Wednesday, 4 March 2015
here to sign up for the most exciting and, if you are invited to speak, potentially scary event you are likely to experience.
here); (ii) in French: "L'industrie du parfum à l'assault du droit d'auteur... ¿fumus boni iuris?" Propriétés Intellectuelles nº 16, 2005, p. 254 (here); (iii) in Spanish: "La protección del perfume por el derecho de autor. Comentario a la sentencia de la Cour d'Appel de Paris de 25 de enero de 2006 en el caso L'Oréal c. Bellure" pe.i. Revista de Propiedad Intelectual, nº 22, 2006, p. 107 (here). Thanks so much, Sergio!
|(Post-lunch) format shifting|
- format-shifting (e.g. from a CD onto your MP3 player)
- time-shifting (e.g. saving Downton Abbey onto your Personal Video Recorder or PVR) or
- making back-up copies.
Importantly, the exception permits the creation of a copy of the work in certain circumstances (i.e. it is a permitted act in relation to the reproduction right); it does not therefore extend to other uses of the work such as communicating or distributing the work to the public.
It is also worth noting that Recital (35) to the InfoSoc Directive provides that “in circumstances where the prejudice to the rightholder would be minimal, no obligation for payment may arise”. In other words, where there is minimal or de minimis harm, no fair compensation is required.
- What constitutes “harm” suffered by the author, and in what circumstances is there “minimal” or "de minimis" harm such that fair compensation is not required? [Further clarity on what constitutes de minimis harm will hopefully be provided in the pending Copydan decision. This is a key point in the pending judicial review application before the courts of England & Wales in relation to the UK’s failure to provide a levy system in its implementation of the private copying exception – see The 1709 Blog post here.]
- Who is responsible for discharging the obligation to pay fair compensation: should it be the manufacturer / producer, the importer, the reseller / retailer? [Whilst Member States enjoy a broad discretion in this regard (see Case C-462/09 Thuiskopie), this issue still requires further clarification, particularly in the context of multi-level, cross-border distribution systems where it might not be possible to know whether the final end-user is a business or private user]
- Does the levy system safeguard a “fair balance” between the interests of authors and the end-users of the work? [One point which arose in striking this “fair balance” was whether the exception applies only to lawful copies of the work, to which the CJEU’s response in Case C-435/12 ACI Adam was Yes – see previous Katposts here and here]
|Is copyright in a catatonic state?|
A helpful resource on the global position in relation to private copying – see the International Survey on Private Copying: Law & Practice 2013 (23rd ed.) here.
|Now with a snazzy logo, the UPC|
Industry Coalition is here
|Don't understand the "injunction gap"? The UPC Industry Coalition has|
a helpful infographic just for you!
1. Validity should be decided before or at the same time as infringement, or the remedy from the injunction decision should be stayed until after the pending validity issue has been decided.
2. Judges should have the discretion and direction to consider the proportional harm and fairness to the parties when deciding whether to grant injunctions.
In the meantime, the AmeriKat welcomes industry's online voice and presence which has so far, sadly been lacking. Let's just hope someone is listening.
With Easter slowly approaching, you'd be forgiven if you expected to read about a yet another chapter in the perennial Easter Bunny dispute(s). However, this Kat can offer you an update on the Haribo vs Lindt Gold Bear trade mark dispute: according to information published on the German Federal Court of Justice's website, this equally gold-themed matter has now reached Germany's highest court in civil matters and a hearing in this dipsute has been scheduled at the BGH for 25 June 2015, (BGH case reference I ZR 105/14).
|The original gold bears|
It is now for the BGH to decide whether Lindt's teddies are conceptually or otherwise too similar to Haribo's earlier rights. May this even be another reference to the CJEU? Will all evidence make it safely to the BGH? Our readers will recall that the BGH had reversed and remanded ajudgment by OLG Frankfurt in one of the Easter Bunny disputes, mainly because the Riegelein chocolate bunny submitted in evidence was missing from the files (please see here and here for reports on this odd event) ... Only time will tell!
Tuesday, 3 March 2015
The politics of US patent law reformLaw reform can be a tricky process. The experience in the USA and the attempts to reform its patent system are good examples of this.
In January this year the House of Representatives saw the reintroduction of the patent reform bill: the . Followers of IP developments will be well aware of how controversial the debate over patent law reform has become. The main thrust of this proposed legislation is to deal with so-called ‘patent trolls’ by changing the manner in which claims of patent infringement are handled in the US courts. The new bill bears many of the same features of its predecessor:
• The holder of a patent that files a lawsuit will need to provide greater detail in support of their case: it would need to include infringement charts showing how each limitation to each asserted claim in each asserted patent is found within each allegedly infringing product or process;
• There would be the introduction of a presumption of attorney fees to the prevailing party for spurious claims of infringement;
• In any lawsuit, the patent owner would be obliged to disclose “the ultimate parent entity” of any assignee of the patent; and
• The courts will be required to establish the validity of the patent early on in the litigation process.
The introduction of this piece of legislation was halted in the last year, following fears that it was not proportionate to dealing with patent trolls, and could be detrimental to legitimate patent holders in the US. Unfortunately these concerns have not disappeared. Further, some in the US have suggested that the bill does not take account of how much has happened in patent litigation since it was first introduced in 2014. In particular, the Supreme Court has been unusually busy in dealing with patent law cases, and has taken some important steps to tackle spurious patent litigation. There is however much support for the legislation, in both the political and commercial spheres, where there are those with the belief that the current patent regime is ineffective for dealing with patent trolling.
Looking at the changes that the legislation proposes in the abstract, they seem to contribute to a robust system where cases are dealt with efficiently. However when considered in context there are some concerns, particularly concerning the exact details of the proposed changes. The requirement that litigants go into greater detail in their pleadings regarding infringement could indeed help the litigation process. However, lacking any guidance on exactly how much detail is needed, the courts will be left not knowing how high the standard of pleadings must be.
Further, the Supreme Court has already heightened the standard of pleadings in civil cases, raising the question of whether greater detail is needed. In Ashcroft v Iqbal 556U.S. 662 (2009) the Court ruled that the requirement that a complaint have sufficient “factual matter” to be plausible will apply to all civil cases – though it is not yet known whether this standard will be different to what is ultimately passed into law.
Additionally, objectively speaking, there is a risk that the presumption of attorney’s fees could have a detrimental or ‘chilling’ effect on smaller enterprises that may lack the resources to enforce their patents. This point was recently emphasised by a number of leading US universities in a letter to Congress, arguing that:
“The prospect of substantially increased financial risk would discourage universities and other patent holders lacking extensive litigation resources from legitimately defending their patents. Moreover, this increased financial risk would deter potential licensees and venture capitalists from investing in university patents in the first instance, reducing the number of research discoveries that advance to the marketplace.”
The full letter can be accessed hereWhat will happen next? How does the scene look from closer to the Capitol? This Kat is sure that we will soon hear from some of our readers ...
While it is true that the landscape of patent litigation has changed since the Innovation Bill was first introduced, the political landscape has also undergone a dramatic change: both the House of Representatives and Congress host a strong Republican presence that supports the passing of the bill. Moreover there appears to be increasing pressure from the business sector to implement this legislative change.
It has happened before and it will happen again, but it's always a surprise when it does. Sometimes a mark is almost too well known for its own good. The worst case scenario is when it's so well-known that it becomes synonymous with the goods or services for which it's registered and ends up being generic. A less bad case, but definitely a frustrating one, is where it's sufficiently well known that consumers are not considered likely to be confused between it and an uncomfortably similar mark. In the European Union we have seen something like this, for example when the owner of the PICASSO Community trade mark came up against a later PICARO mark (see Case C-361/04, here). In this guest post Ng Qi Ting (Kass International, Kuala Lumpur) writes about a similar instance in Singapore which occurred last year:
You can read the decision in full here.While the Japanese company Seiko may be a pioneer in “exquisite workmanship” when it comes to timepieces, establishing itself as a famous brand to half the world, it certainly did not enjoy much success in its battle in opposing the trade mark SEIKI from securing a place in the trade mark registry of Singapore.Choice Fortune Holdings Limited applied to register SEIKI for electronic goods such as television sets and disc players. In a natural course of events, Seiko Holdings Corporation, with its SEIKO trade mark also covering goods such as gramophones and metronomes in the same class, brought an opposition against the registration of SEIKI at the Intellectual Property Office of Singapore (IPOS). Said Seiko, Choice Holdings’ mark was confusingly similar to its own and the use of SEIKI would dilute its goodwill in SEIKO.Regarding confusion, Seiko had to satisfy the familiar “step-by-step” approach, establishing that (i) the marks were similar; (ii) the goods were identical or similar; and, as such, and (iii) part of the public is likely to be confused.The Registrar took the view that there are no strict formulae to adhere to when comparing the marks. It is the “first impression” created by a mark that matters. As the Registrar said:“the assessment of mark-similarity is more an art than a science, more of feel than of formula, though guided by principles.” In this instance, the Registrar found that SEIKI was visually and aurally similar to SEIKO, albeit to a low degree. In terms of conceptual similarity, the Registrar was of the view that, as Japanese is not a common language in Singapore, SEIKO and SEIKI -- the latter being a word meaning "century" or "regular" in Japanese and also being a given name -- would simply be viewed as invented words with “Japanese-like characteristics” by the Singaporean public. Although the Registrar did not rule out the possibility of finding conceptual similarities between two marks that shared the same national characteristic, here the fact that both words sounded Japanese was too vague a concept for the Registrar to find conceptual similarity. It was also found that there was similarity in the goods represented, in that the goods covered by Seiko's mark overlapped with those of Choice Fortune.Despite these findings of similarity, the Registrar held that the likelihood of confusion was minimal. Although visual, aural and conceptual similarities are to be taken into consideration when deciding whether the marks are similar, these aspects are not to be taken as a pre-definitive yardstick to make a finding of confusion. Other factors are to be taken into account and the finding of confusion should always be based on the facts in each case. Here the Registrar felt that the likelihood of confusion was low because the products represented by the marks were relatively expensive, and their consumers were unlikely to purchase them on a whim. On the contrary, their consumers would have made the necessary enquiries before purchasing them and, even at the point of purchase, those consumers would pay more attention.As for dilution, SEIKO was recognised for timepieces by the majority of the Singaporean public, and the Registrar was not convinced that consumers would draw a mental connection between SEIKO and SEIKI was it is unlikely that any rational consumer would assume that Choice Fortune's electronic goods such as television sets and disc players emanated from Seiko. It was deemed implausible that the SEIKI mark would cause dilution in an unfair manner towards the goodwill in Seiko's mark. Seiko had thus failed to conciliate the elements under all the grounds raised, so SEIKI was allowed to proceed to registration.What was significant here was that the existence of a long and established reputation could actually act against being able to establish likelihood of confusion.The more strongly a trade mark is ingrained in the mind of consumers, the less likely it is that confusion would arise. This was not a decision to give heart to owners of well-known brands.
" ... [all parties agreed that] the best solution to the problem which arises in this case is to try to ensure that prescribing doctors prescribe pregabalin for the treatment of pain by reference to the brand name Lyrica rather than by reference to the generic name pregabalin. That will ensure that pharmacists only dispense Lyrica when presented with prescriptions for pregabalin which are (at least so far as the prescriber is concerned) for pain without requiring the pharmacist to know the indication for which pregabalin has been prescribed.”
|It was only after the pharmacist had queried|
his third prescription for Lycra that Dr Mog
realised that there might be problems ...
“obvious difficulty with this submission in the circumstances of the present case is that, if my previous judgments are correct, then it is not seriously arguable that Actavis are infringing the Patent.”
“it is well established that Norwich Pharmacal relief is available where there is an arguable case of wrongdoing based on the evidence available at the time of the application…[and that]… in my first judgment of 6 February 2015, I declined to strike out Warner-Lambert’s claim under section 60(1)(c), on the ground that this was a developing area of law and therefore the facts should be found before attempting definitively to decide what the law was, as being sufficient for this purpose.”
- Warner-Lambert Company LLC is engaged in a dispute with a number of generic pharmaceutical suppliers regarding pregabalin, which remains on patent for one indication, namely, the treatment of pain. As part of that dispute, the Court has required NHS England to issue this guidance. Our guidance is that, because of Warner-Lambert's patent rights:
1. Pregabalin should only be prescribed for the treatment of neuropathic pain under the brand name Lyrica® (unless there are clinical contra-indications or other special clinical needs e.g. patient allergic to an excipient, branded product unavailable etc which apply to Lyrica®, when you should not prescribe Lyrica® or pregabalin)
2. When prescribing pregabalin for the treatment of neuropathic pain to patients you should (so far as reasonably possible):
a. prescribe by reference to the brand name Lyrica®; and
b. write the prescription with only the brand name "Lyrica", and not the generic name pregabalin or any other generic brand.3. When prescribing pregabalin for the treatment of anything other than pain, you should continue to prescribe by reference to the generic name pregabalin.
4. When dispensing pregabalin, if you have been told that it is for the treatment of pain, you should ensure, so far as reasonably possible, that only Lyrica®, the branded form of pregabalin, is dispensed. However, when dispensing pregabalin for the treatment of anything other than pain, you are not restricted to dispensing Lyrica®.
To ensure that practitioners are readily able to recall and follow the guidance above, you should consider amending the operation of any electronic prescription system that is within your power or control to include a notice or advice box which uses the following or similar wording:
"If treating neuropathic pain, prescribe Lyrica (brand) due to patent protection. For all other indications, prescribe generically."We will let you know should this position change.
Contributors to this volume include Laurence R. Helfer (who edited an earlier Edward Elgar collection of essays, Intellectual Property and Human Rights, published in 2013) and more Katfriends than it would be proper to list here, including a sprinkling of Queen Mary colleagues, the perceptive Philipp von Kapff (OHIM Boards of Appeal), New Zealand scholar Suzy Frankel and the ever-charming neo-Oxonian Dev Gangjee -- whose own volume in this series, on geographical indications, is keenly awaited.
Here's how the publishers describe this tome:
Research Handbook on Human Rights and Intellectual Property is a comprehensive reference work on the intersection of human rights and intellectual property law. Resulting from a field-specific expertise of over 40 scholars and professionals of world renown, the book explores the practical and doctrinal implications of human rights considerations on intellectual property law and jurisprudence.The field under review is a difficult one to address objectively, this Kat feels. People who write about human rights are generally people who believe strongly in their virtues and who like the notion of them being as widely applicable and properly protected as is consonant with civilised life in a well-ordered society: since society is made up of individuals, it is duty-bound to respect them. The effect of this is that, it's not easy to find anyone who writes about human rights because he or she doesn't like them or, in our context, because there exists a strong conviction that they should be subordinate to merely commercial rights. Intellectual property law, in contrast, covers a wider spread of views, from those who research and promote those laws because they passionately believe in them, to those whose interest is stirred by the dangers they pose if they are not properly framed within the parameters of competition policy and enforced within the context of the need to recognise the overriding imperative of human rights protection. This might explain why Professor Geiger's book has drawn on so long a list of distinguished contributors -- and why, in this Kat's opinion, the good professor deserves a decent katpat for all his effort.
The various chapters of the book scrutinize issues related to interactions among and between norms of different legal families and the role of human rights in the development of a balanced intellectual property legal framework. The innovative approach of the book is reflected in its structure: the first part provides a foundation for the human rights and intellectual property discourse; the second sheds light on the human rights implications for the development of intellectual property; and the third (characterised by a human rights perspective) is devoted to the specific issues of interaction between human rights and intellectual property.
Exploring in depth a variety of interactions between human rights and intellectual property law, the book will be of great interest to academics and experts working within human rights, intellectual property, development, international relations and international public law.
Bibliographic data: Publication date April 2015 [though it seems to be published already ...]. xxiv + 727 pages. Hardback ISBN 978 1 78347 241 3; ebook ISBN 978 1 78347 242 0. Price US$295 (online price $265.50). Rupture factor: not to be sneezed at. Book's website here.
Other books in the same series are
- Copyright Law: A Handbook of Contemporary Research (edited by Paul Torremans)
- Trademark Law and Theory: A Handbook of Contemporary Research (edited by Graeme Dinwoodie and Mark D. Janis)
- Patent Law and Theory: A Handbook of Contemporary Research (edited by Toshiko Takenaka)
- Research Handbook on the Future of EU Copyright Law (edited by Estelle Derclaye)
- Law and Theory of Trade Secrecy: a Handbook of Contemporary Research (edited by Rochelle C. Dreyfuss and Katherine J. Strandburg)
- Criminal Enforcement of Intellectual Property: a Handbook of Contemporary Research (edited by Christophe Geiger)
- Research Handbook on Intellectual Property Licensing (edited by Jacques de Werra)
- Research Handbook on Cross-border Enforcement of Intellectual Property (edited by Paul Torremans)
- International Intellectual Property: a Handbook of Contemporary Research (edited by Daniel J. Gervais)
Monday, 2 March 2015
SUEPO called off its proposed march on the British consulate in Munich last Wednesday in the face of potential liability for breaches of obligations under the European Patent Convention and Service Regulations -- but the union has called for a fresh demonstration on Tuesday 25 March, says Merpel.Supreme Petfoods Ltd v Henry Bell & Co (Grantham) Ltd  EWHC 256 (Ch) is another blockbuster judgment from Mr Justice Arnold in the High Court, Chancery Division, England and Wales. It is about a business that got a bunch of trade marks covering the somewhat unregistrable word "supreme", and then decided to bring proceedings against a defendant who wasn't using the word as a trade mark and whose use of it went back 20 years, recounts Jeremy.Merpel re-sinks her paws in the hot story of the decision that Hague Court of Appeal issued in the sadly famous proceedings in SUEPO v EPO [on which see her earlier post here]. This time, the floor goes to nothing less than EPO's
EmperorPresident Monsieur Benoît Battistelli.Jeremy has just received a communication from a spokesman for the UK Intellectual Property Office (IPO). It is nothing less than the first public response of any national office to the current EPO unrest.After his earlier note on Supreme Petfoods Ltd v Henry Bell & Co (Grantham) Ltd, Jeremy hosts this post of guest contributor Tim Behean (Sipara, Oxford), which focuses on just one aspect of this multifaceted ruling: burden of proof in so-called "double identity" actions in which the mark used by the defendant is identical to that of the claimant and the goods or services of the respective parties are exactly the same too.Jeremy reports on the joint BLACA-IPKat event on sensory copyright [on which see earlier Katpost here].Busy week of IP events for Jeremy, who this time recounts another tasty seminar entitled "Geographical Indications: FAGE, Feta, Fontina, and the battle for world markets".Here Jeremy hosts the third in the series of posts from London-based law firm Bristows (where guest Kat Tom works) on its real-time experiment in litigating before the proposed Unified Patent Court (UPC). The first two reports are "A test-drive for the Unified Patent Court" (June 2014, here) and "A test-drive for the Unified Patent Court: Part II" (October 2014, here). This one too is masterminded by Alan Johnson and Alexandria Palamountain.The European Patent Office publishes some patent data on which Katfriends at the Chartered Institute of Patent Attorneys have already pounced. Note the headline assertion that British business is failing to protect innovation, then read on, says Jeremy.Following to the last events of the battle over the European Patent Office's governance, the Dutch Minister of Justice intervened with regard to the EPO's immunity from execution of court orders under international law, Merpel recounts.* BREAKING NEWS: CJEU says that Member States are free to determine who must pay droit de suite royaltyThe Court of Justice of the European Union (CJEU) issued its decision in Case C-41/14 Christie's France, a reference for a preliminary ruling from France seeking clarification as regards that peculiar creature of EU copyright known as artist's resale right, or droit de suite within Directive 2001/84 (the Resale Right Directive), and Eleonora is here to explain what that is about.After the Patents Court ruling of Mr Justice Arnold in Warner-Lambert Company, LLC v Actavis Group Ptc EHF & Others, which Darren reported here, Jeremy has got some news to break on that painful patent war.Valentina reports on a fresh trade mark dispute that the General Court has just decided, Pangyrus Ltd v OHIM, RSVP Design Ltd, Case T-257/11.ZTE Corporation is ramping up to take advantage of the new legal environment that has resulted from the settlement between Qualcomm and the Chinese National Development and Reform Commission (NDRC) over claims that the company’s licensing practices had violated the country’s Anti-Monopoly Law, recounts Neil.The UK Government will improve protection to make sure businesses are not exposed to unnecessary and baseless accusations ... in response to the Law Commission’s Report, reports Jeremy. That's cool!, says Hogan Lovells' Katfriend Alastair Shaw.Birgit is back with one of her favourite topics: the interface between the naming of polar bear cubs and intellectual property rights.Valentine’s Day makes Suleman think about relationships: the cruelty, the complexity and the cuddles. It is all about patent law and how subject matter ‘relates’ to other subject matter, he explains.*****PREVIOUSLY, ON NEVER TOO LATENever too late 34[week ending Sunday 22 February] – Bill Gates goes to China | Ms Swift's issue with trade marks | TMs and jurisdiction for on-line infringement cases | UK's Chartered Institute of Patent Attorneys and the EPO | Divani & Divani | UK first in global IP enforcement | SUEPO v EPO | Enterprise v Europcar  EWHC 300 | Again on Cartier International AG and Others v British Sky Broadcasting Ltd and Others | Googling inventor clients | Code of ISPs' practice in Australia | Specialised IP Courts in China.Never too late 33 [week ending Sunday 15 February] –- Evoking Audrey Hepburn’s image is not OK in Italy | Reasonable royalty and moral prejudice: new reference to the CJEU | CoA for England and Wales on parallel importations in Speciality European Pharma Ltd v Doncaster Pharmaceuticals Group Ltd & Madaus GmbH | The Logic of Innovation: Intellectual Property, and What the User Found There and Tritton on Intellectual Property in Europe reviewed | Italian baked goods’ trade marks in foreign megastores | Belmora LLC v Bayer Consumer Care AG and Bayer Healthcare LLC, Article 6-bis in Northern Viriginia | EU TM judges get together in CET-J | Chancery division on Dude’s copyright in Fresh Trading Limited v Deepend Fresh Recovery Limited and Andrew Thomas Robert Chappel | Sound-alike litigation in the music industry | Informal AC’s get together at EPO! | To Kill a Mockingbird reloaded | Personalised medicine.Never too late 32 [week ending Sunday 8 February] –- Brazilian PTO’s delays | The Research Handbook on International Intellectual Property reviewed | Laura Smith-Hewitt | IP, women and leadership: the poll responses | Decline of West’s trust in innovation | Wikipedia public domain photos |CJEU in Case C-383/12 P Environmental Manufacturing LLP v OHIM | The Nordic IP Forum | The future of EPO’s BoA | Warner-Lambert v Actavis Mark 2 | Dragons' Den: where entertainment meets mis-advice? | Hospira v Genetech Mark 1, the Appeal | Litigation-Proof Patents: Avoiding the Most Common Patent Mistakes and Patent Portfolios: Quality, Creation, and Cost reviewed | Italy and San Marino’s friendship on IP is over| Problems and imperfections in biotech patenting: realities on the ground and trying to fix the system.
Never too late 31 [week ending Sunday 1 February] -- Women in IP, a MIP’s perspective | Another linking reference to the CJEU | Catarina Holtz on Disciplinary authority over the EPO BoA | EPO pays to say that patent examiners’ life is truly cool | You can’t name your daughter ‘Nutella’ | CJEU in Arne Forsgren v Österreichisches Patentamt | Blocking injunctions in Greece | IPEC and bondage in Haiss v Ball | Present and future of patent profession | Belgium asks CJEU: does the Enforcement Directive allow cost-capping in IP litigation? | Dutch diverge with English as Novartis prevails on Zoledronic Acid in Netherlands | Slogan and TMs | The coffee capsule wars | Declining public trust in innovation | IPEC’s ruling in Global Flood Defence Systems& Another v Van den Noort Innovations BV & Others | Again on CJEU ruling in Case C-419/13 Art & Allposters | Biotech financing: the risk components, ‘going long’ and patents as knowledge currency.