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

Wednesday, 30 September 2009

Money mountain: Famous Five plan the ascent of a financial Everest

Just over a year ago, the IPKat was raging about the fate of the vast mountain of money [now renamed "The Cooperation Fund"] held by OHIM, through over-high Community trade mark fees, which that organisation was not allowed to return to trade mark applicants (see earlier posts here and here).

Right: the fabled Mount Alicante: "there's gold in them thar hills ..."

Well, there's some better news to report. According to a letter sent to OHIM,

"The five Users’ Associations [AIM, BUSINESSEUROPE, ECTA, INTA and MARQUES, in alphabetical order] being Observers on OHIM’s Administrative Board have commonly developed a list of projects which we believe should be funded under the Cooperation Fund as a matter of first priority.

It is the confirmed target of the Cooperation Fund to contribute significantly to the optimisation of the functioning of trade mark systems across the EU as was laid down in the Initiation Note with a specific view towards users of the systems. The below projects being developed out of practical work do reflect certain needs of the users to be solved by the use of the Fund.

1. Ensure adequate computerisation [Good idea: See earlier IPKat rant here] of all EU NPTOs [=National Patent and Trade Mark Offices] which would include the below points.
2. Complete seniority databases to be established and maintained in all EU NPTOs, accessible free-of-charge to all Users whenever they search. These should contain all trade marks used in CTM seniority claims [This is not a mere convenience -- this can be so valuable for SMEs' business plans].
3. Development of common IT systems between all EU NTPOs [Would 'compatible' be sufficient? Never mind, this is still good].
4. User accessibility to all trade mark up-to-date databases, free-of-charge [Hear, hear!]
5. Option for e-filing, online access and e-renewal without requirements for additional documentation, with the option of payment by credit card, in all EU NPTOs [With no hidden charges, delayed charges and embarrassments for practitioners who, having invoiced clients for disbursements and been paid, suddenly find fresh charges emerging from the woodwork]
6. TMView showing full data including images of device marks, addresses, goods and services covered (etc.). and including data from all EU NPTOs supplied free-of-charge [device marks are only part of the problem; what about 3D marks?]
7. Pan-European harmonisation of classification within the appropriate international framework [This isn't just a matter of money -- it's a matter of some very obstinate people backing down too].
8. Development of a module and materials for NPTOs to use in CTM-related education so as to ensure commonality of messages [Hm. Hadn't thought of that one ...].

We understand that on the basis of the recommendations of the report drawn up by GARTNER, proposals on the allocation of the funds available under the Cooperation Fund will be made to the Administrative Board and Budget Committee. We would like to stress that the focus should be on the projects and that “the allocation of funds (to projects) should be driven by optimal contributions to users’ priorities” as stated in the Initiation Note as well as rigorous financial controls, sound financial management and transparency".
The rage is starting to abate ... but 50 million euros is a lot of money and the Kat is itching to get his paws on it. However, if OHIM takes a favourable view of at least some of these suggestions, he might agree to let them hang on to the money. Merpel says, I think we should say "well done" to the Famous Five users' associations for their constructive suggestions.

The other Famous Five here

IJLT - Call for papers on topics about the "interface between law and technology"

The IPKat has been informed that Indian Journal of Law and Technology (IJLT) is currently calling for submissions for its Volume No. 6 of 2010 IJLT is a law journal which is published annually by the Law and Technology Committee of the Student Bar Association of the National Law School of India Unversity, Bangalore, India.

The IPKat has learned that "IJLT is the first and currently, the only law journal published in India specifically devoted to the interface between law and technology."
If you devote yourself to the "interface between law and technology" and are interested in writing for IJLT, please have a look at their website at for more details.

Compulsory licences for all? Latest Community patent plans ...

Does nothing miss the eagle eye of the IPKat's friend and guru Axel H. Horns, the German patent attorney and blogger whose IP::JUR weblog has provided a valuable and welcome education for so many of us? Today Axel has posted a piece here entitled "Yet Another Revised Proposal For A Council Regulation On The Community Patent". This post reveals the existence of Document 13706/09, bearing yesterday's date, which the General Secretariat of the EU Council has prepared for the benefit of the Working Party on Intellectual Property (Patents) when it holds its next session next week. This document is 28 pages in length.

Recital 6 of the proposed Regulation will generate some debate:

"(6) Negative effects of an exclusive right created by a Community patent should be mitigable through a system of compulsory licences. This is without prejudice to the application of Community competition law by the Commission or national authorities. The [European and Community Patents Court] Court (hereafter: Court) should be entrusted with the grant of compulsory licences in situations not falling under Community competition law".
The extent to which this fits in with existing Paris Convention and TRIPs provisions relating to compulsory licensing will no doubt launch a few PhD theses, not to mention a smattering of heart attacks.

Articles 21 and 22 are worth reproducing in full:
"Article 21: Grant of compulsory licences
1. The Court may grant a compulsory licence for lack or insufficiency of exploitation of a Community patent to any person filing an application four years or later after the patent application was filed and three years or later after the patent was granted if the patent proprietor has not exploited the patent in the Community on reasonable terms or has not made effective and serious preparations to do so, unless he/she provides legitimate reasons to justify his/her inaction, and on the condition that the grant of the compulsory licence is required in the public interest. In determining the lack or insufficiency of exploitation of the patent, no distinction shall be made between products originating within the Community and products imported to the Community from a member of the World Trade Organization.
2. On request, the Court may grant a compulsory licence in respect of a Community patent (first patent) to the proprietor of a national or Community patent (second patent) or […] plant variety right who cannot exploit his/her second patent or […] plant variety right without infringing […] the first patent, valid for the territory of the second patent or plant variety right, provided that the invention or new plant variety claimed in the second patent or plant variety right involves an important technical advance of considerable economic significance in relation to the invention claimed in the first patent. […] The owner of the first patent shall be entitled to a cross-licence on reasonable terms to exploit the second patented invention or protected plant variety.
Where on the corresponding conditions as above in this paragraph a proprietor of a
Community patent is granted a compulsory licence in respect of a first national patent or national or Community plant variety right, the owner of the first patent or plant variety right shall be entitled to a cross-licence on reasonable terms to use the patented invention of the dependent Community patent for the territory of the first patent or plant variety right.
3. The Court may grant a compulsory license under the conditions set out in the Regulation (EC) No 816/2006 of the European parliament and of the Council of 17 May 2006 on compulsory licensing of patents relating to the manufacture of pharmaceutical products for export to countries with public health problems.
4. In times of national emergency or in other situations of extreme urgency, including those relating to a public interest of extreme importance, the Court may authorise at the request of a Member State the exploitation of a Community patent.
5 In the case of semi-conductor technology, exploitation shall be possible without the authorisation of the right holder only in the situations set out in paragraph 4.
6 A licence or exploitation set out in paragraphs 1 and 2 may be granted only if the proposed user has made efforts to obtain authorization from the patent holder on reasonable commercial terms and conditions, and if such efforts have not been successful within a reasonable period of time. However, the authority granting the licence may derogate from this condition in the situations set out in paragraph 4. In these situations, the right holder shall be informed as soon as reasonably possible.
7 The detailed rules of application and the procedures to be used for applying the principles set out in this Article shall be laid down in the Agreement on, and the Statute and the Rules of Procedure of the Court.
Article 22: Conditions applicable to compulsory licences
When granting the compulsory licence under Article 21, the Court shall specify the type of use covered and the conditions to be met. The following conditions shall apply:
(a) the scope and duration of the exploitation shall be limited to the purpose for which it was authorized;
(b) the exploitation shall be non-exclusive;
(c) the exploitation shall be non-assignable, except with that part of the enterprise or goodwill which enjoys such use;
(d) the exploitation shall be authorized predominantly for the supply of the internal market of the Community;
(e) the Court may, on reasoned request of the patent holder, the holder of a contractual license or the holder of the compulsory license, change the conditions set by the authorisation or decide to cancel the authorization, subject to adequate protection of the legitimate interests of the persons so authorized, if and when the circumstances which led to it either change or cease to exist and are unlikely to recur;
(f) the licence holder shall pay the right holder adequate remuneration in the circumstances of each individual case, taking into account the economic value of the authorization;
(g) in the case of a compulsory licence in respect of a dependent patent or a plant variety right, the exploitation authorized in respect of the first patent shall be non-assignable except with the assignment of the second patent or plant variety right".
The IPKat looks forward to the chance to read this document carefully and draw some conclusions. He suspects, however, that some of his patent-proficient readers will beat him to the draw. Merpel says, I do hope they make up their mind how to spell licence/license. Tufty's theory is that the variations of spelling are an indication that the drafting has been in the hands of more than one draftsman.

Another OHIM scandal -- the IPKat names the culprit

The IPKat is filled with reforming zeal this morning, since he has identified a dreadful blot on the escutcheon of that fairest of jewels in the European Union's crown, OHIM. He wants to see an end to the tiresome and carbon-costly naming of the place that deals with Community trade marks and designs as the "Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)", which is how it is always referred to on the European Court of Justice's Curia website, or as the "Trade Marks and Designs Registration Office of the European Union", which is how it is designated on the English version of its website (click here for the French and German versions). Apart from the fact that it wastes print cartridges and consumes space on the page, it's also a dreadful mouthful to say and increases the risk of repetitive strain injury (if that condition exists) among typists. In short, it's an ugly affront to the fabled European skills of design and style-creation.

To this end, the IPKat is running a poll (see the sidebar on the left) to choose the name from which the office, European legislation permitting, should preferably be known from 1 January 2010. Your choices are as follows:

* Retain Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) on the basis that at least we know what it is, thanks to distinctiveness acquired through years of use [If you use Twitter, beware: this name consumes 80 out of your 140 available characters];
* opt for Trade Marks and Designs Registration Office of the European Union, which does at least have the virtue of describing some of the things done there, along with oppositions, cancellations and very, very rarely, short lunch breaks and restitutio in integrum [Twitter factor, 65];
* Throw national pride to the wind and go for OAMI, the office's suave, slightly seductive Spanish acronym;
* Find something quite funky and in-yer-face like The Brand and Design Factory;
* Follow the admirable example of Australia and choose IP Europe.
After much thought, the IPKat decided not to add Shangri-La or its close and not inappropriate neighbour Shangri-Law, notwithstanding the paradisaic conditions in Alicante, lest the decision should ever be taken to move the office to some less attractive location.

If you don't like any of the above -- or even if you do, but you have a better idea -- email your own suggestion to the IPKat here and let him know. If there are any really good suggestions, he'll organise another poll in which the best new ideas will be run off against whichever name tops this poll.

This poll is emphatically open to employees of the European Commission and its various organs, whose creativity is welcome.

Tuesday, 29 September 2009

Credible and green: can you help?

Do Kats have pets? This one does. The Intellectual Property Institute, apart from being one of the IPKat's pet causes, is currently working with its members to identify credible research which will underpin the public's understanding of the role of IP in developing and disseminating new, environmental technologies, as well as the relative importance of IP in this respect, compared to other factors (infrastructural, regulatory, political etc.).

Right: man eating greens

In this context the Institute has become aware of a series of literature reviews carried out by Daniel K. N. Johnson and his colleague Kristina M. Lybecker in the US, at the University of Colorado, which deal with:

* The impact of IP on the development of new environmental technologies (here);
* The impact of the IP system on the dissemination of environmental technologies (here);
* Models for financing the development of environmental technologies (here).
The Institute hopes to build up comprehensive data set of the existing information on this issue from credible sources and asks readers of this weblog that, if they are aware of any specific papers, articles or research activity of which they think the Institute should be aware, can they please email Dr Paul Leonard here and let him know.

Left: man-eating greens

Green technology here
Grow your own greens here (not for parents of children who are fussy eaters)
British racing greens here

That'll wipe half a smile off your face ...

Some people say that the IPKat gets angry too easily at soft targets like the World Intellectual Property Organization and that he's unduly critical of those noble souls who administer IP systems both internationally and on the domestic front. The good news is that the Kat will have a go at what appears to him to be wasted effort, squandered money and poor judgment wherever he finds it. One such instance is Case T‑139/08, The Smiley Company SPRL v Office for Harmonisation in the Internal Market, where it is a Community trade mark applicant who is on the receiving end.

On 14 April 2006, just 13 days after April Fools' day, Franklin Loufrani obtained an international registration, designating the European Community, for the figurative mark depicted above right, in respect of an amusingly eclectic list of items including (among other things), sun dials and ashtrays, urns of precious metal and sacred vessels of precious metal (Class 14), whips, animal collars and sling bags (Class 18) and diaper pants, ear muffs and underwear (Class 25). OHIM was not minded to let this pass, so refused to extend this protection to the world's most valuable market.

The Fourth Board of Appeal dismissed Loufrani's appeal. In its view the goods in respect of which protection was claimed were common consumer goods, the relevant public was the general public of the Community and , considering that what were involved included ‘items of jewellery, leatherware, clothing and the like’, the relevant public would pay a relatively high degree of attention when choosing those goods. However, the marks was a very simple and ordinary design with an exclusively decorative function, which would not be perceived by the relevant public as a distinctive sign. Loufrani's successor in title, The Smiley Company, appealed further to the Court of First Instance, which this morning dismissed its appeal.

The Court of First Instance was not impressed with the arguments that this mark was distinctive or that it could serve as a trade mark. Describing the mark as being

" ... composed of a curved, ascending line, comparable to a quarter of a circle, under the middle of which there is a small vertical stroke [this either is, or isn't, a printer's whoopsie: if you're the appellant, it's both], and ends, on the right-hand side, with a second short line, almost perpendicular to the first. A vaguely triangular shape marks the intersection of the two main lines. The various elements form a whole",
the Court was unimpressed by its ability to impress:
"31 There is no aspect of the trade mark at issue which may be easily and instantly memorised by an even relatively attentive relevant public and which would make it possible for it to be perceived immediately as an indication of the commercial origin of the goods in question. ... it will be perceived exclusively as a decorative element whether it relates to goods in Class 14 or to those in Classes 18 and 25. Thus, the mark at issue does not make it possible for any of the goods at issue to be distinguished from competing goods.

32 That finding cannot be called into question by the fact that the relevant public is used to perceiving figurative signs that are simply stripes as trade marks or that numerous manufacturers have registered such marks to designate goods in Class 25".
The real nature of the appeal is however revealed in paras 39 to 40: this is an attempt by The Smiley Company to strengthen its claim to the smiley emoticon:

39 Lastly, the argument that the mark at issue is identified by the relevant public as a ‘half smiley mouth’, the smiley itself having been registered as Community trade mark No 517383 [above, left], and that it is therefore distinctive cannot be upheld, even if that argument, which was formulated for the first time before the Court, were to be admissible. As OHIM states, to follow that approach would be tantamount to accepting that every extract from a registered mark and, therefore, every extract from a distinctive mark, is by reason of that fact alone also distinctive for the purposes of Article 7(1)(b) of Regulation No 40/94. That cannot be accepted. The assessment of the distinctive character of a mark for the purposes of that provision must be based on that mark’s ability to distinguish the applicant’s goods or services on the market from goods or services of the same type offered by competitors ... The fact that the mark at issue consists of part of a mark which has already been registered is not relevant in that regard.

40 In any event, although the mark at issue may, when the marks are compared side by side, be found to resemble half of the mouth in Community trade mark No 517383, it must be recalled that the average consumer must place his trust in the imperfect picture of the mark that he has kept in his mind ... Furthermore, the relevant public’s recognition, in the mark at issue, of part of Community trade mark No 517383 presupposes that the relevant public knows the latter mark, a fact that the applicant has not established. It cannot therefore be considered that, when it perceives the mark at issue, the relevant public will identify it as half of a smiley mouth or half of the smile in Community trade mark No 517383. In that regard, ... the small vertical stroke under the principal curve of the mark at issue does not appear in the mouth in Community trade mark No 517383. The possible association of the mark at issue with the mark cited by the applicant has not therefore been proved".
The IPKat is really unimpressed with this effort to register the unregistrable, which presumably must have cost a fair amount of money and effort too. To him it looks like a ploy to seek to prevent other would-be users of smiley emoticons from attempting to design around the 'usual' one -- in effect, it's an attempt to monopolise a smile. Merpel says, come now IPKat, you're being quite unfair. The public can be educated over time to recognise pretty well anything as a trade mark if you teach them properly: even if the half-smile isn't registrable now, it can still acquire distinctive character -- and even an application that is doomed to failure sends out a 'keep off the grass' warning to competitors.

More than you ever need to know about smileys here
Smiley's People here
Do cats smile? Here
Can I teach my cat to smile? Here

Monday, 28 September 2009

Letter from AmeriKat

Last weekend, as the AmeriKat was sorting through five years of accumulated belongings in preparation for a move, she came across old notes from her first year in law school. Brightly multicoloured, underlined, boxed and highlighted, these notes were a relic of the bygone era when the most challenging of events was making it to a 9am Jurisprudence lecture.

Quick Patent Picks

* Another relic of a bygone era, Western Union, victoriously survived a 2007 patent lawsuit last week when a Texas federal jury awarded them $16.5 million after MoneyGram International’s “FormFree” system infringed Western Union’s patented “Money Transfer By Phone” service. Both services involved the initializing of money transfers via telephone call centres with the transactions being completed at agent locations. Despite Western Union’s own technical expert testifying that the two systems were sufficiently different, the federal jury upheld the validity and infringement of Western Union’s patent. Lynda Michielutt, a spokesperson for MoneyGram, stated that “[w]e firmly believe that the case is without merit, and we believe we have a solid basis for appeal.”

* WhoGlue Inc., a small Baltimore tech company, filed a patent infringement law suit last Monday in the US District Court for Delaware against Facebook for infringement of a 2001 patent for “facilitating communications between user members of an online network.” WhoGlue’s patent filing predates Facebook's creation in 2004 and the Baltimore company received its patent in July 2007. Facebook spokeswoman Elizabeth Linder stated that “[w]e see no merit in this suit, and we will fight it vigorously.” Having looked at the patent filing, the AmeriKat is tempted to agree with Linder.

* The appeal in i4i v Microsoft was heard this Wednesday before a three-judge panel in the U.S. Court of Appeals for the Federal Circuit. Judge Moore questioned the $290 million damages calculation made by a Texas jury against Microsoft. As reported by the IPKat, Microsoft argued that the damages overestimated the actual worth of i4i’s patent to Microsoft’s programs. Judge Moore agreed: “Not everyone who is willing to pay $90 or $200 for a product is willing to pay $500.” However, a settlement is apparently not out of the realm of possibility following a statement from i4i’s chairman Owen Loudon: “You can never say never, but we’re here to build our business and we’re here to compete”.

A $1.9 billion headache

In 2005 when eBay purchased Skype for $2.6 billion they did not acquire Joltid, the company which supplied the integral technology necessary to operate the program. Joltid is also owned by the founders who originally sold Skype to eBay. As a result of being unable to further commercialize the VoIP software on their website applications, eBay sold its majority stake for $1.9 billion to private investors. Two weeks ago, Skype and Joltid’s founders sued eBay for copyright infringement of Skype’s so called “global index” technology which is used to route calls via the internet. eBay was a licensee of Joltid’s technology until March 2009, when Joltid terminated the licence. Skype also named the private investors as defendants to the suit. Similar litigation has been continuing in the UK. According to the Washington Post, “Skype did not own the core peer-to-peer technology underlying the service, nor did they even have access to it”, so even if eBay had wanted further commercialize and develop the Skype product, they allegedly did not have the source code to do so. The AmeriKat thinks some good IP due diligence may have saved the investors from changing money so quickly.

Back to the drafting table, Google!

It does not seem to be a true Letter from AmeriKat unless there is something about the Google Book Settlement, and this week is no different. District Judge Denny Chin postponed the fairness hearing originally scheduled for 7 October 2009 to allow the parties to redraft the settlement. Judge Chin’s order stated:
"Under all the circumstances, it makes no sense to conduct a hearing on the fairness and reasonableness of the current settlement agreement, as it does not appear that the current settlement will be the operative one".
A status conference will instead be held on that date.

Eminem Bites the Apple

Back in 2005 Eminem’s company Eight Mile Style filed a multi-million dollar law suit against Apple, alleging that the company had infringed the rapper’s copyright in selling 93 of his tracks through iTunes without permission. Apple’s agreement with Aftermath Records is argued by Eminem not to have included digital downloads. The lawsuit alleged that Apple made $2.5 million from selling these tracks. In opening statements last Thursday, Apple’s counsel Glenn Pomerantz told the court that “[n]owhere does it say only compact discs. Nowhere does it say ... not digital downloads." The trial continues.

The German "Piratenpartei" and the German General election

A little while ago the IPKat reported on the German "Die Piratenpartei" (see the IPKat and Alex Horn's post here), the sister party of the Swedish Piratpartiet. While this Kat is politically neutral (well, at least on this blog), she still felt that it would be interesting to see how the German pirates fared at Germany's General election.

While Angela Merkel's CDU party won Sunday's General election and will now (most likely) form a new government with the liberal FDP party, the IPKat has noted that "Die Piratenpartei" appears to have secured a respectable 2% of all votes. Even though party chairman Jens Seipenbusch viewed these 2% as "magic threshold" (according to a report by German tabloid Bild), the German pirates will not enter the German parliament (Bundestag) since German election laws require that a party needs to have 5% of all votes to be represented in parliament. However, German tabloid "Bild" reports that 13% of Germany's first time voters voted for "Die Piratenpartei" - which is a respectable result, this Kat thinks.

The German pirates, inter alia, focus on the protection of civil liberties on the Internet, believe that there is no need for software patents, are against patents for "genes" or living creatures (Lebenswesen -would that include human beings?), believe that current copyright and intellectual property legislation is based on a "dated view" of intellectual property and support the legalisation of "private copying". Their website can be found here.

Sunday, 27 September 2009

IP and secured transactions: have you understood UNCITRAL's recommendations?

A couple of weeks ago the IPKat mentioned a forthcoming seminar catalysed by the IP Finance weblog on "IP rights and the UNCITRAL secured transaction project: the draft recommendation and their potential consequences for British lenders and IP owners". The keynote speaker is Spiros Bazinas (Senior Legal Officer, UNCITRAL's International Trade Law Division), who is [per the IPKat] one of only about half a dozen people on the planet who have a real grasp of this complex yet vital area of commerce.

Right: expect some wizardry when IP and lending experts come together to discuss the possible future face of IP secured transactions!

This event takes place on the afternoon of 14 October in the London offices of law firm Olswang LLP. So far over 50 participants have registered for the seminar, which is free of charge and carries 2.45 CPD points, and it looks as though the venue will be booked to its capacity quite soon. To avoid disappointment, if you'd like to attend but haven't yet done so please email Sandra Holloway, who will inscribe you on the list of attendees.

Friday, 25 September 2009

Paris not so hot in the Ninth Circuit

In 2007 Paris Hilton, the heiress who is “famous for being famous”, sued Hallmark Cards alleging that one of the greeting card company’s birthday cards constituted misappropriation of publicity and trade mark infringement, under Californian and federal law respectively. The card at issue incorporated a cartoon of a waitress with Hilton’s head superimposed on the body. A caption reading “Paris’s First Day as a Waitress” is placed above the drawing. The cartoon Hilton tells the customer “Don’t touch that, it’s hot.” “What’s hot?” the customer replies. “That’s hot.” For those IPKat readers unfamiliar with Paris Hilton’s body of work, “That’s hot!” is a phrase she employs when, according to Judge O’Scannlain, “she finds something interesting or amusing.” Hilton registered the trade mark “that’s hot” with the USTPO.

The 9th Circuit dismissed the trade mark infringement claim, which Hilton did not appeal, but accepted that Hilton could still argue that the card misappropriated her likeness in the image.

Paris Hilton’s case has apparently raised serious First Amendment issues – a sentence that this IPKat never thought she would ever write. Hallmark’s attorney’s stated:
“Spoofing how a celebrity appears in a work that the public commonly associates with that celebrity is a standard practice of satirists, parodists and other speakers. [The Court’s] unprecedented finding that the publicity rights of an iconic celebrity may trump the First Amendment in the context of fully-protected speech that spoofs that celebrity ... creates uncertain and unreliable legal standards that will drastically chill speech if allowed to stand."
At issue in the appeal is the conflict of the 9th Circuit’s decision with the court's precedent in Hoffman v Capital Cities (2001) which held that an image portraying a celebrity’s name and likeness was transformative (i.e., the addition of creative contributions to the likeness) and therefore protected under the First Amendment. The Court there held that the image of Hilton as a waitress was not sufficiently transformative because Hilton had acted as a waitress on her show “The Simple Life”. The question that the Court of Appeals will hopefully answer is exactly how much transformation is required for a defendant to avail themselves of a claim for misappropriation of publicity.

Friday fineries

It's surprising how quickly Friday comes round again -- and with it the golden opportunity to check on all those exciting forthcoming IP events that are listed in the sidebar.

A WIPO press release informs the Kats that Thailand has deposited an instrument of accession to the Patent Cooperation Treaty, which will enter into force for that country on 24 December 2009. The IPKat's old friend Francis Gurry, whose day job is boss of WIPO, welcomed Thailand’s accession to the PCT which he said was “an extremely important step” that helps make the treaty a “more global and attractive system.” The IPKat agrees.

Class 99, the design law blog, is looking for illustrations of the original and allegedly infringing items relating to the current design infringement and logo-lifting dispute between British fashion retailers Next and giant supermarket and online service provider Tesco. If you can help, that would be great!

Around the weblogs: Richard Cauley has resumed his Art of IP War blog (born 2005; briefly flourished during 2006 and now bubbling with life again). A beautiful new blog (in French) has been launched by law firm Dreyfus: it's called and you can savour its Gallic elegance here. Email subscriptions for European trade mark blog Class 46, newly adopted by MARQUES, have now reached -- and indeed surpassed -- the 800 mark. In India, it's all-change at Spicy IP, where Shamnad Basheer and Mihir Naniwadekar have both stepped down from the subcontinent's best-known source of contemporary IP law and opinion [though today's evidence is that Shamnad at least is continuing to post blog articles]. And finally, after six years of toil, this weblog's co-founder Ilanah Simon Fhima is stepping down. The team thanks her sincerely for all her efforts and wishes her well in all her future ventures.

The IPKat's friend Naoise Gaffney writes to inform him as follows:
"As someone who is sitting the CIPA Infringement & Validity paper (P6 to those of us having the misfortune to be sitting it) for the first time this year, I'd like to recommend that Nigel Frankland's 70-page guide to passing the exam be more widely publicised. I had the luck to be in one of Nigel's P6 tutorials recently and, in speaking to him after the event, suggested that he might ask the IPKat to spread the word. Nigel feels that it's about time someone put together a guide for this exam, and as someone who had the benefit of Doug Ealey's guide to P2 last year, I'd be inclined to agree.
One wonders whether the fact that 66.5% of candidates passed P2 in 2008 (the highest pass rate in 9 years - and 7% more than the second-highest pass rate in this time) has any relation to the fact that this was also the first year Doug's book was available. It certainly would help to circulate any material available for the P6 exam which has a 9-year pass rate average languishing at ~43/44%".
The IPKat used to love exams, since he always reckoned that (i) anyone who had done more work than him had probably over-revised, (ii) anyone who had done less was underprepared and (iii) exams brought everyone else down to his own level. But that was a while ago and things are more systematic now. If you'd like further information, just click here and here.

The IPKat's friend, fellow blogger and long-distance runner Peter Groves writes, by-the-by:
"Have you seen the free IP resources on Insite Law Magazine, which I am contributing? I hope that they will be of use to newcomers to the field. I had an old textbook which just needed updating, and online publication is a nice way to recycle it (plus, it generates advertising revenue)".
Peter also welcomes constructive criticism, as do we all when asked in public ...

Expert system: Australian IP enthusiast Michael Bates excitedly tells the IPKat what he's been up to:
"Recently we have placed an Expert System on to our website here to help anyone who need help with IP issues. This system is still in its early stages; however, I would like to open it up to invite other attorneys/lawyers in the IP community (other than Australia) to place their questions and answers on to the Expert System so that it covers all jurisdictions.

We are happy to refer users to the firm (& of course acknowledge) which drafted the interview information for/and had had it placed on to the expert system (I will put it into the expert system). This referral would be at the base end of each interview.

We have added a second website for users here, in case the number of users increases (as it already has)".
The IPKat says, give it a try!

How many ministers does it take to make a High Level Segment?

Someone is being paid to come up with all of this, and someone else is being paid to turn it into another World Intellectual Property Organization press release. Is it, though, a far-sighted move to keep intellectual property at the leading edge of global progress or a blistering vague and meaningless waste of money that could be spent on important things like improving the functionality and the content of national IP office websites, to make them more informative for ordinary users and less time-consuming for IP practitioners and their clients?

Right: some of the IPKat's favourite segments

This press release (PR/2009/607) is grandly entitled "Ministerial Segment Endorses WIPO’s Engagement with Global Challenges". Dated 23 September 2009 it reads:
"Government ministers [these are they] participating in the first-ever High Level Segment of the Assemblies of the member states of WIPO on September 22 and 23, 2009 [The what?], endorsed WIPO’s progress toward its strategic goals [it could hardly do otherwise: the 9 'strategic goals' are basically 'doing its job'], which they said marked a new era for the Organization and its ability to ensure that the intellectual property (IP) system helps meet an increasing number of global challenges [whatever happened to the old era and when did it end?]. They emphasized that IP is now widely perceived as a key policy tool to promote public interest, innovation and technological progress [but not that it's also perceived as a block on the sale of medicines, the spread of audio and video culture and the sale of genuine branded goods?].

The more than 40 ministers attending the High Level Segment shared the view that IP is a driving force in creating a positive environment for social, economic and cultural development [40 ministers? The IPKat assumes that they all travelled economy class, as he does, and that none of them held this positive view of IP until they reached Geneva ...]. Ministers welcomed the Organization’s commitment to delivering effective services under the Development Agenda [Merpel has a challenge here: can one reader who is not a WIPO employee name any effective services which have been delivered under the Development Agenda] and WIPO’s capacity building programs in general.

The meeting provided an opportunity for ministers to exchange experiences [we feared as much], share concerns and to express their respective national IP priorities [!]. It was also recognized as an important means of raising the profile of IP issues within senior policy making spheres at both the national and international levels [It's a little-known fact that Geneva is kept warm throughout the snowy winter by a system based on recycled hot air. Guess where it comes from ...].

At the opening of the High Level Segment, WIPO Director General Francis Gurry called on member states to work together to ensure that the IP system serves as a stimulus for developing solutions to the global challenges confronting policy makers across the world [Quite right. That's exactly what the World Trade Organization is for]. Many countries underlined the need for continued support in promoting innovation, technology transfer and IP public awareness to boost technological development and commerce, and to support the search for solutions to emerging problems [... and to think they managed this only 126 short years after the came together to sign the Paris Convention on the Protection of Industrial Property].

The need to find solutions to overcome the blockages in the Organization’s normative agenda was widely expressed [Did the expression of this need require 40 ministers to turn up?]. In this context, many ministers called for the renewal of the mandate of the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC) in a way that allows for concrete outcomes [But surely countries which are blocking the normative agenda will resist changes in these mandates if their effect is to free that agenda up. Or is the IPKat missing something very obvious].

Ministers commended Mr. Gurry’s leadership of the Organization and the progress made in the renewal and strategic realignment of operations [The IPKat thinks he's doing a great job, though wading knee-deep through all those routes to 'concrete outcomes' must take some doing]. They welcomed the Organization’s response to the challenges confronting the IP system [Such as? Merpel couldn't find anything on the WIPO website that looks like a response to the Pirate Party manifesto] and its engagement in global issues, including climate change, food security, public health and technology transfer".

Thursday, 24 September 2009

India: will IP litigation be both 'punctual' and 'faithful'?

Thank you, Amit Jamsandekar, for sending the Kats this fascinating (and blessedly short) ruling of the Indian Supreme Court on 16 September in Bajaj Auto Limited v TVS Motors Limited, MANU/SC/ 1632/2009 which, says Amit, is "expected to change the entire scenario of intellectual property litigation in India".

Right: Indian IP litigation is quite tigerish at interim level, but rarely gets beyond it ...

Explains Amit:
"Justice Katju [as a Jewish Kat, Jeremy loves this name!] noted the judgment of the Supreme Court dated 7 September 2009 (which is not reported and went unnoticed) in Special Leave Petition (C) No. 21594 of 2009 in Shree Vardhman Rice & Gen Mills v Amar Singh Chawalwala in which the Court said:

“...Without going into the merits of the controversy, we are of the opinion that the matters relating to trademarks, copyrights and patents should be finally decided very expeditiously by the Trial Court instead of merely granting or refusing to grant injunction. Experience shows that in the matters of trademarks, copyrights and patents, litigation is mainly fought between the parties about the temporary injunction and that goes on for years and years and the result is that the suit is hardly decided finally. This is not proper.

Proviso (a) to Order XVII Rule 1(2) C.P.C. states that when the hearing of the suit has commenced, it shall be continued from day-to-day until all the witnesses in attendance have been examined, unless the Court finds that, for exceptional reasons to be recorded by it the adjournment of the hearing beyond the following day is necessary. The Court should also observe Clauses (b) to (e) of the said proviso.

In our opinion, in matters relating to trademarks, copyright and patents the proviso to Order XVII Rule 1(2) C.P.C. should be strictly complied with by all the Courts, and the hearing of the suit in such matters should proceed on day to day basis and the final judgment should be given normally within four months from the date of the filing of the suit."

The Court added that the fact that the litigation is mainly fought in India in respect of a temporary injunction is a very unsatisfactory state of affairs. He held that the order passed in Shree Vardhman Rice & Gen Mills, which is quoted in the present judgment, was passed to serve the ends of justice. Significantly, the Supreme Court has directed all the Court and Tribunals in India to follow the order passed in Shree Vardhman Rice & Gen Mills "punctually" and "faithfully".

The reaction of the Supreme Court was much awaited considering the practice followed in India for IP litigation. In practice, IP litigation in India ends at the interim stage. It would be interesting to learn how the Courts and Tribunals and the IP Professionals react to the Judgment of the Supreme Court. By virtue of the provision of the Constitution of India, the judgment of the Supreme Court is law of the land.

Today, civil courts are severely over-burdened. Apart from IP, they also adjudicate all other disputes of civil nature. As things stand today, the civil courts find it difficult to dispose of interim applications during the pendency of the suit within the timeframe provided as per the Code of Civil Procedure, 1908. Additionally, there are no specialized civil courts, which adjudicate singularly on IP matters. The Intellectual Property Appellate Board (IPAB), established under the Trade Marks Act 1999, which has jurisdiction under the Patents Act, can only try matters in respect of opposition to and rectification of trade marks/ patents/ designs. The IPAB also has jurisdiction to entertain, try and dispose of appeals from the orders passed by the Controller of Patents and the Registrar of Trade Marks. However, the IPAB has no jurisdiction to try infringement suits; the civil courts have the exclusive jurisdiction in respect of the same.

In this scenario, given their constrained bandwidth, it would be interesting to see how civil courts follow the Supreme Court’s directive “punctually” and “faithfully”.
This weblog has a large, enthusiastic and vocal Indian readership. Accordingly the IPKat expects to receive plenty of comments from the subcontinent.

Trade secrecy: two books reviewed

Here are a couple of books that each have confidentiality as their theme -- but they are very different. The first, which deals with confidentiality in the world's most populous jurisdiction, is The Protection of Trade Secrets in China by Shan Hailing, who holds a chair in law at Shanghai's East China University of Political Science and Law. This volume is part of the Max Planck Series on Asian Intellectual Property series, published by Kluwer (details here). Having discovered lots about Chinese Whispers and Chinese Walls in earlier parts of his life, the IPKat was curious to see what Chinese trade secrets were like. He was not disappointed.

According to the publisher's web-blurb:

"For many business investors in China, the legal handling of trade secrets is crucial. However, initiatives are often complicated by a patchwork trade secrets protection system, developed rapidly over less than twenty years, that diverges in significant ways from global standards and corresponding regimes in other countries, and that incorporates elements of competition law, contract law, employment law, and criminal law. ...

The author pays close attention to judicial practice and precedent in the areas of civil remedies, criminal punishment, and administrative penalties. She also offers insightful proposals formulated to align China’s trade secrets law more efficiently with prevailing global standards and generally improve the mechanisms for its implementation.

Corporate counsel and international lawyers concerned with intellectual property rights or labour law in China will greatly appreciate the knowledgeable guidance this book affords. They will gain a deeply informed perspective that allows them to avoid infringement, to battle it effectively if occasion arises, and to plan dispute resolution strategies for contingencies involving trade secrets protection in China".
This is a surprisingly wide-ranging work, not only explaining the current provisions in China and the steps taken to evolve them but also examining the theoretical bases of trade secrecy and unfair competition provisions in the United States, Germany and elsewhere. Despite its obviously academic flavour it is a book which which practitioners will be at home -- insofar as any Westerner who may have the misfortune to participate in IP litigation in China will feel "at home" -- and handles real-world issues such as proof and evidence in a thoroughly practical manner. It also reads well, which cannot be said of too many of the books published on Chinese law.

Bibliographic details. Published 2008, hardback. xxiv + 323 pages. ISBNs 9041127585 and 13 9789041127587. Rupture factor: low. Web page here.
Hardcover , 352 pp. Price $231.

Also reviewed here is Trade Secrets: Law and Practice, by the IPKat's old friend David Quinto and his co-author Stuart Singer. David is a founding partner and head of internet litigation at Quinn Emanuel Urquhart Oliver & Hedges, Los Angeles, while Stuart is a partner at Boies, Schiller & Flexner, LLP. According to Oxford University Press:
"As the value of a business has increasingly become a reflection of the value of the company's ideas, trade secret law has become more important, but the field of trade secrets is less well-covered by a substantial margin than patent, copyright or trademark. While several existing treatises discuss U.S. trade secret law, Trade Secret Litigation: Practice and Strategy [Whoops, that's not the name of the book. Some other publication perhaps, or an earlier name that was rejected for this book as being too long/formal?] is perhaps the first to do so from a trial-lawyer's perspective. In addition to case-law analysis, it contains strategic advice on prosecuting and defending trade secret misappropriation actions, maintaining legally sufficient trade secret protection measures, and supervising outside attorneys in a trade-secret litigation".
The book looks a little formidable at first, but there's no need to panic. If you don't read, or need to make reference to, the copious footnotes, it's already a lot shorter. Also, there's around 90 pages of description, explanation and analysis of the law of 22 selected States which the practitioner and the PhD student will probably find extremely handy but which the casual reader may well choose to skim. There's a fair bit of comment about the position taken by the courts in various States in the main body of text too, indicating for example whether the courts in particular locations are more (or less) hostile to certain elements of doctrine than are others.

On the production side, the book -- like the rest of this little series of IP works emanating from Oxford University Press's New York desk -- has a very pleasant look and feel to it. The clarity of the print and the utility of the fold-over cover flaps are both appreciated by this reviewer.

Bibliographic detail: published 2008. Soft cover, xv + 470 thinnish pages. ISBNs 10 0195337832 and 13: 9780195337839. Price:$225. Rupture factor: trivial. Web page here.

Wednesday, 23 September 2009

... and you can't patent a trade mark either

A bit like mixing tea with your coffee, citing European Patent Office decisions in Community trade mark appeals is not to everyone's taste. This is what Evets, whose DANELECTRO and QWIK TUNE Community trade marks had lapsed, attempted in Joined Cases T‑20/08 and T‑21/08, Evets Corp. v Office for Harmonisation in the Internal Market.

Evets applied for restitutio in integrum, seeking re-establishment of the right to renew its registrations, claiming that its marks weren't renewed due to an error that had occurred owing to circumstances beyond its control and that of its representative (it being the fault of a third party who didn't have Evets' correct address in its database). OHIM's Trade Marks and Register Department said no -- it was Evets' fault for not taking all due care: Evets' representative knew the marks had to be renewed but took no action to check with Evets, the third party or OHIM whether the marks were being renewed. The Fourth Board of Appeal agreed, adding that the application for restitutio had been filed too late anyway. Today the Court of First Instance agreed, dismissing the action to annul the Board's decision.

The thing that caught the IPKat's eye was Evets' unsuccessful attempt to base its appeal on the too-late-to-apply point on European patent law:

"26 ... the applicant claims that, in view of the fact that there is an overall time‑limit of 12 months within which to bring restitutio in integrum proceedings, it was the legislature’s intention that the 2‑month time‑limit should not be calculated from the date on which the expiry was notified to the representative of the proprietor of the mark. Otherwise, the 12‑month time‑limit would be redundant and the 2‑month time‑limit for bringing restitutio in integrum proceedings would have sufficed. That approach has been adopted by the Boards of Appeal of the European Patent Office (EPO), and in so far as Article 78(2) of Regulation No 40/94 is identical in substance to Article 122(2) of the Convention on the Grant of European Patents ..., the same approach should be applied in the present case.

27 ... Article 122(2) of the Convention on the Grant of European Patents no longer contains any provision on time‑limits, but refers to Rule 136 of the Implementing Regulations to the Convention on the Grant of European Patents, .... The relevant provision is thus Rule 136(1) of those implementing regulations.

28 As regards the one-year time‑limit, suffice it to point out that Article 78(2) of Regulation No 40/94 does not concern solely applications for restitutio in integrum in cases of non‑submission of a request for renewal, but also concerns failure to observe the time‑limit where the non‑observance in question has the direct consequence, by virtue of the provisions of that regulation, of causing the loss of any right or means of redress. The non-observance, and in particular the removal of its cause, can take many forms and, therefore, the one‑year time‑limit is laid down as an absolute deadline. Thus, the applicant cannot claim that that time‑limit would become redundant if the two‑month time‑limit were to be calculated from the ‘chronological date’ (here, 21 and 23 November 2006) in question. In the event that the cause of non‑compliance is removed only one year after the expiry of the unobserved time-limit, the application for restitutio in integrum is no longer admissible. The two‑month period thus forms part of the one year period.

29 As regards the practice of the EPO’s Boards of Appeal, ... the Community trade mark regime is an autonomous system with its own set of rules and objectives peculiar to it; it applies independently of any other system ....

30 Whilst identically or similarly worded provisions in the field of European intellectual property law must where possible be interpreted with consistent effect, the European Patent Convention is not a Community instrument, nor is the EPO a Community body. The case‑law of the Boards of Appeal within that office has no binding authority in Community law (Opinion of Advocate General Sharpston in Case C‑29/05 P OHIM v Kaul [2007] ECR I‑2213, point 40).

31 ... even if Article 78 of Regulation No 40/94 was drafted on the basis of a patent law model, there is nothing to suggest that the respective provisions must be interpreted identically, since the interests at issue in the two areas may differ. The legal context of patent law is different, and the provisions governing patents seek to regulate procedures different from those applicable in the area of trade marks ...

32 ... the decision of the Technical Board of Appeal of the EPO of 16 April 1985 (T 191/82, OJ EPO 7/1985, p. 189) ... in no way shows how the EPO would give a different interpretation .... In that case, it was found that, where the employee of an agent discovers that failure to observe a time-limit has led to the loss of a right, the cause of non‑compliance which is at the root of that failure – that is to say, the fact of not having realised that the time‑limit had not been observed – is deemed not to have been removed, as long as the agent concerned has not been personally informed of the situation, since it is for him to decide whether to file an application for restitutio in integrum and, if he decides to file such an application, to outline the grounds and circumstances which should be invoked before the EPO.

33 In the present case, the agent, that is to say the applicant’s representative, has not claimed that it was not personally informed of the situation on the dates of the notifications. Thus, the EPO decision in no way supports the applicant’s arguments. Moreover, the relationship between the representative and its employee cannot be treated in the same way as the relationship between a party which is represented and its representative".
The IPKat feels that this was always a non-starter and hopes it won't be raised again. Merpel says, one of the most popular books never to have been written is How to Succeed in Restitutio Applications before OHIM.

More on Danelectro here
Another Qwik Tune here

Tuesday, 22 September 2009

Pending patent backlog at 4.2 million, says WIPO

The IPKat noticed the following press release issued recently from WIPO. Relevant bits are highlighted, for those who tend to find such things interminable [and some IPKat comments are provided in red].

A two-day international symposium concluded on September 18, 2009 with broad agreement on the need to pool efforts at the international level to address the problem of backlogs in patent applications [It's not necessarily a problem for everyone; some applicants like having their applications pending for as long as possible].

Closing the first Global Symposium for Intellectual Property Authorities, WIPO Director General Francis Gurry referred to recently published data that showed that the global backlog in unprocessed patent applications around the world in 2007 was a staggering 4.2 million [This most likely includes some multiple counting of applications having the same priority, which tend to be dealt with once the more important offices (EP, US, JP) have had their go at them]. These backlogs have grown on average at a rate of 8.7% over the past five years. “This is unsustainable,” Mr. Gurry said [But what will happen if it carries on? Will the Earth implode?].

“We have moved beyond consciousness of the need to address unsustainable processing of patent applications to action,” Mr. Gurry said, noting that the main challenge of the future is to promote coordinated international action to enhance efficiency of operations and encourage dissemination of best practices in modernizing the infrastructure, operations and management of IP offices [So no action to actually get more people on the job of searching and examining then...].

Work sharing for prosecuting patent applications was suggested as a solution to existing inefficiencies. Patent prosecution highway (PPH) projects were extensively discussed at the Symposium. Participants concluded that the PCT should serve as the backbone for work sharing in relation to patent prosecution to support existing bilateral PPH agreements. Representatives of the Trilateral Offices (European Patent Office, Japan Patent Office and United States Patent and Trademark Office), attending the Symposium signaled their agreement in principle to integrating PCT work products (PCT international preliminary reports on patentability) into their ongoing PPH projects. Pilot projects are to start in early 2010. The Director General said this was a major development that WIPO warmly welcomed.

New initiatives for work sharing were announced at the Symposium. These include the Vancouver group (Australia, Canada, and UK) project for mutual exploitation of search and examination documents; and a Latin American project to exchange search and examination data on patents and trademarks involving nine partners (Argentina, Brazil, Chile, Colombia, Ecuador, Paraguay, Peru, Suriname, and Uruguay in partnership with the Inter-American Development Bank). Mr. Gurry welcomed new collaboration projects. In response to a call for technical assistance from WIPO in these projects for building a common international patent platform, Mr. Gurry said that WIPO is pleased to provide technical assistance in developing the common platform to ensure global compatibility and interoperability of such initiatives.

More than 40 heads of IP offices participated in the event, together with users of the IP system. Appreciation was expressed for new WIPO initiatives outlined by Mr. Gurry on the enhancement of IP databases, including steps to upgrade PATENTSCOPE® with national patent data collection and the recent launch of aRDi

In facilitating the efficiency of patent searches, participants reaffirmed the need for WIPO to play a proactive role in collecting information on the legal status of patents for inclusion in PATENTSCOPE® [Now this does sound like a good idea; having a reliable and up-to-date source of information on families of applications would be not only of use to patent offices but to the public in general].

The Symposium also provided a forum for the exchange of experiences and best practices in the area of trademark and industrial design registration, arbitration and mediation services for IP-related disputes, financial management of IP offices, and IP office’s role in promoting innovation in partnership with science and innovation institutions. (Access to Research for Development and Innovation) to narrow the knowledge gap in least developed countries [Oh dear, here we go again. What has this go to do with WIPO? Don't patent publications already provide a valuable resource of information that is freely available for anyone with an internet connection?].
The IPKat thinks that making the system more efficient is all very good, but wonders how far this will go in reducing the backlog. Isn't the problem all about the fact that the patent system doesn't pay for itself out of renewal fees anymore? Work sharing can surely only go a small part of the way towards getting the backlog down, particularly when different offices apply different rules on granting patents. How is the real underlying problem of paying for good quality search and examination going to be solved?

Google AdWords -- the wait is over

This morning the IPKat rejoices that the wait is over for the initially expedited and subsequently delayed Opinion of the Advocate General in Joined Cases C-236 to 238/08 Google France, Google Inc. v Louis Vuitton Malletier, a reference for a preliminary ruling from the Cour de Cassation (France) in June of last year. Today's Advocate General is the splendidly-named Luís Miguel Poiares Pessoa Maduro.

The issues giving rise to the three references are summarised succinctly in the report in the Financial Times:
"The case centres on whether Google has the right to sell brand names for Internet search advertising – an important money-spinner for the group.

Companies such as shoe stores, for example, pay Google so their name appears alongside Internet search results for a brand of designer shoes they sell.

Louis Vuitton and others have been fighting such advertising after makers of imitation products piggybacked on those brands in online searches to attract customers".
Today the Advocate General advised the ECJ to rule as follows:
"155. ... (1) The selection by an economic operator, by means of an agreement on paid internet referencing, of a keyword which will trigger, in the event of a request using that word, the display of a link proposing connection to a site operated by that economic operator for the purposes of offering for sale goods or services, and which reproduces or imitates a trade mark registered by a third party and covering identical or similar goods, without the authorisation of the proprietor of that trade mark, does not constitute in itself an infringement of the exclusive right guaranteed to the latter under Article 5 of ... Directive 89/104 ....

(2) Article 5(1)(a) and (b) of Directive 89/104 and Article 9(1)(a) and (b) of Council Regulation ... 40/94 ... must be interpreted as meaning that a trade mark proprietor may not prevent the provider of a paid referencing service from making available to advertisers keywords which reproduce or imitate registered trade marks or from arranging under the referencing agreement for advertising links to sites to be created and favourably displayed, on the basis of those keywords.

(3) In the event that the trade marks have a reputation, the trade mark proprietor may not oppose such use under Article 5(2) of Directive 89/104 and Article 9(1)(c) of Regulation No 40/94.

(4) The provider of the paid referencing service cannot be regarded as providing an information society service consisting in the storage of information provided by the recipient of the service within the meaning of Article 14 of Directive 2000/31/... in particular electronic commerce, in the internal market (‘Directive on electronic commerce’)".
Put more simply, the ECJ's press release says (with ECJ emphases in bold; IPKat comments in red):
"In his Opinion delivered today, Advocate General Poiares Maduro suggests that Google has not committed a trade mark infringement by allowing advertisers to select, in AdWords, keywords corresponding to trade marks. He highlights that the use of the trade marks is limited to the selection of keywords which is internal to AdWords and concerns only Google and the advertisers. When selecting keywords, there is thus no product or service sold to the general public. Such a use cannot therefore be considered as being a use made in relation to goods or services identical or similar to those covered by the trade marks [even if it affects the mark's essential function or damages its goodwill?While this conclusion may be correct in technical legal terms, the whole reason for buying a keyword corresponding to someone else's trade mark is to pitch for the business which internet users look to the trade mark owner to give]. Similarly, advertisers themselves do not commit a trade mark infringement by selecting in Adwords keywords corresponding to trade marks.

By contrast, the Advocate General finds that Google, by displaying ads in response to keywords corresponding to trade marks, establishes a link between those keywords and the sites advertised which sell products identical or similar to those covered by the trade marks. The very same link is established between keywords which correspond to trade marks, and the sites displayed as natural results.

However, in the view of the Advocate General, such a link also does not constitute a trade mark infringement. In effect, the mere display of relevant sites in response to keywords is not enough to establish a risk of confusion on the part of consumers as to the origin of goods or services. Internet users are aware that not only the site of the trade mark owner will appear as a result of a search in Google's search engine [just as shoppers in street markets are aware that not only the legitimate goods of the trade mark owners will be sold there?] and sometimes they may not even be looking for that site. These users will only make an assessment as to the origin of the goods or services advertised on the basis of the content of the ad and by visiting the advertised sites; no assessment will be based solely on the fact that the ads are displayed following the entry of keywords corresponding to trade marks.

The Advocate General then recalls that trade mark rights cannot be construed as classical property rights enabling the trade mark owner to exclude any other use.
Accordingly, internet users' access to information concerning the trade mark should not be limited to or by the trade mark owner even if it involves a trade mark which has a reputation [but the user of the keyword can limit the consumer's access to information by feeding him information about product B when he's searching for product A?]. He notes that many of the sites reached by internet users by entering keywords are perfectly legitimate and lawful even if they are not the sites of the trade mark owner [but no-one's suing them].

Mr. Poiares Maduro also rejects the notion that Google's actual or potential contribution to a trade mark infringement by a third party should constitute an infringement in itself. He opines that instead of being able to prevent, through trade mark protection, any possible use – including many lawful and even desirable uses –, trade mark owners would have to point to specific instances giving rise to Google’s liability in the context of illegal damage to their trade marks.

In this context, the Advocate General finds that both Google's search engine and AdWords constitute information society services. He adds that service providers seeking to benefit from a liability exemption under the E-Commerce Directive should remain neutral as regards the information they carry or host.

However, whilst the search engine is a neutral information vehicle applying objective criteria in order to generate the most relevant sites to the keywords entered, that is not the case with Adwords where Google has a direct pecuniary interest in internet users clicking on the ads' links.

Accordingly, the liability exemption for hosts provided for in the E-Commerce Directive should not apply to the content featured in AdWords".
The IPKat notes the Opinion's tone, which is certainly out of step with the prevalent view of the brand-owning and wealth-creating industries which, struggling to emerge from the economic recession, have been praying for some relief from the death-by-a-thousand-pinpricks which they view AdWords as inflicting on them. Merpel adds, brand owners will certainly take heart from the notion that the internet service provider that is not a mere conduit but sells AdWords has a "pecuniary interest" in it, since this has been a hotly-contested issue in some national litigation. However, it is not known whether the ECJ will agree when it gives its decision (which the Kat expects some time early next year).

Report on the ECJ's hearing here
Press release on today's Opinion here
Early reports on the Advocate General's Opinion by Stephanie Bodoni (Bloomberg) here, from The Financial Times/Reuters here and The Wall Street Journal here
Google AdWords service. What Google says here; what Wikipedia records here
AdWords sucks here
AdWords, parked domains and fraud allegations here

Monday, 21 September 2009

Be circumspect about your salami

Back in May, as readers of this weblog will surely remember, Advocate General Eleanor Sharpston QC gave her Opinion to the Court of Justice of the European Communities in Case C‑446/07 Alberto Severi, in his own name and representing Cavazzuti e figli SpA, now known as Grandi Salumifici Italiani SpA v Regione Emilia-Romagna, a reference for a preliminary ruling from the Tribunale Civile di Modena, Italy. Well, earlier this month -- on 10 September -- the Court gave its ruling here.

Right: Salame Felino, straight from the Museo del Cibo website

To recap: Felino is a small town in the Emilia-Romagna region of Italy. Cavazzuti (now Grandi Salumifici Italiani SpA -- GSI for short) makes local salami sausages which it sells as ‘Salame Felino’ and/or ‘Salame tipo Felino’ [Feline salami? Salami fit for a Kat?]. Since 1970 it made this salami around 50 km down the road in nearby Modena. In May 2006 the region of Emilia-Romagna imposed an administrative penalty on GSI for using the name ‘Salame tipo Felino’ on its labelling in a way that was misleading to consumers. The region took the view that GSI infringed Article 2 of Legislative Decree 109/92, which transposed Article 2 of Directive 2000/13 into national law in Italy [essentially: thou shalt not mislead consumers by mislabelling goods]. At the operative time, the term ‘Salame Felino’ was neither registered as a Protected Designation of Origin (PDO) nor as a Protected Geographical Indication (PGI). An application had however been made to protect ‘Salame Felino’ as a PGI.

GSI applied to the Tribunale Civile di Modena to have the administrative penalty overturned on the grounds that ‘Salame Felino’ was generic and had been used for a number of years and in good faith outside the municipality of Felino, including in respect of a collective trade mark. The Tribunale Civile stayed the proceedings and referred the following questions to the Court of Justice:
‘1. Must Articles 3(1) and 13(3) of Regulation ... 2081/92 (now Articles 3(1) and 13(2) of Regulation ... 510/06), read with Article 2 of Legislative Decree 109/92 (Article 2 of Directive 2000/13/EC), be interpreted as meaning that the name of a food product containing geographical references, for which, at national level, the submission of an application to the Commission for registration as a protected designation of origin (PDO) or a protected geographical indication (PGI) within the meaning of those regulations has been “rejected” or blocked, must be considered generic at least throughout the period for which such “rejection” or blocking remains effective?

2. Must [the same provisions] be interpreted as meaning that the name of a food product which is evocative of a place, but not registered as a PDO or PGI within the meaning of those regulations, may be legitimately used in the European market by producers who have used it in good faith and uninterruptedly for a considerable period before the entry into force of Regulation ... 2081/92 (now Regulation ... 510/06) and in the period following the entry into force of that regulation?

3. Must Article 15(2) of the First Council Directive 89/104 ... to approximate the laws of the Member States relating to trade marks be interpreted as meaning that the proprietor of a collective mark for a food product containing a geographical reference is not allowed to prevent producers of a product having the same characteristics from using to describe it a name similar to that contained in the collective mark, where those producers have used that name in good faith and uninterruptedly over a period of time considerably pre-dating the registration of that collective mark?’
Now we have our answer. Said the Court, in its inimitable fashion:
"1. Articles 3(1) and 13(3) ... must be interpreted as meaning that the designation of a foodstuff containing geographical references, which has been the subject of an application for registration as a protected designation of origin or a protected geographical indication within the meaning of Regulation No 2081/92, as amended by Regulation No 2796/2000, cannot be regarded as generic pending the possible forwarding of the application for registration to the Commission of the European Communities by the national authorities. A designation cannot be presumed to be generic, within the meaning of Regulation No 2081/92, as amended ..., for as long as the Commission has not taken a decision on the application for registration of the designation, as the case may be, by rejecting it on the specific ground that that designation has become generic.

2. Articles 3(1) and 13(3) ... must be interpreted as meaning that the designation of a foodstuff containing geographical references, which is not registered as a protected designation of origin or a protected geographical indication, may legitimately be used, on condition that the labelling of the product so named does not mislead the average reasonably well informed, observant and circumspect consumer. For the purpose of assessing whether that is the case, national courts may have regard to the length of time during which the name has been used. By contrast, any good faith on the part of the manufacturer or retailer is irrelevant in that regard".
The Court agreed with AG Sharpston that the third question was inadmissable: at para. 68 it said:
"... the question whether the proprietor of a collective trade mark relating to a foodstuff and containing a geographical reference identical to the designation at issue in the main proceedings may oppose the use of that designation is manifestly irrelevant to the resolution of the dispute in the main proceedings and must for that reason be declared inadmissible".
The result, the IPKat considers, is quite cheerful for purveyors of the contentious sausage. While the Salame Felino cannot be deemed generic, or indeed anything else, until the Commission have sniffed it and passed judgment, Severi and his merry men can carry on selling it so long as "the average reasonably well informed, observant and circumspect consumer" is not misled by its appellation ['Misled' here is an interesting concept, says Merpel. Most local Italians won't be misled because they are circumspect about their salamis; most non-locals aren't materially misled unless they assume that salami from Felino and Modena respectively are different entities].

Salame Felino here; Felino here; Fellini here; Fellaini here. Confused yet?

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