For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Wednesday, 22 October 2014

BGH decision "Yellow dictionary" colour trade mark dispute

The German Federal Court of Justice (Bundesgerichtshof, short: BGH) has now published the full grounds (in German) of its recent decision in the "yellow dictionary" trade mark dispute between German publishing house Langenscheidt and RosettaStone (case reference I ZR 2284/12 “Gelbe Wörterbücher” of 18 September 2014); please recent IPKat report hereIn its decision the BGH found that the yellow product packaging and advertisements used by RosettaStone, a business which distributes language learning software, infringes the colour trade mark owned and extensively used by Langenscheidt.


What had happened? German dictionary publisher Langenscheidt and language software publisher Rosetta Stone both used different but similar shades of yellow on their products: Langenscheidt mostly for the covers of its bilingual dictionaries, Rosetta Stone mostly for its language learning software.  A conflict ensued and Langenscheidt took the matter to court, alleging trade mark infringement under § 14 (2) No. 2 German Trademark Act. The lower courts agreed (Landgericht of Cologne, case reference 31 O 352/11 of 19 January 2012 and Oberlandesgericht Cologne, case reference 6 U 38/12 of 9 November 2012). They ordered an injunction of Rosetta Stone’s use of the colour yellow and declared it liable for damages and costs. 
Rosetta appealed and applied for a cancellation of Langescheidt’s colour trade mark at the German Trade Mark & Patent Office. Unsuccessful in the first and second instances, this action is currently also pending at the BGH but has so far not been decided; (case reference I ZB 61/13).  The oral hearing in this case is scheduled for tomorrow….

Decision: in its only 60 paragraphs long decision the BGH confirmed the lower courts’ decisions and held that there was likelihood of confusion under § 14 (2) No. 2 German Trademark Act.

The BGH’s headnotes neatly summarise this concise  decision (Kat translation):

(a) A suspension of a trade mark infringement court proceedings with regard to a pending cancellation action against the trade mark on which the infringement proceedings are based will usually not be allowed, where there no utmost probability (“keine überwiegende Wahrscheinlichkeit”) of success in the cancellation proceedings.
(b) A heightened degree of distinctiveness of an abstract colour trade mark is not a necessary prerequisite for an assumption of trade mark use of the colour use objected to.
(c) There is a high product similarity between language learning software and bilingual  dictionaries.
(d) Where consumers regard a colour used on product packaging as a (secondary) sign and not as part of a combined sign, then the colour has to be the basis of a isolated comparison of similarity of the signs.
In more detail:  the BGH decided against a suspension of the infringement proceedings pending the outcome of Rosetta Stones’ cancellation action against Langescheidt’s mark because “its outcome was still uncertain”.  The BGH also found that Rosetta’s use of the colour yellow was “use as a trade mark” but acknowledged that consumers tend to view the use of a colour on products, packaging and advertisements as an ornamental embellishment and would only “in exceptional cases” interpret it as trade mark use. Nonetheless, the German market for bilingual dictionaries was strongly influenced by the use of colours functioning as indicators of trade origin. This not only affected related products, including Rosetta’s language learning software, but also meant that consumers would regard the Rosetta’s extensive use of the colour yellow in its market segment as a sign indicating trade origin. Langenscheidt’s registered colour trade mark had acquired an “average of degree of distinctiveness” due to its long term use.  

Also yellow
Referring in much detail to the CJEU’s recent decisions in the Specsavers (C-252/12) and the Oberbank and Santander cases (joined cases C-217/13, C-218/13), the BGH found a likelihood of confusion. The judges held that the claimant’s and defendant’s goods (bilingual dictionaries vs. language learning software) were very similar: stating that a dictionary was a “helpful and indispensable aid” when learning a language. Furthermore, the shades of yellow used by both parties were highly similar. Even though the defendant had also used its word mark “RosettaStone” and blue stone logo on its products and in advertisements, in an overall impression consumers would nonetheless regard the use of colour as an independent sign so that any comparison of the signs had to focus on the colour in isolation. Overall, and bearing in mind the average degree of distinctiveness of the claimant’s yellow colour trade mark and given the high degree of similarity between both, the signs and the goods, a likelihood of confusion could not be excluded.  

The issue of ‘trade marks and colour’ has been discussed in several recent CJEU decisions, notably Specsavers, Oberbank and Santander cases and is in the centre of OHIM’s recent “Common Communication on the Common Practice of the Scope of Protection of Black and White Marks” of 15 April 2014. The BGH’s decision contributes illustrates that consumer habits and market practices can have a strong impact on the assessment of likelihood of confusion.  It will be interesting to see what the BGH decides in RosettaStone’s cancellation action ...

Wednesday whimsies

"Thank you" 1.  In a world which is as full of anger, resentment and selfishly bad manners as the one in which we sometimes seem to be living, it never hurts to express a little gratitude from time to time.  It is in a spirit of genuine appreciation that the IPKat, Merpel and all the blogging team thank our readers for their continued interest and support.  Yesterday another milestone flashed by when we spotted that this blog had received its 11 millionth page view.  It goes without saying that we will do our best to maintain and improve on our current efforts to bring you a combination of good IP reporting and analysis, entertaining and sometimes provocative comment and stimulating debate.  Thanks!

"Thank you" 2. The IPKat received a very sweet email this morning from Stephen Green (Southampton Solent University), whose request for guidance on reading materials relating to US/UK comparison of character right protection was posted on Friday. Stephen tells us that he has already been rewarded with some helpful responses from readers.  This Kat is happy to pass this expression of gratitude to the blog's readership: as he has often said in the past, in the IP community there are always times when we need one another's help, so it warms the heart to see that help being so swiftly and freely given.  Thanks, again!

Around the weblogs.  The 1709 Blog's Ben Challis has produced yet another colourful CopyKat round-up of topical copyright issues.  Our good friend Laetitia Lagarde writes on Class 46 on an application for revocation of the LAMBRETTA Community trade mark that confronts IP Translator issues; the same blog reminds users of the Office for Harmonisation in the Internal Market that the closing date for the office's user satisfaction survey is the end of this week.  The jiplp weblog lists the contents of JIPLP's November issue and reproduces in full the editorial on the concept of the typical royalty rate for IP licences.

Limerick competition.  The IPKat's limerick competition, for which the prize is complimentary registration for CLT's Intellectual Property Round-Up for Non-Patenty People Conference [not its real name ..] in London next week, has already generated some fascinating entries. The IPKat has also received a good deal of correspondence concerning what constitutes a limerick.  For the avoidance of doubt, do read the explanation of limericks on Wikipedia, here, rather than risk disappointment or, worse ...

Katfriend and IP enthusiast Andrew J. Clay (Squire Patton Boggs) writes to tell him about Sebastian, a 3 ¾ year old boy who, being slightly oxygen starved at birth, lives with cerebral palsy. He can walk – but only on his tip toes as the muscles in his legs are under such tension that his feet are literally scrunched up. The constant muscle tension in his legs is literally bending the bones in his legs which means that, by the time Sebastian is eight, he will be consigned to a wheel chair for the rest of his life. However, if he has a surgical procedure to cut some of the nerves affecting his legs, he has a really good chance of being able to walk, run, play football, and do a whole host of other stuff more or less just like the rest of us [Merpel has never seen Andrew run, let alone play football, but she's prepared to give him the benefit of the doubt ...]. For an optimal outcome he needs to have this operation in the spring of 2015. The operation is not available in the UK on the National Health Service so his parents are raising £75,000 so he can have the operation in the US, performed by a leading specialist for this surgical procedure. So far they have so raised just over £30,000.  Andrew is going to do a sponsored bike ride across the north of England from Morecombe to Bridlington – about 160 miles – on Friday 31 October to raise money for Sebastian’s operation. This Kat thinks this is jolly decent of him and has already sponsored him; he hopes readers will do likewise. You can read Sebastian's full story here and can sponsor Andrew by following this link.

Patentability: a perpetual problem

First law of thermodynamics strikes again. Peter Crowley v United Kingdom Intellectual Property Office (unreported, but noted on the Lawtel subscription-only service) is one of those cases that should never be allowed to happen. It's an extempore Patent Court, England and Wales, decision of Mr Justice Mann on a patent-related topic that is sufficiently simple that even one of the Patent Court's non-technically educated judges can handle it safely.

Kats' Law of Thermodynamics: more energy
is expended in trying to shift the cat from
in front of the fire than is absorbed
by sitting in front of it yourself ...
This was an appeal by Peter Crowley against the decision of IPO hearing officer Mr B. Micklewright (decision O/389/13 of 27 September 2013) to refuse his patent application relating to a machine which, Crowley maintained, produced a surplus of energy to that which was needed in order to operate the machine. In short, Crowley's perpetual motion machine, consisted of a vertical machine with a conveyor belt, draped down both sides, to which there were attached 12 bags, six on each side of the machine. This machine operated in a circular fashion: downward pressure was achieved by filling the six bags on one side with water, which by the operation of gravity moved down, thereby driving the other six bags on the other side of the machine upwards. At the bottom of the belt, the filled bags engaged with a pressure roller, which squeezed the water out of the bags and into a series of ducts, which then carried the water to back to the top of the machine, where it was used to fill empty bags. Valves controlled the emptying and filling of the bags.

The hearing officer rejected this application on the ground that the machine contravened the first law of thermodynamics which states that energy can be neither created nor destroyed. This being so, it was impossible for the machine to rotate continuously. Rather, it would gradually slow down and eventually come to a halt on account of the energy losses inflicted on it by the forces of friction and turbulence. In legal terms, this meant that the invention was not patentable since it was incapable of industrial application under sections 1(1) and 4(1) of the Patents Act 1977.

Crowley, who represented himself, did not deny that the first law of thermodynamics applied but contended that, since gravity was introduced into the system for operating his machine, it would indeed be possible for the machine to produce a surplus of energy over that which was needed for the machine to function.

Mr Justice Mann dismissed the appeal.

* In the first place, neither the hearing officer's analysis nor his conclusion could be faulted, since it was inevitable that there would be some energy losses in the machine through friction and turbulence, as well as in the compression roller and the valves. Energy might also be spent in inflating the bags with water and, if not, in removing water from the bags. This being so, Crowley's design plainly contravened the principles of the conservation of energy.

* Crowley's explanation of the machine's operation showed a misunderstanding as to the system to which the first law of thermodynamics applied: the relevant system had to be the machine combined with the force of gravity and, when the principles of the conservation of energy were applied to that combination, it was clear that the energy losses involved in the functioning of the machine would mean that the machine would not experience the continuous rotation claimed by Crowley.

* In any event, it was plain that the machine would not be able to generate any surplus energy to enable it to be put to any industrial purposes.

* Crowley's appeal was sufficiently deficient so as to be labelled as totally without merit since it was highly unlikely that Crowley would be able to upset principles as established as the first law of thermodynamics.

The IPKat has written about perpetual motion patents in the past: see eg "UK-IPO gets tougher on perpetual motion" (here) and "The continuing incredible adventures of Dr Randell Mills" (here). While it seems a terrible waste of time and effort to apply for patents for inventions that contravene the first law of thermodynamics, it seems to him to be a terrible waste of time and effort to have to go through the procedure of rejecting them.  Says Merpel: why not have a special class of perpetual motion patents, which applicants can happily be granted?  If they don't work, there shouldn't be any problem infringing them, after all.

Second law of thermodynamics here
Third law of thermodynamics here

Tuesday, 21 October 2014

EPO Relaxes Unity Procedural Rules - how it works in practice

Sometimes, topical and important IP developments do not lend themselves to levity or cat-based metaphors.  The relaxing of the procedural rules of the European Patent Office, in the case that the claims of an International application under the Patent Cooperation Treaty are considered not to fulfill the requirements of unity of invention when regional phase is entered before the EPO, is one such case.  This Kat is delighted that his colleague and authoritative commentator on the European Patent Convention Derk Visser has wrestled with the practical application of the new rules and their interplay with existing rules, and has submitted the following explanation of the change to Rule 164 EPC that comes into effect shortly (briefly reported by the IPKat last year here).  Over now to Derk:

1 Amendment of Rule 164 EPC

Merpel contemplates unity of invention
In under a fortnight, on 1 November 2014, the amended Rule 164 of the European Patent Convention will enter into force. The amendment will make the life of Euro-PCT applicants easier by allowing more inventions to be searched on entry into the European phase.

Under the old Rule 164 (links here at the time of writing, but this will probably be over-written in due course) the possibility to have inventions searched on entry into the European phase other than the ones searched in the international phase was very limited. If the EPO was not the International Searching Authority (ISA), the applicant could amend the claims without restriction (provided of course they are disclosed in the application as filed) and the EPO would search only the invention first mentioned in the claims (the so-called supplementary European search). Any non-unitary inventions could not be searched on entry. If the EPO was ISA, no search would be carried out on entry and the applicant had to continue prosecution with the invention or one of the inventions searched by the ISA. As a result, many applicants who did not want to prosecute the invention searched by the ISA had to file divisional applications on entry, trying to avoid paying fees for the discontinued parent application.

The amendment of Rule 164 redresses the imbalance between applicants that may use an ISA other than the EPO and those that have to use the EPO. Rule 164(1) gives the search procedure for the former and Rule 164(2) for the latter. A summary of the new search procedures will be given below. Further details can be found in OJ EPO 2013, 503 and OJ EPO 2014, A70.

2 Amendment of the application
On entry into the European phase under the new procedure, the applicant may make any amendment allowed by Article 123(2) EPC, i.e. any amendment that does not extend the subject-matter of the PCT application as filed. He may continue the prosecution before the EPC with the claims as originally filed in the PCT application; he may use the claims as amended in the international phase; he may amend the claims using subject-matter from the claims as originally filed or from the description. The amended claims need not be unitary with the claims pending in the international phase.

These voluntary amendments may be filed either on entry into the European phase or in response to the Rule 161 communication. The Rule 161 communication is issued shortly after entry into the European phase and gives the applicant a 6-month period for response. If the EPO was ISA and has noted deficiencies in the application, which it usually does, it will draft a negative written opinion. The applicant must address these deficiencies in his response to the Rule 161 communication, by argument and / or amendments.

3 Searches where the EPO was not ISA
If the EPO was not ISA, the applicant has to pay normally a search fee and an examination fee on entry. A search division of the EPO will search the claims as pending after any amendment on entry and in response to the Rule 161 communication. The European search is independent of any search carried out by the ISA.

The search examiner assesses the unity of these claims and, if found to be unitary, the new procedure under Rule 164(1) will not be applied and the search examiner will carry out a supplementary search. When completed, the supplementary search report with search opinion will be sent to the applicant. The EPO will invite him to respond to the search opinion and indicate whether he wants to proceed with the application in view of the search results.

If the claims are found to be non-unitary, the search examiner will draft a partial supplementary search report for the invention first mentioned in the claims. The EPO sends the partial search report to the applicant and, new in the procedure, invites him to pay further search fees for the other inventions. The applicant will receive a communication with a search report and search opinion for each invention for which he has paid. He will be invited to select one of the searched inventions for prosecution, restrict the claims to this invention and respond to the appropriate search opinion. The other inventions can be pursued in divisional applications.

Any further search fee paid under Rule 164(1) will be refunded if the applicant requests so and can convince the EPO that the non-unity opinion was not justified.

The EPO will invite the applicant whether he wants to proceed with the application in view of the search results. On receipt of a positive response the examining division will start the substantive examination of the selected invention.

If the applicant does not want to continue the prosecution of the application, he can withdraw the application or not respond to the invitation from the EPO to confirm that he wants to proceed after the search. The examination fee paid on entry will be refunded, because the examination has not yet started.

4 Searches where the EPO was ISA
If the EPO was ISA, the applicant has to pay normally an examination fee on entry; he does not have to pay a search fee on entry. If the claims, pending after any amendment on entry or in response to the Rule 161 communication, are already searched by the EPO as ISA, the new Rule 164(2) procedure will not be carried out and the examining division will start the substantive examination.

If the claims cover inventions that are not searched by the ISA, the examining division will under the new procedure inform the applicant and invite him to pay a search fee for each such invention. The EPO will send the search results and any objections relating to each invention for which a search fee is paid in an annex to an Article 94(3) or Rule 71(3) communication. They are not sent as a search report, because these searches are not carried out by a search division but by an examining division.

Any search fee paid under Rule 164(2) will be refunded if the applicant requests so and can convince the EPO that the non-unity opinion was not justified.

The applicant will be invited to select one of the searched inventions for prosecution and restrict the claims to this invention. The other inventions can be pursued in divisional applications.

If the applicant does not want to proceed with the application, he can withdraw the application or have it deemed withdrawn by not responding or paying. The examination fee, paid on entry, will not be refunded.

5 Three further issues
a) Neither the amended Rule 164(2) nor the new Guidelines, which also enter into force on 1 November 2014  (currently link here at the time of writing, but this will probably be over-written in due course)  explain when the EPO as designated or elected office considers an invention not to have been searched by the EPO as ISA (see the above section 4). A possible explanation is provided in par. 13 of the Notice from the EPO in OJ EPO 2014 A70, which suggests that an invention is considered as not searched by the EPO as ISA if the invention does not combine with a searched invention or a searched group of inventions to form a single general inventive concept. This interpretation is in line with Rule 137(5).

b) When the EPO has acted as ISA, the applicant must pay the examination fee on entry into the European phase or, if in an exceptional case the publication of the international search report is late, within six months from that publication; the examining division will become responsible for the Euro-PCT application on payment of the examination fee, which is usually on entry (see the above section 4). The moment the fee must be paid and the examining division becomes responsible is ultimately based on the interpretation of Article 153(6) EPC. According to document CA/91/13 of the EPO Administrative Council, par. 30, explaining new Rule 164(4), ‘the term “European search report” is to be understood as “international search report” (ISR) if the EPO acted as (S)ISA’. Since the examining division is responsible for the Rule 164(2) searches, they are therefore regarded as a ‘search incident’ during examination.

When the EPO has not acted as ISA, the Guidelines C-II, 1.2 require that the examination fee also be paid on entry into the European phase or, if late, within six months from the publication of the international search report. The basis is again that the European search report is equated with the international search report. However, in this case the examining division does not become responsible on payment. Instead the search division will first carry out a supplementary search (see OJ EPO 2014 A70 par. 12). Only after a positive response of the applicant on the invitation whether to proceed with the application the examining division will become responsible under Rule 10 EPC. This change of responsibility is only possible if the European search report in Article 153(6) EPC is equated with the supplementary search report.

Hence, the interpretation of Article 153(6) EPC appears to be different for different parts of the procedure. A consistent interpretation of would require either that the examining division is responsible from the moment of payment or a deferral of the obligation to pay till six months after the transmission of the supplementary search report. However, the latter does not match with Rule 70(1) EPC, which counts the six months from publication of the search report, because the supplementary search report is not published.

[This Kat notes that this constitutional issue and dual interpretation of Article 153(6) EPC is not of itself new, but that this oddity is highlighted by new Rule 164 EPC, in particular the fact that the search under Rule 164(1) EPC is carried out by the search division, whereas the superficially similar search under Rule 164(2) EPC is carried out by the examining division.]

c) The EPO has provided two different wordings for the transitional provision for entry into force of the amended Rule 164. The decision of the Administrative Council (OJ EPO 2013, 503) states:

“Rule 164(1) EPC as amended by Article 1 of this decision shall apply to any application for which the supplementary European search report under Article 153(7) EPC has not been drawn up at the date of its entry into force.”

The date of entry into force is 1 November 2014. The Notice from the EPO (OJ EPO 2014 A70, par. 23) has:

“Amended Rule 164(1) EPC applies to any application for which the supplementary European search report under Article 153(7) EPC has not been drawn up by 31 October 2014.”

What is the moment in time that the applicant must check whether or not the supplementary search has been drawn up? There are also two different wordings for the transitional provision of Rule 164(2).  [This Kat thinks that the intention is that if the supplementary European search report is dated 31 October or earlier old rules apply, and if 1 November or later new rules apply, but agrees with Derk that there seems no rationale for the two different wordings and it is not abundantly clear that they mean the same thing.  Is the second wording intended to "correct" the first (which is the legally authoritative wording)?]

Comments from readers are particularly solicited in relation to these three final conundrums.

Tripp Trapp and the Third Dimension: a study in trade mark registrability

It's catch-up time again as the impossible quest to keep abreast of all the major IP rulings continues and this Kat gets the feeling that he is not so much making progress as merely chasing his tail.  Case C‑205/13 Hauck GmbH & Co. KG v Stokke A/S, Stokke Nederland BV, Peter Opsvik and Peter Opsvik A/S was decided on 18 September, but this Kat -- who has been beset by a succession of happy distractions -- has only just got round to writing it up for the weblog.  It's a ruling of the Second Chamber of the Court of Justice of the European Union (CJEU) which, as is so often the case, seems somehow less important after judgment has been given than we thought it might be when we were still awaiting it in a state of attentive uncertainty. 

The background to this action is that Opsvik designed the well-known ‘Tripp Trapp’ children’s chair which, explained the CJEU, was "constructed with sloping uprights, to which all elements of the chair were attached, as well as an L-shaped frame of uprights and gliders (sliding plates) which, according to the referring court (the Hoge Raad der Nederlanden, the Supreme Court of the Netherlands) give it a high level of originality". This chair design had won praises and prizes and had even been displayed in museums. Stokke made and sold ‘Tripp Trapp’ chairs in Scandinavia from 1972 and in the Netherlands since 1995.  In May 1998 Stokke applied to register as a Benelux trade mark a three-dimensional trade mark resembling the ‘Tripp Trapp’ children’s chair. The trade mark was registered in the name of Stokke for ‘chairs, especially high chairs for children’ and was represented by the shape depicted on the right. 

But Stokke was not alone in the market: Hauck made, distributed and sold its own children’s articles, including two chairs named ‘Alpha’ and ‘Beta’.  In Germany, in proceedings between the same parties, the Oberlandesgericht Hamburg (Higher Regional Court, Hamburg) held that the ‘Tripp Trapp’ chair was protected by German copyright and that the ‘Alpha’ chair infringed that copyright.

No doubt fortified by this ruling, Stokke then brought a separate action in the Netherlands before the Rechtbank ’s-Gravenhage (District Court, The Hague), claiming that Hauck’s making and selling of the ‘Alpha’ and ‘Beta’ chairs infringed both its copyrights and its Benelux trade mark registration, seeking damages.  Hauck counterclaimed for a declaration that Stokke’s Benelux Tripp Trapp trade mark was invalid.  At trial, the Rechtbank fully upheld Stokke’s claims in so far as they were based on what the CJEU calls Stokke’s "exploitation rights", but also upheld the counterclaim for a declaration that the Benelux trade mark was invalid.

Hauck then appealed to the Gerechtshof te’s-Gravenhage (Court of Appeal, The Hague, Netherlands), which again held that the ‘Tripp Trapp’ chair was protected by copyright and that the ‘Alpha’ and ‘Beta’ chairs came within the scope of that copyright, but that the registration of the three-dimensional trade mark was invalid.  In its view the attractive appearance of the ‘Tripp Trapp’ chair gave that product substantial value and its shape was determined by the very nature of the product — it being a safe, comfortable, reliable children’s chair. Thus, said the Gerechtshof, that mark was a sign consisting exclusively of a shape corresponding to the grounds for refusal or invalidity set out in the first and third indents of Article 3(1)(e) of First Council Directive 89/104, this directive having been repealed and substantially re-enacted by the current trade mark directive, Directive 2008/95 [Katnote: the three indents in Article 3(1)(e) bar and/or invalidate registration of
(e) signs which consist exclusively of:
- the shape which results from the nature of the goods themselves, or
- the shape of goods which is necessary to obtain a technical result, or
- the shape which gives substantial value to the goods].
Hauck then brought a further appeal in cassation before the Hoge Raad, while Stokke lodged a further cross-appeal. The referring court rejected Hauck's appeal, but considered that the cross-appeal on the issue of registrability of the trade mark called for the interpretation of Article 3(1)(e) of the directive which, to date, has not been covered by the CJEU's case-law.  This being so, it decided to stay the proceedings and refer the following questions to the Court of Justice for a preliminary ruling:

‘1.      (a)      Does the ground for refusal or invalidity in [the first indent of] Article 3(1)(e) of [the trade marks directive], namely that [three-dimensional] trade marks may not consist exclusively of a shape which results from the nature of the goods themselves, refer to a shape which is indispensable to the function of the goods, or can it also refer to the presence of one or more substantial functional characteristics of goods which consumers may possibly looks for in the goods of competitors?

(b)      If neither of those alternatives is correct, how should the provision then be interpreted?

2.      (a)      Does the ground for refusal or invalidity in [the third indent of] Article 3(1)(e) [of the trade marks directive], namely, that [three-dimensional] trade marks may not consist exclusively of a shape which gives substantial value to the goods, refer to the motive (or motives) underlying the relevant public’s decision to purchase?

      (b)      Does a “shape which gives substantial value to the goods” within the meaning of the aforementioned provision exist only if that shape must be considered to constitute the main or predominant value in comparison with other values (such as, in the case of high chairs for children, safety, comfort and reliability) or can it also exist if, in addition to that value, other values of the goods exist which are also to be considered substantial?

      (c)      For the purpose of answering Questions 2(a) and 2(b), is the opinion of the majority of the relevant public decisive, or may the court rule that the opinion of a portion of the public is sufficient in order to take the view that the value concerned is “substantial” within the meaning of the aforementioned provision?

      (d)      If the latter option provides the answer to Question 2(c), what requirement should be imposed as to the size of the relevant portion of the public?

3.      Should Article 3(1)(e) of [the trade marks directive] be interpreted as meaning that the ground for exclusion referred to in subparagraph (e) of that article also exists if the [three-dimensional] trade mark consists of a sign to which the content of [the first indent] applies and which, for the rest, satisfies the content of [the third indent]?’

The CJEU ruled as follows:

* In terms of interpretation, the ground for refusal of registration set out in the first indent of Article 3(1)(e) pursues the same objective as the grounds set out in the second and third indents and must therefore be interpreted in a way that is consistent with the aims of the other two indents. Thus, when applying the first indent correctly, you have to identify the essential characteristics — ie the most important elements — of the sign concerned on a case-by-case basis [in other words, don't imagine for a moment that a characteristic that is found to be caught by the indent in one case will be equally caught by it in another], basing your assessment either on the overall impression produced by the sign or on an examination of each the components of that sign in turn [This is interesting: when comparing marks for the purposes of opposition or infringement, one has to go for the overall impression of each rather than salami-slicing them into individual similar or dissimilar components, as in Case C-329/02SAT.1 SatellitenFernsehen v OHIM. However, when separating registrable from unregistrable elements of the same mark, an overall assessment or the piecemeal approach are equally acceptable].

* When applying the first indent, you also have to take account of the fact that the concept of a ‘shape which results from the nature of the goods themselves’ means that shapes with essential characteristics which are inherent to the generic function or functions of such goods must, in principle, also be denied registration. The reservation of such characteristics to a single economic operator would make it difficult for competing undertakings to give their goods a shape which would be suited to the use for which those goods are intended -- these being the essential characteristics that consumers look for in the products of competitors, given that they are intended to perform an identical or similar function [what about features of shape that that are not essential, but which give rise to essentiality with regard to the shape of other goods which are intended to be interoperative with them?].

The fact that the shape of a product is regarded as giving it substantial value does not mean that other characteristics may not also give the product significant value [Hmm, wonders Merpel: what, at para.30, is the difference between "substantial" and "significant"?]. Thus "the aim of preventing the exclusive and permanent right which a trade mark confers from serving to extend indefinitely the life of other rights which the EU legislature has sought to make subject to limited periods requires that the possibility of applying the third indent ... not be automatically ruled out when, in addition to its aesthetic function, the product concerned also performs other essential functions".

* The concept of a ‘shape which gives substantial value to the goods’ cannot be limited purely to the shape of products having only artistic or ornamental value, as there is otherwise a risk that products which have essential functional characteristics as well as a significant aesthetic element will not be covered.

* Where the perception of the target public must be taken into account since it is essential for the purposes of determining whether the sign filed for registration as a trade mark enables the goods or services concerned to be recognised as originating from a particular undertaking, that obligation cannot be imposed in the context of Article 3(1)(e).

* While the presumed perception of the sign by the average consumer is not a decisive element when applying the third indent, it may still be a relevant criterion of assessment when identifying the essential characteristics of that sign. 

* The three grounds for refusal of registration in the indents to Article 3(1)(e) operate independently of one another. as is shown by the fact that they are set out as successive points, coupled with the use of the word ‘exclusively’. This being so, the fact that a sign can be denied registration on the basis of a number of grounds for refusal is irrelevant so long as any one of those grounds fully applies to that sign.

Accordingly, the CJEU summarises its position as follows:

1.      The first indent of Article 3(1)(e) ... must be interpreted as meaning that the ground for refusal of registration set out in that provision may apply to a sign which consists exclusively of the shape of a product with one or more essential characteristics which are inherent to the generic function or functions of that product and which consumers may be looking for in the products of competitors.

2.      The third indent of Article 3(1)(e) ... must be interpreted as meaning that the ground for refusal of registration set out in that provision may apply to a sign which consists exclusively of the shape of a product with several characteristics each of which may give that product substantial value. The target public’s perception of the shape of that product is only one of the assessment criteria which may be used to determine whether that ground for refusal is applicable.

3.      Article 3(1)(e) ... must be interpreted as meaning that the grounds for refusal of registration set out in the first and third indents of that provision may not be applied in combination.

There are no surprises in this ruling, which now leaves it for the Hoge Raad to apply it on the facts as found.  This, on Merpel's reading, makes it look likely that the Tripp Trapp chair's days as a registered Benelux shape mark are numbered.

Falling out of high chairs here
More on Tripp Trapp here
Von Trapp here

Finally, here's a special report by Katfriend and noted IP scholar Henning Hartwig (Bardehle Pagenberg), which discusses this case in greater analytical depth.

Obviousness, common general knowledge and expectations of success: Leo gets a mauling

Obviousness and common general knowledge are features of patent law that are of very limited application, if any at all, in most other areas of intellectual property.  For this reason it all too often happens that Katposts on these issues are skipped by readers who consider patent law too hard, abstruse or arcane to deserve their attention.  The decision of Mr Justice Birss in the case reviewed below is however so interesting that this Kat hopes that some of the good folk who habitually skip the patent stuff will give it a read. The author is occasional and much-appreciated guest contributor Suleman Ali (Holly IP), who writes as follows:
Teva UK Limited & Teva Pharmaceuticals Limited v Leo Pharma A/S & Leo Laboratories Limited [2014] EWHC 3096 (Pat) is a decision by Mr Justice Birss in the Patents Court, England and Wales. This case is about treatment of psoriasis with a combination medicinal formulation comprising two substances known to treat psoriasis (a corticosteroid and a vitamin D analogue) and a particular solvent that is able to stabilise the combination formulation. The invention lies in the putting together of the two therapeutic substances in the same formulation and the choice of the solvent. The decision mostly concerns whether this was inventive. Since the invention could be seen as an ‘incremental’ one which concerns optimising use of known drugs, rather than the discovery of new drugs, this decision provides insights as to how such incremental inventions will fare for inventive step in the Courts of England and Wales. More broadly the decision adds to the case law of how inventive step is assessed in a complex pharmaceutical setting. 
Other recent pharmaceutical cases concerning inventive step 
There have been several cases in recent times where inventive step been determined in the context of a pharmaceutical invention. In Novartis AG v Generics (UK) Limited (t/a Mylan) [2012] EWCA Civ1623, discussed by the IPKat (see here) the Court of Appeal had to review the decision of Floyd  J (here) in assessing inventive step where the compound went through several steps during research and development. Whether or not the compound would have passed each test would have been difficult to predict, and yet the compound was found to be obvious. 
In Hospira UK Ltd v Genentech Inc [2014] EWHC 1094 (Pat), noted by the IPKat here, Birss J had to deal with inventive step of an ‘incremental’ invention, and he found the inventive concept, which related to a dosage regimen, to be obvious. 
In Glenmark Generics (Europe) Limited & others v The Wellcome Foundation Limited & Glaxo Group Ltd, [2013] EWHC 148 (Pat), reported by the IPKat here, Arnold J decided that a combination product for treating malaria was obvious. 
From these cases we can see how inventive step is being assessed by these courts where the invention concerns a multi-step R&D process. In addition it seems clear that incremental inventions in the pharmaceutical field are being found invalid for inventive step. 
The present invention 
In this case Leo was defending two patents, EP 1178808 and its divisional EP 2455083. The claims of EP 1178808 relate to a pharmaceutical composition comprising vitamin D or an analogue of it, a corticosteroid and a specific solvent. EP 2455083 relates to a more specific embodiment where the vitamin D analogue is calcipotriol and the corticosteroid is betamethasone. These therapeutic substances were known for treating psoriasis, and the solvent, polyoxypropylene 15 stearyl ether, was disclosed in a prior art publication ‘Turi’, US patent 4,083,974. There are several aspects to the contribution being made by the invention. One lies in realising that providing the two therapeutic substances in a single formulation would increase patient compliance in comparison to asking patients to take two separate products. However, given that the two substances are stable at different pHs, they cannot simply be added to each other in an aqueous formulation. A second aspect of the contribution is making a non-aqueous formulation choosing to use polyoxypropylene 15 stearyl ether as a solvent. 
The expert witnesses and the ‘team’ for inventive step 
The expert witnesses gave evidence on treatment of psoriasis with the two substances, whether they would consider combining them in a single formulation an whether the co-formulation would be stable. Under cross-examination it became clear that the expert reports contained ‘sweeping generalisations’ and in their testimonies they were guilty of ‘overstatement’. However Birss J was appreciative of the contribution of all the experts which allowed him to determine the common general knowledge in the art and on the skilled person being a team that included a skilled clinician and a skilled formulator of pharmaceutical compositions. 
Common general knowledge 
Birss J held that, from the common general knowledge, it was known that patient compliance was important in psoriasis and that using a single combination formulation would increase compliance over prescribing two different ones. However he did not accept Leo’s argument that the common general knowledge of the skilled clinician would assume that combining the two substances in a single composition was not possible. Birss J built up a complex picture of the common general knowledge of a skilled formulator and how such a person would tackle the making of non-aqueous solutions containing substances sensitive to pH. A key point was that the skilled formulator is an empiricist who would proceed to test solvents that might have worked. 
Birss J noted that there are some cases where inventive step can be decided on common general knowledge alone, and commented that Teva’s inventive step attack was slightly unusual in that it started from the common general knowledge (knowing that a single combination product would increase compliance) and involved adding a prior art reference, Turi, which disclosed the solvent. This was not a situation where inventive step was assessed by identifying the differences between the invention and primary prior art reference. 
The information in the patents 
Leo’s patents make note of the fact that patient compliance could be improved by using a single combination product. They also give the results of stability tests and provide evidence of a better therapeutic effect than using the substances separately. The patents also refer to ‘synergy’ occurring, but this aspect was not pursued by Leo in the trial to show inventive step. Had it been, it would have been a valuable addition to the case law in this area. 
The appropriate inventive step test 
Birss J recited the much-quoted statement from Generics v Lundbeck which opens:
‘The question of obviousness must be considered on the facts of each case. The court must consider the weight attached to any particular factor in the light of all the relevant circumstances.’ 
He considered this to mean that ‘obvious to try’ is simply ‘one of a variety of factors’ to be considered. He added:
‘Obvious to try cases usually involve consideration of the level of expectation of success but one cannot lay down a general characterisation of what the true level of expectation must be in every case beyond stating that it must be a fair one. In that way the differences between different cases is taken into account. It is wrong to ask whether something might achieve a particular desired effect. It is correct to ask whether it was obvious that it would achieve that effect.’
What does Birss J mean? Is he saying one should not judge inventive step by asking whether the skilled person would have predicted it would have worked but instead, once the invention has been found to work, one should then ask ‘was it obvious that it would have worked’? Is that the correct approach to ‘expectation of success’? Readers' comments in this point would be most appreciated. 
 From Birss J’s comment it seems that ‘expectation of success’ is something complex and very fact-specific. I also wonder whether the learned judge should have defined what ‘success’ would be in the present case. Was it simply production of a stable combination composition or was it providing better therapeutic results? 
Was the invention obvious? 
Birss J started his inventive analysis from the position that a combination formulation was desirable from the common general knowledge to increase patient compliance. The skilled clinician would expect the combination formulation to be more effective than using the therapeutic substances separately. It was well known, for example, that the corticosteroid would reduce the irritation caused by calcipotriol. 
Leo argued there would be ‘prejudice’ against use of corticosteroids due to potential side effects over the long term. However Birss felt there would not be prejudice against short term use or in the combination. 
The skilled formulator:
he ain't saying nothin'
Birss J then switched his analysis to the perspective of the skilled formulator. It was obvious to use a non-aqueous solution to overcome the issue of the substances being stable at different pH’s. The issue came down to whether the solvent disclosed in Turi would be obvious to use in the formulation. Turi disclosed a non-aqueous composition containing the solvent and betamethasone (one of the therapeutic substances used in the present invention) and based on this Birss J concluded that the skilled formulator would not ignore it or dismiss it. 
Leo criticised the benefits described in Turi as ‘illusory’, but Birss J felt this was an overstatement. Leo also put forward arguments based on the fact that the solvent disclosed in Turi was not widely used and this might would add potential cost, time and uncertainty, for example if a regulator required extensive testing of the solvent. However, Birss J felt that whilst factors such as this can be relevant they rarely outweigh technical considerations. 
A crucial point for inventive step was the skilled person’s perception of how difficult it would be to solve the pH problem. The expert witnesses had disagreed on this issue, but Birss J felt that Teva’s case on this was more persuasive. The skilled formulator presented with Turi would proceed to test the solvent it disclosed and result would be positive. A clinical study would then be carried out using the combination formulation and this would confirm it was an effective treatment. This meant the invention was obvious. 
Inventive selections and the Technograph test 
Birss J went on, tantalisingly, to discuss the situation in which the selection of the solvent would be inventive. If evidence had been provided that a ‘vast range of obvious agents had not worked’ then this could have been ‘compelling evidence of non-obviousness’. However Leo had not done this. 
Birss J also asked whether his analysis was an example of the unfair step-by-step approach identified in Technograph Printed Circuits Ltd v Mills and Rockley (Electronics)Ltd [1972] RPC 346. In that case Lord Diplock had said:
"The cross-examination of the respondents' expert followed with customary skill the familiar "step by step" course. I do not find it persuasive. Once an invention has been made, it is generally possible to postulate a combination of steps by which the inventor might have arrived at the invention…if he had started from something that was already known…"
Birss J felt he had not made this error since his analysis had considered the normal steps in development of a pharmaceutical product and thus could not have been influenced by hindsight. 
Unanswered Questions 
1. How should ‘expectation of success’ have been addressed for this case? Should Birss J have analysed this based on ‘would the skilled formulator have expected the solvent disclosed in Turi to have worked?’ instead of ‘would the skilled formulator have tested the solvent disclosed in Turi?’. Often in pharmaceutical cases there is little chance of success for any one candidate, but the skilled person would have had reasons to test it. 
2. If the inventive step analysis follows the normal steps in development of a pharmaceutical product, is there a danger of failing the Technograph test? How can one determine one has not failed the Technograph test? 
3. Are other incremental inventions also likely to be found obvious? It seems that often for such inventions the contribution is modest and there is a lot of relevant prior art. 
4. What does it take for a combination product to be inventive? Does it need to have an element of inventive selection or a demonstration of synergy?

Monday, 20 October 2014

Monday miscellany

It is with sadness that the IPKat records the death of Peter Low. Peter, a European and UK patent attorney with Wilson, Gunn M'Caw till his retirement in 1997, has the unenviable record of having given tutorials for the UK patent attorney qualifying examinations for over twenty years, as well has setting up the Manchester CEIPI basic training course for the notorious European Qualifying Examination [for some measure of the intensity of feelings generated by the EQEs, you need only look at the readers' responses to Katposts here]. A popular lecturer around the world, he edited a guide to the PCT for students published by the University Robert Schuman Strasbourg, France, and served as an examiner for the Singapore Patent Agent Qualifying Examination.  He will be greatly missed both by those who benefited from his tuition and by those who appreciated his gentle humour.

Another source for your IP information needs ...  This Kat has just discovered the existence of IP Preferential, which describes itself as creating a central hub of all IP law and practice updates across the globe which provides relevant information for IP departments. It's totally free of charge for everyone and, with contributors from over 50 countries, it is enjoying something of a growth spurt.

... and another patent search and analytics service. This one's called PatSeer [which, if you don't articulate the letter "r" at the end of a word, sounds pretty close to Craic Computing's PATSY, full text US patent document display service] and it offers "the concept of sharing an interactive patent dashboard called Patent Dashlets™ amongst patent databases". As the developers explain, "such dashboards for instance allow corporate patent professionals to collaborate effectively with their external counsels or even with internal management stakeholders". You can read more about it here.

Someone has to ...
Launched only yesterday, the IPKat's latest limerick competition is already off to a roaring start with various promising limericks already received (plus a number of items of poetry which, for all their literary worth, aren't actually limericks).  The prize: complimentary registration for a fun IP conference which takes place in London on 29 October. Click here for further details.  Incidentally, there's another competition going on at the moment, giving you a chance to design a logo. So if you feel suitably imaginative, creative or are just in the mood for fun, you can find the details, kindly posted by fellow Kat Eleonora, just here.

Online enforcement "has a colour and a name": blocking injunctions - A closer look at the Cartier judgment

Typical moment outside
the Rolls Building last Friday
As Jeremy announced with a breaking news post, last Friday Arnold J issued his 266-paragraph judgment in Cartier and Others v BskyB and Others, a case concerning the possibility of requiring internet service providers (ISPs) to block, or at least impede, access by their subscribers to websites that advertise and sell counterfeit goods.

Why everybody was waiting for this judgment?

The reason why this judgment was keenly awaited is that there is no specific provision under UK law which allows holders of trade mark rights to seek and obtain an injunction against ISPs that have actual knowledge of another person using their services to infringe their rights. 

As readers will promptly recall, such possibility is instead expressly available to copyright owners thanks to s97A of the Copyright Designs and Patents Act 1988 (CDPA), by which the UK implemented Article 8(3) of the InfoSoc Directive into its own national law.

What is the reason behind this 'omission'? It is has of course to do with UK implementation of EU directives, in particular the Enforcement Directive

What happened at the time of transposing this directive into UK law is that UK Government thought that it did not need to take any action to transpose the third sentence in Article 11 into its own law [see para 116 of the judgment]. This provision states that "Member States shall also ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellectual property right, without prejudice to Article 8(3) of [the InfoSoc] Directive"

While UK Government had deemed necessary [despite an earlier view to the contrary expressed by the Government itself: see para 113 of the judgment] to give express implementation to Article 8(3) of the InfoSoc Directive [see para 115], it did not do the same with regard to the third sentence in Article 11 of the Enforcement Directive. UK Government justified its [somehow contradictory?] decision not to take any action to implement this more general rule by referring to s37(1) of the Supreme Court Act 1981. This provision states that “[t]he High Court may by order (whether interlocutory or final) grant an injunction … in all cases in which it appears to be just and convenient to do so.”

This (together with - of course - other considerations) led Arnold J to conclude that blocking orders may be sought also in respect of websites selling and advertising counterfeit goods.

Be honest: wouldn't you rather 
prefer finding a blocking order
inside the little red box?
Beyond trade marks: online IPR enforcement law (and policy)

This is not the only good news for rightholders though, as this judgment also contains a very thorough assessment of the effectiveness of blocking injunctions, the conditions under which they may be granted, as well as a comprehensive overview of the jurisprudence of the Court of Justice of the European Union (CJEU) in both (online) copyright and trade mark cases.

This Kat suspects that we will see many references to the Cartier judgment not just in future applications for blocking injunctions in the UK (and other Member States), but also in forthcoming policy briefs. 

This is because this ruling deals with most - if not all - the arguments employed by rightholders and ISPs when advocating in favour or against the availability of blocking orders.

A few examples are given below.

Freezing? Not really disruptive
1) There are no real alternatives to blocking orders, not even notice-and-takedown and payment freezing

Paragraph 197 ff contains a must-read assessment of blocking orders and availability of alternative measures, including: (1) action against the operators of the websites where the allegedly infringing works/counterfeit goods are hosted; (2) notice-and-takedown by hosts; (3) payment freezing; (4) de-indexing from search engines; (5) custom seizure.

Basically the conclusion of Arnold J was that none of these alternatives is as effective as blocking orders [para 217]. Incidentally, the "risk of reputational damage to the ISPs, particularly in the event of overblocking" is not a "significant one" in Arnold J's opinion [para 195].  

It is particularly interesting to note what the judge stated in respect of (2), (3) and (4) mentioned above.

With regard to notice-and-takedown, Arnold J accepted "that website blocking has advantages over notice-and-takedown" [para 204], also confirming a concern often raised by rightholders, ie that "as soon as an offending website is taken down by one host, the almost invariable response of the operator is to move the website to a different host." [para 201]

Turning to payment freezing [advocated by many, including the EU Commission, as the ultimate solution to online IPR infringement], Arnold J was somehow skeptical as to its actual effectiveness. The judge was "not persuaded that this is a realistic alternative measure in general, although there may be particular cases where it has some value." [para 208]

Finally, with regard to de-indexing, while "this is potentially an important weapon" [para 211], "it is not a realistic alternative measure" [para 215], also because "search engines are not willing to de-index entire websites ... without a court order" and - following Google Spain - "it is not clear at present that any EU court would would have power to order de-indexing on the basis of intellectual property infringement." [para 212]

2) It is not up to the rightholder to show efficacy of blocking measures

In light of the reasons given for stating that there are no real general alternatives to blocking orders, the judge also did "not accept that it is incumbent on [the rightholder] to show that the blocking measures would lead to a reduction in the overall level of infringement." [para 281]

But are blocking orders effective?

Website blocking works fine on Gregory
3) Blocking orders reduce infringements

Contrary to a Dutch study extensively criticised by Arnold J [see paras 229 ff], "in the section 97A context [that was the only available context until last week], blocking of targeted websites has proved reasonably effective in reducing use of those websites in the UK [but not worldwide: see para 228]. No doubt it is the casual, inexperienced or lazy users who stop visiting those websites, whereas the experienced and determined users circumvent the blocking measures; but that does not mean that it is not a worthwhile outcome." [para 236]

Ever thought of filtering?
4) ISPs should bear implementation costs ... and may think of preventative filtering as a cheaper solution

Similarly to what stated in his earlier judgment in 20C Fox v BT (No 2), Arnold J took the view that "the rightholders should pay the costs of an unopposed application ... [and] the ISPs should generally bear the costs of implementation as part of the costs of carrying on business in this sector". However the judge did "not rule out the possibility of ordering the rightholder to pay some or all of the implementation costs in an appropriate case." [para 240]  

A very interesting part of the judgment is paragraph 250 and following. Given ISPs' objection that future implementation costs are likely to increase if a substantial number of orders are granted, Arnold J noted that neither the claimants nor the defendants had addressed the economic dimension of this problem. 

Although the Ecommerce Directive prohibits imposing a general obligation to monitor on ISPs, according to the judge "it is economically more efficient to require intermediaries to take action to prevent infringement occurring via their services than is to require rightholders to take action directly against infringers." [para 251] Is this something for ISPs to think about? 

5) Safeguards against abuse: users' rights and blocking duration

It will be intriguing to see how the final part of the judgment will be applied and developed in future orders. 

In particular, in line with what the CJEU ruled in Telekabel [here], at paragraph 263 Arnold J stated that "in future orders should expressly permit affected subscribers to apply to the [High] Court to discharge or vary the order." [para 264]

And finally: how long should blocking orders last? Not indefinitely: a "sunset clause" should be incorporated. In the present case it is yet to be decided, but last Friday Arnold J's view was that "it should be two years." [para 265]

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':