For the half-year to 30 June 2015, the IPKat's regular team is supplemented by contributions from guest bloggers Suleman Ali, Tom Ohta and Valentina Torelli.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Thursday, 5 March 2015

Wu-Tang Clanger -- or have the rappers got it right?

Old Kats occasionally come back as guest Kats, which is why this weblog is so pleased to give a hearty welcome to this post by emeritus Kat Catherine Lee (a.k.a. Cat the Kat). Recent readers may not know that Cat is the author of two of this weblog's all-time most-visited blogpost, "Goodbye Cathy: Hello Kitty and Miffy settle copycat case", which has received 238,887 "hits".

Wu-Tang Clan

The music industry is no stranger to publicity stunts creativity when it comes to releasing new albums to the public.  For instance, in December 2013, after months of rumours of scrapped songs and delays, Beyonce released her self-titled album Beyonce on iTunes without prior announcement or promotion. At the time, Beyonce stated that this was "an unprecedented strategic move" and that this was music "stripped of gimmicks, teasers and marketing campaigns".  The album went on to sell more than five million copies around the world and to be awarded numerous platinum and gold certifications.  
Then more recently in September 2014, U2 added its album Songs of Innocence to the libraries of over half a billion iTunes users without permission and without clear instructions on how to delete it.  The release was described in the Washington Post as "rock-and-roll as dystopian junk mail" and later led lead singer Bono to apologise:  
"Oops, I'm sorry about that … "I had this beautiful idea and we got carried away with ourselves. Artists are prone to that kind of thing".
The latest attempt at milking the publicity potential for an album launch comes courtesy of American hip hop group Wu-Tang Clan.  The efficacy of this publicity stunt can be measured from the fact that this emeritus Kat must admit to not having heard of this group before preparing this post.  However, she notes that Rolling Stone labelled Wu-Tang Clan "the best rap group ever" and NME described them as "one of the most influential groups of the last ten years".
Wu-Tang Clan
Wu-Tang Clan's latest album Once Upon a Time in Shaolin is available for purchase on art online auction house Paddle8.  The album contains 31 tracks from 9 members and took 6 years to make. The catch?  Once Upon A Time In Shaolin is described as 'An edition of one and one alone, for all time'.  In the words of Wu-Tang Clan, the album is a 'piece of art in the same way that the Mona Lisa or the Sculpture of David is a piece of art'.  Like a piece of art, the album is available for purchase and ownership by one individual only. It is also described in Paddle8's catalogue: 
'It is presented in a hand-carved nickel-silver box and accompanied by a 174-page manuscript containing lyrics, credits, and anecdotes on the production of each song, printed on gilded Fedrigoni Marina parchment and encased in leather by a master bookbinder'.  
Wu-Tang Clan will provide the Buyer with a Certificate of Authenticity for the Artwork at the time the Artwork is delivered to the Buyer'. 
Further, the terms of sale provide that the Buyer’s right of ownership of the Artwork and its content is for private use only.  This is because Wu-Tang Clan felt that 
'retail commercialization and mass replication would dilute the status of the album as a one-off work of art and compromise the integrity of our statement'.  
As is explained on Paddle8: 
"When you buy a painting or a sculpture, you’re buying that piece rather than the right to replicate it. Owning a Picasso doesn’t mean you can sell prints or reproductions, but that you’re the sole owner of a unique original. And that’s what Once Upon a Time in Shaolin is. It’s a unique original rather than a master copy of an album". 
Accordingly, the Buyer will "acquire full public and commercial rights in the Artwork eighty eight (88) years from the date of sale". Wu-Tang Clan has agreed, 
"as a condition of the sale, not to ever release any of the content on the Artwork in any form, format, channel, medium or manner (including, print, disk, tape, electronic or virtual) to the public. This Artwork is offered for sale without copyright, broadcast rights, performers (sic) consents, and other reproduction rights. The Buyer must apply to the relevant parties to obtain such clearance and consents as may be necessary." 
Shaolin monks: not to be trifled with?
So what does this mean?  Although not drafted in eloquent terms as one would normally see in a copyright assignment or licence, the intention of Wu-Tang Clan is that 'the right to release the album would be transferred only after 88 years have passed'.  On the duration of 88 years, Wu-Tang Clan stated it placed great symbolic significance on the number eight:  Wu-Tang Clan originally had eight members; Paddle8 has eight in its name; it is the sum of the digits in 2015 when the record is being sold; and when read horizontally, it is the symbol for infinity. 
Not surprisingly there has been much speculation about the album.  The IPKat notes some of them here.  Apparently 
  • the single copy is locked away in a hotel vault in Marrakesh, Morocco [there is an alternative reading of this link, notes Merpel, which would suggest that it is the group who are locked away in the hotel vault].   
  • 200 people attended a public listening to a 13 minute excerpt from the album in New York City this week, where all mobile phones were handed over to the front desk.
Merpel cannot help but wonder: is this an example of music reaching the highest form of fine art?  What are the terms of sale and are they enforceable?  What would you do if you purchased Once Upon a Time in Shaolin? She also recalls that the Shaolin monks have an interest in their name too, and wonders what their reaction might be.  The IPKat suspects that there is no unusual means of promoting an album by a famous band or artist will will not succeed, given its inherent newsworthiness and the vast amount of free publicity in which the launch will be bathed.

All Kats are now seriously considering contacting Paddle8 about the prospect of auctioning their next blogpost, making it available only to the highest bidder.

Katpat to Chris Torrero for sending us the original news item on which this post is based.

Wednesday, 4 March 2015

Wednesday whimsies

The Law Society, England and Wales, is advertising vacancies on its Committees. One of these is the Intellectual Property Committee, which has no fewer than four vacancies to fill. If you are an "exceptional solicitor" who will join "a talented team to oversee important decisions about the Law Society's policy on matters of legal policy", do be sure to apply by 1700 GMT on Friday 19 March.


Digital skills. This Kat has been informed that the United Kingdom's House of Lords published its digital skills report on Monday.  The report -- full name Make or Break: The UK's Digital Future -- and all the documents surrounding it can be accessed via the Digital Skills Committee's web page here.


Fordham 2015 open for registration. The Fordham IP Institute's 23rd Annual Conference on Intellectual Property Law and Policy takes place this year in Cambridge, England, on 8 and 9 April.  This Kat has just been informed that it's now open for registration, so get a move on and click here to sign up for the most exciting and, if you are invited to speak, potentially scary event you are likely to experience.


A Kat, live and in colour! Yesterday fellow Kat Eleonora was telling the European Parliament all about copyright and the possibilities for establishing open norms for copyright in Europe.  Today, in "Towards a New Legislation on Intellectual Property in the Digital Single Market", you can enjoy her wise words on YouTube here.


Copyright in fragrances.  The IPKat's joint seminar with BLACA last week was great fun. Sadly Sergio Balañá Vicente could not be there to join us, but he has sent us three items which he has written on this very subject: (i) in English: Book review: Fehlbaum, P. "Les creations du domaine de la parfumerie: quelle protection?" GRUR Int. 3 Heft, 2009, p. 270 (here); (ii) in French: "L'industrie du parfum à l'assault du droit d'auteur... ¿fumus boni iuris?" Propriétés Intellectuelles nº 16, 2005, p. 254 (here); (iii) in Spanish: "La protección del perfume por el derecho de autor. Comentario a la sentencia de la Cour d'Appel de Paris de 25 de enero de 2006 en el caso L'Oréal c. Bellure" pe.i. Revista de Propiedad Intelectual, nº 22, 2006, p. 107 (here).  Thanks so much, Sergio!

Copyright and the ‘private copying’ exception: what’s all the fuss about?

(Post-lunch) format shifting
Does copyright strike an appropriate balance between competing interests? The adequacy (or otherwise) of copyright law is a political hot potato in the EU, and none more so than in relation to the scope of copyright exceptions which have come under increasing scrutiny in recent years, primarily prompted by the digital landscape which has led to a seismic change in the way in which we create, distribute and access content.

One category of copyright exception currently in the judicial spotlight is the so-called 'private copying' exception, where there is a raft of decisions pending from the CJEU in C-463/12 Copydan, C-572/13 Hewlett-Packard and C-470/14 Egeda [see previous Katposts here, here and here].

Given that the Copydan decision is due to be handed down by the CJEU tomorrow (Thursday, 5 March), this Kat thought it would be a timely opportunity to step back and provide a high level overview of why the private copying exception has been in the legal limelight.

What is the private copying exception?

As readers will be aware, copyright gives rights holders certain exclusive rights (e.g. copying, communicating to the public), but also provides certain permitted acts (or exceptions) in relation to a copyright work which do not require the rights holder’s permission.

In essence, the private copying exception permits a ‘natural person’ to make copies of lawfully acquired copyright works for private (non-commercial) use such as for:
  • format-shifting (e.g. from a CD onto your MP3 player)
  • time-shifting (e.g. saving Downton Abbey onto your Personal Video Recorder or PVR) or
  • making back-up copies.
Its legislative basis is found in Article 5(2)(b) of the Information Society Directive 2001/29The exception is subject to the Berne ‘three-step test', namely that it should not conflict with the normal exploitation of the work or unreasonably prejudice the legitimate interests of the rights holder.

Importantly, the exception permits the creation of a copy of the work in certain circumstances (i.e. it is a permitted act in relation to the reproduction right); it does not therefore extend to other uses of the work such as communicating or distributing the work to the public.

What is a private copying levy?

Under the InfoSoc Directive, the private copying exception is provided on the condition that the rights holder receives “fair compensation”, which is “recompense for the harm suffered by the author” (Case C-467/08 Padawan).

The majority of Member States provide for “fair compensation” through a system of levies to compensate rights holders for the “harm” caused by private copying – i.e. via a private copying levy.

In general, private copying levies were implemented on purchases of blank media (e.g. CDs, DVDs) and on recording equipment (e.g. MP3 players, PCs, printers), with collected revenues then redistributed to rights holders by collecting societies.

It is also worth noting that Recital (35) to the InfoSoc Directive provides that “in circumstances where the prejudice to the rightholder would be minimal, no obligation for payment may arise”. In other words, where there is minimal or de minimis harm, no fair compensation is required. 

Why has the private copying exception been in the judicial spotlight?

There is an unhappy lack of clarity regarding the scope and application of the private copying exception across the EU. For instance, although “fair compensation” is an autonomous concept of EU law (i.e. it is supposed to must be interpreted in a uniform manner across all Member States that have introduced this non-mandatory exception) there is a significant disparity across the EU in the manner in which private copying levies are applied.

Key points that are in the judicial spotlight include:
  • What constitutes “harm” suffered by the author, and in what circumstances is there “minimal” or "de minimis" harm such that fair compensation is not required? [Further clarity on what constitutes de minimis harm will hopefully be provided in the pending Copydan decision. This is a key point in the pending judicial review application before the courts of England & Wales in relation to the UK’s failure to provide a levy system in its implementation of the private copying exception – see The 1709 Blog post here.]
  • Who is responsible for discharging the obligation to pay fair compensation: should it be the manufacturer / producer, the importer, the reseller / retailer? [Whilst Member States enjoy a broad discretion in this regard (see Case C-462/09 Thuiskopie), this issue still requires further clarification, particularly in the context of multi-level, cross-border distribution systems where it might not be possible to know whether the final end-user is a business or private user]
  • Does the levy system safeguard a “fair balance” between the interests of authors and the end-users of the work? [One point which arose in striking this “fair balance” was whether the exception applies only to lawful copies of the work, to which the CJEU’s response in Case C-435/12 ACI Adam was Yes – see previous Katposts here and here]
Other important considerations include the extent to which the exception should apply to copies made on cloud-based online services (i.e. cloud storage). There is debate on whether the application of the exception to cloud-based technology leads to legal uncertainty because the technology potentially allows for widespread sharing of content online beyond the private sphere, and thus erodes the distinction between ‘private’ and ‘public’ use. In this respect, the UK has chosen to permit the making of private copies on “an electronic storage area”.

What policy initiatives have there been on private copying?

Private copying levies were the subject of an industry mediation process, led by former Commissioner António Vitorino, who delivered his report on 31 January 2013 making a number of key recommendationsWhilst some of his recommendations were cautiously welcomed (e.g. by the IFRRO, which also expressed certain reservations), others disagreed strongly (e.g. the Society of Audiovisual Authors).

In short therefore, there is plenty of scope for further progress at a policy level.  

In conclusion…

In this Kat’s view, the legal framework in the EU is a bit of a mess, largely due to the absence of adequate harmonisation and sufficient detail that leads to a distorted and inconsistent application of copyright law across the various Member States. This is exemplified by the current lack of certainty in relation to the scope and application of the private copying exception, where the onus has primarily rested with the CJEU to find that vexing “fair balance” between competing interests.

Is copyright in a catatonic state?
It remains to be seen whether judicially-led incremental change is adequate, or whether more fundamental change at a legislative and policy level is required. There are diverging views in this respect, as seen recently in the Responses to the Public Consultation on the Review of the EU Copyright Rules (see here at Section V). Let’s see what additional clarity the CJEU can add in the pending decisions this year, starting with Copydan tomorrow.  

A helpful resource on the global position in relation to private copying – see the International Survey on Private Copying: Law & Practice 2013 (23rd ed.) here.

Patent trolls still on the menu as industry-backed UPC website launches

Now with a snazzy logo, the UPC
Industry Coalition is here
to stay
In the Unified Patent Court's Arms Race (or Cold War), there seems to be new dedicated UPC websites popping up each week from various firms across Europe and the US.  Yesterday afternoon, another dedicated UPC website launched but this time it came from industry.  The AmeriKat has previously written about the UPC Industry Coalition's UPC activities which mainly came by way of co-signed open letters and media blasts on the hot topics of patent trolls and injunction gaps (herehere and here),  Yesterday, their involvement took on a multimedia dimension with the launch of  their new website dedicated to reinforcing their position on key UPC procedural topics.

With the launch of their website their narrative has not significantly changed - patent trolls and the "injunction gap" are still prominent concerns.  However, the voices have changed.  Although the new slick website is still co-signed by the West Coast behemoths such as Google, Microsoft and Intel, it is European small and medium companies (SMEs) that give voice (literally, by way of a series of videos on the site) to these concerns or the "unnecessary opportunities for abuses in the system", as they put it.    

German Elkamet's Director of Strategic Planning, Martin Deussen, raised the issue of bifurcation and the injunction gap as an aspect which they considered to be "very harmful for European companies in general and particularly so for smaller ones" as a company could face an injunction or damages for the infringement of a patent that has yet to be held to be de facto valid.   These fears are not abstract for Deussen whose current experience of bifurcation in Germany demonstrates the potential risks and abuse in the UPC.  He also voiced concerns where a large company brings an infringement case with a very high value attached, if the court fees are linked to that high value, it could prevent a much smaller company from being able to counterclaim for revocation as the cost of bringing a counterclaim could also be high.  

Don't understand the "injunction gap"?  The UPC Industry Coalition has
a helpful infographic just for you!
Andreas Richstatter of Germany company Adlon, an IT consultancy with a focus on cloud services echoed concerns that the UPC could create an environment for patent trolls and drew from recent experience when they were attacked by a patent troll.  For SMEs, this is no small issue as, in Richstatter's words, they do "not plan legal disputes" as the legal costs "directly lower our revenue".  This risk "will increase even further, especially with the new [bifurcation] procedure".  To avoid the cost of litigation a small company sued by a patent troll may seek to settle an infringement case to avoid high legal costs associated that action and to avoid the costs associated with invalidating the patent.  However, by virtue of the injunction gap "in hindsight it seems, that we actually paid licence fees for a patent that is not even valid."  Richstatter feels that this will restrict the competitiveness of a SME in Europe.  The solution?  To merge infringement and validity actions into one.  

Emil Pot, General Counsel of Belgian biotech firm ActoGeniX also echoed the concern of patent trolls and the UPC.  Pot is concerned that the patent troll situation in the US "will not flourish in the event there is bifurcation".  To avoid a US-style situation, Pot explains that the injunction gap should be "as short as possible".  In Pot's view, when granting remedies, the UPC should act proportionally.  If a company has infringed or is purported to infringe one patent (amongst several) in a product - and assumingly especially if that patent is relatively minor to the function and/or value of the entire product - then the court should be reluctant to issue an injunction instead of damages.  Pierre Demonsant from French company, Plainsware, is also featured in a video testimony.  

The website provides two recommendations to the powers that be (whoever they are nowadays in the murky world of UPC leadership):
1. Validity should be decided before or at the same time as infringement, or the remedy from the injunction decision should be stayed until after the pending validity issue has been decided.  
2.  Judges should have the discretion and direction to consider the proportional harm and fairness to the parties when deciding whether to grant injunctions.
And with that, cue the comments from our learned readers about (i) not being able to change the UPC Agreement from which bifurcation emerges and (ii) the judges already having wide discretion when it comes to granting injunctions.  After she sifts through those comments, the AmeriKat is hoping to see some inventive and creative views on what sort of changes to the rules of procedure and/or judges training there should be to realize industry's recommendations.

In the meantime, the AmeriKat welcomes industry's online voice and presence which has so far, sadly been lacking.  Let's just hope someone is listening.  

Goldbear wars going into the next round...

With Easter slowly approaching, you'd be forgiven if you expected to read about a yet another chapter in the perennial Easter Bunny dispute(s).  However, this Kat can offer you an update on the Haribo vs Lindt Gold Bear trade mark dispute: according to information published on the German Federal Court of Justice's website, this equally gold-themed matter has now reached Germany's highest court in civil matters and a hearing in this dipsute has been scheduled at the BGH for 25 June 2015, (BGH case reference I ZR 105/14).

Lindt's teddy
The original gold bears
The case: upholding a claim brought by confectionery manufacturer Haribo, the first instance court, the Regional Court of Cologne (case reference: 33O 803/11) in December 2012 decided that Lindt's three-dimensional gold-foiled chocolate bears amounted to an infringing ‘visual representation’of Haribo's well-known GOLDBÄREN (in English Gold Bear) gummy bear word marks: Lindt's chocolate bears inevitably evoked connotations with Haribo's bears, which could dilute of Haribo's marks.   
On appeal by Lindt, the Higher Regional Court of Cologne (see here; case reference: 6 U 230/12 of 11 April 2014)  – in essence – agreed with the defendants: the judges explained that there were several additional levels of abstraction separating the Lindt's Chocolate teddy shape from the Goldbär word mark.  Therefore, the judges held that Lindt had not taken unfair advantage of Haribo's Goldbär by "approximating" its Lindt teddy to Haribo's gold bears.  The Lindt teddy was an obvious addition to Lindt's product line, which included the famous Lindt Easter bunnies.

It is now for the BGH to decide whether Lindt's teddies are conceptually or otherwise too similar to Haribo's earlier rights.  May this even be another reference to the CJEU? Will all evidence make it safely to the BGH?  Our readers will recall that the BGH had reversed and remanded ajudgment by OLG Frankfurt in one of the Easter Bunny disputes, mainly because the Riegelein chocolate bunny submitted in evidence was missing from the files (please see here and here for reports on this odd event)  ... Only time will tell!


Tuesday, 3 March 2015

The politics of US patent law reform

This weblog has carried so much material concerning patent law in Europe that one might almost be forgiven for assuming that everything has gone quiet in the world's favourite market for innovation and patent litigation -- the United States -- and that some of the most colourful personalities in the world of patent infringement have given up their litigious ways and have taken up chasing llamasBut this is not so, as this guest post by Kevin Winters suggests. Here Kevin gives us a glimpse of some of the stirring action in the seething cauldron of US patent reform. This is what he writes:
The politics of US patent law reform

Law reform can be a tricky process.  The experience in the USA and the attempts to reform its patent system are good examples of this.  
In January this year the House of Representatives saw the reintroduction of the patent reform bill: the Innovation Act 2015. Followers of IP developments will be well aware of how controversial the debate over patent law reform has become.  The main thrust of this proposed legislation is to deal with so-called patent trolls by changing the manner in which claims of patent infringement are handled in the US courts.  The new bill bears many of the same features of its predecessor: 
        The holder of a patent that files a lawsuit will need to provide greater detail in support of their case: it would need to include infringement charts showing how each limitation to each asserted claim in each asserted patent is found within each allegedly infringing product or process; 
        There would be the introduction of a presumption of attorney fees to the prevailing party for spurious claims of infringement; 
        In any lawsuit, the patent owner would be obliged to disclose the ultimate parent entity of any assignee of the patent; and 
        The courts will be required to establish the validity of the patent early on in the litigation process. 
The introduction of this piece of legislation was halted in the Senate last year, following fears that it was not proportionate to dealing with patent trolls, and could be detrimental to legitimate patent holders in the US.  Unfortunately these concerns have not disappeared.  Further, some commentators in the US have suggested that the bill does not take account of how much has happened in patent litigation since it was first introduced in 2014.  In particular, the Supreme Court has been unusually busy in dealing with patent law cases, and has taken some important steps to tackle spurious patent litigation.    There is however much support for the legislation, in both the political and commercial spheres, where there are those with the belief that the current patent regime is ineffective for dealing with patent trolling.  
Looking at the changes that the legislation proposes in the abstract, they seem to contribute to a robust system where cases are dealt with efficiently.  However when considered in context there are some concerns, particularly concerning the exact details of the proposed changes. The requirement that litigants go into greater detail in their pleadings regarding infringement could indeed help the litigation process.  However, lacking any guidance on exactly how much detail is needed, the courts will be left not knowing how high the standard of pleadings must be.  
Further, the Supreme Court has already heightened the standard of pleadings in civil cases, raising the question of whether greater detail is needed. In Ashcroft v Iqbal  556U.S. 662 (2009) the Court ruled that the requirement that a complaint have sufficient factual matter to be plausible will apply to all civil cases   though it is not yet known whether this standard will be different to what is ultimately passed into law.  
Additionally, objectively speaking, there is a risk that the presumption of attorneys fees could have a detrimental or chilling effect on smaller enterprises that may lack the resources to enforce their patents. This point was recently emphasised by a number of leading US universities in a letter to Congress, arguing that: 
The prospect of substantially increased financial risk would discourage universities and other patent holders lacking extensive litigation resources from legitimately defending their patents.  Moreover, this increased financial risk would deter potential licensees and venture capitalists from investing in university patents in the first instance, reducing the number of research discoveries that advance to the marketplace. 
The full letter can be accessed here

While it is true that the landscape of patent litigation has changed since the Innovation Bill was first introduced, the political landscape has also undergone a dramatic change: both the House of Representatives and Congress host a strong Republican presence that supports the passing of the bill.  Moreover there appears to be increasing pressure from the business sector to implement this legislative change.
What will happen next? How does the scene look from closer to the Capitol? This Kat is sure that we will soon hear from some of our readers ...

Seiko and Seiki in Singapore: "too well known to be confused"

It has happened before and it will happen again, but it's always a surprise when it does. Sometimes a mark is almost too well known for its own good. The worst case scenario is when it's so well-known that it becomes synonymous with the goods or services for which it's registered and ends up being generic.  A less bad case, but definitely a frustrating one, is where it's sufficiently well known that consumers are not considered likely to be confused between it and an uncomfortably similar mark.  In the European Union we have seen something like this, for example when the owner of the PICASSO Community trade mark came up against a later PICARO mark (see Case C-361/04, here). In this guest post Ng Qi Ting (Kass International, Kuala Lumpur) writes about a similar instance in Singapore which occurred last year:

While the Japanese company Seiko may be a pioneer in “exquisite workmanship” when it comes to timepieces, establishing itself as a famous brand to half the world, it certainly did not enjoy much success in its battle in opposing the trade mark SEIKI from securing a place in the trade mark registry of Singapore.

Choice Fortune Holdings Limited applied to register SEIKI for electronic goods such as television sets and disc players. In a natural course of events, Seiko Holdings Corporation, with its SEIKO trade mark also covering goods such as gramophones and metronomes in the same class, brought an opposition against the registration of SEIKI at the Intellectual Property Office of Singapore (IPOS). Said Seiko, Choice Holdings’ mark was confusingly similar to its own and the use of SEIKI would dilute its goodwill in SEIKO.

Regarding confusion, Seiko had to satisfy the familiar “step-by-step” approach, establishing that (i) the marks were similar; (ii) the goods were identical or similar; and, as such, and (iii) part of the public is likely to be confused.

The Registrar took the view that there are no strict formulae to adhere to when comparing the marks. It is the “first impression” created by a mark that matters. As the Registrar said:“the assessment of mark-similarity is more an art than a science, more of feel than of formula, though guided by principles.” In this instance, the Registrar found that SEIKI was visually and aurally similar to SEIKO, albeit to a low degree. In terms of conceptual similarity, the Registrar was of the view that, as Japanese is not a common language in Singapore, SEIKO and SEIKI  -- the latter being a word meaning "century" or "regular" in Japanese and also being a given name -- would simply be viewed as invented words with “Japanese-like characteristics” by the Singaporean public. Although the Registrar did not rule out the possibility of finding conceptual similarities between two marks that shared the same national characteristic, here the fact that both words sounded Japanese was too vague a concept for the Registrar to find conceptual similarity. It was also found that there was similarity in the goods represented, in that the goods covered by Seiko's mark overlapped with those of Choice Fortune.

Despite these findings of similarity, the Registrar held that the likelihood of confusion was minimal. Although visual, aural and conceptual similarities are to be taken into consideration when deciding whether the marks are similar, these aspects are not to be taken as a pre-definitive yardstick to make a finding of confusion. Other factors are to be taken into account and the finding of confusion should always be based on the facts in each case. Here the Registrar felt that the likelihood of confusion was low because the products represented by the marks were relatively expensive, and their consumers were unlikely to purchase them on a whim. On the contrary, their consumers would have made the necessary enquiries before purchasing them and, even at the point of purchase, those consumers would pay more attention.

As for dilution, SEIKO was recognised for timepieces by the majority of the Singaporean public, and the Registrar was not convinced that consumers would draw a mental connection between SEIKO and SEIKI was it is unlikely that any rational consumer would assume that Choice Fortune's electronic goods such as television sets and disc players emanated from Seiko. It was deemed implausible that the SEIKI mark would cause dilution in an unfair manner towards the goodwill in Seiko's mark. Seiko had thus failed to conciliate the elements under all the grounds raised, so SEIKI was allowed to proceed to registration.

What was significant here was that the existence of a long and established reputation could actually act against being able to establish likelihood of confusion.The more strongly a trade mark is ingrained in the mind of consumers, the less likely it is that confusion would arise. This was not a decision to give heart to owners of well-known brands.
You can read the decision in full here.

Warner-Lambert v Actavis Mark 4: harmony between parties in ‘lyrical’ patent dispute

Last Thursday, this Kat’s esteemed moggy friend and blogmeister Jeremy reported a High Court Order obtained by Warner-Lambert (part of the Pfizer group) mandating the NHS to release guidance about the prescribing of pregabalin.  The decision containing this order and the form of the guidance have both now been published – see here.  The full citation is Warner-Lambert Company, LLC v Actavis Group PTC EHF & Others [2015] EWHC 485 (Pat) (02 March 2015).

Rather than reproduce earlier posts, the IPKat would refer readers who are new to this saga to his earlier posts, here and here.

That this Order was made was intriguing to this moggy.  On the one hand, the Order can be seen as the logical consequence of a remark made in the first judgment, Pfizer’s application for an interim injunction, in which Arnold J noted:
" ... [all parties agreed that] the best solution to the problem which arises in this case is to try to ensure that prescribing doctors prescribe pregabalin for the treatment of pain by reference to the brand name Lyrica rather than by reference to the generic name pregabalin. That will ensure that pharmacists only dispense Lyrica when presented with prescriptions for pregabalin which are (at least so far as the prescriber is concerned) for pain without requiring the pharmacist to know the indication for which pregabalin has been prescribed.”
The generics companies seemed quite happy for such guidance to be issued since it reduces their liability in the infringement case.  (Merpel remarks that “They could hardly argue that the patent is not infringed because their pregabalin is not intended for use for treatment of pain, and at the same time resist issuance of NHS guidance to the same effect, now, could they?)  On this line of reasoning, why would the judge refuse the requested Order?

It was only after the pharmacist had queried
his third prescription for Lycra that Dr Mog
realised that there might be problems ...
However, on the other hand, in the same decision (to refuse interim injunctive relief), Mr Justice Arnold noted that Actavis had no intention (or, specifically, Warner-Lambert had not pleaded a case of subjective intention) to market its generic pregabalin for pain relief and that he considered that the Swiss-form claim would not be infringed by Actavis.  He considered there to be no serious issue to be tried and refused the interim injunction. How therefore, could the making of such an Order this time be justified?  One point is that since then Warner-Lambert had amended its case to plead a case of subjective intention, and, even though he did not find this case particularly compelling, in the second judgment Arnold J had refused to strike out Warner-Lambert's case or grant summary judgment, and had ordered the matter to proceed to full trial, because this was a developing area of law and a full trial should take place to establish all the facts before any appeal on the merits.

All parties accepted that section 37(1) of the Senior Courts Act 1981 gave the Court jurisdiction to mandate NHS England to issue guidance relating to the prescribing of pregabalin.  Mr Justice Arnold then had to consider whether or not to use that jurisdiction.

Citing Norwich Pharmacal, Pfizer argued that once NHS England became aware that it was mixed up in the wrongdoing of others, it came under a duty, which the Court had jurisdiction to enforce pursuant to section 37(1), to take proportionate measures to prevent or reduce that wrongdoing; in reply, Arnold J commented that the
 “obvious difficulty with this submission in the circumstances of the present case is that, if my previous judgments are correct, then it is not seriously arguable that Actavis are infringing the Patent.”
However, he then observed that:
 “it is well established that Norwich Pharmacal relief is available where there is an arguable case of wrongdoing based on the evidence available at the time of the application…[and that]… in my first judgment of 6 February 2015, I declined to strike out Warner-Lambert’s claim under section 60(1)(c), on the ground that this was a developing area of law and therefore the facts should be found before attempting definitively to decide what the law was, as being sufficient for this purpose.”
This moggy wonders whether the potential injury to the generics company was smaller in making this Order as compared to the originally sought interim injunction, tipping balance of convenience in Pfizer’s favour.

Additionally, the Court of Appeal has given permission to appeal Mr Justice Arnold’s refusal to grant an interim injunction.  Counsel for Pfizer drew analogy between this situation and “the situation where an injunction is sought pending appeal even though the patent has been held invalid at first instance, as to which see Novartis AG v Hospira UK Ltd [2013] EWCA Civ 583, [2014] 1 WLR 1264.”

These two factors, and in particular the second, were found to be persuasive and enough for Arnold J to Order NHS England to issue the requested guidance.

Following the IPKat’s previous post, one of our dear readers speculated as to whether Arnold might have relied on public law to justify this Order.  Pfizer argued in this manner, but the question was not considered in detail since there was no dispute as to the Court’s jurisdiction.

The only real point of dispute between the parties in this case was the ambit of the cross-undertaking in damages to be given by Pfizer.  Pfizer initially offered the cross-undertaking to NHS England and the Department of Health, but the defendants and some of the interested parties successfully argued that it should be extended in their favour.  The guidance issued by NHS England could impact on the business of the generics, and so this is perhaps unsurprising.  Indeed, the cross-undertaking was ultimately granted in favour of the Actavis group, the Teva group and Dr Reddy’s Laboratories, in addition to the public bodies.  Arnold J was held that the cross-undertaking should be made to the groups of companies since the injunction could result in some restructuring within those groups, and it would be inefficient to require the generics groups to have to approach the court every time some restricting occurred.

The material part of the prescribing Guidelines from the NHS to GPs and pharmacies, which are attached to the judgment, read as follows:
    Warner-Lambert Company LLC is engaged in a dispute with a number of generic pharmaceutical suppliers regarding pregabalin, which remains on patent for one indication, namely, the treatment of pain. As part of that dispute, the Court has required NHS England to issue this guidance. Our guidance is that, because of Warner-Lambert's patent rights:
    1. Pregabalin should only be prescribed for the treatment of neuropathic pain under the brand name Lyrica® (unless there are clinical contra-indications or other special clinical needs e.g. patient allergic to an excipient, branded product unavailable etc which apply to Lyrica®, when you should not prescribe Lyrica® or pregabalin)
    2. When prescribing pregabalin for the treatment of neuropathic pain to patients you should (so far as reasonably possible):
    a. prescribe by reference to the brand name Lyrica®; and
    b. write the prescription with only the brand name "Lyrica", and not the generic name pregabalin or any other generic brand.
    3. When prescribing pregabalin for the treatment of anything other than pain, you should continue to prescribe by reference to the generic name pregabalin.
    4. When dispensing pregabalin, if you have been told that it is for the treatment of pain, you should ensure, so far as reasonably possible, that only Lyrica®, the branded form of pregabalin, is dispensed. However, when dispensing pregabalin for the treatment of anything other than pain, you are not restricted to dispensing Lyrica®.
    To ensure that practitioners are readily able to recall and follow the guidance above, you should consider amending the operation of any electronic prescription system that is within your power or control to include a notice or advice box which uses the following or similar wording:
    "If treating neuropathic pain, prescribe Lyrica (brand) due to patent protection. For all other indications, prescribe generically."
    We will let you know should this position change. 
As always dear readers, I welcome your thoughts…

Thanks to Tim Belcher for authorial assistance when this moggy was very jetlagged.

Human rights and intellectual property: a new research handbook

For the third time in as many months this Kat welcomes a new book which modesty self-interest and personal involvement prohibits him from reviewing in person: it's The Research Handbook on Human Rights and Intellectual Property, published by his friends at Edward Elgar Publishing. The tenth volume in this series [there are more on the way, this Kat warns those who have adopted the Pokèmon philosophy of "gotta catch 'em all"], Human Rights is edited by respected scholar and European IP personality Christophe Geiger, of Strasbourg's CEIPI.  

Contributors to this volume include Laurence R. Helfer (who edited an earlier Edward Elgar collection of essays, Intellectual Property and Human Rights, published in 2013) and more Katfriends than it would be proper to list here, including a sprinkling of Queen Mary colleagues, the perceptive Philipp von Kapff (OHIM Boards of Appeal), New Zealand scholar Suzy Frankel and the ever-charming neo-Oxonian Dev Gangjee -- whose own volume in this series, on geographical indications, is keenly awaited.


Here's how the publishers describe this tome:
Research Handbook on Human Rights and Intellectual Property is a comprehensive reference work on the intersection of human rights and intellectual property law. Resulting from a field-specific expertise of over 40 scholars and professionals of world renown, the book explores the practical and doctrinal implications of human rights considerations on intellectual property law and jurisprudence.

The various chapters of the book scrutinize issues related to interactions among and between norms of different legal families and the role of human rights in the development of a balanced intellectual property legal framework. The innovative approach of the book is reflected in its structure: the first part provides a foundation for the human rights and intellectual property discourse; the second sheds light on the human rights implications for the development of intellectual property; and the third (characterised by a human rights perspective) is devoted to the specific issues of interaction between human rights and intellectual property.

Exploring in depth a variety of interactions between human rights and intellectual property law, the book will be of great interest to academics and experts working within human rights, intellectual property, development, international relations and international public law.
The field under review is a difficult one to address objectively, this Kat feels. People who write about human rights are generally people who believe strongly in their virtues and who like the notion of them being as widely applicable and properly protected as is consonant with civilised life in a well-ordered society: since society is made up of individuals, it is duty-bound to respect them.  The effect of this is that, it's not easy to find anyone who writes about human rights because he or she doesn't like them or, in our context, because there exists a strong conviction that they should be subordinate to merely commercial rights.  Intellectual property law, in contrast, covers a wider spread of views, from those who research and promote those laws because they passionately believe in them, to those whose interest is stirred by the dangers they pose if they are not properly framed within the parameters of competition policy and enforced within the context of the need to recognise the overriding imperative of human rights protection. This might explain why Professor Geiger's book has drawn on so long a list of distinguished contributors -- and why, in this Kat's opinion, the good professor deserves a decent katpat for all his effort. 

Bibliographic data:  Publication date April 2015 [though it seems to be published already ...]. xxiv + 727 pages. Hardback ISBN 978 1 78347 241 3;  ebook ISBN 978 1 78347 242 0. Price US$295 (online price $265.50). Rupture factor: not to be sneezed at.  Book's website here.

Other books in the same series are

Monday, 2 March 2015

Never too late: if you missed the IPKat last week ...

Welcome to the IPKat's first "Never Too Late" feature of the month.  We say goodbye to February with some sadness, since it has been this weblog's busiest month for site visits since its launch in 2003.  February brought in 147,988 "hits", despite having just 28 days.  Thanks, all of you, for your support. And now, in case any of last week's Katposts passed you by, here's the 35th weekly "Never Too Late" summary of last week's posts, recorded once again by our friend and highly valued colleague Alberto Bellan, who writes as follows:
SUEPO called off its proposed march on the British consulate in Munich last Wednesday in the face of potential liability for breaches of obligations under the European Patent Convention and Service Regulations -- but the union has called for a fresh demonstration on Tuesday 25 March, says Merpel.

Supreme Petfoods Ltd v Henry Bell & Co (Grantham) Ltd [2015] EWHC 256 (Ch) is another blockbuster judgment from Mr Justice Arnold in the High Court, Chancery Division, England and Wales. It is about a business that got a bunch of trade marks covering the somewhat unregistrable word "supreme", and then decided to bring proceedings against a defendant who wasn't using the word as a trade mark and whose use of it went back 20 years, recounts Jeremy.

Merpel re-sinks her paws in the hot story of the decision that Hague Court of Appeal issued in the sadly famous proceedings in SUEPO v EPO [on which see her earlier post here]. This time, the floor goes to nothing less than EPO's Emperor President Monsieur Benoît Battistelli.

Jeremy has just received a communication from a spokesman for the UK Intellectual Property Office (IPO). It is nothing less than the first public response of any national office to the current EPO unrest.

After his earlier note on Supreme Petfoods Ltd v Henry Bell & Co (Grantham) Ltd, Jeremy hosts this post of guest contributor Tim Behean (Sipara, Oxford), which focuses on just one aspect of this multifaceted ruling: burden of proof in so-called "double identity" actions in which the mark used by the defendant is identical to that of the claimant and the goods or services of the respective parties are exactly the same too.

Jeremy reports on the joint BLACA-IPKat event on sensory copyright [on which see earlier Katpost here].

Busy week of IP events for Jeremy, who this time recounts another tasty seminar entitled "Geographical Indications: FAGE, Feta, Fontina, and the battle for world markets".

Here Jeremy hosts the third in the series of posts from London-based law firm Bristows (where guest Kat Tom works) on its real-time experiment in litigating before the proposed Unified Patent Court (UPC). The first two reports are "A test-drive for the Unified Patent Court" (June 2014, here) and "A test-drive for the Unified Patent Court: Part II" (October 2014, here). This one too is masterminded by Alan Johnson and Alexandria Palamountain.

The European Patent Office publishes some patent data on which Katfriends at the Chartered Institute of Patent Attorneys have already pounced. Note the headline assertion that British business is failing to protect innovation, then read on, says Jeremy.

Following to the last events of the battle over the European Patent Office's governance, the Dutch Minister of Justice intervened with regard to the EPO's immunity from execution of court orders under international law, Merpel recounts.

The Court of Justice of the European Union (CJEU) issued its decision in Case C-41/14 Christie's France, a reference for a preliminary ruling from France seeking clarification as regards that peculiar creature of EU copyright known as artist's resale right, or droit de suite within Directive 2001/84 (the Resale Right Directive), and Eleonora is here to explain what that is about.

After the Patents Court ruling of Mr Justice Arnold in Warner-Lambert Company, LLC v Actavis Group Ptc EHF & Others, which Darren reported here, Jeremy has got some news to break on that painful patent war.

Valentina reports on a fresh trade mark dispute that the General Court has just decided, Pangyrus Ltd v OHIM, RSVP Design Ltd, Case T-257/11.

ZTE Corporation is ramping up to take advantage of the new legal environment that has resulted from the settlement between Qualcomm and the Chinese National Development and Reform Commission (NDRC) over claims that the company’s licensing practices had violated the country’s Anti-Monopoly Law, recounts Neil.

The UK Government will improve protection to make sure businesses are not exposed to unnecessary and baseless accusations ... in response to the Law Commission’s Report, reports Jeremy. That's cool!, says Hogan Lovells' Katfriend Alastair Shaw.

Birgit is back with one of her favourite topics: the interface between the naming of polar bear cubs and intellectual property rights.

Valentine’s Day makes Suleman think about relationships: the cruelty, the complexity and the cuddles. It is all about patent law and how subject matter ‘relates’ to other subject matter, he explains.

*****

PREVIOUSLY, ON NEVER TOO LATE

Never too late 34 [week ending Sunday 22 February] Bill Gates goes to China | Ms Swift's issue with trade marks | TMs and jurisdiction for on-line infringement cases | UK's Chartered Institute of Patent Attorneys and the EPO | Divani & Divani | UK first in global IP enforcement | SUEPO v EPO | Enterprise v Europcar [2015] EWHC 300 | Again on Cartier International AG and Others v British Sky Broadcasting Ltd and Others | Googling inventor clients | Code of ISPs' practice in Australia | Specialised IP Courts in China.

Never too late 33 [week ending Sunday 15 February] –- Evoking Audrey Hepburn’s image is not OK in Italy | Reasonable royalty and moral prejudice: new reference to the CJEU | CoA for England and Wales on parallel importations in Speciality European Pharma Ltd v Doncaster Pharmaceuticals Group Ltd & Madaus GmbH | The Logic of Innovation: Intellectual Property, and What the User Found There and Tritton on Intellectual Property in Europe reviewed | Italian baked goods’ trade marks in foreign megastores | Belmora LLC v Bayer Consumer Care AG and Bayer Healthcare LLC, Article 6-bis in Northern Viriginia | EU TM judges get together in CET-J | Chancery division on Dude’s copyright in Fresh Trading Limited v Deepend Fresh Recovery Limited and Andrew Thomas Robert Chappel | Sound-alike litigation in the music industry | Informal AC’s get together at EPO! | To Kill a Mockingbird reloaded | Personalised medicine.

Never too late 32 [week ending Sunday 8 February] –- Brazilian PTO’s delays | The Research Handbook on International Intellectual Property reviewed | Laura Smith-Hewitt | IP, women and leadership: the poll responses | Decline of West’s trust in innovation | Wikipedia public domain photos |CJEU in Case C-383/12 P Environmental Manufacturing LLP v OHIM | The Nordic IP Forum | The future of EPO’s BoA | Warner-Lambert v Actavis Mark 2 | Dragons' Den: where entertainment meets mis-advice? | Hospira v Genetech Mark 1, the Appeal | Litigation-Proof Patents: Avoiding the Most Common Patent Mistakes and Patent Portfolios: Quality, Creation, and Cost reviewed | Italy and San Marino’s friendship on IP is over| Problems and imperfections in biotech patenting: realities on the ground and trying to fix the system.


Never too late 31 [week ending Sunday 1 February] -- Women in IP, a MIP’s perspective | Another linking reference to the CJEU | Catarina Holtz on Disciplinary authority over the EPO BoA | EPO pays to say that patent examiners’ life is truly cool | You can’t name your daughter ‘Nutella’ | CJEU in Arne Forsgren v Österreichisches Patentamt | Blocking injunctions in Greece | IPEC and bondage in Haiss v Ball | Present and future of patent profession | Belgium asks CJEU: does the Enforcement Directive allow cost-capping in IP litigation? | Dutch diverge with English as Novartis prevails on Zoledronic Acid in Netherlands | Slogan and TMs | The coffee capsule wars | Declining public trust in innovation | IPEC’s ruling in Global Flood Defence Systems& Another v Van den Noort Innovations BV & Others | Again on CJEU ruling in Case C-419/13 Art & Allposters | Biotech financing: the risk components, ‘going long’ and patents as knowledge currency. 

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