From March to September 2016 the team is joined by Guest Kats Emma Perot and Mike Mireles.

From April to September 2016 the team is also joined by InternKats Eleanor Wilson and Nick Smallwood.

Thursday, 25 August 2016

SUPER-BREAKING NEWS: Leaked draft Impact Assessment shows that Commission intends to introduce new mandatory exceptions, address value gap and introduce related right for publishers

Brussels correspondent:
Mystery Kat
What does the EU Commission intend to propose when it releases its next copyright package next month?

This is a question that has been haunting EU copyright enthusiasts for a few months now. 

While we wait for the official documents, Statewatch has just leaked a draft version of the Commission Staff Working Document - Impact Assessment on the modernisation of EU copyright rules [here's the link].

While this draft document is composed of nearly 200 pages and IT IS UNCLEAR WHETHER IT IS THE VERSION CURRENTLY BEING CONSIDERED BY THE COMMISSION, these - in a nutshell - are the possible future moves of the Commission:

Access to content

Ensuring wider access to online transmissions of broadcasting organisations by applying country of origin rule to the clearing of rights for broadcasters' online services ancillary to their initial broadcast [this is not surprising: I had suggested something along these lines a while ago].

Exceptions

Introducing three new mandatory [!] exceptions: 
  1. an exception with a cross-border effect covering digital and online uses in the context of illustration for teaching, with the option for Member States to make this (partially or totally) subject to the availability of licences; 
  2. an exception for text and data mining applicable to public interest research organisations covering text and data mining for the purposes of both non-commercial and commercial scientific research; 
  3. an exception for preservation purposes by cultural heritage institutions.
Value gap

In relation to online services storing and giving access to user uploaded content, imposing an obligation on them to seek, in good faith, to conclude agreements with right holders for the use of their content and to put in place appropriate and proportionate measures, in cooperation with right holders, to avoid unauthorized content in their services.


Rights in publications

Introducing in EU law a related right covering online uses of news publications and introducing the possibility for Member States to provide that publishers may claim compensation for uses under an exception.

***

A more detailed analysis will follow soon [see here for an early response]: stay tuned!

Linking & Copyright rapid response event on 13 September: come join us!

Where it all started ...
Is linking to unlicensed content a potential infringement of copyright? 

Following the (controversial) decisions in Svensson [here and here] and BestWater [see here for my table summarising the current state of the art], we will know the answer on 8 September 2016, when the Court of Justice of the European Union (CJEU) issues its much-awaited decision in GS Media, C-160/15

This is a reference for a preliminary ruling from the Dutch Supreme Court. It was made in the context of proceedings between Sanoma (the publisher of Playboy magazine) and GS Media, concerning the publication by the latter on a website that it operates (GeenSijl) of hyperlinks to other websites hosting unpublished photographs taken for a forthcoming issue of Playboy.

Litigation ensued before Dutch courts and eventually the Supreme Court decided to make a reference for a preliminary ruling to the CJEU, asking whether the provision of a hyperlink to a work made available on a certain website without the initial consent of the relevant rightholder and where it is freely accessible is to be regarded as an act of communication to the public.

Not to miss a second:
already on the move to the event venue
In his Opinion on 7 April 2016, Advocate General (AG) Wathelet answered in the negative, also holding that it is not important whether the person who posts on a website a hyperlink to another website on which copyright works are freely accessible to the public is or ought to be aware that the relevant rightholder has not authorised the initial communication. More generally, the AG suggested that linking should not fall within the scope of copyright protection.

***

The IPKat is partnering with Bristows for a free rapid response event to be held on Tuesday 13 September at the London offices of Bristows.

Come join us and a panel of experts, to discuss the impact of the judgment on EU and UK copyright laws!

Here's the programme:  
  • 5:30 Registration
  • 6:00 Panel discussion
  • 7:30 Drinks and canapés
This rapid response event will provide a forum in which to discuss the implications of this important decision. The format will be that of an informal panel discussion, in which panelists and attendees alike will share their views.

Moderated by Mark Brown (Bristows), the panel will feature Eleonora Rosati (University of Southampton and IPKat), Nicholas Saunders (Brick Court Chambers), and Theo Savvides (Bristows).

Click here to register! 

Wednesday, 24 August 2016

Singapore Government launches public consultation on major copyright reform

Beautiful Singapore
Singapore is currently engaged in a significant reform of its Copyright ActIn this context, yesterday Government launched a public consultation [open until 24 October 2016, 5 pm GMT+8] to seek feedback on proposed changes to this country's copyright regime. This is the full consultation paper.

In particular, views are sought on the following issues:


Formalities: whether Singapore should have a voluntary system of copyright registration, and details associated with such a copyright registry [it is important to recall that the no formalities rule contained in Article 5(2) of the Berne Convention only applies in an international - not domestic - context].

First ownership: whether creators of certain commissioned works should have first ownership of the copyright in the works. 
Duration: whether the duration of copyright protection for unpublished works should be limited to : (i) 70 years after the death of the creator for literary, musical, dramatic and artistic works, and (ii) 70 years after first publication for sound recordings, cinematograph films and works with an unknown creator if they are published within 50 years of creation, failing which, they will only be protected for 70 years after creation. 
Moral rights: whether there should be a new right of attribution, and details associated with this right [the answer to this should be yes, at least to comply fully with Article 6-bis of the Berne Convention - Singapore joined the Berne Union in 1998].
Information: whether the relationship between creators and publishers/producers can be helped by an information website for creators. 
Exceptions and contractual override: whether certain exceptions in the Copyright Act should be allowed to be restricted by contractual terms, and which exceptions would those be [UK-based readers will promptly recall that the exceptions introduced into the Copyright, Designs and Patents Act in 2014 - including parodyquotation and the now defunct private copying - prevent contractual override]
Fair dealing [Singapore introduced an open-ended exception akin to fair use, yet called fair dealing, in 2010: see s35 of the Copyright Act]: whether the fifth factor (from the exception of “fair use”), which relates to obtaining a copy of the work within a reasonable time at an ordinary commercial price ["the possibility of obtaining the work or adaptation within a reasonable time at an ordinary commercial price"], should be removed.
Orphan works: whether orphan works should be addressed by a limitation of remedies approach, a registry approach with upfront fees, or a modified registry approach with fees paid direct to the copyright owner. 
Text and data mining [a specific exception for non-commercial uses was introduced into UK law in 2014, and is currently under discussion for introduction at the EU level]: whether there should be a new exception for copying of works for the purposes of data analysis to facilitate text and data mining. 
Billy has already started
working on his responses,
though he has not been 

too productive so far
Education: whether there should be a new exception for giving or receiving instruction in the educational context, and whether the threshold for copying by or on the premise of a non-profit educational institution should be changed from 5% to 10%. 
Libraries and archives: whether the current exceptions for libraries and archives should be simplified and redrafted. 
Museums and galleries: whether there should be new exceptions for museums and galleries.
Disabilities [again, in the UK context, the relevant exception was broadened in 2014; in this article, among other things, I had argued that the previous, limited, scope of the UK exception was contrary to EU law]: whether certain technical amendments should be made in relation to provisions benefiting those who are blind, visually impaired, or otherwise print disabled. 
IPOS: Whether there should be a new exception for use by the Intellectual Property Office of Singapore (IPOS) of non-patent literature in patent search and examination work. 
Government: whether there should be a new exception for materials on official government registers. 
TPMs: whether the current list of allowable circumventions of technological protection measures (TPMs) should be retained, and what new allowable circumventions of technological protection measures should be put in place [this is not a minor point of the consultation: under review by the Singapore Government there is in fact (and among other things) the lawfulness of using VPNs to circumvent geo-blocks to access copyright content; the debate on VPNs is not limited to Singapore, but it is rather being undertaken in several countries, eg - recently - Australia].

Those interested in answering the public consultation can do so here, or by post to the following address:


Intellectual Property Policy Division
Ministry of Law
100 High Street
#08-02, The Treasury
Singapore 179434

Tuesday, 23 August 2016

Never Too Late: If you missed the IPKat last week

Did the last week of IPKat pass you by? Here is the 110th edition of Never Too Late with what you missed.

* Life after Cartier: The future of blocking injunctions – Simmons & Simmons Rapid Response EventKatfriend Jonathan Sharples looks back at our rapid response event discussing the Cartier decision and the availability of blocking injunctions to prevent trade mark infringement.

The InfoSoc Directive was found to introduce changes allowing graduated response systems as a form of injunction - independently of a finding of their liability, said Hogan J in Sony Music Entertainment Ireland Ltd & Ors v UPC Communications Ireland Ltd. Eleonora Rosati explains the judgment and its place in the context of EU law.

* Wednesday Whimsies
New EUIPO research on infringing business models, ITMA's Autumn seminar, UNION-IP events and more...

Andy Lee brings us an example of paying non-monetary issue fees (in relation to infringement) in practice, in this guest post. 

The US Supreme Court refused to review a big case concerning patentability of a diagnostic method - but on the bright side the US Court of Appeals for the Federal Circuit may have just cleared up some uncertainty to the Alice/Mayo test. Mike Mireles explains all.

*  After the split: so is it HP, Hewlett Packard, Hewlett Packard Enterprise or what?
Neil Wilkof ponders the legacy of brands following a corporate split or acquisition. 

 
PREVIOUSLY ON NEVER TOO LATE

Never too late 109 [week ending on Sunday 17 August] EPLAW mock trials | CJEU "flat rate" reimbursement of legal fees in C-57/15 | Transmission or retransmission? | Judgement in Actavis v ICOS | Collective management of copyright for images displayed by search engines | Corporates and #Rio2016 | Global branding

Never too late 108 [week ending on Sunday 10 August] Limerick Competition - the results | UK finally speaks out about the "facts" of IP post Brexit| Is "Deadwood really cluttering up trade mark registers? | Weekly roundup: Friday Fun 

Never too late 107 [week ending on Sunday 31 July] Article 28 declarations |Costs of ISP blocking injunctions |Friday Fantasies, featuring legal challenges to Brexit and  more |Huawei v Samsung |Hospira v Genentech |Questions on Article 3(b) SPC referred to CJEU |Book Review: Trade Secret Protection |Pokémon Go

Never too late 106 [week ending on Sunday 24 July] | Innovation & IPRs in China & India: Book Review Paris Tribunal rejects request to filter 'torrent' searches on Bing | Red colour mark reinstated in Germany | Update on Napp v Dr Reddy & Sandoz Litgation | Patent jurisdiction tussle in Rhodia v Molycorp | Decision on ISP liability from Rome | Copyright in the Animal Kingdom 


Monday, 22 August 2016

New IP law titles: from EU copyright to ISP liability


For some odd reasons, it seems that many good IP titles are being released at a time of the year when - at least in the Northern hemisphere - the attention for anything that relates to IP is increasingly and acutely replaced by a slightly stronger interest for holidays, sunshine, and the outdoors.

This has been also the fate of the following excellent titles:

The much-awaited second edition of Concise European Copyright Law, edited by Thomas Dreier and Bernt Hugenholtz (Kluwer:2016)

Despite the pretty appearance and title that might induce you into thinking that this is just concise overview of EU copyright law, be reassured that it's not [and not just because the tome exceeds 700 pages]

I first encountered this book (at that time in its first edition) as a student. It was hiding on a library shelf, pressed in between much heavier [in every sense] and thicker copyright books. The fame of the editors prompted me to open and read it: the contributors' ability to analyse relevant EU copyright directives in an essential yet thorough fashion left me very much impressed, and made me realise once again how those who truly master a certain discipline are able to say everything in a way that makes you think that the relevant concepts are actually easy to grasp. The truth is instead that it is not concepts per se which are easy, but it is rather their own explanation which possesses the clarity that can follow a complete understanding.

The second edition has retained this distinctive quality, which makes it a pleasure to read and consult. 

Bonus feature: In my own opinion, the commentary to the InfoSoc Directive (by Stefan Bechtold) is probably one of the most comprehensive and interesting ones currently available.


The Liability of Internet Intermediaries by Jaani Riordan (OUP:2016)

As the author observes in his preface, this is the first book dedicated to the doctrines and remedies which regulate the legal liability of internet intermediaries (or ISPs). 

Developed out Riordan's doctoral dissertation at Oxford, this book will appeal to academics and practitioners alike.

Also thanks to its rational and clear structure, the author has succeeded in a fairly challenging task (that few so far have completed successfully), ie explaining the law of ISP liability by showing also a thorough understanding of the functioning and ongoing development of underlying technologies.

Following an inquiry into relevant legal principles, the book also offers specific insights into topical areas of the law, including - amongst others - data protection, copyright, and defamation.

A particularly interesting section is the one devoted to Member States' case law in the area of website blocking. This is a must-read chapter that - if nothing else - shows how fragmented the relevant and seemingly harmonised ISP liability framework [and relevant remedies against ISPs] remains within the EU.  

Friday, 19 August 2016

After the split: so is it HP, Hewlett Packard, Hewlett Packard Enterprise or what?


Sometimes this Kat is puzzled by the selection of a company name (or names) after a corporate split, spin-off or acquisition. This Kat has
previously shared his bemusement over the selection of the corporate name, Mondelēz International, adopted in 2012 in connection with the spin-off of Kraft Food’s global snack and food brands (as reported on Wikipedia, it “… was suggested by Kraft Foods employees and is a combination of the words for "world" and "delicious" in Romance languages”). Uncertain in its pronunciation and difficult to store in one’s long-term memory, this Kat still wonders. One thing, however, can be said in defense of Mondelēz, after sorting out what the company name refers to, there is never any confusion between it and any other Kraft (or indeed any other) entity. The same cannot necessarily be said about the company names that were selected in connection with the 2015 split of the once-known Hewlett-Packard Company.

In that connection, this Kat recently met an acquaintance, who has a long-time connection with the company. Over a cup of coffee, this Kat innocently asked: “So which HP company do you now work for. And who is running the company”? My acquaintance fumbled his response to both questions, before ultimately coming up with the correct answers. As Kat readers may be aware, the former Hewlett-Packard Company has split into two separate companies. The then existing company changed its name to HP Inc. and retained the company’s personal computer and legacy business (with its ticker remaining HPQ), while a new company was created, called Hewlett Packard Enterprise Co. (with its ticker symbol “HPE”) and consisting of four divisions—Enterprise Group, Services, and Software and Financial Services. In May 2016, it was announced that Hewlett Packard Enterprise would sell its Enterprise Services division to Computer Sciences Corporation. This transaction is to be completed by March 2017; in the meantime, it does not appear that a name has been chosen for this new company.

So what we have is that the existing company has discarded the name Hewlett-Packard Company in favor of HP Inc. (“HP” being a name and mark long associated with the company). The second company is called Hewlett Packard Enterprise Company. (Kat readers will carefully note that the hyphen between Hewlett and Packard has been discarded, and its full presentation, it also includes a logo in the outline form of a green rectangle.) The two companies still both roughly share the Hewlett-Packard nomenclature history.

But it does not have to be this way. Consider Accenture, by some metrics the world’s largest consulting company. Accenture began as the business and technology division of the accounting firm Arthur Andersen and then became known as Andersen Consulting. Tension between the consulting and accounting practices led Andersen Consulting to change its name in 2001 to Accenture. In that same year, the Enron scandal broke, implicating Andersen Accounting and leading to its virtual demise. While the Andersen name will forever be associated with the Enron scandal, Accenture (no whiff of the word “Andersen” in its name) was recently recognized by Fortune magazine among the world’s most admired information technology services companies.

For sure, there may have been a bit of luck involved, since one of the terms of the arbitration award in the dispute between the two companies was that the latter could no longer use the Andersen name—leading to Accenture. But it also points to the risk in sharing a common name, when the two entities are separate and independent, and each goes off in its own business direction. One wonders how Andersen Consulting would have played out if it had retained the name Andersen as the accounting company was being dragged through the mud of Enron.

Regarding Hewlett Packard Enterprise (or HP or HPE or whatever), the issue is in no way connected to negative spill-overs, such as Enron, but rather what kind of corporate identities are being created. Truth be told, trying to keep straight the two companies by name and fields of activity is a constant challenge. One gets the sense that, at least for the moment, those concerned at the two companies seem to want a bit of confusion in their identities. Consider the following, which appears on the Hewlett Packard Enterprise website--
“Hewlett Packard has been in the innovation business for more than 75 years. Our vast intellectual property portfolio and global research and development capabilities are part of an innovation roadmap designed to help organizations of all sizes – from global enterprises to local startups – transition from traditional technology platforms to the IT systems of the future.”
Even after the split, what seems most important is that the two companies both continue to recall their common Hewlett Packard heritage, in haec verba. Whether this is an effective naming strategy in the longer term will remain to be seen.

Never Too Late: If You Missed the IPKat Last Week #Nevertoolate

Uber and Netflix: The challenge of becoming a global brand

'Tell JK I'm still rolling, tell Russell I'm a brand'. Becoming a global brand isn't as easy as Tine Tempah makes it sound - in this article, Neil Wilkof considers the difficulties Uber and Netflix have faced in their efforts to expand into new territories.

Are companies allowed to tweet about #Rio2016? 

Katfriend Oliver Löffel (Löffel Abrar) analyses the legal perils of tweeting using the hashtag #Rio2016 and explores how the position varies in different territories.

Compulsory collective management of copyright for images displayed by search engines: a French cultural exception to EU law 

Katfriend Olivia Klimis and Nicolas Lescot (De Gaulle Fleurance & Associés) take a look at new provisions in the French Intellectual Property Code (IPC) that regulate the publication of a plastic, graphic or photographic work by an online communication service. Do the new provisions comply with EU law? The post picks up where Eleonora Rosati left off in her post on the 2012 French legislation that allows  and regulates the digital exploitation of out-of-print 20th century books

BREAKING: Puns at the ready, Mr Justice Birss delivers epic CIALIS judgment 

At an eye watering 113 pages consisting of 491 paragraphs, Justice Birss's decision in Actavis v ICOS [2016] EWHC 1955 is recommended beach reading for those ready to jet off the south of France for their August holidays.

Norwegian Supreme Court: no "retransmission" without "transmission"


The Supreme Court of Norway has ruled that a TV cable distributor was not retransmitting broadcasts when it received content via an encrypted fibre connection and proceeded to broadcast it to the public. Ellie Wilson brings you the story.

CJEU: "Flat-rate" reimbursement for legal fees must cover a significant part of the costs incurred by the successful party 

In Case C-57/15 United Video Properties, the CJEU held that while Article 14 Enforcement Directive does not prohibit flat-rate reimbursement of legal costs per se, it sets limits on how Member States can set the flat-rate. Namely, the costs to be reimbursed by the unsuccessful party must be "proportionate", which means that they must cover "at the very least, a significant and appropriate part of the reasonable costs actually incurred by the successful party". Mark Schweizer explores how this ties in with the UPC's proposed ceilings on recoverable costs. 

Gathering evidence in patent proceedings? EPLAW's Europe/Japan mock trials may be what you need

September seems to be the month of mock trials, with at least three in the works as far as the AmeriKat is aware. An exciting mock dealing with the new world of biosimilars litigation will be entertaining the lucky attendees at this year's AIPPI's World Congress in Milan (more details to come). Only a few days later on 23 September 2016 in Paris, not one but four Mock Trials will be heard before Judges Shitara, Girardet, Grabinski and Hacon, respectively. Each hearing will address the topic close to any patent litigator's heart - gathering evidence in patent proceedings. The AmeriKat brings you the details. 


Never too late 108 [week ending on Sunday 10 August] Limerick Competition - the results | UK finally speaks out about the "facts" of IP post Brexit| Is "Deadwood really cluttering up trade mark registers? | Weekly roundup: Friday Fun 

Never too late 107 [week ending on Sunday 31 July] Article 28 declarations |Costs of ISP blocking injunctions |Friday Fantasies, featuring legal challenges to Brexit and  more |Huawei v Samsung |Hospira v Genentech |Questions on Article 3(b) SPC referred to CJEU |Book Review: Trade Secret Protection |Pokémon Go

Never too late 106 [week ending on Sunday 24 July] | Innovation & IPRs in China & India: Book Review Paris Tribunal rejects request to filter 'torrent' searches on Bing | Red colour mark reinstated in Germany | Update on Napp v Dr Reddy & Sandoz Litgation | Patent jurisdiction tussle in Rhodia v Molycorp | Decision on ISP liability from Rome | Copyright in the Animal Kingdom 

Never too late 105 [week ending on Sunday 17 July] High Court rejects Seretide combination colour mark in Glaxo v Sandos | Conference report: Should you arbitrate FRAND terms? | Friday Foghorn, including UK IPO invitation for IP valuation research bids


Wednesday, 17 August 2016

Bad and Good News for Bio-Pharmaceutical Patenting in the United States

Two recent developments in U.S. patent law mean mixed news for the bio-pharmaceutical industry.  First, the bad news -- the U.S. Supreme Court declined to accept for review the closely-watched Ariosa Diagnostics v. Sequenom case concerning the patentability of a diagnostic method.  Second, the good news -- a panel of the U.S. Court of Appeals for the Federal Circuit issued the Rapid Litigation Management v. Cellz Direct decision further clarifying application of the two-step Alice/Mayo test (1. claim directed to a patent ineligible category and 2. lack of inventive concept) concerning laws of nature.

Diagnosis?  Too many dumplings.
Prior to the U.S. Supreme Court's issuance of the Mayo v. Prometheus case invalidating claims to a diagnostic, there was general concern about patents inhibiting the use of diagnostics.  Indeed, the U.S. Supreme Court's decision in Association of Molecular Pathology v. Myriad Genetics was also, in part, directed to the use of claimed inventions for diagnostic purposes.  Since the issuance of the famous Alice v. CLS Bank International case and Mayo v. Prometheus, there is a concern that the Supreme Court has pushed too far against patent eligibility. Post-Mayo, it appeared that few diagnostic inventions would be patent eligible. 

In Ariosa Diagnostics v. Sequenom, a three-judge panel of the Federal Circuit found that Sequenom's diagnostic patent was patent ineligible.  This was despite the fact that the discovery made by Sequenom was very beneficial to patients and apparently against previous wisdom concerning the utility of the material used in the diagnostic.  Moreover, the patentee asserted that the natural phenomenon/law of nature was not preempted by the claimed invention.  Notably, Sequenom requested an en banc rehearing, but was denied by the Federal Circuit.  Interestingly, Judge Dyk wrote a concurrence essentially expressing concern that the Mayo case's sweeping test prohibiting the patenting of diagnostics would result in insufficient incentives for the invention of diagnostics.  Importantly, Judge Dyk set forth a way to distinguish and apply Mayo that would allow for some diagnostics to survive the Alice/Mayo test.  However, Judge Dyk signaled to the Supreme Court that it should take the case.  Unfortunately, the Supreme Court did not accept the invitation to hear the closely watched case.
Alice/Mayo back to the Vet!

In Rapid Litigation Management v. Cellzdirect, a three-judge panel of the Federal Circuit found that claims directed to a method to preserve liver cells were patent eligible.  The Federal Circuit further clarified the application of the Alice/Mayo test in the context of laws of nature/natural phenomenon.  As in the Enfish case, the Federal Circuit focused on the first prong of the Alice/Mayo test by finding that the claimed invention was not "directed to" a patent ineligible concept--the discovery that certain liver cells can survive multiple freeze/thaw cycles.  While the discovery was certainly made by the inventors, the patent claimed a "new and useful laboratory technique for preserving" those cells "for later use."  This approach seems to track part of Judge Dyk's analysis in his concurrence to deny en banc review of the Sequenom case.  The Federal Circuit further found that the second prong--inventive concept--was also satisfied to find patent eligible subject matter.  Notably, even though the additional steps were well-known, a method to preserve the cells was not known or present in the prior art.  An instruction to apply a known step a second time in the claims is essentially an inventive concept if prior art directed not to apply the known step again.

A press release issued by Sequenom notes that it has "equivalent" claims in enforceable and valid patents in other jurisdictions, including Europe, Japan and Australia.  It also states it is enforcing those patents in some jurisdictions.  From the perspective of global innovation, will there be less innovation in diagnostics if the Federal Circuit does not continue to "clarify" the U.S. Supreme Court's approach? 

Court Fees - Do you know what to pay?

The IPKat is grateful for this piece penned by Andy LeeSenior Associate at Brandsmiths.


Readers may recall that last September I contributed to an IPKat article on court fees which considered the possibility that a claimant in an IP case could pay the non-monetary issue fee at the commencement of proceedings (£480 at the time, now £528), and then if liability was established at the point of election, if damages were elected for, pay the monetary element of the court fee depending on the level of damages.  I suggested that if an account of profits were elected for then no further fee would be payable because there was authority that suggested such a claim was non-monetary. (Other IPKat articles on court fees are available)

The issue has now had direct consideration in an IP case (in which Brandsmiths are involved) by Master Clark: Lifestyles Equities CV & Anor v Sportsdirect.com Retail Ltd & Ors [2016] EWHC 2092 (Ch). The claim is for trade mark infringement but also inducement of breach of contract. We issued the claim on the basis I had suggested, and given an undertaking in the claim form to pay an appropriate fee if an enquiry was elected for. At the CMC the Defendant had asked for the claim to be stayed until (in its view) the correct fee had been paid. Master Clark asked for written submissions and a formal application which the Defendant then made.

In her judgment Master Clark decided that because there was a free standing contract claim, then a further fee should be paid. However, she then went on to consider the position as if the claim had been for trade mark infringement alone. She confirmed that an account of profits claim was a non-monetary claim (in line with Page v Hewitt). At paragraphs 15 and 16 she then said:

15. The Defendants' third argument was that even if an account of profits is a non money claim, the claim includes a money claim (damages) as an alternative, so that fee 1.1 is payable. I agree with Hildyard J that the Fees Order is not easy to construe, and the logic operating in the distinctions contained in it can be difficult to discern. I also agree with the claimant's counsel that it would be anomalous if a claimant with sufficiently early information about the defendant's activities to enable it to elect for an account of profits in its claim form could pay only the fee 1.5, but a defendant without that information must pay the higher fee. Further, the two forms of relief are not mere alternatives, but are mutually exclusive; and it is not until a claimant elects for an inquiry (which it may not do) that it can be said that its claim is to recover money
16. If, therefore, this claim had been only for trade mark infringement, then I would have held that the appropriate fee had been paid.

Master Clark’s key point was that until the claimant elects to pursue an inquiry as to damages no claim to recover money is brought. Owing to the split nature of IP claims this is not until liability is established, Island v Tring disclosure is provided, and an election made. Therefore, if there had only been a free standing trade mark claim the correct fee would have been paid.

This should therefore be the position with any IP claim because of the split nature. It will be interesting to see how this is applied in practice. As I mentioned in my first post, when the maximum fee was around £2100 it was unsurprising that this issue had not surfaced. However, once the fee was raised to £10,000 (for a claim over £200k) that was a significant rise in the cost of bringing a claim and potentially access to justice. That was even more so when a value of an IP claim is very rarely known at the start. Paradoxically, therefore, by raising the court fees to such an extent, the fee income may actually be reduced.

Wednesday Whimsies

Is it autumn yet?
ITMA Autumn Seminar. This year's ITMA Autumn Seminar will deal with "New Technology IP" on 6 October. With the future of IP shrouded in mystery, or at least, a bit fuzzy with regards to wearable tech, domain names, 3D printing and - of course - Brexit, this conference will deal with the implications of all this new technology, with confirmed speakers from the IPO, Hogarth Chambers, Waterfront Solicitors and more. To sign up or for more information, it's here.

EUIPO - Research on Online Business Models.  The EUIPO has recently published new research into the business models used for online infringement of IP rights. The report, which contains some helpful visuals for explaining the impacts of infringements and analyses 25 distinct business model canvasses, can be viewed here.

What is the term of European patents? A Katpat and thanks go to Mike Snodin for drawing a recent article he co-authored with Jim Boff to IPKat's attention, explaining why patents in EU Member States may not - or at least should not - expire quite as early as some national laws seem to suggest. This article highlights the incompatibility of patent terms with the UK's international obligations and can be read in full here.


Majulah Singapura!
Singapore IP Week. It is a big month for Singapore, which has seen their first ever Olympic gold medal and next Singapore IP Week. It is always interesting to follow Singapore in its efforts to become a major IP hub.  One way it is doing so is to expose top law students to IP law and policy at an early stage of their career. In that connection, the Intellectual Property Office of Singapore (IPOS) recently partnered with the National University of Singapore’s Faculty of Law (NUS) to offer an academic award for the top student in the Foundations of IP Law course in NUS. The first awardee has now completed her internship with IPOS. The IPKat wonders whether this is something that more national IP offices should be doing to promote the field with young lawyers...


EPO Online Services Workshops. A series of workshops introducing the new online filing service at the EPO will be held in London on 13-14 September, 18-19 October and 29-30 November. The workshops are aimed primarily at Online Filing users, professional representatives and support staff/records department staff who are familiar with the basic functions of Online Filing. For more information and to register, see here.

UNION-IP has just informed the IPKat that "Dr Bobby Mukherjee, chief IP Counsel at BAE Systems and former President of IP Federation, will be speaking at the next UNION-IP dinner meeting on 20 September 2016 at the Royal Overseas League.  Bobby will address us on “IP in the Post-Referendum World: An Industry Perspective”.  With his strong understanding of the industry perspective, personal involvement in policy making and close links with international organisations, Bobby is brilliantly placed to keep us up to date on where IP stands  in the current, and somewhat unexpected, period of change".  The details are in the attached flier and link to book is here.

Don't forget to check our events page for more like this.


Specsavers should've gone to went to the IPO! Based on Specsavers' advertising slogan "should've gone to Specsavers", the word "should've" has been the subject of a trade mark application and can be viewed online at the IPO here.

It is a somewhat controversial aspect of trademarks, but common words can be the subject of trade mark applications when they acquire a distinctive link to a company through "use or association" - should the application be granted, Specsavers will Probably [registered by Carling in relation to beer and alcohol products] be lovin' it [trademarked by McDonald's] ...

For more perspective on this story, see here.

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