jiplp

After INTA -- a big "thank-you"

2013-05-09T03:17:00.000+01:00

Now that the International Trademark Association's annual Meeting is over, and all the exhibitors have packed their wares in preparation for the great trek from Dallas to their respective homes, I'd just like to express my gratitude to the team from Oxford University Press -- and JIPLP's editorial board members, readers and contributors who were present -- for their support over a very busy four days.

During the course of this week, we have been able to approach fresh authors, listen to readers' comments and generally raise awareness of JIPLP in the professional and commercial IP communities. Editorial Board members who spent time with us at the OUP booth included the indefatigable Marius Schneider, Willem Leppink and Neil Wilkof, and we welcomed many others too.

Several contributors of Current Intelligence notes and editorials acknowledged the efforts of the journal to promote their writings and to take them to a wider audience via JIPLP's @JIPLP Twitter account and this blog. The Twitter account now has 282 followers and the blog just over 800 email subscribers, all being people who have opted in so that they can be more in touch with JIPLP via the social media.

We are already looking forward to next year's INTA Meeting in Hong Kong. See you there?

The CPVO's Schnitzer Gala

2013-05-07T15:02:00.001+01:00

Author: Gert Würtenberger (WürtenbergerKunze, Munich)

Case C-534/10 P, Brookfield New Zealand Ltd and Elaris SNC v Community Plant Variety Office and Schniga GmbH, Court of Justice of the European Union, 19 December 2012

Journal of Intellectual Property Law & Practice (2013) doi: 10.1093/jiplp/jpt053, first published online: May 3, 2013

The CJEU confirms wide discretion of the Community Plant Variety Office (CPVO) in technical examination proceedings.

Legal context

New plant breeding results may be granted Community plant variety rights if the variety is distinct, uniform, stable and new. Whether the first three criteria of ‘distinctness’, ‘uniformity’ and ‘stability’ (the so-called DUS requirements) are satisfied is examined by the Community Plant Variety Office (CPVO) by means of a technical examination according to Article 55 of Council Regulation 2100/94 on Community Plant Variety Rights. Once the Office has reached the conclusion that an application fulfils the formal requirements, it will arrange for a technical examination by an Examination Office appointed by the CPVO. Examination Offices are usually either national authorities which examine whether national applications fulfil the requirements for grant of a national plant variety right or other institutions competent to examine whether a new variety fulfils the DUS requirements.

According to Article 55(4) the CPVO shall determine, through general rules or through requests in individual cases, when, where and in what quantities and qualities the material for the technical examination and reference samples are to be submitted. While so-called ‘technical protocols’ for the distinctness, uniformity and stability tests for certain species set up rules for the technical procedure to be followed (in principle, based on general UPOV documents TG/1/3 and the Guidelines related to those species), the request to the Applicant to submit certain material at a certain time is issued separately for each and every application.

Facts

Having examined Schniga's application in relation to fulfilment of the formal requirements, the CPVO requested that the applicant submit, within a specific period, to the Bundessortenamt—appointed as the Examination Office in this matter—the plant material required for the technical examination. The request was accompanied by the remark that the applicant was responsible for complying with all phytosanitary and customs requirements applicable to the delivery of the material. The Office did not, however, specify the requirements.

With its acknowledgement of receipt of the plant material, the CPVO informed the applicant that the material was not accompanied by a Phytosanitary Certificate and thus asked the applicant to ensure that this essential document was provided ‘as soon as possible’. Obviously, a specific time limit was not stipulated.

In order to comply with this request, the applicant submitted a so-called ‘European Plant Passport’, issued by the Plant Protection Service of Bolzano, to the Examination Office and advised that the Plant Protection Service had informed the applicant that this document serves as a Phytosanitary Certificate. While the Bundessortenamt informed the applicant a few weeks later that the material had arrived in due time and that it was appropriate for the DUS tests, it simultaneously stated that the Plant Passport provided was insufficient for the purpose of conducting the technical examination to determine whether the substantive conditions for the grant of a Community Plant Variety Right had been met. The Examination Office failed, however, to request a copy of the official certificate confirming that the material submitted was virus-free. In the third test period, that is to say three years later, it transpired that the applicant was unable to provide the requested documentary evidence as, in the interim, the material submitted in 1999 for the purpose of the technical examination was not virus-free. As a reaction to this information, the Bundessortenamt informed the CPVO that it intended to uproot the infected material in order to prevent a possible virus spreading to other plants cultivated in the fields of the Bundessortenamt. The question whether the plants were indeed virus-infected, remained open. In June 2001 the Office then informed the applicant that it had, in consultation with the Bundessortenamt, decided to authorize the submission of new virus-free plant material in order to resume the examination of the application. The Office justified its decision by the fact that its instructions regarding the phytosanitary state of the material had not been sufficiently clear.

DUS tests were continued with new material submitted in 2002, leading to grant of a right for the variety in 2006 and causing the parties Elaris and Brookfield, the licensee and the holder of a plant variety right relating to the apple variety BAIGENT, to lodge with the CPVO objections to the grant of a right to Schniga's variety, under Article 59 of Regulation 2100/94. Apart from the argument that Schniga's variety was not sufficiently distinct from the reference variety BAIGENT, they objected to the possibility given to the Applicant to submit new virus-free plant material. According to the intervening parties, the CPVO should have refused the initial application due to failure to submit material appropriate to performing the technical examination. While the Office rejected the objections and granted a Community Plant Variety Right, finding that it was sufficiently distinct from the reference variety BAIGENT and also dismissing the objections against submission of further plant material, the Board of Appeal annulled the Office's decision upon appeal by the opponents, according to Articles 67 to 72 of the Regulation. The Board of Appeal was of the opinion that Article 61(1)(b) of the Regulation did not empower the CPVO to authorize an applicant to submit new material, as in this case it had complied with the requests in an individual case.

The applicant contested this decision by an application for the annulment of the decision with the General Court, which concluded that it was in the scope of the discretion of the Office, conferred on it by Article 55(4) of Regulation 2100/94, to allow the applicant to submit new material. In cases in which the Office has not been sufficiently precise regarding the conditions to be met by an applicant, the Office may consider whether the lack of precision in its instructions to the applicant may be remedied in view of the principle of sound administration and in light of the need to ensure the proper conduct and effectiveness of proceedings. Moreover, the General Court stated that such discretion enables the CPVO to satisfy itself that its request in individual cases is clear, as this would enable other applicants to be unambiguously aware of their rights and obligations.

Analysis

The intervening parties filed an appeal before the Court of Justice of the European Union on two grounds of appeal:

* infringement by the General Court of Article 73(2) of Regulation 2100/94 and

* infringement of Article 55(4) 2100/94, read in conjunction with Article 61 (1)(b) of that Regulation.

In relation to the first ground of appeal, the appellants claimed that, by reappraising the facts, the General Court exceeded its jurisdiction in reviewing the legality of the Board of Appeal's decision. Consequently, the judgment under appeal was based on a new assessment of the significance and scope of certain correspondence of the CPVO. The CJEU did not share this opinion. Referring to established case law, the court emphasized that the General Court has a similar jurisdiction as regards the review of the legality of decisions issued by the CPVO or its Boards of Appeal. Within the limits specified in Article 63 of the Regulation, the General Court may examine whether the pertinent Board of Appeal made a correct legal characterization of the facts of the dispute, or whether its appraisal of the facts placed before it was flawed. This requires that the facts are also considered.

As far as the second ground of appeal is concerned, the CJEU confirmed its finding in Case C-38/09 Schräder v CPVO that the CPVO has broad discretion in performing its functions. Thus, the CPVO may, if it considers it necessary, take account of facts and evidence which are submitted or produced beyond the time limits. In this context, by way of analogy the court referred to case C-29/05 P OHIM v Kaul as regards the competence of the OHIM.

The CJEU also emphasized that, since the CPVO is subject to the principle of sound administration, it must examine all the relevant factors of a case with care and impartiality and gather all the factual and legal information necessary to exercise its discretion. In addition, the Office must ensure the proper conduct and efficacy of proceedings which it sets in motion. Article 55(4) lets the Office determine, through general rules or through requests in individual cases, the requirements regarding the quality and quantity of plant material as well the locality to which the plant material required for the technical examination as well as reference samples are to be submitted. The court regarded the request for submission of material as a request in an individual case, allowing the Office to decide whether the applicant may be granted another opportunity to submit fresh testing material. Such a decision must be made by observing the principles mentioned above.

Practical significance

This decision is a further cornerstone in the determination of the CPVO's scope of discretion. Having confirmed a wide scope of discretion in Case C-38/09 P Schäder v CPVO, it now had an opportunity to consider the possibilities for the Office to allow the applicant to submit new plant material in exceptional cases. According to Article 56(4) of the Regulation, technical examination shall begin no later than the date on which a technical examination would have commenced on the basis of an application for a national property right filed, on the date on which the application sent by the Office was received by the Examination Office. The Office maintains an annually updated list of dates for the submission of sample material to be used for the assessment of candidate varieties (Article 55(4)). In principle, non-compliance with these deadlines leads to refusal of the application. The reason for this policy is that the breeder should be forced to apply for plant variety protection only for those varieties which are finalized, excluding the application for unfinished varieties to the disadvantage of competing breeders. By setting strict deadlines, the applicant should be forced to ensure that the variety fulfils—on the date of application—the so-called DUS requirements, including the possibility to establish a priority date for a breeding result which, at the time of filing the application, is not yet particularly stable or uniform.

On the other hand, the applicant must have certainty about the Office's expectations regarding the requirements for quantity and quality of the material submitted for testing purposes. If the applicant submits material which does not meet the requirements necessary to ensure proper technical examination, because the Office has not been sufficiently precise in its request for submission of the requisite testing material, the variety owner must be granted a second chance to submit material, allowing the Office to perform proper examination. In contrast, the variety owner must know as soon as possible whether the variety applied-for does not yet fulfil the DUS requirements, so that it is possible for him to withdraw the application before marketing or otherwise disposing of plant material of the variety destroying novelty. The application as such does not destroy its novelty by the uncontrolled disposing of material of the variety. If this has not yet happened, a fresh application may be filed if, in the meantime, further development of the variety has ensured that all new protection requirements can be fulfilled.

JIPLP at INTA

2013-04-30T17:51:00.002+01:00

Oxford University Press, which publishes the Journal of Intellectual Property Law & Practice (JIPLP) together with a host of other IP titles, is establishing a major presence in the Exhibit Hall for next week's International Trademark Association (INTA) Meeting -- the 135th -- in Dallas, Texas. OUP will be occupying booth #815, where you will find Rhodri Jackson, Chris Wogan and JIPLP Content Commissioning Editor Sarah Harris. In addition, editor-in-chief Jeremy Phillips tends to gravitate to that booth when he has a little time between meetings and events. If you're attending the INTA Meeting next week and one of the following applies --

you'd like to write an article or current intelligence note for JIPLP and want to discuss it;
you have comments or criticisms of JIPLP's content that you'd like to share with us;
you have subscription inquiries;
you would like to purchase or inspect an OUP intellectual property book

-- do come over and say "hello". We'll be delighted to see you.

May JIPLP online in time for INTA

2013-04-30T12:09:00.002+01:00

The May 2013 issue of the Journal of Intellectual Property Law & Practice (JIPLP) is available in full to online subscribers. Non-subscribers can purchase limited time access to any number of individual items -- articles, current intelligence notes and book reviews -- from the JIPLP website here. The full contents of the most recent issue can be reviewed online each month here.

In the May issue -- which contains content from Canada, the EU, Germany, Hungary, India, Scotland, Thailand, the United Kingdom and the United States-- you'll find the following:

Guest Editorial

Select this article
- Willem Leppink
European trade mark law, Quo Vadis?

Articles

Select this article
- Robert Lundie-Smith and
- Gary Moss
Bard v Gore: to injunct, or not to injunct, what is the question? Is it right to reward an infringer for successfully exploiting a patent?
Select this article
- Apurba Kundu
Surnames as trade marks: an Indian perspective
Select this article
- Richard S. Bradstreet
United States v Business Method Patents: Trial by Trial and Error
Select this article
- Robert Buchan and
- Gill Grassie
Scotland's new regime for effective intellectual property dispute resolution
Select this article
- Pawarit Lertdhamtewe
Asian approaches to international law: focusing on plant protection issues

From GRUR Int.

Select this article
- Helmut Köhler
‘Congratulations, you have won!’ New standards apply to announcements of wins: A discussion of Purely Creative and others
Select this article
- German Federal Court of Justice
Determining the patent-related portion of infringer's profit—Bottle Carrier(Flaschenträger)

IP in Review

Select this article
- Vijaykumar Shivpuje
SPCs with paediatric extension of duration: a commentary which is ‘simple, practical, clear’
Select this article
- Joseph Savirimuthu
Intellectual property and the enduring value of fairy tales
Select this article
- Christopher Wadlow
Prospects pleasing, and unpleasing

European trade mark law, Quo Vadis?

2013-04-25T09:06:00.000+01:00

While the issue which it leads has not yet been published, Willem Leppink's guest editorial, "European trade mark law, Quo Vadis?", is now available online. Willem, a leading member of European trade mark organisation MARQUES and a partner in the firm of Ploum Lodder Princen, Rotterdam, is a man whose opinions, based on years of experience and dedication in the field of European trade mark law, has this to say:

"On 23 January 2013 the UK Prime Minister David Cameron delivered a speech about the future of Europe and Britain's place in that future. Cameron mentioned that the first purpose of the European Union – to secure peace on the European continent – has been achieved, but that the main, overriding purpose of the EU is not to win peace but to secure prosperity.

In addition to his concerns about the Euro, Cameron said that there is a crisis in European competitiveness and a gap between the EU and its citizens that is only growing. He advocated that the single market in the EU is crucial, but that we cannot harmonize everything. In Cameron's view the EU has gone too far and some powers should flow back to the individual member states. Cameron used the example that there is no need for the working hours of British doctors to be set in Brussels. Cameron called for a flexible, adaptable and open European Union and his speech has sparked a fierce debate in the various countries of the EU. Former Belgian Prime Minister, Guy Verhofstadt, has for example warned against trying to “hold the EU to ransom”.

The debate is interesting because there is probably no right or wrong. Having grown up on the German-Dutch border and having seen the Customs checkpoints and in their slipstream the actual borders disappear, I am perhaps prejudiced about the advantages of the EU. In that border area many national differences have really vanished, of course also helped by the globalization of our society. Clear differences in food, electronics, fashion and even hairstyle on both sides of the national boundaries are simply gone.

A single market without borders requires honest competition and thus a level playing field. It will be unacceptable for a company in one EU country who has to adhere to strict environmental standards, if it has to accept the import of products that have been produced by a competitor in another EU country that is not so strict in applying its environmental standards. However, the question remains, to what extent and in how much detail should the EU harmonize the legislation of the EU member states?

Except for maybe competition and customs law, intellectual property law, and in particular trade mark law, is one of the most Europeanized areas of law. Especially after the coming into force of the European Trade Mark Harmonization Directive, the Anti-Piracy Regulation, allowing pan-European Customs border detention orders, and the Community Trade Mark Regulation (CTMR), creating the single European trade mark, most practitioners can now advise on most trade mark issues everywhere in Europe. Thus a single market for trade mark practitioners has been created.

The Europeanization of trade mark law has not led to much concern amongst European citizens about giving up national sovereignty, except maybe for the discussion around the official languages of OHIM. Most trade mark owners would even prefer further harmonization. Different opposition periods in the EU are not symbols of national culture and it is not to be expected that further harmonization there would lead to much resistance.

In my view there are two areas in trade marks where the EU and its institutions should be concerned about what Cameron calls “a lack of democratic accountability and consent”: (1) The growing role of the Court of Justice of the EU (CJEU) in the creation of trade mark law; and (2) the inability of the EU to distinguish in its legislation between counterfeits and other infringements.

Of all the EU institutions, the CJEU is the one with the most influence in European trade mark law. The CJEU goes beyond the point of giving interpretations of the legislation passed by the European legislator. The CJEU is not the only institution to be held responsible for that, as the European legislator often fails – probably as a result of too many compromises – to deliver clear and understandable legislation. The CJEU is then forced to take the decision that the legislator has failed to take, which is not an easy task for a court that mainly consists of well-respected experts on European and competition law and not with a traditional background in trade mark law.

The outcome of, for example, the Opel/Autec case, allowing a third party to put the OPEL logo on its miniature cars may seem to be reasonable, but there is hardly any trade mark lawyer who can explain the reasoning of this decision to a layperson. The judgment in ONEL, in which the CJEU had to answer the question whether use in one EU member state was sufficient to constitute genuine use of a Community Trade Mark (CTM), has created more confusion in the market than this test case sought to answer. According to the CJEU, the territorial borders of the Member States should be disregarded in the assessment of whether a trade mark has been put to genuine use in the EU. In my view this is a correct answer. From an EU point of view it is also a politically correct answer as the CTM was meant as a trade mark for a Europe without borders. However, in its considerations, the CJEU has said that it is reasonable to expect that a CTM should be used in a larger area than a national mark. In other words: the existence of national borders has not lost its relevance and it could perhaps make a difference whether a trade mark is used in two Dutch provinces, or in one Dutch and one Belgian province. This must confuse the average trade mark owner who is reasonably well-informed and reasonably observant and circumspect. The implementation of the Trade Mark Study by the Max Planck Institute into the European Trade Mark Harmonization Directive and the CTMR is a good start to move the emphasis again on the legislator rather than on the court.

The EU should also put more effort into distinguishing between counterfeits and other types of infringement. Many legislative initiatives, such as the Anti-Piracy Regulation and the Enforcement Directive have all originated from the war against counterfeits. The statistics on the trade in counterfeits justified creating rights for IP owners to request invasive and far-reaching legal measures against counterfeits. This made sense as the trade mark owner in the war on counterfeits had to take over the role of crime fighter as many governments and law enforcement agencies did not have the resources to fulfil this role properly.

However, during the legislative process and also later on, the far-reaching measures also became applicable to other forms of infringement, such as products with trade marks that just crossed the line in being confusingly similar. The Anti-Piracy Regulation was extended to any type of patent infringement and became a tool in high-tech wars between competitors trying to force each other into concluding licence agreements and thus absorbing many of the resources of the European Customs authorities. Now the Anti-Piracy Regulation will be expanded to parallel trade. Many IP owners have been satisfied about this extension to other forms of infringement beyond counterfeits.

I honestly doubt whether IP owners should be satisfied with this development. Most of the general public will understand that the fight against counterfeits requires far-reaching measures against criminals to prevent low quality and often life-threatening products from reaching consumers. There will, however, not be much support in society or the courts, including the CJEU, for far-reaching measures that can be invoked against bona fide companies and citizens, in cases that are in essence comparable to any normal civil case in which another party can be held accountable for having done something wrong.

The lack of support for far-reaching measures in non-counterfeit cases may shift to a call to limit or abolish such far-reaching measures, regardless of whether this relates to counterfeits or other infringements. Therefore the war on counterfeits can be seriously jeopardized.

If there had been a clear distinction between counterfeits and other infringements, the CJEU's judgments in Montex, Nokia and Philips, which have limited the rights of the trade mark owner to act, would not have been so disastrous for trade mark owners in their fight against counterfeits. The judgments all make sense insofar as they relate to normal infringements, but not in relation to counterfeits.

In that sense I agree with Cameron's call for a flexible and adaptable European Union …".

More books for review

2013-04-24T18:21:00.000+01:00

JIPLP has a number of books awaiting review. They are listed below. If you would like to be considered as a reviewer, please email Sarah Harris at sarah.harris@oup.com and let her know before close of play on Monday 29 April. If you have not yet written or reviewed a book for JIPLP, it would help if you could say a little bit about yourself so that we can appreciate why you wish to review it.

Thesaurus of Claim Construction (2nd Ed)
Author: Stuart B Soffer and Robert C Kahrl
Publisher: Oxford University Press

"Claim construction is a major phase of a patent litigation where the meaning and scope of the claims themselves - the invention - is determined by the court. The outcome of this definition phase is crucial to the respective infringement and invalidity positions of the parties. The Thesaurus of Claim Construction directs practitioners to cases-and in contrast to searches on more general electronic databases, only those cases-in which claim terms have previously been construed, and further to the sources of the evidence used by past courts to construe the terms in dispute. This two-volume Second Edition is updated to include over 3,500 additional entries, some of which focus on Biotechnology, Pharmacology, and Cleantech. Ordinary Skill is now included as a topic".

This title has been previously offered for review

For further details concerning this title click here

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Intellectual Liberty: Natural Rights and Intellectual Property
Author: Hugh Breakey
Publisher: Ashgate

"Considering the steady increase in intellectual property rights in the last century, does it make sense to speak of ‘user’s rights’ and can limitations on intellectual liberty be justified from a rights-based perspective? This book philosophically defends the importance of the public domain and user’s rights through the use of natural-rights thought. Utilizing primarily the work of John Locke, it contends that considerations of natural justice and human freedom impose powerful constraints on the proper reach and substance of intellectual property rights, especially copyright. It investigates both the internal and external natural-rights constraints on intellectual property, and argues in particular for the importance to human freedom of the right to intellectual liberty - the right to inform one’s actions by learning about the world. It concludes that respect for fundamental freedom-based interests require a balanced approach to the scope, strength and duration of intellectual property rights".

For further details concerning this title click here

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International Copyright Law and Access to Education in Developing Countries
Author: Susan Isiko Strba
Publisher: Brill

"Susan Isiko Štrba offers an understanding of the legal relationship between copyright regulation and access to education in developing countries, and explores both institutional and normative ways to facilitate access to printed educational and research materials".

For further details concerning this title click here

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African Contributions in Shaping the Worldwide Intellectual Property System
Author: Tshimanga Kongolo
Publisher: Ashgate

"Africa is playing an increasingly more significant role in the domain of international intellectual property law, and this book underlines the contributions made by African countries as a group to the development of the current international IP system.

It examines in detail their breakthrough proposals and initiatives at the WTO, WIPO and WHO with regard to IP and public health; IP and traditional knowledge, traditional cultural expressions and genetic resources; IP and biodiversity; and exceptions and limitations to copyright. Using Botswana, Burundi, Egypt, Ghana, Kenya, Mauritius, Morocco, South Africa and Tunisia as examples, it examines the systems under which these IP subject matters are protected. From a regional perspective, the book also analyses some initiatives taken by ARIPO, OAPI and the African Union to protect traditional knowledge and traditional cultural expressions, especially in relation to protection of the rights of local farming communities and breeders, regulation of access to biological resources, genetically modified organisms and the proposed establishment of the new Pan-African Intellectual Property Organization (PAIPO)".

For further details concerning this title click here

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Patenting Medical and Genetic Diagnostic Resources
Author: Eddy D Ventose
Publisher: Edward Elgar

"This well-researched book explores in detail the issue of patenting medical and genetic diagnostic methods in the United States. It examines decisions of the Patent Office Boards of Appeal and the early courts on the question of whether medical treatments were eligible for patent protection under section 101 of the Patents Act. It then traces the legislative history of the Medical Procedures and Affordability Act that provided immunity for physicians from patent infringement suits. After considering the Supreme Court’s jurisprudence on patent eligibility, the book then comprehensively sets out how the Federal Circuit and the Supreme Court have dealt with the issue, paying close attention to the Supreme Court’s recent decision in Bilski and Prometheus".

For further details concerning this title click here

GRUR Int. in JIPLP: how to find it

2013-04-22T17:58:00.004+01:00

Good news is always worth trumpeting about!

The question has been asked: given the much-trumpeted cooperation between the Journal of Intellectual Property Law & Practice and our German friends at GRUR Int., is there any convenient way of identifying at a glance the materials which GRUR Int. has supplied for publication in English in JIPLP?

The answer is "yes". All you have to is to click this link, and a list of GRUR Int.-supplied material will appear. Since the arrangement has only been running since the beginning of the calendar year, the list is still agreeably manageable -- though both JIPLP and GRUR Int. look forward to it growing in due course.

The jiplp weblog looks forward to bringing you a link to the JIPLP articles and Current Intelligence notes that have been published in GRUR Int. in due course.

Enantiomers are obvious even though they have unpredictable properties

2013-04-21T16:28:00.002+01:00

Author: Suleman Ali (Holly IP, London)

Novartis AG v Generics (UK) Limited (t/a Mylan) [2012] EWCA Civ 1623, Court of Appeal for England and Wales, 12 December 2012

Journal of Intellectual Property Law & Practice (2013), doi: 10.1093/jiplp/jpt049, first published online: April 14, 2013

The Court of Appeal has upheld the finding of the High Court that an enantiomer and its use in therapy were obvious from disclosure of the racemate mixture, given that at the priority date it was standard practice in the art to resolve racemate mixtures and there was no difficulty in doing so.

Legal context

This case concerns inventive step of an enantiomer which has been resolved from a racemate mixture. Previously in H Lundbeck A/S v Generics (UK) Ltd [2008] EWCA Civ 311 and Generics (UK) Ltd v Daiichi Pharmaceutical [2009] EWCA Civ 646 the courts decided that enantiomers which had been resolved from racemate mixtures were inventive, essentially based on the difficulty of obtaining the relevant enantiomer. However, in the present case there was no difficulty in resolving the enantiomer at the priority date, and so the previous cases on enantiomers were not considered relevant. Instead the court assessed inventive step based on the criteria developed in case law for assessing inventive step of a new therapeutic molecule.

Inventive step in chemical and pharmaceutical cases will often depend on the route used to identify and characterize the relevant substance. It is also dependent on the properties the substance is found to have, though arguably the UK approach places less emphasis on this than the European Patent Office problem–solution approach to inventive step. The courts have recognized the difficulty in deriving a specific test for inventive step where the invention concerns substances that have been identified based on a series of tests in a research program, especially where the results of the tests are unpredictable. When faced with inventions where a specific substance is provided for a given use, the courts have tended to assess whether it was ‘obvious to try’ that specific substance, with ‘expectation of success’ sometimes also contributing to the analysis. The present state of the case law is expressed in the following passage from Generics (IK) Ltd v H Lundbeck A/S [2007] EWHC 1040 (Pat) which is quoted in the present judgment:

The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort in pursuing them and the expectation of success.

Facts

This is an appeal from a High Court decision in which Novartis's SPC certificate SPC/GB98/038 and the basis patent, UK Patent No 2,203,040, were found to be invalid due to lack of inventive step. The claims of the patent cover rivastigmine and its use in the treatment of Alzheimer's disease. Rivastigmine is one of the enantiomers of a compound that occurs in chiral forms, ie the compound has two distinct forms (called ‘enantiomers’) which are mirror images of each other. When such chiral compounds are first synthesized it is usually as a mixture of the two mirror forms and such mixtures are called ‘racemates’. At the priority date the racemate form of the compound was known and its use to treat Alzheimer's had been suggested. Thus the contribution made by the invention could on the face of it be seen simply as resolving the racemate to separate the chiral forms before using one of them, rivastigmine, in therapy. However, Novartis argued that selection of the racemate compound from the prior art was also an important part of the contribution.

At the priority date (4 March 1987) the resolving of racemic mixtures into enantiomers was common practice in the art and in the present case there was no difficulty in doing so. Novartis argued that the disclosure of the racemate in the prior art was in the context of a very early stage in the research, and at that stage the skilled person would not have chosen to resolve the racemate into enantiomers. Instead they would have investigated other compounds with similar structures and so it was not obvious to choose this particular racemate. Novartis further argued that extensive testing of the compound would still need to be done to determine whether it would be suitable for therapy, and there would not have been a fair expectation of the compound surviving such testing. In terms of the enantiomer itself, Novartis argued that the resolution of the racemate could not be deemed to be obvious because the properties of the enantiomers could not be predicted.

Analysis

In the judgment, Justice Kitchin discusses the relevant case law on how to approach inventive step for a therapeutic substance, and in particular discusses whether to apply a simple ‘was it obvious to try?’ approach to the steps of choosing the racemate compound and then choosing to resolve it into enantiomers. He also discusses how to consider the ‘degree of expectation of success’ that is required, but in line with the case law decides to reject using any particular test saying that ‘obvious to try’ and ‘fair expectation of success’ are not the same as the statutory question of whether the invention was obvious. He thus decides that it is more appropriate to judge obviousness based on the facts. However, his subsequent analysis of inventive step essentially amounts to an ‘obvious to try’ approach, at least in as far as selection of the racemate compound is concerned.

When looking at whether the skilled person would focus on the racemate compound, Mr Justice Kitchin's position was that the possibility of investigating other compounds did not preclude further testing of the racemate compound, which was presented as promising candidate in the prior art. When assessing the decision to resolve the racemate into enantiomers, he acknowledged that the properties of rivastigmine were not predictable, but that in itself did not make it inventive since the ‘experimentation is driven by rational technical considerations’. Further, there were good reasons for resolving the racemate into enantiomers since there was the possibility that one of them may have lower toxicity.

Novartis also ran the argument that the High Court had chosen the wrong technical effect when considering the problem–solution approach. In its view it was wrong to see the technical effect as what ‘one would expect from resolution of a chiral compound’. Instead it was use of rivastigmine for treatment of Alzheimer's disease. Mr Justice Kitchin dealt with this very briefly, essentially believing that this point added little to the previous arguments.

Practical significance

Given the facts of the case it is difficult to see how the court could have come to any other conclusion. However, taking the approach of deciding obviousness on the basis of ‘the facts of each case’ will inevitably lead to more uncertainty. In particular it is not clear when ‘fair expectation of success’ should form part of the assessment of inventive step, and for many chemical and pharmaceutical cases that will be the determining factor. Mr Justice Kitchin did not explain in his judgment why he did not consider ‘expectation of success’ when assessing choice of the racemate compound.

Clearly the judgment will have an impact on inventions concerning resolution of enantiomers, making it less likely that mere resolution of a racemate into enantiomers will be considered inventive if there are no difficulties in doing so. In particular it seems that inventive step arguments based on the advantageous properties of the resultant enantiomers will not succeed if the advantages are of the type that enantiomers could be expected to have, even though which advantage a specific enantiomer would have could not be predicted.

A hotel by any other name: the ‘own name’ defence in Hotel Cipriani, Part Two

2013-04-18T22:49:00.000+01:00

Author: Darren Meale (SNR Denton UK LLP)

Hotel Cipriani Srl & Ors v (1) Fred 250 Ltd (formerly Cipriani (Grosvenor Street) Limited) (2) Giuseppe Cipriani (3) Cipriani International SA [2013] EWHC 70 (Ch), Chancery Division, England and Wales, 29 January 2013

Journal of Intellectual Property Law & Practice (2013), doi: 10.1093/jiplp/jpt054, first published online: April 14, 2013

The Cipriani family lost a trade mark infringement battle three years ago against the world-famous Venetian hotel they themselves once owned, when the Court of Appeal confirmed they could not include their surname in the name of their London restaurant. Three years later, an attempt to use the Cipriani name to inform the public of the family's management of that restaurant has also been held to infringe.

Legal context

It has long been possible under English and European trade mark law for an infringer to excuse himself from liability by claiming only to be trading under his own name or address. Trade mark law has never permitted proprietors to monopolize those terms which the trade must be free to use to describe the goods and services it offers, and the use of one's own name along with other descriptive indications is lawful provided it is honest. Yet when this case first came to court, Mr Justice Arnold gave a restrictive reading of the ‘own name’ defence and the honesty proviso, which the Court of Appeal later widened only a little. In Part Two of the litigation, Arnold J was asked to look at these issues again.

Facts

The facts of this case are outlined more fully in this report of the first part of the case (see (2010) 5(7) Journal of Intellectual Property Law & Practice 482). The story starts in the early 1930s, when Senior Giuseppe Cipriani, the grandfather of Giuseppe Cipriani, the second defendant in this case, opened Harry's Bar in Venice. The bar became, and remains, world famous. The Venetian success story was repeated several times with the hotel Locanda Cipriani opening late in the 30s, Hotel Cipriani in the late 50s, and Hotel Villa Cipriani in the early 60s. As time went by, Giuseppe's son, Arrigo, and grandson, Giuseppe (Junior) took on roles in the family businesses. They expanded abroad with Cipriani restaurants in New York and Buenos Aries and a private members' club in Hong Kong. Over the years some of the businesses were sold, in particular the Hotel Cipriani (HC), which ceased to be owned by the Cipriani family in 1967. Now owned by the Orient Express Group and enjoying an annual turnover of €29 million, it is patronized by celebrities, politicians and royalty.

HC acquired a Community trade mark (CTM) for CIPRIANI in respect of hotels in 1996.

In 2004 Arrigo and Giuseppe (Junior) opened, through a private company Cipriani (Grosvenor Street) Limited (CGS), the restaurant ‘Cipriani London’, which was commonly referred to as simply ‘Cipriani’.

In 2006, in Part One of this case, HC sued CGS, its parent company and Giuseppe for trade mark infringement and passing off. It was overwhelmingly successful at first instance (2008) and on appeal (2010).

The defendants' restaurant became ‘C London’. But they did not wish to lose the Cipriani connection completely, and they first sought to add (in small text) ‘by G. Cipriani’ to the restaurant's logo, windows and menu and later ‘Managed by Giuseppe Cipriani’. Part Two of this case commenced as the High Court was asked to rule on the lawfulness of such embellishments.

Analysis

Part Two does not purport to advance the law in any significant way beyond that stated by the High Court and Court of Appeal in Part One. Its relevance is in its application of that law to the new set of facts outlined above. This piece does not review Part One in detail, but does mention the findings in those proceedings in order to set the context for Part Two.

Use as a badge of origin

In Part One, ‘Cipriani London’ and the shorter ‘Cipriani’ were held to infringe, prima facie, the CIPRIANI trade mark, on the basis of confusing similarity.

Likewise, in Part Two the subtexts of ‘by G. Cipriani’ and ‘Managed by Giuseppe Cipriani’ were held to infringe, prima facie, the CIPRIANI trade mark. The defendants argued that these additions were not used in a trade mark sense—ie as badges of origin. Arnold J disagreed, finding that the average consumer would consider the former as indicating the identity of a person responsible for the restaurant, whether as a chef or a proprietor, and the latter as the manager of the restaurant. These would, he held, indicate ‘something significant about the origin of the services provided by the restaurant’. He referred to similar examples such as ‘Gordon Ramsay at Claridges’ and ‘Alain Ducasse at The Dorchester’. He disagreed with the defendants' contentions that the additions would be understood by the average consumer as merely being used truthfully to describe the role of Giuseppe. He found that Giuseppe was not well known among UK consumers, who would consider his sobriquet a part of the restaurant's name. These findings effectively doomed the defendants when it came to consideration of their best line of defence.

The ‘own name’ and descriptive use defences

That defence, prominent in both parts of the proceedings, was that they were trading using merely their own company or personal names, a defence under Article 12(a) of the Community Trade Mark Regulation (now 207/2009, mirrored by Article 6(1)(a) of the Trade Marks Directive (now 2008/95) and s 11(2)(a) of the Trade Marks Act 1994) which reads:

A Community trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade: (a) his own name or address; … Provided he uses them in accordance with honest practices in industrial or commercial matters.

Part One established that:

the defence should be narrowly interpreted;

it could apply to a company name less suffixes such as ‘Ltd’ or ‘Plc’ (following the Advocate General's opinion in Case C-17/06 Céline [2007] ECR I-7041), but CGS was not using ‘Cipriani Grosvenor Street’;

it could apply to a company's trading name in certain circumstances (Court of Appeal, overruling Arnold J at first instance), which was ‘Cipriani London’ but not ‘Cipriani’; and

it could not apply to Giuseppe (and his surname) as he was not the one trading.

When it came to consider the additions to the restaurant logo in Part Two, Arnold J had little to add to the analysis in Part One. Although being (in the author's view) less ‘offensive’ than simply calling the restaurant, in large prominent letters, ‘Cipriani’, having found that ‘G. Cipriani’ and ‘Giuseppe Cipriani’ were being used as badges of origin, it was a simple matter for the judge to find that neither was a trading or corporate name of CGS and that, as before, Giuseppe was still not the one trading.

The defendants ran an alternative defence, under Article 12(b) of the Regulation, that the additions were ‘indications concerning the … quality … or other characteristics’ of their services. The defendants' argument was that they indicating that the restaurant was characterized by it being run or managed by Giuseppe—which was not in dispute. Dismissing this argument, Arnold J considered that the additions indicated ‘something significant about the origin of the services provided by the restaurant’, rather than its quality or some other characteristic.

Use in accordance with honest practices

The own name defence (and indeed the indication of quality defence) is only available where the use in question is honest; a significant part of the three judgments was devoted to considering this proviso. In Part One, the courts reviewed the case law of the CJEU and noted that the proviso, which asks an objective question, was an expression of a duty of the user to act fairly in relation to the legitimate interests of the trade mark proprietor. It ensured that no person relying upon an Article 12 defence would be able to compete unfairly with the proprietor as a result.

In Part Two, Arnold J ran through the list of ten factors for determining whether the proviso applies, which he formulated in Samuel Smith Old Brewery (Tadcaster) v Lee [2011] EWHC 1879 (Ch), a post-Part One judgment, applying those to the present case (he applied many of them in Part One as well). In particular, the judge considered it relevant that

the uses of Giuseppe's name were as part of the branding of the restaurants. They were not mere formal statements by him in, for example, legal or accounting documents (such uses clearly being regarded by the courts in this case as more readily excusable);

HC objected to the additions, or would have objected to them had they been asked;

both additions were likely to cause consumer confusion; and

the use of the additions interfered with HC's ability to exploit its CTM, in particular by opening a hotel or restaurant in London.

Arnold J also held that, although it was ‘understandable’ that Giuseppe wanted to use his family name in respect of the restaurant, this did not justify the confusion the use was likely to cause. Although it was one thing to call the restaurant ‘Cipriani’ and another to add ‘Managed by Giuseppe Cipriani’ to the logo, the judge did not regard that distinction as a significant factor in Giuseppe's favour in the circumstances of the case.

Overall, Arnold J concluded that Giuseppe's use of the additions would amount to unfair competition against HC and was not, therefore, in accordance with honest practices in industrial and commercial matters. This was the same conclusion he and the Court of Appeal reached in Part One as regards the use of ‘Cipriani London’ and ‘Cipriani’.

Summary

Just as Part One found the defendants infringers without any defences, so did Part Two. The additions were confusingly similar to the CIPRIANI mark and did not benefit from either the Article 12(a) or (b) defences. The defendants were also held liable for passing off.

Practical significance

Giuseppe may be forgiven for feeling aggrieved at a decision which prevents him from stating, quite truthfully, that he is the owner or manager of his restaurant—at least in the low-key but nevertheless prominent manner he had proposed. The courts have clearly decided to apply the Article 12 defences and their proviso very narrowly, although some of the reasoning used and factors considered are open to debate. First, in each case the courts appeared to take much from the fact that the defendants' signs would lead to confusion. But that is inevitable as Article 12 is a defence and will only be of relevance where prima facie infringement has been established—ie where there is confusion or a likelihood of it (or, say, unfair advantage). The author also wonders whether Arnold J is right to hold that ‘by G. Cipriani’ really says ‘something significant’ about the origin of the services of the restaurant. There are a number of characteristics which draw diners to any eatery, including who the chef is; who owns or runs the restaurant; from where the recipes are sourced; and from where the ingredients are sourced. Are these all perceived as badges of origin by consumers, rather than indications of kind, quality, and so on? The judge noted that his conclusion on Article 12(b) might have been different if ‘Giuseppe was known to have a particular system of management that resulted in particular benefits for the cuisine or quality of service’. If that were the case, why would that make his name any less a badge of origin? Would it not just reinforce the judge's initial reasoning?

The fact that failing to contact the trade mark owner and asking whether he objects to your use of your own name appears to have the effect of making your use less ‘honest’ also bears further thought. A person will only ever look at Article 12 once he has committed a prima facie infringement, and which trade mark proprietor would not object to that given the opportunity?

One piece of positive guidance that comes out of these cases looks to be that the own name defence is more likely to be available where the name is merely used in legal or business papers. Any ‘up-front in-your-face’ use, to coin Jacob LJ's phrase (see Reed v Reed [2004] EWCA Civ 159), is far less likely to succeed.

In case you missed it -- Knut citation gets JIPLP into OHIM ruling

2013-04-17T17:39:00.003+01:00

My attention has been drawn to a now somewhat historical Office for Harmonisation of the Internal Market (OHIM) Board of Appeal decision on a trade mark opposition, R 650/2009-1 Zoologischer Garten Berlin AG v Knut IP Management Ltd, in which the Board of Appeal cited one of JIPLP's most popular Christmas articles, that published in 2008 on the German craze for naming polar bear cubs and its repercussions for trade mark law. The author, Birgit Clark, is a JIPLP Editorial Board member, Said the Board of Appeal in this instance:

"29. Auf eine kraft Benutzung erhöhte Kennzeichnungskraft der älteren Marke hat sich die Widersprechende nicht berufen (siehe hierzu Birgit Clark: "Knut, Flocke, and Co: the bear facts revealed", Journal of Intellectual Property Law & Practice, 2008, Vol. 3, No. 12, Seite 764)".

The ruling in this case was subsequently appealed to the General Court, whose decision you can read here .

The $1 billion question -- JIPLP's 2013 competition

2013-04-15T18:14:00.001+01:00

Following JIPLP's 2012 competition, which required entrants to pen the best intellectual property law judgment that had never been delivered, this year's competition seeks to test out the financial acumen and IP-savviness of JIPLP's readers. The details, which also incidentally appear on Oxford University Press's JIPLP web site here, are reproduced below. Do enter!

THE JIPLP COMPETITION 2013

The $1 billion question

Enter our JIPLP competition for 2013 and you could win a year’s free subscription to JIPLP. All you have to do is send us your account of which 5 intellectual properties you would invest $1 billion in and why.

This should be a short piece of writing (between 500-600 words). It should explain who you are (contributor, board member, subscriber etc) and what 5 intellectual properties (or fewer) you would invest in if you were given $1 billion. Entries will be judged by the JIPLP team and prizes will be awarded for those entries demonstrating good financial acumen, for being creatively written, with style and panache and also for how humorous the piece is. The winning entries will be published on the JIPLP blog.

The winning entries will be decided upon by JIPLP editor Jeremy Phillips and the JIPLP Team at OUP. Entries should be between 500-600 words, and be submitted by 31st October 2013. The winning entries will be announced on 6th January 2014. Entries to be submitted to Christopher.wogan@oup.com

What prizes are available:
Financial Acumen - £500 of OUP books and a year's free personal sub to JIPLP
Creativity and Style - £250 of OUP books and a year's free personal sub to JIPLP
Humour - £250 of OUP books and a year's free personal sub to JIPLP
The winning pieces will be published on the JIPLP blog.

Who decides it
JIPLP editor Jeremy Phillips and the JIPLP Team at OUP

Date of award
6th January 2014

Closing date for entries
31st October 2013

Format of entries
Entries to be between 500-600 words

Criteria for judging
Entries will be judged by the JIPLP team and prizes awarded for demonstrating good financial acumen, for being creatively written, with style and panache, and also for how humourous the piece is.

Marius on the move

2013-04-11T11:00:00.002+01:00

Long-serving JIPLP Board Member Marius Schneider has a new set of coordinates, having just moved, together with his entire IP department, to Cruyplants Eloy Wagemans & Partners, Brussels, Belgium. Marius has taken a special interest in border measures and the detention of IP-infringing products at their point of entry to the European Union. Together with Olivier Vrins he is the joint editor of a major work on that subject, published by Oxford University Press (here).

If any reader of this weblog is thinking of writing an article or Current Intelligence note on customs controls and detention of goods, they should consider speaking to Marius about the topic, since he is remarkably up-to-date with case law, legislative proposals and also the latest practical dimensions to the topic. You can email Marius here.

US jury properly relied upon second considerations of non-obviousness to overcome prima facie obviousness

2013-04-10T18:57:00.001+01:00

Authors: Charles R. Macedo, Michael J. Kasdan and Richard P. Zemsky (Amster Rothstein & Ebenstein LLP)

Transocean Offshore Deepwater Drilling, Inc v Maersk Drilling USA, Inc, No 2011-1555, 2012 US App LEXIS 23486 (Fed Cir 15 November 2012) (‘Transocean IV’)

Journal of Intellectual Property Law & Practice (2013), doi: 10.1093/jiplp/jpt029, first published online: April 4, 2013

The US Court of Appeals for the Federal Circuit in addressing the role of secondary considerations of non-obviousness and the weight to be accorded to them found no error in the jury's reliance on overwhelming evidence of secondary considerations of non-obviousness to conclude that a prima facie case of obviousness was overcome, thus saving the patent claim from invalidation.

Legal context

One of the most difficult questions in patent law is determining whether a patent claim is obvious. The extended saga in Transocean Offshore Deepwater Drilling, Inc v Maersk Drilling USA, Inc demonstrates just how difficult this determination can be. For the second time in the Transocean lawsuit, the US Court of Appeals for the Federal Circuit has addressed the role of secondary considerations of non-obviousness and the weight to be accorded to them. This time, the court found no error in the jury's reliance on overwhelming evidence of secondary considerations of non-obviousness to conclude that a prima facie case of obviousness was overcome, thus saving the patent claim from invalidation.

Facts

The Transocean patents relate to offshore drilling techniques. In particular, the process of seafloor drilling requires that a drill be lowered to the seafloor, along with casings to line the wall of the drilled hole and a blowout preventer, which, among other things, functions as a fail-safe device to prevent the ejection of fluid from the well. These components are lowered on a series of pipe sections known as a drill string, which must be assembled and disassembled to lower each component. Conventional rigs use a single advancing station for handling the drill string such that only one component is lowered at a time. The Transocean patents disclose a ‘dual-activity’ drilling rig having a single derrick with two advancing stations that enable faster lowering of components to the seafloor. Each of the two stations can assemble drill strings, improving efficiency, and drill strings can be transferred between the two stations.

In the initial proceedings, the district court relied upon two prior art references to establish a prima facie case of obviousness: Transocean Offshore Deepwater Drilling, Inc v Maersk Contrs USA Inc, No H-07-2392, 2009 US Dist LEXIS 130590, at *5–6 (SD Tex 28 July 2009) (‘Transocean I’). The first reference discloses a rig with a single derrick and two advancing stations, each of which can lower pipe sections to the seafloor. Although that reference does not teach the limitation of transferring drill strings between the two stations, this limitation is taught by the second reference. The district court found that there was a motivation to combine the teachings of the two references, as the prior art indicated an industry trend towards automation and efficiency. Based on the foregoing, the district court granted summary judgment that the claims were obvious.

On appeal, the Federal Circuit agreed that the combination of references established a prima facie case of obviousness and acknowledged that there was a motivation to combine the references, but it nonetheless found that summary judgment was inappropriate because the district court failed to consider the patentee's objective evidence of non-obviousness, stating that ‘a district court must always consider any objective evidence of non-obviousness presented in a case’. The case was remanded to the district court for further proceedings.

On remand, despite the finding of the Court of Appeals, the jury revisited the prima facie case of obviousness and found that the defendant failed to prove that the claims were obvious. The jury specifically found that the prior art did not disclose every element of the claims and that several objective factors supported the non-obviousness of the claimed invention: Transocean Offshore Deepwater Drilling, Inc v Maersk Contrs USA, Inc, No H-07-2392, 2011 US Dist LEXIS 70774, at *6 (SD Tex 30 June 2011) (‘Transocean III’); see also Transocean IV, 2012 US App. LEXIS 23486, at *5–6.

On motion from defendant Maersk, however, the district court granted Judgment as a Matter of Law (JMOL), holding that the asserted claims were obvious, not enabled, and not infringed. See Transocean IV, at *6.

Transocean again appealed to the Federal Circuit.

Analysis

In Transocean IV, the court began its analysis by noting that it was improper to present to the jury the question of whether the prior art established a prima facie case of obviousness, since the court had already decided that issue in Transocean II. However, the Federal Circuit held that the district court did not err by allowing the jury to weigh the strength of the prima facie case together with the objective indicia of non-obviousness since ‘evidence of secondary considerations may often be the most probative and cogent evidence in the record. It may often establish that an invention appearing to have been obvious in light of the prior art was not:’ ‘citing Stratoflex, Inc v Aeroquip Corp, 713 F 2d 1530, 1538 (Fed Cir 1983). The Federal Circuit therefore instructed that ‘objective evidence must be “considered as part of all the evidence”’.

The court then reviewed the record pertaining to the secondary indicia of non-obviousness to determine whether the jury's findings on secondary indicia were supported by substantial evidence. The Federal Circuit found support with respect to the indicia as follows:

Commercial success

The patentee must show both commercial success and a nexus ‘between that success and the merits of the claimed invention’, citing Iron Grip Barbell Co v USA Sports, Inc, 392 F 3d 1317, 1324 (Fed Cir 2004). Here, Transocean demonstrated that its dual-activity rig fetched a higher market premium than the single-activity rigs, as seen from contracts for each type of rig. The court found that customer demand for the dual-activity rig also supported a finding of commercial success with a nexus to the dual-activity features.

Industry praise and unexpected results

Showing industry praise, Transocean cited reports from competitors and articles in trade publications, which recognized the efficiency savings of 20–40 per cent of its dual-activity rig and hailed it as ‘critical to [the] future’. Unexpected results were demonstrated by evidence showing doubt in the industry as to whether the technology would cut costs, leading to a study, which concluded that savings in cost and efficiency could actually be greater than Transocean claimed. Unexpected results are less likely to have been obvious to a person of skill in the art.

Copying

Testimony showed that Maersk knew about the Transocean technology when building its accused rig. Transocean also identified a Maersk document that stated the need to incorporate the efficiency improvements of Transocean's dual-activity rigs. That document ties Maersk's copying to the inventive dual-activity features, thus establishing the required nexus to the claimed invention.

Industry scepticism

Testimony described how ‘industry experts and Transocean's customers were skeptical of the claimed dual-activity feature due to fears of clashing’, a situation where the two drill strings, which extend down toward the seafloor, can collide. Although other evidence indicated that there was no basis for such fears, the Federal Circuit nonetheless concluded that ‘[a] reasonable jury could accept Transocean's evidence of skepticism’. Industry scepticism over whether the claimed invention would even work properly lends support to a finding that the invention was not obvious to a person skilled in the art of drill rigs.

Licensing

Transocean provided evidence that others in the industry had licensed its technology. Maersk argued that those licences were only attributable to the threat of litigation and thus did not reflect the technology's value. Transocean countered that the licences exceeded litigation costs, which would only make sense if the technology has independent value. Transocean also showed that companies not threatened by litigation obtained licences. The Federal Circuit found this evidence sufficient for a reasonable jury to find that the licences reflect the value of the technology.

Long-felt but unsolved need

The Federal Circuit concluded that Transocean provided sufficient evidence that its dual-activity drilling satisfied a long-felt need, namely, for more efficient deepwater drilling. Failed efforts to increase efficiency by building the drill string at a separate location from the well being drilled indicated an unsolved need. Testimony about deepwater drilling since the 1970s also indicated that the need was long-felt.

In sum, Transocean IV recognized that the extensive evidence presented concerning objective indicia of non-obviousness make this case ‘precisely the sort of case where the objective evidence “establish[es] that an invention appearing to have been obvious in light of the prior art was not”’, citing Stratoflex, 713 F 2d at 1538. Accordingly, the Federal Circuit reversed the district court's grant of JMOL of obviousness, thus reinstating the jury verdict that the patents are not obvious.

Practical significance

Since the Supreme Court addressed obviousness in KSR Int'l Co v Teleflex, Inc, 550 US 398 (2007), calling for a more flexible inquiry, the Federal Circuit has noted that secondary indicia nonetheless must be considered as part of the obviousness determination. In many instances, the Federal Circuit has discounted such evidence as insufficient to overcome a prima facie case of obviousness (see eg Ball Aerosol & Specialty Container, Inc v Limited Brands, Inc, 555 F 3d 984, 994 (Fed Cir 2009); Boston Scientific Scimed, Inc v Cordis Corp, No 2008-1073, 2009 US App LEXIS 588, at *25–26 (Fed Cir 15 Jan 2009); Sundance Inc v Demonte Fabricating, Ltd, 550 F 3d 1356, 1368 (Fed Cir 2008)). The Transocean saga, however, illustrates a case where a strong evidentiary showing on secondary indicia of non-obviousness was sufficient to overcome a prima facie case of obviousness.

Mr Macedo is also the author of The Corporate Insider's Guide to US Patent Practice, published by Oxford University Press in 2009.

Copying an assortment of unprotected products

2013-04-08T18:10:00.000+01:00

Author: Simon Vander Putten (Altius, Brussels)

Cousins & Co v Melan (docket no 2011/RG/313), Court of Appeals, Mons (Belgium), 29 October 2012, not yet published

Journal of Intellectual Property Law & Practice (2013), doi: 10.1093/jiplp/jpt050, first published online: April 3, 2013

Despite finding that an assortment of luminous ball decorations was not protected by intellectual property rights and could be freely copied, the Mons Court of Appeal held that consumers could be misled by confusing similarities between the website and trade dress of an original business and a competitor selling an almost identical assortment of products, and ordered the competitor to modify these aspects of its business in order to prevent confusion.

Legal context

Figure 1. Illustration of the type
of luminous garlands in dispute
(courtesy of Mélanie Grégoire,
used with permission.)

The Belgian Market Practices and Consumer Protection Act of 6 April 2010 transposes Directive 2005/29 concerning unfair business-to-consumer commercial practices in the internal market (the ‘Unfair Commercial Practices Directive’), including the prohibition against misleading product marketing (Article 6(2)(a) of the Directive).

Article 95 of the Belgian Act also contains a catch-all provision, according to which ‘all acts contrary to honest market practices by which an undertaking harms or may harm the professional interests of one or more other undertakings are forbidden’. This provision does not arise from EU harmonization.

An injunction to stop any of the acts described above can be claimed in court through accelerated proceedings on the merits.

Facts

French company Cousins sold garlands of lights made of fabric balls, available in different colours. The garlands could be hung from the ceiling or on a stand and could serve as lighting or for mere decorative purposes. Cousins sold the lights through regular shops and its website, where consumers could choose colours to create a custom-made garland.

Considering itself harmed by actions of Melan, a Belgian company that sold almost identical luminous garlands under the trade name ‘Happy Lights’, Cousins sought an injunction to stop these practices, alleging that Happy Lights created confusion by assuming its business concept and by presenting its website and shops in too similar a way and, in doing so, took unfair advantage of Cousins' investment (parasitic competition).

The first instance court held that there were no exclusive rights on the assortment of products sold by Cousins and found no possible confusion between the two businesses' websites and shops. The claimant then filed an appeal.

Analysis

The appeal court first noted that a concept or idea could only be protected under copyright where it was embodied in a concrete form. It then found that the franchise agreement, know-how manual and pre-contractual information documents put forward by Cousins were not embodiments of original creative efforts but only signs of efficient commercial development of and intense marketing efforts surrounding a product with no originality. When analysing the similar assortment of products sold by Happy Lights, the court, like the trial judge, pointed out that Cousins did not invent the items and that copying such an assortment could not be legally criticized in the absence of intellectual property rights, such as a design protection.

The court then analysed the claims under unfair competition law. In line with the first instance court's reasoning, the appeal court stated that, where the alleged acts fall within the scope of the Unfair Commercial Practice Directive and are allowed under it, they cannot be otherwise prohibited under the general clause of Article 95 of the Market Practices and Consumer Protection Act, since the Directive achieves a full harmonization. Thus, if acts likely to harm the commercial interests of an undertaking (Article 95 of the Act) are also likely to affect the economic interests of the consumers, the criteria in the Unfair Commercial Practice Directive will be relied upon to assess whether to prohibit or allow those business activities.

After finding that the alleged acts affected consumers and were thus within the scope of the Directive, the appeal court analysed the alleged misleading character of Happy Lights' product marketing.

The court compared the parties’ websites and noted that Happy Lights used a similar website structure and a substantial amount of Cousins's content, including the online garland creator (in relation to its general aspects, colours, text, fonts and the layout and display of sections). The court also found similarity in the websites’ source codes and noted that there was infringement of the database rights protecting the website, namely the maker's rights that had been transferred to Cousins by the designer.

With reference to the shops, the court found that the decoration, furniture and fittings of Happy Lights’s shops seemed largely inspired by those chosen by Cousins. In particular, the court observed that Happy Lights also used Plexiglas tubes to display the garland balls, a counter with boxes to display the larger luminous balls and orange and chocolate brown colours on the shops' walls. Finally, the court underlined the identical graphic style used to display the product prices.

The appeal court concluded that, by its numerous ‘borrowings’ from Cousins's marketing and its extraction and reusing of the database from the garland creator, Happy Lights created confusion for consumers with an average level of attention, who could have the global impression that the parties' respective activities originated from a single undertaking. The appeal court noted that similarities between the two businesses clearly superseded the differences, including the difference between the parties’ respective trade names (namely ‘La Case de Cousin Paul’ versus ‘Happy Lights’). The court further qualified these unfair practices as parasitic competition because of their accumulation and persistence.

The appeal was upheld and the court ordered Happy Lights to modify its website structure—in particular the online garland creator—and the trade dress of its shops so as to desist from the parasitic copying practices.

Practical significance

This decision confirmed a 2009 Supreme Court judgment that established that, where no intellectual property right protects a product or service, unfair competition law may not be used to fill the gap (Cour de cassation, Belgium, 29 May 2009, Marquet & Cie v Orac, docket no C.06.0139.N, available at www.juridat.be). By this judgment, the Supreme Court stated that, given the principle of freedom of copy, a seller that has made no creative effort and who benefits from the efforts or investment in any economic creation of another seller does not act contrary to fair trade practices. However, the Supreme Court specified that a judge could still consider such an advantage to be illicit in cases where intellectual property rights are infringed, where advertising creates confusion, and in the case of other related illicit acts.

This principle that a product not protected by any intellectual property right cannot, as a rule, have any protection under rules of unfair competition law—rules that apply, in turn, to the accompanying circumstances—has been criticised by some authors for potentially contradicting Article 10bis of the Paris Convention for the Protection of Industrial Property as revised, which requires signatory states to ensure that their nationals enjoy effective protection against unfair competition.

The appeal court of Mons quoted the 2009 Supreme Court decision, adding that a restrictive approach against parasitism had to prevail, given the freedom of competition principle.

The appeal court applied this principle to a whole assortment of products by deciding that it could be freely copied. Thus, the decision highlighted here rightfully considered that the freedom of competition implies the right to take advantage of an entire business model, including the same collection of products and method of sales.

However, the decision reflected that there are also limits to free competition where the accompanying circumstances are either contrary to a legal provision, such as those designed to prevent misleading commercial practices (here, the website and the shops created confusion), or infringe intellectual property rights covering something else than the products themselves (here, the database rights on the website were infringed).

An obvious ‘Comity of Errors’: Court admonishes motives of Applications Judge, but agrees with the result

2013-03-29T10:31:00.002Z

Authors: Emir Crowne (Associate Professor, Faculty of Law; Barrister, Solicitor and Registered Trade-mark Agent, University of Windsor) and Niousha Ghomashchi (Law Student, Faculty of Law, University of Windsor)

Apotex Inc v Allergan Inc, 2012 FCA 308, Federal Court of Appeal, Canada, 23 November 2012

Journal of Intellectual Property Law & Practice (2013), doi: 10.1093/jiplp/jpt027, first published online: March 21, 2013

The Federal Court of Appeal upheld a prohibition order sought by Allergan preventing the Minister of Health from issuing a Notice of Compliance to Apotex but admonished the Applications Judge for granting the prohibition order simply to ‘further his desire to clarify the jurisprudence’ (Apotex, para 6).

Legal context

The initial proceeding before the Applications Judge (2012 FC 767) was brought under the Patented Medicines (Notice of Compliance) Regulations, SOR 93-133, this being a summary application for judicial review initiated by the applicant (the patent holder) who seeks to prohibit the Minister of Health from issuing a Notice of Compliance. Once the generic manufacturer has presented probative evidence supporting its allegations of anticipation and obviousness (in this instance), the burden of proof is on the applicant to establish, on a balance of probabilities, that those allegations are not justified.

Subsection 5(1) of the Regulations sets out the requirements for a ‘generic’ drug company (ie a ‘second person’) to obtain a notice of compliance from the Minister of Health for approval of its generic drug:

If a second person files a submission for a notice of compliance in respect of a drug and the submission directly or indirectly compares the drug with, or makes reference to, another drug marketed in Canada under a notice of compliance issued to a first person and in respect of which a patent list has been submitted, the second person shall, in the submission, with respect to each patent on the register in respect of the other drug,

a. state that the second person accepts that the notice of compliance will not issue until the patent expires; or

b. allege that

i. the statement made by the first person under paragraph 4(4)(d) is false,

ii. the patent has expired,

iii. the patent is not valid, or

iv. no claim for the medicinal ingredient, no claim for the formulation, no claim for the dosage form and no claim for the use of the medicinal ingredient would be infringed by the second person making, constructing, using or selling the drug for which the submission is filed.

Subsection 6(1) then sets out how an ‘innovator’ drug company (ie a ‘first person’) must object to such allegations:

A first person may, within 45 days after being served with a notice of allegation under paragraph 5(3)(a), apply to a court for an order prohibiting the Minister from issuing a notice of compliance until after the expiration of a patent that is the subject of the notice of allegation.

Facts

Under the Regulations, Allergan sought an order prohibiting the Minister of Health from issuing a Notice of Compliance (NOC) to Apotex for its generic glaucoma medication until the expiry of Allergan's patent. In the Notice of Allegation, Apotex challenged the validity of Allergan's patent on the grounds of obviousness and anticipation.

Justice Hughes, the Applications Judge, held that Apotex's allegation of invalidity on the grounds of obviousness was justified (2012 FC 767 at para 189). However, in separate proceedings, involving the same patent, Justice Crampton (as he then was) held that:

Allergan has met its burden of establishing, on a balance of probabilities, that Sandoz's allegation that the '764 Patent is invalid on the ground of obviousness is not justified. (Allergan Inc and others v Canada (Minister of Health) and Sandoz Canada Inc, 2011 FC 1316 (‘Sandoz’), para 127).

In other words, if Justice Hughes found the allegations of obviousness justified it would run contrary to Justice Crampton's earlier finding. Therefore in the interests of judicial comity, Justice Hughes disregarded his own findings, and granted the prohibition order in favour of Allergan. At paras 189–94 he writes:

As is apparent, I would find on the evidence before me that Apotex's allegations as to obviousness are justified …

That is, however, not the end of the matter.

I must consider the question of comity. Is the evidence and argument before me ‘different’ from or ‘better’ than the evidence and argument before Crampton J in Sandoz? There is no real way to measure ‘different’ or ‘better’. The evidence and argument is of the same kind. In some cases Crampton J had unrebutted evidence whereas I have rebutted evidence. The difference in the evidence and argument is more one of quality to the best that can be discerned from the record that I have, and this court not having the record as to what was before Crampton J.

If I were to dismiss this application on the basis that Allergan did not discharge its burden of proving that Apotex's allegations as to obviousness were not justified; then, within a matter of hours—if not days—the Minister would give Apotex a Notice of Compliance, and the issue as to whether the court should grant a prohibition order would be moot. The Court of Appeal, in all likelihood, would not hear an appeal.

I believe that there have been serious issues raised as to comity. The somewhat contradictory decisions of the Court of Appeal should be considered by that court and clear instruction given as to how, in an NOC context, previous decisions of a court on the same issues respecting the same patent, should be considered.

The only practical way to get the matter before the Court of Appeal is for me to grant the Order for prohibition in the likely expectation that Apotex will appeal.

Analysis

The Federal Court of Appeal strongly disapproved of this approach. Justice Noël, writing for a unanimous court, held that ‘it was not open to the Federal Court judge to grant the prohibition in order to further his desire to clarify the jurisprudence’ (2012 FCA 308 at para 6). The court nonetheless upheld the prohibition order. At paras 49 and 50 the court stated that:

it was not open to the Federal Court judge to issue a prohibition order for the purpose of having his concerns about the use of the doctrine of comity and the notion of abuse of process addressed by this court on appeal … unless the Federal Court judge could demonstrate that Crampton J.'s construction of the patent in order to determine the inventive concept was wrong or that distinct evidence adduced before him compelled him to reach a different conclusion, it would have been preferable for him to adhere to it.

The court added that claim construction must be conducted in light of the patent as a whole (para 72). Had the Applications Judge done a purposive and proper reading of the patent, he would have concluded that the improved safety profile formed part of the claimed invention (para 74).The court also found that the improved safety profile was not obvious to a person skilled in the art, as the invention was ‘the bi-product [sic] of an extensive, multi-centred, double masked, and randomized trial. There was nothing routine about this exercise and the manner in which the inventors came upon the improvement shows in the clearest possible way that it was not obvious to try’ (para 92).

Practical significance

Litigants and appellate courts should not bear the burden of satisfying a first instance judge's desire to clarify the jurisprudence. This distracts from the judicial function. As the Federal Court of Appeal noted:

… the parties were entitled to have their dispute settled on the merits and the Federal Court judge by issuing a formal judgment that was contrary to the conclusions that he reached on the merits, failed in his task. (para 49)

In addressing the issue of comity, a question which was at the heart of the Application Judge's unusual decision, the court emphasized that judicial comity (a horizontal application of stare decisis, if you like) generally applied to questions of law, but not to questions of fact:

In the Federal Court, Mactavish J. in Almrei (Re), 2009 FC 3, acknowledged this limitation as follows (para. 70):

‘The principle of judicial comity might arise in the context of a ruling on a point of law but I did not consider myself bound by any factual findings made by my fellow judges in the earlier proceedings.’ (para 45)

The rationale for this is that there can only be one correct interpretation of a question of law, whereas questions of fact may give rise to divergent findings (especially where the evidentiary base differs). The court was of the view that ‘decisions rendered by colleagues are persuasive and should be given considerable weight, a departure is authorized where a judge is convinced that the prior decision is wrong and can advance cogent reasons in support of this view’ (para 47). Accordingly, since the task of the Applications Judge in this case lay in identifying the inventive concept (a question of law), it was not open to him to depart from Justice Crampton's earlier decision unless that earlier construction was justifiably wrong or new evidence justified the departure. At paras 50–52, the court stated that:

… construing a patent in order to identify the inventive concept when it is not readily discernible for the claim itself requires looking at the whole of the patent (Sanofi, para. 77) and gives rise to a question of law (Western Electric Co. v Baldwin International Radio of Canada Ltd., [1934] S.C.R. 570, pp. 572-573 (S.C.C.); Weatherford Canada Ltd. v Corlac Inc., 2011 FCA 228, [2011] F.C.J. No. 1090, para. 24—and the authorities referred to in these passages). It follows that unless the Federal Court judge could demonstrate that Crampton J.'s construction of the patent in order to determine the inventive concept was wrong or that distinct evidence adduced before him compelled him to reach a different conclusion, it would have been preferable for him to adhere to it.

The Federal Court judge did not identify any error nor did he rely on distinct evidence to explain his diverging view. He simply chose to construe the patent differently and held that the inventive concept did not extend to the improved safety profile which Crampton J. had included …

If this was the only reason why the Federal Court judge felt that he could disregard the opinion of his colleague, it does not justify his action. Construing a patent in order to identify the inventive concept is no less an exercise that leads to a determination of law because the document being construed is drafted by the patentee … The analogy which the Federal Court judge drew with a contract (ibidem) is no more helpful since all else being equal a contract should not be subjected to contradictory constructions any more than a patent, or a statute.

For a decision concerning the inventiveness of glaucoma treatment, the Applications Judge demonstrated his own short-sightedness in failing to see the bigger picture. As set out by the Court of Appeal, his concerns over comity could have been neatly addressed by questioning whether his divergence with Justice Crampton's earlier decision was one of law, or one of fact (and whether the divergence was justified.

JIPLP welcomes Martin Kujan

2013-03-25T14:56:00.002Z

The Journal of Intellectual Property Law & Practice is delighted to welcome Martin Kujan as the most recent member of its Editorial Board. Martin (IP Consultant, Neulogy, Slovak Republic) has previous experience of editorial responsibilities, having served on the board of the excellent online journal SCRIPTed.

You can read a little more about Martin here.

I say doughnut and you say dónut: why is the CTM system ‘different’

2013-03-25T14:48:00.001Z

Author: Laetitia Lagarde (Studio Legale Jacobacci, Torino)

Case T-569/10 Bimbo v OHMI—Panrico (BIMBO DOUGHNUTS), General Court (Seventh Chamber), 10 October 2012

Journal of Intellectual Property Law & Practice (2013) doi: 10.1093/jiplp/jpt028, first published online: March 21, 2013

The General Court upheld the likelihood of confusion between BIMBO DOUGHNUTS and the earlier Spanish mark DOGHNUTS, thus allowing a Spanish pastry maker to prevent its competitor from using the word ‘doughnut’ for its products, on the grounds that a large part of the Spanish public does not speak English and will perceive the similar element as a fantasy word.

Legal context

According to Article 8(1)(b) of Council Regulation 207/2009 on the Community trade mark (CTMR), upon an opposition filed by the proprietor of an earlier trade mark, the trade mark applied for may not be registered if, due to the fact that it is identical or similar to an earlier trade mark and to the goods or services covered by the trade marks, there exists a likelihood of confusion by the public in the territory in which the earlier trade mark is protected.

Further, the fact that an element of a composite trade mark is in itself a trade mark with a reputation may play a part in the appraisal of the relative weight of the various components of the composite mark. Thus, if one element of a composite mark is itself a mark with a reputation, it may, by the same token, play a more important role in the composite mark.

However, the mere fact that one element of a composite mark formed of two elements plays a more important role than the other does not automatically mean that the comparison between the marks at issue can be limited to considering the former element. Indeed, it is only if all the other components of the mark are negligible that the assessment of similarity can be carried out solely on the basis of the dominant element (see Case C-334/05 OHIM v Shaker [2007] ECR I-04529).

Facts

The OHIM Opposition Division and the Board of Appeal (BoA) had upheld the opposition brought by Panrico (the ‘opponent’) against the CTM application filed by Bimbo, on the basis of Article 8(1)(b) CTMR.

The BoA noted that ‘doughnut’ was an English word meaning a ‘ring-shaped small spongy cake made of dough’. The word does not exist in Spanish, where its equivalents are ‘dónut’ or ‘rosquilla’. Thus for the average Spanish consumer (excluding those who speak English) the word ‘doughnut’ did not describe the goods in question or their qualities and did not have any particular connotation in relation to them: the earlier sign (like the applicant's mark) would be perceived as a foreign or fantasy term by most consumers.

Taking account of the average distinctiveness of the earlier trade mark, the BoA, in an overall assessment of the likelihood of confusion, concluded that owing to the average degree of visual and phonetic similarity between the signs, there was a likelihood of confusion on the part of the relevant consumers for all the goods at issue, which were found to be identical.

Bimbo appealed against the BoA decision which was dismissed by the General Court.

Analysis

Neither party disputed that the goods concerned were identical in Class 30, since the ‘pastry and bakery products, specially doughnuts’ claimed for the applied-for mark were included in the category of ‘all kinds of confectionary and pastry products’ protected by the earlier trade mark.

Regarding the comparison of the signs, the applicant claimed infringement of Article 8(1)(b) CTMR relying on two arguments: (i) the word ‘doughnuts’ is descriptive of the goods in question and has no distinctive character, even for Spanish consumers. (ii) Further, BIMBO is one of the best known trade marks in Spain: since it was the only distinctive element of the applied-for mark, there was no likelihood of confusion with the earlier mark.

As to the first argument, considering the distinctiveness of the word ‘doughnuts’, the court rejected Bimbo's arguments and evidence regarding the level of English spoken and understood by the Spanish consumer. In its view the Spanish public generally has a low degree of familiarity with the English language (see Case T–104/01 Oberhauser v OHIM—Petit Liberto, 23 October 2002).

The applicant's argument that knowledge of English in Spain is steadily increasing, particularly among young people, did not refute the fact that, according to the fairly recent study submitted by the applicant itself, almost 50 per cent of Spaniards have no command of any foreign language.

Thus the part of the relevant public which did not speak English would not realize, on seeing the word ‘doughnuts’, that ‘dónuts’ was the Spanish transcription of that word. It was therefore unnecessary to decide whether the word ‘dónut’ was regarded by the Spanish consumer as a generic term denoting doughnuts, or whether ‘dónut’ was regarded as denoting a trade mark with a reputation which belongs to the opponent.

The opponent had produced a survey of Spanish consumers which demonstrated that more than 80 per cent of the interviewees stated that they did not know the meaning of the word ‘doughnuts’. The applicant criticized that survey on the grounds that the researcher only showed the word to the interviewees but did not speak it aloud. The court found that the method employed in the survey in question was justified due to the nature of bakery and pastry products, in particular those bearing a trade mark, which are often purchased in self-service shops and are consequently bought on sight, without their trade mark being spoken aloud. The method chosen when the survey was conducted of showing the word ‘doughnuts’, without saying it, thus reflected what actually occurs in a large number of bakery and pastry product purchases.

Regarding the second argument, the BoA did not explicitly address the applicant's argument based on the reputation of the ‘bimbo’ element of the applied-for mark in the contested decision. However, the court found that the ‘doughnuts’ element in the applied-for mark ‘would catch the attention of the relevant Spanish public, as it appears unusual in Spanish due to the atypical combination of vowels “ou” and the accumulation of consonants “ghn”’. Thus the ‘doughnuts’ element could not be considered negligible in the overall impression since it was longer and the word ‘doughnuts’ would attract the Spanish public's attention because it appeared atypical in Spanish owing, in particular, to the sequence of the consonants ‘ghn’.

Thus the 'doughnuts’ element, which is nearly identical to the earlier trade mark, had an independent and distinctive role in the CTMA. Further, since the 'doughnuts’ element was wholly meaningless for that consumer, the mark applied for, BIMBO DOUGHNUTS, did not form a unitary whole or a logical unit on its own in which the ‘doughnuts’ element would be merged with the ‘bimbo’ element. The part of the relevant public which was not familiar with English would not be able to understand the sign at issue as meaning that the goods concerned were doughnuts produced by the undertaking Bimbo.

Since bakery and pastry products are everyday low-cost consumer goods, the public must be considered to have a somewhat reduced level of attention when purchasing them, and due the average degree of visual and phonetic similarity between the trade marks at issue, the BoA was correct in concluding that there was a likelihood of confusion.

Practical significance

This judgment falls within the implementation of a well-noted case in 2012 (see Case C-196/11 Formula One Licensing BV v OHIM, 24 May 2012) in which the court reiterated the coexistence between CTMs and national trade marks and found that the validity of a national trade mark may not be called into question in the opposition proceedings of a CTM.

The court had previously held in 2007 that the word ‘dónuts’ was not generic in Spain where the average consumer perceives it as distinctive sign in relation to pastries, among others goods (see T-334/04 House of Donuts v OHIM—Panrico, 18 April 2007, para 48).

Departing from the basis that it is necessary to acknowledge a certain degree of distinctiveness of a national mark on which the opposition is based, the misspelled ‘doghnut’ sign has enjoyed the same presumption of validity on the Spanish Trade Mark Register (OEPM) since 1994, as has the word ‘dónut’—first registered in 1962. Indubitably, at both the time of registration and today, no Spanish consumer would have perceived the meaning of the word ‘doughnut’ as a description for a pastry made of dough. It is unfortunate that the court did not find it necessary to consider the reputation of BIMBO, thus concluding that the earlier national right prevails, at least until cancellation proceedings are brought in Spain.

Emails (and other pure information) are not property

2013-03-22T10:39:00.001Z

Author: Mark Anderson (Anderson Law LLP)

Fairstar Heavy Transport NV v Adkins and another [2012] EWHC 2952 (TCC), Edwards-Stuart J, Technology and Construction Court, England and Wales, 1 November 2012

Journal of Intellectual Property Law & Practice (2013), doi: 10.1093/jiplp/jpt030, fFirst published online: March 21, 2013

A court held that there was no property right in emails.

Legal context

This was a decision on an application for inspection of emails, preliminary to a main action. The first defendant opposed the application on the ground that the claimant had no property in the emails. In the words of the judge in this case:

To the extent that people require protection against the misuse of information contained in e-mails, in my judgment satisfactory protection is provided under English law either by the equitable jurisdiction to which I have referred in relation to confidential information (or by contract, where there is one) or, where applicable, the law of copyright. There are no compelling practical reasons that support the existence of a proprietary right—indeed, practical considerations militate against it.

For unstated ‘jurisdictional reasons’ none of these other areas of law was available, in the present case, so the court was required to focus on the narrow (but important) legal question of whether property rights exist in pure information—here, emails held in electronic form.

Facts

The first defendant, Mr Adkins, had been the CEO of the claimant, Fairstar, a Dutch company, which provided specialist transportation services by sea and owned a number of ships. The company was acquired in a hostile takeover, at which point Mr Adkins was dismissed. Fairstar was in dispute with a Chinese shipyard in relation to the construction and supply of some ships. The new management of Fairstar sought access to documentation in Mr Adkin's possession concerning the dispute.

During his period as CEO, emails sent to Mr Adkin's office email account were automatically forwarded to his private email account and the office emails were then automatically deleted from the office system. Emails sent by Mr Adkins as CEO were typically sent from his private account.

In the present application to the court, Fairstar sought inspection of these emails by an IT expert. Mr Adkin's objected on the ground that Fairstar had no entitlement to inspect these emails, at any rate not by means of any claim that could be asserted in the courts of England and Wales.

The case report indicates that there was a last-minute flurry of witness statements and supporting evidence before the hearing, and that objections were made to having to deal with the material submitted without an adjournment. This resulted in counsel for Fairstar agreeing to limit the scope of the application in the following terms:

Does Fairstar have an enforceable proprietary claim to the content of the e-mails held by Mr Adkins (and/or Claranet) insofar as they were received or sent by Mr Adkins acting on behalf of Fairstar?

Edwards-Stuart J reviewed a large number of authorities that had been cited by counsel on the question of whether there is property in pure information. He considered that it was ‘clear that the preponderance of authority points strongly against there being any proprietary right in the content of information, and this must apply to the content of an e-mail, although I would not go so far as to say that this is now settled law’. He continued:

I can find no practical basis for holding that there should be property in the content of an e-mail, even if I thought that it was otherwise open to me to do so. To the extent that people require protection against the misuse of information contained in e-mails, in my judgment satisfactory protection is provided under English law either by the equitable jurisdiction to which I have referred in relation to confidential information (or by contract, where there is one) or, where applicable, the law of copyright. There are no compelling practical reasons that support the existence of a proprietary right - indeed, practical considerations militate against it.

Accordingly he found in favour of Mr Adkins and rejected the application.

Analysis

As the judge points out, the conventional view in England, supported by the case law that he discussed, is that there is no property in pure information. Other rights may be relevant in particular situations, for example:

Physical property in the paper or other recording medium on which the information is recorded.

Intellectual property in any invention, patent claim, copyright work etc. that may exist in relation to the information.

Rights to prevent use or disclosure of the information under the law of confidence.

Contractual rights to prevent use or disclosure of the information, eg as part of an employment contract.

For unstated reasons, none of these other rights was available in the present case. Commentators have speculated that this may be because the claimant was a Dutch company and any contracts with Mr Adkins may have been under Dutch law and subject to the jurisdiction of the Dutch courts, leaving a property claim as the only potential claim available in the English courts. The precise reasons may not matter too much to intellectual property lawyers, given that the scope of the application to the court was so precisely defined, as quoted above.

The writer understands that property rights may exist in information in other countries, eg under US trade secrets laws.

Practical significance

The taxonomy of intellectual property does matter. It is very helpful to intellectual property lawyers to have the case law in this area examined in detail by a High Court judge, and to have some clear and up-to-date analysis that property does not exist in pure information under English law.

For example, having this clarity helps contract draftsmen when drafting clauses dealing with the ownership and use of the results of research projects, such as might be found in a research collaboration agreement or technical consultancy agreement.

This case law should be considered in conjunction with other recent case law that examines related topics. For example, in Coogan v News Group Newspapers Limited and Mulcaire [2012] EWCA Civ 48, the Court of Appeal (led by Neuberger MR) decided that confidential information should be regarded as a type of intellectual property. That decision was made in the context of s 72 of the Senior Courts Act 1981, but could be viewed as having wider application. It is also widely acknowledged that know-how is commonly licensed in a similar way to patents and other types of intellectual property, and for transaction purposes is often viewed as a type of intellectual property. Usually, this is on the basis that the know-how is protected as confidential information.

Rebecca Chong joins JIPLP Editorial Board

2013-03-20T09:49:00.001Z

JIPLP welcomes Rebecca Chong as its latest addition to the Editorial Board. Rebecca is currently legal counsel to the Institute of Practitioners in Advertising, London. She has served for three years as Deputy Editor of the European Trade Mark Reports and was formerly in private practice with law firm Morgan Cole. Rebecca is also a popular speaker on advertising-related intellectual property issues on the British conference circuit.

We welcome Rebecca to the Board and look forward to her contributions to the further development of JIPLP.

Should we all be just a little more American?

2013-03-17T12:48:00.000Z

Here's the Editorial of the April 2013 issue of JIPLP, the full contents of which you can peruse here. This is a guest piece by Paul Stevens, an intellectual property partner in Olswang LLP, who writes:

"One enduring advantage, and indeed pleasure, of being an intellectual property law practitioner is the international remit which we enjoy outside our own jurisdiction. Conventions between states ensuring reciprocity give rise to a common language for practitioners and familiarity with internationally recognised concepts readily understood and explained to clients. The cross-fertilisation of jurisprudential heritages from different territories provides a rich learning environment for self-improvement and best practice. The work of organizations such as the World Trade Organization and the World Intellectual Property Organization has led to increasing harmonisation, as well as reciprocity of protection.

And yet there remain significant differences: differences borne of both national laws and legal practitioners' background.

In the area of trade mark law, we see differences around the world at the margins of protection. At its core, trade mark law still protects the trader from origin confusion arising from third party goods or services. However, one area where both law and practice see a huge divergence is the approach taken at the point of filing. And this is where I wonder whether we in Europe should perhaps be just that little bit more American.

Maybe we're not -- but is there any
harm in being a bit more American?

Before the US Patent and Trademark Office (USPTO), applicants must, prior to registration, demonstrate that they have actually used the trade mark in commerce for the goods or services sought, or have an intention to use the mark for those goods and services. An intention to use must be “bona fide” and must be something more than just an idea or an aspiration. That intention to use is crystallised on the application form by a statement that, if inaccurate, gives rise to the possible penalty of perjury. Such a sworn statement is not of itself sufficient either. Applicants should generally be able to produce contemporaneous objective documentary evidence demonstrating that at the time of the application they had a bona fide intent to use the mark in the US for each of the goods and services applied for. That documentary evidence may include business plans, product designs, samples, or correspondence with prospective licensees. A failure to produce such evidence may result in a refusal or invalidity of the mark. Misstatements made before the USPTO have resulted in trade mark registrations being rendered invalid where the applicant signing the declaration has shown a “reckless disregard for the truth”.

With these penalties comprising her legal landscape, unsurprisingly a US attorney is highly circumspect when drafting and filing specifications for applicants. The prospect of her client being accused of “fraud before the USPTO” makes for a prudent advisor when looking at the breadth of specifications.

In contrast, at OHIM a Community trade mark can only be declared invalid “where the applicant was acting in bad faith when she filed the application for a trade mark”. There is no requirement that there be an intention to use the mark applied for, and evidence of no intent to use is not a ground for establishing bad faith per se. OHIM's practice of allowing specifications to encompass all goods or services in a class by use of class headings (both before and after the CJEU's decision in IP Translator) tacitly endorses specifications with extravagant breadth. Applicants and their advisors have little incentive to narrow their specification to goods or services which are really of interest. Indeed, the structure encourages advisors to draft broadly, just in case.

Why is this a problem? Any practitioner who has sought to clear a trade mark in more than one territory is faced with an impossible task of steering a client through registrations which may, on their face, have little to do with the commercial interests of the registrants. Advisors can't distinguish between real and paper conflicts. Businesses that regularly clear trade marks become frustrated because of the white noise of large numbers of ‘paper-only’ clashes. Unnecessary registry proceedings arise where there is no real conflict but where overly broad specifications overlap.

Ultimately commerce is hindered by a cluttered register. As the European community grows, the potential for more imagined conflict increases. With that in mind, wouldn't we Europeans benefit from being just a little more American?".

April 2013 JIPLP now online -- but what's in it for you?

2013-03-15T15:59:00.002Z

The April 2013 issue of the Journal of Intellectual Property Law & Practice (JIPLP) has now been published online. Subscribers to the online-only and online-plus-printed versions can access it in full via the JIPLP website here. The printed version will follow in the not-too-distant future.

The contents of this issue are listed below. You don't have to be a subscriber to read the items listed below, since each may be read via short-term pay-to-read access by visiting the JIPLP website.

The guest editorial by Paul Stevens (Olswang LLP) will be posted in full on this weblog and can be enjoyed in full, at no cost to its readers/

Volume 8 Issue 4 April 2013

Guest Editorial

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Paul Stevens

Should we all be just a little more American?

Current Intelligence

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Robert Lundie-Smith

Patents: UK to be one-stop-shop for non-infringement across Europe?

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Kate Manning

Trade marks: domain names, distinctiveness and evidence

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Emir Crowne and

Shaun Hashim

Trade marks: Newsletter containing official mark held sufficient evidence of ‘adoption and use’

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Rossa McMahon

Irish Patents Office substantially revokes specification for registration which exceeded demonstrable use of the mark

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Peter Ellis and

Giles Parsons

Starbucks v Sky: an invalid mark, a squeeze argument and an absence of passing off

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Betsy Vinolia Rajasingh

Copyright: India enacts laws to protect copyright over digital content

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Stefano Barazza

Designs: The individual character of a design: freedom and the ‘saturation of the state of the art'

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Darren Smyth

How is the scope of protection of a registered Community design to be determined?

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Darren Smyth

Publicity orders in intellectual property cases—When are they granted and how must a party comply?

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Stefano Barazza

Utility models: The Enforcement Directive and invalidation procedures: an unsurprising negative verdict

Articles

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Arnaud Folliard-Monguiral and

David Rogers

Community trade mark round-up 2012

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Binka Kirova and

Ivan Penkin

The name of the thing, or an attempt at a semiotic and semantic analysis of trade marks

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Eleonora Rosati

The Orphan Works Directive, or throwing a stone and hiding the hand

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Ilanah Simon Fhima

Initial interest confusion

From GRUR Int.

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German Federal Court of Justice

Solution with equivalent effect diverging from literal meaning—Pallet Container III (Palettenbehälter III)

IP in Review

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Christopher Wadlow

The Diplomatic Platypus

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Michael Mireles

Here to stay: Universities, technology transfer and intellectual property

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Riccardo Sciaudone

Dealing with IP matters in cross-border cases

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Francis Davey

Philosophical perspectives on intellectual property

How is the scope of protection of a registered Community design to be determined?

2013-02-25T10:29:00.000Z

Author: Darren Smyth (EIP, London)

Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1339, Court of Appeal, England and Wales, 18 October 2012

Journal of Intellectual Property Law & Practice (2013) doi: 10.1093/jiplp/jpt004, first published online: February 24, 2013

The Court of Appeal decision on the scope of protection of a Community registered design confirms aspects of the approach established by previous cases, but leaves unresolved issues concerning the significance of the ‘design corpus’ and unanswered questions about product features not claimed as part of the design.

Legal context

The legal test for infringement of a Community registered design—the scope of protection—is set out in Article 10 of the Community Design Regulation 6/2002:

Article 10 Scope of protection

1. The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression.

2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.

As the Community registered design system approaches its 10th anniversary, there have still been relatively few decisions from higher courts to clarify the issue of what is the scope of protection under the new law, which is harmonized throughout the EU. How should the judge don the spectacles of the informed user, and how should the question of different overall impression be judged? There is one decision from the Court of Justice of the European Union in PepsiCo v Grupo Promer (C-281/10 P) which gives guidance on the test of ‘different overall impression on the informed user’ in the context of whether a design has ‘individual character’. In the UK, there have been two decisions from the Court of Appeal for England and Wales, Procter & Gamble Company v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936 and Dyson Ltd v Vax Ltd [2011] EWCA Civ 1206. In both of these, Jacob LJ gave the leading judgment; he has once again been summoned from retirement to give the leading judgment in this, the most high-profile registered design case to date.

Recital 14 of the Regulation, referring to the same test as for scope of protection, but in the context of individual character, gained prominence in the first instance judgment and appeal. It states:

The assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus, taking into consideration the nature of the product to which the design is applied or in which it is incorporated, and in particular the industrial sector to which it belongs and the degree of freedom of the designer in developing the design.

The history of this Recital in relation to the scope of protection in UK cases is significant. In Procter & Gamble Company v Reckitt Benckiser (UK) Ltd, Jacob LJ, reversing the trial decision of Lewison J, rejected the idea that the Recital has the effect that ‘an accused design escape[s] infringement only if its overall impression “clearly differs” from the registered design’. By contrast, Arnold J accepted a more modest proposition in Dyson Ltd v Vax Ltd [2010] EWHC 1923 (Pat):

Recital (13) of the Designs Directive [which corresponds to recital 14 of the Community Designs Regulation] indicates that, other things being equal, a registered design should receive a broader scope of protection where the registered design is markedly different to the design corpus and a narrower scope of protection where it differs only slightly from the design corpus.

This principle was implicitly affirmed on appeal.

In both earlier UK cases, the designs were held to be a great departure from that which went before, and a detailed comparison of the registered design with the prior art corpus, in order to determine the scope of protection that the registration should afford, was not conducted.

Facts

In Samsung Electronics (UK) Ltd v Apple Inc [2012] EWHC 1882 (Pat) (9 July 2012), Judge Birss QC, sitting as a judge of the High Court, granted a declaration that three of Samsung's Galaxy tablet computers (the Tab 10.1, Tab 8.9 and Tab 7.7) did not infringe Apple's Community registered design No 000181607-0001. Validity of the registration was challenged at OHIM, but was not at issue in the UK proceedings.

In arriving at the result, Judge Birss used a seven-feature characterization that was put forward by Apple of features of the registered design allegedly reproduced in Samsung's products, and analysed each feature in relation to a design corpus of over 50 items of prior art put forward by Samsung. Each feature was considered against the design corpus and also considered from the point of view of design freedom.

Apple appealed the decision.

Dismissing Apple's appeal, Sir Robin Jacob (the other two judges agreeing) fully and wholeheartedly endorsed the decision of Judge Birss. He stated at [53]: ‘Overall I cannot begin to see any material error by the Judge’, and then at [54]: ‘I would add that even if I were forming my own view of the matter, I would have come to the same conclusion and for the same reasons.’

Analysis

When reporting Judge Birss's decision for this journal, I commented that the detailed comparison that he undertook contrasted with Jacob LJ's comments in the two earlier appeal decisions, which suggested that the judge should simply conduct a visual comparison, without lengthy consideration of the design corpus, or detailed expert evidence on the degree of design freedom.

In the appeal, Apple criticized Judge Birss for conducting a piecemeal, feature-by-feature analysis. Pointing out at [29] that ‘Apple can hardly complain … since the Judge used the very list of seven features it had identified and invited him to use’, Sir Robin emphasized that, having ‘considered the various features of the design’, the judge then ‘came to consider the overall impression of the Apple design’. Therefore it is clear that, whatever preparatory analysis is undertaken, what matters is the overall impression.

Concerning the relevance of the design corpus, and the need apparently potentially to refer to a large body of prior art in order to determine the scope of protection of a Community registered design, the situation is less clear. In the decision under appeal, Judge Birss approved at [48] Arnold J's dictum in Dyson Ltd v Vax Ltd at [39] quoted above. Moreover, at [189] he referred to the ‘importance of properly taking into account the informed user's knowledge and experience of the design corpus’. This approach is apparently endorsed, and Sir Robin approved at [53] of the ‘overall conclusion, arrived at by using his own eyes and taking into account both the design corpus and the extent to which there was design freedom’. So the consideration of a potentially large corpus of prior art is apparently required to assess the scope of protection of a Community Registered Design. But it is not clear how this is to be reconciled with Sir Robin's statement in Procter & Gamble Company v Reckitt Benckiser (UK) Ltd and repeated in Dyson Ltd v Vax Ltd that ‘[b]y and large it should be possible to decide a registered design case in a few hours.’

There also remain two unresolved issues for practitioners concerning how features of a registered design for which protection is not sought should be indicated.

The first concerns the feature of lack of ornamentation. Apple's list of features included a ‘surface without any ornamentation’ and ‘without features which specify orientation’, and Samsung did not challenge this as a characterization of the registration. Accordingly, both Judge Birss and the Court of Appeal accepted lack of ornamentation as a feature of the design registration. This has been surprising for many practitioners who have worked with the convention that not showing ornamentation in the representations of a registration would result in protection for the design with or without added ornamentation. How is an applicant now supposed to show that such a scope of protection is sought?

The second issue concerns the related question of the significance of dotted lines in a representation. Convention, supported by the OHIM Guidelines and the Invalidity Manual, dictates that features in dotted lines are disregarded, because they are either not claimed, or cannot be seen. In the present case, two views showed on the front of the tablet a frame in dotted lines. Samsung submitted that this was to be disregarded. Apple contended, and Judge Birss accepted, that the dotted line indicated a frame below a glass screen, and was not to be disregarded. Sir Robin dismissed Samsung's submission as a ‘complicated point based on the guidelines for examination’ which ‘is faintly absurd: a bit like the notice-board reading “Ignore this notice”.’ This surprising statement will leave applicants wondering how to define the scope of protection that they seek.

A possible avenue is for applicants to use the description of the invention, provided for on the application form, whose use is optional, to clarify the use of dotted lines, and whether lack of ornamentation forms a part of the claimed design. This approach, however, also awaits judicial approval, and is considered by some commentators to conflict with Article 36(6), which states that the description ‘shall not affect the scope of protection of the design as such’.

Practical significance

This decision, like the previous Court of Appeal cases, highlights that the scope of protection of a registered design is narrow. It suggests more strongly than previous Court of Appeal decisions that the prior art corpus should be taken into consideration when deciding the scope of protection. Moreover, it creates uncertainty for applicants and their representatives concerning how to indicate in an application the features for which protection is sought.

The individual character of a design: freedom and the ‘saturation of the state of the art’

2013-02-22T09:31:00.001Z

Author: Stefano Barazza (Studio Legale Barazza, Udine, Italy)

Joined Cases T-83/11 and T-84/11, Antrax IT Srl v OHIM, General Court of the European Union, 13 November 2012

Journal of Intellectual Property Law & Practice (2013) doi: 10.1093/jiplp/jpt011, first published online: February 21, 2013

The General Court, reviewing a decision of the OHIM's Board of Appeal on the lack of individual character of a design concerning a thermosyphon for radiators, provides a thorough assessment of the notions of ‘informed user’ and ‘degree of freedom of the designer’, observing that the ‘saturation of the state of the art’ (crowded field) may be relevant to assess the degree of awareness of the informed user.

Legal context and facts

Antrax owned eight Community design registrations (RCD no 000593959–0001 to 000593959–0008), registered in 2006, for ‘radiators for heating’ (Class 23.03 of the Locarno Classification). In particular, designs 000593959–0001 and –0002 depict thermosyphons consisting of a series of straight vertical heating pipes, of rectangular shape, attached to two horizontal collectors, of cylindrical shape, placed at the upper and lower end of the heating body.

In 2008 The Heating Company filed an application for invalidity against both RCDs, for lack of novelty and individual character, in relation to an earlier design, registered in 2002 (German designs no 4 and 5, covered by multiple registration No 401 10481.8, published in September 2002 and valid in France, Italy and the Benelux as international design No DM/060899). By its decisions of 30 September 2009, the OHIM Invalidity Division declared the RCDs invalid for lack of novelty under Article 5 of Regulation 6/2002.

The Third Board of Appeal annulled this decision for failing to give adequate reasons for the lack of novelty, and proceeded to re-examine the application. The Board excluded the lack of novelty, as the differences between the designs could not be regarded as immaterial details (Article 5(2)). Assessing the lack of individual character, the Board first defined the informed user as the person who buys radiators for heating, in order to install them at home, after seeing and comparing different designs, through consultation of relevant magazines and websites or by visiting specialized shops. Noting that both the RCDs and the previous designs portrayed radiators equipped with vertical pipes of rectangular shape and cylindrical collectors, of similar lateral protrusion, the Board concluded that the overall aspect of the radiators appeared similar, in the eyes of the informed user, regardless of his angle of observation. It also added that the differences between the designs, mainly pertaining to the relationship between the width, depth and horizontal spacing of the pipes, as well as between the diameter of the collectors and the pipes' depth, were insufficient to alter the informed user's perception. The Board also rejected Antrax's argument as to the limited degree of freedom of the designer, noting that different solutions appeared possible. Consequently, relying on Arts 6 and 25(1)(b) of Regulation 6/2002, the Board declared the RCDs invalid for lack of individual character.

Antrax filed two separate applications with the General Court (later joined, under Article 50(1) of the Rules of Procedure), demanding that the Board of Appeal's decisions be annulled and the RCDs declared valid.

Analysis

The General Court first excluded the admissibility of several new documents, submitted by Antrax for the first time with the applications to the court, holding that the judicial review established by Article 61 of Regulation 6/2002 merely concerns the legitimacy of the decisions taken by the Board of Appeal and cannot amount to a re-examination of the matter, in light of documents which had not been made available during the procedures in front of the OHIM (ex multis, Case T-9/07 Grupo Promer Mon Graphic SA v OHIM [2010] ECR II–00981 and Case C-29/05 OHIM v Kaul GmbH [2007] ECR I-02213).

With its only plea, the applicant asserted the violation of Article 6 of Regulation 6/2002, claiming that the differences between the disputed designs and the prior art were sufficient to allow the informed user to distinguish the different designs, which thus presented an individual character.

The General Court began its assessment by defining the notion of ‘informed user’, which, according to PepsiCo Inc v Grupo Promer Mon Graphic SA Case C-281/10 P [2011], lies

‘… between that of the average consumer, applicable in trade mark matters, who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trade marks in conflict, and the sectoral expert, who is an expert with detailed technical expertise’.

The informed user, therefore, appears to be a particularly observant person who, being neither the producer or seller of a product that incorporates the design at issue, nor a technical expert or designer, makes use of the product according to its intended aim, exhibiting a relatively high degree of attention when using it (Case T-153/08 Shenzhen Taiden Industrial Co v OHIM [2010] ECR II-02517), and who has knowledge of the prior art and of the features commonly implemented by similar products, through personal experience or extensive knowledge of the sector. The court added that the heightened sensitivity attributed to the informed user does not imply, however, that he is capable of distinguishing aspects related to the technical function of the product from those which are arbitrary.

Applying these principles, the General Court confirmed the Board of Appeal's definition of the informed user.

On the notion of individual character, the court examined its relationship to the degree of freedom of the designer, noting that restrictions dictated by technical or regulatory constraints may result in standardization of some of the features of the products which implement the disputed designs: Case T-11/08 Kwang Yang Motor Co Ltd v OHIM [2011]. Thus the extent of the differences which the designs should exhibit to produce a different impression on the informed user is proportional to the degree of freedom of the designer: small differences may not generate a different overall impression if the degree of freedom is high, but may be sufficient when the degree is restricted.

The Board of Appeal's conclusions on the absence of a restriction of the degree of freedom were upheld, as it appeared that different designs could have been conceived. It was also observed that general trends cannot be regarded as restrictions to the degree of freedom.

The applicant challenged the Board of Appeal's conclusions as to the lack of individual character, maintaining that the absence of a lateral protrusion of the collectors, in the disputed designs, distinguished them from the prior art. The court recognized that the designs contained no claims as to the extent of the lateral protrusion of the collectors, contrary to the findings of the Board of Appeal. The conclusion was supported by the broken lines drawn at the collectors' extremities, as well as by the fact that the disputed designs did not represent complete radiators but merely depicted thermosyphons, as Antrax stated in its application for registration. OHIM's classification according to the Locarno Convention is a merely administrative procedure, which does not substitute or render the applicant's description invalid (Article 36(6) of Regulation 6/2002).

The court then verified whether the Board's other findings were independently sufficient to demonstrate the lack of individual character of the disputed designs. It disregarded the applicant's arguments concerning the comparison between the depth and spacing of the pipes in the disputed designs and prior art, since they relied on the unproved assertion of the identity of the collectors' dimensions. The judgment clarified that the protection of the disputed designs was granted independently of the dimensions of the final product to which they were to be incorporated and that the applicant had failed to prove the existence of any restriction to the collectors' dimensions. The comparison, therefore, should focus on the internal proportions of the elements, which is independent from the collectors' dimensions.

Finally, the applicant's remarks concerning the saturation of the state of the art were examined. Antrax had already submitted the argument during the proceedings in front of the Invalidity Division and the Board of Appeal, claiming that the crowded field rendered small differences in the internal proportions of the designs more readily perceptible by an informed user. The General Court noted that neither the Invalidity Division nor the Board of Appeal had expressly considered the argument put forward by the applicant. Contrary to OHIM's assertions, it found that the relevance of the exception could not be disputed and that OHIM's considerations as to the lack of proof supporting the applicant's arguments amounted to an inadmissible ex post integration of the reasons of the Board of Appeal's decision (see eg Case T-228/02 Organisation des Modjahedines du peuple d'Iran v Council [2006] ECR II-04665).

The court underlined that its review cannot extend to the evaluation of arguments which have not been considered by the Board of Appeal in the procedure leading to the contested decision, as the court's power to reform can only be exercised when, upon examination of the Board of Appeal's motivations, it is possible to determine the correct decision which should have been taken, based on factual and legal elements already proved: Case C-263/09 P Edwin Co Ltd v OHIM [2011].

The case offered an occasion to distinguish the saturation of the state of the art from the presence of a general trend in the industry. The latter, according to the court, bears significance only in relation to the aesthetic perception of a design and the commercial success of the product which incorporates it, but does not affect the overall impression produced by the designs on the informed user, nor does it restrict the degree of freedom of the designer. Therefore, when assessing the individual character of a design, the aesthetics or commercial success of a product should not be considered relevant. The saturation of the state of the art, instead, may well yield relevant effects on the perception of the informed user.

In light of the Board of Appeal's failure to state a reason with regard to a relevant argument submitted by the applicant, the General Court annulled the part of the Board of Appeal's decisions which proclaimed the invalidity of the designs, rejecting the rest of the application. The court evidenced that the duty to state reasons represents a fundamental principle of European Union Law, designed to allow the interested party and the judge to respectively challenge and assess the validity of an act (Case C-199/99 Corus UK v Commission [2003] ECR I-11177).

Practical significance

The judgment provides a useful overview of all the elements involved in the evaluation of the individual character of a design, enriching the notions of ‘informed user’ and ‘degree of freedom’, carved through reference to previous case law, with ancillary details drawn from the case in hand.

In particular, the court noted that the informed user's degree of awareness changes in relation to the degree of freedom of the designer (reciprocity) and can be influenced by the ‘saturation of the state of the art’, which potentially enhances his sensitiveness towards smaller differences in shapes and proportions. However, the informed user is supposedly incapable of discerning between features dictated by the technical function of the product from those which are arbitrary.

The rejection of the idea that general trends may determine a restriction of the freedom of the designer falls in line with an established case law (Shenzhen Taiden Industrial Co v OHIM), according to which the examination of the individual character of a design shall be conducted irrespective of aesthetic or commercial considerations. The court explicitly noted that such considerations cannot affect the degree of freedom of the designer, but may rather stimulate him to come up with new and original solutions. A diverse interpretation, centred upon the effects of general trends upon the degree of awareness of the informed user, would contradict the approach implemented in Article 6 of Regulation 6/2002 and might hinder creativity and innovation, rather than promoting it.

On the comparison of the overall and internal proportions of the designs, the court clarified that the former may be misleading, when the dimensions depend upon a single element the size of which may vary, unless a technical or normative restriction is present. It is only through an evaluation of the internal proportions of all the elements of the design, that the overall impression of the informed user can be positively identified, as internal proportions remain the same, regardless of the dimension of one of its elements.

The General Court also provided useful advice for the interpretation of applications for registration, evidencing that broken lines indicate elements that fall outside of the scope of protection and that OHIM's classification serves only administrative purposes and does not replace or invalidate the description made by the designer in the application for registration.

Editorial: The future of user-generated content is now

2013-02-20T15:27:00.001Z

The March 2013 guest editorial is written by JIPLP editorial board member Grégoire Marino. It runs like this:

How Time viewed UGC

"In its December press release, the European Commission agreed to reopen the debate on copyright. A dialogue will be launched to tackle several major issues with the current copyright framework, including the topic ‘user-generated content’. The outcome of this open discussion should guide the Commission in its mission to modernize the European copyright framework and adapt it to the digital economy. ‘User-generated content’ is a major bone of contention in the copyright debate. It is also a confusing concept in that it fails to distinguish original content from derivative works, which is the actual point of disagreement between rights holders, providers of online services and their users. Derivative works are based on one or more pre-existing copyright protected works and the right to create them is exclusively reserved to their original creators. The standard practice for rights holders is to license such rights on an individual basis, so as to control the adaptation of their work and to generate income from the commercialization of derivatives. This classic licensing model has arguably lost some of its relevance in the internet age, whereas copyright is at best misunderstood if not simply ignored by most users.

Nowadays everyone has easy access to user-generated content. Recent advances in technology have reduced the costs of creating and sharing derivative works, and the mass popularity of social media such as YouTube, Facebook or Tumblr has prompted the emergence of new social and cultural behaviours, where people are now empowered to become active creators. This phenomenon, called the ‘read/write culture’ by Lawrence Lessig but often referred to as the ‘remix culture’, has radically transformed our creative landscape and favoured the rapid development of social media, which provide the backbone for instantaneous content distribution. Over a few years these companies have also built vibrant audiences eager to consume, create and share, and they have found innovative ways to serve these audiences and to fuel a new type of creativity.

The fast development of social media companies in Europe has also been enabled in part by the ‘hosting’ provision of the e-Commerce Directive, which is loosely based on similar provisions in the US Digital Millennium Copyright Act and analogously limits the liability of internet service providers for hosting infringing content, provided they swiftly remove that content as soon as they become aware of it, usually upon a rights holder's notification. Even if it is true that this limitation of liability is indispensable for ISPs, it places the monitoring burden on the rights holders, since the directive clearly states that there is no obligation on ISPs to monitor for infringing content. This is the apple of discord for them, as they strongly disagree with the sheer principle of monitoring their own content. This situation affects in turn social media users who are immersed in the remix culture. That culture does not recognize the complexities of copyright law: for example, crediting the original author is deemed sufficient when a derivative work is created for non-commercial purposes, although this is clearly not sufficient from a legal point of view, absent any fair use defences. Users are often left confused about how and why the content they intend to share is infringing on someone else's copyright.

It is clear that user-generated content is here to stay. Finding inspiration in the works of others and building upon it has become a socially—if not legally—endorsed process of self-expression and this fact is becoming increasingly difficult to ignore, when 72 hours of video are uploaded on to YouTube every minute. One can only welcome the decision of the European Commission to prioritize this issue and hope that its cultural and social dimensions won't be underestimated. It is in the interest of all stakeholders to closely collaborate, so as to find a solution that works for everyone. Rights holders might want to become more open to the concept of user-generated content and show more flexibility towards the use of their rights. ISPs and social media must act responsibly and go beyond the minimal requirements in limiting their liability in case of copyright infringement. Focus should be put on educating their users, so that they understand basic copyright concepts and feel more secure when sharing content online. Finally, the European Commission should supervise the debate as transparently as possible without neglecting its social and cultural implications. To that extent, the involvement of the digital agenda team and of the Culture Directorate is a sign that advancing towards a balanced copyright framework has been understood as a concerted effort and this acknowledgement alone should be praised."

The views expressed in this editorial are personal; they are entirely those of its author and should be imputed to any other source.

March JIPLP now available

2013-02-20T15:05:00.001Z

The March 2013 issue of the Journal of Intellectual Property Law & Practice (JIPLP) has just been published in full online. As usual, the issue is available both to online subscribers and to combined online-plus-print subscribers, but non-subscribers can still purchase limited access to individual articles, current intelligence notes and reviews.

The editorial will be posted in full on this weblog in the near future.

The contents of this issue are as as follows:

Guest Editorial

Select this article
- Grégoire Marino
The future of user-generated content is now
Journal of Intellectual Property Law & Practice (2013) 8(3): 183 doi:10.1093/jiplp/jpt002

Current Intelligence

Select this article
- Robert Buchan and
- Mark Cruickshank
Patents: Security for costs against foreign claimant in Scottish patent infringement action
Journal of Intellectual Property Law & Practice (2013) 8(3): 184-185 doi:10.1093/jiplp/jps223
Select this article
- Emir Crowne and
- Mohamed R. Hashim
Patents: Supreme Court of Canada voids Viagra patent for insufficient disclosure
Journal of Intellectual Property Law & Practice (2013) 8(3): 185-187 doi:10.1093/jiplp/jps225
Select this article
- Anna Feros
Patents: Extending the UK Bolar exception to innovators?
Journal of Intellectual Property Law & Practice (2013) 8(3): 187-189 doi:10.1093/jiplp/jps224
Select this article
- John Peter Neophytou
Trade marks: ZEBEXIR and ZEBINIX: Assessing the likelihood of confusion
Journal of Intellectual Property Law & Practice (2013) 8(3): 189-190 doi:10.1093/jiplp/jps228
Select this article
- Rachel Montagnon and
- Joel Smith
Trade marks: The (Pantone) colour purple: a milky path home for Cadbury's trade mark
Journal of Intellectual Property Law & Practice (2013) 8(3): 190-192 doi:10.1093/jiplp/jps217
Select this article
- Catherine Jasserand
Copyright: Hosting providers' liability: Cour de cassation puts an end to the notice and stay down rule
Journal of Intellectual Property Law & Practice (2013) 8(3): 192-193 doi:10.1093/jiplp/jps222
Select this article
- João Pedro Quintais
Copyright: Dr Strangelaw, or how Portugal learned to stop worrying and love P2P
Journal of Intellectual Property Law & Practice (2013) 8(3): 193-196 doi:10.1093/jiplp/jps220
Select this article
- Paul Joseph and
- Chris Sanderson
Designs: Alloy wheels are not spare parts
Journal of Intellectual Property Law & Practice (2013) 8(3): 196-197 doi:10.1093/jiplp/jps221
Select this article
- Rachel Montagnon and
- Joel Smith
Database rights: Suing under sui generis rights—getting closer to off-shore servers
Journal of Intellectual Property Law & Practice (2013) 8(3): 197-200 doi:10.1093/jiplp/jps226
Select this article
- Earl Gray and
- Raymond Scott
General: Rights of attribution for Ka Mate Haka
Journal of Intellectual Property Law & Practice (2013) 8(3): 200-202 doi:10.1093/jiplp/jps227

Articles

Select this article
- The Rt. Hon. Professor Sir Robin Jacob
Patent thickets: a paper for the European Patent Office Economic and Scientific Advisory Board meeting
Journal of Intellectual Property Law & Practice (2013) 8(3): 203-206 doi:10.1093/jiplp/jps213
Select this article
- Christopher Wadlow
‘Hamlet without the prince’: Can the Unitary Patent Regulation strut its stuff without Articles 6–8?
Journal of Intellectual Property Law & Practice (2013) 8(3): 207-212 doi:10.1093/jiplp/jps230
Select this article
- Christopher Marotta
Licensing in the public interest: Limits on patent property rights in China and India
Journal of Intellectual Property Law & Practice (2013) 8(3): 213-225 doi:10.1093/jiplp/jps229
Select this article
- Konstantia Katsouli
Lucasfilm v Ainsworth: Comments in the light of Greek copyright law
Journal of Intellectual Property Law & Practice (2013) 8(3): 226-235 doi:10.1093/jiplp/jps231
Select this article
- Sophie Lawrance and
- Laura Peirson
The General Court's 2012 Microsoft judgment: ‘reasonable’ fines and ‘reasonable’ licence fees
Journal of Intellectual Property Law & Practice (2013) 8(3): 236-240 doi:10.1093/jiplp/jps212

From GRUR Int.

Select this article
- Henning Hartwig
Unregistered and registered Community design rights: further guidance expected from CJEU
Journal of Intellectual Property Law & Practice (2013) 8(3): 241-244 doi:10.1093/jiplp/jps232
Select this article
- German Federal Court of Justice
German request for a preliminary ruling asking whether or not the obligation to identify press publications complies with the Directive on Unfair Commercial Practices – “GOOD NEWS”
Journal of Intellectual Property Law & Practice (2013) 8(3): 245-248 doi:10.1093/jiplp/jpt001

IP in Review

Select this article
- Silke von Lewinski
A look under the surface
Journal of Intellectual Property Law & Practice (2013) 8(3): 249-251 doi:10.1093/jiplp/jps192
Select this article
- Magdalena Kolasa
Trade secrets for beginners
Journal of Intellectual Property Law & Practice (2013) 8(3): 251-252 doi:10.1093/jiplp/jps219
Select this article
- Susan Hall
Geographical indications: a signposted route to the future or an impenetrable labyrinth?
Journal of Intellectual Property Law & Practice (2013) 8(3): 252 doi:10.1093/jiplp/jps193
Select this article
- Joseph Savirimuthu
From Mount Sinai to Cyberspace: commandments for respect-worthy laws
Journal of Intellectual Property Law & Practice (2013) 8(3): 253-256 doi:10.1093/jiplp/jps197

jiplp

After INTA -- a big "thank-you"

The CPVO's Schnitzer Gala

JIPLP at INTA

May JIPLP online in time for INTA

Guest Editorial

European trade mark law, Quo Vadis?

Current Intelligence

Patents: An obvious ‘Comity of Errors’: Court admonishes motives of Applications Judge, but agrees with the result

Patents: Public interest and pharmaceutical preliminary injunctions in Hungary

Patents: US jury properly relied upon second considerations of non-obviousness to overcome prima facie obviousness

Patents: Patent protection for diagnostic methods in the United States: further forays into patent-eligibility

Trade marks: I say doughnut and you say dónut: why is the CTM system ‘different’

Trade marks: In search of bad faith

Trade marks: Genuine use of trade marks: the CJEU clarifies territorial scope

Trade marks: ‘Trade marks’ that aren't signs or that are so imprecise as to be incapable of registration

Trade marks: First Circuit applies idea/expression dichotomy and originality to news photographs

General: Emails (and other pure information) are not property

Articles

Bard v Gore: to injunct, or not to injunct, what is the question? Is it right to reward an infringer for successfully exploiting a patent?

Surnames as trade marks: an Indian perspective

United States v Business Method Patents: Trial by Trial and Error

Scotland's new regime for effective intellectual property dispute resolution

Asian approaches to international law: focusing on plant protection issues

From GRUR Int.

‘Congratulations, you have won!’ New standards apply to announcements of wins: A discussion of Purely Creative and others

Determining the patent-related portion of infringer's profit—Bottle Carrier(Flaschenträger)

IP in Review

SPCs with paediatric extension of duration: a commentary which is ‘simple, practical, clear’

Intellectual property and the enduring value of fairy tales

Prospects pleasing, and unpleasing

European trade mark law, Quo Vadis?

More books for review

GRUR Int. in JIPLP: how to find it

Enantiomers are obvious even though they have unpredictable properties

A hotel by any other name: the ‘own name’ defence in Hotel Cipriani, Part Two

In case you missed it -- Knut citation gets JIPLP into OHIM ruling

The $1 billion question -- JIPLP's 2013 competition

THE JIPLP COMPETITION 2013

The $1 billion question

Marius on the move

US jury properly relied upon second considerations of non-obviousness to overcome prima facie obviousness

Copying an assortment of unprotected products

An obvious ‘Comity of Errors’: Court admonishes motives of Applications Judge, but agrees with the result

JIPLP welcomes Martin Kujan

I say doughnut and you say dónut: why is the CTM system ‘different’

Emails (and other pure information) are not property

Rebecca Chong joins JIPLP Editorial Board

Should we all be just a little more American?

April 2013 JIPLP now online -- but what's in it for you?

Guest Editorial

Should we all be just a little more American?

Current Intelligence

Patents: UK to be one-stop-shop for non-infringement across Europe?

Trade marks: domain names, distinctiveness and evidence

Trade marks: Newsletter containing official mark held sufficient evidence of ‘adoption and use’

Irish Patents Office substantially revokes specification for registration which exceeded demonstrable use of the mark

Starbucks v Sky: an invalid mark, a squeeze argument and an absence of passing off

Copyright: India enacts laws to protect copyright over digital content

Designs: The individual character of a design: freedom and the ‘saturation of the state of the art'

How is the scope of protection of a registered Community design to be determined?

Publicity orders in intellectual property cases—When are they granted and how must a party comply?

Utility models: The Enforcement Directive and invalidation procedures: an unsurprising negative verdict

Articles

Community trade mark round-up 2012

The name of the thing, or an attempt at a semiotic and semantic analysis of trade marks

The Orphan Works Directive, or throwing a stone and hiding the hand

Initial interest confusion

From GRUR Int.

Solution with equivalent effect diverging from literal meaning—Pallet Container III (Palettenbehälter III)

IP in Review

The Diplomatic Platypus

Here to stay: Universities, technology transfer and intellectual property

Dealing with IP matters in cross-border cases

Philosophical perspectives on intellectual property

How is the scope of protection of a registered Community design to be determined?

The individual character of a design: freedom and the ‘saturation of the state of the art’

Editorial: The future of user-generated content is now

March JIPLP now available

Guest Editorial