The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy
InternKats: Rose Hughes, Ieva Giedrimaite, and Cecilia Sbrolli
SpecialKats: Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Friday, 30 April 2010

Further developments on double patenting at the EPO

Thanks to the excellent EPLaw patent blog, the IPKat has learned of a recent EPO decision, T 1423/07 (available from EPOline here), in which the technical board disagrees with the view taken in T 307/03 (reported by the IPKat here, with commentary from Derk Visser here) on the matter of what, if any, basis there is in European patent law for refusing an application on the grounds of double patenting.

The argument in T 307/03 was based on the rather strange reasoning that Article 60 EPC allowed an inventor the right to be granted one, and only one, patent for his invention. This reasoning does not appear to have been agreed with by anyone else (or at least no one willing to admit it), and is thought by the IPKat to have been one of an occasional series of rogue decisions that the EPO technical boards of appeal like to throw up now and then to keep us all on our toes (anyone remember all that fuss about divisional applications a while ago?).

This now seems to have been shown to be the case, as the technical board in T 1423/07 have stated quite clearly that there is no way that Article 60 could provide basis for refusing a European application under Article 97(2) for double patenting. Contrary to T 307/03, the board in this case found that "the fact that the EPC does not contain any specific provisions relating to double patenting is decisive: in the absence of such provisions, a refusal of a European patent application for double patenting is not possible irrespective of whether or not double patenting is a rare occurrence" (reasons, point 2.3.2).

Since the technical board in this case also found that there was no reason to refer questions to the Enlarged Board, the IPKat wonders if this will be an end to the matter or if there are likely to be further grumblings about double patenting in the future. Merpel and Tufty both suspect that this is an issue that is not likely to go away just yet.

Brazil patents to expire 1 year early?

According to this news item, which is in the process of being picked up elsewhere, a Brazilian Court has decided that, contrary to all conventional wisdom, a patent claiming priority to an earlier application expires 20 years counted from the priority date and not from the date of filing the application. If confirmed, this would be a very surprising development that would presumably affect the lifetime of all priority-claiming Brazilian patents. [UPDATE: See comments below - this case is an unusual one, and the usual rules about priority may not in fact be the issue. There is more information about this issue on IP Tango here, here and here]

The patent itself, which the IPKat presumes is BR9102560, was filed on 19 June 1991 claiming priority to GB9013750.6, filed on 20 June 1990. As far as the IPKat understands, according to Brazilian patent law this means that the patent will expire by 19 June 2011, 20 years from the filing date. However, the Brazilian court has apparently come to a different conclusion and figures that the patent will have expired by 20 June 2010 instead, calculating the 20 year term from the earlier GB priority date instead.

The fact that the patent relates to a pill that tends to be most used by men of a certain age, and which retails for surprisingly large amounts of money in Brazil will, the IPKat thinks, have had no bearing at all on this decision.

Breaking News: Google win in Rosetta Stone Adwords case

Google's motion for summary judgment was granted by US District Judge Gerald Bruce Lee of the Eastern District of Virginia (4th Circuit) in the trade mark infringement and AdWords litigation brought against them by Rosetta Stone. This marks the latest of three cases (Geico v Google and Rescuecom v Google) to have gone before a judge in the U.S., but again without a full trial on the issue of likelihood of confusion in an AdWords case. Tom Adams, CEO of Rosetta Stone stated:

“This is a setback for us in our effort to right a wrong, To not allow a case like this to go before a jury is very disappointing for us.”
In 2009 Rosetta Stone, a provider of foreign language educational materials, commenced proceedings against Google in relation to Google's use of their trade mark name as part of Google's AdWords program (see previous AmeriKat reports here). Rosetta Stone alleged that Google "used" the marks under the Lanham Act by selling the words to third-parties and that use created a likelihood of confusion by directing users to Rosetta's competitors.

Judge Lee has yet to issue his formal decision. As soon as he does, Rosetta Stone will reportedly consider whether or not to appeal.

The AmeriKat will bring news and comment on Judge Lee's decision as soon as she can get her tabby paws on it.
In the meantime you can watch what the IPKat's AdWords panel had to say about the Court of Justice ruling in the Google AdWords case and the US AdWords position here.

It has to be said - its been a good couple of days for Google!

Friday fantasies

Don't forget to check out the IPKat's side bar for the current list of Forthcoming Events. Newly-added events include this summer's 10th Annual IP Law Summer School, organised by Informa and held in Downing College, Cambridge (details here). IPKat team member Jeremy will be among the faculty. There's a special offer for early birds who book before 4 June, so don't miss out.

The Intellectual Property Institute and Queen Mary, University of London have now begun to implement their collaboration, which means that if you are looking for the Institute you'll find that it is in the process of being relocated to 67-69 Lincoln's Inn Fields, London WC2A 3JB. You can email the Institute's administrator, Sarah Batty, here and the Director, Professor Jo Gibson here. If all else fails, there's always the phone: +44 (0) 20 7882 8090.

Sounds like a sneeze. The IPKat's friend Dr Maurizio Borghi (Brunel Law School) has asked if the Kats would mention that there's call for papers for the second annual workshop of ISHTIP (bless you!), the International Society for the History and Theory of Intellectual Property, at American University, Washington DC, 24-26 September 2010. The deadline for submissions is 5 June 2010, which is not so very far ahead.

Around the blogs. The 1709 Blog has already mentioned the Wittem Project and the European Copyright Code, but the IPKat thought it was a good idea to draw it to the attention of his readers too. This week's offerings from the Journal of Intellectual Property Law & Practice that you can read free of charge on the jiplp blog cover the need for industrial applicability in gene patents (here) and the sad story of a fashion designer who became detached from his own name (here).

Aussies to drive logos, imagery from ciggie boxes?

Writing from Sydney, Australia, for The Independent, Kathy Marks ("Australia to ban logos on cigarette packets") explains that Australia is poised to introduce the world's harshest anti-smoking laws, with tobacco companies forced to sell cigarettes in plain packets resembling prescription drug packs. She goes on:

"The move, expected to be announced today by the Health Minister, Nicola Roxon, will strip packets of all logos, colourful imagery and promotional text, which have been shown to reduce the effectiveness of health warnings. Only the brand name will appear, in a generic font, along with the government health warning.

The legislation, due to take effect from 2012, is intended to make cigarettes less appealing, particularly to young people, and to cut the number of smoking-related deaths. However, it is bitterly opposed by the tobacco industry, which has vowed to challenge it in the courts.

British American Tobacco, which controls 42 per cent of the A$8.3bn (£5bn) Australian market, told The Sydney Morning Herald it would "take every action necessary to protect ... its right to compete as a legitimate commercial business selling a legal product".

The World Health Organisation (WHO) has recommended a move to plain packaging, a call echoed last year by the Australian government's Preventative Health Taskforce. The idea has also been seriously mooted in Britain, Canada and New Zealand. But until now governments have hesitated to act, fearing they might contravene international laws on free trade and intellectual property rights.

In Australia, a free-market think-tank, the Institute of Public Affairs, warned this week that forcing companies to remove their trademarks from products was equivalent to compulsorily acquiring property. It said that, under the Australian constitution, the government would be obliged to pay the industry A$3.4bn in compensation. ...

Clearly rattled, the tobacco giant Philip Morris has set up a website outlining alleged problems associated with plain packaging [the IPKat thinks it's this one] and claiming that the move will not reduce smoking.

George Williams, one of Australia's leading constitutional law experts, said he doubted that the tobacco companies would succeed in a legal challenge. "Prior High Court authority suggests they would see this as regulating the use of intellectual property ... [not] acquiring that intellectual property," he said ...".
The IPKat recalls Chris Morcom QC writing a piece on this subject, which he hosted here. This piece attracted quite a few comments: the Kat wonders how thought has developed since Chris was writing back in June 2008.

Thank you, Lee Curtis (again!) for the link!

Thursday, 29 April 2010

Absolution for Absolute as dispute with Absolut settles

An article in The Guardian today, "Absolute Radio settles trademark fight with Absolut vodka", reports on the end of what might have been a long and entertaining court dispute between Absolute Radio and Swedish vodka brand Absolut. The vodka maker sued the UK music station for trade mark infringement and passing off but today's settlement, the terms of which are confidential, has scotched the chance of further proceedings.

Absolut, the jewel in the crown of V&S Vin&Sprit, was not best pleased when the Times of India Group purchased Virgin Radio and renamed it Absolute, being concerned that there would be a risk of confusion between the two. A spokesman for V&S has now expressed pleasure at the outcome of this dispute, "which will enable us to continue to develop the iconic Absolut brand without risk of confusion to the public." Absolute Radio is equally pleased, for obvious reasons.

While the terms of settlement are confidential, says the IPKat, it shouldn't be long before the public gets some idea of what they contain: all they have to do is watch carefully and see how the two brands market their respective goods and services nonconfusingly. Merpel adds, I wonder whether there's more to this matter than the report suggests: likelihood of confusion is something I associate with similar goods and services: it's not obvious to everyone, though, that radio stations and vodka can be termed "similar".

Make your own radio station here
Make your own vodka here

Spring pruning for Interflora questions

Way back in November, before the Court of Justice of the European Union had given its ruling in the Google AdWords case, Mr Justice Arnold contrived to ask a mammoth list of no fewer than ten questions of that Court, in the Chancery Division (England and Wales) dispute between trade mark owner Interflora and ever-so-cheeky AdWord purchaser and retail giant Marks & Spencer. The cause of war in this instance was the fact that, when people who wanted to find Interflora via a search engine and keyed in that term, they would be confronted with a list of sponsored advertisements, led by Marks & Spencer.

Now that, following its rulings in Google AdWord and Bergspechte, we now know a lot more about trade mark infringement and trade mark use on the internet than we did last November, the Registry of the Court of Justice has written to Mr Justice Arnold and asked him, in rather more formal terms, "do you still want an answer to all your questions and, if so, can you please clarify Questions 3(b) and 9?".

For the record, Question 3(b) asks whether the complained-of use falls within the scope of Article 5(2) of the Trade Marks Directive and Article 9(1)(c) of the CTM Regulation (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). Question 9 asks whether, if 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 ... Directive 2000/31 ... ('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?".

If indeed the reference was to stand, the Registry of the Court of Justice wanted to know as follows:

"- Does Question 3(b) seek to establish under which circumstances an advertiser which makes use, as an AdWord, of a sign identical to the well-known trade mark of a competitor must be regarded as acting in a manner detrimental to the distinctive character of that trade mark (dilution) and/or as taking unfair advantage of the distinctive character or repute of that trade mark (free-riding)?

- Does the introductory sentence of Question 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 [Community Trade Mark] Regulation and Article 5(2) of the Trade Marks Directive/Article 9(1)(c) of the [Community Trade Mark] Regulation') mean that, in view of the national court, Articles 12 to 14 of the E-Commerce Directive are of no relevance to the resolution of the case in the main proceedings if it is established that there is no 'use' within the meaning of Article 5 of the Trade Marks Directive and/or Article 9 of the Community Trade Mark Regulation, on the part of the search engine operator? Does the national court wish to retain that introductory sentence of Question 9, having regard, in particular, to paragraph 57 of the abovementioned judgment in Google France and Google?".

In Interflora Inc & another v Marks and Spencer Plc & another [2010] EWHC 925 (Ch) Arnold J held today that the Court of Justice's answers were still needed for questions 1 to 4,

"(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) 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 ... the Trade Marks Directive and Article 9(1)(a) of ... 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(1)(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(1)(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?"

Arnold J however qualified question 3(b) as follows, at para. 20:
"... I accept that it is desirable for this purpose to clarify question 3(b). My answer to the Court's request for clarification of that question is "yes": question 3(b) does seek to establish under which circumstances an advertiser which makes use, as an AdWord, of a sign identical to the well-known trade mark of a competitor must be regarded as acting in a manner detrimental to the distinctive character of that trade mark (dilution) and/or as taking unfair advantage of the distinctive character or repute of that trade mark (free-riding). As counsel for Marks & Spencer suggests, this clarification can be effected by simply deleting the parenthesis in question 3(b)".
The IPKat notes the warm welcome given at para.7 to the Registrar's request by the judge, who described the request for clarification as "a helpful step in the dialogue between the Court of Justice and the national courts", adding that, "if the questions referred do not sufficiently clearly articulate the points on which this court needs assistance from the Court of Justice, then this court should endeavour to make them clearer". However, the warm welcome was soon followed by a rap on the knuckles at paras 8-10:
"... I would have found it easier to respond constructively to the Court of Justice's request if the procedures of the Court of Justice were more transparent in certain respects. Apart from supplying a copy of its judgment in Google France, the Court of Justice did not provide any information to assist this Court to answer its request. In particular, it did not provide any information as to the status of the related references. Nor did it provide copies of any written observations filed by the parties, the Commission or the Member States.

... Because the Court of Justice no longer publishes Reports for Hearing and written observations are not publicly available, however, I do not know whether the Commission made the same or similar submissions in the Google France case. I therefore do not know whether the Court of Justice has already considered and rejected those submissions. If written observations were made publicly available in the way that, for example, briefs to the US Supreme Court are, this kind of problem would not arise.

I note that in his Opinion in Joined Cases C-514/07P, C-528/07P and C-532/07P ... Advocate General Poiares Maduro ... recommended that pleadings in closed cases should normally be accessible. If the Court of Justice were to follow that advice, it would be a step towards resolving difficulties of the kind mentioned above".
Bravo, says the IPKat! Merpel adds, if there is to be further cooperation and dialogue, can I put in a plea that the Court cooperates further by answering the questions posed by the national court rather than, as sometimes appears to happen, substituting its own?

Tips on pruning here
Make your own prunes here

Microsoft and HTC make love, not mobile war

The mobile phone wars have reached such a level of complication that the IPKat has resorted to drawing diagrams to show who is suing who. The schematic interestingly sees Apple and HTC at the heart of the recent battles (see previous posts here). However, recent news sees Microsoft getting into the mix. But Microsoft is seemingly making love not war after entering into a licensing agreement with HTC, the Taiwanese handset maker of Google's Android operating system. The licence apparently acknowledges Microsoft's broad "patent portfolio" claims over the technology associated with the Android mobile platform. HTC manufactures phones for Google, including the Nexus One, that use the Android technology and is currently embroiled in patent litigation brought by Apple in March. Some commentators have suggested that Apple's litigation against HTC was really directed towards Google.

The details of the licence, announced Tuesday, have not been disclosed save for this statement from Microsoft's vice president and head of IP and Licensing, Horacio Gutierrez who stated that:

“HTC and Microsoft have a long history of technical and commercial collaboration, and today’s agreement is an example of how industry leaders can reach commercial arrangements that address intellectual property. We are pleased to continue our collaboration with HTC.”
The long historical relationship referred to is that of HTC being one of the main producers of smartphones that run the Windows operating system.

If you, like the IPKat, are confused as to who owns what in these phones you are not alone. Gutierrez (left) writing in his blog last March stated that with all innovation, especially for inventions in nascent technology markets, there is a period of time where rights holders grapple and litigate in order to sort out who owns what. He

"The smartphone market is still in a nascent state; much innovation still lies ahead in this field. In all nascent technology markets, there is a period early where IP rights will be sorted out. This is particularly true in a market, such as smartphones, in which a number of different technologies previously offered on a standalone basis now converge into a single device. Indeed, smartphones are a product of the ‘open innovation’ paradigm – device manufacturers do not do all of their development in-house, but add their own innovations to those of others to create a product that users want. Open innovation is only possible through the licensing of third party IP rights, which ensures that those who develop the building blocks that make a new technology possible are properly compensated for their investments in research and development."

How will Microsoft and HTC's licensing agreement impact Apple's court and ITC complaints that claim HTC infringes 20 of Apple's patents in their Android phones? The blog-o-sphere is lighting up with conspiracy theories as to what has motivated the license deal. Some say that Microsoft believed that the Android technology infringed their patents, while others say that Microsoft is coming to the rescue of the patent-poor HTC in their battle against the Apple empire. This Kat believes the truth may lie somewhere in the middle of these two extremes.

Although the Android operating system is proving to be very popular in the market right now, if the IPKat was a mobile phone manufacturer she would not be raising her head above the parapet until the mess of IP ownership over this technology is untangled.

Today, HTC has introduced a new handset named the Incredible, based on Google's Android operating system.

For more information see these articles in the Financial Times, Seattle Post Intelligencer, Wall Street Journal and CNET.

BGH: Google's image search is no copyright infringement

While Google had a bit of bad press in Germany over the last week or so due to it collecting publicly available (!) W-LAN data for its Google Street View product, the search engine provider will be pleased with the German Federal Supreme Court (Bundesgerichtshof, BGH) decision of today's date holding that Google's image search does not amount to copyright infringement (case reference I ZR 69/08 – Vorschaubilder of 29 April 2010). Please find below this Kat's translation and summary of the BGH's press release of today's date.

The first civil senate of the BGH, which is inter alia responsible for copyright matters, has today decided that Google is not liable for copyright infringement where copyright protected works are displayed as preview pictures (thumbnails) in Google's image search results.

Google's Internet search engine includes a text driven image search function which allows users by using search terms to search for images, which third parties have published on the Internet in connection with the search term. The images revealed by the search engine are displayed in the search results as scaled down preview pictures (so-called thumbnails) which have a smaller pixel size than the images shown on the original website. The preview pictures include a link which allows the user to access the website which displays the original photo. To shorten the search process, Google searches the Internet in regular intervals for images and then stores these images on its own servers. This makes it possible that a search result including such preview pictures can be displayed promptly after an Internet user conducts a Google image search using a search term.

The claimant in the proceedings is an artist who maintains a website which displays her own works. She complained that Google had displayed her works as thumbnails whenever her name had been entered as a search term into Google's search engine.

The lower instance courts decided in Google's favour. While the appeal court found that Google was infringing the claimant's copyright in her works, it nonetheless found that the artist's claim was an abuse of rights under Article 242 German Civil Code (BGB). On further appeal the BGH also decided in Google's favour. The BGH went one step further than the court of appeal and took the view that Google did not even infringe the artist's copyright. The BGH agreed with the court of appeal that the claimant had neither made an express nor an implied legal declaration ("rechtsgeschäftliche Erklärung") in which she had authorised Google's use of her works as preview pictures via Google's image search. However, the BGH held that the reproduction of the images as preview pictures, while encroaching on the artist's right of presentation of her works under Article 19a German Copyright Act (UrhG), was nonetheless not unlawful ("rechtswidrig") because the defendant (Google) could interpret the claimant's actions (even without a legal declaration) as consent to the display of her works in Google's image search results. The court came to this conclusion since the claimant had made the content of her website accessible to search engines and had not made use of the technical possibilities available to her that would have allowed her to except her works from being searched and displayed by search engine providers.

For those cases where the images found and displayed by a search engine had been posted by unauthorised third parties, the BGH referred to the ECJ's recent guidance in its AdWord decisions in Google France/Louis Vuitton (23 March 2010, C-236/08 - C-238/08, para. 106 pp) where the ECJ had held that the liability of a referencing service provider, such as Google, may be limited under the E-Commerce Directive 2000/31. In light of the ECJ's guidance, the BGH ruled that a search engine provider may only be liable (for copyright infringement) once it had obtained knowledge of the unlawful nature of the data it had stored (IPKat addition: and then did not act expeditiously to remove or to disable access to that data).

This is certainly a good day for Google in Germany. At the same time, this decision may serve as a reminder to website owners to learn more about the technical possibilities available to them to protect the content of and images displayed on their websites, even though the court seems to ask for quite a lot here. Does everyone who has his own website know how to work with meta-tags etc? Can you really ask owners of websites to actively engage themselves in preventing search engines from accessing their content?

After its decision in the Beta Layout AdWord case last year (see the IPKat's report here), where the BGH had taken the view that the average internet user was rather technology savvy and familiar with Google's layout and search functions, the BGH has yet again adopted a technology friendly approach. Having said that, this Kat is very interested to see the full decision and in particular the court's arguments. I cannot help but thinking that the BGH has adopted a very broad definition of consent here. It remains to be seen how this decision will sit within the wider context of personality right and data protection laws.

To read the BGH's press release in its German entirety, please click here.

Wednesday, 28 April 2010

IP and European competition law: a new book

Various members of the IPKat's blogging team are attending the launch this evening of a new and welcome publication, Intellectual Property and EU Competition Law, by London-based barrister Jonathan D.C. Turner (13 Old Square). The publisher, Oxfor University Press, describes the book as follows:

"This book explains the application of EU competition law to intellectual property, and the resulting regulatory framework for the exploitation and licensing of intellectual property rights [This is important: from the word 'and' in the title, it's not apparent whether this is explaining IP to competition lawyers, competition law to IP lawyers or seeking to integrate the two complementary disciplines].

* Provides a thorough yet accessible analysis of one of the more complex areas of EU commercial law [Competition law's not just complex: it's pretty verbose. The author has managed to get a lot into a relatively short space here];
* Explains the fundamental principles and policy on the interface between intellectual property and competition law, with detailed accounts of the key case-law and official guidance;
* Approaches the subject from a practical viewpoint, analysing its impact under the three broad headings of Technology, Culture and Branding [this tripartite approach works well, though the Kat bets that, when competition principles are finally applied to internet service providers, these broad headings will have to be merged]

The interface between intellectual property rights and competition policy is one of the most important and difficult areas of EU commercial law. The exploitation of exclusive rights can conflict with competition law, which aims to preserve competition as the driving force in efficient markets. These conflicts have to be resolved against the background of a complicated relationship between EU law, national laws and international treaties relating to intellectual property. There have been major developments recently in this area, including the new Technology Transfer Block Exemption, the Commission's Guidelines on Technology Transfer, and cases such as IMS and Microsoft concerning the circumstances in which exploitation of intellectual property rights is an abuse of a dominant position.

This book contains a detailed explanation of the application of EU competition law to all types of intellectual property, including recent developments, and the resulting regulatory framework for the exploitation and licensing of intellectual property rights. It has practical analysis of such issues as technology transfer and pools, research and development, and franchising and merchandising.It derives from a section in the looseleaf Law of the EU (Vaughan & Robertson, eds), and is made available here for the benefit of those who do not subscribe to the looseleaf".

This Kat would have read the entire book by now, but he was distracted by the distant sound of corks popping and crisps being crunched so he has had to put it down and head off to the reception. He looks forward to putting it through its paces and wishes both it -- and its author -- the very best of luck!

Bibliographic detail. Hardback 384 pages. Price £145. ISBN 978-1-90-450145-9. Web page here. Rupture factor: small.

Protecting scientific discoveries ... do we?

The IPKat's friend Mark Houghton, all the way from beautiful Bakewell (home of the eponymous pudding), has been contemplating the recent post on this weblog concerning the new WIPO logo. It was not however the smart new design that caught his eye but rather the text that accompanied it: "The seven curved lines represent the seven elements of IP, as set out in the WIPO Convention: ... * scientific discoveries ...".

This set Mark thinking and he now asks:

"Is there anywhere in the world that actually treats scientific discoveries as IP? I thought (presumably wrongly) that there was an effectively universal exclusion from Patenting and none of the other rights seem to fit the bill … "
Casting back through the distant recesses of an old Kat's memory, Jeremy says has this feeling that back in the early days of WIPO a model law was prepared for developing countries on the protection of scientific discoveries, but he doesn't know whatever happened to it or if any WIPO Member enacted such a law, or what has happened since. Can any of our readers help? If so, please post your information as comments below.

Amazing discoveries here, here and (be careful, now) here
Voyages of discovery here
Cat discovered here

Wednesday whimsies

"Passing off or customer confusion?" asks the IPKat's friend Lucy Wimberley (SABIP), who had the good fortune to be detained in Turkey by the recent volcanic ash incident for long enough to grab this photo opportunity. Many thank, Lucy!

Recent publications. Issue 2 of the 2010 volume of the bimonthly WIPO Magazine has now been published. You can read it in full here. The Kat's pick of the articles is "Better drawings make a better patent" by Bernadette Marshall. This piece addresses a number of topics that the Kat never thought about before, since he has always taken the graphics for granted. Also just out is the final issue of Copyright World, which from next month is being folded, together with Trademark World and Patent World, into a new Intellectual Property Magazine by its publishers, Informa Law. Details of the final issue's contents can be found here. As its founder editor, IPKat team member is sad to see it go.

Around the blogs. The IPKat has recently discovered a rather lovely Irish IP blog, A Clatter of the Law, composed by Rossa McMahon. It's good to know that there's some genuine IP activity out in the lovely city of Limerick, some of the pubs of which this blog team member once had the pleasure of sampling. If you're curious about this blog's name, take a look at Rossa's commemorative post for World IP Day yesterday, here.

From his trusty Welsh correspondent Nia Robert the IPKat learns of Wales’ success last week at the International Exhibition of New Products and Inventions in Geneva. A total of 14 Welsh innovators attended the exhibition, supported by the Welsh Assembly Government. Commendably the Welsh innovators won 6 Gold Medals, 5 Silver and 3 Bronze, this being the Principality's best performance ever. One product (the Sportfit sports injury rehab assistant) won the prestigious WIPO Gold Medal for best Inventor – the first time any British inventor has won this prize at Geneva.

Right: Fully fit again after using the Sportfit, these sheep are back in training for the Olympics

Another product (the Yoke Shopper) won the Award for best Industrial Design. More importantly orders were taken for many products, licences were secured (with more to follow) and distributorships were initiated in Europe and beyond. The IPKat salutes this Welsh Assembly Government initiative which, he's sure is a model that others will wish to emulate.

Terry A. Young (President and Editor, Beyond the First World) writes to inform the IPKat of his new project, Beyond the First World (subtitled "Global News and Best Practices for Managers of Innovation and Intellectual Property"). This will have two main components: (i) a bi-monthly newsletter with 10 articles (most original research), which will be free to subscribers, and (ii) a website on which an original paper will posted each month, written by an international expert exclusively for Beyond the First World. The first paper to be so posted is "The Formation of a National Technology Transfer Network; The Case Study of FORTEC (Brazil)" by Dr Marli Elizabeth Ritter dos Santos, an international expert and WIPO trainer. Sounds good, says the IPKat.

Tuesday, 27 April 2010

Time to rescue Lammy's old speech writer?

Press release IP/10/466, issued from Brussels, Europe [that's for the benefit of our transatlantic readers who may be more familiar with the Brusselses in Illinois, Wisconsin, Manitoba or Ontario] today announces the good news that the European Commission is launching a public consultation on the future of "cultural and creative industries".

According to the text, in relevant part:
"The European Commission launches an online public consultation today aimed at unlocking the full potential of Europe's cultural and creative industries [which up till now have been ... where?]. The consultation is linked to a new Green Paper which highlights the need to improve access to finance, especially for small businesses, as key to enabling the sector to flourish and to contribute to sustainable and inclusive growth [slight panic here: the IPKat hasn't encountered 'inclusive growth' before and wonders what exactly it means].
"Europe's cultural and creative industries are not only essential for cultural diversity in our continent; they are also one of our most dynamic economic sectors. They have an important role to play in helping to bring Europe out of the crisis [They weren't the folk that got Europe into the crisis in the first place, says Merpel, so why should they be the ones to get it out again?]" said Androulla Vassiliou, European Commissioner for Education, Culture, Multilingualism and Youth [why are education and culture linked in with youth, ponder the Kats]. ...
The sector, which includes performing arts, visual arts, cultural heritage, film, television and radio, music, publishing, video games [this must be the connection between culture and youth!], new media, architecture, design, fashion design and advertising, provides quality jobs for 5 million people in the EU.
It contributes 2.6% to European GDP – which is more than many manufacturing industries achieve [and indeed, though it's difficult to believe it, it's less than some other manufacturing industries achieve]. The cultural and creative industries are also growing faster than most parts of the economy [this usually happens when people who are out of work consume more leisure activities like TV programmes ...].
Digitization and globalization are opening new market opportunities, in particular for small businesses. But these businesses very often face obstacles to fulfilling their full potential. The public consultation will encourage stakeholders and others to consider questions like:
• How can we facilitate access to funding for small and micro enterprises whose only asset is their creativity? [That's easy: (i) make more money available for loans, (ii) don't tax profit till it exists, (iii) keep interest rates low and (iv) don't mind losing it if the borrower fails]
• How can the EU help to secure the right mix of creative and managerial skills in these sectors? [by just letting it happen and not trying to regulate and bureaucratise it all the time]
• How can we foster more innovation and experimentation, including wider use of information and communication technologies? [er, that's a tricky one. If we make much more use of the information and communication technologies than we are at present, we'll all be online 26 hours a day]
Cultural and creative industries also contribute to the competitiveness and social cohesion of our cities and regions. European Capitals of Culture such as Lille, Liverpool and others show that investing in this sector creates jobs [Yes, but for how long? How convincing are the follow-up studies?] and helps transform the image of cities. While they develop firstly at local and regional levels, cultural and creative industries are potentially global in their reach, contributing to a European presence worldwide. Support in their local and regional environment can help provide them with a launch pad to achieve global success.
Cultural and creative industries can also have beneficial spill-over effects on a wide range of other businesses and society at large. Designers, for example, have gradually become an essential part of the management team of many big companies [Is this because of their skills as designers or their qualities as humans? Lawyers and accountants on management teams aren't usually there because they're actually doing the legal or finance work, are they?].
The public consultation launched by the Green Paper runs until the end of July. Details are available here in all 23 official languages of the EU [which is more than be said of the decisions of the Court of Justice, the General Court and the OHIM Boards of Appeal ...]".
The IPKat, who has been recently pining for the speeches of the British Minister for Universities and Intellectual Property, David Lammy MP, thinks that whoever used to write them is now being held in creative captivity somewhere in Brussels, Belgium, where he is being deployed in that capacity in which he or she excelled -- expressing cosy, elegant and harmless sentiments in such a manner that we can do nothing but nod agreeably on hearing them, and which work really well till you actually stop to dissect them.

Creative cats for creative solutions here
Cats and culture here
How to write a press release here, here and here

Today's latest Community trade mark decisions: too hot for non-linguists!

Please help the Kats. There are three fresh appeals against decisions of the OHIM Boards of Appeal concerning Community trade mark applications on the Curia website today. They all have pretty pictures but none is in English. If any kind reader can let the Kats know what these decisions are about and whether they contain any interesting or novel points, can they please post a Comment to that effect below. These cases are as follows:

* Joined Cases T‑303/06 and T‑337/06, UniCredito Italiano SpA v OHIM, Union Investment Privatfonds GmbH. There the dispute looks as though it turns on possible likelihood of similarity between the word marks UNIWEB and UniCredit Wealth Management on the one side and the words UNIFONDS, UNIRAK and the figurative mark UNIZINS (right) on the other.

* Case T‑109/08 Freixenet, SA v OHIM. This appeal appears to involve the registrability of the shape on the left, which looks to the feline eye as though it's a bottle containing a yellow liquid.

* Case T‑392/06, Union Investment Privatfonds GmbH v OHIM, Unicre-Cartão International De Crédito, SA. In this appeal the applicant's unibanco figurative mark appears to be involved in a tussle with a family of opposing figurative uni-marks (UniVario, UniZerio and UniFlexio).

It seems to the IPKat that, even if the sheer volume of appeals against Board of Appeal decisions has not continued to rise the need to translate decisions of the General Court has not abated, especially since that court has a long and distinguished tradition of citing its own decisions and it really does make for enhanced understanding and greater appreciation of how the system works if cases can be made available in the most frequently-used international languages.. None of these three decisions are available either in English or in Spanish.

That new WIPO logo

As many of his readers may have noticed, while the Kats were at play yesterday, celebrating World Intellectual Property Day, the World Intellectual Property Organization (WIPO) unveiled its new logo. According to WIPO's press release,

"The new logo reflects the Organization’s dynamism and innovative spirit [Merpel asks mischievously, is that why there's a huge empty space in the middle of it?], and is a powerful symbol of WIPO’s revitalization and strategic reorientation [?]. It is based on a graphic representation of the WIPO headquarters’ building [prior art!], an iconic structure familiar to all WIPO member states and stakeholders. The color blue links the Organization with the United Nations [and Chelsea Football Club: click here for a stirring rendition of "Blue is the Colour"]. The seven curved lines represent the seven elements of IP, as set out in the WIPO Convention:

* literary, artistic and scientific works,
* performances of performing artists, phonograms, and broadcasts,
* inventions in all fields of human endeavor,
* scientific discoveries,
* industrial designs,
* trademarks, service marks, and commercial names and designations,
* protection against unfair competition, and all other rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields [doesn't leave much out, does it?].
The gathering sweep of the curves is inclusive - WIPO is an open forum, welcoming all stakeholders and points of view. The dynamic, upward pitch of the curves represents ideas, movement, and the progress which comes from innovation and creativity. This rests on a strong foundation, the name and acronym of the Organization, representing its long-standing role at the center of international IP policy. The logo’s clean modern lines reflect the trust, reliability and efficiency which are key to WIPO’s corporate image".
The IPKat, who actually quite likes the new logo and really didn't care much for the old one, has resisted the churlish urge to invite readers to seek out any earlier registered marks that use similar curves, but is instead happy to offer a complimentary one-year electronic subscription to the Journal of Intellectual Property Law & Practice (JIPLP) to anyone who can suggest the best alternative explanation of the logo to what offered by WIPO itself. Entries, please, to the IPKat here, by close of play on Sunday 30 May.

Monday, 26 April 2010

Settlement in Styriagra/Viagra trade mark disupte

Some of our readers may recall the curious trade mark dispute between Mr Mandl, an Austrian pumpkin seed oil producer, and pharmaceutical company Pfizer over Mr Mandl's use of the mark "Styriagra" on blue coloured pumpkin seed pills which were offered as natural erectile dysfunction remedy (see the IPKat's report here).

Even though Mr Mandl had always maintained that the STYRIAGRA product name derived from the word "Styria", which is the Latin name of the Austrian province Steiermark, where his business is located, and the words "agra" and "Agrar", meant to be denoting the agricultural origin of his product, Pfizer was not amused and took the matter to court. The matter had already gone all the way to the Austrian Supreme Court (OGH) which in provisional proceedings had decided in Pfizer's favour (case reference case reference 17 Ob15/09v, retrievable by clicking here (in German)). This case was of particular interest not only because it applied the ECJ's guidance in L'Oreal v Bellure but also because it most notably introduced the German concept of "trade mark parodies" to Austrian trade mark law.

While we were eagerly awaiting further proceedings at the first instance court in Vienna, Austrian news sites Die Krone and Kleine Zeitung now report that both parties have reached an out of court settlement in this matter. No details of the settlement have been given.
While this Kat would have been very interested to see the first instance court's decision and reasoning in this particular case, the settlement will be welcome news for poor Mr Mandl. Not only did we learn that his marriage broke down over this dispute, according to the Austrian report, he also had to file for bankruptcy earlier this year. Mr Mandl hopes to be able to make a fresh start in life, now that the case has been settled. Let's just hope that he will stay away from trade mark parodies for a little while.

Monday miscellany

If you've emailed IPKat Jeremy today and are hoping for a swift response, please be patient: it's World IP Day today and he's a bit preoccupied with the events of the moment ...

The result of the poll to vote for this year's IP Anthem is now known (click here for the full text of all the finalists). Ben Evans' Land of the Licensor comes out ahead, followed by Jim Boff's The Sun Has Got His Hat On and Nia Roberts' Designers, Inventors and Owners of Brands. Congratulations, Ben, on winning the complimentary place at CLT's conference on Ownership and Control of IP (here) on 10 May. And well done, all entrants!

Matthew Dick (Bristows) wonders whether it's too late to punt in a late entry for the IP Anthem competition (yes, I'm afraid so) and if not, whether it might amuse nonetheless (yes, indeed!) . Matthew's anthem should be sung to the tune of the chorus to the seven dwarves’ song from Snow White, ‘Heigh-Ho’:
“WIPO, WIPO – does anyone truly know
How Romarin works,
With its mad old quirks?
That’s no, that’s no...”
Still on the anthem theme, entrant Mark Anderson, inspired by new Kat Neil Wilkof's Clouds post and watching the appended YouTube file of Both Sides Now, wonders what Joni Mitchell might have said if she had been an IP lawyer. Perhaps ...
Songs, and books, and new designs,
Some great ideas, and poets’ lines,
And though we pay a million times
We don’t own them, you say

Your intellectual property
Seems like just a fake to me
It makes us stop when we feel free
Downloading our best songs

I’ve practised law from both sides now
Both in-house jobs and City crowds
And though I’ve learnt a trick or two
I don’t know IP law, like you.

Around the blogs. Today being World Intellectual Property Day, IPKat team member Jeremy has discharged the onerous responsibility of compiling Blawg Review #261. You can read his Review by clicking here. The Blawg Review site, which contains details of reviews past and future, is here. The IP Finance weblog welcomes a new team member, the talented Grégoire Marino -- of whom we suspect we shall be hearing a great deal more one day. His first post for IP Finance, on ambush marketing, can be read here.

Blawg Review #261

Blawg Review #261. Today is the tenth World Intellectual Property Day. While you’re reading this, I shall be partying with friends and colleagues in my intellectual property community. This community, for the record, consists of IP creators, owners, practitioners, teachers, judiciary, licensors and licensees, consumers and infringers. It’s a small planet and we’re all on it together. Since we can’t escape one another’s company, we may as well party!


I don’t often enjoy reading other people's blogs. The bad ones irritate me and the good ones make me jealous and inordinately competitive. When I do read them, it is normally (i) weeks in arrears, so I don’t feel tempted to poach; (ii) with more attention to their ‘look and feel’ than to their content; and (iii) voraciously, as one might devour six burgers at a single sitting and then not be able even to look at another one for months.

Not all the blogs I like are necessarily those that are good in terms of content or format; there’s usually some sort of inherent balance to them and they speak directly to the inner IPKat. Before I conduct this review, I’d better declare my personal position.

Five pet likes

• Short, clear posts that hit the target
• Crisp, punchy and well-informed comments to the blogger’s posts: a bright and creative readership can keep a so-so blogger on his toes
• Intelligent use of links to support the blogger’s contentions or give relevant sources
• The camaraderie of team-blogging
• Bloggers who operate the golden rules of What they didn’t teach you in Harvard Business School: be big enough to say ‘I was wrong’, ‘I don’t know’ and ‘I need help’.

Five pet hates

• Non-transparent blogs (“who is this ‘I’, and why is he blogging?)
• Unnecessary and intrusive autobiographical data (too much ‘I’, and I really don’t want to know what the author ate for breakfast)
• Posts you can’t understand unless you’ve been following the blog for the past six months
• Unexplained use of abbreviations, acronyms, terms of art and the names of people I’ve never heard of
• American sports metaphors where the blogger expects non-American readers.

A few of my pet likes, and rather more of my pet hates, can be found in my selection for Blawg Review #261.

My review

A good post can leave the reader with a previously-nascent thought bursting to the top of his mind. South Florida Lawyers’ “The "Cocooning" Effect on Federal Judges” does just that. Why shouldn’t Supreme Court justices—or indeed any members of the judiciary—be expected to answer questions during oral argument? Some members of the American judiciary have enjoyed a remarkable longevity which may suggest they need to be treated in a delicate manner. However, there’s an old Yiddish saying that no-one ever died of a question. If that’s true, they have nothing to fear. Talking of fear, won’t South Florida Lawyers let us know who they are? Or is modern Miami a bit like Cold War Minsk?

Judges are an easy topic to write on, since (i) like the weather and the economy, they’re a public-domain sort of subject on which everyone is entitled to have an opinion and (ii) they are generally constrained as to how they might reply. God is a more sensitive subject, since—unlike judges—he has many followers who may be apt to flood the blogwaves with indignant comment, vitriol, fire, brimstone and the like (this depends on the nature of God’s following: few blawgers have been savaged by a wild Quaker, for example). “Theologically Misdescriptive”, from Ron Coleman’s Likelihood of Confusion, is the paradigm for a gentle and whimsical treatment of a potentially explosive God-driven subject—trade marks which include the deity’s name. Ron raises the subject, gentle turns it around a couple of times so that readers can identify some apposite legal issues, and puts it to rest.

Titles of blog posts are important too. They can promise something exciting (might “The Cocooning Effect on Federal Judges” just reveal a new sexual fetish, involving cocoons?). Other titles promise no excitement at all but deliver much. “How Much Information Does A Search Query Reveal About A User?” is about as much a turn-on as yesterday’s sandwich, abandoned at the platform of Paddington Station. Yet the splendidly-named Maximilian Schubert (the Austrotrabant) produces a lively tale which encompasses a pretty French girl, TweetPsych and a 70-year old Austrian attacking a Google Streetview car with a pickaxe. Nice one, Max!

Frequency of posting helps keep blogs in their readers’ minds, which is why the next thing into the suitcase after the bucket and spade, on the blawger’s precious family holiday trip to the seaside, is a beloved electronic posting device. But frequency is no guarantee of quality and the charm of some blawgers is strictly rationed: their offerings pop up irregularly and when you least expect them, like prize truffles. Nicholas Weston’s Australian Trade Marks Law Blog is a case in point. “She will not be apples”, a neat post on iPOD v DOPi, is that rare blawg’s only article this year. The IPKat waits for more.

An observant blogger will spot a social or commercial development and recognise instantly that it has some significance for his readers which they might not have spotted themselves. A visionary blogger however will spot something that has no obvious connection with a current issue and turn it upon it like a probing searchlight. Thus TechnoLlama (Andres Guadamuz), in “Socrates and Free Software”, picks up a snippet of dialogue between sophist Antiphon and philosopher Socrates in Xenophon’s Memorabilia, where it contributes to the defence of Free Software.

Given the range of intellectual property subject-matter, it’s no surprise that IP Blawgs cover the whole gamut of human emotions: jocular comments on silly inventions and naughty trade marks can be found at one end of the range, while profound and scholarly analyses, replete with footnotes, can be found at the other. A good example of the Continental European tradition of Blogospheric Scholarship is IPEG’s team blog: “Value of Patents and the Endowment Effect". This report on recent research on the real or imagined tendency of IP owners to overvalue their property is the sort of thing that gives blawgs in Europe their grativas: you can almost feel the heat of the breath of Grotius on the back of your neck as he leans over your shoulder to read the screen.

The range of IP is also immense geographically, with over 200 jurisdictions in which treasured rights can be protected, exploited, misappropriated and infringed. It’s easy to write for your fellow-countrymen, but commenting on the developments in one country for readers in another requires quite different skills. That’s why Danny Friedmann (a.k.a. 龍知權) provides such a useful service with his IP Dragon blog. “Cheese With A Double Identity Crisis: Dutch, No Chinese, No Kiwi” is a good example of the genre.

Fortunately for this Kat, Danny writes in English only. But IP is one of those areas where you can easily bump into a bilingual blog. The IPKat’s Latin-American cousin IP Tango has both Spanish and English entries, but the most colourful species of bilingual IP blog—literally—is the exotic Catch Us If You Can !!! (Stefano Sandri, Lorenzo Litta and friends), whose “Bio-tec, da New York soffia vento di crisi... is typical of its output: last month’s ruling on human gene patents in Association for Molecular Pathology v US Patent & Trademark Office was picked up by many blogs, but never like this.

Blogs come, blogs go. The IPKat wonders why no-one has pounced on at least one abandoned blawg: Jorda on Trade Secrets. On 8 July 2009 the blog’s last post read: “Upon his transition to Emeritus Professor, Karl Jorda will no longer add new blogs. Pierce Law has decided to leave this blog up as a definitive source for the discussion on the complementariness of trade secrets and patents”. What a shame that no-one is building on a foundation consisting of a two-year archive, developing and applying the professor’s thoughts rather than leaving them to be fossilised in the blogosphere’s dubious amber. Bona vacantia is a topic familiar to many of us, so why not blogga vacantia too?

The discerning reader will by now be wondering about the whereabouts of the dog that didn’t bark: nothing has been said about copyright blawgs. This is because this particular Kat has had some difficulties with them. We all blog because we want to make an impact of some sort on our readers, and many blogs succeed in fulfilling a didactic role. The distinction between the didactic blog (which seeks to educate and shape the reader’s understanding) and the campaigning blog (which seeks to persuade the reader to adopt the writer’s position) is however a fine and often blurred one; I feel that most copyright blogs lie on the wrong side of that dividing line. I don’t like being expected to agree with a position which a blogger believes to be so self-evidently true that it requires neither explanation nor justification. This is more likely to be the case with copyright, on account of its freedom of speech dimension, than with patents or trade marks However, this being World IP Day, it would be churlish to omit mention of Cathy Gellis's thoughtful appraisal of the Statute of Anne and 300 years of copyright which featured in her blog Statements of Interest as Blawg Review #258.

A good example of a didactic blawg post can be found in a recent offering on John L. Welch’s TTABblog, “Test Your TTAB Judge-Ability on This Specimen of Use Question”: a recent application to register a US trade mark is turned into a simple exam question for the reader. The Trademark Trial and Appeal Board decision is given, the reader has a chance to test himself against the experts and John gives his own brief comment.

Closing thoughts

When the IPKat got blawging in 2003, he may have been the only IP-Animal on the block. Since then, he has been joined not only by llamas, dragons and platypuses but by a host of other animals. Rumour has it that an IP Elephant is in the pipeline: we hope that this will not cause any serious blockage. The choice of “Kat” was not accidental. Like Rudyard Kipling’s The Cat That Walked By Himself, the IPKat chose the path of independence, which is why it does not indulge in reciprocal bloglisting and carries neither paid adverts nor revenue-earning search engine-sponsored click-through ads. Do blogs grow to resemble their emblematic animals? Now, that’s a good subject for a future Blawg Review …

Next week Blawg Review #262 will be hosted at Public Intellectual
Blawg Review has information about next week's host, and instructions how to get your blawg posts reviewed in upcoming issues.

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