The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Wednesday, 28 June 2017

UK UPC ratification timetable to continue in September, while Prep Committee acknowledges German constitutional hold-up

Confused about UK legislative process?The IKat is here to help
The recent IPKat post bringing news that the Order on Privileges & Immunities had been laid before the UK Parliament brought several e-mails questioning the legislative steps needed to ratify the UPC Agreement (UPCA) and the Protocol on Privileges & Immunities (PPI).  Your questions are her command, so this morning the AmeriKat did some research into the steps required and timing following the recent election (thanks to some handy and helpful Government resources and constitutional lawyers). The below is what she found out:

Preliminary (clarifying) point

There had been previously a lot of confusion as to the legislative steps required to ratify an international agreement.  The process in the UK when ratifying international treaties is essentially three-step:
(i) Give Parliament an opportunity to object to the treaty:  Lay the international treaty (be it the UPC Agreement or the Protocol on Privileges & Immunities) before Parliament for 21 sitting days.  Both Houses have an opportunity during this time to pass a motion saying that the UK should not sign up to this treaty.  Essentially this is a "shout if you disagree" stage.  If nothing happens - like it did with the UPC Agreement and PPI, we move on to the next step.  
(ii) Incorporate the treaty obligations into national law.  The UK's policy has been to implement their international treaty obligations into national law (if they did not they would be bound only by international law). At this stage we have seen last year's Patents Order (which flowed from the UPCA) and now this week's Order on Privileges & Immunities (flowing form the PPI).  
(ii) Formal ratification:  Once the Order on Privileges & Immunities is passed (see more below), the final stage is that Government uses its powers derived from the Monarch (primarily exercised by the PM and Foreign Sectary) to deposit the final letter/instruments of ratification.  
Final steps required for UK ratification of the UPC

Step 1 - Pass scrutiny
Having been laid before Parliament, the Order on Privileges & Immunities ("the Order") now needs to go through the scrutiny process.  The scrutiny committee responsible for the Order is the Joint Committee on Statutory Instruments (JCSI). The JCSI, made up of peers and MPs, scrutinzes the legislation, essentially checking to see of the powers to create the secondary legislation (the Order) have been used correctly.  If they have any questions, they may ask the IPO or Parliamentary lawyers.  They will prepare a report for the House of Commons and House of Lords summarizing their review and setting out any remaining questions that should be debated.  The AmeriKat understands that JCSI's remit is narrowly defined to more legalistic issues, not policy issues.    
Where Steps 1 and 2 take place
Step 2 - Debate in Parliament
Once passed through the JCSI, the Order goes on to be debated in each House - Commons and Lords.  The debate is normally held in a special committee that is set up in each House - a delegated legislative committee - with the task of reviewing Statutory Instruments. The composition reflects the parties in the House - which will be a different makeup than in previous years given the lack of majority following the recent elections.  The length of the debate can depend on how many wish to speak.
Usually in the debates, a minister will introduce the legislation.  The opposition will then have a chance to respond, then other members have an opportunity to speak.  The minister then wraps up the position in a closing speech.  It then goes to vote.  The vote is a simple majority.  The Chair of the Committee then declares whether the order stands or falls (unlike primary legislation, statutory instruments stand or fall in tact - there is no possibility for amendments). 
The selection of the members for these committees will be done by a committee and is expected to be confirmed approximately 2 weeks before the vote.  There may be legalistic questions, as well as some policy debate about the Order and the UPC (generally), in both Houses.    
Step 3 - Privy Council approval 
If the Order is passed in both Houses, it will then go to the Privy Council for approval.   The Privy Council is able to approve it as the Queen gives them powers to do so. The Privy Council meets once a month – usually around third week of the month.  
Step 4 - Ratification 
The Order is then "made".  The UK can then ratify the UPCA and PPI.  This requires a formal letter drawn up by the Foreign Secretary and an instrument of ratification which states that the UK agrees to be bound by the UPC Agreement and the PPI.  These documents are then deposited with the depository which is the Secretariat of the EU Council.  This process can take a few weeks.

None of the above will be happening until Parliament sits again on 5 September.  This is because Step 1 cannot happen until the JCSI is formed.  Following the recent election, it has not yet been reformed and will not be until September.  If there are no further delays or unexpected hurdles, based on her research it may be that the UK may have ratified the UPC by end of November/early December 2017. This means there could be an early 2018 sunrise period with the Court opening in late spring 2018.  Of course, this does not take into account the matter of Germany (see below).

IP Minister Jo's brother - Foreign
Secretary  Boris Johnson

The Order is UK wide, but there are certain matters covered which touch on devolved matters so have to be dealt with by the Scottish Parliament with a separate order soon to be laid before them.  The process is similar to the above - they will go through the scrutiny, debate, Privy Council process but have time limits (minimum 40 days).

Next Steps

Of course none of this means that the UPC will be up and running soon after, of course, as there is the matter of Germany's constitutional challenge.  The German ratification delay was today dealt with in this message from Alexander Ramsey (Chair of the UPC Preparatory Committee).  He stated that another "layer of complexity has been added" which had "unfortunately...brought a pause to the German ratification of the UPCA and the Protocol on Provisional Application".  He continued:
"It is difficult to get a clear understanding of what is the status of the suit and what it is about, since there is not much information publicly available. The complaint has not been notified to the German Government or the Parliament. According to publicly available information an unnamed individual has lodged a complaint against the bill regarding the German ratification of the UPCA and has also submitted a request for preliminary/emergency measures ordering the suspension of the ratification until the Court has decided on the merits of the case. The Court seems to have informed the President of the Republic informally and as seems to be the usual practice in Germany, the President has decided not to proceed with the ratification until the Court has decided on the request for preliminary measures. 
Under the current circumstances it is difficult to maintain a definitive starting date for the period of provisional application. However, I am hopeful the situation regarding the constitutional complaint in Germany will be resolved rather quickly and therefore I am hopeful that the period of provisional application can start during the autumn 2017 which would mean that the sunrise period for the opt out procedure would start early 2018 followed by the entry into force of the UPCA and the UPC becoming operational.

A more detailed timetable will be communicated on this website as soon as the picture is clearer."
As ever, the IPKat will keep readers updated as to the progress in the UK and Germany.

Hendrix's portrait is original afterall say Paris Court of Appeal

Jimi Hendrix by Gered Mankowitz
Last week, the Paris Court of Appeal corrected the Paris Tribunal's interpretation of the originality condition with regard to photographic works. Or did they? 

At first glance, this decision looks like a classic case of the Court of Appeal setting the record straight on the interpretation and/or application of the law.  But looking at both decisions more closely, it seems that, in fact, counsels were taught a lesson on how to advocate for originality in the context of photographs, by the judges of the Paris Tribunal and Court of Appeal. So counsels, pay attention, copyright advocacy is our plat du jour !

The dispute

The copyright work at stakwas none other than Hendrix's portrait shot by Gered Mankowitz - a UK photographer known for his work with world-famous bands and rock stars such the Rolling Stones, and indeed Jimi Hendrix. 

The dispute lay between Mankowitz and the company Bowstir Ltd (who owns the economic rights in a number Mankowitz' photographs including the portrait) and the French company Egotrade. Egotrade specialises in the sales of electronic cigarettes and accessories. In this context, Egotrade had used one of Mankowitz's portrait in their marketing campaign both online and in their shops located in Paris. 

First instance decision

a modelling cat in total control
of his pose
In March 2014, Mankowitz and Bowstir filed for copyright infringement against Egotrade before the Paris Tribunal. In a decision handed down on 21 May 2015, the tribunal rejected the plaintiff's claim on the basis that Mankowitz's portrait did not satisfy the originality requirement, and as such did not enjoy copyright protection. 

According to the Paris Tribunal, the claimants had failed to point to relevant elements of original expression in their plea, in accordance with the Painer decision of the CJEU. In Painer, the CJEU had concluded that a realistic photograph, like a portrait, may receive copyright protection like any other work so long as national courts could establish that the work is the "intellectual creation of the author reflecting his personality and expressing his free and creative choices in the production of that photograph" (para 99; para 150 (1)). 

The tribunal stressed that the plaintiffs' built their claim around the aesthetic qualities of the portrait instead of referring to the photographer's "free creative choices" in the preparation or production of the shot, failing thereby to show his "personal touch" in the work. A grave mistake as the tribunal considered that the plaintiff's did "not explain who authored the choices regarding the subject's pose, his styling, and overall demeanor." As a result, the decision concluded that "nothing [in this claim] enables neither the judge nor the defendants to grasp whether any of these elements which are essential to assess the originality claimed in the work [...] are the fruits of the author's reflection on the photograph or its subject, whether the work bears the stamp of [Gered Mankowitz]'s personality or that of Jimi Hendrix". "Mr Gered Mankowitz does not allow the defendants to debate on the question of the work's originality, and the judge to assess its relevance." 

The Court had also found the aesthetic merits of the photograph Mankowitz described to be fairly "common-place" for this type of portrait. Nothing in the "angle, black and white, light background destined to highlight the subject, and the lighting" was regarded particularly unusual or original in the common sense of the term, according to the French Supreme Court. 

In deciding so, the Paris tribunal reminded the parties of a fundamental principle of French copyright advocacy: "only the author may identify the elements that evidence his personality, judges cannot supplement his failure to do so". Whilst the tribunal did not rule out that the portrait may be found original, they were not provided with the relevant evidence to confirm so. In the meantime, no copyright protection may be claimed, the claim for infringement ends there. 

Appeal decision

Mankowitz would not get
much out of this cat....

by Romon  Cunha (Flickr)
In their appeal, the claimants made sure to stress that Mankowitz's portrait was indeed the result of his "free creative choices". Mankowitz submitted evidence supporting the claim that he "guided and directed Jimi Hendrix during the shooting and that he had asked him to take the pose featuring on the photograph at stake". Mankowitz also explained that his decision to shoot the portrait in black and white was a conscious choice "to give more depth to the subject and give him the image of a serious musician", among other technical detail about his creative process. 

On the basis of the claim thus re-framed, the Paris Court of Appeal declared Mankowitz's portrait of Hendrix original for copyright purposes. Surprisingly perhaps, the Court of Appeal decision made no reference to Painer - despite the fact that the CJEU's interpretation of originality in that case had been key in the first instance decision. Instead, the Court of Appeal couches the originality condition in rather odd terms by declaring that "the work must present a unique physiognomy evidencing an aesthetic parti pris and reflecting the stamp of personality of its author". The Court then moved to add that "these elements considered together with the fact that Mr Mankowitz is a photographer known internationally, notably for his work with the Rolling Stones, whose photographs enjoy a strong notoriety, establish that the photographic work at stake is the result of free and creative choices performed by the photographer, translating the expression of his personality". 

Whilst the outcome of the decision should be welcome insofar as it seems consistent with CJEU jurisprudence and accepted thresholds of originality in French copyright law... the reference to "aesthetic parti pris" or the reputation of the artist as pertinent by Court of Appeal in their assessment of the work's originality is at odds with well-established jurisprudence denying the relevance of genre, aesthetic merits or quality for the purpose of copyright (see, Cass. crim, 2 mai 1961: JCP G 1961, II, 12242 ; Cass.ass. plen. 7 mars 1986 : D. 1986, 405, concl. Cabannes, note Edelman; RIDA 1986, 136, note Lucas).

However, it should be noted that this not the first time the notion of "aesthetic parti pris" features in the rhetoric of the Parisian Bench. Indeed, in a decision dating back to 14 February 2007 (No 06/09813) the Bench relied on the concept of "aesthetic parti pris" to define the originality condition in relation to the design of Jean-Paul Gautier's perfume bottles known as "Homme" and "Femme" (NB: there seem to be a typo in the report of the case). This Kat suggests that the concept of "parti pris" be read without negative connotation necessarily but be understood as "choice" or "stand", rather than "bias" or "prejudice" - although the decision does not expand on the question.  

Take away points
  • In France, originality in photographic works must be claimed (and pleaded) by making direct reference to the creative choices photographers make in preparation of, during, and after shooting. In this regard, the decisions of the Tribunal and the Paris Court of Appeal comply with the guidelines set out by the CJEU in Painer. Photographers must evidence creative control over the creative process, and show that the model had little to do with the visual results embodied in the photographs. 
  • The originality test in France, at least with regard to photographic works, does not appear to be fully harmonized with CJEU case law, as elements alien to the European court's vocabulary such as "aesthetic parti pris" or the author's reputation are still taken into consideration. For more on the copyright protection of photographs in France see here

Covfefe ... the trade mark?!

The 'covfefe' tweet
What's a 'covfefe'? Even The New York Times has posed this question, after US President Donald Trump used the word in one of his (regular) tweets. 

At least we know that the word is a wannabe trade mark, being subject to several trade mark applications (including in the UK), as Katfriend Oliver Fairhurst (Lewis Silkin) explains. But will these applications eventually succeed?

Here's what Oliver writes:

"While readers would be forgiven for missing it, the 45th President of the United States of America recently took his habit of late night tweeting to a new low. Widely understood to have been an attempt to rail against the negative press coverage he has received, Mr Trump instead complained of the “negative press covfefe” before trailing off mid-sentence.

Given that Mr Trump’s Twitter following appears to be largely made up of journalists and bloggers, the #covfefe hashtag immediately began trending and featuring in ‘memes’ mocking the President.

The word instantly evokes the anti-Trump sentiment of which the President complains. With the English language’s newest word gaining instant fame, it is perhaps unsurprising that various enterprising folk around the world have sought to register it as a trade mark. Applications have been filed in the US, and one person has sought to register COVFEFE in the UK in class 32 (“Ale; Ales; Beer; Beer and brewery products; Beer-based beverages; Beers; Beverages (Non-alcoholic -); Flavored beer; Flavored beers”).

Is it registrable?

The COVFEFE mark is distinctive, it is not descriptive of the goods covered, and it is not obviously objectionable on the grounds of morality or deception or any other rule of law. Indeed, the UK IPO has allowed it to proceed to publication.

Mr Trump (despite the time and content of the above mentioned Tweet) apparently does not and has never drunk alcohol. One could therefore understand why Trump might not approve of this use of the word he (inadvertently) coined simultaneously to (1) promote the sale of alcohol (a product that he does not care for) and (2) mock him (an activity which he positively despises).

However, under what ground could he oppose its registration? It is unlikely he could oppose under section 5 of the TMA (i.e. earlier right, passing off, copyright etc.). He might reasonably argue that the mark, the registration and use of which might be intended to mock him and/or be against his values, was applied for in bad faith. However, such an opposition seems unlikely.

But should it be registered?

The UK craft beer industry has a particularly unique approach to naming beers, and some beer producers might frown at the attempt to monopolise the use of the word. Given Scottish brewer BrewDog’s past mocking of world leaders (see here), they might be disappointed that the name is off the table.

The attempt to register COVFEFE raises an interesting question: where a sign is already associated with a third party, but not a third party who could object to the registration of it as a trade mark, is it right that someone can stake their claim over it to the exclusion of others? Several such terms have been registered in the UK and EU, e.g. YOLO (as in ‘”you only live once”, apparently coined by US rapper Drake) and CHILLAX (the portmanteau of chill and relax, brought into the common British consciousness by former PM David Cameron’s use of the word).

Putting aside for a minute the proliferation of ‘functions’, the main purpose of a trade mark is to link an expression (i.e. a word, sign, sound etc.) to the source of certain goods and services. It seems somehow wrong that a person claim an exclusive right to hijack the pre-existing fame of a word to sell their goods and services. This is particularly so in certain industries (e.g. fashion) where capturing the zeitgeist is often crucial.

Either way, it looks as though the mark will proceed to registration. And this author looks forward to raising a glass of Covfefe and toasting to the enduring allure of trade marks."

Oliver Fairhurst is an Associate in the Brands & IP and Dispute Resolution teams at Lewis Silkin. The views expressed in this article are the author’s own. 

Injunction available after claimed licence fees paid - PPL v JJPB

Should an injunction be granted when the licence fees which were the reason for a claim being issued have all been paid?  What about if further licence fee payments (incurred after the claim form was issued) have not been paid?

Phonographic Performance Limited (or PPL) "licenses recorded music played in public or broadcast and then distributes the licence fees to its performer and recording rightsholder members." It is one of the most regular users of the IP Enterprise Court.

One of its recent targets, Mr Gaughan, runs a bar called the Watkins Folly.  The owner, Mr Gaughan reached a settlement with PPL shortly after service of the claim form. He paid the licence fee for past infringements but: (i) did not set up the agreed Direct Debit to cover payments over the following year and; (ii) continued  to play sound recordings to the public.

Not to be confused with...
After failed attempts to persuade Mr Gaughan to pay up, PPL applied to the court for judgment in default and to lift the automatic stay which applies six months after the period for filing a defence has expired.  The big question was not whether Mr Gaughan was in default (he had not filed a defence) but whether an injunction should be granted in these circumstances i.e. where payment has been made for all the infringements which existed at the time the proceedings were issued.

PPL had run into similar difficulties with JJPB Limited in relation to a cocktail bar called Keystones. Once again these defendants are in default but have paid outstanding licence fees up to the date the claim form was issued and no acknowledgement of service or defence has been filed.

Injunctions were granted against both Mr Gaughan and JJPB because:
  1. an injunction is ordered to stop an infringement happening in the future on the basis of a the existence of a threat and intention to do that;
  2. because the injunction looks to the future and is based on a threat and intention to infringe, generally the fact that a defendant has infringed in the past is sufficient to establish the necessity of an injunction;
  3. it can be appropriate to take account of events after the claim was issued - the position on the date of issue is not the whole story;
  4. both Defendants were continuing to infringe but did not have a licence so it is appropriate for the court to grant an injunction; and
  5. requiring fresh proceedings would elevate form over substance and simply add to everyone's costs.

Tuesday, 27 June 2017

Trademark application for the devil's horn withdrawn

Distinctive enough?
Last week, the United States Patent and Trademark Office notified the withdrawal, by express abandonment, of Gene Simmons's trade mark application for the hand gesture known as the devil's horns. This application for the registration of the hand gesture was keenly followed by this Kat who relishes reading positions and opinions of intellectual property offices or courts on unusual marks. 

Spock and cat unimpressed at Barack's
diluting use of 'their' sign.
The application sought to register a gesture-based sign described as "a hand gesture with the index and small fingers extended upwards and the thumb extended perpendicular" in relation to the international class 41. This class covers "services having the basic aim of the entertainment, amusement or recreation of people" and the "presentation of works of visual art or literature to the public for cultural or educational purposes". The application had further specified the types of services targeted by the application as "entertainment, namely, live performances by a musical artist; personal appearances by a musical artist". 

An earlier post dedicated to Simmons's trade mark application reported on a number of uses of the so-called devil's horn (also known as 'I love you' in sign language) recorded prior to Simmons's alleged first performance of the hand gesture. These examples of prior use depicted a rather bleak picture of Simmons's chances to secure trade mark protection in relation to the sign. Indeed, it seemed very likely that the US Patent and Trade Mark Office would have rejected the application for lack of distinctive character. Nevertheless, a positioning of the US governmental body on the registrability of a hand gesture in principle would have been most interesting. Indeed, one could think of other hand gestures enjoying greater distinctive character (inherent or acquired) which may, one day, find their way to the US Patent and Trademark Office's desk. 

We will have to wait for another application to see whether the boundaries of trade mark law can be pushed a step further by adding hand gestures to the category of unusual marks, next to smells, colors or sounds. 

Jo Johnson to continue as IP Minister

Jo Johnson - looking forward
to a lot of IP stakeholder engagement
this year 
From Kat friend, James Thomson at the UK's Intellectual Property Office, comes news that late last night it was confirmed that Jo Johnson will continue as Minister responsible for IP.   James's email states that:
"The Department of Department of Business, Energy and Industrial Strategy (BEIS) ministerial portfolio areas have now been finalised.
Jo Johnson continues as Minister of State for Universities, Science, Research and Innovation, with responsibility for intellectual property. Other responsibilities include industrial strategy, science and research, including the creation and governance of UK Research and Innovation (UKRI), agri-tech, space and innovation.He will also retain responsibilities his portfolio within the Department for Education including universities and higher education reform, higher education student finance and education exports. 
Rt Hon Greg Clark MP remains Secretary of State for Business, Energy and Industrial Strategy and Lord Prior of Brampton will continue to lead on all BEIS issues in the House of Lords."
What a year to be an IP minister - you are going to be very busy, Mr Johnson.  Good luck!

Monday, 26 June 2017

Last Chance: AIPPI UK Garden Party this Wednesday

If you start talking about Brexit
on Wednesday, you will soon find the
AmeriKat in a nearby lavender bed...
The AmeriKat remembers her first AIPPI Garden party almost 10 years ago where, as a tiny kitten and encouraged by Kat Jeremy Phillips, she pawed across the lawn of Middle Temple where nameless faces and imposing judges were sipping their champagne.  Overwhelmed and slightly intimidated, she made her way to a table of lawyers where she was warmly welcomed by Arty Rajendra (then Rouse, now Osborne Clarke) who then kindly introduced the AmeriKat to the great and good of the London IP community.  

The annual Garden Party - traditionally held at Middle Temple - is a unique event where, in the spirit of AIPPI,  law firm allegiances and competition is left at the door and our profession unites to celebrate the achievements of another exciting IP year.  It is also a fantastic opportunity for more junior IP lawyers to start networking within the community (as the AmeriKat once did).

Save for a change of venue to the roof terrace of Allen & Overy in Spitalfields, this year should be no different.  Despite a glum forecast, the bright lights of the City will shine through as we celebrate another end of term of exciting IP litigation/deals and look forward to an ever changing landscape. And if the chatter about Brexit and IP starts to stress you out, the nearby lavender plants and pianist will help calm you down.

This year's party is being held this Wednesday (28 June) from 6-9PM (but in keeping with fashion there will bound to be after-hours dinners and drinks to join).  Registration is £35 for members and non-members.  To register click here.  

UPC Order on Privileges & Immunities placed before Parliament today

From the UK IPO's Unified Patent Court Taskforce, comes this e-mail update about the Unified Patent Court (Immunities and Privileges) Order 2017:
Secondary legislation in the form of an Order on Privileges and Immunities for the Unified Patent Court were laid in Parliament under the International Organisations Act 1968 today. Separate legislation will be laid in the Scottish Parliament in due course.  
This is the final legislative step in the UK’s ratification of the Unified Patent Court. The Orders implement the Protocol on Privileges & Immunities and gives the Unified Patent Court its legal personality in UK law. The Orders are affirmative orders, which means they will be debated in each House of Parliament. Separately the Scottish Order will be debated in the Scottish Parliament. They will also require Privy Council approval. Once this legislation has been passed the UK will be able to formally ratify the UPC Agreement.  
The Preparatory Committee of the UPC recently confirmed that the provisional timetable for entry into force (1 December 2017) could not be met. The Preparatory Committee is monitoring progress and will announce a new opening day in due course.
With Germany's recent constitutional challenge (as reported by the IPKat here) and Parliament being distracted by the recent UK elections and Brexit negotiations, do not hold your breath for much UPC activity before the House rises on 20 July 2017. It's summer, after all...

Celebrate 120 years of AIPPI in Sydney

The AmeriKat has never managed to get her paws to Australia.  The farthest she has ever been south of the equator was her trip to Rio two years ago where her sightseeing consisted of a blurry glance of Christ the Redeemer on the way back to the airport.  But this year, she gets to make the trip to sunny Sydney - the host city for the 120th AIPPI Annual Congress from 13-17 October 2017.  .

This year's program has something for everyone, with panel highlights including:

  • Sufficiently plausible -  where a panel of experts will address the IP headline grabbing issues of plausibility in the life science context - is it really a problem, how can the challenges be addressed, is the "patent promise" being broken?  
  • The best kept (trade secret): a real life scenario  - guided by experts joining us from across the globe, the audience becomes adviser as a rogue ex-employee traverses the globe with a company's valuable trade secrets in tow - will they catch him in time?
  • Injunctions:  innovator v innovator - where, in light of Amgen v Sanofi, a panel will debate the appropriate relief where innovators compete in the same field and infringement is found.
  • Digital health - your health on (the) line - where a panel  will focus on the both the technology and the related IP issues and provide examples of where IP has been successfully utilized in this new and exciting field. One aspect which will be considered is how IP has enabled startups and SMEs to gain a foothold in the healthcare sector, which has previously been dominated by larger, more-established companies.
  • The business of IP - Big Data, big issues - where a session will explore the relevance and application of current IP laws to Big Data, whether they meet industry needs, and whether there are any alternative models.
  • The middleman - intermediary liability - a session which will discuss intermediary liability in the digital world in key jurisdictions, including the availability of site blocking injunctions and address the practical effects and inherent limitations of such injunctions in the digital era.
  • How much for your FRAND? - where experts will consider Mr Justice Birss recent FRAND decision in Unwired Planet, as well as cases from other jurisdictions, and provide an overview of royalty rate determination issues for SEPs, related issues for standard setting organizations (SSOs), approaches adopted by other entities, such as patent pools and nonpracticing entities (NPEs), and also touch on the use of arbitration to resolve royalty rate disputes.

With a program like this and the social and cultural events that make AIPPI Congresses unique against the fabulous Sydney backdrop, that 40 hour journey will seem like a walk in the park! If you cannot attend, do not worry - the IPKat will be reporting live from the seminars with a pack of guest Kats and kittens.

The Early Bird discount expires tomorrow so better get to registering - click here.  Participants under 36 years of age benefit from a 50% discount.   The AmeriKat and her friends will see you there!

Event invitation - The Pirate Bay communicates to the public: are there any more online infringement questions to be answered?

Kats discussing EU copyright law
while drinking some tea
With its recent decision in Ziggo, C-610/15 (The Pirate Bay case, here), the Court of Justice of the European Union (CJEU) has clarified that a platform like The Pirate Bay might be regarded as primarily liable for unauthorised acts of communication to the public within Article 3(1) of the InfoSoc Directive.

But what are the broader implications of this much-awaited judgment, both in relation to the construction of this exclusive right, and the liability of online platforms for third-party infringements?

The IPKat is joining forces with Simmons&Simmons to organise a panel discussion devoted to analysing the judgment, as well as its significance for both EU copyright law and the policy discussion currently unfolding in Brussels [yes, the value gap proposal].

Hosted and moderated by IP partner Darren Meale at the London offices of Simmons&Simmons, the panel will be composed as follows:
Where? Simmons&Simmons, London
When? 18 July 2017
Time? 17:30 for 18:00 start

Attendance is free, but registration is required. Hurry up and register here!

Re-using Amazon item numbers (ASINs) for similar goods can constitute trade mark infringement and passing off

To encourage consistency across the site and make the sales process as easy as possible for consumers, Amazon encourages sellers to use pre-existing generic ASINs (or Amazon Standard Identification Numbers) where possible.

A recent IPEC case, Jadebray  & Noa and Nani v Clarke-Coles [2017] EWHC 1400 considered whether this reuse could constitute trade mark infringement and passing off in certain circumstances.

What happened?

Noa and Nani sold flagpoles on in three different packages with varying numbers and types of flags.  Each variant was sold under a separate listing with a different ASIN.  Each listing was identical apart from the total price. The names of the product listings were all descriptive, e.g. "Aluminium Flagpole 20ft with Union Jack Flag" underneath each listing it identified the flagpoles as "by Design Elements".

Jadebray owns a registered trade mark for the following device which it licensed to Noa and Nani:

Clarke-Coles used the same listings to sell its own flagpoles which included the reference to "by Design Elements".  These flagpoles matched the description but were made to a different design and were broadly the same quality.  The big difference was that Clarke-Coles undercut Noa and Nani leading them to effectively lose all sales.

Was use of the listing trade mark infringement?

Amazon suggests ASINs and related listings but HHJ Melissa Clarke found that there was no requirement for sellers to use those listings and it was up to Clarke-Coles to assess the specification to determine whether the product was the same and if not create its own listing.

The average consumer of flagpoles was identified as "a considered one, rather than a whimsical or impulsive one".  As a result "he is likely to pay close attention to all of the information on the listing" including the further details and customer reviews.

Rather than simply a "shop name" the judge held that the reference to "by Design Elements" was use of a sign which acted to indicate the origin of the goods.  This was because the average consumer would have taken them as coming from the specified manufacturer of the product rather than simply the person who created the listing.

Double identity under section 10(1) Trade Marks Act 1994?

The Claimant argued double identity on the basis that the differences between the device and "Design Elements" were so insignificant to the average consumer that they would go unnoticed per LTJ Diffusion.

HHJ Clarke concluded that:
[72] I am not satisfied that the sign complained of and the Trade Mark are identical because:
(i) the words 'Design Elements' within Trade Mark, which are in my judgment the dominant elements of the mark, are graphically represented in a stylised font which is not an everyday, normal typeface;
(ii) the Trade Mark also has a blue flag device above the letter 'g' in design which is a distinctive albeit not dominant feature;
(iii) the Trade Mark separates the words 'Design' and 'Elements' with a space, whereas the sign complained of removes the space between them and so reduces the identity between the Trade Mark and the sign.
The distinctive font and the blue flag device are elements which are not represented at all in the sign complained of. In particular, the absence in the sign of the jaunty blue flag device of the Trade Mark is, in my judgment, not a difference which is likely to go unnoticed by the average consumer. 
[73] However I am satisfied of their visual similarity because:
(i) the Trade Mark and the sign complained of are composed of the same two words using the same letters in the same order;
(ii) although the sign removes the space between the two words of 'Design' and 'Elements', unlike in the Trade Mark, the fact that they are two separate words is visually maintained by the capitalisation of the first letter of each word; and
(iii) there is no great degree of variation in the stylised version of the words used in the Trade Mark, which are easily recognisable in a highly legible, albeit unusual, font.
Likelihood of confusion?

The judge found that there was a likelihood of confusion on the part of the average consumer because:
  1. the high degree of similarity of the sign complained of to the Trade Mark, 
  2. the identity of the goods, 
  3. the distinctiveness of the Trade Mark to repeat customers, 
  4. the careful consideration that the average consumer will have given to the information on the Listings before making his purchase, 
  5. the real possibility of there being unreported actual confusion, and 
  6. the likelihood that the average consumer will consider that the Product emanates from the stated manufacturer, DesignElements, or is economically linked to that source. 
Although there was no evidence of evidence of actual confusion over a four year period and "the lack of familiarity with the trade mark" for the average consumer. This did not outweigh the other factors.


There was insufficient evidence that the Design Elements name had sufficient reputation amongst a significant part of the relevant public.

Passing off

HHJ Clarke easily found passing off.  Goodwill and damage were quickly identified.  The main issue concerned misrepresentation.
[99] The test is that in the Jif Lemon case, per Lord Oliver at paragraph 407: "… is it on the balance of probabilities likely that, if the appellants were not restrained as they have been, a substantial number of members of the public will be misled into purchasing the defendants' product in the belief that it is the respondents' product?" 
[100] I have no doubt that they were. The Listings state that the 20ft Aluminium Flagpoles the consumers are considering purchasing are 'by DesignElements'. If they click into the further information section, they will be told they are considering purchasing a flagpole manufactured by DesignElements. The photograph on the listing is of a DesignElements flagpole, which I remind myself is materially different in design to that of the Product, although it is not clear if those differences are visible from the photograph. Those potential consumers, when they clicked to buy the Product and became actual consumers, must have assumed that they were buying, and would receive, a DesignElements flagpole. They did not. I am satisfied that use of the Listing to sell the Product is a misrepresentation by the Defendant amounting to a deception.

Because the quantum of the lost Amazon sales was easy to establish, the judge considered it at the same time.  The judge wielded a "broad axe" and assessed the loss of profits at £14.45 per unit x 1,755 units i.e. £25,359.75.

You can have more fun with flags here.

Saturday, 24 June 2017

BMW wins appeal over use of trade mark to promote spare parts business

The BMW "Roundel"
Spare parts and intellectual property have a long and complicated history, particularly as far as the car industry is concerned.  A recent Court of Appeal decision has swung the pendulum back a bit in favour of rights holders.

BMW v Technosport London Limited [2017] EWCA Civ 779 is an appeal from the IP Enterprise Court, England and Wales' specialist IP court which handles relatively simple or low value claims.

What had Technosport been doing?

BMW alleged that Technosport had been using three of its registered trade marks: the BMW word mark, the BMW "roundel" and the "M logo" in the following ways:
  1. on a facia board on the exterior of its former business premises;
  2. in the interior of its new business premises;
  3. on business cards;
  4. on its website;
  5. on its official shirts together with the word "Technosport";
  6. on Twitter, including in the Twitter handle @TechnosportBMW; 
  7. on the rear of its van together with the word "Technosport".
The IPEC judge at first instance decided that uses 1-4 infringed BMW's trade marks but uses 5-7  did not.   Uses 5-7 were referred to as the "Technosport BMW signs".

The M logo
Informative or misleading use?

Some use of a third party sign can be legitimate.  In Case C-63/97 Bayerische Motorenwerke AG and another v Deenik [1999] ETMR 339, the CJEU was asked whether advertisements such as "Repairs and maintenance of BMWs", infringed a BMW trade mark.

The CJEU responded at paragraph 64 that:

"...Articles 5 to 7 of the directive do not entitle the proprietor of a trade mark to prohibit a third party from using the mark for the purpose of informing the public that he carries out the repair and maintenance of goods covered by that trade mark and put on the market under that mark by the proprietor or with his consent, or that he has specialised or is a specialist in the sale or the repair and maintenance of such goods, unless the mark is used in a way that may create the impression that there is a commercial connection between the other undertaking and the trade mark proprietor, and in particular that the reseller's business is affiliated to the trade mark proprietor's distribution network or that there is a special relationship between the two undertakings."

The Court of Appeal summarised this as:
  • informative use (i.e. "my business provides a service which repairs BMWs and/or uses genuine BMW spare parts) = ok
  • misleading use (i.e. "my repairing service is commercially connected with BMW") = infringement
It cannot be assumed by the average consumer that if the BMW mark is used next to a trading name that automatically means that the business is authorised but in this instance, the BMW mark was incorporated into the trading name i.e. "Technosport BMW" and therefore this was beyond mere informative use and carried the risk that it would be understood as misleading use. 

The van
The test in practice

Applying this test, the Court of appeal considered that:
  1. The use on the shirts - because there was no context to indicate that this was merely informative use, it conveyed the impression of authorisation by BMW and was therefore misleading.
  2. The van - there was an obvious risk that the average consumer would take the use as indication of a commercial connection because (i) there was nothing to indicate that it was informative use e.g. using "BMW repair specialist" separately from the word Technosport, (ii) the average consumer was unlikely to examine the website address and consider that because it didn't include the word BMW, Technosport was the company name and TECHNOSPORT-BMW was used in an informative sense, (iii) for services, the name of the business is much more readily taken to be use in relation to the services offered, (iv) the use of a trade mark within a trading style and without further explanation is naturally taken by the average consumer as an identifier of the business and services it provides.
  3. The Twitter account - whilst not the strongest point, it was another example of giving the impression of authorisation and not mere informative use. 
This decision provides some much needed clarity and a clear test for application across the spare parts and repairs world.  It seems perfectly reasonable that if you want to use someone's mark to describe the services you can offer you make it clear that the services are not authorised or otherwise commercially connected with the company whose items you are offering to repair.  

By Rosie Burbidge

Saturday Sundries

WIPO Roving Seminar

There is still time to reserve a place at the Italian Roving Seminar on WIPO services, which will take place in Bari on 5 July 2017. There is no charge for registering or attending. In addition to the presentations and panel discussions, there will be opportunities for networking during the coffee break and lunch break. [Please note, these events and all documentation will be in English]

Additional information, such as the seminar’s program and a link to the registration page, can be found on the WIPO site herePlease find attached the flyer for this event. 

Melting weather,
the passion for IP...
* New blog on the scene

Bart Van Besien started a new blog on IP rights


The online registration for the EIPTN 2017 conference at LUND UNIVERSITY on 28-30 June 2017 is now open via the conference webpage. To register to attend please go to here.

* Job opportunity

The Board of the British Copyright Council is looking to recruit a Director of Policy and Public Affairs: see details here. The role is a part-time one and on a contract basis rather than employee.

A new IBIL Scholarship opportunity

This is to fund a PhD student at UCL Faculty of Laws to undertake research in a field relating to intellectual property law. Details can be found here.

Debate on IP law in post-Brexit Britain

On Thursday 29 June at 6:00pm, Collyer Bristow will host its annual IP Debate at its Bedford Row art gallery. This year’s Motion is “This House believes that IP law in post-Brexit Britain will benefit from leaving the binding jurisdiction of the ECJ”. Proposing the Motion is Martin Howe QC, supported by Dr Gunnar Beck, Reader in law at SOAS. Opposing the Motion is Prof. Lionel Bently of Cambridge University and Prof. Tania Aplin of KCL. The Debate will be chaired by Sir Richard Arnold. A full house of 70 attendees have registered already but there is some standing room available for anyone who would like to attend but has not yet registered by responding to A report on the outcome of the Debate will follow.

Does Size Matter? What can firms (large and small) do to welcome LGBT people?

Creating a welcoming atmosphere can be crucial to help employees and colleagues be themselves in the workplace. Kindly hosted by our friends at Fieldfisher, with speakers Jay Wetterau and Mathieu Pinot Cardoso, Diversity and Inclusion Professionals at Fieldfisher, and Rhiannon Turner and Rachel Wallis, partners and patent attorneys at Greaves Brewster. Over half the tickets are already sold, so don’t delay – sign up now!

When: Tuesday 18th July, 6pm arrival for a 6.30pm start. Event finishes at 9pm.
Where: Fieldfisher, Riverbank House, 2 Swan Lane, London EC4R 3TT

Brought to you in association with IP Inclusive, working to improve diversity and inclusion in the IP profession. Read more about IP Out here (and sign up to our mailing list).

* Conference 

The Rotterdam Connection
When: 23, 24, 25 September
More information can be found here.

Ventsi Stoilov reports ...

That the General Court of the EU ruled in Case T 638/15 Alcohol Countermeasure Systems (International) Inc. v EUIPO. The case concerns an invalidation procedure against an EU trade mark ALCOLOCK, which was based on an earlier UK trade mark ALCOLOCK, in light of Article 53(1)(a) in conjunction with Article 8(1)(a) and (b) EUTMR.

The Board of Appeal decided that the applicant proved a genuine use of its mark on the territory of the UK. The reasons behind this conclusion were that the owner of the earlier mark submitted sufficient pieces of evidence. One of them was the fact that applicant acted as a licensee using a similar mark for identical goods. In addition to that, the applicant showed a selection of invoices, accompanied by purchase orders and email requests, a selection of press articles and advertisements, together with invoices for placing them.

Although the invoices revealed sells for only 350 breathalyser devices during the relevant periods, according to the Board this was sufficient taking into account the nature of these products.

The General Court upheld this decision.

Photo courtesy of Miss Ana Ramalho.

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