For the half-year to 31 December 2015, the IPKat's regular team is supplemented by contributions from guest bloggers Jani Ihalainen, Nikos Prentoulis and Mark Schweizer.

Birgit Clark is on Sabbatical till the end of the year

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

Sunday, 30 August 2015

Posting comments on the IPKat: a new policy

Disguise is fine ...
A few months ago, when Merpel's blogposts on the goings-on at the European Patent Office attracted a large number of comments, she instituted a rule that readers' comments would only be moderated if they were posted in the name of their author or under a pseudonym.  This was not an attempt to discourage comments: the idea was to make it easier for readers to follow strings of discussion between comment-posters.  Since the number of comments on a blogpost can easily exceed 100 (for example the Katpost on 13 August on partial priority of patent applications which has already notched up 120), task of identifying the same comment-poster as the source of all his or her comments is arduous if they can only be identified as "Anonymous of 09:53" or suchlike.  However, it is much easier to follow and participate in a discussion if the comments are posted under real names or pseudonyms like "MaxDrei", "Meldrew", "US Anon" or "Proof of the Pudding".

... if you can still be identified
The "real name or pseudonym" rule has worked so well for the limited number of blogposts for which it was imposed that the IPKat and Merpel have decided to extend it to all blogposts. Please therefore be sure to mention your real name or a pseudonym when posting a comment. Failure to do so will result in your comment not being accepted by the moderator. Since most readers won't be used to this rule, the IPKat and Merpel will be making it binding only with effect from next Monday, 7 September. But do practise getting it right in the meantime.  This notice will be repeated a few times over the coming week, for those who either read the blog infrequently or have poor memories ...

Thanks for your cooperation -- and for your comments!

Acquired distinctiveness of product shape marks: AG Wathelet does not “rely” on the UK approach – but on what else?

Not so very long ago the IPKat hosted this guest post from Roland Mallinson on the subject of Nestlé's  application to register its chocolate finger shape as a trade mark: has this application been treated to a premature burial, he asked.  While it's fair to say that Roland's view is still a minority one, his conclusion has been endorsed by Thomas Farkas, from the Munich office of Wragge Lawrence Graham & Co. In his thoughtful comments which we reproduce below, Thomas adds the following dimensions to this already three-dimensional debate:

Quite a few blogs and newsletters [see eg here, here, here and here] have summarised Advocate General Wathelet's Opinion of 11 June 2015 in Case C-215/14 as indicating that Nestlé's unbranded KitKat finger shape (right) will not be registrable as a trade mark in the UK for lack of proof of acquired distinctiveness. But this is not what AG Wathelet actually said. The misconception on the side of those blogs is due to the fact that AG Wathelet did not, at least not explicitly, answer the decisive question asked in the referral by the High Court, England and Wales (para 54). The High Court wanted to know whether, in order to establish that a trade mark has acquired distinctive character following the use that had been made of it within the meaning of Article 3(3) of the Trade Mark Directive, 
  1. it was sufficient for the applicant for registration to prove that at the relevant date a significant proportion of the relevant class of persons recognise the mark and associate it with the applicant’s goods in the sense that, if they were to consider who marketed goods bearing that mark, they would identify the applicant;
  2. or if the applicant had to prove that a significant proportion of the relevant class of persons relies upon the mark (as opposed to any other trade marks which may also be present) as indicating the origin of the goods?
Condition 1 is obviously easier to establish than condition 2 since shape marks are hardly ever used without accompanying word- and/or device trade marks that will “also be present”. This is also true for the “Kit Kat” chocolate bar that has been marketed for many decades in a red wrapper with the “Kit Kat” logo. The logo is also embossed on each of the four “chocolate fingers”:
Condition 2 sounds odd to trade mark lawyers outside the UK, especially Germany, to say the least. A proof that the average consumer “relies” on the trade mark has never been requested by trade mark instances or civil courts. 
But courts in the UK – as we learn from the referral (paragraph 46 to 48) – hold that it is not sufficient if consumers recognize a product’s source by its shape. Under the UK approach, the requirement is not merely to furnish a demographic survey showing that a majority of persons would attribute the shape of the goods to a single company. 
UK courts have been well aware that it is far from being clear that the “reliance” requirement is in line with the Trade Mark Directive. They had already made two attempts to have the issue clarified by the CJEU by way of referral, namely in the “Viennetta” ice cream shape case (C-7/03) and in Dyson (C-321/03). The CJEU however gave no answer: Viennetta was settled, and Dyson was decided on other grounds. 
What answer does AG Wathelet suggest? And what is his position regarding the “reliance” requirement as developed by the UK courts? He says: 
“It is not sufficient for the applicant for registration to prove that the relevant class of persons recognises the trade mark in respect of which registration is sought and associates it with the applicant’s goods or services. He must prove that only the trade mark in respect of which registration is sought, as opposed to any other trade marks which may also be present, indicates, without any possibility of confusion, the exclusive origin of the goods or services concerned.” 
Since AG Wathelet avoided any reference to the “reliance” criterion it seems clear that he does not endorse the UK approach. So “reliance” within the meaning of the UK approach is not needed in his view. But a mere association with the applicant’s goods or services does not seem to be sufficient, either. 
As far as AG Whatelet requests that the indication of origin should be “without any possibility of confusion” he merely refers to the basic function of a trade mark as summarised in Philips v Remington (Case C-299/99, para 30) and Ansul v Ajax (Case C-40/01, para 36). The General Court, in a similar way, requires that a trade mark must be able to distinguish a product’s or service’s origin “directly and with certainty” (“de façon immediate et certaine”: Case T-234/01Stihl v OHIM). 
Consumers make assumptions about the origin
of goods on the basis of their shape
Still, the qualification AG Wathelet suggests is that the applicant must prove that “only the trade mark” in respect of which registration is sought, “as opposed to any other trade marks which may also be present”, indicates the origin of the goods or services at issue. But what does this mean? It is the view of this post that AG Wathelet does not endeavour to stipulate a new criterion for proving acquired distinctiveness. He does not ask for anything beyond what is required for the distinctiveness of any other trade mark. Use as a trade mark and acquired distinctiveness, enabling the end consumer to distinguish goods as to their origin, will always be deemed present when the relevant class of persons perceives the trade mark in question (in this case: the shape of the goods) as an independent indicator of origin, even where there are other indications of origin to which the public will pay attention likewise. 
The CJEU’s decision in Colloseum v Levi Strauss (Case C-12/12) provides a good example for such a case. It revolved around use preserving trade mark rights within the meaning of Article 15 Community Trade MarkRegulation. This may be the reason why it is, even though mentioned, not in the focus of AG Wathelet’s opinion. In Colloseum the trade mark was not constituted by a product in its entirety, but pertained rather to a part of a product, specifically to a blue-jeans pocket which was designed in a particular way and labelled with a red cloth tab (Levi Strauss & Co.'s famous “Red Tab”, depicted on the right, invented in 1936 – just one year after the “Kit Kat” bar of 1935).
In actuality, however, both before and after registration of the trade mark, the use was only of pockets on which the red tags were labelled with the word mark “LEVI’S” (depicted on the left). It was obvious in that case that, when attributing a pair of blue jeans to the manufacturer Levi Strauss & Co., the public was looking also to (and may have “relied” on) the famous “LEVI’S” word mark and not simply and solely at the back pocket with the red fabric tab. The OHIM nevertheless registered the trade mark because it had acquired distinctiveness under Article 7(3) Community Trade Mark Regulation. Referring to the judgment in the "Have a Break" case, Nestlé v Mars (Case C-353/03 para 30), the CJEU confirmed that use as demonstrated served to preserve the trade mark rights and, indirectly (because use preserving a trade mark right is equated to use which creates a trade mark right) that such use was also apt to create such rights “as a trade mark”, i.e. as a distinctive sign capable of and perceived as distinguishing the origin of a product (Case-12/12, paras 32 et seq.). 
This was done on the basis of the findings of the German Federal Supreme Court (which had referred Colloseum to the CJEU) that the class of persons which was being addressed is used to seeing multiple signs and 
“based on the substantial use of the red tab when marketing blue-jeans … [the public] regards this feature of the design as having an independent identification function which is separate from other indicators of origin” (BGH GRUR 2012, 177, 180 para 24 –Stofffähnchen II). 
The survey on which this finding was based had used a picture with a neutralised red tab (in the words of AG Wathelet: “only the trade mark”) without any reference to Levi Strauss & Co., so (again in the words of AG Wathelet) “only the trade mark as opposed to any other trade marks which may also be present” in reality (see illustration, right).
There is thus no requirement that the goods must actually be labelled – in the absence of any other sign -- exclusively by the mark applied for or that the consumer pays attention only to that mark and perceives it as the sole indicator of origin or “relies” only on it. 
As in Colloseum, it will suffice that the mark for which the acquisition of distinctiveness is at issue is one of multiple indicators. It is distinctive if – despite the existence of other marks and in addition to such – enables the consumer to attribute the product to a particular manufacturer. As in Colloseum, it will be of no consequence whether this attribution is in fact achieved solely based on the registered mark – in the case of multiple marks – or whether the consumer might, additionally, also be looking to other trade marks. 
Any other approach would (contrary to the basic tenet of Colloseum) render it practically impossible for secondary or tertiary marks to acquire distinctiveness, particularly product shape marks, packaging colours or other design elements. Such marks are typically combined with one or more word marks or with other manufacturer logos. 
This seems to be in line with the requirements of acquired distinctiveness as formulated by the CJEU originally in Chiemsee (Joined Cases C-108 and 109/97, para 52) and recently reiterated in Sparkassen red (Joined Cases C-217 and 218/13, para 42) that the evidence put forward had to prove that 
“the relevant class of persons, or at least a significant proportion thereof, identifies goods […]  as originating from a particular undertaking because of the trade mark [in question]” [emphasis added].  
So, has Nestlé, its evidence measured against the criterion suggested by AG Wathelet, proven acquired distinctiveness? Probably yes. Nestlé had submitted survey evidence. As the survey evidence submitted in Colloseum, the trade mark on the right was shown to the interviewees without the well-known word mark that in real life is used in connection with it.
More than 50% of the interviewees -- just on seeing the shape alone and “as opposed to any other trade marks” – were sure (“without any possibility of confusion") that the product had an exclusive and unique commercial origin. This shows that the shape alone indeed is capable of indicating and distinguishing its commercial origin.

What else could be required to establish an acquired distinctiveness?

Saturday, 29 August 2015

Does the EU want to get rid of geoblocking through a review of the SatCab Directive?

The power of the SatCab Directive:
from lively to ...
As also reported by The 1709 Blog, earlier this week the EU Commission launched (yet) a(nother) [for a slightly pessimistic view on the value of EU copyright public consultations see here] public consultation, this time regarding a possible review of Directive 93/83 on the coordination of certain rules concerning copyright and rights related to copyright applicable to satellite broadcasting and cable retransmission (the Satellite and Cable Directive, also known as the SatCab Directive) [if you are about to fall asleep just by reading "SatCab", don't: it may be more interesting than it looks at first sight (hopefully)]

The objective that the Commission is pursuing in conducting this exercise is twofold: first, to gather input in order to assess whether current rules are (still) fit for purpose; secondly, to determine whether the provisions in this Directive should be extended to transmissions of TV and radio programmes by means other than satellite and retransmission by means other than cable. In other words: whether the Directive rules should be also made applicable to online providers of TV and radio programmes.

As explained here, the latter objective is seen as "contributing to the Digital Single Market Strategy" (DSMS) [on which see here and here].

But in what sense?

... struggling to stay awake in one second
The DSMS, geoblocking and a mystery

IPKat readers will remember that, as far as copyright is concerned, the DSMS only proposes to tackle a handful of issues: (1) content portability; (2) ensuring cross-border access to legally purchased online service while respecting the value of rights in the audiovisual sector [as pointed out in numerous responses to the 2014 Public Consultation on the Review of EU Copyright Rules, what happens at the moment is that it is problematic to access online services in another EU country. Access restrictions depend on the geographic location of users' IP address, and are caused by relevant licensing terms]; (3) introducing an exception for commercial/non-commercial text and data mining; (4) discussing the role and responsibilities of internet service providers, alongside better online enforcement.

Besides the seemingly unambitious policy agenda in the area of copyright, the DSMS does not really say HOW the Commission intends to undertake any of the possible reforms to the relevant legislative framework.

With particular regard to issue #2, ie geoblocking, possible legal instruments to tackle it have been discussed for a while.

How could geoblocking be tackled?

In the internal draft White Paper that the IPKat exclusively leaked last year, the previous Commission discussed a number of alternatives to ensure cross-border access to content, including defining further "the act of 'making available' on the internet. One option [in this respect] would be to redefine it by localising the act in one single Member State ('country of origin'), for example where the centre of activities of the uploader is, or where the upload takes place. A licence from the relevant right holders for that country would suffice for service provision to take place legally in all Member States."

Could it now be that the current Commission intends to tackle geoblocking via a review of the SatCab Directive?


But this time it may be about becoming able
to watch all your favourite
TV programmes online everywhere in the EU
without having to use your VPN anymore!
"Country of origin" rule to be extended to online transmissions?

For satellite broadcasting, Article 1(2) of the Directive establishes that the relevant copyright-restricted act takes place "solely in the Member State where, under the control and responsibility of the broadcasting organization, the programme-carrying signals are introduced into an uninterrupted chain of communication leading to the satellite and down towards the earth (often referred to as “the country of origin” principle).

As stated in the Consultation form, this means that rights only need to be cleared for the "country of origin" of the broadcast and not also for the country/ies of reception, ie the countries where the signals are received [surprisingly enough, there are no decisions of the Court of Justice of the European Union on the interpretation of Article 1(2)]

The fact that the act of communication/making available only occurs in one Member State is - as explained and emphasised by Jan Rosén in his chapter in EU Copyright Law, "the main rule of the Directive! ... In practice, this is a choice-of-law rule, but it is still a provision of substantive law, not a conflicts rule."

As regards the price of the licence, Recital 17 in the preamble to Directive states that account should be taken of all aspects of the broadcast, such as the actual audience, the potential audience and the language version.

By proposing the extension of the country of origin principle to online transmissions and retransmissions, could this mean that rightholders would become unable to prevent online access to their copyright works across the entire territory of the EU, once rights have been cleared in the first Member State?

This may look indeed like one of the main outcomes of this Consultation, and such as to make it look slightly less dry (and technical) than the phrase "SatCab Directive" may suggest at first sight.

In any case interested individuals and organisations have time until 16 November 2015 to submit their responses.

Friday, 28 August 2015

"Simple Past, Present Continuous ...Future Perfect?" GFIP Conference Report V

This Kat encountered some technical issues that prevented him from completing his final report on the GFIP 2015 programme earlier. He does so now. The GFIP programme broke out into two parallel sessions for each of the two afternoons; one track focused on legal issues and the other on IP strategy. This Kat would have loved to have been able to report on both tracks, but various natural laws made that impossible. What follows is a summary of the sessions on trade secrets and copyright respectively.

This Kat had the privilege of speaking first at the trade secrets programme. After having first made the empirical case for the practical importance of trade secrets in technology and innovation, he addressed the two principal characteristics of trade secret law: (i) the centrality of trust, morality and sharing in creating, using and protecting trade secrets; and (ii) the lack of legal uniformity governing trade secret protection (unlike patents, there is no talk about harmonizing trade secret protection) and the legal difficulties that flow from this. Anecdotally, a US academic cornered this Kat afterwards and we agreed that perhaps the major reason why trade secrets are not taught as a part of most (all?) law school curriculums is that it is simply too complex and uncertain.

What followed was perhaps the most spirited “point-counterpoint” of the entire GFIP programme. In the one corner, Hsu Wei-Fu, General Counsel and Vice-President of MediaTek, located in Taiwan, made a sustained, indeed passionate plea in favour of expanding trade secretion protection, especially by strengthening the relevant criminal procedures available. This has been the approach recently adopted in Taiwan and, in the speaker’s view, it came not a minute too soon, this being the only way to better combat employee theft of a company’s valuable trade secrets. In the other corner, Professor David Llewellyn, Deputy Dean at the Singapore Management School of Law and well known to many Kat readers as a joint author of both Kerly’s Law of Trade Marks and Trade Names and Intellectual Property: Patents, Copyright, Trade Marks & Allied Rights (what we used to simply call “Cornish”, after the founding author of the treatise). Au contraire, in the view of Professor Llewelyn, who took issue with the very notion of trade secrets as property, since it did not satisfy the legal definition. Further, he argued against any attempt to codify trade secret protection as inherently doomed to uncertainties in construction and interpretation. As well, Llewelyn emphasized that cultural differences are part and parcel of trade secret protection.

The first speaker at the Copyright session was the influential Professor Andrew Christie, Professor of IP Law at the University of Melbourne. Professor Christie focused on that most challenging of copyright questions, how to find the balance in the law between public and private interests. In that light, he considered recent developments at the international, regional and even extra-territorial levels. Perhaps the most notable development at the international level is the continued progress of seeking to reach agreement on a Broadcasting Treaty, which will extend protection to internet transmissions. At the regional level, maybe the most interesting example surrounds the potential IP provisions of the (itself potential) Trans-Pacific Partnership (TTP). Relying on non-formal information (I think this Kat heard the word “leak”), one provision is reputed to extend the term of protection beyond the current international provisions (although at the session a person with knowledge said that this was not on the table). As for extra-territorial effect of a national copyright law, Professor Christie invited the audience to consider possible Australian legislation, which would enable site-blocking where even the infringement takes place outside the country. Professor Christie wondered if these developments were in the aggregate tilting too much in favor of the right holder.

The audience was then treated to a double Kat feast, as fellow Kat Eleonora considered what was happening to copyright in her own backyard, the EU. She recounted the historical antecedents of EU legislation in copyright, dating back to the 1980s against the backdrop of using harmonization as a means to remove impediments to competition and free movement of goods. A number of harmonizing directives followed. With a new EU Parliament and Commission, the interest in legislative reform to better align EU legislation with the demands of the digital era led to a request for public consultations in 2014, resulting in a record number of received responses. Where this will all lead remains uncertain, she emphasized, bringing the example of geo-blocking and the possible implementation of digital exhaustion.

Eleonora was followed by Tan Tee Jim, SC, head of the IP and Technology Department at the firm of Lee & Lee in Singapore. He considered two main issues: (i) the impact of new technology on copyright; and (ii) the potential use of copyright as a bullying tactic. Mr Tan compared the result of two well-known US Supreme Court cases — the 1984 Betamax case and the Aereo decision of 2014 — and the arguably inconsistent approach taken by the court in bringing technological developments to bear on the copyright law. As for so-called copyright bullying (also described as copyright trolling), he mentioned in particular the example of the Dallas Buyers Club, where the cease and desist letter has been used as the means to demand monetary compensation of thousands of dollars in settlement of a single download of a movie by the letter’s recipient [on which see Jani's recent Katpost here].

Fashion Law and Debates - from Balenciaga to DVF

I see IP everywhere. Everywhere.  Including a reasonably trashy beach read in Spain. El sigh.

Flicking through my sandy copy of El Pais, I noticed a familiar face.  That of IP and Fashion scholar Susan Scafadi, standing next to fashion designer Diane Von Furstenberg (DVF).  There it was, three glorious pages (en espanol) detailing the growth of Fashion Law, in particular that of IP and contract law.  No longer the last dress on the sales rack, Fashion Law is on trend.

Scafidi is quoted as describing the academic resistance to the establishment of Fashion Law. Fashion law was considered 'frivolous' but is now a popular and growing academic discipline which covers IP, contract law, finance and employment law.  (I can sympathise; my interest in the economics of fashion and IP has not always met with enthusiasm by fellow economists. Fashion Economics is instead an application of economics.)

Scafidi and DVF (president of the Council of Fashion Designers of America) have, for years, been pushing for increased IP protection in the US for fashion.  Arguments in favour of this often suggest that EU IP protection, particularly copyright, for fashion is vastly superior than the US. However, scholars such as Johanna Blakely (discussed here) argue that copying is essential to the fashion industries.

IPKat readers, please do correct me, but I find it hard to see how EU copyright laws protect fashion in a way that, in practice, has much more market impact than the US approach.

El Pais repeats the arguments that IP is essential for creativity and counterfeiting is ruining everything.  Complete with the usual dodgy statistics and a 3D-printing panic thrown in for good measure. The diamante-encrusted-bias-cut sky is falling!! (And it's as hideous as it sounds.)

I found more IP at the Balenciaga museum (#humblebrag). The museum is a shrine to the prodigal son of Getaria.  Credited with popularising the baby-doll dress, Cristobal Balenciaga was a prominent designer in the mid-20th century. He was, reportedly, very copied:
"The aura surrounding 'the Balenciaga' was practically a social aspiration, meaning that copies of models created by Balenciaga were very appreciated and sought-after, despite not being made with the same standards of manufacturing and fabric quality. 
Balenciaga himself with appropriate
monochrome solemnity
Professional buyers from department stores went to the presentations of the collection seeking models that were easily identifiable with the designer and that also had a novel touch.  They purchased the Balenciaga models already completed (they were not toiles) in order to be able to copy them (sic) a large number of items with the label 'inspired by Balenciaga' or 'Adapted from an original Balenciaga.' 
The desire for a Balenciaga is mentioned in March 1962 Harper's Bazaar: 'Every woman virtually uses one form of his creations, either directly or indirectly,' alluding to the existence of both legal and illegal copies." (Balenciaga museum text, 2015)
There was no detail on licensing, but 'legal and illegal copies' implies that that the house of Balenciaga also licensed designs. The museum text also hints at aspirational aspects of fashion and status conveyed by designs.

Balenciaga is also noted for resisting previewing his collections to the press at the standard four weeks ahead of retail delivery.  This wiki article cites that he sought to limit the proliferation of his designs via press coverage in order to limit copying (interestingly enough, suggestions that the equally revered Dior would copy Balenciaga silhouettes.)

The similarities between the now historical concerns of Balenciaga echo that of the Scafidi-DVF movement. The unifying theme is that copying inhibits innovation and creativity, and is bad. However, there are hints of an untold story here - that of licensing of designs and that of designers copying each other.  For IP to incentivise innovation and creativity in fashion, it needs to balance rewarding existing designs and encouraging future designs.  The lobbying arguments of large, established houses seem one-sided and focus on benefitting existing rights holders.  However, their success may come at the cost of the unrepresented future innovators - who naturally do not have a lobby.

To round out my Spanish sojourn in IP, was the ubiquitous street sales of counterfeit handbags and shoes. More sangria please.

(P.S. Secretly, and I'm guessing most IPKat readers will feel the same, I like seeing IP everywhere.)

Thursday, 27 August 2015

Armor, Glory and ... religion in a US trade mark clash

This GreeKat learns from the Washington Post that US-based sports apparel company, Under Armour, has initiated trade mark infringement proceedings against Armor&Glory, a small company producing, in its own words, "inspirational apparel". At issue is use by Armor&Glory of, no surprise, the mark  "Armor&Glory".  It seems that Under Armour justifies its trade name and is quite vigilant in protecting its trade mark rights; it has entered into IP rows with Nike, adidas (as a defendant though) and Sketchers in the past.

But the factual background in this case is different, not only because of the (tiny) size of the defendant, but also because of the story behind the allegedly infringing mark. According to Armor&Glory's founder, Terrance Jackson, the idea behind the venture came in 2013 following his disappointing attempt to dress his then 3-year-old son with anything not including skulls and crossbones [a rather exaggerated statement this blogger thinks]. As for the name, "the full armor of God" cited in Ephesians 6:11 was Mr. Jackson's source of inspiration. He is quoted to say that “When God gave this [name] to me, I never thought once about those guys. We don’t even spell it like them.”[hmm, that does not sound like a sound trade mark defense].

Regardless of spelling, Armor&Glory's market impact appears minimal. According to the story, "it has so far made less than $100,000 in revenue since 2013 — about 0.003 percent of Under Armour’s sales just last year. The company’s online store sells $20 shorts and $25 shirts designed largely for a core Christian audience, with slogans like “Be spiritually attractive” and 'Put on God’s armor and receive His glory.'".  
This may be why trade mark bullying psychology is put forth by Armor&Glory (and to a certain extent by the Washington Post's piece). The company has even started a crowd-funding campaign on its web page for expected legal costs. 

HANDS OFF (my armour)!! 
Of course, trade mark bullying can be an easy "accusation" to mouth in David vs. Goliath cases. For better or worse, Under Armour owns several registered trade marks incorporating "Armour" and Armor&Glory is not the first "Armor"-related case they have gone after. IP lawyers also know well that vigilance in protecting trade marks and brand integrity usully leaves little room to cherry-pick battles. So is this vigilance or bullying? 

BGH: not so fast, look-alike fasteners

Whether features of a (usually three dimensional) sign that was formely protected by a patent can be the object of a valid trade mark registration has been the subject of quite a few decisions (see C-48-09 P (LEGO brick), IPKat post,  joined Cases C‑337/12 P to C‑340/12 P (Yoshida knives), IPKat post, and TrafFix Devices, Inc. v. Marketing Displays, Inc., the leading US Supreme Court decision on the subject).

Trade mark owners have generally not fared well when the sign for which protection was sought was the object of an expired utility patent. Courts consider trade marking such shapes to be an extension of the limited term of the patent and contrary to public policy.

However, a key question which has not been addressed with a lot of attention by most courts is what exactly is the object of a utility patent. It is not the specific embodiment of the technical teaching used to illustrate the teaching, it is the technical teaching as described in the claims. It is possible that this technical teaching can be achieved by shapes that look quite different from the examples given in the patent specification and from the products actually placed on the market by the patentee.

In a recently published decision (I ZR 107/13), the German BGH has taken a more nuanced look at the issue - not in the context of (harmonised) trade mark law, but rather in the context of (largely) unharmonised unfair competition law. Still, the decision is interesting beyond Germany.

The claimant, Austrian Schnabl Stecktechnik GmbH, was the owner of a patent for a method of fastening electrical installations (tubes) to a wall (the decision does not state the patent number, but I believe it to be EP 0 105 865 B1). The method uses eccentric teeth fixed to a rod that is inserted into a pre-drilled hole and will expand when the rod is being pulled from the hole. This has the advantage that little force is needed for inserting the rod, but a large force is required to remove the rod from the hole. The figures from the patent show the principle quite clearly.
Figures from Schnabl's expired patent
Schnabl used an exclusive distributor for distribution of its fasteners in Germany. This distributor sold 90% of the fasteners to whole-sellers who in turn sold them under their own branding to end users (electricians). After expiration of the patent, the distributor began marketing its own fasteners, which bear a striking resemblance to Schnabl's products (see image).

Schnabl's fasteners (on the left) and the distributors fasteners (on the right)
Schnabl sued for unfair competition, claiming that its products had "competitive originality" ("wettbewerbliche Eigenart"), i.e., the relevant consumers associated their shape with a specific origin, and the distributor's use of nearly identical shapes led to confusion and/or exploitation of the original products' reputation. The first instance court sided with Schnabl. On appeal, the Oberlandesgericht Frankfurt reversed and dismissed the complaint. The reputation of Schnabl's products was based on the shape of the rod and its teeth, not the attached rings, bars etc. The rod and its eccentric teeth was subject of the expired patent and its appropriation by a competitor could not be prevented after expiration of the patent. In any case, since Schnabl's products were sold in Germany under different brands, the relevant consumers - we come to who that actually is - would not associate their shapes with a single source.  

On appeal, the BGH lifted the second instance's decision and remanded for further factual findings. The BGH held that the mere fact that a product had been within the scope of protection of a now expired patent did not prevent a finding of passing off if the shape of the product was not the only way to perform the (formerly) patented teaching (para. 24):
An element formerly protected by a patent (here the push-rod with its eccentric teeth) can form the basis for competitive originality of a product if the specific shape of the element is not technically necessary, but may be replaced by a different design that serves the same technical purpose without loss of quality.
In other words, in the area of (unharmonised) competition law, the BGH applies the "alternative shape" test that the CJEU explicitly rejected in the domain of harmonised trade mark law ("As to the question whether the establishment that there are other shapes which could achieve the same technical result can overcome the ground for refusal or invalidity contained in Article 3(1)(e) [Directive 89/104/EEC], second indent, there is nothing in the wording of that provision to allow such a conclusion.", C-299/99 - Philips v. Remington).

The BGH then goes on and states, more controversially in my opinion (para. 36):*
In case of an (almost) identical copy, a stricter standard applies with regards to the legality of appropriating features of the prior art that adequately solve a technical problem than in case of more limited resemblance. In case of an (almost) identical copy, the copier cannot, in principle, defend itself by argueing that it is merely appropriating an adequate technical teaching no longer protected by patent. If the copying of formerly protected elements leads to an (almost) identical copy, the competitor is reasonably requested to use another adequate ("angemessene") technical solution, unless the risk of confusion about the origin of the goods can be countered by other measures, such as labeling.
In other words, you cannot simply put a product on the market that corresponds to the specific examples of an expired patent and assume you are safe. If the product that looks like the specific example has acquired competitive originality, you have to use another "adequate" technical solution. The key term being "adequate" - I would assume that this means the alternative solution is in no way inferior to the specific embodiment of the patented teaching marketed by the patentee, but the BGH does not give much guidance on what an "adequate" solution is.

In the case at hand, affixing a label to the products was not possible. While the distributor used its own brand on the packaging and in its promotional material, the findings of the lower court did not show that this was sufficient to prevent confusion about the origin of the products. The lower court also had not made any findings as to whether another "adequate" technical solution was available - Schnabl argued that competitors used eccentric teeth on their fasteners that looked quite different from Schnabl's without incurring any disadvantages.
Schnabl's fastener (top) and alternative forms allegedly achieving the same technical effect (bottom)
The lower court had also failed to find whether the whole-sellers, rather than the end-users, perceived the shape of Schnabl's products as an indication of origin. It was improper to only consider the end-users as the relevant public. The BGH therefore remanded the case to the OLG Frankfurt for further factual findings.

* German original of the crucial para. 36 (references omitted):

Bei einer (nahezu) identischen Nachahmung gilt allerdings im Hinblick auf die Zulässigkeit der Übernahme von Merkmalen, die dem freien Stand der Technik angehören und der angemessenen Lösung einer technischen Aufgabe dienen, ein strengerer Maßstab als bei einem geringeren Grad der Übernahme. Bei einer (nahezu) identischen Übernahme kann sich der Nachahmer grundsätzlich nicht darauf berufen, er habe lediglich eine nicht unter Sonderrechtsschutz stehende angemessene technische Lösung übernommen. Würde die Übernahme solcher Merkmale zu einer (nahezu) identischen Nachahmung führen, ist es einem Wettbewerber regelmäßig zuzumuten, auf eine andere angemessene technische Lösung auszuweichen, wenn er der Gefahr einer Herkunftstäuschung nicht auf andere Weise - etwa durch eine (unterscheidende) Kennzeichnung seiner Produkte - entgegenwirken kann.

Thursday thingies

This Kat was delighted to see that the 12th edition of the Butterworths Intellectual Property Law Handbook is now published, though he was a little surprised to read about it online since he hasn't yet received his Consultant Editor's complimentary copies.  This lovely volume is now well over 2,200 pages in length, thanks mainly to the superlative efforts of British and European legislators.  There's no news yet as to whether, and if so when, the 7th edition of the Butterworths E-Commerce and IT Law Handbook, for which he is also Consultant Editor, might be coming out.  Watch this space and he'll let you know.

Old Nick, new face. Next Tuesday, 1 September, between the hours of 5 and 7 pm, outspoken IP blogger Michael Factor (IP Factor) will be inhabiting the sacred inner sanctum of The Old Nick, Sandland Street, and relishes the chance to discuss intellectual property practice and professional ethics. Do feel free to join Michael (as various members of the IP social media fraternity will be) and give him a chance to share some thoughts.  Michael has kindly offered to pay for the drinks ...

Forthcoming events.  Apart from the usual suspects, listed on the IPKat's Forthcoming Events page, here is one that is coming up sooner than the organisers realised pretty soon: it's the British IP Day, coming up on 10 September 2015 from 9.00 - 13.00, at 10-11 Carlton House Terrace, London, SW1Y 5AH. Organisers are the UK Intellectual Property Office and the Office for the Harmonisation of the Internal Market. This Kat understands that there will be an opportunity for attendees to discuss their own proposed topics; if you would like to contribute, please send your suggestions to in good time before the event. More information is reputedly available here.  

An interior view of Taylor Wessing's venue
On the subject of forthcoming events, registrations for this year's JIPLP-GRUR Int London seminar have now topped the 80 mark -- but there's still a bit of room for a few more souls who have a passion for intellectual property litigation.  This event, which takes place on Tuesday 8 September. "The impact of the Intellectual Property Enforcement Directive (Directive 2004/48) on national litigation" and the venue is the London office of law firm Taylor Wessing LLP (here). The two speakers are London-based barrister Michael Edenborough QC (Serle Court) and Hamburg-based lawyer Wiebke Baars (Taylor Wessing), with JIPLP editor Jeremy Phillips in the chair.  A panel discussion will take place following the presentation of the two papers, led by Anna Carboni (partner, Redd solicitors and an Appointed Person to hear trade mark appeals), Paul Stevens (Olswang CEO and former head of litigation, Olswang LLP) and Mark Owen (Taylor Wessing).  Anna and Paul are both members of the JIPLP editorial board. The panel-led discussion will be followed by questions and comments from the floor and a reception. Registration commences at 2.30 pm for a 3.00 pm start. The formal proceedings should be concluded by 6 pm and the reception will finish by 7 pm. Admission is free and it is believed that there will be some CPD credit. If you'd like to attend, just email Jeremy Phillips at with the subject line "Enforcement". 

Catching the scent of the
elusive Triennial ...
The Triennial Hasselt-Genk.  You may not yet have heard of it, but the Triennial Hasselt-Genk is an innovative Belgian multidisciplinary arts festival. For its 2016 edition the festival will focus on the complex and rich relationship between trade marks and art. The curator's goal is to approach this relationship in an active, participative and critical way in order to motivate festival-goers to think about IP rights in general and about trade marks more specifically.  Through 10 exhibitions, social artistic projects and an academic conference, the arts festival aims to not only address the professionals in art and IP but also to reach out and raise awareness to a more general audience.  With this goal in mind the festival organisers are looking for the support of this weblog's readership, seeking to identify trade mark-and-art-related cases that might not otherwise have found their way on to their desks. If you have any interesting case law and/or examples of art/artists struggling with trade marks which you think should be showcased, please email artistic director Pieter Jan Valgaeren at 

Not an utter clutter ...  One of this Kat's regular readers dropped him a line a day or two ago to tell him about some work that has recently been undertaken by a group of economists on a UK Intellectual Property Office (IPO) project regarding trade mark register clutter. The resulting report has now been published by the IPO with the title “Cluttering and Non-Use of Trade Marks in Europe”.  You can read it here. The document is 118 pages long.  This topic is somewhat controversial, since some people say the trade mark register is full of over-wide and unnecessary bits of registrations, others say that this is just a sign that the system is popular and works well, while others say that clutter is all the fault of users of the trade mark system who always seem to want to register the same words and images as marks. Other people work in the pharmaceutical sector and fly into paroxysms of rage when any clutter-denier opens his or her mouth.  Anyway, Kat readers can make up their own minds -- as they usually do.

BVI to go sky-high. Beginning next Tuesday, 1 September 2015, the British Virgin Islands (BVI) welcomes its modern new trade mark regime. However, the welcome may be a qualified one since along with the new laws come new (and much increased) fees. Previously charging some of the most modest official fees in the Caribbean region, the BVI is for example hiking the new official fees for single class registrations from a range of soar from US$10-40 per mark to $250 for the first class and $150 for each additional class in a multi-class registration (Katpat to Katherine Van Deusen Hely, founder of Caribbean IP, for this update, following up on her earlier news about the new law).

Around the weblogs.  IP Finance, via Mike Mireles, takes a look at the Trump brand and the impact on it of the eponymous Donald Trump's political campaigning. The Aistemos patent analytics blog has posted a couple of provocative items this week: one speculates as to why patent litigation insurance is offered for businesses that face threats and demands from patent trolls but not for the trolls themselves; another wonders whether there are any prospects for more private sector involvement in the patent examination process.  The jiplp weblog offers another four IP books for review, which the reviewer can keep once he or she done the reviewing. On the subject of books, PatLit notes a handy new one on US patent law for European readers. The 1709 Blog has a red, white and blue CopyKat round-up from Ben Challis and a somewhat critical piece by IPKat blogmeister Jeremy on the value of a UK copyright goodwill mission to share 'best practices' with the visitors' Chinese counterparts.

Wednesday, 26 August 2015

“Simple Past, Present Continuous…Future Perfect?” GFIP Conference Report IV

The second plenary session today addressed the topic of IP Value Creation—Strategies for the 21st Century. But first a word about the conference organization, This Kat heard many attendees marvel at the level and detail paid to the organization and on-site management of the event. From the speakers’ perspective, we were particularly well looked-after. IPOS and the IP Academy should be warmly complimented for their efforts.

If you liked The Economist's piece on patents,
you'll just adore this board game ...
Four speakers offered various perspectives on the issue of IP value-creation. First up was Ian Harvey, formerly the head of the well-known English technology commercialization company BTG and today affiliated with Tsinghua in Beijing and Imperial College in London. His mantra is that IP is the currency of innovation. However, there is still a disconnect between IP and those that are responsible for looking after it in a company, and the low level of awareness of IP at the corporate manager level. Even more telling, from his experience, IP is still not a boardroom item. The challenge remains how to bring the IP professionals into the mainstream of the company’s business considerations. Mr Harvey’s most rousing moment was his impassioned criticism of the last week’s cover story in The Economist, “Set innovation free! Time to fix the patent system” (this Kat is in full agreement and Kat readers can expect further comments on a truly appalling piece of IP populism upon this Kat’s return home).

Following Ian Harvey, a familiar face from previous GFIP events, Kenichi Nagasawa, Director and Group Executive at the Corporate Intellectual Property and Legal Headquarters of Canon, took the audience through a series of fascinating slides on how Canon manages its IP interests. The degree of sophistication in the way Canon handles its IP matters were an eye-opener for a not insignificant number of the audience. This Kat, for one, is eagerly awaiting the opportunity to get his Kat-paws on the slides for further study and reflection.

Etienne: a Loire
unto himself?
From the multinational tech world of Canon, we turned to Etienne Sanz de Acedo, the kinetic CEO of the International Trademark Association (INTA). Etienne (as he is wont to be called), identified three topics that posed a challenge to the commercial viability of trade marks, namely (i) counterfeiting: (ii) bad faith registrations; and (iii) providing a proper valuation for a company’s trade marks and other IP. In response to a question for the audience, he mentioned plain package labelling as a further issue of concern. He noted generally that business people need to better understand IP as a company asset.

... and not just global trade?
The final speaker, and in some ways a complement to the presentation by Mr Nagasawa, was Karen Law, Group General Counsel at Digital Domain Holdings, a media company. Ms Law has previously worked for a number of years in a senior IP capacity at Alibaba. If Mr Nagasawa represents the approach used by the high tech product world, Ms Law represents the IP challenge posed to media companies. As she mentioned, her entire experience at Alibaba had been in the context of online products. What was particularly interesting for this Kat was her several references to co-branding activities as a means for obtaining greater market share and enhancing one’s goodwill. Even more, these co-branding activities were not simply arrangements to use together marks from two or more entities, but also entailed establishing a joint venture in the furtherance of the co-branding efforts.

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