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Examining US patent examinations

noreply@blogger.com (Mark Schweizer) — Mon, 09 Nov 2009 10:20:00 +0000

Stanford Professor Mark Lemley is probably the most prolific academic writer on IP at the moment. In his latest (well, latest when I hit post – it might well be his second latest paper by the time the post is published) paper, he takes an empirical look at US patent examination.

For the paper, he and co-author Bhaven Sampat of Columbia followed every patent application filed in January 2001 and published by April 2006 – a total of 9,960 applications. Using the USPTO’s PAIR database, they were able to collect a vast amount of data on the applications.

Unsurprisingly, the large majority of examinations – 86% - started with a non final objection.
Perhaps more surprising is that 1,833 applications that were “finally” rejected at some stage nonetheless resulted in issued patents. The chance of having your patent application finally abandoned is only slightly greater for those applications that got a final rejection than those that didn’t (26.5% for those with a final rejection compared to 24.6% in the overall sample).

85% of the patents that do issue, issue with amended claims. 66.1 percent of applications which were amended after a final rejection are patented, versus 29.0 percent of those that were not amended. A cynical cat would note that this is something every patent attorney could have told you: you can always get a patent, the question is, what for? But, as Prof. Lemley notes, the fact that most patents are granted with amended claims shows that the USPTO is serving its role as a gatekeeper potentially better than its critics acknowledge: it is not enough to point out that 70% of applications result in granted patents to conclude that it is “too easy” to get a patent if 85% of the patents are granted with amended – presumably limited – claims.

27% of the applications have continuations or a RCE (Request for Continued Examination). The number of continuations varies greatly between industries (see table above). Again, the result pretty much confirms the conventional wisdom – biotech applications are well known for continuations.

Working draft of the paper here.

Monday miscellany

noreply@blogger.com (Jeremy) — Mon, 09 Nov 2009 05:51:00 +0000

More than one IPKat reader has been anxiously asking him about the impact of the Treaty of Lisbon on the names of European institutions. Are we going to have to plough thousands of tons of stationery, livery and souvenir t-shirts which have the word "Community" on them, replacing it with the word "Union" on every occasion? The IPKat hopes not. While the Commission of the European Communities will be renamed the European Commission -- which is what many of us have been calling it for years -- the only other changes that will significantly affect/inconvenience the IP community will be having to remember to call the Court of Justice of the European Communities the Court of Justice of the European Union and to practise saying the General Court in place of the Court of First Instance of the European Communities. The Kats don't think that the Community trade mark, design and plant varieties rights are about to be unionised, but they thought they'd check with their readers just in case.

On the subject of names, the Kats have received much correspondence on the universally unpopular renaming of English football team Newcastle United's St James Park Stadium as the sportsdirect.com @St James' Park Stadium. It is not for the Kats to pour scorn on renaming activities when angry consumers (and, in the case of sports, loyal supporters) do it so much better, but let's just say that they are not unsympathetic to the complaints: there are some things you don't do, even for money. Will we be treated to Theroyals@buckinghampalace Palace ...? Merpel says, nothing is sacred: that's why we've been lumbered with LexisNexis Butterworths, PricewaterhouseCoopers and Uncletomcobblyandall ...

The AIPPI UK held a fascinating meeting last week, hosted in the London office of Linklaters, on the topic "Employee compensation in the UK and Germany: a microcosm of pragmatism and efficiency". The speakers were Klaus Haft (Reimann Osterrieth Köhler Haft) and Michael Edenborough (Searle Court). The IPKat's friend Justin Watts (Freshfields Bruckhaus Deringer LLP) has kindly procured a most useful note of the substance of the meeting, which you can now read here.

For those who not only take their IP seriously but like a more serious presentation than that furnished by a team of fictional Kats, it's worth taking a trip to this blog which is run by Canadian academic Jeremy de Beer. The author, an Associate Professor at the University of Ottawa's Faculty of Law, focuses on the areas of technology and intellectual property law. He also tweets.

A popular subject among readers this week has been the Interlocutory Decision of the European Patent Office's Enlarged Board of Appeal of 16 October 2009 in Case G 0003/08, as to whether Dai Rees should be barred from participating in its keenly-awaited referral of several questions raised by the President of the EPO on Computer Implemented Inventions.

Right: the mysteries of Google: this is one of the more unexpected results of a search on Google Image using the words 'partial judge' as the search term

The Board concluded that "Once lawfully appointed, a judge is deemed to act in good faith and is therefore presumed impartial until proven otherwise" (para 2.5), having affirmed that

"2.4 According to established case law of the Boards of Appeal, of the Enlarged Board and also of national courts of member states, the mere fact that a board member has expressed a view on the legal issue to be decided on a previous occasion, be it in a prior decision or in literature, be it in a prior position in the EPO or as an expert for external political institutions, cannot lead to the conclusion of doubts as to impartiality. Nor does a purely subjective impression that the opinions of a board member might be disadvantageous to a particular interest justify an exclusion".

The IPKat's ever-enthusiastic friend and patent buddy Joe Scott has been telling him all about the new tool he has released to help Patent Buddy members make the most of their IPR network. He writes:

"Anyone registered with any patent authority in the world can join at no charge and open a Biz Dev Dashboard. When they select the Who Knows Who tab they can enter the [Name] of a USPTO-registered attorney or agent to see two levels of their network: Co-Workers and People Who They May Know. From a business development standpoint, this is really handy when you are looking for an introduction to a counsel at a particular law firm, company or university. Selecting the Co-workers link will display a list of who is currently working with [Name]. Selecting the People [Name] May Know link returns a drop down menu showing, by Co-worker, all of the attorneys & agents that they, in turn might know".

He adds:

"I entered the name of my patent attorney and was shown a list of his 77 co-workers. Selecting his first co-worker's name returned a list of 76 other contacts from ten law firms and 12 companies. I would guess that his second-level network would total 500+ connections".

It occurs to the IPKat that this tool has at least one handy use: you can find out if a USPTO-registered patent attorney is working for one of your competitors and save both him and you the time and effort of initiating a possible client relationship that's never going to happen.

At last, the Interflora questions -- all 10 of them!

noreply@blogger.com (Jeremy) — Sun, 08 Nov 2009 17:36:00 +0000

No-one ever died of a question but, the IPKat says, there are an awful lot of questions hanging over European trade mark law right now -- and they've just been added to. On 22 May, in Interflora, Inc. Interflora British Unit v Marks and Spencer PLC Flowers Direct Online Limited [2009] EWHC 1095 (Ch), Mr Justice Arnold (High Court, England and Wales) felt it appropriate to refer a number of questions to the European Court of Justice for a preliminary ruling on the legality of the purchase and use of words including a third party's trade mark as a keyword (see earlier IPKat post here). The final form of the questions was not at that point agreed. The questions for reference have now been posted on the Curia website:

"1. Where a trader which is a competitor of the proprietor of a registered trade mark and which sells goods and provides services identical to those covered by the trade mark via its website (i) selects a sign which is identical (in accordance with the Court's ruling in Case C-291/00 [LTJ Diffusion SA v Sadas Vertbaudet SA, the Arthur et Felicie case]) with the trade mark as a keyword for a search engine operator's sponsored link service, (ii) nominates the sign as a keyword, (iii) associates the sign with the URL of its website, (iv) sets the cost per click that it will pay in relation to that keyword, (v) schedules the timing of the display of the sponsored link and (vi) uses the sign in business correspondence relating to the invoicing and payment of fees or the management of its account with the search engine operator, but the sponsored link does not itself include the sign or any similar sign, do any or all of these acts constitute "use" of the sign by the competitor within the meaning of Article 5(1)(a) of First Council Directive 89/104 of 21 December 1988 ("the Trade Marks Directive") and Article 9(1)(a) of Council Regulation 40/94 of 20 December 1993 on the Community trade mark ("the CTM Regulation")?

2. Is any such use "in relation to" goods and services identical to those for which the trade mark is registered within the meaning of Article 5(l)(a) of the Trade Marks Directive and Article 9(1)(a) of the CTM Regulation?

3. Does any such use fall within the scope of either or both of:
(a) Article 5(1)(a) of the Trade Marks Directive and Article 9(1)(a) of the CTM Regulation; and
(b) (assuming that such use is detrimental to the distinctive character of the trade mark or takes unfair advantage of the repute of the trade mark) Article 5(2) of the Trade Marks Directive and Article 9(l)(c) of the CTM Regulation?

4. Does it make any difference to the answer to question 3 above if:
(a) the presentation of the competitor's sponsored link in response to a search by a user by means of the sign in question is liable to lead some members of the public to believe that the competitor is a member of the trade mark proprietor's commercial network contrary to the fact; or

(b) the search engine operator does not permit trade mark proprietors in the relevant Member State of the Community to block the selection of signs identical to their trade marks as keywords by other parties?

5. Where the search engine operator (i) presents a sign which is identical (in accordance with the Court's ruling in Case C-291/00) with a registered trade mark to a user within search bars located at the top and bottom of search pages that contain a sponsored link to the website of the competitor referred to in question 1 above, (ii) presents the sign to the user within the summary of the search results, (iii) presents the sign to the user by way of an alternative suggestion when the user has entered a similar sign in the search engine, (iv) presents a search results page to the user containing the competitor's sponsored link in response to the entering by the user of the sign and (v) adopts the user's use of the sign by presenting the user with search results pages containing the competitor's sponsored link, but the sponsored link does not itself include the sign or any similar sign, do any or all of these acts constitute "use" of the sign by the search engine operator within the meaning of Article 5(1)(a) of the Trade Marks Directive and Article 9(1)(a) of the CTM Regulation?

6. Is any such use "in relation to" goods and services identical to those for which the trade mark is registered within the meaning of Article 5(1)(a) of the Trade Marks Directive and Article 9(1)(a) of the CTM Regulation?

7. Does any such use fall within the scope of either or both of:
(a) Article 5(1)(a) of the Trade Marks Directive and Article 9(1)(a) of the CTM Regulation; and
(b) (assuming that such use is detrimental to the distinctive character of the trade mark or takes unfair advantage of the repute of the trade mark) Article 5(2) of the Trade Marks Directive and Article 9(l)(c) of the CTM Regulation?

8. Does it make any difference to the answer to question 7 above if:
(a) the presentation of the competitor's sponsored link in response to a search by a user by means of the sign in question is liable to lead some members of the public to believe that the competitor is a member of the trade mark proprietor's commercial network contrary to the fact; or
(b) the search engine operator does not permit trade mark proprietors in the relevant Member State to block the selection of signs identical to their trade marks as keywords by other parties?

9. If any such use does fall within the scope of either or both of Article 5(1)(a) of the Trade Marks Directive/Article 9(1)(a) of the CTM Regulation and Article 5(2) of the Trade Marks Directive/Article 9(1)(c) of the CTM Regulation:
(a) does such use consist of or include "the transmission in a communication network of information provided by a receipt of the service", and if so does the search engine operator "select or modify the information", within the meaning of Article 12(1) of European Parliament and Council Directive 2000/31/EC of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market ("the E-commerce Directive")?
(b) does such use consist of or include "the automatic, intermediate and temporary storage of information, performed for the sole purpose of making more efficient the information's onward transmission to other recipients of the service upon their request" within the meaning of Article 13(1) of the E-commerce Directive?
(c) does such use consist of or include "the storage of information provided by a recipient of the service" within the meaning of Article 14(1) of the E-commerce Directive?
(d) if the use does not consist exclusively of activities falling within the scope of one or more of Article 12(1), 13(1) and 14(1) of the E-Commerce Directive, but includes such activities, is the search engine operator exempted from liability to the extent that the use consists of such activities and if so may damages or other financial remedies be granted in respect of such use to the extent that it is not exempted from liability?

10. If the answer to question 9 above is that the use does not consist exclusively of activities falling within the scope of one or more of Articles 12-14 of the Ecommerce Directive, may the competitor be held jointly liable for the acts of infringement of the search engine operator by virtue of national law on accessory liability?"

The IPKat does not propose to answer these questions or even second-guess them. He thinks however that the Court will answer as few questions as it thinks it can get away with.

Friday favourites

noreply@blogger.com (Jeremy) — Fri, 06 Nov 2009 12:01:00 +0000

There's something new-ish on the IPKat's sidebar: a blogroll of weblogs which are in some way or other connected with the IPKat or its various authors. To his slight alarm, the Kat notes that this feature, which comes as a standard Blogger gadget, has its own rather idiosyncratic approach towards updating itself -- so he's watching to see if, like much of the things that go wrong on the blogosphere, either (i) it cures itself or (ii) a kindly reader tells the IPKat how to cure it.

The IPKat need hardly remind his regular readers of the multitudinous meetings listed in the Forthcoming Events feature of his sidebar. However, the 3,700+ readers who get their IPKat by email may just need the occasional reminder to visit the blog itself (many readers have not noticed the colour-change and general smartening up, it seems) ...

The IPKat thanks his respected and venerable friend Dirk Visser for information concerning a forthcoming reference to the European Court of Justice of a couple of questions emanating from the Brussels Court of Appeal and which concern the SatCab Directive. To save your headaches the Kat has kindly located the detailed bits on The 1709 Blog, where they can be lovingly savoured by copyright specialists and skipped over by ordinary mortals. You can read the gory details here.

If you're in blog-hopping mood right now and feel strongly about the absurdity of the inability of European customs authorities to seize and detain counterfeit products in transit as they cross the territory of the European Economic Area, you should take a look at the jiplp blog, which has very recently given some air to a powerful yet well-reasoned polemic by two Howrey lawyers, Willem Hoyng and Frank Eijsvogels, on the need to maintain the fiction that fake goods crossing the EEA were actually made there. This piece, posted now so that interested parties can read it before the Court of Appeal, England and Wales, hears Nokia's appeal in the controversial decision of Nokia v HMCR (see here for IPKat note on the trial decision) can be accessed here.

Paul Jurcys has emailed the IPKat with news of the New Draft of the Transparency Proposal on Jurisdiction, Choice of Law and Recognition and Enforcement of Foreign Judgments in Intellectual Property, which has just been made available online. This project, initiated in 2004 and funded by Japan's Ministry of Education, Culture, Sports, Science and Technology (MEXT), aims to make Japanese law more accessible to legal community around the globe by translating statutes and court decisions into English [Hooray, says the IPKat]. 11 research groups comprising 45 scholars are currently dealing with various areas of commercial law, including IP. Ultimately the Proposal will facilitate deliberation as to how the international jurisdiction of Japanese courts should be constituted in order to manage cross-border IP litigation effectively. Also, regarding choice of law rules for cross-border exploitation of IP rights, the Proposal will invite law makers to include specific choice of law provisions for IP.

ECTA, the European Communities Trade Mark Association, has smartened up its website. If you fancy taking a peep, it's here. ECTA is of course not to be confused with MARQUES (which used to be termed 'the Association of European Trade Mark Owners), which has been gradually implementing its own ongoing website smartening-up exercise here.

It might have the most boring of names, but never tangle with General Patent Corporation, says the IPKat. According to its recent news release, GPC negotiated a successful outcome on behalf of its client Common Ground Seminars in a service mark infringement claim against Trump University, New York City. Without any sense of humour or irony, GPC reports that the mark in question -- almost certainly unregistrable in Europe in respect of conflict resolution workshops -- consisted of the words NEGOTIATE TO WIN.

The IPKat reckons that Graeme Gilfillan must be feeling fairly pleased with the result of SAMRO v Gilfillan -- an attempt by the South African Music Rights Organisation Ltd to gag him from from making further criticisms of its operations, which they regarded as defamatory or injurious. Graeme has been campaigning against perceived failures of the organisation to pay sums owed or to provide adequate accounts in respect of royalties earned on the works of dead members. The IPKat likes collecting societies because they do things that individual rights owners can't -- but his favourite ones are the most transparent ones, and no collecting society has ever died of greater transparency. You can get the judgment and some links to the background from Afro-IP here.

“Because I told you before, ooohhhhh you can’t do that”

noreply@blogger.com (Annsley Merelle Ward) — Fri, 06 Nov 2009 05:51:00 +0000

Fans of The Beatles will recognize the title of this piece as a line from The Beatles’ song “You Can’t Do That” -- and that is exactly what EMI’s labels, including Capitol Records, told BlueBeat.com when it filed a federal lawsuit against them in the US on Tuesday.

EMI filed the copyright infringement and unfair competition suit against BlueBeat.com, their sister site BaseBeat.com, their Santa Cruz-based parent company Media Rights Technologies and the CEO Hank Risan for making available the entire Beatles catalogue listed at $0.25 (15p) per track, which is below what a potential industry standard for these songs would be (generally around $0.99 – $1.49). IPKat readers are reminded that The Beatles catalogue has never been available legally online and in the past month has been subject to a heavily promoted remastered reissue by EMI.

Other artists’ music such as Blondie, Blur, Coldplay, Radiohead and Norah Jones are also subject to the complaint.

The complaint stated that not only had EMI not authorized the defendants’ use of the recordings but that they had

“recently sought to register their infringing sound recordings with the Copyright Office, apparently claiming that because they copied the sound recordings using their own computer system, they now own these digital copies and have the right to distribute them to the public.”

Indeed the defendants have contended in their filing of opposition to the claimants’ application for a preliminary injunction that their re-recordings of the sound recordings are “entirely new and original sounds” and the claimants’ “copyright protection does not extend to the independent fixation of sounds other than those contained in their copyrighted records.” Specifically, the defendants are arguing that their sound recordings fall within the exception in Section 114(b) of the Copyright Act which states:

“The exclusive rights of the owner of a copyright in a sound recording under clauses (1) and (2) of section 106 do not extend to the making or duplication of another sound recording that consist entirely of an independent fixation of other sounds, even though such sounds imitate or simulate those in the copyrighted sound recording…”

These “entirely different" sound recordings were created by something called “psycho-acoustic simulation” (yes, you read that correctly…) and was notified by CEO Hank Risan to Steve Marks, general counsel for the Recording Industry Association of America, in a series of emails. For a full explanation of “psycho-acoustic simulation” and to see the emails that were exhibited to the defendants’ opposition, please click here.

The IPKat is of the opinion that this argument is going to go nowhere pretty quickly; the statute says “imitate or simulate” not “replicate”.

The claimants are seeking an injunction and general damages to be determined or statutory damages for each infringed copyright (a maximum of £150,000 per infringement). The claimants are additionally seeking exemplary or punitive damages.

The track “You Can’t Do That” was, at the time of this article, still available for purchase on BlueBeat.com so the IPKat assumes that BlueBeat in fact “can”, at least for now.

For further information see these articles in the Guardian, Wired, and Wall Street Journal.

Lyrics of "You Can't Do That" here; ringtone here

UPDATE: Late yesterday U.S. District Judge John F. Walter granted the claimant's preliminary injunction with the effect that the defendants were to immediately stop selling The Beatles' and other artists' music. The IPKat just checked the site and the music has indeed been removed.

Haulm Sweet Haulm for the Grimme Reaper?

noreply@blogger.com (Jeremy) — Thu, 05 Nov 2009 18:21:00 +0000

Some good folk would say that quite enough has already been said about Tuesday's Patents Court for England and Wales ruling of Mr Justice Floyd in Grimme Landmaschinenfabrik GmbH & Co. KG v Derek Scott (trading as Scotts Potato Machinery [2009] EWHC 2691 (Pat), an earthy tussle over rights in machines for separating potatoes from weeds, earth, clods, stones and haulm. Grimme alleged patent and design infringement.

Right: nothing to do with potatoes, this is actually a machine for recovering costs ...

Scott denied infringement and counterclaimed for (i) invalidity and (ii) ungrounded threats to sue for patent and design infringement. Both sides emerged as both winners and losers (see PatLit here for a brief explanation and some idle speculation as to what the costs order might look like), and Class 99 waxed lyrical on the analogy between the design issues in this action and those in the 'pig fenders' case ( C & H Engineering v Klucznik [1992] FSR 421: as David Musker notes, "for pig read potato").

So is there anything left for the IPKat? Yes, there is. The question is again raised as to whether the commercial success of a patent is an indication of inventive step. Says Floyd J:

"Commercial success

127. Grimme also rely on commercial success of machines made in accordance with the invention. Commercial success can, in some fairly rare and clear cases, amount to a secondary indication of inventive step. The reasoning behind why this is so was explained in characteristically lucid terms by Laddie J in Haberman v Jackel [1999] FSR 683 at 699 to 701.

128. Grimme have provided a table of the sales which it relies on to show commercial success. It relies on the Grimme MultiSep spiral segment separator sales from 2000 when it was launched. It contrasts these with sales of other separators, including the MultiSep with paddle star wheels. Grimme contend that the MultiSep spiral segment is made in accordance with the Patent but that the MultiSep paddle star is not.

129. I have not found the evidence of commercial success helpful on any issue of obviousness in this case. The basis on which I have found claim 1 to be obvious is that a Rollastar machine with rubber clod rollers is sufficiently adjustable that it falls within the claim. That being so, no amount of commercial success of either MultiSep machine can have a bearing on the issue. The same applies to claim 24.

130. So far as claim 17 is concerned, I have been able to find that claim to be inventive by a sufficient margin not to require secondary indicia of the kind provided by commercial success. But given the level of sales enjoyed by the paddle star, which did not have this feature, I do not think that it is established that commercial success is due to the features of claim 17.

131. I think it would be unwise to attribute the success of the MultiSep to anything disclosed in the Patent. The lips or projections taught by the Patent are nothing like those used in the MultiSep. The evidence showed that those used in the Patent would fill with mud and be difficult to clean. I believe that the commercial success of the machines relied on is likely to be due to a combination of factors including Grimme's market position and the decline of the Pearson business. It is impossible to distill from that evidence any indication that the features of claim 17 played a significant role".

The IPKat doesn't like to see himself as an extremist or an iconoclast; still less does he like to take issue with the late Sir Hugh Laddie -- but he fervently wishes that the 'commercial success' criterion were consigned to the scrapyard of legal history along with frankalmoign and enfeoffments. If you look at Article 56 of the European Patent Convention, there's a bit in it that read:

"An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art".

The Kat knows this sounds somewhat trivial, but this looks to him as though inventive step is measured by looking at the invention itself, rather than the receipts and invoices. He understands that, in the days when judges knew plenty of Latin and Greek but whose knowledge of science was confined to apples falling from trees, it was cruel and unfair to blind them with science, so lovely little rules of thumb like 'long-felt-want' and 'commercial success' were devised. Surely there's no room for them now, with specialist patent courts and even some judges with a science background to staff them. In any event, as one member of the Court of Appeal once pointed out (and there's a pint of beer for whoever first posts his name below together with the case he said it in), the absence of commercial success is as much an indicator as the existence of commercial success (i.e. if something's sufficiently non-obvious, people won't see how you can make it pay: think of Frank Whittle's invention of the jet engine).

At this juncture, three things occur to the IPKat. First, we are all supposed to be good Europeans now. So can anyone tell him how far 'commercial success' is used as a criterion of inventive step elsewhere in Europe?

Secondly, if we are all supposed to be looking for ways to streamline and accelerate patent litigation, can the judges make it a point of case management to say something like: "don't go bothering me with evidence of commercial success in support of a patent's validity unless I say so"?

Thirdly, it may only be a matter of impression, but 'commercial success' generally looks to the IPKat as though it's thrown in when the case in favour of a patent's validity is pretty weak. So, other than to make the client happy by letting him hear his patent praised and running the risk that he might be faced with disclosure of some of his more delicate financial and management records if he does so, does 'commercial success' really achieve anything?

Grimme reapers here

The Grim Reaper here and here

Cat potato here

Metatags, adwords, killing kittens and the cat-dog dichotomy

noreply@blogger.com (Jeremy) — Thu, 05 Nov 2009 15:50:00 +0000

Last Sunday the IPKat carried a note by his good friend Uli Hildebrandt of a recent German appellate decision on liability for links and adwords. This piece, "Liability for links and adwords, German style -- and a visit to Google Translate", has attracted a lively comment from another of the IPKat's good friends, none other than fellow blogger Maximilian Schubert (Austotrabant). Writes Maximilian:

"Of Cats and Dogs -- or the Difference Between Keyword Advertising and Meta Tags

Actually, I do think making a proper distinction between Keyword Advertising and Meta Tags is important in law; below, you will find a list of three reasons as to why:

1: Because they aim for different effects

With the help of metatags, people attempt to transport content or to improve the ranking of a site in the SEARCH RESULTS, while Keyword Advertising is used to display ADVERTISEMENTS above (Top-Ad) or beside (Side-Ad) the search result. While users soon "learn" to ignore these ads (for more details on this effect see Level of Trust in Search Engines), trying to smuggle oneself into the search results is a way of exploiting users' incredible, and most probably unfounded, trust in the ranking of search engines (please see here, under Do Users notice the Ads?). So, while the first is a method of advertising, the later one aims at deceit. But does this make any difference in practice? It does! Why?

2: "Because mummy said so"

Let's face it, this has always been the longest-running and best-ever argument in the world. The market leader has officially declared (again) that it does not consider metatags for the ranking of its search results. Maybe others do, but Google at any rate hasn't since 2004(!). So, as there already is a difference in practice, the question is, shouldn't this difference be reflected in the law as well ...?

3: Because evolution/development just keeps moving on

Although cats and dogs are both mammals, only a few would argue that they are the same. While it is completely reasonable, and in some cases even necessary, to develop analogies between existing practices and new ones, this does not mean that the old terminology should be forced on to new phenomena. The analogy might later (in fact) turn out to be perfectly applicable, but using the old term might prove problematic and should be regarded as unprofessional.

(And dear colleagues let's face it, not everybody who has been given a BlackBerry by his/her company or has bought him/herself a new shiny/stylish iPhone is an IT-lawyer. This stuff IS sometimes a bit complicated - otherwise my doctoral thesis would prove to be rather pointless!)

Please feel most welcome to disagree any or all of the above and feed this troll by commenting".

You thought your legal qualification would save you from a job stacking shelves ...?

noreply@blogger.com (Jeremy) — Wed, 04 Nov 2009 14:59:00 +0000

The IPKat is keeping an eye out for further developments in the litigation between the popular Guernsey-based UK high-street optician chain Specsavers and Wal-Mart's UK presence Asda, in a row over alleged trade mark infringement and copycat advertising. According to Times Online, Specsavers says Asda's use of the slogan "Be a real spec saver at Asda” is calculated to mislead customers and damage its business. It also objects to the use of Asda's logo (left) which, it maintains, is confusingly similar to its own (right).

Yesterday Mr Justice Kitchin (Chancery Division, England and Wales) ordered an April 2010 trial on the basis that there was sufficient evidence to believe that Asda’s campaign could threaten Specsavers’ reputation to bring the trial forward. Specsavers’ had argued that it should be held as early as January. Hugh Cuddigan (counsel for Asda) is however reported as having informed the court that its solicitors (Pinsent Masons) would need additional time to prepare their client's defence since they would be stacking supermarket shelves over Christmas. Apparently a Pinsent Masons team has agreed to work for Asda free of charge for three days during the Christmas period in order to understand its business better. Asda also preferred the later date because its lawyers planned to conduct a wide-ranging survey of Asda shoppers to determine whether they had been misled by its advertising. The IPKat interjects at this point that the Pinsent Masons website, which makes no apparent reference to this item at the time this article was posted, leads with the impressive banner "Welcome to Pinsent Masons: the Global 100 law firm that's working hard to make it easier for clients". Indeed it is.

As a gesture of Christmas goodwill, Asda plans to stop using its “Be a better spec saver” slogan after this week -- but that's about as far as the goodwill goes. The supermarket will continue using the “elliptical lozenges” logo in its stores and on its website despite Specsavers’ complaints.

By a felicitious coincidence, as the Optician reports, counsel for Specsavers is ... Adrian Speck.

The IPKat wonders what Asda would have to make its shoppers pay if it charged its shelf-stackers out at their usual hourly rates.

Merpel says, there's a copy of the just-published 9th edition of the Butterworths Intellectual Property Law Handbook for the best law firm-related caption to go with the Asda staff photo on the right. Please email your caption to the IPKat with the subject line 'Asda'. Closing date, midnight on Sunday 8 November. This competition is open even to employees of Asda and Pinsent Masons.

The End of Lawyers here

I CAN HAS CHEEZBURGER wins against icanhashotdog.com

noreply@blogger.com (Mark Schweizer) — Wed, 04 Nov 2009 09:38:00 +0000

In a case of inherent interest to the IPKat, a WIPO panelist has transferred the domain name "icanhashotdog.com" to the proprietor of the trade mark I CAN HAS CHEEZBURGER?.

The proprietor of the trade mark I CAN HAS CHEEZBURGER?, claiming protection for “on-line forums for the transmission of images and messages among computer users concerning animals and humor" filed a URDP complaint against the registrant of the domain name icanhashotdog.com, used for, well, essentially the services claimed.

And won despite the fact that the complainant had registered its mark almost a year after the domain name icanhashotdog.com was registered (he did claim first use of the mark some months before the registration of the domain name). The panelist held that the complainant had met its burden of proof to demonstrate common law rights in the trade mark I CAN HAS CHEEZBURGER?:

"Relevantly, the Complainant’s evidence is essentially that:
- it used its I CAN HAS CHEEZBURGER? mark in a domain name from January 2007;
- it featured the mark on its website to which its domain name referred (as annexed to the Complaint, the Complainant’s homepage displays the mark once, in the upper left hand of the page);
- its website rapidly became popular;
- its website was the subject of a number of media articles (the Complaint attached copies of two).
The Panel considers that, on balance, this is enough to demonstrate that the Complainant had developed common law rights in its mark by the time that the domain name was registered in July 2007. The Complainant did not provide a substantial amount of evidence of common law rights, or explain the origin of its mark. The Complainant’s claim to the first use of its mark from January 2007 in its trademark registration also does not establish an evidentiary presumption to that effect. (See recently e.g. Super-Krete International, Inc. v. Concrete Solutions, Inc., WIPO Case No. D2008-1333 citing McCarthy on Trademarks and Unfair Competition § 20:28 (4th ed.)).
However the Panel considers that, in this case, the evidential burden on the Complainant to provide evidence of common law rights is relatively light. Principally, this is because its mark appears to the Panel to be an invented and arbitrary phrase, and therefore inherently distinctive in a trademark sense for the purpose of the Policy. What is “inherently distinctive” in this regard may not always be capable of a neat definition. However, it is at least to be contrasted with marks which are derived from common terms, or words which are descriptive or suggestive of certain goods and services. There is nothing in the Complainant’s mark which seems to this Panel to be descriptive or suggestive of the services which the Complainant provides. The phrase “I can has cheezburger?” appears to have no common meaning, or to be derived in whole or part from any phrase with a common meaning, including one associated with the Complainant’s services.
Since the Complainant’s mark is inherently distinctive, the Panel considers that the Complainant’s evidence is, in this case, sufficient to demonstrate that it had unregistered rights when the Respondent registered the disputed domain name. Here, the Complainant provided evidence of its close association with an inherently distinctive mark. There is no evidence in the case file that the Complainant’s mark had any other association. The Panel accordingly finds for the Complainant under the first element of the Policy."

Since the whole "lolcat" meme originated from 4chan (no, I won't link, but you all know how to find it), the IPKat wonders whether it is correct to monopolize the use of the phrase for commercial purposes by a single provider. And the IPKat is glad that he has been around since before January 2007 and is therefore much older - not necessarily more mature - than all the lolcats.

Case No. D2009-1003

Wednesday Wround-up

noreply@blogger.com (Jeremy) — Wed, 04 Nov 2009 09:04:00 +0000

If you're interested in supplementary protection certificates and the prolongation of patent rights in pharmaceutical and agrochemical products, the SPC Law and Practice 2010 seminar, organised by the SPC Blog, is the place for you: the date, 13 January 2010. Details here.

Right: would you be more disappointed if the image on the right was (i) a stereotyped representation of a pharma scientist or (ii) a behind-the -scenes snapshot from the kitchen five minutes before the drinks are served?

For devotees of patent litigation, CASRIP's Toshiko Takenaka is speaking on the differences between patent litigation in the US and Japan in the afternoon of Tuesday 8 December under the auspices of the PatLit weblog. Admission is free, full details here.

Left: inspired by Japanese martial arts, the Jackson Review in the UK comes up with a fresh approach to patent conflict resolution

If any further justification were needed for running an intellectual property journal in tandem with a weblog, here it is: Syngenta patent expert Dr Michael Kock has drafted an article for submission to the Journal of Intellectual Property Law & Practice on the patentability of DNA sequences in Europe in the light of a reference to the European Court of Justice for which the oral hearings take place next month. You can read Dr Kock's article and make comments to him by visiting the JIPLP weblog here.

If you've ever dearly wanted to tell the United Kingdom's Intellectual Property Office what you think of its services, here's a golden opportunity. The 2009 Customer satisfaction survey is on its way, in a rather different format from usual. Says IPO:

"We made a decision not to run a single end of year survey but to engage with our customers more regularly throughout the year and by varied means. One of the ways we have decided to use is a perpetual on-line survey (hosted by SurveyMonkey.com).
Left: Not the SurveyMonkey, we hope ...

The survey was launched on 30 June 2009 and will be accessible until 31 March 2010. We are also able to add additional questions throughout the year if there is a specific change in practice which we may wish to obtain feedback on.
We would be grateful if you could spare approximately 5 minutes to complete the survey".

The IPKat hopes that readers of this blog who use the IPO will avail themselves of this facility, and that they'll remember to be generous in their praise of the good things the office does. You can find all the details you need here.

The Sultanate of Oman has taken the step we've all been waiting for, having decided to accede to the International Convention for the Protection of New Varieties of Plants. The UPOV Convention, as revised in 1991, comes into force with respect to Oman on 22 November 2009. Source: WIPO press release here.

Why are CTM applications through the Madrid System less often opposed?

noreply@blogger.com (Mark Schweizer) — Tue, 03 Nov 2009 11:26:00 +0000

IPKat reader Alfred Strahlberg of Strahlberg & Partners, Switzerland, points to an interesting statistic: roughly 17% of all CTMs filed directly with the OHIM are opposed (see table above, click on it to enlarge - I know it's impossible to read). However, CTMs filed using the Madrid System - i.e. international marks seeking extension to the EU - are only opposed in about 8% of all cases (see table below).

The difference is quite large and definitely not due to chance. The IPKat thinks that one reason why "IR CTMs" are opposed less often is that the opponent may oppose the base registration instead and kill the IR mark once and for all ("central attack"). Only when that was not possible or seems unadvisable (home turf advantage for the registrant?) would he or she chose to oppose before the OHIM. This would mean that the combined rate of opposition - base registration and before OHIM - should be about the same for international marks as for directly filed CTMs; the IPKat lacks the empirical data to back this up, though (in Switzerland, roughly 5% of all national registrations were opposed in 2008; adding this figure to the 8% opposition rate for "IR CTMs" one arrives at a combined opposition rate of about 13% - still not quite 18%, but getting closer).

Do the IPKat readers have other explanations for the difference in opposition rates?

Costume and practice: new suits for Riverdance duo

noreply@blogger.com (Jeremy) — Tue, 03 Nov 2009 10:35:00 +0000

Ireland's Sunday Business Post reports that Riverdance duo Moya Doherty and John McColgan are being sued by fashion designer Jen Kelly for using his designs without permission; Kelly is also reported to be seeking royalties on Riverdance's profits. The two are offering a vigorous and no doubt immaculately choreographed if ear-splitting defence to the claims when they appear live in the Irish High Court later this week. According to the news report,

"Kelly designed and made hundreds of outfits that were used in the Riverdance shows in the mid-1990s. After receiving initial design fees for the show costumes, Kelly claimed he was paid about €60 in royalties per performance until 2001.

Kelly has claimed Riverdance continued to use and modify his designs without licence or payment. McColgan and Doherty claimed an agreement was reached in November 1999 under which the designer accepted a substantial sum to finalise his involvement.

McColgan said there was never "any unauthorised exploitation of Kelly’s designs by Riverdance". He said Kelly’s designs had not been used since 2001".

The IPKat looks forward to learning more about the legal grounds of the claim. Merpel wonders if there is any country in the world in which, in the absence of a licence, the live performance by a person wearing a costume could infringe either the design right or the copyright in that item of clothing. Says Tufty, I bet the judge doesn't fall asleep in this trial ...

Riverdance in response to the Haka here
Dancing cats here and here

Haiku competition: best ineligible efforts

noreply@blogger.com (Jeremy) — Mon, 02 Nov 2009 21:11:00 +0000

Apart from the serious entries to the Copying Without Infringing competition (here), the IPKat received some hilarious and not always entirely publishable material from a number of creative readers who felt (i) unduly restricted by the haiku format, (ii) unduly restricted by the subject matter on offer or (iii) generally inspired to write greater things. Among these offerings were the following:

From Sandra Beelaard (Advocaat, De Brauw Blackstone Westbroek N.V.: "Well, not really a Haiku, but it was fun nonetheless")

To infringe, or not to infringe: that is the question:
Whether keywords are the domain controlled
Exclusively by rightholders' whims,
Or the prerogatives of advertisers' lust,
And by an answer end it? To question, to litigate;
No more; and by the answer to say we end
The darkness of uncertainty arising
From the depths of Luxembourg, 'tis an answer
Devoutly to be wish'd. To question, to litigate;
To litigate: perchance to reason: ay, there's the rub;
For in that trial what reason may befall
Raising yet another question, only to
Await another ruling: there's the aspect
That makes European trademark law so complex.
In Haiko style that would be:

To infringe
Or not to infringe
That's the question

From Dr Stephen Wintersgill (IP Manager, University of Central Lancashire) comes a haiku which, while not falling within one of the competition categories, would probably win the support of a number of judges in the Court of Justice of the European Communities, and reflect the sentiment of many other good folk, when he writes

Football league fixtures
protected database rights
enforceable? My arse.

Straight from the heart, that one.

Finally, Shabtai Atlow (patent attorney, NDS) writes "OK, it isn’t your contest. And it isn’t a haiku, but ...". Then, after reminding us of the famous verse concerning Tweedledum and Tweedledee, he quotes:

Bud-o-var and Bud-e-J
Agreed to have a battle;
For Bud-o-var said Bud-e-J
Had spoiled his nice new rattle.

Just then flew down a monstrous Robin,
As black as judge’s robes;
Which frightened both the heroes so,
They quite forgot their quarrel.

Thanks, all of you, for your efforts!

Haiku competition: the best entries

noreply@blogger.com (Jeremy) — Mon, 02 Nov 2009 20:51:00 +0000

The IPKat has been sifting through the entries for the haiku competition, for which the prize is complimentary entry to the Copying without Infringing conference, organised by CLT in Central London on Tuesday 24 November with IPKat team member Jeremy in the chair. To recap, entrants were asked to compose a haiku, according to the traditional Japanese rules, on one of three subjects (all of which have something to do with the borders of infringing/ non-infringing use of IP rights): fair dealing/fair use, the Bolar exemption and the use of trade marks as AdWords.

The best efforts (chosen from a large number of entries) are as follows

Fair dealing/use

The fair use defence
shares traits with English summer -
clouds, good chance of rain!
Benjamin Farrand (EUI Researcher in Law)

A "Reasonable Part"
Is open to some abuse...
But will they catch me?
Alex Clarke

Bolar exemption

In a safe harbor
A lone generic chemist
Weathers patent storms
Shabtai Atlow (patent attorney, NDS)

Summer rays solar
Shine on test generic
Exemption bolar
Anthony X. Gallafent (Gallafents)

After Hatch-Waxman
Experiments still infringe.
Draft a better law!
Tim Roberts

Chemical testing
held not to infringe
conference ticket?
Dr Stephen Wintersgill (IP Manager, University of Central Lancashire)

AdWords

In my search for truth
A winter sale beckons me.
Google's share price climbs.
Peter Smith (Serjeants)

Why can’t I use your
Trademark for my search engine
Optimization?

and

If GOOGLE allows
Your mark sold as an AdWord,
It MUST be legal!
Miri Frankel (Associate General Counsel, The Beanstalk Group, NY)

.., and the winning entry

Congratulations to Nia Roberts (Intellectual Property Manager, Department for the Economy & Transport, Welsh Assembly), who has submitted a trilogy of haikus based on three of the four seasons which has deliciously captured the allusive nature of the medium. The trilogy runs as follows:

Winter: The Bolar Exemption
Snow-cloaked bulbs quicken.
Analyze, test, accredit -
All this is allowed.

Summer: The use of Trade Marks as Google Ad-Words
Lush-scented fly-traps
Lure unsuspecting insects -
Click! The jaws snap shut.

Autumn: Fair Dealing
My tree, fruit-laden.
Pick, try, enjoy an apple –
The harvest is mine.

Well done, Nia. The Kats do hope that you will be able to attend the conference and will be in contact with you in the next day or two to finalise arrangements.

WIPO says it with flowers (among other things)

noreply@blogger.com (Jeremy) — Mon, 02 Nov 2009 20:15:00 +0000

A press release from the World Intellectual Property Organization, "WIPO & Donor Community to Explore Ways to Enhance use of IP for Development", was issued today and it makes interesting reading. The text reads as follows:

"The World Intellectual Property Organization (WIPO) is hosting an international conference in Geneva on November 5 and 6, 2009 [hey, that's this week!] to help improve understanding among the donor community of the key developmental role of IP [this makes a change from seeking to improve understanding among the developing nations], to encourage their support for intellectual property-related development projects and improve access by developing countries, particularly least developed countries (LDCs) and countries in Africa, to donor funding for such projects [donor funding has to be (i) available on free or affordable terms, (ii) adequate for each project and (iii) securely ring-fenced to protect it against imaginative ways in which it is caused to evaporate before the project is completed -- or in some cases, started].

The Conference will demonstrate, in particular, to bilateral and multilateral donor agencies, the relevance of intellectual property (IP) to development and to explain how developing countries can use IP to facilitate their economic, social and cultural development, in particular in relation to the Millennium Development Goals (MDGs). [if the agencies don't know this yet, what hope is there for the rest of us!]

The Conference will focus on three main themes: Aid for Trade; Science, Technology and Innovation for Development; and the Digital Divide [themes 1 and 3 have the advantage of having cute names, though theme 2 is equally important]. It will bring together presentations of real life examples of IP in action in developing countries from a diverse set of presenters such as: a film producer from Nigeria (Madu Chikwendu, MCM Group, Nigeria), two African designers involved in exporting to developed country markets (Ronel Jordaan and Cheick Diallo), a rose breeder from Kenya (Bas Smit of Kordes Roses), a coffee producer from Ethiopia (Tadesse Meskela, General Manager, Oromia Coffee Farmers Co-operative Union, Addis Ababa, Ethiopia), a South African publisher (Brian Wafawarowa, New Africa Books), the Senegalese music industry (Rokhaya Daba Sarr, Bureau Export de la Musique Africaine & Tringa Musiques et développement) and a traditional knowledge expert (Ann Sintoyia Tome, Maasai Cultural Heritage Foundation Kenya) [The IPKat hopes that these presentations will be made available even to those of us who are unable to attend. Apart from the fact that they're generally much more entertaining than lectures from lawyers and politicos, if properly pitched they can inspire both donors and like-minded enterprising colleagues].

These real life experiences will be accompanied by a series of high level roundtable discussions with senior policy-makers [There had to be a downside ...]. The Conference will be opened by WIPO Director General Francis Gurry followed by introductory keynote speeches by the United Nations Under-Secretary General, Special Adviser on Africa, Cheick Sidi Diarra and the Brazilian Under-Secretary for Economic and Technological Affairs, Ambassador Pedro Carneiro de Mendonça.

The conference is an important step in building a relationship between WIPO, its member states and the donor community and offers an opportunity for developing countries to engage with the donor community on IP-related issues and for WIPO to foster partnerships in support of improved access to funding.

While implementation of the WIPO Development Agenda is provided for under the Organization’s regular budget, the mobilization of extra-budgetary resources is seen as a means of broadening the impact of WIPO’s development work in general and speeding up implementation of recommendations under the WIPO Development Agenda in particular [Trying to interpret this, the IPKat thinks it means "WIPO has enough cash to run conferences like this, but it doesn't have the funds to finance the sort of projects it's encouraging]. This initiative is in support of the WIPO Development Agenda which calls for the mobilization of additional resources through donor funding, the establishment of funds in trust and other voluntary funds within WIPO specifically for LDCs and countries in Africa to promote the use of IP for social, economic and cultural development.

Anyone interested in participating in the meeting, which is open to the public, is requested to complete the on-line registration form".

The IPKat, who rather likes this WIPO initiative, is fascinated by the concept of the "donor community". Viewed from the point of view of recipients, donors are a community, bound together by the privilege of IP ownership; but, viewed by each other, donors are often fiercely suspicious of one another and competitive to the point of being, well, not the best of friends. To them, it's recipients who are a community, bound together by their poverty, their lack of resources and the absence of an innovation-friendly soil in which to plant the seeds of creativity. Merpel adds, with globalisation we're all one big community, aren't we?

Letter from AmeriKat II: Parody and some odds and ends

noreply@blogger.com (Annsley Merelle Ward) — Sun, 01 Nov 2009 20:26:00 +0000

Parody and Press Conferences

Last Tuesday the US Chamber of Commerce filed a copyright and trade mark lawsuit against political activists the Yes Men who two weeks ago staged a fake news conference announcing that the Chamber had changed its policy on climate legislation. The 19 October staged press conference was instigated after a few members of the Chamber, including Apple Inc., left the organization, citing as their reason the fact that they did not support the Chamber’s climate policy. During the fake conference Jacques Servin, a member of the Yes Men, stood behind a podium that incorporated the Chamber’s logo and service marks (U.S. CHAMBER OF COMMERCE, THE SPIRIT OF ENTERPRISE, and Eagle and Stars Design) while he read a statement purported to be from Chamber CEO Tom Donohue. The press statement proclaimed (see the statement here at the Yes Men’s hoax Chamber website) the Chamber’s support for the Kerry-Boxer Bill – an 831 page environmental protection bill that proposes a cap and trade emissions scheme. The Chamber had previously opposed the Bill.

The Chamber’s lawsuit states that they seek redress for trade mark infringement and dilution, false advertising, cybersquatting and unfair competition. The complaint states that

“these acts deceived the press and public, and caused injury to the Chamber , while promoting the commercial ventures of certain members of the Defendants...The Acts are nothing less than commercial identify theft masquerading as social activism. These infringing and fraudulent acts are antithetical to public debate on important issues, because they prevent the public and the press from knowing the true position of the intellectual property owner whose trade marks and copyrights were used without permission...”

Steven Law, the Chamber’s appropriately-named chief legal officer and general counsel, reiterated the position:

“The defendants are not merry pranksters tweaking the establishment. Instead, they deliberately broke the law in order to further commercial interest in their books, movies, and other merchandise.”

According to the New York Times, in response to the law suit Servin stated that "it's really disappointing that the chamber would take this approach to something that's clearly political speech." Servin also stated that using the Chamber’s intellectual property was free speech.
In response Law stated:

"the Chamber is a strong proponent of free speech and encourages public debate on issues of the day. However, the law is clear that you can't misappropriate others' intellectual property for personal financial gain".

Obama Nominates Espinel as Intellectual Property Enforcement Coordinator (IPEC)

At the end of September, the Obama administration nominated Victoria Espinel to the position of the US Intellectual Property Enforcement Coordinator. The position was created under the Prioritizing Resources and Organization for Intellectual Property Act (Pro-IP Act – clever, huh?) which was signed into law by former President Bush despite his administration’s opposition to the position. The IPEC provides guidance and strategic plans to federal agencies combating IP infringement by chairing an advisory committee comprised of theses agencies, which include the Office of Management and Budget, the Justice Department, the Commerce Department, the US Copyright Office and the Office of the US Trade Representative. The IPEC has no formal power to control or implement how the agencies investigate, prosecute or manage IP cases.

Victoria Espinel, a former Visiting Assistant Professor in intellectual property and international trade at the George Mason University School of Law and the founder and President of the non-profit Bridging the Innovation Divide organization. Espinel has acted as an intellectual property advisor to the Senate Judiciary Committee, Senate Finance Committee, House Judiciary Committee and House Ways and Means Committee. According to a White House press release, prior to her work with the U.S. Government, she was in private practice with Covington & Burling in London and D.C. and Sidley, Austin, Brown & Wood in New York. Espinel received her LL.M from LSE and J.D. from Georgetown University Law School.

Mark Esper, a vice president of the U.S. Chamber of Commerce stated that Espinel’s nomination “is a positive development towards fully implementing and funding the Pro-IP Act, and we hope President Obama and Congress will continue this important work by ensuring Victoria has the resources and authority necessary to get the job done.” For further commentary, please see this article in Wired.

Other News

• Lil Wayne’s Bad Week - It has been a mixed year for Lil Wayne. First came the Rolling Stone cover alongside a critically acclaimed album. But then, two weeks ago he pleaded guilty to a charge of criminal possession of a weapon and last week he was hit with a copyright infringement claim brought by Thomas Marasciullo. Thomas’s complaint states that Lil Wayne, Cash Money records and distribution outlets used his material on a total of nine tracks without permission or remuneration. See this article from the BBC for more information.

• Google Chrome’s Infringing Courgette - Last Tuesday Red Bend Software Inc. filed a complaint in Boston district court for patent infringement over Google’s Chrome internet browser. Red Bend claims that Chrome contains a differential compression algorithm, called Courgette (or zucchini if you are the AmeriKat) which enables Google to update only the part of the software that actually requires updating. Red Bend claims that this infringes a 2006 patent. The complaint also states that Google infringes another of Red Bend’s patents that enable wireless carriers to distribute updates for mobile-phone software. The AmeriKat suggests you read this article in The Register and this piece in MSN Money.

• Lego Patent Geek - the AmeriKat suggests for a bit of light-hearted fun for those of you who enjoy nothing more than kicking back and reading patent applications you read this article in Wired about a filing made by Lego.

Letter from AmeriKat I: Trade secrecy and privacy

noreply@blogger.com (Annsley Merelle Ward) — Sun, 01 Nov 2009 20:05:00 +0000

Instead of donning her usual scary outfit and attending various Halloween parties, the AmeriKat attended a refined evening of the musical delights of St Vincent (right), Grizzly Bear and the London Symphony Orchestra at the Barbican. In years gone by, however, she has metamorphosed into Marie Antoinette, Medusa, and of course the classic black Kat. Two weeks ago, while watching an unimpressive programme on Halloween and the “business of boo”, she noticed that the commentator kept referring to Halloween costumes as “fully licensed costumes”. Of course this obvious – your or your child’s character costume should be fully licensed from the rights holder (Disney or Marvel Comics, for example). Nevertheless this programme acted as a gentle reminder to the AmeriKat how pervasive intellectual property is in our lives. Although admittedly a bit tongue-in-cheek, would your child, if wearing an unlicensed Cinderella costume, be a secondary infringer? Could this poor innocent be ‘injuncted’ from wearing such a costume for trick-or-treating? Maybe next Halloween the AmeriKat will dress up as a cease and desist letter from Disney ... because, in her opinion, what could be scarier?

PepsiCo’s $1.26 billion Court No-Show

Last April in a Wisconsin court Charles Joyce and James Voigt sued PepsiCo and two distributors, alleging that the drinks giant had misappropriated trade secrets discussed at confidential meetings between themselves and PepsiCo in 1981 (yes, 1981 – statute of limitations anyone?) about the commercial viability of selling, wait for it ... bottled water. The AmeriKat thinks that is tantamount to suing bread manufacturers for stealing the idea to slice bread. PepsiCo allegedly used the confidential information obtained from the claimants to develop and market AquaFina or -- as comedian Lewis Black calls it -- “the end of water” as we know it.

Fast-forward to 30 September. With no submissions, response or apparent sign of life from PepsiCo, judgment in default was entered in favour of the claimants along with a massive damages award of $1.26 billion. Two weeks ago, PepsiCo filed motions to vacate the order and dismiss the suit contending that they had not been made aware of the claim until 6 October 2009. Alleged in PepsiCo’s motion, the secretary for Tom Tamoney, Deputy General Counsel for PepsiCo , apparently received a copy of the claim on 15 September but neglected to inform anyone because she was “so busy preparing for a board meeting.”

According to this article in the National Law Journal, the claimants’ lawyer, David Van Dyke stated that Wisconsin courts have been “pretty clear that they don’t like” vacating default judgments. Van Dyke did however state that there was a possibility that the judge may allow litigation over the high award of damages. A hearing is scheduled for 6 November.

Snap! $50,000 penalty for illegal photographs

The U.S. is often accused by some European commentators as having “made a fetish of the freedom of the press” (see Judge Zupancic in Von Hannover v Germany). The AmeriKat herself has been on the receiving end of many snide comments about “that ridiculous First Amendment right.” A pointed hiss and a growl from the AmeriKat generally follows.

But despite these criticisms of the U.S.’s First Amendment, two weeks ago Governor Schwarzenegger signed into Californian law a measure that allows civil lawsuits against media organizations that commission or publish photographs illegally taken by photographers. Illegal photographs are generally those taken by photographers who trespass on private property or photograph someone who, and this will ring familiar, has a “reasonable expectation of privacy”. The legislation provides for a maximum penalty of $50,000 for each breach.

The arguments and commentary are similar to those that have already occurred in the UK: supporters state that the legislation will protect an individual’s right to privacy from aggressive paparazzi, while critics state that the legislation has a chilling effect on legitimate reporting by the press. Critics also cite the existence of other laws, such as anti-stalking measures and trespass, as existing legal mechanisms that already protect privacy. Additionally, commentators note concern that the legislation may result in an increase in unmeritorious lawsuits.

Tom Newton, general counsel to the California Newspaper Publishers Association, stated that “the initiation of even meritless lawsuits has a chilling effect on legitimate news gatherers."
For further information see this article in the Wall Street Journal, Patrick Alach’s article in Loyola’s Entertainment Law Review and this article in the Editor & Publisher.

Liability for links and adwords, German style -- and a visit to Google Translate

noreply@blogger.com (Jeremy) — Sun, 01 Nov 2009 15:11:00 +0000

From the IPKat's talented German friend Uli Hildebrandt (of Juve’s No.1 IP law firm of the year Lubberger Lehment) comes news of a new decision from the Bundesgerichtshof -- that's the top German appellate court -- of 7 October 2009. Affectionately known to German lawyers by its citation BGH (I ZR 109/06 - Partnerprogramm), the Court has ruled as follows:

"(a) Erscheint bei der Eingabe eines Suchbegriffs in der Trefferliste einer Suchmaschine ein Text, dem der Verkehr eine markenmäßige Benutzung des für einen Dritten als Marke geschützten Begriffs entnimmt, so genügt der Markeninhaber mit dem Vortrag dieses Geschehens im Regelfall seiner Darlegungslast für eine markenmäßige Benutzung seines Zeichens durch den Inhaber der unterhalb des Textes angegebenen, über einen elektronischen Verweis (Link) zu erreichenden Internetadresse. Macht dieser geltend, er benutze den betreffenden Begriff auf seiner Internetseite nur in einer beschreibenden Bedeutung, trägt er hinsichtlich der dafür maßgeblichen konkreten Umstände die sekundäre Darlegungslast.

(b) Unterhält ein Unternehmen ein Werbepartnerprogramm, bei dem seine Werbepartner auf ihrer Website ständig einen Link auf die das Angebot dieses Unternehmens enthaltende Internetseite bereitstellen, so sind diese Werbepartner jedenfalls dann als Beauftragte des Unternehmens i.S. von § 14 Abs. 7 MarkenG anzusehen, wenn ihnen für jeden Besucher, der über diesen Link zu dem Unternehmen gelangt und mit diesem einen Geschäftsabschluss tätigt, eine Provision gezahlt wird und der betreffende Werbepartner erst nach einer Überprüfung durch den Unternehmer selbst, der den Werbepartnern eine Auswahl für die Gestaltung der Werbemittel vorgibt, in das Partnerprogramm aufgenommen wird. Die Haftung nach § 14 Abs. 7 MarkenG beschränkt sich dabei auf das Handeln des Beauftragten auf eine bestimmte zum Partnerprogramm angemeldete Website, wenn nur über diese Website getätigte Links abgerechnet werden und der Auftraggeber auch nicht damit rechnen muss, dass der Beauftragte noch anderweitig für ihn tätig wird".

Since, says Uli, this all sounds a bit complicated even for Germans, he has kindly fed it through Google Translate, which renders it thus:

"(a) appears when entering a search term in the results of a search engine a text, the traffic being a trade mark be used for a third party removes the trademarked term, the trademark owner, with the presentation of this event is sufficient as a rule, his explanation of his load for a trade mark be used sign by the owner of the given below the text, an electronic reference (link) to reach Internet. Makes this claim, he used that term on its website only in a descriptive meaning, it adds to the relevant factors regarding the specific presentation of the secondary load.

(b) If the company has an affiliate program, providing its advertisers with the constant on its website a link to the website containing the offer of this company, these advertisers are in any case be considered as representative of the company in view of § 14 paragraph 7 MarkenG if them for each visitor who passes through this link to the company and makes a deal with this, a commission is paid and the relevant advertisers only after a review by the entrepreneur himself, the advertising partners a selection for the design of advertising claims to be included in the partner program. Liability under § 14 paragraph 7 MarkenG is limited to the actions of the agents to a particular Affiliate registration site if made only through this website links are settled and the client does not expect to be that the agent or otherwise for him will operate."

There are two interesting points here, Uli tells us:

(a) Despite several proceedings pending at before the Court of Justice of the European Communities, the BGH still dares to rule in cases involving adwords. If a third party’s trade mark appears (as a trade mark) in the advertising text under the link address, the advertiser commits a trade mark infringement.

(b) The BGH clarifies an issue concerning liability for links. A company that pays commission to another company which has a link to the first company’s offers and infringes a trade mark with this concrete link is itself liable for the link.

"Am I clearer than the BGH?", he asks. Yes, comes the answer, but that's not difficult ...

The IPKat doesn't have problems with national courts daring to decide issues which are, explicitly or by implication, awaiting rulings by the European Court of Justice: if a national court were bound to suspend judgment until the ECJ had ruled, the strategic reference of questions for preliminary rulings could fast became a popular strategic tool among litigants (particularly in multi-jurisdictional disputes) that needed way of stalling for two years or thereabouts. However, he's uncomfortable at the thought of a case being wrongly decided where an earlier dispute has been referred for a preliminary ruling but that ruling does not come out until after a later, non-referred and non-suspended action has been determined. This offends his Aristotelian sense of distributive justice which leads him to prefer that similar disputes are resolved in a consistent manner. Merpel says, at least there's not much worry that the ECJ will be greatly influenced by the jurisprudence of the Bundesgerichtshof, or indeed of any other respected appellate court in Europe ...

Translation for dummies here

Translation for humans here

The IPKat team welcomes a new Kat

noreply@blogger.com (Jeremy) — Sat, 31 Oct 2009 22:09:00 +0000

The IPKat is delighted to announce an addition to his blogging team: Mark Schweizer, an associate in the Zurich, Switzerland practice of Meyer Lustenberger and a respected contributor to the Class 46 European trade mark blog. Good luck, Mark, we're all looking forward to that touch of continental colour which you can give us from somewhere up in the Alps ...

And the next EPO President is ...

noreply@blogger.com (David) — Fri, 30 Oct 2009 14:49:00 +0000

Following his post earlier this week, the IPKat has just heard that the EPO Administrative Council have failed to reach an agreement on who should be the next EPO President. None of the candidates managed to get the required qualified majority of three quarters of the votes cast by member states. The Council has therefore decided to continue the election process at its next meeting in December.

The IPKat is slightly disappointed at this news, but on the other hand is heartened that his poll results might now be useful to tell the Administrative Council which way they should be voting. After 179 votes, the poll gives the Swedish candidate Susanne Ås Sivborg a commanding lead with 107 votes, 59% of the total. The next highest scoring candidate, Roland Grossenbacher (apparently the current front-runner), has so far managed only 29 votes.

If you have not yet voted for your favourite candidate, please do so. The poll is still up on the sidebar and, given the recent news, the IPKat has decided to leave the poll open for another week to give everyone interested a chance to have their say.

Friday fantasies

noreply@blogger.com (Jeremy) — Fri, 30 Oct 2009 11:47:00 +0000

The IPKat's sidebar, as ever, is bulging with exciting opportunities to attend live talks, do a spot of networking and generally get out of the office or college routine for a bit and, well, live it up! There are plenty of events on offer, so don't forget to check them out.

There have been a few changes to the IPKat weblog of late. Following suggestions that the former colour scheme was (i) not particularly attractive or (ii) called to mind other IP blogs that share the same template (Spicy IP and SOLO IP, to name but two), the IPKat decided to go blue with some red and yellow trimmings. He likes it; Merpel wishes it were pink and purple. Another change is the addition of a blogroll that lists some of the other weblogs with which IPKat team member Jeremy is associated. Apart from one slight glitch, which is that the blogroll insists that Fashionista-at-Law last posted anything half a year ago, this feature seems to working tolerably well.

The IPKat's friend Professor Toshiko Takenaka is coming to London in December where she will give a talk on the differences between patent litigation in the United States and Japan. If you'd like to hear on on Tuesday 8 December, you can find the details here. Another of the IPKat's friends, trade mark guru and IP Finance blogger Neil J. Wilkof, will be giving a lunchtime talk in Central London a week later, on Tuesday 15 December. The subject will be the role played by trade secrets in business. The venue is still to be confirmed. Meanwhile, if you're thinking of coming, email Jeremy here and let him know; he'll send you the details when they materialise.

Here's something for patent-y people to play with. Finding patents that are identical to your own is all very well, but finding patents that aren't the same, yet somehow relevant, is more of a challenge. The good news is that now you can look for similar patents, using Xyggy.com.

MI5 and police oppose internet disconnections. The IPKat thanks Paul Jakma for this link to a fresh set of insights into the 'three strikes and you're out' debate. It seems that you more you think about the significance of people not having an online presence, the more problems spring up. Law is slow to change and tends these days to run along some distance behind the technologies it seeks to regulate -- while the rate of technological change rattles along merrily, as does the rate at which consumers, ever-younger and more sophisticated, explore and adopt those techno-changes.

Around the blogs. The JIPLP Blog is thrilled to have secured its first 50 email subscribers (now over 60, actually) within 24 hours of launch; as an interactive accompaniment to the Oxford University Press monthly Journal of Intellectual Property Law and Practice, the blog has already added two new sidebar features: 'Articles in search of an author' and 'Authors in search of an article'. Meanwhile, the IPKat welcomes a new entrant to the IP blogosphere, Raymond Hegarty (left) of Intellectual Profit. A self-styled IP evangelist, Raymond's creed involves "deriving profit with IP management". Good luck, Raymond, we'll all be watching you ...

OHIM has been having fun ... and so has the IPKat, who has been pawing at the Office for Harmonisation in the Internal Market's "Hands off my design" teaching and games site. The thing he likes about it best is the lengthy disclaimer, which among other things reassures the reader that its contents are "not necessarily comprehensive, complete, accurate or up to date". Merpel says, I want to know if the student illustrated on the right is male or female ...

The IPKat has been hearing all about the evening events which Appleyard Lees has been running for almost a year now in sunny Manchester for part-qualified and recently-qualified patent and trade mark attorneys and IP solicitors. The formula consists of a brief lecture followed by an opportunity for socialising over food and drinks [The events are free and are open to everyone. The Kat's wondering who buys the booze ...]. So far, reports the Kat's mole, these events have had some excellent speakers from the EPO, UK IPO and the Bar. Now it seems the organisers are looking for volunteer speakers to step forward and offer their talents. If you fancy a shot at public speaking on an IP topic and enjoy socialising afterwards, or only want to be added to the mailing list for forthcoming events, email here.

French speakers, visual similarity sink AGILE mark

noreply@blogger.com (Jeremy) — Thu, 29 Oct 2009 23:05:00 +0000

Today's pick of the Community trade mark appeals is Case T‑386/07, Peek & Cloppenburg v Office for Harmonisation in the Internal Market, Redfil. Redfil applied to register the 'Agile' figurative mark (right) for 'bags, rucksacks’ (Class 18), 'sport footwear, shirts, vests, jackets, pullovers, socks, trousers, hats, berets, visors’ (Class 25) and 'golfbags, golfing gloves, golf clubs, games balls’ (Class 28). Peek & Cloppenburg opposed, citing various national and Community trade mark registrations for the word AYGILL'S for goods in Classes 3, 6, 8, 9, 11, 14, 16, 18, 20, 21, 24, 25, 27 and 28 and maintaining that, on account of the similarity of the respective marks and the similarity/identity of goods, there was a likelihood of confusion among the relevant consumers.

The Opposition Division agreed and upheld the opposition. The Second Board of Appeal had other ideas. Since the earlier national registrations and the earlier Community registration were identical, the Board based its decision exclusively on the CTM. However, while the relevant respective goods were identical, the marks were only slightly similar: they were visually similar only to a low degree, their phonetic similarity was limited to French; there was no conceptual similarity. Accordingly, on a global assessment of the likelihood of confusion, despite the inherently distinctive character of the earlier mark and the identity of the goods in question, there was no likelihood of confusion between the marks. The degree of phonetic similarity between two marks was held to be of less importance here, since the respective goods were marketed in such a way that the relevant public, when making a purchase, usually perceived the mark designating those goods visually.

Peek & Cloppenburg's appeal to the Court of First Instance was upheld and the decision of the Board was annulled. Said the Court:

"25 ... the first four letters of the mark applied for, namely ‘a’, ‘g’, ‘i’ and ‘l’ are included in that order amongst the first five letters of the earlier mark, namely ‘a’, ‘y’, ‘g’, ‘i’ and ‘l’. Furthermore, it should be noted that the mark applied for has only five letters and that the earlier mark has only seven and that, therefore, they have in common a majority of the letters of which they are constituted. It can be deduced from those elements that the consumer will perceive the signs at issue as being visually similar despite their different ending, namely the letter ‘e’ for the mark applied for and the letter ‘l’ followed by an apostrophe and the letter ‘s’ for the earlier mark. In that regard, it should be recalled that, according to established case-law, the consumer generally pays greater attention to the beginning of a mark than to the end [citation omitted]. ...

27 ... the Board of Appeal was wrong to take into account the particular font used by the mark applied for in its comparison of the signs at issue. As the applicant is correct to note, since the earlier mark is a word mark, its proprietor has the right to use it in different scripts, such as, for example, a form comparable to that used by the mark applied for [citation omitted].

28 ... the Board of Appeal’s analysis of the visual comparison of the signs at issue was incorrect in so far as it concluded that there was only a low degree of similarity there, there being, at least, an average degree of visual similarity between them. ...

34 ... the signs at issue are visually and phonetically similar, but conceptually different.

35 ... conceptual differences can in certain circumstances counteract the visual and phonetic similarities between the signs at issue. For there to be such a counteraction, at least one of the signs at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately [citation omitted].

36 However, ... the conceptual difference between the signs at issue is not, in the circumstances of the present case, such as to neutralise the similarities found to exist.

37 ... in light of the visual and phonetic similarities between the marks Aygill’s and Agile, it cannot be excluded that consumers of the goods in question might attribute the same conceptual content to the earlier mark as to the mark applied for.

38 Therefore ... it is apparent that the effect of the conceptual difference between the signs at issue could attenuate the established visual and phonetic similarities, but not neutralise them.

39 It follows that the signs at issue must be considered to be similar overall, but to a low degree with regard at least to the French-speaking public, which, apart from a visual similarity, will also perceive a phonetic similarity between them".

Since there was a greater degree of similarity than that found by the Board, the Board was wrong to exclude that there could be a possibility of a likelihood of confusion, .

The IPKat suspects that he has not heard the last of this case. While he agrees that the degree of similarity between the marks is greater than that which the Board found, as a non-Francophone feline he does not feel qualified to make his own assessment of the degree of similarity or its impact on the consumer. However, this case looks like a close call and Redfil, having gone so far and trailing 2-1, may reckon that it has little to lose from an appeal to the Court of Justice.

Out today! WIPO's new IP journal

noreply@blogger.com (Jeremy) — Thu, 29 Oct 2009 14:14:00 +0000

The IPKat congratulates publishers Sweet & Maxwell on getting issue 1 of the new WIPO Journal out on time (you can get all the necessary details here). His excitement is of course nothing to do with the fact that one of IPKat team member Jeremy's little pieces of pungent prose slipped gracefully past the peer reviewer and glided into the new title. Normally the IPKat would not have mentioned his contribution, but for the sake of completeness and in the interest of truth he felt he should mention that it was a fun thing to write.

Right: it has been a long time since the IPKat ever had to submit an article in pencil

Anyway, the substantive contents of the first issue look like this:

"The global intellectual property order and its undetermined future: Peter K Yu

The pre-history and establishment of the WIPO: Christopher May

International norm-making in the field of intellectual property: a shift towards maximum rules? Annette Kur

Some consequences of misinterpreting the TRIPS Agreement: Susy Frankel

Seizure of generic pharmaceuticals in transit based on allegations of patent infringement: a threat to international trade, development and public welfare
Frederick M. Abbott

Threshold requirements for copyright protection under the International Conventions: Sam Ricketson

Rethinking of copyright institution for the digital age: Yoshiyuki Tamura

Internet piracy as a wake-up call for copyright law makers – is the “graduated response” the good reply?? Alain Strowel

The Lisbon Agreement’s misunderstood potential: Daniel Gervais

What is “traditional cultural expression”? – international definitions and their application in developing Asia: Christoph Antons

One hundred years of progress: the development of the intellectual property system in China: Handong Wu

The China-US relationship on climate change, intellectual property and CCS: requiem for a species? Peter Drahos

Intellectual property and the transfer of green technologies: an essay on economic perspectives: Keith E Maskus

I wouldn't want to be starting from here, or why isn't intellectual property research better than it is? Jeremy Phillips".

Drawing a blank

noreply@blogger.com (Jeremy) — Thu, 29 Oct 2009 08:51:00 +0000

The IPKat's friend Richard Pringle (Shell) asks a non-work-related question, which has lots of ramifications:

"Could you please tell me, or point me in the direction where I might find out, why trade marks (and other IP) are often blanked out or avoided in other ways in films, TV shows, advertisements, etc?

E.g. the Apple logo is often blanked out on its laptops in advertisements for car insurance and many other things. The same occurs in a house-buying TV show when the participants sit at home and “watch it on the laptop”. I assume the design of the laptop (which is visible and recognisable) is a registered design, even if it’s not a registered TM; but with that level of recognition it could be registered as a TM. In car insurance advertisements, I’ve seen representations of cars with their badges removed; I’ve also seen invented representations of cars that look like a hybrid of a variety of identifiable models from different manufactures, the end result being arguably damaging to allure of the component cars. In a film I recently saw (Fish Tank), the producers had gone to the trouble of using made-up alcohol branding for all the cans and bottles in the film (scenes of alcohol abuse were portrayed in this film, but only as small element of the whole film).

What about exhaustion of rights or any of the other reasons why this type of use (if it went ahead) could be said not to be infringing use, or any of the defences to infringement?"

The IPKat is no admirer of the restrictions placed on product placement which, even though they have been lifted somewhat in Europe, still seem misplaced and arbitrary. Viewers in the United States have been exposed to the phenomenon for decades with no apparent ill-effects, and since commercial advertisements are part of our everyday life it has always seemed to him to be pointless and misconceived to blank them out of TV productions. Merpel agrees and adds: if for the sake of reality they don't blank out swear-words or nudity, it seems silly to blot out Apple logos, doesn't it? Tufty says, I'd like to do some reverse product-placement, like threatening to dress a really obnoxious character in a popular brand unless the brand owner pays me to blank it out!

The Truman Show here

How to draw a blank here

Check out the brands that aren't blocked out on BrandChannel's Brand Cameo

Deere, Deere: red faces in battle for yellow and green

noreply@blogger.com (Jeremy) — Wed, 28 Oct 2009 23:01:00 +0000

There was a colourful ruling of the Court of First Instance of the European Communities (CFI) today in Case T‑137/08, BCS SpA v Office for Harmonisation in the Internal Market, Deere & Company, an appeal against the decision of the Second Board of Appeal not to invalidate Deere's Community trade mark.

In 1996 Deere applied to register the colours depicted on the right for 'attached, pushed or self-propelled agricultural and forestry machines’ in Class 7 and 'self-propelled agricultural and forestry machines, in particular farm tractors, small tractors, land tractors and trailers’ in Class 12. The colours were designated using the Munsell system as 9.47 GY3.57/7.45 (green) and 5.06 Y7.63/10.66 (yellow). Their arrangement was described as being ‘green for the vehicle body and yellow for the wheels’, as shown by the picture attached to the application and reproduced on the left. The marks were registered in 2001.

Three years later BCS SpA sought a declaration of invalidity in respect of all the goods protected by the registration of the mark, maintaining that it was devoid of distinctive character when the application was filed and that there had been insufficient proof of distinctive character acquired through use. A second ground of attack that the mark had been registered despite the existence of an Italian non-registered trade mark, also consisting of a combination of the colours green and yellow. Said BCS, the use of that unregistered mark before 1996 in relation to ‘agricultural machines, in particular farm tractors, small tractors, land tractors and trailers’ in ten EU member states gave it the right to prohibit the use of a subsequent trade mark consisting of those colours.

The Cancellation Division was unimpressed with this assault on the mark's validity and dismissed the application for the declaration. In its view BCS had not shifted the burden of undermining the evidence submitted by Deere of distinctiveness acquired through use. Further, even though BCS had shown that it had used the colours yellow and green on various types of agricultural machinery before the filing date of the disputed mark, it had not proven that, before that date, that sign was perceived as an indication of commercial origin by the relevant public in the territories concerned. The Board of Appeal dismissed BCS's appeal, so the company tried its luck with the CFI -- but to no avail, the court dismissing BCS's claims and ordering it to pay costs.

The CFI carefully reviewed the decision of the Board of Appeal and its approach to the evidence before it, concluding that BCS's case was plainly deficient. Among other things, the CFI reminded the litigants that the burden on Deere of establishing distinctive character was not as heavy as BCS would have liked:

"39 ... lthough it must be proved that the disputed mark has acquired distinctive character throughout the Community (see, to that effect, Case C-25/05 P Storck v OHIM [2006] ECR I-5719, paragraph 83), the same types of evidence do not have to be provided in respect of each Member State".

Thus surveys in some States can be supplemented by documentary evidence in others. The CFI also said this about BCS's own attempt to establish that it had a sufficient reputation in the colours to prevent Deere's use of its mark:

"73 First, it is common ground between the parties that the applicant ceased, at least from 1973 to 1982, to use the combination of the colours green and yellow on its goods in Italy. Although it would have been possible for the applicant to acquire a non-registered right in its sign through the use from 1983 to 1996 it did not do so. It is also apparent from the findings ... that it did not use the combination of the colours green and yellow in a consistent and uniform manner. On the contrary, it used a number of shades of green and yellow as well as a combination of the colours green and white.

74 It follows that the suspension of use of the combination of the colours green and yellow as a mark and the varying use of those colours were liable to prevent the public from systematically associating the applicant with a specific combination of colours.

75 Secondly, the Board of Appeal was fully entitled to regard the evidential value of declarations made by former employees of the applicant as questionable. ... those declarations were not corroborated by other evidence in the file and they were even partially disproved.

76 Thirdly, the Board of Appeal cannot be criticised for having found that the market survey submitted by the applicant was not persuasive. ... the Board of Appeal was fully entitled to point out ... that the participants in that survey, contrary to that carried out by [Deere], had not been asked for their reasons for giving a particular response and had not been shown a different image in a different colour in order to ensure that they did not recognise the image because of criteria other than the colour. Those facts are not disputed by the applicant. Consequently, it cannot be ascertained whether, at the end of the applicant’s survey, the participants recognised the applicant’s goods solely as a result of their colours and not as a result of their shape or other factors.

77 It must also be stated that the Board of Appeal was fully entitled to find that the evidential value of the applicant’s survey was noticeably lower than that of the survey submitted by [Deere], since the respondents in the applicant’s survey had been asked to recreate from memory their perception of the marks 10 years previously".

The IPKat thinks this decision is clearly correct, but also feels some sympathy with BCS who, having previously used green and yellow livery themselves, must have felt a little miffed at Deere coming along -- as they were entitled to do -- and gaining the upper hand through a valid trade mark registration. However, if your competitor gets the green and yellow, isn't it better to spend money on teaching the public to recognise a new set of colours than to spend five years in pointless and fruitless litigation? Merpel wonders about the para.77 point: could it not be argued that, if the respondents still retained a perception of marks for a whole decade, those marks must have made a really powerful impression upon them?

Yellow and Green here
Green and Black here
Test yourself for colourblindness here
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