The IPKat - on the prowl for IP news

Friday fantasies

noreply@blogger.com (Jeremy) — Fri, 20 Nov 2009 12:42:00 +0000

Have you checked the IPKat's list of Forthcoming Events? There's plenty coming up, as you can see from the side-bar on the IPKat's front page. It gets a bit quiet over Christmas, but January's only just around the corner.

Are you IP-savvy, as fit as a fiddle and always carry an umbrella in case it rains? If so, the United Kingdom's IPO has a job for you as Senior Policy Advisor, International Policy on IP, Public Health and Climate Change. The post is based in London, not Newport, so you can't escape the IPKat's attention by blending in with the local sheep ... Duties include representing the IPO

"... in relevant international meetings for example at the World Health Organis[z]ation and the World Intellectual Property Office [is this a new competitor for the World Intellectual Property Organization, or perhaps a breakaway group of dissidents?]. The job will involve regular lobbying of inter-governmental contacts in Europe and elsewhere, and meeting with key players [it's those pianists again!] from non-governmental organisations and the pharmaceutical industry. It will be particularly important to build good relationships with key stakeholders like the pharmaceutical industry; ...".

The job is yours and the salary ranges from £28,855 to £36,527 (plus a London Weighting Allowance of £3,200). Or you can drive a tube train on the London Underground for £40,000.

A little bird tells the IPKat that, following the ruling of the Court of Justice of the European Communities in the smell-alike trade mark dilution dispute in Case C-487/07 L’Oréal SA, Lancôme parfums et beauté & Cie SNC and Laboratoire Garnier & Cie v Bellure NV, Malaika Investments Ltd, trading as ‘Honey pot cosmetic & Perfumery Sales’ and Starion International Ltd (see the IPKat's comment here; Dirk Visser here; Mats Björkenfeldt here), the case is returning to the Court of Appeal, England and Wales, on 1 or 2 March 2010. The team lined up for this purpose is Lord Neuberger MR, Lady Justice Arden and Lord Justice Sullivan. How exciting, says the IPKat! But I wanted Lord Justice Jacob, wails a distraught Merpel ...

Slightly disconcerted, the IPKat discovers via YouTube that he is not alone. There is, it seems, another IPKat out there, or rather an IPKAT ...

In answer to a question that people keep asking him, the IPKat does not yet know the exact form of the questions which the Court of Appeal, England and Wales, is proposing to refer to the Court of Justice of the European Communities in Nokia v HMRC (see earlier posts here and here), but you can be sure that, once he does know, he'll share the information with all his readers.

The IPKat's informat Joris Peels (Shapeways) has tipped him off, via Edward Tufte, that Microsoft has applied for a US patent for sparklines. Edward -- reputedly the inventor of sparklines, asks, what can I do?

While her enthusiasm for fashion is matched only by her unfathomable depth of knowledge of it, Merpel has never felt sufficiently confident to nominate men's underpants as her special subject for Mastermind. Having said that, she's always willing to learn and found the Guardian's report of a recent Debenhams survey on male under-apparel ("What do men's pants say about them?") quite engrossing.

Right: inexperienced male purchasers of underwear look in vain for designer labels on garments that aren't big enough to have room for them.

The headline itself stopped her dead in her tracks: we now have Intelligent Clothing -- but pants that talk? Do they merely respond to polite inquiries as to the comfort and convenience of their occupant, or do they perhaps initiative dialogue at times of stress or malfunction? Tearing herself away from this speculation, Merpel discovered from the article that

* the average 23-year-old allegedly buys up to 31 pairs a year "of all styles, tightness and colours";

* even 40-year-olds manage a dozen pairs in as many months;

* once a male reaches 44, by which time he will have purchased an estimated 284 pairs, he presumably surrenders or delegates the task to the most appropriate woman in his life.

Statistics like this are incredibly useful for the clothing industry. If nothing else, in a market where suppliers are plentiful and profit margins -- unless you're lucky -- rock bottom, it helps to know how many items to manufacture for your intended market. Pitching a branded product to current loyal customers and future converts can also be improved with this knowledge: 'his and hers' packages might be worth a try for the more mature customer, perhaps. Merpel's not surprised, though, that men buy so many pairs of underpants. They could reduce this number very substantially by the simple expedient of remembering where they last left them.

Internet-hosted prior art and proof of publication: UK not bound by EPO level of proof

noreply@blogger.com (Jeremy) — Fri, 20 Nov 2009 09:59:00 +0000

In a recent hearing concerning a UK patent application, Ranger Services Ltd's application, BL O/362/09, 17 November 2009, Hearing Officer Lawrence Cullen was faced with a question relating to the status of cited prior art which had been obtained from an internet archive. Rejecting the application before him, which was for a system of using an automatic number plate recognition system to detect cloned vehicle number plates, he considered that the current European Patent Office guidelines [see earlier IPKat post here] would suggest that the cited prior art should be taken into account. In doing so, he rejected the applicant's submission that the EPO's guidelines demanded proof beyond reasonable doubt as to the date on which the cited prior art was made available to the public. While it was relevant and appropriate to take note of EPO practice, Dr Cullen said, it wasn't binding in the United Kingdom, where the civil proof merely required that facts be established on the balance of probabilities:

"While it is relevant and appropriate for me to take note of EPO practice in such matters, it does not bind me in the way that UK law does. The maxim of the English Courts in civil matters is that the correct assessment to be made is on the “balance of probabilities”, whereas in criminal matters, it is one of “proof beyond reasonable doubt”. In this case, the recent EPO note would appear to support that this view, despite Mr Hirsz’s argument to the contrary, and I must therefore decide the issue on “the balance of probabilities”" (para.47).

The IPKat notes that, even if the cited prior art had been excluded, the patent application would still have failed under the Patents Act 1977, s.1(2) since the invention concerned the performance of a mental act and/or a computer program as such, both of which are excluded subject-matter everywhere in Europe. Merpel wonders, what is the standard of proof in other jurisdictions? There really should be consistency as between patent-granting regimes and this is just the sort of question where a conveniently arbitrary ruling for all might be handy.

What to do if your vehicle has been cloned here

IP rights "not the driver" for vegetable varieties innovation

noreply@blogger.com (Jeremy) — Fri, 20 Nov 2009 08:54:00 +0000

While most felines have little affection for vegetation, the IPKat is something of an exception. He has just been perusing "Patents and Vegetable Crop Diversity", a US research paper by Paul J. Heald (Allen Post Professor of Law, University of Georgia School of Law) and his colleague Susannah Chapman of the same university's Department of Anthropology.

According to the abstract:

"The intellectual property system does not seem to drive the rate of innovation in the market for vegetable varieties. Drawing on a unique data set of all plant patents, plant variety protection certificates, and utility patents among 42 vegetable varieties, this short paper examines the relationship between intellectual property rights in vegetable crops and the diversity of commercially available varieties. Three findings are of particular interest:

(1) Only 3.8% of varieties available in 2004 were ever subject to protection under patent law or the Plant Variety Protection Act;

(2) More than 16% of all vegetable varieties that have ever been patented were commercially available in 2004; and

(3) In 2004, approximately 4.5% of protected, or once protected, varieties consisted of inventions that were at least twenty years old.

Although intellectual property rights appear to be an insignificant part of the crop diversity story, they exhibit much higher commercialization rates than expected (the conventional wisdom suggests a 5% rate), and they exhibit a slower rate of obsolescence than expected. Complete data on individual vegetable types are provided, and the sui generis nature of corn is also discussed".

The IPKat doesn't just like vegetables; he also appreciates research using real-world data that flies in the face of the sort of conventional wisdom that lives on the library shelves. Keep it up, Paul and Susannah!

You can get this paper via the SSRN website here

The IPKat's earlier post on Paul and Susannah''s research here

Why cats should eat some vegetables here

Can cats digest vegetables? Click here

The Digital Economy Bill - will it come in time?

noreply@blogger.com (David) — Thu, 19 Nov 2009 18:07:00 +0000

Nick McDonald of Browne Jacobson has written to the IPKat with the following:

"Her Majesty in yesterday's Queen's Speech said the following: "My Government will introduce a Bill to ensure communications infrastructure that is fit for the digital age, supports future economic growth, delivers competitive communications and enhances public service broadcasting".

The Digital Economy Bill will:

Reform the law on online copyright infringement - by creating duties on Ofcom to require ISPs to take action against identified file sharers, and giving Ofcom and/or ISPs the power to disconnect persistent file sharers;
Introduce "changes to copyright licensing" - the exact detail of which is as yet unclear;
Give Ofcom powers to appoint and fund Independently Funded News Consortia - essentially aimed at encouraging the proliferation of independent news media;
Give Ofcom new duties to promote investment in infrastructure and public service media content, and to carry out an assessment of the UK’s communications infrastructure every two years;
Support investment in next generation technologies through spectrum modernisation - pretty technical; all about bandwidths, how many of them are available, and who owns them;
Update the regulatory framework to make moves to digital switchover for radio possible by 2015;
Update Channel 4's functions to encompass public service content on all media platforms - online as well as television;
Protect children by making age ratings compulsory for all boxed video games designed for those aged 12 or above.

There is no mention of whether the Bill will echo the Government's Digital Britain Report of June 2009 in seeking to "modernise" (Therefore presumably extend) the fair use copyright infringement exceptions.

Clearly, the main IP change will be in relation to tackling file sharing. The No.10 website describes the new legislation being aimed at:

"tackling widespread copyright infringement via a two-stage process. First by making legal action more effective and educating consumers about copyright on-line. Second through reserve powers, if needed, to introduce technical measures, such as disconnection".

There has been a lot of commentary on this issue in the media over the last few years: Is it achievable? Will it work? Is it desirable? Either way, it appears the Government is going to try. It may not solve the problem immediately, but it will certainly strike a major blow against illegal downloading."

The IPKat thanks Nick for his thoughts, but is not sure himself whether the Bill will even come to pass, given that this government has only a few months left to run and is very unlikely to be re-elected. As for "striking a blow against illegal downloading", the IPKat is even less sure. The whole thing seems to be more like an attempt by the music industry to force through some very ill-thought-through legislation that will do more harm than good (if it does any good at all). For more on the issue, the IPKat would like to point his readers to the recent writings of Cory Doctorow and the Open Rights Group, both of whom have a lot more to say on the subject.

More sledgehammers here; more nuts here.

"Would you care for a glass of CANNABIS, Sir?"

noreply@blogger.com (Jeremy) — Thu, 19 Nov 2009 12:59:00 +0000

Drink and drugs were the main preoccupation of some of Europe's finest legal brains this morning, when the Court of First Instance rendered its decision in Case T‑234/06, Giampietro Torresan v Office for Harmonisation in the Internal Market, Klosterbrauerei Weissenohe GmbH & Co. KG, a decision which some of the IPKat's readers may feel to have been reached while under the influence of one or other of those popular commodities.

Over ten years ago, in February 1999, Giampietro Torresan applied to register as a Community trade mark the word CANNABIS for (i) ‘Beers’ (Class 32); (ii) ‘Wine, spirits, liqueurs, sparkling beverages, sparkling wine, champagne’ (Class 33) and (iii) ‘Providing of food and drink, restaurants, self-service restaurants, public houses, ice cream parlours, pizzerias’ (Class 42). The mark was registered in April 2003. Two months later, Klosterbrauerei applied for a declaration that the mark was invalid as regards the alcoholic beverages in Classes 32 and 33. The Cancellation Division agreed, concluding that CANNABIS was descriptive of the goods in question. In 2005 the Board of Appeal dismissed the appeal: in its view (i) the word ‘cannabis’ designated, in everyday language, either a textile plant or a narcotic substance and (ii) 'cannabis' was, for the average consumer, a clear and direct indication of the characteristics of goods in Classes 32 and 33.

The Court of First Instance dismissed Mr Torresan's appeal.

* It noted that cannabis has three meanings: (i) a textile plant the market in which is regulated within the Community framework and the production of which is subject to very strict legislation as regards the content of tetrahydrocannabinol (THC), the active ingredient of cannabis; (ii) a narcotic which is prohibited in a great number of Member States; (iii) the possible therapeutic use of which is under review. Further, when referred to as ‘hemp’, cannabis is used in a non-psychotropic form in the food sector in oils, herbal teas, pasta, bakery and biscuits, alcoholic and non-alcoholic beverages etc.

* The Court then summarised the principles under which a sign is deemed descriptive, i.e. where there is a sufficiently direct and specific relationship between it and the goods in question to enable the public concerned immediately to perceive, without further thought, a description of one of the characteristics of the goods and services in question. The descriptiveness of a sign may be assessed only in relation to the relevant public’s understanding of that sign and in relation to the goods or services in question.

* The relevant public in this case consisted of the average consumer of that type of goods.

* The key question here is whether the average consumer, who is reasonably well informed and reasonably observant and circumspect, may think, merely on seeing a beverage which bears as a trade mark the word sign CANNABIS, and no other additional element, that the mark at issue constitutes a description of the characteristics of the goods in question.

* There is a material link between the sign CANNABIS and certain characteristics of the abovementioned goods. Cannabis is habitually used in the manufacture of numerous foodstuffs, including beer and certain beverages.

* When he sees an alcoholic beverage or a beer bearing the trade mark CANNABIS, the average Community consumer will immediately perceive, without further thought, a description of the characteristics of cannabis, it being one of the ingredients which may be used as a flavouring in its manufacture.

* As the Board of Appeal pointed out, ‘those who purchase a beer bearing the trade mark CANNABIS will very probably do so because they are convinced that it contains cannabis and are attracted by the possibility of obtaining from the beverage the same, or at the very least similar, sensations as they obtain from the consumption of cannabis in another form’. Thus the fact that cannabis is a components of the drink constitutes a characteristic which determines the decision the consumer makes when he effects his purchase and therefore constitutes a fundamental characteristic of the goods for which the mark was registered, which is taken into account when a choice is made by the target public.

The IPKat is a little surprised by all of this. While he is not worldly-wise in the ways of cannabis, he has always enjoyed a good beer or three and greatly appreciates his wines and whiskies too. It would never have occurred to him that the presence of the word CANNABIS on the bottle indicated that its purchase and consumption would contain a promise of the sensation of taking cannabis, any more than it would occur to him that a bottle bearing the words BULLS' BLOOD would offer him the buzz of consuming that particular liquid.

Merpel says, I've occasionally heard people say they fancy a BLUE NUN ...

Why cats don't like cannabis here and here

R'n'D: the biggest spenders

noreply@blogger.com (Mark Schweizer) — Thu, 19 Nov 2009 08:42:00 +0000

The 2009 EU Industrial R&D Investment Scoreboard gives some interesting facts and figures on the biggest spenders on research & development - R&D that will, hopefully, also lead to some IP.

From the press release:

Worldwide corporate R&D investment increased by 6.9% in 2008, in spite of the economic crisis. With an 8.1% increase, the R&D investment growth of EU companies', defined as companies having headquarters within the EU, is significantly higher than US ones for the second year, at 5.7%, and Japanese ones, at 4.4%. Two EU companies feature in the top ten: Volkswagen in the 3 rd place with an R&D investment of €5.93 billion and Nokia in the 8 th . The world's biggest investor in R&D was Toyota Motor, with €7.61 billion. The report also shows that companies from emerging countries have the highest R&D investment growth.

Two EU companies, Volkswagen and Nokia, are among the top 10 R&D investors; five from the US, including Microsoft, and General Motors, Pfizer; and one from Japan, Toyota, at the top position (see graph above; despite the title, only the 20 largest investors are shown here. Click for enlargement).

US companies have reinforced their leading position in the high R&D intensity sector, by increasing their investments by 35% in the last four years against only 13.6% in the EU companies. While the total US high R&D intensity sector is twice the size of the EU one in terms of R&D investment, EU companies in this sector show similar performance than US competitors in terms of R&D and related indicators.

Have you ever seen two less likely allegedly similar marks?

noreply@blogger.com (Jeremy) — Wed, 18 Nov 2009 20:23:00 +0000

Although he is generally reluctant to criticise individual IP rights owners for seeking to protect their market position, and equally reluctant to criticise those members of the IP professions who represent them, there are times when the temptation to do so becomes very great.

One such occasion when the temptation became fairly strong was today, however, when on reviewing the recent crop of appeals to the Court of First Instance of the European Communities regarding Community trade mark law he came across Case T‑162/08, Frag Comercio Internacional, SL v Office for Harmonisation in the Internal Market, Tinkerbell Modas LTDA.

Tinkerbell applied to register as a Community trade mark the sign on the right. Frag opposed, citing a likelihood of confusion with the mark on the left, on account of their similarity and the identity or similarity of its goods to the goods and services for which Tinkerbell had applied to register its mark. If you look very carefully you can just about see the words "by missako" in a scribbly sort of script at the bottom of Tinkerbell's sign.

The Opposition Division, the Board of Appeal and the Court of First Instance were all united in considering that the respective sign and mark were not hugely similar. The miracle is that it took the Court some 22 paragraphs of patient, formulaic judgment to explain that the marks were dissimilar.

The IPKat has seen some dissimilar marks touted as being similar over the years, but he doesn't think he has ever seen so egregious a case of dissimilarity as this. In case he was mistaken, he took the trouble of showing the pair of them to some friends and colleagues, each of whom was totally puzzled as to how anyone could have thought them similar. Merpel adds, what's also annoying is that Frag applied to the court to reject the application for registration, even though this plea has been ruled inadmissible in a string of cases going back many years. She feels that this exercise was a waste of someone's time, effort and money and hopes that futher appeals to the Court of Justice, the United Nations and the Celestial Tribunal will not be forthcoming.

Leo v Sandoz - follow the instructions or lose the case

noreply@blogger.com (David) — Wed, 18 Nov 2009 08:21:00 +0000

According to UK and European patent law, an invention in a patent claim is not new if what is claimed has been made available to the public before the priority date of the application. There may, for example, be a clear statement in a prior published document that describes a chemical compound and how to make it, which would make a claim to that particular compound not novel. If, however, there is some doubt about whether the actual form of compound claimed would result from the described process, it needs to be determined whether following the process would inevitably arrive at the claimed compound.

This was the situation in Leo Pharma v Sandoz EWCA Civ 1188, which was decided by Lords Justice Jacob and Patten yesterday (17 November), on appeal from Floyd J's decision in the High Court earlier this year ([2009] EWHC 996 (Pat)). The case related to the chemical compound calcipotriol, a vitamin D analogue used for the treatment of skin conditions. Sandoz had been attempting to invalidate Leo's patent EP0679154 for calcipotriol monohydrate, which the patent claimed was "a new crystalline form of calcipotriol - with superior technical properties e.g. in the manufacture of crystal suspension formulations, and with superior stability properties". Whether these particular advantages were true or not was not in issue. What was in issue (among other things) was whether this crystalline form would be the inevitable result of following the instructions for making calcipotriol found in a previously published document, WO8700834.

Sandoz's task seemed therefore to be straightforward (at least to this untrained Kat): simply follow the instructions in the document and show that calcipotriol monohydrate would result. Unfortunately, this is not what Sandoz did. Instead of using the starting materials that were specified in the document, Sandoz used a material supplied by Teva that was developed only after the document was published, and instead of ensuring a seed-free environment Sandoz seeded the reaction with monohydrate crystals. These differences were sufficient to at least sow some seeds of doubt as to whether, if the instructions had been followed to the letter, the claimed compound would actually result.

Although Sandoz bravely argued that the changes would not make any difference because monohydrate crystals would be produced anyway, the judge at first instance was not convinced and found that the claimed invention was not anticipated. As only points of law were on the table for discussion at the court of appeal, Sandoz were unable to get any new decision on the facts, and failed to persuade the appeal judges that Floyd J had made any error in law. Jacob LJ summarised the situation as follows:

"One would have thought that the task of proving this would be undertaken in a straightforward way. I set it out when at first instance in Synthon's Patent [2003] RPC 33 at [57]:

'Given the "inevitable result" branch of the law of anticipation (see below) one might have thought (a) that a team of ordinary ability might have been engaged (one is concerned with the ordinary skilled man or team, not world champions) and (b) that the team concerned would simply have been given the Synthon patent and asked to carry out its teaching to make paroxetine mesylate crystals.'

Experience shows that some parties attacking patents simply do not follow this straightforward path. Instead they depart from the prior art. Then, as here, an argument starts about the nature of the departure and whether it mattered. For the life of me I cannot understand why they do this. It inflates the costs and time, and seldom if ever does the defendant any good" (paragraphs 17-18).

Sandoz's attempts at having the finding of lack of anticipation overturned therefore failed, and the appeal was dismissed.

The IPKat wonders how, given the long-running nature of this case (see the IPKat's previous posts here and here), Sandoz had failed to find the time and resources to run an experiment that simply followed the instructions correctly. The IPKat can see why, if the experiment had been run properly and had not shown the desired result, Sandoz would not want to make this known, but cannot understand how they could have thought that altering the experiment in a way that made it look as if it was fixed to get the result they wanted (by seeding with crystals of the type required) would actually succeed in getting past the critical eye of a patent judge. As Jacob LJ suggested, all this merely seems to have had the effect of further inflating costs, which presumably Sandoz will now have to pay for.

Wednesday whimsies

noreply@blogger.com (Jeremy) — Wed, 18 Nov 2009 05:51:00 +0000

Official Proclamation: for the sake of consistency and the avoidance of confusion, the IPKat and Merpel do hereby decree that the round-up features that appear on this weblog on Mondays, Wednesdays and Fridays shall henceforth be known and described as 'Monday Miscellany', 'Wednesday Whimsies' and 'Friday Fantasies' respectively. Until they next either forget or change their minds, that is ...

Only six days to go till this year's Copying Without Infringing conference (click here for details). IPKat team member Jeremy is in the chair and there are some star performers on offer. If you've never been to one of these events before, do give it a try: the mixture of up-to-date information, stimulating speakers, enthusiastic debate and a decent lunch have proved very popular on previous occasions and organisers CLT look forward to doing the same again.

The IPKat solemnly thanks his good friend Ruth Soetendorp for drawing his attention to this article, written by the comedian Dave Schneider in last weekend's Sunday Times on the subject of Joke Theft. Some examples of stolen humour appear here [IPKat Advisory: not all these jokes are suitable for sensitive readers; Merpel Advisory: not all these jokes are funny ...]. On a more serious note, Ruth wonders what the test of theft/infringement is. Good point: does one indulge in a side-by-side review? A global comparison, perhaps? Or does one ask if the later joke takes the pith and marrow of the earlier one?

The IPKat's datonomite friend Rosie Burbidge informs him that the appeal for cookie recipes for the Datonomy data protection weblog is progressing nicely. Recipes are arriving from locations as disparate as Anglesey and Australia: the total received so far is 9. If you'd like to have your cookie considered for inclusion in the Datonomy Cookie Cookbook, please email Rosie here.

Though he doesn't often post items from The Onion, the IPKat has a tendency to find them quite amusing, particularly when they have an intellectual property flavour to them -- like this treatment of the Yankees Suck theme. The Kat thanks his good friend Miri Frankel (Beanstalk) for yet another great lead!

A press release from WIPO yesterday announced the launch by that organisation of an enhanced online patent information service that promises to improve public access to information on patents filed and granted around the world. This enhancement relates to PATENTSCOPE, which currently hosts data on more than 1.6 million international patent applications and which has now been extended to include several collections of national and regional patent information.

Recently published: the November 2009 issue of the Journal of Intellectual Property Law and Practice has been out for a week or so. You can read the editorial ("Community design and design community") here, check out its contents on the JIPLP official website or browse the value-added benefits of the recently-launched weblog.

Taking umbrage with Umbro, or a strange way to license a sports brand

noreply@blogger.com (Jeremy) — Tue, 17 Nov 2009 15:40:00 +0000

It's amazing how you can go for ages without coming across a good case involving brand licensing issues, then suddenly two come along in quick succession. Having only recently reviewed the logo sponsorship deal in Force India v Etihad (see earlier post here), the IPKat finds himself perusing Hudson Bay Apparel Brands LLC v Umbro International Ltd [2009] EWHC B28 (Ch), a Chancery Division (England and Wales) decision of Deputy Judge Mark Herbert QC, dating back to 4 November 2009.

Umbro, an English company [owned by Nike] which enjoyed the fruits of an international licensing business based principally on football products, owned the UMBRO and 'double diamond' brands (see illustration, above right). Umbro's Delaware-based subsidiary handled its business in the United States. Hudson Bay, a small US company, made and sold branded apparel. In 2006-7 Umbro granted two separate licences, one to Dick's Sporting Goods -- a major retail company -- and the other to Hudson Bay. These licences permitted the licensees to sell soccer-based clothes. Hudson Bay was licensed to sell 'off-field' leisurewear for spectators, while Dick's was licensed to sell 'on-field' clothing for use by fans on the field of play. Neither Hudson Bay nor Dick's was licensed to sell 'teamwear' for use by actual teams in competitive matches, since Umbro handled teamwear itself, without the intervention of licensees. The licensees apparently enjoyed a large degree of freedom in terms of being able to design their own products, which were then submitted to Umbro for its approval.

In these proceedings Hudson Bay sued Umbro for specific performance, alleging that Umbro was in breach of the terms of an exclusive licence granted to it by by permitting Dick's to market certain 'off-field' items and had hindered it from exploiting its 'off-field' licence in breach of an implied duty of co-operation which, Hudson Bay claimed, Umbro owed it. Umbro said it had acted within its rights under the licensing contract and that the material marketed by Dick's had only been 'on-field' wear. Umbro also counterclaimed that it was actually Hudson Bay that was in breach by marketing 'on-field' wear in the form of 'pocketless soccer basics' -- shirts and shorts made without pockets but which resembled items used on the field of play as 'teamwear'.

The Deputy Judge ruled as follows:

* Rather than ask what the parties intended, the proper approach was to try to identify objectively what a reasonable person, having regard to all the background knowledge which the parties had, would have understood them to have intended when using the language of the licence itself.

* In the licence, 'field of play' meant the actual field of play in a game of soccer, including informal and practice games. On this basis, clothes specifically intended for that sort of use were the clothes excluded from Hudson Bay's licence.

* On the evidence, by letting Dick's market certain garments that fell within the scope of 'off-field' wear, Umbro was in breach of the exclusive licence. However, the 'pocketless soccer basics' (which crossed the line between off-field and on-field wear) were not 'off-field' wear per se and the parties' agreement did not authorise Hudson Bay to market them. Any permission to sell the 'pocketless soccer basics' would have required rewriting the licence.

* Umbro might have inadvertently granted exclusive licences to Hudson Bay and Dick's which covered the same descriptions of goods; if that was so, since Umbro did not have authority to grant an exclusive licence for overlapping products and would be in breach of the warranty under the agreement.

* There was an implied term of cooperation to the effect that Umbro could not refuse to consider products submitted for approval and Umbro were in breach of that term by refusing, albeit temporarily, to approve Hudson Bay's new range.

* Umbro was not expressly required under the licence to provide guidance and direction to Hudson Bay for the purposes of product development, however sensible it would be in business terms to do so; Umbro's actions or inertia couldn't stop Hudson Bay submitting designs and materials for approval did not therefore constitute breaches of any implied term.

* It was difficult to understand why Hudson Bay sought specific performance of the agreement when it already had an exclusive licence to sell goods bearing the Umbro brands. A more specific order relating to the breach of the agreement is what was actually needed. Accordingly (i) declaratory relief was granted to the effect that Umbro was in breach of the agreement and (ii) an order was made for damages to be assessed.

The IPKat hates to sound repetitive, but in the cold light of day and with the benefit of hindsight there surely must have been a better way for Umbro to exploit the power of its brand without generating enmity between itself and a licensee in this manner.

Cats playing football here

The greatest footballing cat here

Soccer cat commercial here

EPO - many more changes coming next year

noreply@blogger.com (David) — Tue, 17 Nov 2009 08:00:00 +0000

Contrary to initial impressions, the EPO Administrative Council meeting a couple of weeks ago was not a complete waste of time. Although the AC failed to elect a new President (see here, here and here for more details), they did manage to pass several new Decisions, which have recently been announced on the EPO website. These are:

Many of the changes, which are to be implemented at various dates in 2010 and early 2011, are to do with the new supplementary search that is now available for international applications under Rule 45bis PCT. This has unfortunately resulted in the structure of partial refunds available from the EPO now becoming too complex for mere humans (let alone cats) to comprehend. Fortunately, the IPKat estimates that most applicants will be unaffected by this in any meaningful way.

Other changes involve a general increase of fees across the board of around 5%. As far as the IPKat can tell, there will thankfully be no further dramatic rises in any fees this time round.

One further change that will have a more clear and widespread effect is the introduction, as from 1 January 2011, of a deadline for providing information on prior art, under an amended Rule 141 and a new Rule 70b EPC (see CA/D 18/09 for details). This will create a new two month deadline for providing the results of a search carried out by another authority, or for stating why these results are not available.

Why all these changes (except perhaps the 5% fee increases) are necessary is quite beyond the IPKat's understanding, but perhaps some of his more enlightened readers can help...

"The most happening times": so what about IP transactions?

noreply@blogger.com (Jeremy) — Tue, 17 Nov 2009 05:50:00 +0000

The IPKat's friend Aaradhana Sadasivam (KhattarWong) has been pondering on the impact of the world at large upon the content of IP licences. She writes:

"We all have to agree that we are alive in the most happening times [The IPKat has not come across this term before but rather likes it and thinks he might start using it too ...].

Right: even the best of IP licences can be stumped by unforeseen post-contractual events ...

The occurrence of SARS, tsunamis, floods, land slides, storms, H1N1, earthquakes, and (let's not forget) shorter and sharper economic cycles has changed our lives for ever. These events have duly left their impressions on the relevant IP laws all over the world. IP laws were amended to deal with the natural calamities [Some, perhaps ...]. In addition, there have been escalated sensitivities to IP protection, close scrutiny of the provisions of compulsory licensing, parallel imports, use of IPs under national emergencies, use and abuse of monopolies etc. The changing landscape, coupled with this new attitude, has resulted in a lot of jurisdictional peculiarities added to the IP laws.

Therefore a number of questions arise: do these jurisdictional peculiarities find their way into transactional documents at all? Especially when some of the peculiarities could potentially affect the dynamics of transactions, and may even catch the parties involved completely unaware and cause them loss. If jurisdictional peculiarities are not taken into account, then why are they not taken into account? What could be the reasons? How often do the parties affected end up in courts becuase of the omissions of jurisdictional peculiarities in their transactional documents? Is there any relevant caselaw? Or are the elements are covered elsewhere? I would really love to hear readers' experiences".

So would I, says the IPKat. Please post your comments below and/or send them to Aaradhana here.

Race team finds winning formula in court

noreply@blogger.com (Jeremy) — Mon, 16 Nov 2009 15:13:00 +0000

Litigation over sponsorship deals is not such a common event, so the IPKat was delighted to have a chance to read up on the reality behind the glamour. The case he has just been looking at is Force India Formula One Team Ltd v Etihad Airways PJSC and Aldar Properties PJSC [2009] EWHC 2768 (QB), a Queen's Bench (England and Wales) decision of Sir Charles Gray on 4 November 2009. This was an action by Force India for damages from Etihad, the cause of action being an alleged repudiatory breach of a sponsorship agreement.

Etihad, which ran a national airline, agreed to sponsor a Formula One motor racing team for three seasons. The agreement provided that Etihad's name would be integrated into the team name; the team would not enter into any arrangement that might conflict with Etihad's activities; Etihad would be the airline exclusively associated with the team; Etihad was obliged to pay the team a performance-related bonus; the team could choose to source another sponsor but, if it did so, Etihad was entitled to exercise a range of options including the option to terminate the sponsorship agreement. The agreement could also be terminated upon written notice by Etihad, if the team owner had committed a material breach which, though capable of remedy, had not been remedied within 10 business days.

Force India acquired the Formula One team. At this point one of the news owners, who had an interest in Kingfisher -- a company which owned and operated an airline -- changed the livery on the cars for winter testing to include Kingfisher's logo; it was disputed whether Etihad had consented to that change. Some three months after the acquisition, Force India emailed Etihad, proposing to amend the sponsorship fees. Etihad wrote back that it took the email to be notice of Force India's intention to exercise its right to source an alternative sponsor and that Etihad was accordingly terminating the agreement. According to Etihad, (i) Force India was in breach of the agreement by using the Kingfisher logo, changing the team name and using new livery. Its notice therefore constituted an acceptance of the antecedent repudiation of the agreement by Force India; (ii) Force India could not claim for the loss of a chance of obtaining bonus payments for the points scored in the second and third years of the agreement since, at the apparent date of Force India's acceptance of the repudiation, the possibility of such bonuses accruing to it was speculative.

Sir Charles Gray upheld Force India's claims.

* Force India had told Etihad that the Kingfisher logo would be on the car during testing. At that time, the only concern raised by Etihad was that the car livery should not include a reference to the Kingfisher airline.

* The limited use of the Kingfisher logo in the new livery was not a material breach by Force India of its obligations under the agreement. Even if it had been, such breaches were remediable: all Force India needed to do was to remove the Kingfisher logo for the rest of the winter testing. It was up to Etihad to give notice asking the breaches to be remedied (the same considerations applied to the change of team name).

* There was no evidence to show that the acquisition by Force India was specifically for the purpose of promoting the Kingfisher airline.

* It was hard to reconcile (i) the duty of Force India not to enter any deal that might be deemed to conflict with Etihad's activities and the provisions that Etihad would be the exclusive airline brand associate with the team, with (ii) the clauses enabling Force India to source or obtain and contract with another sponsor.

* From the date Force India took over the team till the date of the letter of termination from Etihad, the latter elected not to exercise any right it might otherwise have had to terminate the contract. The various breaches of contract relied upon had been waived by Etihad or acquiesced in by their conduct over that period.

* On this basis, Force India was entitled to damages for the wrongful termination of the agreement and for the bonus for coming one from last in the constructors' championship. Force India's team had gained points in the second and third seasons which, under the agreement would amount to a points bonus; this was recoverable by way of damages.

The IPKat thinks this is an example of a sponsor alternately taking too little interest and then too much interest in the activities of its chosen licensee. As ever, good faith, good planning and good day-to-day management are pretty well foolproof if you want to keep out of court. Merpel says, what good fortune, to pick up bonus points even for one from last in the constructors' championship ...

Formula One here

Formula Two here

Formula Three here

Formula 21 here

Great Scott!

noreply@blogger.com (Jeremy) — Mon, 16 Nov 2009 11:00:00 +0000

All but the IPKat's most recent readers will recall his post earlier this month about the sad saga of Wal-mart's UK presence Asda not being able to face an early date for a trade mark infringement trial because its legal team from Pinsent Masons was busy filling shelves as part of a getting-to-know-you exercise for its giant client.

The IPKat, having wondered what Asda would have to make its shoppers pay if it charged its shelf-stackers out at their usual hourly rates, then let Merpel have her way by running a caption competition. Merpel offered 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 below, generously opening the competition even to employees of Asda and Pinsent Masons.

Here are the best entries:

* "Try our fresh Pannone! Rain-drenched in Manchester, they sparkle with entrepreneurial zeal! Only half the price of regular brands" (Mark Anderson)
* "To the right, lawyers for the defendant stand proudly by their prize for preparing the best defence for their clients. To the left, lawyers for the claimant ... who clearly didn't go to Specsavers" (Dinusha Sirisena)
* "Asda launches new product line: BOGOF solicitors" (Anon)
* "Should have gone for Penguins ..." (Steve Kuncewicz)
* "Pinsents' employees of the month enjoy their reward of 3 days stacking shelves at ASDA - 'beats being in the office, they chimed in unison'" (Michael Burdon)
* Woman in red: "It was either here or an NQ position at Lovells" (Gilman Grundy)
* "Hard-up Asda lawyers receive payment in first-of-its-kind 'no win, no TV' conditional fee agreement" (Scott Roberts)
* "Prices so low you can't even see them" (Jeremy Pennant)
* "Asda's in house legal team send a clear message on fees to their external legal advisors" (Ben Mooneapillay)

There were some other very funny entries which, alas, couldn't be listed. Three were definitely defamatory, one might well have been, two were a bit too rude for a blog which prides itself on being good reading for all the family. There were also a couple of entries that were very long and so unfunny that they could have been written by Ibsen -- which made them very funny but not for the right reason. Merpel, who has not been tasked with judging a competition on this blog before, found it difficult to decide between them. In the end she opted for Scott Roberts' entry. Well done, Scott, a copy of the prize will be winging its way to you later this week.

Monday miscellany

noreply@blogger.com (Jeremy) — Mon, 16 Nov 2009 05:54:00 +0000

Following the mention of The Logo Game in last week's Friday Fantasies, the IPKat has received, courtesy of Shoosmiths' Joe Stephenson, this informative snippet from the game's manufacturer Drummond Park, together with his own comments in square brackets:

"The Logo Board Game of things you know and love [I KNOW WHAT YOU'RE ALL THINKING...AT LAST!] . For 2-6 players aged 12 to Adult. Our life is full of things. [AN ALARMINGLY STARK AND PHILOSOPHICAL STATEMENT TO MAKE IN THE CONTEXT OF A BOARD GAME?! OH WAIT….MY MISTAKE….READ ON] From chocolate to cereal, football to flowers--and they all have logos. The Logo board game is all about those logos and the things wrapped up in them [WRAPPED UP IN THEM? ARE THEY REFERRING TO THE PRODUCT OR THE CONSUMER?]. It taps into the knowledge we've piled up over our lives [SOUNDS PAINFUL] and adds a few astonishing facts and surprises to entertain the whole family. It's easy to learn and fun to play . Just answer the questions to leap around the board. The first player to answer correctly in the winning zone wins [REASSURING, IF NOT A LITTLE CONVENTIONAL. STILL AT £24.95 IT SOUNDS A BARGAIN]".

Yes, indeed, says the IPKat ...

The IPKat's attention has just been drawn to the curiously-named case of Glaxo Group Ltd v Patents Act [2009] IEHC 277, a decision of the Irish High Court (Mr Justice Charleton) of 26 June. It's not every day that the Kat stumbles across a 153-paragraph decision of this court on the intricacies of patent invalidity and inventive step, and it reads well too. Taking much the same line as the European Patent Office regarding inventive step and the problem-solution approach, the judge reached the same decision -- regarding Glaxo's patent for Seretide (that's Advair in the US) as was reached in the United Kingdom.

The decision last Thursday of the Court of Appeal (Criminal Division), England and Wales in Patel and Hussain v R [2009] EWCA Crim 2311, is a useful reminder that people who sell counterfeit VIAGRA, not to mention other medicinal products, may find themselves facing more than the ire of the trade mark owner Pfizer. They may also face prosecution under the Medicines for Human Use (Marketing Authorisation etc) Regulations 1994, SI 1994/3144 -- which implemented Council Directive 2001/83 on the Community code relating to medicinal products for human use. In the case of infringements which in civil terms may not be cost-effective to pursue, the criminal process may come in handy.

The IPKat's Italian friend Cristiano Cori, recalling the Kat's curiosity about burger empire McDonald's efforts to reserve the 'Mc-/Mac-' prefix for itself (see eg the Kat's earlier post here), writes to inform him of a recent episode in Italy. It seems that McDonald sent a cease and desist letter to a small Italian entrepreneur who had filed with the Chamber of Commerce of Turin (in its local office of Rivoli) the trade mark "Mac Bün" (in local dialect this means "only good"), in respect of for "agrihamburgers" consisting of the meat of the trade mark applicant's own cows. Like all good lawyers, Cristiano cite his sources (here, here and here) -- but il IPGatto isn't very good at Italian so he hasn't had a chance to savour them to the full. On the left you can see what is now the "M** Bün Slow Fastfood" restaurant. Interesting ...

Letter from AmeriKat: Bilski v Kappos

noreply@blogger.com (Annsley Merelle Ward) — Sun, 15 Nov 2009 23:10:00 +0000

Yesterday the AmeriKat was walking through the V&A’s new Maharaja exhibit, absorbing all the luxuriant turquoise and gold colours speckled through miniature watercolours and 245 karat diamonds inlaid in jewelled encrusted necklaces. The exhibit was a thankful burst of sunlight on a blustery Fall day. The exhibit follows the changing societal and political role of the maharajas from the 18th century to the mid-20th century. With British control of over three-fifths of the Indian sub-continent, India was called the jewel in the British Empire’s crown; an Empire where the sun never set.

Not “everything under the sun”

The sun may have never set during the height of the British Empire, but it appears to be setting on Bilski v Kappos following the oral arguments last Monday before the Supreme Court (see IPKat’s mentions of Bilski here). All Justices, according to the Wall Street Journal’s Supreme Court correspondent Jess Bravin, appeared to be “sceptical and at times scornful ... to arguments that there should be broader patent protection for ‘business methods’”. The AmeriKat read the transcript of the oral arguments presented last week and to her it was like reading the verbal equivalent of watching a Kat paw at a spider for an hour before finally eating it. For the benefit of IPKat readers she has summarized and picked out the pertinent parts of the arguments. For a brief summary of the case please see IP Finance article here.

Mr J. Michael Jakes, appearing on behalf of the Petitioners (Bilski and Warsaw) opened the arguments by stating that the Federal Circuit’s decision test for “machine-or-transformation test” was too rigid and narrow for all patent-eligible methods and must be reversed. Mr Jakes stated that the requirement that any and all methods must be tied to a particular machine or transformation does not find any basis deriving out of Section 101, anywhere in the patent statute or the Supreme Court’s precedents. Mr. Jakes argued that the purpose of patent law was to “accommodate unforeseen advances in the useful arts” and the patent at suit did not fall foul of the exceptions.

Referring to European patent law, Justice Ginsburg stated “they [Europe] do not permit business method patents. It has to be tied to technology, to science or technology. So if other systems are able to work with the notion of technology-based, why not ours?” Mr Jakes agreed but recognized that defining ‘technology’ is problematic by stating that these systems have defined “technology in such a way to exclude business methods. And I don’t think we can do that.” He went on to support this proposition by citing the significant expansion of technology in the past 100 years in fields previously unimaginable.

Mr. Jakes premised the majority of his submission on the Diamond v Diehr decision. Justice Stevens was clearly unimpressed by the strength of this precedent, stating that case was “nothing like this patent.” Mr Jakes countered that the general language in the opinion outlined the general principles of patentability he relied upon but distinguished the case in that the invention there was

“an industrial process of the conventional type, because it was a method of curing rubber. But today the raw materials are just as likely to be information or electronic signals, and to simply root us in the industrial era because that’s what we knew I think would be wrong and contrary to the forward-looking aspect of the patent law.”

Justice Sotomayor questioned that “wasn’t that what the Federal Court was trying to explain, which is that there has to be something more substantive than the mere exchange of information; that it has to involve – it used the word ‘transformation’.” She added that the Federal Circuit had not defined the extent and scope of what it meant by the word ‘transformation’, i.e. so what’s the problem then?

Mr Jakes argued that, by rigidly applying the transformation test, as had been done in the Federal Circuit, what the courts are doing is excluding possible patents where a “transformation” is not strictly necessary. For example, he argued, “even [Alexander Graham] Bell’s claim, the claim to transmitting sound using undulating current, wouldn’t necessarily pass the transformation test.”

Mr Jakes stated that where a patent does not satisfy the transformation test and thus should arguably not be patentable, that same patent would also fail the obviousness test. Therefore, instead of overly restricting the concept of patentability and limiting potential useful patents at the first threshold, the exercise should instead occur at the point of obviousness. This echoed the argument that has taken place regarding the EPO’s “any hardware” approach versus the UK’s “technical effect” approach in business-methods patents. Where the UK may knock out a business-method patent at the point of “invention”, the EPO would knock out a business method patent at the point of inventive step. Although the practical effect of whether a patent fails at the invention stage of the assessment, or at subsequent stages (inventive step) may be indistinguishable, this is not satisfactory. The questions asked at these different stages are premised from completely different perspectives. The AmeriKat, thus, in this respect disagrees with Mr Jakes’s premise that the question could just be shoved down the line of assessment, so to speak. That in effect, just passes the buck from “what we should patent?” to “”whether the patent is obvious?” without taking into account the independent and distinct purposes of these questions.

There was subsequent back and forth argument between Mr Jakes and Justice Scalia regarding what exactly is a “physical transformation” before Mr Jakes ended his opening submissions (at pages 24-25).

Mr Malcolm L. Stewart, Deputy Solicitor General, did not have much more of an easy time. Essentially, Mr Stewart’s argument came down to the point that the Government did not think that “this case would provide a suitable vehicle for resolving the hard questions because the case doesn’t involve computer software or medical diagnostic techniques.”

Left: "a suitable vehicle for resolving the hard questions ..."

This echoed Justice Sotomayor’s concern earlier in the arguments (at page 29) that a decision that would allow an expansive approach to allowing business-method patents like the one in suit, could have potentially detrimental impacts in the biomedical world.

The various press reports of the oral submissions seem to indicate that Bilksi’s case is doomed. This case seems to be headed to a decision which will not, in Justice Ginsburg’s words, make “any bold steps”. For further reports please see these articles in the Wall Street Journal, New York Times, and the Washington Post.

And now for something lighter

Always a fan of Justice Breyer, the AmeriKat enjoyed his numerous comedic moments throughout the oral arguments; in particular when he questioned Mr. Jakes regarding a far-fetched patent idea:

“So you are going to answer this question yes. You know, I have a great, wonderful really original method of teaching antitrust law, and it kept 80 percent of the students awake. They learned things --- (laughter). It was fabulous. And I could probably have reduced it to a set of steps and other teachers could have followed it. That you are going to say is patentable, too?”

Mr Jakes replied “potentially”. Sigh!

Question: What do the Kats and the Kappos have in common?

Answer: They both blog! David Kappos, director of the USPTO has begun his blog in order to, in his words, “foster as active and open a dialogue as possible with our stakeholders...I hope this will be a useful vehicle for sharing ideas and concerns on a regular basis.” The topic of his first posting unsurprisingly had to do with post-grant reviews and first-to-file procedures. To give Kappos and the USPTO some feedback, please see his blog here.

Right: is this the IPKapp?

Bundesgerichtshof refers human stem cell patent case to ECJ

noreply@blogger.com (Mark Schweizer) — Sun, 15 Nov 2009 14:38:00 +0000

In a dispute between the acclaimed German scientist and inventor Oliver Brüstle and Greenpeace about the patentability of Brüstle's German patent DE 19756864, the Bundesgerichtshof has last Thursday decided to refer to the ECJ questions regarding the interpretation of art. 6 of Directive 98/44/EC on the legal protection of biotechnological inventions.

Greenpeace had filed for nullity of Brüstle's patent asserting that it was against public moral ("sittendwidrig"). The patent claims the use of certain cells for the treatment of neural deficiencies such as Parkinson or multiple sklerosis. Originally, the stem cells were derived from blastocysts (whether that's an embryo is the issue), but, as Oliver Brüstle points out, they have long been cultivated outside the human body. Greenpeace argues that this is irrelevant: at the beginning of the chain was a human embryo, and an embryo had to be killed to harvest the cells. It was against art 2 of the German Patent Act, which corresponds to art. 6 Directive 98/44/EC , to grant patents for uses of human embryos for commercial or industrial purposes. Art. 6 Directive 98/44 reads:

1. Inventions shall be considered unpatentable where their commercial exploitation would be contrary to ordre public or morality; however, exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation.
2. On the basis of paragraph 1, the following, in particular, shall be considered unpatentable:
(a) processes for cloning human beings;
(b) processes for modifying the germ line genetic identity of human beings;
(c) uses of human embryos for industrial or commercial purposes;
(d) processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal, and also animals resulting from such processes.

The German Patent Court (Bundespatentgericht) partially revoked Brüstle's patent in 2006. Greenpeace argues that human life starts with the fusion of sperm and ovum, and blastocysts are embryos in the sense of the law. Brüstle counters that in the UK, France, Spain, Sweden and Denmark the term "embryo" is only used for fertilized eggs 14 days after fertilization. The patent claims the use of stem cell lines which were harvested from blastocysts 4-5 days after fertilization, and therefore before the blastocyst can be rightfully called an embryo. In a less legal vein, Brüstle likes to point out that his research is largely funded by the German government - the same government that now says the results of the state-funded research are against public morale...

The ECJ will now have to rule on the interpretation of "human embryo" in the sense of art. 6 Directive 98/44/EC. Is a stem cell derived from a blastocyst which has lost its ability to develop into a human still an embryo? If so, is a blastocyst a human embryo? If so, is purely therapeutic use of stem cells a "commercial or industrial purpose" in the sense of art. 6?

The stakes are high - the ruling could make or break a lot of biotech applications claiming the use of human stem cells.

If all this sounds vaguely familiar to IPKat readers - well, it is; the EPO's Enlarged Board of Appeal last November ruled on a similar question and revoked a patent describing a method for obtaining embryonic stem cell cultures from primates, including humans, filed by the Wisconsin Alumni Research Foundation (WARF) in 1995, because it involved the destruction of human embryos (G 2/06); IPKat post here.

Ferrero v FIFA (in the World Cup trade mark dispute) -- 1:0 says the German BGH

birgitclark@hotmail.co.uk (Birgit) — Fri, 13 Nov 2009 13:37:00 +0000

The German Federal Supreme Court (Bundesgerichtshof, "BGH") has today published its decision in a trade mark dispute between FIFA, the world football body, and Italian sweets company Ferrero concerning football World Cup trade marks, which Ferrero GmbH, Ferrero's German subsidiary, had registered. The court's decision is not yet available in its entirety but the court's press release (no. 232/2009 of today's date), on which this report is based, clearly indicates the score of this trade mark match: 1:0 for Ferrero.

So what was this dispute about? FIFA, based in Switzerland, organises the football World Cup and not surprisingly also owns numerous trade marks that relate to the football World Cup 2006, which was held in Germany, as well as trade marks relating to the upcoming World Cup to be held in South Africa next year.

FIFA tried to cancel Ferrero's numerous World Cup trade mark registrations arguing that the Italian sweets maker had no rights to register marks such as "WM," short for Weltmeisterschaft "World Cup" or "2010" in reference to next year's football World Cup in South Africa. FIFA has an obvious interest in controlling its World Cup franchise and claimed that Ferrero's trade mark registrations were an infringement of Germany's unfair competition law.

During past world cup tournaments, Ferrero had distributed free collectible stickers showing each player in the German national team with its Hanuta and Duplo chocolate wafers - and this Kat admits that in days gone by, she used to collected them herself.

The courts of the lower instances, the LG and OLG Hamburg, had both decided in Ferrero's favour. The German Federal Supreme Court agreed and ruled that FIFA could neither base its cancellation claim on trade mark law nor on unfair competition law. The court's press release states that there was no likelihood of confusion between both parties trade marks. (IPKat comment: yes, I am wondering about this bit too: what were the marks? What exactly did FIFA's marks cover? We don't know and the press release unfortunately doesn't tell us.)

Furthermore, the court further decided that FIFA could also not base its claim on the "work title rights" ("Werktitel"- a German quirk) it owned for "WM 2010", "GERMANY 2006" and "SOUTH AFRICA 2010". The judges ruled that FIFA was also barred under unfair competition law, including the so called "general clause" as stipulated by section 3 of the German Law of Unfair Competition (UWG).

Ferrero's trade marks did not influence the consumers to assume that the defendant (Ferrero GmbH) was an official FIFA sponsor. The court held that Ferrero did not unfairly block FIFA's efforts to market the World Cup events via licensing through sponsors. FIFA's basic constitutional right to commercially exploit the tournaments it organises did not extend so far that it could prevent all types of third party exploitation of this sports event.

This should be a very interesting decision to read (once the reasoning is available): with potentially far reaching consequences for organisers of sport (and other events) that seek to financially exploit its events.

Case reference: Bundesgerichtshof, I. Zivilsenat , I ZR 183/07 "WM-Marken" - to read the court's press release, please click here (in German!).

Friday fantasies

noreply@blogger.com (Jeremy) — Fri, 13 Nov 2009 11:15:00 +0000

Can't find that newsy item on the IPKat? It might be on one of the Kat's cousins, a list of specialist blogs you can find in the side bar.

Have you checked the IPKat's list of Forthcoming Events? There's plenty coming up, as you can see from the side-bar on the IPKat's front page.

If you're concerned by cookies, take heart: Rosie Burbidge, a new recruit to the Datonomy blog-squad is doing something about them. Having spent many hours contemplating the data protection issues, Rosie has decided to make cookies more appealing -- she's compiling a collection of recipes for cookies (as in the US English terminology for 'biscuits') and hopes to publish the best of them in the Datonomy Cookie Cookbook, a useful research resource which will be made available online in due course. If you have a good cookie recipe, email Rosie here (she's hoping to get recipes from at least every country within the European Union, if not beyond).

The amazing thing about the Competition Law Association, whose meetings the IPKat has been known to attend (and even address ...) is how it provides a safe environment for IP lawyers and competition lawyers to come together and discuss the topics on which their interests intersect without actually killing one another. Anyway, the CLA has an exciting seminar coming up next Wednesday evening at which Henry Carr QC, who represented the famous perfume brands against the smell-alikes in L'Oréal v Bellure, is speaking on the IP/unfair competition aspects of the ECJ's ruling in the comfy climate of Milbank Tweed's London office. Details here.

The IPKat says "thank you" to his friend and respected colleague Duaa Izzidien, for introducing him to the Logo Board game which, with seasonal shopping as an imminent risk, looks most appealing. Merpel's not so happy though: she has sniffed around the outside of the box and hasn't detected any evidence of her favourite brand of cat food ...

Are you clever, experienced in IP and have some time on your hands? The Journal of Intellectual Property Law & Practice is still in need of a few more peer reviewers. If you think you might be the right person, please email IPKat team member Jeremy here and give him a brief note of your background and interests. This role may suit someone who has recently retired and is pining for IP, or who has recently lost a job but wants to stay in touch. Further details of JIPLP can be found on OUP's website here.

Keep an eye on QUEDOS: that's the catchy acronym of the Queen Mary Centre for Enterprise and Development Opportunities in Society. You can find out lots more about it here. Its Academic Director is the IPKat's friend, the respected IP scholar Professor Johanna Gibson, and the Kats wish it the best of luck.

The IPKat thanks his friend Theo Verlaan for sending him this precious judgment from a US Court of Appeals for the Sixth Circuit in Bridgeport Music v UMG Recordings: it relates to copyright in a song entitled Atomic Dog, and in particular infringement of the "Bow wow" refrain, which goes "“Bow wow wow, yippie yo, yippie yea” (briefly noted on the 1709 Blog here). Whatever many folk feel about copyright lawyers, the Kat is sure that George Clinton must have a soft spot for them.

Gratitude goes to veteran IPKat reader Lee Curtis for this link to this CNN Money item, "Porsche Cayman vs. Crocs Cayman", about a slightly stupid spat between a distinguished manufacturer of to-die-for motor cars and the maker of popular plastic footwear. The IPKat would never have bought the Crocs Cayman shoes were it not for their association with Porsche. He was most disappointed that, putting them through their paces on the open road, he couldn't get much more than 3 mph (4.8 kph) out of them. Mind you, their fuel economy was terrific.

Right: "My other Porsche is a Crock ..."

Around the blogs. The 1709 Blog has got an English translation of last week's Norwegian District Court decision not to order ISP Telenor to sever online access to The Pirate Bay. Patent litigation specialist weblog PatLit, no doubt buoyed by the recent batch of posts on European and UK patent litigation reforms, has just welcomed its 400th email subscriber. Patently-O is running a survey on attitudes here towards how disruptive a shift to first-to-file might be for US patent practice.

Lord Hoffmann on Patentability of Software and Business Methods

noreply@blogger.com (Tufty the Cat) — Fri, 13 Nov 2009 08:00:00 +0000

Following the astonishing news from New Zealand that I had been mentioned in a speech by Lord Hoffmann there (more details here), I attended an event last night that was organised by the Midlands Intellectual Property Society (no web presence, unfortunately), at which the eminent Lord was the star attraction.

After a very noisy dinner at the Metro Bar and Grill that made my poor ears hurt, the group slipped off down the road to Hammonds HQ in Birmingham to hear Lord Hoffmann speak on the subject of the moment, patentability of software and business methods.

Along with the expected mention of my observations on G 3/08, with which he fully agrees, Lord Hoffmann's main point was to demonstrate that there are two over-arching principles that can be applied to the exclusions of Article 52 EPC that make some sense of the EPO 'technical character/effect' test that confuses so many people (and cats), including at least one English Court of Appeal judge and the current EPO President. These principles can be described as the practical application principle and the human behaviour principle. The former principle applies to some of the non-inventions listed in A52(2) EPC, while the latter applies to the others. If I remember right, Lord Hoffmann divided them up as follows:

Practical Application Principle: discoveries, scientific theories and mathematical methods, aesthetic creations, presentations of information, and programs for computers;
Human Behaviour Principle: schemes, rules and methods for performing mental acts, playing games or doing business.

The reasoning goes something like this: Non-inventions in the first category do not in themselves have practical application, so should not be patentable in themselves, but they might in some cases have the capability to support a patentable invention, for example in the way that a new computer program can support an invention if there is a practical application (or 'further technical effect', if you prefer). Non-inventions in the latter category are aspects that cover human behaviour, so should not be patentable for this reason alone, even though they may very well have practical application (such as new tactics in football or new ways of investing money). An example that was given is a new method for a pilot to use when performing take-off in an aeroplane that minimises noise.

I am not yet sure if this new way of describing the bounds of what should and should not be patentable is workable or consistent, but it certainly seemed to make sense at the time, and definitely makes a lot more sense than the confusion that is going on with the situation in the US with the Bilski case. Whether it can be put to good use in Europe is another matter, particularly given that it seems likely the EPO Enlarged Board will also agree with me. Do the IPKat's readers have any further thoughts on this idea?

Dámaso Ruiz-Jarabo Colomer

noreply@blogger.com (Jeremy) — Thu, 12 Nov 2009 13:16:00 +0000

It is with the greatest sadness that the IPKat has just learned of the death last night, at the early age of 60, of Dámaso Ruiz-Jarabo Colomer. An Advocate General at the Court of Justice of the European Communities for nearly 15 years, he passed away on the day following the hearing in Case C-49/08 P Lego Juris v OHIM (the 'Lego brick' appeal against this decision).

A strong-minded and independent thinker, Dámaso contributed very greatly to the development of the role of the Advocate General in guiding the Court's thoughts; indeed, together with Manuel López Escudero he wrote The Institution of Advocate General at the Court of Justice (here), which demonstrates his view of the positive influence of the Advocate General, whose individual position was able to be more juridically coherent than the collegiate fudge with which readers of the Court's judgments are so familiar.

His most recent IP Opinions have involved the conflict between trade mark law and other rights: protected national emblems were at issue in the 'battle of the maple leaves' in Joined Cases C‑202/08 P and C‑208/08 P American Clothing Associates SA v Office for Harmonisation in the Internal Market and Office for Harmonisation in the Internal Market v American Clothing Associates SA, while in Joined Cases T-225/06, T-255/06, T-257/06 and T-309/06 Budějovický Budvar, národní podnik v Office for Harmonisation in the Internal Market, Anheuser-Busch, Inc it was the intersection of trade marks with geographical indications that was at stake. Then in Joined Cases C-468/06 to C-478/06 Sot. Lélos Kai Sia EE (and Others) v GlaxoSmithKline AEVE it was the complex interrelationship between trade mark licensing and competition which came under his keen scrutiny.

There are almost too many trade mark cases to mention. The roll-call includes Adidas, Adam Opel, Elizabeth Emanuel, Picasso/Picaro, and what for most English practitioners will be his most notorious role, in Arsenal v Reed -- where the authorities cited by the learned Advocate General included the late Liverpool Football Club manager Bill Shankly -- all these cases crossed his desk on their way to their final judgment.

It was not just in the field of trade marks that Dámaso made an impression. Copyright too was at his fingertips. Thus in Case C-240/07 Sony Music Entertainment (Germany) GmbH v Falcon Neue Medien Vertrieb GmbH it fell to him to consider whether old Bob Dylan recordings were still protected by copyright in Germany. An indefatiguable and retentive researcher with the ability to make 'links' where others saw no connection, Dámaso provided amply-referenced footnotes which might substitute for an economic and cultural history of the Western world in the absence of any better source.

Say the Kats in unison: we may not have agreed with everything he wrote, but we all agree that we shall all miss him. Our thoughts are with his family, his friends and his colleagues: may they be spared all further sorrow.

Fakes in transit: the Belgian question

noreply@blogger.com (Jeremy) — Thu, 12 Nov 2009 08:46:00 +0000

On Tuesday," in "Breaking News -- Nokia Customs Seizure Case for ECJ" (here), the IPKat breathlessly reported on the decision of the Court of Appeal for England and Wales to refer some questions -- as yet probably unformulated and certainly unavailable to the public -- to the Court of Justice of the European Communities on a preliminary ruling concerning the interpretation of EU customs seizure rules which appear not to permit the seizure of counterfeits in transit across the European Union if they've not been put on to the market there. This item mentioned a similar reference for a preliminary ruling from Belgium.

Many readers have since emailed the IPKat for further details of the Belgian reference which, he is pleased to say, he now has. The details are as follows: the decision is NV Koninklijke Philips Electronics v Far East Sourcing Limited AR No 02/7600/A, 4 November 2009, brought before the Court of First Instance, Antwerp District. The question asked in this reference actually relates to the Regulation 3295/94, the predecessor of Regulation 1383/2003:

Is Article 6.2(b) of Council Regulation 3295/94 of 22 December 1994 (the old Customs Regulation) a rule of standardised Community law that must be observed by the Court of the Member State that has been applied to by the holder of that right in accordance with Article 7 of the Regulation, and does that rule mean that the court, in making its assessment, may not take into account the temporary storage status /the transit status and must apply the legal fiction that the goods were manufactured in that same Member State, and must subsequently decide, while applying the law of that same Member State, whether such goods infringe the intellectual right in question?

Says the IPKat, given the nature of the questions and the closeness of time, it would be silly for the ECJ not to join the two cases, wouldn't it? Merpel says, silliness has nothing to do with it: have you forgotten how the same court managed not to join all the Fixtures Marketing database right cases only a few short years ago?

Riverdance: Kelly takes steps to settle

noreply@blogger.com (Jeremy) — Wed, 11 Nov 2009 14:36:00 +0000

A week after he reported that Irish fashion designer Jen Kelly was suing Riverdance duo Moya Doherty and John McColgan for unauthorised use of his designs, the IPKat can now tell his readers that Kelly's action has been withdrawn. According to Tim Healy, writing in today's Irish Independent, Kelly

"...dramatically withdrew his legal claim against the 'Riverdance' producers after a compromise was reached.

Jen Kelly ... claimed he had been "airbrushed out of history" by the world famous dance and music sensation. ... Mr Kelly sought €820,000 damages, alleging he had not been given proper credit for his work and his designs were used and altered without his consent ...

But [he] yesterday decided to accept that producers did not use costumes he had designed, nor copies of them, in live performances of 'Riverdance' after December 31, 2001.

It was unclear last night whether money had changed hands ahead of the settlement.
Afterwards Mr Kelly said he was "delighted that I can get back to what I do best, designing clothes". ...
[Kelly] claimed the defendants breached a November 1999 agreement not to use his costume designs in 'Riverdance the Show' after December 31, 2001. It was in 1999 that Mr Kelly was informed that another designer, Joan Bergin, would be used for the costumes in a new show on Broadway. The defendants had denied the claims.

And yesterday, on the third day of the hearing, Mr Justice John MacMenamin was told that there had been a compromise in the proceedings. ... The judge struck out the action which had been estimated to run for two weeks.

... Joan Bergin, the designer who took over the 'Riverdance' costume work, said: "I'm mightily relieved for every costume designer who works in theatre, otherwise we'd just spend the rest of our lives looking over our shoulders."

Last week the court had heard that Mr Kelly agreed to design costumes for 'Riverdance the Show' following the success of the performance at the 1994 Eurovision Song Contest. As the show's popularity expanded, an agreement was entered into in October 1996 between 'Riverdance' and Mr Kelly. As part of that agreement Mr Kelly received a royalty payment of £60 per performance -- but difficulties later arose .... The difficulties culminated in an agreement in December 1999 under which Mr Kelly was to receive a payment and his costume designs would be used in the shows up until the end of December 2001 ...".

The IPKat feels a little sorry for the legal teams involved, who must have blanked a fortnight out of their respective diaries in the anticipation of some interesting, instructive, lucrative and publicity-rich court work. Merpel says, if you get rid of all the repeated bits, couldn't you have choreographed the two-week trial down to about three days?

Traditional Irish dancing here and here
How to dance an Irish jig here ("Be careful not to fall when standing on one foot or hopping")
Fitness and health issues for Irish dancers here and here

Bad faith, trade marks and the .eu TLD

noreply@blogger.com (Jeremy) — Wed, 11 Nov 2009 13:02:00 +0000

The IPKat has long been puzzled that the complex web of rules relating to the registration of .eu domain names and their somewhat begrudging nod towards the recognition of the interests of trade mark owners has not been the subject of extensive litigation in Europe's national and Community trade mark courts. Now he has an answer: next month, as a pleasant hors d'oeuvres to the European judicial Christmas break, the Court of Justice of the European Communities will be hearing arguments in Case C-569/08 Internetportal und Marketing GmbH v Richard Schlicht, a reference for a preliminary ruling from the Oberster Gerichtshof (Austria).
The questions referred are as follows:

"1. Is Article 21(1)(a) of Commission Regulation ... [the bit that's deleted here and wherever the Regulation is mentioned, is the bit that goes '(EC) No', which seems tediously repetitive, effectively uninformative and quite deleterious to what might otherwise be a pleasurable experience for the reader ...] 874/2004 ... laying down public policy rules concerning the implementation and functions of the .eu Top Level Domain and the principles governing registration to be interpreted as meaning that a right within the meaning of that provision exists,

(a) if, without any intention to use it for goods or services, a trade mark is acquired only for the purpose of being able to register in the first phase of phased registration a domain corresponding to a German-language generic term? [This itself raises the question of indirect use. If I register German generic term A as a trade mark where it's not generic, eg Spain, in order secure registration of A.eu, but it is my intention to use the domain name A.eu in respect of the goods or services for which A is registered, have I used the mark?]

(b) if the trade mark underlying the domain registration and coinciding with a German-language generic term deviates from the domain in so far as the trade mark contains special characters which were eliminated from the domain name [it's a hard life being an umlaut in the 21st century ...] although the special characters were capable of being rewritten and their elimination has the effect that the domain differs from the trade mark in a way which excludes any likelihood of confusion?

2. Is Article 21(1)(a) of Regulation ... 874/2004 to be interpreted as meaning that a legitimate interest exists only in the cases mentioned in Article 21(2)(a) to (c)?

If that question is answered in the negative:

3. Does a legitimate interest within the meaning of Article 21(1)(a) of Regulation ... 874/2004 exist if the domain holder intends to use the domain - coinciding with a German-language generic term - for a thematic internet portal? [doesn't this depend somewhat on what the theme is?]

If questions (1) and (3) are answered in the affirmative:

4. Is Article 21(3) of Regulation ... 874/2004 to be interpreted as meaning that only the circumstances mentioned in subparagraphs (a) to (e) are capable of establishing bad faith within the meaning of Article 21(1)(b) of Regulation ... 874/2004?

If that question is answered in the negative:

5. Does bad faith within the meaning of Article 21(1)(b) of Regulation ... 874/2004 exist if a domain was registered in the first phase of phased registration on the basis of a trade mark, coinciding with a German-language generic term, which the domain holder acquired only for the purpose of being able to register the domain in the first phase of phased registration and thereby to pre-empt other interested parties, including the holders of rights to the mark? [Here we have the possibility of two separate standards of bad faith emerging and obtaining a judicial imprimatur -- one for registration of domain names, the other for the registration of trade marks]".

The IPKat looks forward, as ever, to seeing what emerges. Merpel says, some of these issues are a bit historical, aren't they? The first phase of phased registration has come and gone and isn't about to return.

The .eu domain registration rules here
Dispute your .eu registrations here

Wednesday Wround-up

noreply@blogger.com (Jeremy) — Wed, 11 Nov 2009 08:54:00 +0000

The International Federation of Pharmaceutical Manufacturers and Associations (IFPMA) welcomes some new officers. Eduardo Pisani was appointed Director General yesterday, a week after Haruo Naito was confirmed as the organisation's new President. The Kats wish them both good luck and suspects that they are in for a busy old time ...

Congratulations to jiplp the weblog on notching up its 100th email subscriber -- just one week after its launch. You can view the jiplp blog, which supports the Journal of Intellectual Property Law & Practice (JIPLP), here.

The excellent PowerPoints compiled by Tim Frain (Director of IPR, Regulatory Affairs, Nokia) for the talk he gave yesterday at IBC Informa's "Standards and Patents" Conference on the proposed and shortly-to-be-adopted Unified Patent Litigation System (UPLS) can be found via conference media partner PatLit here. From the same site you can also pick up IPKat/PatLit team member Jeremy's PowerPoints on why the UPLS isn't going to change the world.

The 1709 Blog carries news of a rare England and Wales Court of Appeal, Criminal Division, decision in Gilham v R, [2009] EWCA 2293 (Ch), concerning a prosecution for circumvention of technical measures and money-laundering. The highlights of this ruling are the court's admission that the word 'substantial' is a tricky one and its recital of the observation by Lord Justice Jacob that copyright cases involving complex techie issues like this one are better dealt with as civil actions before the Chancery Division. More details here.

If you were ever likely to forget the dangers of estoppel in UK trade mark litigation, there's a salutary warning for you here on MARQUES's Class 46 in yesterday's Firecraft dispute. Thanks, Michael Edenborough (Serle Court) and McDaniel & Co for each sending the relevant details.