merely for ‘filling the cracks’ in Community legislation and explained that it went further. He agreed with the submission by the Secretary of State that the addition of section 20(1)(c) to the CPDA: had the effect of restricting wireless transmission for on demand access; made it a restricted act to make a transmission wirelessly for reception at two or more places and extended to anything else properly characterized as a communication to the public by electronic means. Since these amendments were closely related to the subject matter of the Infosoc Directive and helped to fulfil its harmonizing function, Floyd J did not think that section 21(1)(c) went further than Article 3 of the Infosoc Directive; nor was it ultra vires.

Communication to the public

ITV alleged that TVC was communicating its broadcasts and films to the public under section 20 of the CPDA. By section 20(2) ‘communication to the public’ means communication to the public by electronic transmission. Recital 23 in the InfoSoc Directive indicates that the communication to the public right should be

… understood in a broad sense covering all communication to the public not present in the place where the communication originates.

ITV cited Article 11bis(1)(ii) of the Berne Convention and argued that, whenever there is an intervention by a broadcasting organization other than the original one, there is a communication to the public within the exclusive right of the copyright owner and which it is entitled to control: the signal was re-transmitted to members of the public who were not the direct recipients of the signal.

TVC referred to the Rome Convention Intergovernmental Committee, 12th Session (Geneva, 5–7 July 1989), which said of ‘Cable distribution’:

It does not amount to distribution by cable of the broadcast of the work concerned where the broadcast, received by an aerial larger than generally used for individual reception, is transmitted by cable to individual receiving sets within a limited area consisting of one and the same building or a group of neighbouring buildings, provided that the cable originates in that area and is made without gainful intent …

TVC submitted that this demonstrates that not every physical act of distribution of a broadcast signal is a communication to the public: merely providing technical assistance to allow people to access more readily what they could receive by other means was not such a communication.

Floyd J referred to the ECJ decision in Sociedad General de Autores y Editores de Espana (SGAE) v Rafael Hotels SL where distribution by hotel proprietors of broadcast signals received by them to rooms in their hotels did constitute a ‘communication to the public’ under Article 3(1) of the InfoSoc Directive. This case sought to clarify whether there was a communication to the public when an intervening organization, acting for its own profit, intervenes in full knowledge of the consequences of its acts and in order to attract an audience to its own transmission to members of the public who would otherwise be able to access the transmission.

Floyd J indicated that in his view, given the broad meaning which the InfoSoc Directive requires for ‘communication to the public’, the natural meaning of that expression should not be narrowly construed. He distinguished between acts that are purely supportive of the original broadcaster's intention and those intended to attract the audience of the original broadcaster away from direct reception of its signals, the latter being within the notion of communication to the public. Said the judge, TVC's interception of ITV's broadcasts, making them available to the public, amounted provisionally to a ‘communication to the public’. However, he referred the question to the ECJ for its opinion.

Reproduction right and substantial part

When it copied the broadcasts for a transient period via the buffers, was TVC copying a whole or substantial part of the broadcast or film? Floyd J thought that TVC both produced and authorized the reproduction of a substantial part of the films, but not the broadcast, in the buffers and on the screens—subject to anything that the ECJ say in their ruling on Football Association Premier League v QC Leisure.

Does section 28A apply to broadcast copyright?

In defence of the allegation of making or authorizing the making of transient copies of broadcasts, TVC invoked section 28A of the CDPA:

Copyright in literary work, other than a computer program or a database, or in a dramatic, musical or artistic work, the typographical arrangement of a published edition, a sound or recording film, is not infringed by the making of a temporary copy, which is transient or incidental, which is an integral and essential part of a technological process and the sole purpose of which is to enable-
(a) transmission of the work in a network between third parties by an intermediary; or
(b) a lawful use of the work;
and which has no independent economic significance.

This defence only applies if, contrary to the judge's provisional view, reproduction of the broadcasts is found.

While section 28A implements Article 5 of the InfoSoc Directive, which does apply to broadcasts, its list of rights to which the defence applies omits broadcast copyright. Floyd J considered that, since no policy reason was advanced for this omission and it would not be inconsistent to read section 28A as if it included a reference to broadcast copyright, the Marleasing principle should be applied and the court should construe section 28A as including broadcasts.

Doing just this, Floyd J agreed that the copies made by TVC were temporary and transient. Further, if TVC successfully argued that the activities were not a communication to the public, the copies were a lawful use of the work. As to whether the reproduction in the buffers and the screens had real economic significance, Floyd J said that, since the position would be clarified in the ECJ ruling on Football Association Premier League v QC Leisure, he would defer judgment until its outcome.

Section 73 CPDA

Under section 73 of the CPDA:

… where a wireless broadcast is made from a place in the UK and immediately re-transmitted by cable:
(2) The copyright in the broadcast is not infringement-
(a) if the re-transmission by cable is in pursuance of a relevant requirement, or
(b) if and to the extent that the broadcast is made for reception in the area in which it is re-transmitted by cable and forms part of a qualifying service.
(3) The copyright in any work included in the broadcast is not infringed if and to the extent that the broadcast is made for reception in the area in which it is re-transmitted by cable; but where the making of the broadcast was an infringement of the copyright in the work …

ITV argued that ‘cable’ should be construed narrowly, excluding transmission over the internet—which often encompasses transmission over a wireless network. TVC said that, while this was sometimes so, it is only the re-transmission that must be by cable, which was always the case here. Floyd J thought that, to take advantage of section 73, the entire transmission of the broadcast should be by cable. TVC could not accordingly take advantage of the defence where their re-transmissions were for reception by a mobile telephone.

ITV further argued that, since TVC transmitted the London regional services to regions where the signal could not usually be picked up, the broadcasts were not ‘made for reception’ in the area into which they were transmitted. TVC disagreed: it was technically possible to receive any of the ITV regional services anywhere with correct equipment, for instance by entering a postcode for a different region in a Freesat box. Floyd J concluded that it would be an incorrect interpretation of the legislation if it were to reference areas where to broadcast was ‘receivable’ rather than where it was ‘made for reception’. Accordingly, the section 73 defence would not be available where TVC transmitted outside the regional area of the service in question.

Practical significance

While the court's analysis of both the factual and the legal issues raised by the parties is of great interest, at this stage it is hard to predict the degree of practical significance to attach to it since it could be some years until the ECJ rules on the referred questions. In the meantime TVC continues to offer its services.

Supplementary Protection Certificates for combination products

2011-11-06T15:43:00.000Z

Editor's note: this the Court of Justice of the European Union has announced on the Curia website here that the ruling of its Fourth Chamber will be delivered on Thursday 24 November 2011. JIPLP is pleased to be able to make this note on the Advocate General's Opinion available in advance of that date.

Authors: Tim Powell and Rebecca Lawrence (Powell Gilbert LLP)

Joined Cases C322/10 Medeva and C422/10 Georgetown University, Court of Justice of the European Union, Advocate General's Opinion, 13 July 2011

Journal of Intellectual Property Law & Practice (2011) doi: 10.1093/jiplp/jpr158, first published online: November 4, 2011

The Advocate General has opined on the availability of Supplementary Protection Certificates (SPCs) for combination products, clarifying the interpretation of Articles 3(a) and 3(b) of Regulation 469/2009.

Legal context

SPCs may be granted to patentees to extend the life of patent protection in relation to specific medicinal products. The availability of SPCs is prescribed by Regulation 469/2009, which aims to compensate patentees where the effective monopoly afforded by the patent has been eroded by a lengthy marketing authorization process.

In order to obtain an SPC, certain requirements prescribed by the Regulation must be met, including:

Article 3
(a) the product must be protected by a basic patent in force;
(b) a valid authorization to place the product on the market as a medicinal product must have been granted;
(c) the product must have not already been the subject of an SPC;
(d) the authorization in (b) must be the first to place the product on the market.

‘Product’ is defined in Article 1(b) as ‘the active ingredient or combination of active ingredients of a medicinal product’. ‘Basic patent’ is defined in Article 1(c) as ‘a patent which protects a product as such, a process to obtain a product or an application of a product … ’.

Issues relating to SPCs for ‘combination products’ which contain two or more active ingredients have resulted in the recent referral of questions by the courts in England and Wales to the Court of Justice of the European Union (ECJ). Advocate General Trstenjak (‘the AG’) has now provided her Opinion in the first of those cases.

Facts

Both Medeva and Georgetown University concerned multi-disease vaccines. Due to public health policy, vaccines often contain a combination of active ingredients directed to a number of different diseases so that multiple immunizations can be carried out via one injection. This approach has led to problems in obtaining SPC protection as the British courts have considered there to be a mismatch between the patent (which, for example, might relate to only one disease) and the SPC application and/or marketing authorization (which, for example, might cover a number of components of a multi-disease vaccine).

The facts in Medeva illustrate the relevant issues. Medeva had a patent relating to two antigens of the whooping cough virus Bordetella pertussis. However, the vaccines Medeva marketed additionally contained other active ingredients directed to diphtheria and tetanus and, in some vaccines, meningitis and polio. Medeva applied for five SPCs, four of which covered vaccines containing eight or nine active components and one (the '018 Application) which covered the two patented components.

The applications relating to eight or nine active components were rejected as not complying with Article 3(a) of the Regulation as a product containing a multiplicity of active ingredients was not considered to be ‘protected’ by a basic patent which only claimed a subset of those ingredients.

The '018 Application was rejected as not complying with Article 3(b) of the Regulation as the relevant marketing authorization contained a greater number of active ingredients than the product, so there was considered to be no valid authorization to place the product on the market.

The key questions in Medeva referred by the Court of Appeal to the ECJ can be summarized as follows:

1. What is meant in Article 3(a) of the Regulation by ‘the product is protected by a basic patent in force’ and what are the criteria for deciding this?

2. Are there further or different criteria for determining whether or not ‘the product is protected by a basic patent’ for medicinal products comprising more than one active ingredient and, if so, what are those further or different criteria?

3–5. …

6. Does the Regulation and, in particular, Article 3(b), permit the grant of a supplementary protection certificate for a single active ingredient or combination of active ingredients where:

(a) a basic patent in force protects the single active ingredient or combination of active ingredients within the meaning of Article 3(a) of the Regulation; and

(b) a medicinal product containing the single active ingredient or combination of active ingredients together with one or more other active ingredients is the subject of a valid marketing authorization?

Questions 3–5 were specifically related to Article 3(a) as it applies to multi-disease vaccines and are of less general importance. The sole question referred in Georgetown University was the same as question 6 in Medeva.

Analysis

The ECJ was faced with the challenge of including a partially patented multi-disease vaccine within the scope of the Regulation in a manner consistent with its objectives, without jeopardizing the balance achieved in that Regulation between the various interests at stake in the pharmaceutical sector.

Article 3(a): questions 1–5
Medeva argued that a combination of active ingredients is protected by a basic patent where at least one of its active ingredients is claimed in the patent, so that the whole combination would infringe the patent (the so-called infringement test). The UK government supported this approach, while the Commission submitted that the Court must establish which active ingredients are protected by a patent under national law, not which forms of commercial activity by third parties the patent proprietor can inhibit.

The AG considered that, on a literal reading of the Regulation, an SPC may be granted only in relation to the entire combination of active ingredients because, according to the wording of Article 1(b) of the Regulation, only the combination of active ingredients as such constitutes the ‘product’. Thus there should be no mismatch between the ‘product’ the subject of the SPC application and the ‘product’ the subject of the patent.

However, the AG recognized that such a literal interpretation would not be in accordance with the aims of the Regulation as it would lead to a rejection of SPCs on extremely important combination medicinal products. She therefore considered that a ‘teleological’ interpretation should be adopted taking into account the aims of the Regulation. By this approach, the definition of ‘product’ in Article 1(b) also included one or a subset of the authorized combination.

The AG then considered whether the widening of the concept of ‘product’ in this way upset the balance of interests envisaged by the legislature in adopting the Regulation. She was concerned about the risk of ‘evergreening’ whereby a manufacturer of medicinal products could develop a number of products with different combinations of active ingredients on the basis of one patented active ingredient and place those products on the market at different times, for the purpose of obtaining a variety of certificates of different durations.

The AG considered that the product within the meaning of Article 3(a) must be interpreted as meaning the product which forms the subject matter of a basic patent within the meaning of Article 1(c). Thus, whichever combination is marketed, the product is always the same. Subsequent authorizations with different combinations will not give rise to further SPC applications because the product will already have been the subject of an SPC (Article 3(c)) and the authorization will not be the first to place the product on the market (Article 3(d)). In other words, if the patent relates to a + b but the marketing authorization is for a + b + c + d, the patentee can apply for an SPC on a + b. If a + b + f + g is later authorized, no further SPC can be granted as a + b is already the subject of an SPC.

In light of this finding, it was unnecessary to apply the infringement test advanced by Medeva. The AG rejected the test and instead drew a distinction between the subject matter—or extent of protection—and the protective effect of the basic patent, considering that this followed from the requirements of Article 1(c) of the Regulation that sets out the definition of a ‘basic patent’ under which an SPC can be granted.

Article 3(b): question 6
In considering the question referred on the interpretation of Article 3(b) of the Regulation, the AG decided that it follows from the teleological interpretation adopted in respect of Article 3(a) that the marketing authorization under Article 3(b) can relate to a medicinal product which contains, in addition to the patented active ingredient/combination, one or more other active ingredients (provided that it is the first authorization to place the product on the market).

Practical significance

The AG has been prepared to interpret the Regulation in a teleological fashion, introducing flexibility into the requirements of Article 3 and allowing a ‘mismatch’ between the number of active ingredients included in the marketing authorization and the number in the patent. To this extent, this Opinion seems favourable to the research-based pharmaceutical industry in that the Regulation has been interpreted to avoid an unduly harsh refusal of SPC protection. The ECJ must decide whether to adopt the Opinion of the AG. However, the Opinion leaves open to interpretation the ‘subject matter’ of the basic patent. Also, in rejecting the infringement test, the AG did not go as far as many in the pharmaceutical industry would have liked in providing SPC protection for second generation combination patents.