Intel dilution decision

Well than as promised here's a slightly more in depth look at the decision in the Intel case.

Background

Intel (that's the computer chip makers) sued CPM (a marketing and telemarketing company) over the registered trade mark 'Intelmark'. 'Intelmark' is registered for marketing and telemarketing services, Intel on the otherhand have their name registered for computer chips (and other related products). Intel's claim was that 'Intelmark' caused confusion with their own mark, despite it's use on very different goods / services. Intel opposed the application but the UK IPO found in CPM's favour, as did the High Court. Intel then appealed to the Court of Appeal who referred to the ECJ for clarification as to the extent of which trade marks in different fields could infringe each other.

Trade Mark Directive

Article 4(4)(a) provides that a mark can be prevented from registration or declared invalid if it is identical or similar to an earlier mark in a different class as long as this earlier mark:
"has a reputation in the Member State concerned and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark,"

The ECJ was asked how a link between the marks could be made and what would be considered as unfair advantage or detriment.

The Ruling

As you may or may not be aware when cases such as this are put forward to the ECJ it does not itself decide for example if 'Intelmark' is an infringement, instead it makes a decision as to the questions asked of it. It is then down to the referring court to apply the ECJ's decision.

The ECJ determined that in deciding whether there was a link between two marks, and whether there was unfair advantage or detriment a global assessment should be made, taking into account all relevant factors. In order to show a link it is only neccessary for the latter mark to bring to mind the earlier mark "for the average consumer, who is reasonably well informed and reasonably observant and circumspect,". Thus a huge reputation for certain goods is not enough to imply a link between marks. "Proof that the use of the later mark is or would be detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future."

So seemingly the ECJ has put the onus on the earlier brand to somehow show that they suffer economically because of this latter brand, but the question that is being discussed around the IP blogs is how is this done? How can it be shown that particular lossed are due to this and not for example the credit crunch? Or a change in interest rates etc. Another worry is that this ruling leaves it open for people to go and register famous trade marks in different classes (Nike for food perhaps?), maybe this is a ploy by the ECJ to raise revenue for OHIM by forcing brand owners to attempt registration in all classes?

European trade marks in a virtual world

Good news, my dissertation is now available for download from the widely respected Class 46 blog here. Or if you can't be bothered to visit the site then just click the title of the dissertation below to download it:

“Ownership of Intellectual Property in the Virtual World its real world effects and justification: focusing on UK/EC Trade Mark Law”

I look forward to hearing any views you may have on it.

Intel decision at last

The Intel decision is in! It seems like ages ago I was sat in a LLM trade mark class listening about how important the ruling would be and here it is. Now I'm not in the best of moods to give a full run down of the decision (pretty sure I just failed interviewing and advising on my LPC), but for now basically the ECJ found in favour of 'Intelmark' in that 'Intel' needed to show more than just a similar mark in order to prevent 'Intelmark's registration. The ECJ decided that 'Intel' would have to show that they suffered damage as a result of 'Intelmark' or that it was reasonably forseeable that they would (quite simply how the hell would you show specifically that you suffered damage because of one particular brand?).

As I have said I am in no mood for a full run down now but I promise I'll look at it when I'm in a better frame of mind (tomorrow). But both IPKat and the Times have already looked at it so if your in a rush peruse them!

Until tomorrow.

Copyright duration for performers just not enough

Musicians are kicking up a storm over what they see as inadequate copyright durations (see BBC). A video message on behalf of 38,000 UK musicians has been sent to Gordon Brown, at present performer's copyright run's out after 50 years (unlike the composer's which is 70 years after death). This means that session musicians that performed on famous songs in the '60s will soon lose their royalty payments. The EC is backing proposals for a 95 year duration for performers and producers.

The article goes on to say how skint musicians are (so am I!!!!) and that they deserve more. IP Freely supports their campaign and see's no real reason not to increase the protection period to 95 years (well 70 at the least). I mean look at the poor chaps in the picture they obviously haven't bought any new 'threads' (I'm ghetto) for many a year.

But the Department for Innovation, Universities & Skills says: "We are sympathetic to the European Commission's goal of improving the situation for performers but we don't believe that the current proposal achieves this aim...the UK believes the proposal is too complex and most of the benefits will go to the record companies rather than the performers...the UK is still considering the detail of this proposal and it will consider future alternatives that come forward."

Naughty Apple

So Apple are getting sued over the iPhone. The Telegraph reports that EMG Technology; who own a patent which covers the technology that reforms html to xml for the purposes of resizing web pages for mobile phone screens; have issued a claim against Apple for ingringing their patent through the iPhone.

According to EMG's legal advisor:
"Web sites are just beginning to develop their mobile sister sites for fast and easy navigation..for example, to access NBC on a computer the URL is NBC.com. For the mobile site on the iPhone, the URL would be m.NBC.com. The '196 patent covers the simplified interface of reformatted mobile content to provide optimum viewing and navigation with single touches on a small screen."

Now I am not a specialist in the mobile arena (perhaps a reader could help me out here) but surely there are a large number of businesses out there doing the same i.e. i'm pretty sure my LG Viewty does the same as this, how come they chose Apple to sue? Also is this not an 'obvious' step? surely when internet for a mobile was thought of it was also thought 'just a minute, the screen is tiny and a web page is massive, how the hell will we get round this?'.

IP Freely remains unconvinced.

Second Life jurisdiction

Blimey it seems that Second Life is featured on the Guardian website every day! Have a look at this one. Not much to be said as of yet but it will be extremely interesting when a decision is made, the issue of jurisdiction is one of the main questions that needs to be addressed in relation to virtual worlds. As such any decision could be fundamental in the future of these 'Worlds'.

Second Life no more?

So, the Guardian reports that Reuters reports (do you see the chain?) that they have pulled out of the virtual world 'Second Life'. This seems to be a recent trend as whilst the 'world' (I refrain from calling it a game) gets a lot of publicity through apparently "newsworthy" stories i.e. adultery there is an increasing number of businesses that are leaving. It seems they got into the 'world' thinking it was the .com boom all over again and have now found out that it is actually really difficult to make money and have left.....So is this the end for virtual worlds?

NO

According to a Reuters reporter they left Second Life because:
"I wasn't in Second Life to play, I was there on assignment for Reuters. The login server would crash. I'd try to reach sources, but Second Life's IM window would hang on "waiting" all day when trying to figure out who was online. "Teleports" -- the ability to move from point to point anywhere in Second Life -- would stop working and I'd get locked out of my own office. These weren't one-offs, they were my daily, first-hand, happens-all-the-time experiences. For all its bugs, Second Life is tolerable as a playground, but enterprise users will never and should never use it for business. Re-focus on the core mission: Keeping the hobbyists happy and converting potential recruits into hardcore (read: fees-paying) users."

I can see the 'Second Life Boom' (TM of IP Freely) ending quick sharpish unless they sort out the technical issues but quite simply it's success along with World of Warcraft etc have show that there is potential and opens the market for other better thought our 'worlds'.

Lindt to lose bunny mark?

One of IP Freely's favourite site the IP Kat has an interesting piece on the Lindt bunny trade mark dispute (original article here). For those of you not aware of the dispute (or the bunny) basically Lindt & Sprungli AG make chocolate bunny's (i.e. rabbits) wrapped in gold foil with a bell tied with red ribbon around their neck (see photo over there> it's the one on the right). Lindt claim that they obtained rights in the bunny "honestly and fairly" and should therefore they should be allowed to rely upon their trade mark (it is registered in Europe) to prevent competitors from making copies.

All's well so far, but Austrian company Hauswirth GmbH have started making chocolate bunny's (in fact is it not bunnies?) wrapped in gold foil, with a bell tied with red ribbon around their neck (see photo, it's the one on the left). Lindt naturally tried to enforce their rights only for Hauswirth to claim that Lindt had obtained these rights in bad faith.

According to Lindt's lawyer: "Here is a product that's been around for some 50 years and sold about 20 million times in the EU in 2000, when we applied for the trade mark...the company acted in good faith when it sought the right to exclude the use of that same product by others".

So what happens now? Basically one of two things either the court will find in Lindt's favour and Hauswirth will have to stop making the bunnies (yeah i've changed from bunny's cos this one looks better) or they find in Hauswirth's favour and remove Lindt's trade mark. Now this does not neccessarily mean that you will not see Lindt bunnies anymore but that there may be other similar looking chocolate bunnies out there. Unfortunately we won't find out for a year anyway!

Exhaustion of rights: are the gates of Europe shut for parallel imports

The main value of a trade mark is arguably its nature as an identifying factor for the goods or service to which it is applied. It can function as both an indicator of origin and also an indicator of other favourable aspects of a product, such as quality and good value. Because of this the mark can become the focus for the so called ‘goodwill’ built up in a product or a service, an integral part of this is the presentation of the product for sale. As such the trade mark owners will want to be able to control its method of distribution for example the type and quality of shop that stocks his products.

Section 9(1) of the Act provides that:

“the proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed by use of the trade mark in the United Kingdom without his consent”

This would indicate that the trade mark owner is well within his rights to prevent his products being sold in places he views as not being commensurate with the quality of the product.

But when the products (and thus the trade mark) are genuine items (sourced from the rights holder) and not copies made by other manufacturers, the concept known as exhaustion of rights comes into play. Section 12 of the Act (article 7 of the Trade Mark Directive) states:

1. A registered trade mark is not infringed by the use of the trade mark in relation to goods which have been put on the market in the European Economic Area under that trade mark by the proprietor or with his consent.
2. Subsection (1) does not apply where there exist legitimate reasons for the proprietor to oppose further dealings in the goods (in particular, where the condition of the goods has been changed or impaired after they have been put on the market).

The principle of exhaustion of rights stems from the wider principles of competition law and freedom of goods and services as set out in the EC treaty. In general Articles 28, 29 and 30 prohibit the prevention of the free movement of goods or services in the EEA, Article 30 does though provide a get out where restrictions can be justified on special grounds, also Article 295 recognises the rights of intellectual property proprietors. Trade mark laws must be balanced with these free movement principles.

At a basic level if Trader A (the rights holder) puts his product on sale within the EEA his rights would be seen as being exhausted and he could not stop trader B from selling the same within a different country in the EEA. By putting the goods on the market under the trade mark somewhere in the EEA then the owner has exhausted his rights in the trade mark. As always in law there are exceptions to the rule, these are referred to in S12(2) of the Act with the following being widely accepted as the main reasons enabling a mark owner to prevent its products being resold by other traders:

• Where the goods are altered – this will often be the case where for example additions are made to a product in order for it to be compatible with the national market in question.
• Where the mark itself is altered – where for example the mark owner uses a slightly different mark depending on the country.
• Where the packaging of the goods is changed in whole or in part.
• Where the method of advertising used by the reseller is not in keeping with the value and status of the mark.

As stated above the principle of exhaustion is well established in Europe but confusion reigns as to its wider relevance. Prior to the passage of the directive, the question of international exhaustion was one decided by individual member states countries such as Germany, Austria and the Benelux countries all historically had international exhaustion. This had the affect that trade mark owners would not have been permitted to oppose the resale of products which had been put onto the market with their consent, any where in the world.

Through various cases the ECJ has ensured that trade mark owners rights are protected and are neither weakened or undermined . The first of these landmark cases is that of Silhouette . Draft versions of the trade mark directive did not feature the words “in the community” thus there was uncertainty as to whether ‘regional exhaustion’ or ‘international exhaustion’ was intended, even when the actual directive was released complete with the phrase “in the community” there was uncertainty as to whether this was a minimum level of exhaustion or required community exhaustion only and did not allow international exhaustion . This question was answered very clearly in Silhouette, in this case the ECJ held that:

“national rules providing for exhaustion of trade mark rights in respect of products put on the market outside the EEA under that mark by the proprietor or with its consent are contrary to Article 7(1) of the (Trade Mark Directive)”

This was at the time accepted as being consistent with the aims of the directive in terms of harmonising the laws and protecting rights holders. It had the effect that if genuine trade marked goods are put for sale outside of the EEA, any subsequent importation and sale of them within the EEA will amount to an infringement of the trade mark unless consent has been obtained from the rights holder. It removed any lingering doubt over whether or not individual member states could provide for exhaustion in their national law.

Unfortunately whilst the ECJ clarified one point i.e. the regional nature of exhaustion they also brought about a new point of confusion namely the issue of consent, i.e. what amounts to consent to import goods into the EEA. When is a trade mark owner deemed to have consented, is it an implied assumption or must it be expressed. This new issue was dealt with in the case of Sebago ,as per Silhouette the defendant argued that the importation of genuine products into the EEA did not affect the function of a trade mark as an indication of the origin and quality of the product . The Advocate General sympathised with this view but stated that the Trade Mark Directive clearly prevented international exhaustion. The ECJ held that: “for there to be consent within the meaning of Article 7(1) of that directive, such consent must relate to each individual item of the product in respect of which exhaustion is pleaded”

A trade mark owner cannot be deemed to have consented to the parallel importation of its branded goods from outside of the EEA just because it had itself sold the same goods within the EEA.

The biggest twist in this saga came in the UK Davidoff case. Laddie J dealt a blow to trade mark owners stating:

“Silhouette has bestowed on a trade mark owner a parasitic right to interfere with the distribution of goods which bears little or no relationship to the proper function of the trade mark right”

He went on to assert that where the proprietor:“Has agreed, expressly or otherwise to such entry, or he has, directly or otherwise, placed the goods in the hands of a third party under conditions which give the third party a right to distribute and onward sell them without restriction” He will be deemed to have impliedly consented. Explicit restrictions (according to Laddie J) must be imposed on the purchaser at the time of purchase.

The High Court held that Davidoff could not prevent the sale of goods in the United Kingdom if it had not expressly prohibited the sale of these goods in the United Kingdom when it first put the goods on the market. This case was referred to the ECJ for further ruling, it came up for consideration with the joined cases brought by Levi Strauss against Tesco and Costco . The ECJ’s decision in these cases shifted the position on parallel imports back in favour of the trade mark owners. It held the following:

1. Implied consent of a rights holder who has placed his products on the market outside of the EEA to the subsequent sale of the same in the EEA, can only be found if the rights holder has renounced his right to oppose such marketing.
2. The burden of proof is on the parallel importer to prove that the rights holder has consented.
3. Consent cannot be automatically implied just because the rights holder has not informed purchasers of their opposition to such re-sale or because there is no statement on the product forbidding such re-sale or because there is no contractual restriction forbidding such re-sale.
4. It matters not if the parallel importer has no awareness of the right holders objections to re-sale within the EEA.

It would appear that for now at least the gates of fortress Europe are shut to parallel imports, the cases of Silhouette, Sebago and Davidoff seem to have made certain of this. But doubts remain about exhaustion and it has been suggested that the mood is turning against trade mark proprietors and price differentials, with the increase in use of the internet the world is effectively becoming smaller and people have easy access to details of pricing in other countries, these consumers can see that they could buy products in for example China for a great deal less money. This will increase pressure on the legislators to change the existing laws. In fact the European Commission recently released a paper called “Possible abuses of trade mark rights within the EU in the context of Community exhaustion” presentations of this ascertains that there are no deficiencies in the current legal provisions to possible abuse of trade marks in the EU but the mere fact that the paper was commissioned suggests that questions remain. Even the Advocate General seemingly desires change, in both Silhouette and Sebago he affirmed that the ECJ cannot:

“Stand legislation on its head in order to achieve an objective, even were it to be considered desirable”

There have been suggestions that international exhaustion be provided only for certain products for example pharmaceuticals and sound recordings but according to the European Commission report of 1999 the actual price benefits to consumers would not be as high as one would imagine an estimate of only 2%. For now though it appears that the future of exhaustion is left to the politicians, out of the 16 member states 8 are known to be in favour of international exhaustion (the UK being one of them) 5 are against and 3 are undecided . Whilst a majority is adequate to amend the directive a unanimous vote would be necessary to amend the regulation upon which the directive are based, changing the directive without changing the regulation would lead to much confusion and as such is never likely to happen. But those member states in favour of international exhaustion are continuing to press the commission for a way forward.

Who owns the hat?

As we all know the credit crunch has hit businesses and in particular banks hard. Bradford and Bingley have now been taken over by Spanish giants Santander but questions remain over the future of their trade marks (BBC article here).

Whilst Santander own the savings accounts and branches of Bradford and Bingley the government have control of the mortgages and loans sector, hence the confusion as to who actually owns the marks. Readers may well recall the famous 'bowler hat' (see example) in fact around 100 variations of this have been registered and B and B famously always defend their brand thus increasing its value.

Unfortunately the hats future remains in doubt.

Barristers

On BBC 2 makes IP Freely want to join the bar!

Check it

Theft in virtual worlds

The Guardian has an article (here) regarding the threat of theft / fraud in virtual worlds, a very real threat it must be said but the writer fails to even mention intellectual property rights.

On the subject of which it has been mentioned to me that I should investigate the possibility of getting my LLM dissertation published, does anyone know of a suitable publisher? The title of my work is: “Ownership of Intellectual Property in the Virtual World its real world effects and justification: focusing on UK / EC Trade Mark Law”.

OHIM failing oppositions

OHIM's November issue of the Alicante News (here) features an interesting piece in response to their opposition decisions quality check.

The main points are as follows:

The Targets
For 2008 the Office decided on quality objectives for classification of lists of goods and services, absolute grounds for refusal as well as opposition. The target for oppositions was to produce at least 95% of decisions free from any error.

The Standards (what constitutes an error free opposition decision?)
A decision is error free when three aspects, namely, format, content and the outcome are all in accordance with the standards the Office has established. The format of an opposition decision is correct only if, among other things, it: clearly identifies the mark and the goods and services concerned and the parties. It must also summarise the relevant points made by the parties. In order for the content to be correct there must, among other requirements, be a correct comparison of the signs and goods and services. The whole content must be expressed in clear language.

The outcome of a decision must be in line with the Guidelines adopted by the Office. An incorrect outcome is where the decision wrongly either (a) upholds the opposition in respect of some or all of the goods and services concerned or (b) rejects the opposition in respect of some or all of the goods and services concerned.

Some commentators question whether including issues such as format and content represent too great an emphasis on form over substance. The Office does not see it that way. The outcome is, of course, important but the Office aims to have a high standard in all aspects of the decisions being made In December last year the Office convened an external panel to review the quality checking system that had been established. The panel was generally satisfied with the approach of the Office but also made some suggestions, including a recommendation that errors be categorised for greater transparency.

The checking process
The cases to be examined each week are selected automatically by a computer program. The number of cases and the program together ensure that the sample is sufficient to guarantee that the results on a quarterly basis can be relied as being representative of the overall output of decisions. The checks themselves are carried out by a group of four highly qualified and experienced staff. They individually examine the cases assigned to them before discussing those cases together where possible errors are detected.

Feedback
The results of the weekly check are provided in writing directly to the examiners concerned as well as to their legal advisers and team leaders. In addition to the individual feedback, the process allows the group carrying out the check to identify measures the Office needs to take to assist examiners in carrying out their decision making tasks. The measures include: coaching for individuals; general training on specific topics; improvement in standard letters and decision templates; clarification of Guidelines through amendments to the Manual of Trade Mark Practice.

Assessment of results in 2008
The Office is disappointed that it continues to fail to reach its targets. The appropriate response is not to reduce the targets or dilute the self imposed standards that have been established. The Office will redouble its efforts to ensure that the measures taken as a result of feedback from the exercise have a greater impact on improving quality. The Office is also looking to see what additional measures can be implemented to underpin the process of delivering quality output. Among other things, a tool to increase clarity and consistency concerning similarity of goods and services will be available in the coming year to help address one of the important areas of errors.

Having been on the receiving end of some "interesting" or "creative" opposition decisions IP Freely is encouraged that OHIM have made the positive step of admitting it's problems (just like an addict it's the first step to recovery!) and are planning for the future. But one wonders when the UK IPO and other offices will follow suit.

Those dirty scousers are trying to register a bird

The Guardian reports that Liverpool FC have applied to register the 'Liver Bird' (see right) as a trade mark. Apparently the football club have been suffering due to counterfeit merchandising and they believe that this will sort the problem out.

But the council are not happy and seem likely to make an objection:

"This is outrageous. The Liver bird belongs to all the people of Liverpool and not one company or organisation. It cannot be bought and sold for private profit...This is a symbol of the city and is used not only by the council but also by hundreds of organisations, charities, voluntary groups and sports clubs."

Presumably though the football club will find it difficult to suffice the geographical requirements in Windsurfing Chiemese and related cases.

Having a registered trade mark may not neccessarily protect your domain

WIPO have made an interesting decision regarding the use of a trade mark as a domain name even where the rights owner has not authorised the use.

ITT a pressure gauge manufacturer claimed for the 'ITTbarton.com' and other domain names featuring 'ITT'. The owner of the domain's is Douglas Nicoll, his company buys unused pressure gauges from the US government and sells them on.

ITT claimed that the use of their marks as domain names was an infringement of their trade marks (they have over 700 registered marks across the globe) and argued the Mr Nicoll has no rights or legitimate interests in the domain names. But applying the Oki Data Americas case (2001) the panel stated:

"The Panel in Oki Data concluded that the use of a manufacturer’s trademark as a domain name by a dealer or reseller should be regarded as a 'bona fide offering of goods or services' … if the following conditions are satisfied:

• the respondent must actually be offering the goods or services at issue;
• the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
• the site itself must accurately disclose the respondent’s relationship with the trademark owner;
• and the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of reflecting its own mark in a domain name."

ITT argued that this test should be limited to authorised resellers only (which of course Mr Nicoll is not). But the panel said: "The issues of legitimate reseller interests in accurately describing a lawful business, on the one hand, and of potential abuses of trademark, on the other, are similar whether or not there is a contractual relationship between the parties." Concluding that: "the Oki Data criteria are appropriate here to assess the rights or legitimate interests of the unauthorized reseller for purposes of this element of the Policy."

Finally the panel ruled that Mr Nicoll had a legitimate interest in using the ITT mark (using the Oki Data rules) and as such bad faith was not shown.

Patentability of software programs

The I/P Updates blog has a a nice breakdown of the questions being referred to the EPO Enlarged Board of Appeal following the decision in Symbian Ltd v Comptroller General of Patents. As many of you will know this case relates to the everlasting issue of the patentability of computer software. Following a rejection of the UKIPO's view to this issue a press release was issued, stating:

"The President of the EPO has now referred a series of questions on the patentability of computer programs to the Enlarged Board. This body has the ability to make a definitive statement of EPO practice and as such also carries significant weight in terms of the practice adopted by the UK-IPO and other national Patent Offices within Europe. In the light of this development, the UK-IPO will not seek to appeal the Symbian judgment further.

...The Enlarged Board of Appeal is a body made up of EPO Appeal Board members and international experts. Its decisions are binding on the EPO (although not the UK courts). The EPO President has referred questions on the computer program exclusion to the Enlarged Board because she is concerned that decisions of EPO Appeal Boards have not been consistent."

According to the I/P Updates article (here) the following questions are being referred to the EPO Enlarged Board of Appeal:

1. Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?

2.(a) Can a claim in the area of computer programs avoid exclusion under Art. 52(2)(c) and (3) merely by explicitly mentioning the use of a computer or a computer-readable data storage medium?

2.(b) If question 2(a) is answered in the negative, is a further technical effect necessary to avoid exclusion, said effect going beyond those effects inherent in the use of a computer or data storage medium to respectively execute or store a computer program?

3.(a) Must a claimed feature cause a technical effect on a physical entity in the real world in order to contribute to the technical character of the claim?

3.(b) If question 3(a) is answered in the positive, is it sufficient that the physical entity be an unspecified computer?

3.(c) If question 3(a) is answered in the negative, can features contribute to the technical character of the claim if the only effects to which they contribute are independent of any particular hardware that may be used?

4.(a) Does the activity of programming a computer necessarily involve technical considerations?

4.(b) If question 4(a) is answered in the positive, do all features resulting from programming thus contribute to the technical character of a claim?

4.(c) If question 4(a) is answered in the negative, can features resulting from programming contribute to the technical character of a claim only when they contribute to a further technical effect when the program is executed?

All's quiet over here

Is it just me or is it suspiciously quiet for a Monday morning...................

Descriptive trade marks and the baby dry case

Section 3(1)(c) of the Trade Mark Act 1994 (based on Art 7 (1)(c) of the CTMR) provides that a trade mark cannot be registered if it is exclusively descriptive of the character or qualities of goods, this goes hand in hand with Section 3(1)(b) which refers to distinctiveness and has become a rather large sticking point for academics and practitioners alike. In this piece I will discuss how if at all this provision has been altered by the case of Proctor and Gamble v Office for Harmonisation In the Internal Market (Trade Marks and Designs) ; Known simply as "Baby Dry"; and subsequent cases.

Previous to Baby Dry the leading case relating to descriptiveness was that of Windsurfing Chiemsee . This case established the so-called 'public interest' test i.e. descriptive words and signs should be freely available to all and not subject to restrictions, this follows the "Principle of availability" which can be seen as derivative of the traditional view of trade marks. This brings us to Baby Dry itself, at first sight it seemed to herald a new beginning for the registration of trade marks, its liberal attitude appearing to dispense with the public interest test; as found in Windsurfing Chiemsee and traceable all the way back to the Paris Convention 1883 . The basis of the Principle of availability is that it is not in the public interest for one trader to register a trade mark and thus gain a monopoly over descriptive terms as this would prevent other traders from using the same words, for example if one greengrocer trademarked the word orange then other greengrocers would face infringement suits for merely naming their products / describing see for example the work of Pfeiffer .

Proctor and Gamble's application to register Baby-Dry as a CTM (Community Trade Mark) was initially refused on the basis that the mark consisted exclusively of words that were descriptive of nappies, an appeal to the CFI (Court of First Instance) was refused as it was deemed that the main purpose of the goods was to keep a baby dry. However on appealing to the ECJ Proctor and Gamble finally found success (European Court of Justice). Whilst they conceded that the mark undoubtedly alluded to the goods function and each of the words individually referred to the purpose of the goods they nonetheless considered that: "their syntactically unusual juxtaposition is not a familiar expression in the English language, either for designating babies' nappies or for describing their essential characteristics" . In layman's terms this means that you would not call a nappy a 'baby dry' and as such the term Baby Dry is not as a whole descriptive of nappies. The ECJ also discussed the importance of individual words or aspects of a trade mark. It found that what was important was the overall effect of the mark not the components that make it up. In their own words Baby and Dry were a: "lexical invention bestowing distinctive power on the mark so formed" .

At the time of the Baby Dry case academics thought that this would open the floodgates as far as protecting descriptive words was concerned as it seemed to suggest that even descriptive marks could be registered provided that they have acquired a second meaning. Initially this could be seen as being the case, as the Court of First Instance followed this approach in Zapf . But the ECJ soon dispensed with these ideas with their decision in the case of Doublemint . In this case Wrigley applied to register the mark Doublemint for chewing gum but their application was refused by the OHIM as according to the ECJ's ruling the combination of the undoubtedly descriptive words 'Double' and 'Mint' fell within the provisions of article 7(1)(c) (mirrored by S3(1)(c) of the Trade Mark Act 1994). In the opinion of the ECJ the mark Doublemint consisted exclusively of a combination of descriptive words that served merely to designate the characteristics of"mint flavoured" or "mint-scented" products. They interpreted Article 7(1)(c) as precluding from registration any mark consisting exclusively of a sign or indication where "at least one of (the) possible meanings (of such sign or indication is to) designate a characteristic of the goods or services concerned" . Specifically citing Windsurfing Chiemsee the ECJ went on to state that Art 7(1) pursued "an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all." Needless to say this decision caused much confusion as it appeared to be at the other end of the spectrum in comparison to the decision in Baby Dry , despite the fact that it explicitly did not overrule the earlier case. Perhaps a better approach can be seen in the Advocate General's precursor to the ECJ;s decision in which he proposed that a prospective trade mark should be assessed as follows:

• Relationship between mark and product Ð if the mark is used as a general description of the goods / services then the registration will be refused.
• Immediacy of realisation Ð if the mark quickly conveys the characteristics of the goods / services then it will not be registrable.
• Significance of characteristics Ð the more significant the characteristics to the product / consumers choice of the product then the grounds for refusal are higher.

Unfortunately the ECJ did not follow this proposal which would have cleared up any confusion and instead continued with its previous tests.

The next chapter in the story of the descriptiveness restrictions came in February of 2004 when the ECJ handed down two important judgements in the cases of Postkantoor and Biomild . The Biomild mark was for dairy products including 'mild flavoured yoghurt', the mark was initially refused as the mark merely conveyed the characteristics of the products concerned. More specifically the products were both "biological" and "mild" the composite mark was therefore considered to be exclusively descriptive. The Postkantoor case concerns the KPN company which applied for the mark 'post office' (Postkantoor is Dutch for Post Office). Whilst the company mostly dealt with telecoms at the time it was a state owned company also in charge of the Dutch Post Office. Its application was refused on the basis that it was solely descriptive. In the Postkantoor case Advocate General Ruiz-Jarabo Colomer sought to re-introduce the Windsurfing Chiemsee public interest formula, and criticised the Court's judgment in Baby Dry . He went on though to admit that the likelihood of a permanent step away from the Baby Dry formula is unlikely at present.

For the sake of clarity the ECJ considered both of these cases (although it did not make a ruling on them, this was left to the member states themselves to implement). It said that it was sufficient for a mark to be refused under Art 7(1)(c) "if at least one of the possible meanings (of the mark) designates a characteristic of the goods or services concerned". In order for a combination of descriptive words to qualify as a trade mark it is a requirement that "it creates an impression which is sufficiently removed" from that which is produced by simply combining the words together in a traditional sense. The ECJ went on to say that a generic word may lose its descriptiveness if the word "Has become part of everyday language and has acquired its own meaning with the result that it is now independent of its components". However the law still requires that the word itself is has not become descriptive of the goods to which the mark is affixed.

In terms of where we are now, the Baby Dry case still holds in that in order for a registration to be denied a mark must be exclusively descriptive so that if the words that make up the trade mark were capable of alternative meanings that in themselves were not descriptive then the registration would not be refused. As we have seen the Doublemint case withdrew slightly from this decision in that if at least one of the possible meanings of the mark is descriptive then the sign must be refused registration. This was followed in the Postkantoor / Biomild cases. But contrary to a lot of academic opinion this does not mean that the Baby Dry test is dead, in the cases that followed it: Doublemint , Postkantoor and Biomild the ECJ stressed that Baby Dry was not being overruled merely different interpretations were gleaned from it. So the reasoning behind the decision in Baby Dry has not been found incorrect and has in effect been reaffirmed but the tests laid down in the case must be interpreted in a more stringent way than initially envisaged.

In summary the ECJ has not so much revolutionised the descriptiveness tests merely evolved them. There was no flood of descriptive marks as feared by many commentators at the time of Baby Dry , yet the phrase "syntactically unusual juxtaposition" still holds weight in any discussion of descriptiveness. It would appear to me that despite the cases analysed above and the years of discussion entered into, the provisions of 3(1)(c) have not in practical terms changed a great deal but it is likely that this will change in the years to come. An example of this can be seen in the recently decided Philips v Remington case that whilst it itself is concerned with distinctiveness and the registration of shape marks it shows the ECJ's willingness to return to the "principle of availability", this could yet see a return to the public interest test (or more likely a variation of) found in Windsurfing Chiemsee .

UK IPO stop search and advisory service

On a surf through the UK IPO site I noticed that they are closing their search and advisory services for both trade marks and for designs. See the following note on their site:

"This notice is to advise you that the Trade Marks Search and Advice service provided by the UK-Intellectual Property Office will no longer be available after 12 December 2008. The reason for this is that demand for this service has declined over a period of time and the cost of its provision has become unsustainable.

Any requests for this service received by 12 December will be processed as normal. This does not affect any part of the UK trade marks application process.

We do, of course, remain committed to providing information to customers before they make a decision on whether to make an application to register a trade mark. Our Central Enquiry Unit staff will be happy to provide general guidance on registrability and information can also be found on our website which includes a free search facility. You may also like to know that we are currently looking at providing a new pre-application service offering a number of options to customers, possibly from late 2009, and will post any further information on our web site in due course."

There is a similar notice for designs. For more details see the UK IPO site here.

It seems that this is a cost cutting measure for the UK IPO, which will be positively received if the savings are past on either in terms of lower fees (not likely) or improved service in other aspects of the office's work. Presumably it will be welcomed by firms offering their own searches.

Lego fail to register brick as trade mark

Lego has failed to register the shape of it's bricks as a trade mark.

UK and European trade mark law allows for shapes to be registered as long as the shape does not perform a technical function. The reasoning behind this is that such technical functions are covered by patent and design laws which are harder to register and offer stronger protection (albeit for shorter periods).

Lego filed it's application back in 1999 but their application was opposed and in 2004 was rejected by OHIM. The application then went before the OHIM Board of Appeal and finally the Court of First Instance (CFI) of the European Community. Lego held the view that: the rule on functionality was "not intended to exclude functional shapes per se from registration as a trade mark, but only signs which consist ‘exclusively’ of the shape of goods which is ‘necessary’ to obtain a technical result".

However the CFI stated: "The addition of non-essential characteristics having no technical function does not prevent a shape from being caught by that absolute ground of refusal if all the essential characteristics of that shape perform such a function," and went on: "In order for that absolute ground for refusal to apply, it is sufficient that the essential characteristics of the shape combine the characteristics which are technically causal of, and sufficient to obtain, the intended technical result, and are therefore attributable to the technical result...it follows that the Grand Board of Appeal did not err in considering that the term ‘necessary’ means that the shape is required to obtain a technical result, even if that result can be achieved by other shapes."

Lego have announced their intention to appeal the decision.

Should dead artists still be paid royalties?

Now I must admit to not having heard of this before, it does though seem ridiculous. For those of you who can't be bothered to follow the link it basically refers to royalties for artists. At present (since 2006) artists can claim a portion of the sale price of their work even when it is sold by a third party this is calculated on a sliding scale up to a maximum of €12,500. I cannot see how this is just though, an artist can sell his work to a collector and pocket money at this point then when the collector sells it he claims a cut, then when the next buyer sells it he gains a cut and so on. Quite frankly if I sold my car to someone I wouldn't expect them to pay me more money when they then sold the car on.

But that's the law anyway, the issue now is whether these rights should continue for artists after their death. The dead were due to be brought in in 2010 but the UK IPO are considering delaying until 2012: "All of the artists and artists' estates who expressed an opinion on the derogation have said that they thought that it should be allowed to lapse...All bar two of the often detailed responses from the art trade were in support of extending the derogation until 2012...Several UK collecting societies and representatives of other rights made submissions saying that the derogation should be allowed to lapse in order that resale right is brought into line with the other types of copyright,"

Super Obama World

Hahaha how good does this look: http://news.bbc.co.uk/1/hi/technology/7722721.stm

Intellectual property doesn't exist shocker

So whilst surfing some blogs (or is it blawgs these days) I came across a number of interesting opinions on Computer World UK, most of their bloggers believe that Intellectual Property shouldn't (and in fact in some cases doesn't) exist.

For example: http://www.computerworlduk.com/toolbox/open-source/blogs/index.cfm?entryid=1492&blogid=14

Now I understand their point in that yes open source is fantastic but quite simply without Intellectual Property rights it would be commercially impossible for companies to invest in product development, bands to be able to live off their music, writers unable to live off of their works. All of these vocations are (apparently) hard enough to get by with anyway, if IP rights were not protected then quite simply someone else could come along and copy their products, music, work etc.

I was looking forward to commenting on their blogs in order to fully gauge their opinions but none of their posts seem to allow comments, shame.

Is it acceptable to pay five women £2,500 to take part in acts of unimaginable sexual depravity?

You will be glad to know that today's post will not be anywhere near the epic lengths of yesterdays offering (thanks to my anonymous reader for pointing that out). I am rather under the pressure at uni and am really not enjoying the finer points of Part 36 of the Civil Procedure Rules, at least Ward LJ seemed to know what he was doing in Carver v BAA plc [2008] by allowing costs since the offer to be taken into account when determining whether the offer was more or less advantageous.

But I am getting sidetracked, the point of today's post was to bring up the controversy currently surrounding Mr Justice Eady and the law of privacy. He has been slated from all corners of the media (not a surprise considering it is their livelihoods he is effectively curtailing) but at last he has been defended: http://www.out-law.com/page-9570. Well in a roundabout way, if you don't wan't to read it yourself it basically says that it 'ain't his fault guv' and it's all down to the ECJ and Strasborg. My favourite line of the article though is: "Eady effectively ruled that it’s perfectly acceptable for the multi-millionaire head of a multi-billion sport that is followed by countless young people to pay five women £2,500 to take part in acts of unimaginable sexual depravity with him,". IP Freely says 'well yeah but it's pretty good pay, £2,500!!!'.

'Hari Puttar'

Now this story may be a bit old but I have only today sat and read about it: http://news.bbc.co.uk/1/hi/world/south_asia/7628948.stm

Music Law Updates and a number of other sources have been critical of Warner Bros for trying to protect their successful 'Harry Potter' films against 'Hari Puttar' (an unsuccesful Indian film). Justice Reva Khetrapal basically eluded to the point that the public are intelligent enough to work out that the films are different (so?). It seems to me that if a member of the public were to read the name 'Hari Puttar' and associate this with 'Harry Potter' (which surely they would) then the claimant's would be well upon their way to establishing passing off.

I must of course admit a lack of knowledge of India's legal system (perhaps any Indian readers could elaborate for me?).

Workplace bullying is apparently bad

http://www.out-law.com/page-9566 'Out Law' reports that Friday was Ban Bullying at Work Day. This is despite the fact that there isn't specific bullying laws, although in a lot of cases discrimination can be brought into the fold. A recent case involving photoshopping of a Taliban photo to include an employee went down like a lead balloon: http://www.telegraph.co.uk/news/newstopics/howaboutthat/3396950/Asian-employee-superimposed-on-to-bin-Laden-cave-picture-sues-company.html
It seems to me that in the above case anyway the racial slurs that were made are rather more pertinent than the photo that could be considered as office banter.
Readers will be pleased to know that the IP Freely office is a bullying zone, all staff are encouraged to bully each other (all in the interests off research of course).

Music Law Updates

One of my favourite sites has had its monthly update: http://www.musiclawupdates.com/index_main.htm a little bit sparse this month but the 'Copying Without Infringing' conference looks very interesting (if only I could afford it) 26th November 2008, Café Royal, London for those who can afford it.

Anyway I will be revisiting Music Law Updates November stories when I get a second in order to provide my comments on them (as if anyone really cares). Meanwhile I have decided to enter the Times law essay competition which is on privacy.....................I bet I don't get round to actually writing it!

Virtual Worlds - An Intro

Virtual Worlds are the new frontier (and a bit of a favoured subject of mine), they are very much an unknown quantity when it comes to the law and in particular protecting intellectual property rights.

By "Virtual Worlds" I am referring to Massive Multiplayer Online Role Playing Games or MMORPG's for short. In these games the user takes control of a character and guides them round an online world. There are different types of MMORPG's some are more 'game' orientated with specific tasks to complete and rewards given for completing these tasks (for example World of Warcraft) and some are 'simulation' types for example Second Life, in which you control your character in a more realistic world where you do everyday tasks such as getting a job etc.

The interesting aspect in these Virtual Worlds (in a legal sense at least) is that many of them allow user generated content. Take the following situation for example: on Second Life a user can create content, what happens if a user makes a pair of Nike trainers for his character, is this a trade mark infringement? (probably not because it would not be in the course of trade) but what happens if he then decides to sell these trainers to other users, this would surely be an infringement of the Nike trade mark. In such cases the virtual world themselves would be liable as in a lot of cases the worlds retain ownership of intellectual property see for example World of Warcraft etc but Second Life is leading the way in allowing content creators to own the intellectual property for the content they generate, thus this transfers any legal issues to them also.

.tel Rush

It seems that there is yet another domain for all you brand owners to worry about: .tel.

For brand owners new domains are pretty much always bad news, they mean spending more money and more worrying about registering their brand names first. From the 3rd December brand owners have two months to register their domain names before the public at large can get their grubby mitts on them. If the brand owners don't register their domains then there is the worry that cybersquatters might.

Obama and IP

So Obama won then, now whilst this blog will focus mainly on the UK there's no point ignoring what happens over the pond as invariably it affects our little country.

When I read that Obama had won I immediately realised that I was yet to read anything about either parties IP policies, so I had a dredge on the ol' Google box. In the most part they seemed to agree but Obama has an idea for patent law (for full article see: http://www.bpcouncil.com/apage/765.php) he wants to introduce a 'Gold Plated Patent'. This idea is seemingly to combat the increasing number of 'poor quality' patents out there by introducing a higher standard of patent that would be subject to more stringent search examinations etc but conversely would be considered as 'stronger' protection by the courts. Surely though this would be better dealt with by just making the current patent application process more stringent, I can see nothing to gain (except maybe more fees for the USPTO) by adding another level of patent.

What does he say about copyright I hear you cry...........: "We need to update and reform our copyright system" .......... well who knew?!?! it seems that Obama needs to do a bit more homework before he starts this.

A few sites

So I lost to Wigan (in case anyone cared) and now I am trying to keep my head above water in the seemingly never ending flood of options that comes with a blog, all I want is to write some stuff and stick it on the net! Who knew it would be this hard, but I'm digressing the purpose of this post was just to set out a few of my favoured sites on the net for IP/IT/Media/Whatever else I want to know about at that time law:

http://www.out-law.com - Law firm Pinsent Masons site dedicated to IT, e-commerce law etc always worth a check.
http://www.ipkat.com - a classic to be read everyday.
http://www.musiclawupdates.com
http://www.ipnewsflash.com - just an automatically generated news site but can be useful if merely to avoid trawling round a load of other sites.

On top of the above the BBC site has a good technology section and also the Times site has a good law section, oops nearly forgot: http://www.saintsfc.co.uk (well someone has to stick by us!).

Has anyone else got any recommendations for me?

Not another blog

Well well I have finally decided to put up this blog. It has been in the pipelines for months now and I haven't quite had the inclination to actually get up off my arse and make it, but here it is (I'm as shocked as anyone). Although the story of it's inception is one of pure procrastination i.e. I have an assessment to but I really can't be bothered and my alternative uses of time are either a) Football Manager, but the season isn't going well or b) Alexander Dumas' 'The Count of Monte Cristo which whilst undoubtedly fantastic is just sending me to sleep at the moment.

So what is this blog going to be about I hear you cry (well I'm sure someone did), basically it will be about Intellectual Property law and IT law etc but unlike a lot of what is out there it will be presented in a more casual way (what can I say I'm a casual kinda guy). Being as it is about law I should really start with some kind of disclaimer, so here goes:

As with any legal blogs: The news and articles on IP FREELY are not legal advice and you shouldn't rely on them as if they were, this blog is merely my own personal opinions. Please do not act on any of the information on this blog without first getting professional advice on the subject. IP FREELY does not accept any liability in connection with your use of the information on the site.

Phew

Well at least that's over and done with, anyway a crunch Carling Cup tie with Wigan calls for my full attention so back to Footy Manager it is. Check back soon for new (and hopefully relevant) posts!