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).

Friday, 30 January 2009

Friday fripperies

The IPKat's superbly-updated 'Forthcoming Events' feature, which occupies a large slice of space on the left-hand side-bar of this weblog's front page, currently lists 41 conferences, seminars and events for your delectation. FREE events are listed in a cheerful blue.

The IPKat has received a letter from Roger Rapoport of RDR Books. Roger writes:

"You may recall a prediction on your site about the future of the Lexicon by Steve Vander Ark after a trial in New York last year ["... whatever comments the judge made will prove the basis for Vander Ark and his publisher to set to work, pencilling out the excessive bits so that a slimmed down "fair" version of the work can be launched in the wake of the publicity that has attached to the litigation"].

It turned out to be very accurate.

A new book by author Steve Vander Ark, The Lexicon, An Unauthorized Guide to the Harry Potter Novels and Related Materials, has been published this month by RDR Books in the United States and Britain and by Al Terre Editions in Canada.

The 368 page guide to the complete series by J.K. Rowling began with a 40,000 copy first printing and was praised by Kirkus Reviews which said, "Stealing a march on all competitors by treating this wins points for currency, and all but the most obsessive readers will find it unexcelled for ease of use as a quick reference guide." In a prepared statement, Neil Blair, an attorney for author J.K. Rowling said "We are delighted that this matter is finally and favourably resolved and that J.K. Rowling's rights—and indeed the rights of all authors of creative works—have been protected".
Thanks, Roger, for letting us know.  

It's not just in Germany that Google has been having a busy time in court of late. The IPKat is indebted to Isabelle Schuller, who spotted this item in Le Figaro. In short, Google was recently ordered by a French court to pay damages of 410,000 EUR to two travel agencies which argued that they suffered loss of business due to misleading adwords. Every time the words "Terres d'aventure" (literally in English, 'lands of adventure') or "Voyageurs du monde" ('travellers of the world') -- both of which are registered trade marks -- were typed in the search engine, links to the websites of their competitors were displayed. The Court in Paris decided that the commercial damage was only 'marginal' but still made Google pay 200,000 EUR damages to Voyageurs du Monde and 150,000 EUR damages to Terres d'aventure (not to mention 60,000 EUR in legal fees). Google is planning an appeal, arguing that its AdWord service is complying with the law. Thanks, Isabelle!

 Yesterday the IPKat posted a note concerning the recent NERA report on IP infringement damages in China. The bottom line is that they are inadequate for all meaningful purposes but have shown a recent substantial tendency towards an increase. Today the Kat has been asked:
"Do you know if a similar study has ever been made for the damages awarded by the courts in the EU? That could lead to some surprises ..."
No, he doesn't -- but he wonders if any of his readers can advise.

The IPKat has twice posted information on this blog, first in November and subsequently in December, concerning the advertisement of Herbal Viagra in the window of a Central London shop. It's nearly the end of January and, to the Kat's horror, he notices that it's still there. Can it really be that Pfizer is the only credible drug company in the world that doesn't have at least one conscientious employee reading this blog? Meanwhile, one reader whom, the IPKat suspects, is not a Pfizer employee, has sent him this Viagra-inspired illustration on the right.  A little harmless fun? A brilliant viral ad? The revenge of a disgruntled advertising executive? Perhaps we will never know ...

BGH confirms opera 'Motezuma' was published in 1733

In a case concerning a lost composition by Italian composer Antonio Vivaldi, the German Federal Supreme Court (Bundesgerichtshof) this week clarified the circumstances under which a work may be considered as 'not published' under section 71 German Copyright Act, with the consequence that the first publisher of the respective work owns the exploitation rights for the work.

The IPKat has read the Bundesgerichtshof's press release (case reference: I ZR 19/07 - Motezuma of 22 January 2009, the decision is not yet available in its entirety) with interest and has translated and summarised this unusual case below:

The claimant in the proceedings was the Sing-Akademie zu Berlin, who owns an archive of handwritten manuscripts of musical compositions. In 2002, the long lost music sheets of the Vivaldi opera 'Motezuma' were discovered in the Berlin archive. The court established that it was a known fact that the opera 'Motezuma' had had its premiere at the Teatro St Angelo in Venice in 1733, eight years before the famous composer died in 1741. However, while the opera's libretto was still available after the premiere, the music had been considered as lost. After the original handwritten composition was discovered in the Berlin archives, the claimant decided to publish and sell reprints of the original handwritten musical sheets.

The Sing-Akademie was of the view it had full copyright to the opera, contending that it was the first publisher of the first edition ('editio princeps') of this posthumous work and as such should be entitled to the exclusive exploitation rights to this 'posthumous work' under Article 71 German Copyright Act. By way of background information: Article 71 German Copyright Act provides that "...any person who causes a work which has not previously been published to be legally published for the first time or performs it in public for the first time after the expiry of the copyright shall have the exclusive right to exploit it."

In the current case, the Sing-Akademie demanded compensation from the organiser of the Düsseldorf based music festival 'Altstadtherbst' which had performed 'Motezuma' in September 2005 in Düsseldorf without the claimant's consent. The Regional Court Düsseldorf and (on appeal) the Higher Regional Court of Frankfurt both dismissed the Sing -Akademie's claim.

The Federal Supreme Court has now decided that the first publisher of the first edition of a 'posthumous work', who claims to own the exploitation rights to the work, has the burden of proof to show and demonstrate that the work in question had indeed 'not previously been published'. The Federal judges acknowledged that it was rather difficult to prove the non-existence of a fact, particularly because it had be proven that a century old musical work had not previously been published. Taking this into consideration, the court ruled the the claimant was allowed to initially just allege that the work had so far not been published. It was for the defendant to demonstrate evidence to the contrary, i.e. by showing circumstances which supported that the work had indeed been published. According to the court, the claimant could only fulfil its burden of proof if it was able to rebut the evidence brought forward by the defendant, i.e. if it could successfully deny the circumstances shown by the defendant. The IPKat admits that this is not a straightforward case but bear with the Kat... the solution is close.

Applying these principles to the current case, the Bundesgerichtshof decided that the claimant had not sufficiently rebutted that Vivaldi's opera 'Motezuma' had not been published previously. The court referred to Article 6(2) Sentence 1 German Copyright Act, which stipulates that "... a work shall be deemed published if, with the consent of the copyright owner, copies of the work have been produced in sufficient quantity and have been publicly offered for sale or put into circulation. " As such, a work is deemed published, when number of copies published is sufficient to allow the interest public to access the work. In the light of these provisions the court concluded that the opera 'Motezuma' had already been 'published' in 1733.

Expert witness statements by renowned musicologists had further revealed the following historical facts: musical works which had been commissioned by Venetian opera house, such as the opera in question, were usually only staged for one season at the respective opera house. In addition, one copy of the musical score was usually deposited at the respective opera house to allow interested parties, such as foreign kings, to take copies of the music. The Federal judges acknowledged that it could not be proven with complete certainty whether this had been the case with 'Motezuma'. However the court took the view that the claimant had not been able to submit any evidence of different events and, as such, there was a high probability that the work had been published in the sense of Article 6(2) Sentence 1 German Copyright Act, when the music sheets had been handed to the participants of the premiere in 1733 and when a copy of the score had been deposited at the opera house Teatro St Angelo in Venice in 1733. The judges decided that the Venetian opera audience and other interested parties had the chance to access the score and make copies of it in 1733. In the light of the above, the court dismissed the claim.

When hearing about this case, the IPKat's first (rather naive) thought was that this should be an easy case to decide. A work, which was composed and premiered in 1733, should by now surely be out of copyright, no? Alternatively, if there were any existing rights in the work, then they would (perhaps) belong to Vivaldi's estate or the opera house where the work was premiered...? The IPKat is certainly impressed how the court managed to reconcile common sense with the relevant provisions in the German Copyright Act. It all just seems rather complicated.

More information about Antonio Vivaldi can be found here.
More information about Sing-Akademie zu Berlin can be found here.
A night at the cat opera, here.
Information about various Montezumas, can be found here.

Thursday, 29 January 2009

Supernatural Superserious vs Walkmand

On a lighter note: the Copenhagen Post Online today reports of a copyright dispute between Danish pop duo Hej Matematik and American band R.E.M. According to the report Hej Matematik's label (Copenhagen Records) have been accused by R.E.M's label (Warner Music) of more or less blatantly copying R.E.M.'s recent offering 'Supernatural Superserious'. As a consequence Hej Matematik are now blocked from uploading their new song 'Walkmand' to YouTube and MySpace.

The twist to this little story is that the objectionable Danish song 'Walkmand' is a cover version of a 1980s Danish hit by Danish singer Michael Hardinger. Hardinger reportedly approves of Hej Matematik's interpretation. R.E.M.'s song 'Supernatural Superserious' on the other hand appears to first have been released in February 2008. Nicolaj Rasted, one of the members of Hej Matematik, is cited as saying: "We really can't hear the similarity ourselves and if there's any at all, then it would be that 'Walkmand' originated from a sample of Michael Hardinger's 'Walk, Mand!!' from 1981." Hej Matematik's is now reportedly trying to settle the matter with R.E.M. and Warner Music.

The Copenhagen Post further reports that angry Hej Matematik supporters are now flooding YouTube with negative comments. The IPKat has just noticed that busy Hej Matematik fans have already 'amended' the Wikipedia entry for 'Supernatural Superserious' accordingly (see screenshot to the left).

Update: The latest twist in this dispute has again been published by the Copenhagen Post Online today (30 January 2009). In an interview with Danish public broadcaster DR, Mickey Lund, the head of Warner Music Denmark, reportedly explained that neither R.E.M. nor Warner Music had tried to block Hej Matematik's song. Mr Lund also voiced the opinion that the block had been caused by a fault in YouTube's uploading system. Hej Matematik’s song can now again be uploaded to YouTube and the IPKat can't help but wondering whether the whole story may have been a clever little marketing ploy... ?

More on this dispute can be found here (in Norwegian) and here.
'Supernatural Superserious''s Wikipedia entry can be found here
Hej Matematik's MySpace profile can be accessed here.

Digital Britain Interim Report

Today BERR and the Department for Culture, Media and Sport published Lord Carter's Digital Britain Interim Report (the final report is in the late spring).

Not surprisingly, one of the issues on the agenda was illegal downloading and use of peer-to-peer services.

The IPKat thought that the background commentary was pretty well balanced. Copyright on the internet is a problem, the commentary acknowledged, but the 'blame' (if that's the right word) wasn't just placed on those pesky downloaders. Instead, it was acknowledged that things happen quicker in the digital world, and that content providers have to meet the expectations of their consumers that content should be available quickly and easily through the development of new business models. To take one quote:

Copyright is vital for our content and communications industries. It is the framework through which people can protect their creations and seek reward. Our aim, in the rapidly changing digital world is a framework that is effective and enforceable, both nationally and across borders. But it must be one which also allows for innovation in platforms, devices and applications that make use of content and that respond to consumers’ desire to access content in the time and manner they want, allowing them to use it how they want, and at a price they are willing to pay.

However, the IPKat wasn't so happy about all of the report's 3 planned actions in this area:

ACTION 11 By the time the final Digital Britain report is published the Government will have explored with interested parties the potential for a Rights Agency to bring industry together to agree how to provide incentives for legal use of copyright material; work together to prevent unlawful use by consumers which infringes civil copyright law; and enable technical copyright-support solutions that work for both consumers and content creators. The Government also welcomes other suggestions on how these objectives should be achieved.

[IPKat comment: providing incentives for legal use seems to be code for innovative new business models. What are these innovative new business models the Kat would like to know.?The only things which are mentioned are iTunes and DRM (but then, the Kat supposes that working out the new models is the job of this agency).]

ACTION 12 Before the full Digital Britain Report is published we will explore with both distributors and rights-holders their willingness to fund, through a modest and proportionate contribution, such a new approach to civil enforcement of copyright within the legal frameworks applying to electronic commerce, copyright, data protection and privacy to facilitate and co-ordinate an industry response to this challenge. It will be important to ensure that this approach covers the need for innovative legitimate services to meet consumer demand, and education and information activity to educate consumers in fair and appropriate uses of copyrighted material as well as enforcement and prevention work.

[IPKat comment: this is very bad news. Developing innovative new business models may not be the job of Government, but civil enforcement most definitely IS.]

ACTION 13 Our response to the consultation on peer-to-peer file sharing [available from BERR] sets out our intention to legislate, requiring ISPs to notify alleged infringers of rights (subject to reasonable levels of proof from rights- holders) that their conduct is unlawful. We also intend to require ISPs to collect anonymised information on serious repeat infringers (derived from their notification activities), to be made available to rights-holders together with personal details on receipt of a court order. We intend to consult on this approach shortly, setting out our proposals in detail.

[IPKat comment: this sounds like it will place a significant burden on ISPs, for relatively little reward in terms of respect for copyright the IPKat suspects].

Do the courts love IP? More from the UK ... and China

The IPKat recently posted an item which raised the question whether the patents courts in the UK are hostile to patents. He has since received this comment from fellow blogger Peter Groves:

"It struck me that even if they represent only the tip of the iceberg of patent disputes, those cases that come to trial are a significant sample by virtue of the fact that they do come to trial. Perhaps I'm wrong. However, I proceeded to search Bailii for infringement or validity cases dated 2008 and assembled the attached table: which looks to me as if things are fairly evenly balanced, although - of course! - the cases aren't as clear-cut simply valid or not, infringed or not".
Many thanks, Peter, for taking the trouble to supply this.

The Kat has received a new paper, "Intellectual Property Rights Protection in China: Trends in Litigation and Economic Damages", penned by economic consultancy NERA's Senior Consultant Kristina Sepetys and its Senior Vice President Dr Alan Cox. The paper describes the changing role of intellectual property enforcement in an evolving economy such as China’s, as well as the judicial and administrative procedures available for IP enforcement. Drawing upon their own dataset, the authors also examine trends in Chinese damages awards. Unsurprisingly, in the IPKat's opinion -- based on anecdotal rather than systematic data -- authors conclude that IP damages in China are generally too low to compensate owners for their losses or to have any meaningful deterrent effect. But the news is improving: significant damages awards are now being awarded and their frequency is on the rise. A copy of this paper, in English or Chinese, may be obtained from its authors.

Wednesday, 28 January 2009

Welsh patent applications: the results are in!

A couple of days ago the IPKat asked his readers how many patent applications they thought might have been filed in Welsh at the UK-IPO since this possibility was made available by the new Patents Rule 2007, offering a prize of a bunch of daffodils to the first one to get the right answer. 

(right: Tufty's bodyguard Pod guards the limited supply of daffodils at Tufty's country residence)

The IPKat received a huge range of guesstimates, ranging all the way up to a rather optimistic 4,587. One anonymous commenter even tried to work out how many might have been filed by searching on espacenet (a futile exercise, of course, since very few applications since December 2007 will have been published by now anyway). Most people, however, seemed to think that the number would be very low. 

The IPKat can now exclusively reveal that the very first commenter got the answer spot on. Commiserations go to Guy Veysey, Louisa McDonnell and John Collins, who came in just too late.  Exactly zero applications have been filed at the UK-IPO in Welsh over the past 13 months. Well done to whoever anonymous person made that comment.  A large bunch of daffodils is waiting at Tufty's country pad for you to come and collect in a few weeks, once they have had a chance to grow.  

On a more serious note, the IPKat wonders what the point was in putting the effort in to change the law in the UK to provide the option of filing and prosecuting applications in Welsh, and provide a facility at the IPO to deal with them, when it was clearly an option that nobody was asking for, and nobody has in fact seen the need to use.  And in case anybody pipes up about the Welsh Language Act or similar, the IPKat would like to first be pointed to the exact legal requirement that made the change necessary. 

Merpel wonders whether all this fuss the IPKat is making will perhaps prompt some Welsh-fluent patent attorney to file one just to spoil the record.

Tufty says he just wants to keep hold of his daffodils for now.

Latest JIPLP

The January 2009 issue of Oxford University Press's flagship IP journal, the Journal of Intellectual Property Law and Practice (JIPLP), came out some time ago but IPKat team member Jeremy, who edits it, accidentally let it slip to the bottom of the pile of printed materials on his desk, otherwise he would have mentioned it by now: this year's cover colour is a bright and cheerful green (right). Topics featured in this issue include the following:

* An Australian triumvirate of Chris Dent, Elizabeth Hall and Andrew Christie examine both the rationale and the scope of patent attorney privilege;

* Stuart Helmer and Isabel Davies (CMS Cameron McKenna) reflect on how the European Court of Justice ruling affects the balance between the enforcement of copyright against file-sharers and the protection of personal data concerning individuals who do it;

* Katherine A. Helm (Fordham University) contrasts the enforcement of pharmaceutical patents in the United States, Europe and Japan;

* Joel Smith and Rachel Montagnon (Herbert Smith) consider how useful the new European regime of consumer and business protection regulations might be to the brand owner;

* Susan Hall (Cobbetts) explains the recent US litigation between Scottish author JK Rowling and the author of an unauthorised Harry Potter lexicon.
The editorial for this issue, "Locarno in the limelight", considers the Locarno system for the classification of registered designs -- a normally sleepy subject that has recently come up for some freshening-up proposals.

You can read this editorial in full, and at no cost, here
Read all the editorials of the past twelve months here
Full contents of this issue here
For free sample, click here; to subscribe, click here; to write, click here

G 3/08: Have your say

This month's Official Journal of the EPO contains an announcement relating to the EPO President's referral under Article 112(1)(b) EPC on software patents. As well as reproducing the questions first announced back in October 2008 (commented on by the IPKat here, here and here) and the composition of the board, the announcement says the following:

"It is expected that third parties will wish to use the opportunity to file written statements in accordance with Article 10 of the Rules of Procedure of the Enlarged Board of Appeal (OJ EPO 2007, 303 ff). To ensure that any such statements can be given due consideration they should be filed together with any new cited documents by the end of April 2009 at the Registry of the Enlarged Board of Appeal, quoting case number G 3/08. An additional filing of the statement and documents in electronic form would be appreciated ("
It's not clear to the IPKat whether comments received only by email will be accepted, but he thinks it's probably worth a shot.  The IPKat expects that this one will probably involve quite a lot of statements, and he hopes that DG3 is prepared for the deluge.  

Update (29 Jan): Given the comments below, to be sure to have your comments included, make sure you first send them to the following address:

Registry of the Enlarged Board (G 3/08)
80298 Munich

Tuesday, 27 January 2009

WIPO PCT stats for 2008: do they really reflect the downturn?

"Global Economic Slowdown Impacts 2008 International Patent Filings" is the depressing title of the Press Release from the World Intellectual Property Organization (WIPO) today (PR/2009/583).

Right: the IPKat is indignant to discover that 100% of PCT applications last year were not filed by cats.

According to the intro,

"International patent filings under WIPO’s Patent Cooperation Treaty (PCT) grew by 2.4% in 2008, to nearly 164,000 applications. While the rate of growth was modest, as compared to an average 9.3% rate of growth in the previous three years, the total number of applications for 2008 represents the highest number of applications received under the PCT in a single year. Continued use of the PCT, a cornerstone of the international patent system, indicates that companies recognize the importance of sustained investment in research, development and innovation to remain competitive even within challenging economic conditions. [In other words, don't worry too much about the rate of growth. If the IPKat starts with just 5 kittens at the beginning of the year but ends up with 10 kittens at the end of the year, that's 100% growth. If by the next year-end he has 17 kittens on his paws, that's a larger increase in numerical terms but the growth rate has slumped from 100% to 70%] .

Inventors from the Republic of Korea (+12.0%), China (+11.9%) and Sweden (+12.5%) enjoyed robust growth rates in their filing of PCT applications in 2008. The largest number of international PCT applications, just under a third of the total for 2008 (32.7% or 53,521 applications) were filed by inventors in the United States of America, maintaining a ranking that has spanned some thirty years.

... Inventors and corporations from Japan, with 17.5% (28,774) of all filings, clinched the number two spot in 2008, followed by Germany (18,428), Republic of Korea (7,908) France (6,867), China (6,089), United Kingdom (5,517), Netherlands (4,349), Sweden (4,114), Switzerland (3,832), Canada (2,966), Italy (2,939), Finland (2,119), Australia (2,028) and Israel (1,882). In 2008, China improved its ranking by one place, to become the sixth largest user of the PCT".
News from the developing countries is less encouraging. Once Korea and China -- if you regard them as developing countries -- have been taken into account, next come
".. India (766), Brazil (451), South Africa (382), Turkey (367), Mexico (210), and Malaysia (177).

Developing countries make up 78% of the membership of the PCT, representing 109 of the 139 countries that have signed up to the treaty to date".
Top filing company this time around was Huawei Technologies Co. Ltd, a major international telecommunications company based in Shenzhen, which notched up 1,737 PCT applications and just shaded Japan's Panasonic Corporation (1,729). A curious feature of the statistics is that, while the United Kingdom, Canada, Italy, Australia and Israel all feature in the top 15 filing countries, none of those nations has secured even a single entry in the list of Top 50 filing companies.

Toolkit or Foolkit?

The IPKat learned yesterday that the Intellectual Property Office has just launched a Supply Chain Toolkit -- "a new best practice toolkit which gives businesses practical advice on how they can better protect themselves from the dangers of fake goods entering business supply chains". According to the press release,

"Developments in technology and communications have led to increases in intellectual property (IP) crime (counterfeiting and piracy) over the past decade, around $200billion per year, creating one of the biggest problems for businesses of all kinds around the world.

The Supply Chain Toolkit has been produced by the Intellectual Property Office’s IP Crime Group. It includes a step by step approach on what action should be taken if counterfeits are found within the supply chain and guidance on how to strengthen and protect IP assets....
Many businesses rely on goods received through supply chains, often from many different suppliers, and are therefore at risk from counterfeiting and piracy unless effective systems and agreements are put in place to tackle this problem ...".
The Toolkit itself is tremendously handsomely produced. It's ostensibly 34 pages long but, by the time you eliminate the front cover, the white spaces, the green spaces, the graphics and so on, and take into account the generously large type, there's not a great deal of text to read.  Some of the content is frankly puzzling and verging on the bizarre. The glossary, for example, contains such helpful terms as AstraZeneca, European CommunityTrade Related Aspects Of Intellectual Property Rights (TRIPs)United Nations Educational, Scientific & Cultural Organisation (UNESCO) and Universal Copyright Convention (UCC) -- concepts that do not suggest themselves as immediate choices for the middleman or small-time retailer who may wish to be more careful when it comes to selling fakes. The addressee will however be comforted to discover that he now has the contact details of the International Association for the Protection of Industrial Property (AIPPI) and the Copyright Society of China, whose phones will soon be ringing red hot with inquiries from market stall-holders and white van drivers from all over middle England. 

The IPKat hates to be negative, but he can't help feeling that this is a good idea that has somehow got lost in execution.  He also wonders how many of the Toolkit's prospective readers were consulted in its production, to find out whether it was the sort of thing they might either want or use.  Finally, he'd love to know how the efficacy of the Toolkit is to be monitored, and whether the results of any monitoring exercise will be made public.

In short, the IPKat wonders, is it a Toolkit to help small retailers, a manifesto for the IP Crime Group, a cosmetic exercise to show that some arty crafty civil servants have produced a deliverable, or what?  Merpel has her doubts too: it's great to give small businesses the contact details of, for example, Her Majesty's Customs and Excise, but in her experience many of the businesses that most need an IP Toolkit are actually quite anxious not to draw the attention of that body to any aspects of their trade, for reasons which she need not elucidate here.  

Both Kats (and Tufty, once he has finished being admired and/or vilified by visitors to this weblog) hope that readers will take the trouble to look carefully at the Toolkit and make as many constructive suggestions as they can for the revised edition.  Please send your suggestions here and say the IPKat sent you. You can download the Toolkit here and read it yourself. 

Monday, 26 January 2009

Important news for Welsh patentees

Ever since the Patents Rules 1995 were replaced by the Patents Rules 2007, the IPKat has been wondering how popular the newly available facility for filing and prosecuting UK patent applications in Welsh as well as English would be (for some background and sometimes irate IPKat commentary on the subject, see here, here, here and here).  He was thinking recently that the time had come to count up how many applications had actually been filed in Welsh since the new rules came into force back in December 2007.  

Rather than wading through the many thousands of application details published on the patent register, the IPKat thought that he would use the facility offered by the IPO under the UK Freedom of Information Act to ask the question directly, since he suspected that the IPO will have been keeping a close eye on this important issue anyway, and would have all the relevant details to hand.  The IPO have now, in double quick time, kindly come back with an answer.  The IPKat doesn't want to give the game away to everyone just yet, so he will let his readers make educated guesses as to the exact number.  The first person to leave a comment with the exact number wins a bunch of daffodils. 

UPDATE: See the result in the IPKat's later post here.

Breaking news: WTO Panel Report on US-China IP dispute -- both sides win!

The World Trade Organization has just issued its panel report on the US-China dispute over intellectual property rights. The report goes on for 135 pages and that Kats haven't had a chance to read it yet, but the bottom line is as follows:

8.1 For the reasons set out in this Report, the Panel concludes as follows:
(a) the Copyright Law, specifically the first sentence of Article 4, is inconsistent with China's obligations under:
(i) Article 5(1) of the Berne Convention (1971), as incorporated by Article 9.1
of the TRIPs Agreement; and
(ii) Article 41.1 of the TRIPs Agreement; [that's 1-0 to the United States]

(b) with respect to the Customs measures:
(i) Article 59 of the TRIPs Agreement is not applicable to the Customs measures insofar as those measures apply to goods destined for exportation; [there's the equaliser! 1-1]
(ii) the United States has not established that the Customs measures are inconsistent with Article 59 of the TRIPs Agreement, as it incorporates the principles set out in the first sentence of Article 46 of the TRIPs Agreement; [2-1 to China]
(iii) the Customs measures are inconsistent with Article 59 of the TRIPs Agreement, as it incorporates the principle set out in the fourth sentence of Article 46 of the TRIPs Agreement; and [but now it's 2-2]

(c) the United States has not established that the criminal thresholds are inconsistent with China's obligations under the first sentence of Article 61 of the TRIPs Agreement. [the Chinese now lead 3-2]

8.2 The Panel exercises judicial economy [Oh! Presumably the cost in terms of the deployment of the Panel's resources outweighs the value to the trading world of the outcome of the claims concerned] with respect to:
(a) the claim under Article 5(2) of the Berne Convention (1971), as incorporated by
Article 9.1 of the TRIPs Agreement; and the claims under Article 61 of the TRIPs
Agreement (with respect to the Copyright Law); and
(b) the claims under Article 41.1 of the TRIPs Agreement and under the second sentence of Article 61 of the TRIPs Agreement (with respect to the criminal thresholds).

8.3 Under Article 3.8 of the DSU [= Dispute Settlement Understanding], in cases where there is an infringement of the obligations assumed under a covered agreement, the action is considered prima facie to constitute a case of nullification or impairment. China did not succeed in rebutting that presumption. Accordingly, the Panel concludes that, to the extent that the Copyright Law and the Customs measures as such are inconsistent with the TRIPs Agreement, they nullify or impair benefits accruing to the United States under that Agreement. [so the US pulls back to parity at 3-3. Honours are equal, faces are saved, everyone is happy ...]

8.4 In light of these conclusions, the Panel recommends pursuant to Article 19.1 of the DSU that China bring the Copyright Law and the Customs measures into conformity with its obligations under the TRIPs Agreement.

Concluding remark

8.5 In this dispute, the Panel's task was not to ascertain the existence or the level of trademark counterfeiting and copyright piracy in China in general nor to review the desirability of strict IPR enforcement. The United States challenged three specific alleged deficiencies in China's IPR legal system in relation to certain specific provisions of the TRIPs Agreement. The Panel's mandate was limited to a review of whether those alleged deficiencies, based upon an objective assessment of the facts presented by the parties, are inconsistent with those specific provisions of the TRIPs Agreement.
The IPKat would like to thank his friend and colleague Jo Gibson for drawing his attention to something he should have been vigilant to spot.

EP Divisional Applications: some food for thought

This will be old news for some more well-connected readers, but the IPKat has only just seen a proposal, submitted by the President of the EPO for consideration by the Committee on Patent Law and decision by the EPO Administrative Council, relating to how alleged 'abusive' practices on filing divisional applications might be tackled. The full document can be accessed via Laurent Teyssedre's blog here. The key feature of the proposal involves the following amended version of Rule 36 EPC:

1) The applicant may file a divisional application relating to any pending earlier European patent application, provided that:
(a) the divisional application is filed before the expiry of a time limit of 24 months from the Examining Division's first communication in respect of the earliest application for which a communication has been issued, or
(b) the divisional application is filed before the expiry of a time limit of 24 months from a communication in which the Examining Division has objected that the earlier application does not meet the requirements of Article 82 EPC.
Laurent thinks that this is likely to be replaced by a revised version, to be submitted for review shortly.  The IPKat suspects, however, that any amendments will be in the form, rather than the substance, of the above proposal, given the EPO's clear desire to crack down on divisional applications following the emphatic decision of G 1/05.  

Any thoughts on how this kind of amendment might affect applicants would be welcome.  

What do David Lammy, ISPs and a bar of soap have in common?

The IPKat read with interest a Times interview with David Lammy, Minister for Intellectual Property, Higher Education and Skills (though it’s not too clear where the interview stops and the commentary starts).

It appears that the interview as timed to coincide with Lord Carter’s Digital Britain report, though that’s not coming out now until later in the week. However, at risk of giving at least part of the game away, Mr Lammy suggested that plans to force ISPs to cut the internet access of serial downloaders may have stalled. He pointed instead to the memorandum of understanding signed last July by ISPs and the music industry, which included ISPs sending out letters to those caught illegally downloading.

Mr Lammy noted:

“[Y]ounger people not quite buying into the system…We can't have a system where we're talking about arresting teenagers in their bedrooms. People can rent a room in an hotel and leave with a bar of soap - there's a big difference between leaving with a bar of soap and leaving with the television.”

An unnamed 'senior figure’ from the music industry noted:

“The relative cost of stealing a bar of soap from an hotel might be small, but if it came to seven million people nicking the soap each year, which is what we have in the music industry, I'm sure that hotel chain would do something about it.”

The IPKat is having trouble getting his head round Mr Lammy’s analogy. Surely it is theft to take bars of soap from hotel rooms, unless of course it’s one that you’ve started to use, but hotels turn a blind eye. Or perhaps the Kat is wrong, and there’s some sort of implied consent to the soap being taken – after all, the hotels have put it there in the knowledge that it is likely to be taken. Can some kind criminal lawyer help the IPKat’s poor brain?

What the IPKat is sure about though is that the music industry response just doesn’t work. The IPKat is sure that 7 million people do take soap from hotel rooms across the industry every year. The respondent is skewing the analogy by treating the music industry as one collective entity but dividing hotels into individual chains.

The Kat also notes the suggest in the article that Lord Carter may call from a levy on internet access to be paid to the music industry. The IPKat’s not too happy about this – what about the millions of people who don’t use the internet for downloading music and films, or those who already pay the music industry by sourcing legal downloads? Why should they pay?

News from the OHIM: new CTM e-filing system on 2 February 2009

Readers of the OHIM's newsletter Alicante News may have already noticed that there is a new CTM e-filing system on its way. The IPKat has today received the following news from the OHIM concerning the planned new CTM e-filing system, which could be of interest to many of our readers. The new system will already be introduced on 2 February 2009, announces the OHIM:

"The new CTM e-filing system will be officially launched on Monday 2 February. The system, developed as a result of user feedback, has been designed to be both quicker and simpler to use. It incorporates important features requested by users such as the ability to save and restore draft CTM applications. There is also a faster submission process with immediate confirmation including the CTM application number and the generation of a receipt that you can print or save.

Automatic error checking helps ensure that users put in the correct data, and there are improved facilities to help with the introduction of goods and services. More information will be available shortly on a special CTM e-filing web page, and video "How-to" guides introducing the system step by step, are available for immediate viewing. Keep watching the OHIM website news service for further updates over the next few days.

Link: E-Business How-to videos"

If the link to the "How-to" videos is not yet active, please try again later today. The information will also be published on the OHIM's website later today.

What do our readers hope the new e-filing system should do (or not do)?
This Kat certainly hopes for more stability when submitting the application, so she does not have to phone the OHIM to check whether the application was submitted or not.

Are British patent courts unfriendly to patents?

The IPKat received a query the other day from Eric J. Siecker (Perkins), who wanted to know whether he or any of the other Kats had either any data or views on the following:

"Working as the only European Patent Attorney for a US company which is highly active in the world of patents, quite a few of my American patent attorney colleagues have the impression that the UK courts system is very patent unfriendly. Quite often I hear something like "aren't most patents that go through the courts either found invalid or non-infringed?"  I know that this is not a new view and that plenty of discussions have taken place on this subject matter. However, I would like to get a better handle on the subject and to know if that is (still) true, urban legend or a remnant of the past that may be becoming outdated?"
This member of the IPKat team does have some thoughts on the subject. He feels that many people forget that, unlike the case of the US, the proportion of patent disputes that end up in court is relatively small, since most are settled long before they see trial, and those cases that don’t settle are those where there exists the greatest area of doubt, either concerning validity or infringement. The resulting database of decided cases is in any event statistically insignificant and does not represent the body of disputes from which it is drawn. Merpel adds, the British Courts love patents to pieces -- but, as the old song goes, You Always Hurt The One You Love ...

Urban legends here

Sunday, 25 January 2009

OHIM fees and SMEs

ECTA, the European Communities Trade Mark Association, appears to have broken ranks with the trade mark owners' organisations MARQUES and INTA over twin issues of (i) overcharging of applicants for Community trade marks and (ii) subsidising national trade mark granting authorities out of fees paid by applicants for Community trade marks. 

A letter, signed by ECTA's President Simon Reeves and Vice-Chair of the Law Committee Fabio Angelini, has been sent to Wubbo de Boer, António Campinos and Robert Ullrich (OHIM), Margot Fröhlinger (European Commission) and the heads of the European Union's regional and national trade mark offices which reads as follows:
"“How to better balance OHIM’s budget – the way forward”

The compromise solution as proposed at the last Joint Meeting of the Administrative Board and the Budget Committee of the OHIM

ECTA has now completed its analysis of the compromise solution and read with interest the comments expressed by Marques and INTA, as well as those formulated by BusinessEurope.

While there are some elements of commonality between ECTA’s assessment of the compromise solution and some of the ideas expressed in all three papers, ECTA’s
overall position differs.


The integration and development of the European Union (EU) internal market has been, and of course still is, one of the most important goals for the EU. The harmonization of national trade mark laws as well as the creation of the CTM system have been quite efficient instruments to assist the EU in reaching this goal. Particularly the latter has paved the way, or at least lowered the barriers, for a real and efficient free movement of goods all over the EU.

However, while freedom and efficiency undoubtedly serve the interests of industry as well as of EU consumers, the degree of success of the CTM has raised and continues to raise some concerns and certainly one of them is how to handle the budget surplus generated by the system.

It is ECTA’s belief that balancing OHIM’s budget is not a goal or an end in itself but rather a collateral result which may be achieved in many ways. The alternatives would be multiple and could go from lowering substantially OHIM fees to increasing the human resources item of OHIM’s budget.

However, ECTA doubts that any such option would constitute a proper solution to the problem because the real issue is not how to balance the budget, but rather which way is the most appropriate in a comprehensive framework which takes into account the peculiarities of the overall EU trade mark system characterized by the overlapping of two different and independent layers of protection, i.e. national systems and CTM system.

Accordingly, it is ECTA’s view that balancing the budget and handling the surplus cannot be properly dealt with unless by a solution which is first and foremost prompted by the need to create a proper balance between CTM and national trade marks.
There are different reasons why ECTA believes that it is necessary to adopt such a policy. While this paper is not the proper venue to deeply dwell on the particulars ECTA will offer some considerations that represent the views and the input of its membership, which encompasses trade mark professionals in industry and in private practice.

The starting point is that a proper balance between CTM and national trade marks helps small and middle seized enterprises (SMEs) within the EU and benefits the system as a whole.

It is quite apparent that the CTM is particularly suited to those large companies whose activities encompass several or most EU member states. On the contrary, a national trade mark registration, or few more in the relevant markets of reference are, in most cases, more than enough for an average SME whose output does not and will likely never justify a market horizon wider than that. The fact is that in the EU, the industrial fabric is by and large composed more of the latter (SMEs) than the former (large entities).

While some overlapping is unavoidable, i.e. both systems are used to protect the same trade marks for the same markets, the reality is that both routes are necessary and perform a vital role in order for the European trade mark system to function well.
At the moment it seems, however, as though the CTM system is slowly but firmly eroding and endangering the existence of the national systems, mainly as a result of financial considerations. This is due to the simple realisation that by one CTM an enterprise obtains protection in all 27 member states at a fraction of what it would otherwise cost.

Therefore, on the one hand, many companies who would not need a CTM, apply nonetheless for it because it is already a cheaper alternative to national registrations. On the other hand, larger and richer companies pursue aggressive registration strategies which, aided by the perhaps now too long 5 years’ use period, ultimately narrow more and more the number of available signs, and effectively stifle competition because of the implied threat of litigation which lies in any registered sign, even though not yet in use.

The result is that while to any single SME, the long-term economic effects of choosing a CTM over a national registration may seem minuscule, because they consider one CTM at the time, looking at the whole rather than at the part, it seems evident that the multiplying effect of these individual choices puts a formidable stress on the EU system of protection of IP rights and ultimately increases the overall costs in an exponential way.

With a Register so overfilled with CTMs, many of which may not be in use, clearing a new trade mark is more and more expensive which means that only large and financially rich companies may afford them, which also means that SMEs basically risk the future economic viability of their goods/services when they register a CTM upon the chance that no one along the way will sue them. However, the situation is not favourable for large companies either, since they must face increasing costs which are in turn passed, ultimately, to consumers.

In addition, this phenomenon would only be exacerbated by the proposed reduction of the CTM fees to 1,000 Euro, equivalent to a cost of 37.04 Euro per country for the first 10 years of validity of the registration, which is much lower than the current corresponding fee in any of the 27 countries of the EU, and the more so if you take into account that for up to three classes, the cost is the same.

Any trade mark administrator of any SME interested in registering a trade mark would have extreme difficulty in explaining to his/her management why he/she chose to file more expensive national registrations when he/she could have filed for a CTM.

ECTA wonders why in order to address or treat/cure what is, after all, a benign problem like that of a budget surplus (a constant deficit would be a serious problem), the solution proposed might have the effect of increasingly challenging the viability and survival of national registrations and ultimately jeopardizing the CTM system.

ECTA is of the opinion that the most useful approach is that of optimizing the reallocation of resources among Trade mark Offices. ECTA understands that one of the agreed proposals to address the budget surplus is by allocation of some of it to the national offices.

This compromise solution is agreeable to ECTA if encompassed in a policy aimed at maintaining a reasonable balance between the CTM fees and the national TM fees to the ultimate benefit of the users. To encourage this result, ECTA suggests that part of the surplus is deposited in a stabilization fund which would be transferred, proportionally, to national offices in exchange for a reduction of their TM filing fees.

This solution would benefit on the one hand national offices, which could see the number of national applications increase, and on the other it would benefit SMEs, which would have a cheaper and competitive alternative to consider. Ultimately, this continuous transfer of resources should stabilize the competition between the two systems as a whole and equilibrium would be reached to the benefit of the whole trade marks system in Europe.

It is important, however, to ensure that any transfer of OHIM surplus to national offices be utilized by the national offices and not for other purposes within each member states and therefore it should be clearly contemplated that the surplus must be utilized firstly to decrease national fees and secondly to enhance quality of the services offered by national offices so as to foster innovation all over the EU.

Finally, ECTA is not against a reasonable reduction of OHIM fees. However, for the above-mentioned reasons, it considers that a possible reduction of OHIM fees should not focus exclusively on application and registration fees, but preferably extend to a number of official fees, including renewal fees and particularly opposition and appeal fees, which are the most advantageous alternative to costly and time-consuming Court proceedings.

ECTA also wonders about the actual advisability of consolidating CTM fees in one payment. There are practical considerations such as that the current system, with two separate payments – the initial application fee and subsequent registration fee – is more equitable for applicants, in particular for SMEs. Given the difficulties and the costs of clearing new applications prior to filing, many applicants simply file their CTMs and wait to learn whether or not oppositions are filed and if they are, many simply withdraw and abandon the mark or convert into national applications. With the proposed system, the SMEs would have to pay the full fee which would be wasted in the above scenario. In addition, it does not seem fair that a trade mark whose registration is granted and remains valid for 10 years should pay the same fee as a trade mark whose registration is refused.

A change in the relative proportions of the application fee and the registration fee might nevertheless be acceptable, proportionally increasing the registration fee for the grant of the registration/right and reducing the initial application fee. This system would balance the cost/benefit equation and make applications more attractive, while at the same time trying to ensure that only trade marks whose use is actually of interest would be validated.
The IPKat, who has been following this debate with interest, notes that the diversion of funds from OHIM to national offices is being argued in very positive terms, highlighting the benefits to be obtained rather than on any detriments or grievances. He is also pleased to see some arithmetic being employed, since actual figures make for stronger arguments than mere assertions. He still isn't clear about whether the fact that there are so many CTMs on the register is such a dreadful thing though: there are so many more goods and services than there used to be, and with increasingly international trade, particularly online, the register is bound to get more crowded whatever fee policy is adopted -- but the only other marks that will concern the individual applicant are those that are close enough to raise a ground of opposition, which is only those marks on the register that are closest to his own.

Merpel, however, is less sympathetic to ECTA's position. This looks, to the untutored eye of a fictional cat, like an acute case of national agents -- who do not pay the fees themselves -- protecting their own interests in national filings. She is particularly incensed at the manner in which ECTA talks of "a benign problem like that of a budget surplus". From the point of view of OHIM, having too much money is a benign problem, in that having too little money to enable it to discharge its functions is a malignant problem.  But from the viewpoint of Community trade mark applicants -- who do not consist uniquely of fat-cat megacorporations but contain many SMEs too -- it looks like a tax on Community trade mark applications.

Saturday, 24 January 2009

Choose a picture for Tufty!

IPKat fan Denise McFarland suggested a while ago to one of my human amenuenses that it might be a nice idea to allow our readers to choose the picture of me used on the IPKat's sidebar.  This seemed like a good idea to me, although the IPKat's human representatives were far too modest to allow others to pick their best sides.  

So, just for a bit of fun to break up all this tedious discussion about intellectual property, even though my paws make keyboards difficult to operate I have at last put up a selection of pictures of me for you, dear readers, to choose from.  These are on the blog sidebar (at, if you are reading this by email) in the form of a poll, courtesy of  A larger version of each photo can be seen by clicking on the images. 

Once you have picked your favourite, simply click on the 'vote' button.   The final results will be announced once we have enough votes.   

Happy voting!



Dyson cleans up again

The IPKat has been reading yet another monster judgment from the Patents Court, Dyson Technology Ltd v Samsung Gwangju Electronics Co Ltd [2009] EWHC 55 (Pat), which issued just a couple of days ago on 22 January.  Alexa Highfield of Wragge & Co., the instructing firm for the claimant, was kind enough to let the IPKat peruse a copy of the judgment before it made its appearance online here.  Wragge & Co.'s particular take on the case can be read here

Dyson applied for revocation of two of Samsung's UK patents,  GB2424603 and GB2424606, both of which had been filed in 2005 and granted in 2007. Both patents related to cyclonic vacuum cleaners, or "cyclonic dust separating apparatus" as the patents called them.  Dyson claimed that the patents were invalid over various cited documents, and over their own vacuum cleaner models DC07 and DC08, both of which were based on their "Root Cyclone" technology, developed before the priority date of the patents.  Intriguingly, one of the documents cited by Dyson to attack Samgsung's patents was a Japanese utility model from 1977 (pictured right), showing a multicyclone vacuum cleaner that predated even Dyson's earliest patents on bagless vacuum cleaners.  The IPKat wonders whether, if this was brought up at the time the Dyson v Hoover case was being heard back in 2000 and 2001, this might have affected the outcome.  As we all know, Dyson prevailed that time and their patent was upheld. 

Samsung largely failed to show that there was much that was valid in their patents over the art known in 2005.  They seemed to realise this, and filed requests for amendments under section 75 to both of their patents, which involved a substantial re-writing of the claims.  Arnold J went to great lengths to determine whether Samsung's amendments complied with the requirements of section 76(3)(a), which prevents amendments being made that result in the specification disclosing additional matter.  Most of the amendments fell foul of this, and were disallowed, but a couple of their amendments were both allowable and not invalid for lack of novelty or inventive step.  The end result, as far as the IPKat can work out, is that at least one of the claims (in the '606 patent) would stand as being valid after all this.  

The IPKat cannot fault Arnold J's expert and very thorough job of going step by step through each of the issues involved, and is very impressed by the extensive citation of pretty much all the relevant case law on each subject along the way.  Although the judgment overall does not seem to be groundbreaking in any way, it seems to be a very good case study in how to go about looking at validity of patents and all that entails.  

What is puzzling the IPKat, however, is the absence of any arguments or discussion on the other bit of section 76(3), part (b), which states that no amendment to a patent shall be allowed if it "extends the protection conferred by the patent".  This issue, which is often looked at in detail in EPO opposition proceedings under the equivalent provision of Article 123(3) EPC, is designed to prevent the patentee from broadening the scope of their claims in any way after grant.  In effect, this means that any amended claims should not bring something within the scope of the patent that was not within its scope as-granted.  Was section 76(3)(b) simply not an issue for Dyson in this case, or was it just missed out? Given the extensive re-writing of the claims by Samsung, the issue should perhaps have been at least looked at.  All the discussion about admissibility of amendments, however, concentrated on whether the amended claims were based on the specification as-filed, and there is apparently nothing about how they affected the scope of the claims as they were granted.  Can any readers shed further light on this?

Friday, 23 January 2009

Upper Class seat -- no patent or design infringement

In a mammoth judgment of some 344 paragraphs in length, Mr Justice Lewison has ruled that Virgin Atlantic's Upper Class seat patent is valid but not infringed, and that its design rights haven't been infringed either. The ruling, in Virgin Atlantic Airways Ltd v Premium Aircraft Interiors Group Ltd and Premium Aircraft Interiors UK Ltd [2009] EWHC 26 (Pat) can be read in full here. Judgment was given on Wednesday, 21 January in the Patents Court for England and Wales. While much of it is taken up with a detailed review of the relevant facts, there's a handy referenced abbreviated "principles of patent construction" guide at paragraphs 182-188 that looks as though it may find its way into students' hearts, if not their brains.

Since it may be a while before any of the IPKat team can read the decision in full and comment on it, this blog is pleased to bring you, thanks to the vigilant Chris McLeod (Hammonds), a link to this short note in Design Week -- a publication that is more focused on the chair design itself than on the legal niceties of patent and design law. According to that note:

"Virgin Atlantic was seeking damages potentially running into tens of millions of pounds and an injunction to prevent Contour selling the seat to rival airlines including Delta, Air Canada, and Jet. ...

The Upper Class seat was designed by Virgin’s in-house design team in collaboration with Pearson Lloyd and entered service in November 2003.

Virgin Atlantic holds the patent and design rights to the seat, and Pearson Lloyd was not involved in the legal action. The consultancy declined to comment on the result.

Paul Carter, chief executive of Contour, says, ‘We are proud of the part we played in the development of the lie-flat bed, and we will continue to use our dedicated design and engineering skills to help our customers set new standards for premium-class air travel'

In a statement, Virgin Atlantic, which plans to appeal against the result, says, ‘We are disappointed with the outcome of the case and will be examining the judgement over the next few days.

‘Virgin Atlantic invests huge amounts in its design and product innovation, and it is a major area of differentiation between us and other airlines'".
Upper Class seats here and here
Other aircraft seats here

Recent CIPA publications

Known to many as a professional organisation that represents the many and varied interests of patent attorneys, the Chartered Institute of Patent Attorneys (CIPA) is also something of a publisher. The IPKat has just been admiring two of its most recent efforts:

Advice for passing the European Qualifying Examination, by Derek Jackson, Paul Denerley and Nicholas Fox, has been sent free to CIPA members and CIPA Journal subscribers, but costs £10 a copy for mere mortals (plus postage and packaging for those who lurk outside the jurisdiction). If you think that £10 might seem a lot to pay for just 16 pages, remember: it's the quality that counts -- and the text is a good deal longer than Magna Carta, the Gettysburg Address, or the Ten Commandments (the written version, not the film ...).  Merpel adds, the more you pay, the more likely you'll be to read it properly. Anyway, according to the publishers, it's
"A study guide for both students and their tutors. It begins with a brief but very useful list of background reading and then takes each EQE paper in turn and analyses these in a concise but comprehensive plan of attack. All the well known dos and don’ts are there but these essential caveats are no mere repetition: they form the bedrock of the authors’ eminently practical approach to tackling the entire suite of papers. Candidates wanting to maximise their chances of success need to adopt these strong basic guidelines and they are all comprehensively covered here. The text is clear, readable, and above all practical in its approach".
The IPKat found it quite un-put-downable, not least because he cherishes the thought that all the things that candidates have problems with when they're trying to qualify -- clearly flagged by the authors here -- are the same things they are likely to have problems with in later life too. You can order this work here.

A Guide to the EPC 2000: a practitioner's guide to the New Law, a solo effort this time by Nicholas Fox, has now come out in its second edition. The front cover adds the words "Second edition" in a small box at the bottom of the page, but otherwise it looks the same as the first. Hint to CIPA: if the wording on the spine also reads "2nd edition", perverse readers like the IPKat who never throw away their old books if they think they might come in handy for legal research will find it easier to pull the right one off the shelf. 

Having got that minor quibble out of the way, the IPKat has plenty of praise for this book.  The publishers seem to like it too:
"This convenient guide ... aims to help practitioners find their way around the new law [The Kats wonder how long it's going to be regarded as "new".  It seems to have been around for quite a while now]. It contains an extensively annotated and cross-referenced copy of the revised Convention and Implementing Regulations [this is the really good bit, unless you prefer doing it yourself with replaceable adhesive notelets], as well as the Rules Relating to Fees, the Protocol on Jurisdiction and the London Agreement. Articles and their most relevant rules are printed together to enable them to be read in context [this works pretty well too]. Practical commentaries highlight the major changes, illustrating how the articles and rules interact in practice".
This book is a real convenience. Clear print and clearly expressed comments and explanations are commodities one finds too rarely these days, and it's reassuring to find that clarity of expression is alive and well against people who earn a living drafting claims ...  At £30 for non-members, £25 for members, it's good value for money. You can order this book here [The IPKat understands that it's available in French and German too].

Security arrangements and IP

The IPKat has been wondering whether any of his readers have considered whether registration at Companies House ("the official UK government register of UK companies") might help to preserve unregistered IP rights.  

Right: Magnus was a feline insomniac before he discovered the Companies Act 1985 ...

This is because he hears a story that goes like this:
"Once upon a time there was an author who had sold the IP rights in his books to a publishing company, but wanted to retain some control over them . So what did that author do? He took a charge over those rights. The security was then registered at Companies House under section 395 of the Companies Act 1985
The parties had contractually agreed that the publishing company could not dispose of or charge the IP rights in the author's works, but the security registration had some value for the author in that it publicised, in a manner similar to registration of the rights, the fact that the IP rights were subject to a charge and a non-disposal covenant. Any third party who could reasonably have been expected to check the register, who then acquired the rights in breach of the restrictive covenants, could not be said to have done so in good faith.  And they all lived happily ever after ..."
The IPKat would be really curious to hear whether any readers have views on this approach.

Thursday, 22 January 2009

Google backs fair use defence

The IPKat has learnt from the Guardian that Richard Sargeant, Google’s Public Policy Manager today called for the UK to have a fair use defence to copyright, similar to that in the US:

“We look with respect at the system of fair use rights that exists in the US. Europe doesn't have anything similar, which makes it much more difficult for people to see what they can and can't do."

The IPKat, stifling the urge to say ‘Well he would say that, wouldn’t he?” can see the advantage of such a defence, rather than the labyrinthine defence Chapter III of the Copyright, Designs and Patents Act 1988. He wonders though whether a broad fair use defence would provide enough certainty for all players.

BGH refers main "AdWord" question to the ECJ but decides on "AdWord" use of company names

In its eagerly awaited three "AdWord" decisions of today's date (see the IPKat's earlier post here), the German Federal Supreme Court (BGH) has denied trade mark infringement in two of the cases and referred the third matter to the ECJ.

This new Kat will closely scrutinise the actual decisions, once they are available in their entirety. So far the IPKat has only seen the BGH's press release, which the Kat has translated into English and summarised below.

The BGH's press release of today's date points out that all its three decisions are based on cases, where the defendants had purchased the respective claimant's trade mark (or company name) as a keyword/Adword and where the display of the sponsored links was visually separated from the actual search results displayed on the search engine results website. In all three cases, the actual internet advertisement did not include the respective claimants' trade mark/company sign or any other reference to the proprietor of the trade mark/company sign that had been used as a keyword. The objectionable advertisements also did not include any reference to the respective claimant's goods and/or services.

The BGH had already hinted it might refer the matter to the ECJ and so it does not come as much of a surprise that the court decided to refer the main question to the ECJ; based on the press release the IPKat believes the question should be phrased along the following lines: "Does the use of a third party's trade mark as a keyword/Adword on identical goods/services constitute trade mark infringement under the Directive?" However, the court ruled use of third party's trade mark as a merely descriptive keyword, could not constitute trade mark infringement.

Let's have a look at the facts and arguments in the three cases that have been decided.

*First case "bananabay" (I ZR 125/07): The claimant and the defendant both sold adult entertainment products. The claimant is the proprietor of a trade mark registration for "bananabay" and sought to stop its competitor's use of the trade mark as a keyword/'AdWord' for the competitor's website, claiming trade mark infringement and seeking damages.

The BGH decided that, in cases where another party's trade mark was used as a keyword/Adword on goods/services that are identical to the goods/services protected by that trade mark, it needed to clarify whether such use was "use as a trade mark" and could constitute trade mark infringement. Given that the relevant infringement provisions in the German trade mark are based on harmonised European law, the court decided to suspend the proceedings and refer this question to the ECJ under Article 234 EC-Treaty.

Comment: Not too much of a surprise here, the IPKat thinks. The BGH follows the example of other national courts, which also referred similar questions to the ECJ.

*Second Case "PBC" (I ZR 139/07): The claimant and the defendant were again competitors and both were active in the field of 'printed circuit boards'. The claimant owns a trade mark registration for "PCB-POOL" and the defendant used the sign 'pcb' as an 'AdWord'/keyword for its website. This led to the result that the search term "PCB-pool, when typed into a search engine, retrieved sponsored links that referred to the defendant's website. The court of appeal, the Higher Regional Court of Stuttgart, had agreed with the claimant and ruled that the use of a trade mark as a keyword/'AdWord' in this case did constitute trade mark infringement.

In this case the BGH overturned the decision of the Higher Regional Court of Stuttgart and denied trade mark infringement. In a first step, the BGH established that the relevant specalist consumers would understand the acronym "pbc" as short for “printed circuit board”. In the light of this, the BGH ruled that the proprietor of a trade mark could not prohibit the use of a descriptive term (here: pbc), even if this term was used as a trade mark and even if this use caused a likelihood of confusion with a protected trade mark. Such descriptive use was permissible and could not constitute trade mark infringement. A referral of the ECJ was not necessary.

Comment: It appears noteworthy that the defendant only purchased "pcb" as a keyword and not "PCB-pool". The matter would have perhaps decided differently if PCB-pool has been used. The IPKat will scrutinise the actual decision but can't really find much fault here but wonders what do the readers think?

*The third case "Beta Layout" (I ZR 30/07) was slightly different because it related to the use of a company name as a keyword. Whilst company names are protected under the German trade mark act, it is important to note that this protection is not based on harmonised European law but a German quirk. The claimant in the second case (I ZR 139/07) was also the claimant in the third case. The defendant had designated the claimant's company name "Beta Layout" as an 'AdWord'. The court of appeal, the Higher Regional Court of Dusseldorf, had decided that this use did not infringe the claimant's company name. The Dusseldorf court ruled that there was no likelihood of confusion because users of search engines knew how to distinguish between advertisement and actual search results.

The BGH confirmed the decision of the Higher Regional Court of Dusseldorf. The internet user would not assume that the sponsored link, which was visually separated from the search results, originated from the claimant. The BGH could not find any fault in this finding of facts. Given that the legal protection of company names was not based on harmonised European law, the BGH decided that this matter did not have to be referred to the ECJ for a decision.

Comment: The protection of company names in the trade mark act is a German quirk. However, the IPKat wonders why company names should (potentially) be treated differently to trade marks. This decision also seems to indicate the the BGH is of the view that in cases where the search engine users can clearly distinguish between sponsored links and actual search results, the use of a company name (...and a trade mark?!) should per se be permissible. The IPKat acknowledges that this is really a question of facts and that the ECJ will only rule on matters of law. However, should the eventual ECJ decision allow a different assessment in this regard, then it will be interesting to see whether the BGH will maintain its decision in relation to company names.

What do our readers think?
The court's press release can be retrieved here in its entirety (in German).

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