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).

Sunday, 31 December 2006


An away win for England

The International Herald Tribune reports that the Beijing's No. 1 Intermediate People's Court has upheld a decision protecting the England three-lions trade mark. The mark was registered in 2001, although not before a dispute with the Xiangshi Celebration Service Company (the defendant in this case), which applied to register its own three-lions logo.

The IPKat is frankly baffled as to why anyone would want to emulate the England football team.

Protection for patent licensees reports that the Japanese Ministry of Economy, Trade and Industry is proposing measures to protect licensees of patents where the owners of the patents merge or go bankrupt. While such licensees are currently protected in principle, in practice the licences need to be registered through a cumbersome process which is little-used. The new regime would seek to improve this by removing the requirement that the individual patents be disclosed. Instead, it would be sufficient to register the blanket contract.

The IPKat welcomes protection for users of blanket licences

The IPKat is in favour of any step that reduces inconvenience for licensees in circumstances that are beyond their control and further notes that, if the licenses are economically efficient, the ultimate beneficiaries of their continued existence will be consumers.

Welcome to the EU

The IPKat welcomes Bulgaria and Romania into the EU, as of midnight.

The good news for IP owners is a wider geographical scope of Community trade marks and Community designs (and the Community patent, if it ever happens, adds Merpel wickedly).

Congratulations, Ron and Tibor

The IPKat is delighted to offer his congratulations to two of his friends who have done so much to improve the IP environment in the United Kingdom and indeed beyond it, and whose achievements have been recognised in the British 2007 New Years Honours List. They are

Ron Marchant, who has become a CB (Companion of the Order of the Bath). Ron has been Chief Executive of the UK Patents Office since January 2004, having worked his way up from being a humble patent examiner in 1969. In 2003 he ensured that The Patent Office was the first in the world to receive ISO 9001:2000 certification for the quality management of its pre-grant patent processing. Among Ron's other achievements is the relocation of the patent examining staff from London to South Wales in 1991. Well done, Ron, especially since you didn't have to retire first ...

Tibor Gold, who is now an MBE (Member of the Order of the British Empire). Tibor's many achievements are so well noted that the IPKat does not propose to list them here (you can read them here, though). Suffice it to say that - whether as a patent attorney, a trade mark attorney, an editor or as a leader - he has always given his best. More to the point, he has always made a point of going out of his way to help others, even if it means doing so in his own time and at the expense of his own preferred agenda.

The print in the New Years Honours List is small and the Kat's version of speed-reading is not hugely accurate. Accordingly, if any readers of the Honours List detect any names of IP worthies that he has missed, will they please let him know as soon as possible by emailing him here.

Friday, 29 December 2006

Something for the last weekend of 2007

As the end of the calendar year draws nigh, the IPKat team will be celebrating its demise in the same manner in which kats all round the world celebrate major milestones in their lives. But for those of you whose enhanced consciousness demands greater stimulus, this blog can provide you with some appropriately IP-flavoured food for thought.

Cliff Richard petition. The IPKat's friend Stine recently asked for helpful suggestions as to where to find Sir Cliff Richard's petition to the European Commission for an extension of copyright term.

Left: helpful training for anyone planning to use the EUROPA website

Another of his friends, Dr Catherine Seville (Director of Studies in Law, Newnham College, Cambridge - and a notable copyright enthusiast) writes:

"Your friend can find Sir Cliff's musings here. If that link doesn't work, then just go to the consultation website and you'll find it quite easily".
Catherine adds (and the IPKat sympathises):

"I have no idea how anyone finds anything on the EUROPA website unless
they actually know it's there, though".
The IPKat thanks Jan Eastaugh (Ottawa, Canada), who also sent a link to the consultation website.

A Whiter Shade of Pale. The IPKat's gratitude goes to Peter Groves (Bircham Dyson Bell), who has spotted that the recent copyright entitlement litigation over the composition of the music for Procol Harum's mega-hit "A Whiter Shade of Pale" is now available to all on BAILII. The judgment of Mr Justice Blackburne, in favour of Matthew Fisher (right) is apparently a work of sole authorship although there are signs that he has sampled a number of earlier works, including the little-known "Recording Contract", the meaning of which has attracted a great deal of speculative analysis despite rumours that the words, like those of the song itself, were quite devoid of any meaning.

AIPPI Proceedings. The IPKat has just received volume 33 (2006) of the Proceedings of the Hungarian Group of the International Association for the Protection of Intellectual Property (AIPPI). This year's offerings include

* "Veil Dance Around the Patent Secret" by Dr Miklos Bendzsel (President of the Hungarian Patent Office), this being a paean of praise for the role of both patents and secrecy in the "ecology of competition";

Left: unlike humans, patented inventions can lose their secrecy while still maintaining their mystery ... [picture found on]

* Dr Katalin Szamosi and Dr Peter Lukacsi (both of SBG & K Law Office), giving a local perspective on a topic that has exercised all of us in recent years and which will not allow itself to be resolved: the ECJ's position on the registrability of thre-dimensional trade marks;

* Imre Gonda (Head of Section, Hungarian Patent Office) writing on a topic that gets little coverage, certainly in the UK - enforcement of rights in respect of vinicultural products.

Have a lovely weekend!


Markenbusiness reports that Bayerische Brauerbund (the Bavarian brewery association) has won an Italian trade mark dispute against the Netherlands-based Bavarian Brewery. The court found that the use of the designation could deceive consumers into thinking that the beer originated in Bavaria. An appeal is expected.

The IPKat says that this sounds like a sensible decision.

Same old Kat, but some new faces

Same old Kat, but some new faces

Now here's a surprise - the IPKat weblog team is about to grow. The blog was started in June 2003 by Jeremy and Ilanah, who put a huge amount of effort into keeping a good flow of news and comment. However, IP just continues to grow bigger and more complex and the original duo are hard-pressed to keep up with it. For this reason the IPKat is happy to welcome two new bloggers to its team: Johanna Gibson and David Pearce.

Johanna (right) is Reader in Intellectual Property Law at the Queen Mary Intellectual Property Research Institute in the Centre for Commercial Law Studies, Queen Mary University of London. Her background is in law as well as cultural and critical theory and animal sciences. Before moving to academe, she practised Intellectual Property, Communications, Media and Technology at Allens Arthur Robinson (Melbourne, Australia). Much of Jo's research is concerned with IP and socio-economic development. The European Patent Office has consulted her on future patent policy and she has participated in expert forums on copyright, digital rights management, human rights and intellectual property.

Jo's current research project, Patenting Lives, examines socio-economic and cultural aspects of biotech patents, particularly in developing countries. Johanna publishes widely and is the author of two books - Community Resources: Intellectual Property, International Trade and Traditional Knowledge (2005) and Creating Selves: Intellectual Property and the Narration of Culture (2006). The general editor of a new intellectual property series for Ashgate Publishing (Intellectual Property, Theory, Culture), she is a seasoned blogger who already maintains two blogs, Patenting Lives and IPMed.

David (left) read Electronic & Structural Materials Engineering at Exeter College, Oxford, following which he performed research in the Interdisciplinary Research Centre in Materials for High Performance Applications at the University of Birmingham, which led to his PhD in high temperature oxide ceramic composites. Further research at the Centre led to his invention of what became the Helimorph, one of a number of patented inventions that stands to David's credit.

After working with a Cambridge start-up company in the development of his IP, David decided to pursue a career in IP,. He studied for an MSc in the Management of Intellectual Property at Queen Mary University of London, following which he took up employment as a trainee patent attorney with the Nottingham firm of Eric Potter Clarkson. David is no stranger to IP web culture. Apart from having created the ukpatents wiki, he has also contributed comments on the IPKat weblog under his nom de guerre Woodpecker.

The IPKat hopes that the enlargement of the blogging team will make it easier to keep a good flow of information and comment coming through and strengthen the blog's patent content. Enjoy!

Thursday, 28 December 2006

European Commission makes sweeping changes; Latest MIP

European Commission makes sweeping changes

It is with a mixed bag of emotions that the IPKat views the codification by the European Commission of the rag-tag provisions of some of its oft-amended directives. We now have

* Directive 2006/114 of 12 December 2006 concerning misleading and comparative advertising (codified version) - in force from 12 December 2007

* Directive 2006/115 of 12 December 2006 on rental right and lending right and on certain rights related to copyright in the field of intellectual property - in force from 16 January 2007 (ie 20 days from the date of its publication of the Official Journal)

* Directive 2006/116 of the European Parliament and of the Council of 12 December 2006 on the term of protection of copyright and certain related rights (codified version) - in force from 16 January 2007 (ie 20 days from the date of its publication of the Official Journal)
These provisions are clearer and easier to use than their uncodified forebears. Who has not been infuriated by the previous need to make mention of
"Council Directive 84/450/EEC of 10 September 1984 concerning misleading and comparative advertising, as amended by Directive 97/55/EC of the European Parliament and of the Council of 6 October 1997"?
On the other hand, we now have to learn a new set of citations and remember what they have replaced when we read the old cases that interpreted them. Fortunately, though, Directive 2006/114 comes with a concordance of Articles in the repealed Directives and their new names in the codifying Directive.

Left: the IPKat, who has had many a brush with the law, contemplate making some sweeping changes of his own

Merpel says, any inconvenience caused here is nothing to the codification that you're going to have to learn to live with once the byzantine section numbering of the much-amended Copyright, Designs and Patents Act 1988 finally gets sorted out.

Latest MIP

The IPKat's seasonal break has given him a chance to catch up on his reading and, in particular, to leaf through the December 2006/January 2007 issue of Euromoney's ten-times-a-year journal Managing Intellectual Property. It carries an in-house feature from Emma Barraclough, "Why a slim portfolio is a healthy portfolio", on cutting costs by getting rid of superfluous IP rights. Next month, the IPKat guesses, there will be an article on the theme of "Why a fat portfolio is a healthy portfolio", on how important it is for a business to build up a stock of unnecessary and probably spurious IP rights so that it can license them to fellow members of the same officially-sanctioned patent pool (Merpel says, stop being so cynical - that's my job).
Take a look also at editor James Nurton's succinct review of the Gowers Review - the first in print from any of the serious IP periodicals.

Wednesday, 27 December 2006


The IPKat has made only brief reference to the Sainsbury Review of Science and Innovation, which was announced by the Treasury on 27 November 2006 (black mark for tardiness IPKat). The Chancellor has asked Lord Sainsbury to carry out a review of science and innovation policies across government. The review will cover certain aspects of patent law, as the terms of reference point out. They state, inter alia, that Lord Sainsbury will consider ‘Patents, Measurement System and Standards’. He will report to Mr Brown and the Secretaries of State for Trade and Industry and Education and Skills, in time for the Comprehensive Spending Review in summer 2007.

Lord Sainsbury, looking fiercely independent

Call the IPKat a cynic, but he’s not convinced by the idea of an ‘independent’ review carried out by the man who, until 17 days before the review was launched, was the minister with responsibility for precisely this area. Hm, adds Merpel. Another super-speedy review with implications for IP. This one has an even quicker turnaround time than the Gowers Review.

Tuesday, 26 December 2006


Forbes reports that China is considering signing up to the WIPO Internet Treaties (the WPPT and the WCT). Long Xinmin, the director of the Chinese National Copyright Administration has said that China essentially already complies with the basic requirements of the two treaties. No date has been given yet, but the Chinese legislature meets in March.

The IPKat says that this is fine in theory, but in the real world, China has difficulty enforcing its ‘standard’ copyright law, so how it will enforce these new obligations the IPKat isn’t sure.

Monday, 25 December 2006

Season's greetings

Season's greetings

The IPKat and Merpel take this opportunity to wish you all a pleasant and restful seasonal break and a happy and prosperous New Year's feeding season.

Right: inspirational picture from, which reminds us to look after homeless cats this winter

Check out nearly 4,000 Christmas-related patents on esp@cenet here
Intellectual property and Christmas Island here
Who invented Christmas? here
Who invented Christmas tree decorations? here
"I'm dreaming of a White Christmas" here (unbelievably, cover versions of this song - reputed to be the best-selling single of all time - include The Beach Boys, Elvis Presley, Chicago, Lawnmower Deth and Twisted Sister).

Sunday, 24 December 2006


OHIM has highlighted the changes made in the field of Community trade marks and registered Community designs to facilitate the accession of Bulgaria and Romania to the EU on 1 January 2007.

These are:

*the availability of CTM and RCD application forms in Bulgarian and Romanian;
*changes to other forms with regard to languages;
*the OHIM vademecum (otherwise known as bulletin) will be available in the two new languages;
*so will the headings of the Nice Agreement;
*there are also various changes to some of the OHIM webpages.

The IPKat says that, if you intend to trade in Bulgaria or Romania, the CTM and RCD will now be even better value.

Friday, 22 December 2006

Weekend Wonders

Women as patentees. Patently-O's Dennis Crouch makes some fascinating and statistic-based observations on the paucity of women named as inventors. There has been an oh-so-slow but steady increase, from around 1% (between 1790 and 1895) to 9% in 1996.

Right: "Frankenstein Created Woman" was the title of the film, but (as Merpel notes) woman created Frankenstein ...

Lean time for Ranbaxy down under. If you thought that cholesterol was not an Australian problem, what with all that wonderfully lean kangaroo meat to eat, Duncan Bucknell reports that the worldwide Lipitor litigation has now reached Oz, the first-instance decision on Warner Lambert's patent having gone against ambitious generic manufacturer Ranbaxy. Fight cholesterol - eat a kangaroo here and here.

Cliff Richard petitions. The IPKat's friend Stine wonders if anyone has any idea of where she can find the petition that Cliff Richard and his friends sent to the European Commission on the duration of copyright in sound recordings. She had heard that the petition was not yet "official" and that only parts of it has been published. She also wonder whether this petition is the same one as that sent to the team working on the Gowers Review.

Right: Sir Cliff, no stranger to public relations activities, with a Town Crier

If you can help Stine, please post a comment below or email the IPKat here. If you think Sir Cliff Richard should renounce his knighthood for voluntarily attempting to hoodwink the public by seeking an extension of copyright term for sound recordings and performances, click here.

Whatever happened to Galileo? Not the astronomer, the legal case. Back in May 2006 Galileo International Technology LLC and 13 of its corporate brothers sued the European Commission for stealing its name and using it for its satellite radio navigation system project. In in Case T-279/03 the Court of First Instance dismissed the action and Galileo has since appealed to the European Court of Justice in what is now Case C-325/06 PP.

Left: Galileo, annoyed at the theft of his name, now wants to be known as SatNav

The IPKat is really annoyed that no official English translation of the CFI ruling has appeared on the Curia website and wonders if anyone has a copy he can feast on? And can anyone explain why translations have been made available in Latvian, Lithuanian, Slovak and Slovene, but not in the most frequently-used and understood language in intellectual property circles? Is the Court trying to cover something up?


Reuters reports that HRH the Prince of Wales has successfully defended an appeal in the Court of Appeal against a ruling concerning confidential information contained in his diaries. The Mail on Sunday published excerpts from his diary entitled “The Handover of Hong Kong" or "The Great Chinese Takeaway," which he wrote while on a trip to Asia that coincided with the handover of Hong Kong to the Chinese. The Lord Chief Justice said that the case, based on breach of confidence and copyright, was ‘overwhelming’ and dismissed a claim that the publication was in the public interest.

Who are you calling an appalling old waxwork?

The IPKat often wonders why those in positions of influence commit some of their more colourful thoughts to paper, when it puts them in such a potentially vulnerable position.

Latest Trademark World; Phil(l)ips rides again

Latest Trademark World

The IPKat has been browsing through the offerings contained in the December 2006/January 2007 issue of that handsome near-monthly from Informa, Trademark World. And what did he find there? Georgina Hey (Freehills, Sydney) writes on the recent Australian Woolworths v BP dispute over a particularly unappealing shade of green (blogged here, via Duncan Bucknell); the IPKat's friend Thomas Hays (confusingly similar to Hey, don't you think?) explains the limitations of the allegedly pro-parfumier ruling against smell-alike scents in L'Oreal v Bellure (see blogs here and here), and there is even a delicious photo of a bunch trade mark enthusiasts enjoying themselves at the roulette table (surely not with their clients' money, speculates Merpel ...)

Full contents and details of Trademark World here

More on LG Philips v Tatung

A couple of things, in fact, arising from the IPKat's post on the recent Court of Appeal decision in LG Philips v Tatung on "intermediate generalisation". First, neither IPKat bloggie Jeremy [Phillips] nor the Lord Chief Justice [Lord Phillips, left - who presided over this decision], is related to the doubly unsuccessful claimant in this case. Readers with sharp eyes and an acute sense of spelling will already have noticed that the litigant has but one "l" while the two jurists each have two "l"s.

More seriously, a deeply respected but regrettably anonymous friend of the IPKat notes (with emphasis added):

"The EPO concept of an intermediate generalisation constituting added subject matter was confirmed. Accordingly, a claim amendment introducing an isolated feature from the description or the figures (as in this case) without the other features of the described embodiment is considered to be a non-allowable amendment.

Para. 41: To "extract a feature (which was neither remarked on in the specification nor of significance to the person skilled in the art) of one of the preferred embodiments of the invention and insert it into a claim, while ignoring the other features of that embodiment" is not permitted.

Para 42: Again, the UK courts seem to accept subservience to the EPO Enlarged Board: "The Enlarged Board has developed the law on added matter in ways which can be said to involve superimposing a degree of policy over what had been perceived by the English courts as a relatively pure issue of principle".
Strong words, says the IPKat—who wonders whether any of his readers has a handy means of distinguishing a policy from a principle.

Thursday, 21 December 2006

Intermediate generalisation" strikes again; Latest ECC

"Intermediate generalisation" strikes again

The decision in LG Philips LCD Co Ltd v Tatung (UK) Ltd, Viewsonic Europe Ltd and Number One Services Ltd [2006] EWCA Civ 1774, a Court of Appeal decision of Lord Phillips LCJ and Lords Justices Neuberger and Leveson LJ, was posted on BAILII this morning. It's one of those cases that makes the IPKat wonder "where was I when the trial decision was handed down?", since he has no recollection of it happening at all.

This was LG's appeal against the decision of the IPKat's great friend Judge Michael Fysh QC in the Patents County Court that not only did Tatung and the other defendants not infringe its patent but that, even if they had done, the patent was invalid anyway.

LG's patent, entitled "Portable computer", was for a way of mounting flat panel liquid crystal display devices into housings, the combination being subsequently incorporated into portable computers and display monitors. According to LG, Tatung's closed circuit television monitor infringed this patent. Tatung counterclaimed for revocation on the grounds of anticipation, obviousness and insufficiency. At this point LG sought unsuccessfully to amend its patent, it being considered that both proposed amendments constituted forbidden added matter and that the second was in any event too unclear.

At trial, LG conceded that it was a loser if the patent couldn't be amended. Judge Fysh QC found the patent was invalid for lack of inventive step and added that, even if the amendments were allowed, Tatung still wasn't infringing it. LG appealed on the basis that the patent was not void for want of inventive step and that the court was wrong to refuse the amendments.

The Court of Appeal dismissed the appeal. In its view

* The fact that a word, phrase or other part of a patent claim was not wholly clear would not automatically mean that the claim was objectionable, since that would set a far too high and unrealistic standard for any sort of drafting (especially for patents).

* A claim should be as clear as the subject matter reasonably allowed it to be and, in this case, the second amendment was clear enough.

* In the Patents Act 1977 s.76(1) "additional matter" was defined as "matter extending beyond that disclosed" by the patent in its original form. To pick out an apparently insignificant feature of one of the preferred embodiments of the invention and stick it into a claim, while ignoring the other features of that embodiment, would not be allowed - and that was what the second proposed amendment sought to do.

* Since the first proposed amendment added a new feature that was not mentioned anywhere in the specification of the patent, attaching a new practical and inventive importance to the feature it described, Judge Fysh QC was right to disallow it.

* There was no infringement even if the patent were amended, and the patent was definitely obvious.
The IPKat notes that the Court was assisted by Pumfrey J's analysis in re Palmaz's European Patents (UK) [1999] RPC 47, where he describes the process of taking a feature of a preferred embodiment which lacks inventive content and then inserting it into a claim as "intermediate generalisation". The Kat thinks that's a cool term and he really looks forward to using it at the next Winterval office party he attends. Merpel says, LCD patents can easily cause grief: there loads of them, each representing a different strand of incremental change in a mature technology, and they presumably have to go for narrow claims in order to get accepted in the first place.

Latest ECC

Sweet & Maxwell's European Commercial Cases for 2006 is now before the IPKat. There are only two cases in this issue [actually three - I counted them again ...] but one of them is a cracker - the fairly detailed analysis by Sir Andrew Morritt (the Chancellor) of the IP/competition merits of the remarkable first stages of Adidas' litigation against the tennis authorities in respect of their arguably anticompetitive and definitely naughty attempt to force the three-stripers to limit the area on items of tennis clothing that their famous motif might legitimately occupy.

The other case in this issue was promisingly enough about the powers of a CAT, but this CAT was not the feline variety - it was the acronym of the Competition Appeal Tribunal. [The third case, from Germany, dealt with the protection of a database of music hits].

Wednesday, 20 December 2006

Court of Appeal sides with Mr Micawber; Latest Patent World

Court of Appeal sides with Mr Micawber

The Court of Appeal today in Roche Products Ltd v Kent Pharmaceuticals Ltd [2006] EWCA Civ 1775 (noted here on BAILII) affirmed the decision of Mr Justice Lewison that the placing of a "CE" mark on goods, to indicate that they conform with European manufacturing standards, is not evidence of the unequivocal consent of their maker to the resale of those goods in the European Union.

In his earlier post on the trial decision (read it here) the IPKat said

"... Lewison J has got it right again. The presence of the CE mark on the products might well be a necessary condition for the marketing of those products, but the fulfilment of a necessary condition is not the same thing as the giving of implied consent to marketing in the EEA".
The three-man Court of Appeal (Lords Justices Ward, Neuberger and Moore-Bick) agrees. At paragraphs 39 et seq the court - for whom Neuberger LJ delivered the judgment - got to the heart of the appeal, though:
"It was argued on behalf of Kent that this conclusion is inconsistent with the view reached by this court in Glaxo Group Limited v Dowelhurst Ltd [2005] ETMR 104 ... The argument which was held to be fit to go to trial on the part of the defendant in that case was that an EMEA licence number (which has to all intents and purposes the same effect as the CE mark in the present case) on the packaging of the products in question operated as a sufficient consent ... to the placing of those products on the market in the EU.

... it seems to me that there are two points of distinction between that case and the present.

First, in the Glaxo case, as Jacob LJ put it in paragraph 31, at the "heart" of the defences he was there considering "lies the fact that for all the world the products looked like those on the French home market". In other words, unlike in the present case, the packaging between the product which was intended to be put on the market outside the EU was identical to the packaging of the product which was intended for marketing in the EU. In those circumstances, as pointed out by Moore-Bick LJ in argument, it appears that it was the EMEA mark, taken together with this identicality of packaging, which was sufficient to give rise to an arguable case that products with the former packaging had been the subject of an appropriate consent ...

Secondly, ... at least on the basis of what was said in Jacob LJ's judgment, it does not appear that the arguments advanced on behalf of the unsuccessful claimant in the Glaxo case, as to why the placing of the EMEA licence number on the packaging of the goods in question could not be treated as operating as a consent ... were the same as the arguments advanced by ... Roche in the present case ...".
The court then described the defendant's argument that summary judgment should not be given against it since there was a chance that it might unearth some evidence that showed that people would the presence of a CE mark as indicating consent to sell within the EU as "Micawberism". The IPKat thinks this is right: the whole point of giving summary judgment is to protect IP owners' dreams of protecting their investment against infringers' dreams of stealing it.

Mr Micawber here
Excellent book all about the CE mark by David Hanson here

Latest Patent World

The December 2006/January 2007 issue of Informa's almost-monthly Patent World has now reached the IPKat. The cover story, by talented Allen & Overy triumvirate Nicola Dagg, Philip Mansfield and Mark Ridgeway, is all about the interplay between patent law (which creates monopolies), competition law (which neuters them, if you're unlucky) and technical standards (which force monopolies open by decreeing them essential for everyone to use). Klaas Bisschop and Ruud van der Velden (Lovells) write about a recent Dutch case in which, despite the ECJ's pronouncements in GAT/LuK and Roche/Primus, cross-border relief was still granted [IPKat note: you can get a short version of this, by Klaas, from this month's excellent Lovells IP Newsletter]. There's also a fairly serious piece by Taylor Wessing's Gary Moss and Benjamin Grzimek contrasting BlackBerry patent litigation in various bits of Europe.

Full details of this issue here

White shade, Blackburne; Name that duck

White shade, Blackburne

Peter Groves was first with the BBC news this time, tipping the IPKat off that Matthew Fisher (right), a founding member of 1960s rock group Procol Harum, has won his claim to co-authorship of the group's hit song "A Whiter Shade of Pale". Music expert turned lawyer Mr Justice Blackburne, whose judgment has not yet reached BAILII, ruled he was entitled to 40% of the copyright royalties.

This may seem a pyrrhic victory. First, Fisher wanted half the rights, but the court ruled lead singer Gary Brooker's contribution was more substantial. Secondly his claim for back royalties of up to £1m was dismissed. Thirdly he faces paying a large part of the legal costs, estimated by the BBC report at around £500,000.

Left: Fishers' lawyers singing for their fees ...?

The IPKat says, what happens now is that Fisher and his colleagues sell the right to the movie based on the trial ("A Whiter Shade") and milk the sales of soundtrack and souvenirs to aged fans and groupies for all they're worth. Merpel adds, once sales start tailing off, launch an appeal. Then they can sell the right to the movie sequel ("A Whiter Shade II"), do the whole thing again and hope the dispute gets referred to the European Court of Justice ...

See earlier IPKat post here

Name that duck

Bidding for the right to name Isabel Davies' rubber duck (see earlier IPKat post here) remained at £105. Naming rights have been acquired by Dids McDonald on behalf of ACID (Anti Copying in Design), an organisation that campaigns vigorously for its members and which must have felt quite keenly the lack of attention that the Gowers Review gave to designers and their means of securing protection.

The duck has suffered the indignity of having the autograph of IP celebrity Andrew Gowers scrawled across its bottom. Will Dids come up with something to save its feelings? All will be revealed ...

The IPKat, who likes to play with his duck in the bath, was horrified to get over 12,000 hits when he G**gled 'duck' and 'acid bath' ...
All proceeds to to the Intellectual Property Institute, our nominated charity for all duck-related activities.

Notification, not examination: the next step; Golden opportunity

Notification, not examination: the next step

Now that it has decided to scrap the examination of trade marks on relative grounds (see the IPKat's earlier post here), the UK Patent Office wants to hear from businesses about the legal regime that will bring this about. Under the new regime, the Patent Office is moving to a notification system under which both the trade mark applicant and the owner of any earlier possibly conflicting marks will be told of each other's existence. The consultation document can be accessed here and you have till 12 March 2007 to make your comments.

Right: Small and Medium-Sized Enterprises (SMEs), as viewed by the UK government

The IPKat says, it's nice of the Patent Office to seek the view of businesses - which is all very politically correct in terms of being nice to small furry SMEs and all that. But it's really the opinion of their specialist legal representatives that's going to count, since it is they who will be manipulating the system on behalf of the small furry SMEs that everyone wants to be nice to.

Left: Small/Medium-Sized Enterprise as viewed by another SME that's competing with it

Merpel agrees and adds, "I can't wait to see what happens when the first action is brought against the Patent Office for failing to notify an earlier mark which it didn't consider relevant but which a competitor (or a court that agrees with him) did".

Golden opportunity

The IPKat's friend Laurence Kaye (Laurence Kaye, Solicitors) informs him of a position available for the right Paralegal or Legal Assistant. It's a golden opportunity to work - for pay at the market rate - for one of UK’s leading lawyers in the media/online/e-commerce field (check out the firm's website for legal focus, clients, ethos etc). The firm is based in leafy Radlett, Herts, with opportunities for remote and home-based work.

Above, right: payment on the usual scale ...; below, left: Radlett's busy commercial hub

The principal duties are (i) legal research, (ii) contract drafting and reviewing, (iii) research and writing of the firm's newsletter and (iv) attending and preparing notes of meetings. To do this you need (i) excellent written and oral skills, (ii) knowledge of IP law, (iii) IT skills (Word, Powerpoint and, ideally, Excel) plus internet literacy and (iv) attention to detail.

If you're interested, email Laurie with your CV and a covering letter of application to explain your interest in the role and what you would like to gain from it. Deadline: 26 January 2007.

Tuesday, 19 December 2006


The IPKat learns from Andrew Fuller that the Australian Full Federal Court yesterday confirmed a finding of infringement by authorising copyright infringement against the owners of a file-sharing website,, an ISP and their respective directors.

The court found that

"Mr Cooper [the director of MP3s4FREE] had power to prevent the communication of copyright sound recordings to the public in Australia via his website…. He had that power because he was responsible for creating and maintaining his MP3s4FREE website….It was not reasonably open to Mr Cooper to claim mere indifference to the use internet users made of the website”.
“E-Talk [the ISP] countenanced the infringing downloading by internet users who visited the website that it hosted.”
Likewise, the ISP’s director had failed to take reasonable steps to prevent the infringement.

The IPKat is a little worried by this decision – is it imputing to ISPs knowledge of everything on the websites that they host? If so, it place a policing burden on ISPs, and therefore have a chilling effect on the internet.

Trade mark dilution - changes and lessons; New Law Lord

Trade mark dilution - changes and lessons

The Intellectual Property Institute is holding a seminar on Thursday 18 January 2007 on the subject "Trade mark dilution: Changes in the US - Lessons for Europe?" The speaker is IPKat co-blogmeister Dr Ilanah Simon and IPI's Paul Leonard is in the chair.

This event is hosted by CPA Management Systems in their most attractive venue at 1 Oliver's Yard, London EC1Y 1DT. The event begins at 5pm and is followed by refreshments. If you'd like to come, let the Institute know by emailing the Administrator, Anne Goldstein, here.

Trademark Dilution Revision Act 2006 (US) here

New Law Lord

Lord Justice Neuberger (Sir David Neuberger) has been elevated from the Court of Appeal for England and Wales to the House of Lords.

The IPKat congratulates his Lordship, who was at one time a judge in the Patents Court. His dissenting judgment in Coflexip SA v Stolt Offshore MS Ltd [2004] EWCA Civ 213 (reported here on BAILII) is the most powerful and persuasive dissent the IPKat can recall reading.

Monday, 18 December 2006

Fire helmets: Moses lays down the law; Teeth continue to bite the dust

Fire helmets: Moses lays down the law

The Court of Appeal for England and Wales, in a decision given last Friday by Lord Justice Moses on behalf of the Court (which also included May and Lloyd LJJ), has held that an employee was not in breach of any fiduciary obligation to his ex-employer by setting up a competitor: his own preparatory activity could not be described as competitive activity in the context of his employment and his employer had not restricted his freedom to prepare for future competition on his departure. This ruling is in Helmet Integrated Systems Ltd v Mitchell Tunnard and others [2006] EWCA Civ 1735, reported here on BAILII.

Helmet made and sold protective equipment, including a popular fire fighters' helmet. Tunnard, a senior salesman for Helmet, was required to advise Helmet on the activities and prices of its competitors. In the period leading up to his resignation, Tunnard started developing the idea of a protective helmet which he believed Helmet would not be interested in making. He had drawings prepared and received finance through an award scheme. After leaving Helmet, Tunnard set up a company in which one of Helmet's competitors took a major shareholding.

Helmet, none too pleased about all this, alleged that Tunnard had (i) breached his duty of fidelity by developing a safety helmet that competed with its own and (ii) breached his fiduciary duties in failing to report his activities while still employed by Helmet. The trial judge rejected these claims, concluding that Tunnard's actions were no more than preparatory to competitive activity. Helmet appealed, arguing that the judge had failed to spot the fiduciary duty owed by Tunnard or to notice that both that duty and his duty of fidelity had been breached. According to Helmet, Tunnard was obliged to advise on competitors' activity and that, since Helmet depended upon the unsupervised fulfilment of Tunnard's obligation, Tunnard owed a duty as a fiduciary.

The Court of Appeal dismissed Helmet's appeal. In its view

* The duty of good faith and loyalty owed by every employee should not be confused with a fiduciary obligation.

* Since Tunnard's activities would have amounted to competitive activity if they were done by a competitor, he owed an obligation as a fiduciary not to misuse information about such activity for his own benefit or for the benefit of someone other than Helmet.

* It did not however follow from this that he was under any obligation, fiduciary or otherwise, to tell Helmet about his own activities: the words of his job specification did not restrict his freedom to prepare for competition on leaving and he was under no relevant fiduciary obligation to Helmet.

Right: the IPKat found this little gem on

* When he started work for Helmet, Tunnard was entitled to believe that he could, subject to his obligations as to notice, leave when he wanted and work in competition with Helmet. He was entitled to take preparatory steps before leaving, in order to assess the viability of any potential competitive activity.

* Clear words are needed if an employer is to restrict the ordinary freedom of an employee who considers quitting his employment and setting up in competition with his former employer.

* Tunnard owed no fiduciary obligations in relation to the development of a preliminary concept for a new helmet and was not in any event in breach of any such obligation by seeking to raise funds for such a project while still in employment.

The IPKat notes that Helmet did not appear to press any argument based on the misuse by Tunnard of any confidential information or privileged access to commercial or technical data. This being so, it was forced to rely on a duty of fidelity and a fiduciary duty - both being duties that the Courts appear unwilling to find to exist where (i) the party relying on them had the opportunity to stipulate its requirements in writing but failed to do so and (ii) enforcement of such a duty would be tantamount to a bar on competition or a restraint of trade. Merpel says, although this looks like a case where prudent drafting would have protected the ex-employer, it's also an instance where prudent drafting would have helped the ex-employee too - it's a classical situation in which the aggrieved former employer will sue even though the outcome is uncertain-to-poor, if only to deter other employees from doing the same thing.

Teeth continue to bite the dust

Also available on BAILII is the Court of Appeal's most recent decision in the long-running saga of Halliburton Energy Services Inc v Smith International (North Sea) Inc and others [2006] EWCA Civ 1715 (before Lords Justices Chadwick, Rix and Jacob, judgment delivered last Friday, 15 December). Thanks, Simon Haslam (Abel & Imray), spotting it.

This was Halliburton's appeal against the decision of Pumfrey J (here , noted by the IPKat here), that its patent for rotary cone drill bits was invalid for insufficiency. This patent, which concerned force balancing, was addressed to persons who wanted both to design and use simulation systems for drill bit design. The patent used a "rock bit computer model" in order to calculate the dynamics of a rotating bit. Halliburton's patent included claims for a method of designing a roller cone bit, calculating the axial forces acting on the bit and adjusting the design until the same axial force acted on each cutting structure when the bit was in operation, as well as for a drill bit in which the axial forces were so balanced. According to Pumfrey J the patent was void for insufficiency because the claims in effect required the addressee to go to the great effort of developing a computer model to carry out the claimed method. The background to the patent's specification mentioned a paper by one Ma, who had developed computer programs predicting and simulating patterns developed by roller cone bits. According to Halliburton the patent's inventive concept was that the motion of the cones and teeth of the bit should be modelled mathematically, as should the forces acting on the bit and its components, so that downward forces on each cone could be balanced as between the cones, implementation of that idea being essentially a matter of producing a usable computer simulation that, even if only approximate, was sufficiently accurate for practical purposes - or at least not so inaccurate as to be useless.

The Court of Appeal dismissed Halliburton's appeal.
* The person (or in this case the team) skilled in the art would not have enough information to construct a kinematic model of the bit, showing how the various components moved in relation to one other. Simulation of the motion of the cones and the drill bit in such a way that the trajectory of the teeth could be followed would require a vast amount of work in both deriving and calculating the relevant equations. Even though those equations had been published by Ma, this was not part of the prior art and, even if they had been part of the prior art, the amount of work involved in the calculations was massive.

* If what was taught in the patent involved too much work to be reasonable, allowing for all the circumstances including the nature of the art, the patent could not be regarded as an enabling disclosure.
Phew, that's a tough one to blog, says the IPKat, but the principle is sound. His basic rule is this - if it takes longer to work out how to go about putting the patent into effect than it takes to understand what it's about in the first place, it should be void for insufficiency. Merpel says, it's such a nice word, insufficiency, but I just don't seem to find it anywhere in the European Patent Convention ...

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