The team is joined by: GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopoulou, Mathilde Pavis, and Eibhlin Vardy; by InternKats Ieva Giedrimaite, Rose Hughes, and Cecilia Sbrolli; and by Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Thursday, 18 January 2018

Swedish Patents and Market Court of Appeal requests CJEU to clarify notion of ‘shape, or another characteristic, which gives substantial value to the goods’

The 'Manhattan' print
While trade mark professionals are keenly awaiting the outcome of the Louboutin reference [the case has been re-opened, and a new Opinion of Advocate General Szpunar, on which see here, is due on 6 February], the appeal branch of the specialist Swedish IP court has made a reference to the Court of Justice of the European Union regarding what is to be intended as ‘shape, or another characteristic, which gives substantial value to the goods’. 

The reference concerns Article 7(1)(e)(iii) of the 2009 EU Trade Mark Regulation as amended by Regulation 2015/2424 [now Regulation 2017/1001].

Background

The reference has been made in the context of infringement and invalidity proceedings regarding EU trade mark (EUTM) ‘Manhattan’.

Svenskt Tenn is an interior design company, and has acquired a good reputation for its products. The company also notoriously collaborated with famed Austrian architect Josef Frank. The collaboration resulted in Mr Frank producing 2,000 furniture sketches and 160 textile prints, which are still marketed and sold by Svenskt Tenn. Among the textile prints, there is a pattern known asManhattan’.

Svenskt Tenn claims that the pattern that Mr Frank designed is an artistic work within the meaning of the Swedish Copyright Act, in which the company holds the copyright. Since 2012 the company has also owned the EUTM “Manhattan” (No 010540268), this being a figurative mark characterized by the colours blue, white, green, and red. The trade mark is, inter alia, registered in classes 21 and 16 of the Nice classification for: tissues and textiles (class 21); and table cloths, napkins posters, and graphic presses (class 16).

Textillis is a UK company that since 2013 has also sold and marketed textile prints through its online marketplace. Textillis has allegedly sold certain fabrics and textiles incorporating the pattern designed by Mr Frank. 

Josef Frank
Svenskt Tenn brought proceedings against Textilis on grounds of copyright and trade mark infringement. It argued that the Patents and Market Court (lower instance) should prohibit Textilis from selling the specific items and prohibit use of the Manhattan trade mark. In response to Svenskt Tenn’s application, Textillis argued that the Patents and Market Court should revoke registration of the 'Manhattan' trade mark. According to Textillis the reason for this was that Manhattan lacks distinctive character and that the sign is a shape that gives the product a substantial value, thus being ineligible for registration.

The Patents and Market Court (lower instance) found that it had not been demonstrated why the Manhattan trade mark should be revoked. In support of this, it held that the EU Trade Mark Regulation states that a EUTM may consist of all signs which can be represented graphically, including images, provided that they have distinctive character. In this regard, because pattern-like images can be registered as trade marks, the Court found that the elements represented in the Manhattan design are signs that are likely to attract trade mark protection. Furthermore, the Patents and Market Court found that the registration of the Manhattan trade mark did not entail a sign consisting of a shape. Thus, a trade mark could not be cancelled on the basis of the absolute grounds for refusal within Article 7(1)(e)(iii) of the Regulation.

The CJEU reference

The case was appealed to the Swedish Patent and Market Court of Appeal which decided [see also here] to stay the proceedings and refer the following questions to the CJEU [please note that the reference is not yet available on the Curia website so the translation from Swedish may not be accurate]:

1. Whether Article 4 of Regulation 2015/2424 means that the wording of what is now Article 7(1)(e)(iii) of the EU Trade Mark Regulation applies to invalidity proceedings brought after the entry into force of the new provisions but in relation to trade marks registered before that date;

2. Whether Article 7(1)(e)(iii) of the EU Trade Mark Regulation should be interpreted as meaning that its scope covers a sign consisting of the two-dimensional representation of a two-dimensional product, including a fabric; and

3. If the answer to question 2 is yes – how should the wording in Article 7(1)(e)(iii), “shape, or another characteristic, which gives substantial value to the goods", be interpreted? Would it cover a situation where the registration includes a variety of classes of goods and services and the sign in question could be applied differently to the various goods and services covered by the registration? 

The IPKat will follow this reference and reports on relevant updates in due course.

Presentation of information: Is the EPO stretching the line for patentable subject-matter, again?

A cat looking for information
The new Guidelines for Examination of the EPO, valid from 1st of November 2017, include an interesting revised (and rather detailed) section G II 3.7, dedicated to the patentability of claims based on presentation of information. Presentation of information under 52(2)(d) of the EPC includes any form of information (such as visual or, audio) and covers both its cognitive aspect as well as the means of communication. However, the fact that the claims include purely cognitive (and thus non-technical) aspects does not automatically mean hat they are excluded from patentability. Presentation of information that assists the user in achieving a technical task has a technical effect (confirmed also in T336/14 and T1802/13). 

This, one could claim, is old news. Nonetheless, the Guidelines continue by stating that whether a specific invention falls under the scope of Art. 52(2)(d) might depend either on its content or on the way it is presented. When the information has as its sole objective to assist the recipient in making a purely non-technical decision, then the presentation of information is non-technical:

“Information representing a state of a non-technical application run on a computer system, such as the state of a casino game, a business process or an abstract simulation model, constitutes non-technical information. This type of information is exclusively aimed at the user for his subjective evaluation or non-technical decision-making which is not directly linked to a technical task".
This means that what is important is the role this information plays: will it be used for a technical purpose or not?

The Guidelines continue:
“A feature defining a presentation of information produces a technical effect if it credibly assists the user in performing a technical task by means of a continued and/or guided human- machine interaction process (T 336/14 and T 1802/13). Such a technical effect is considered credibly achieved if the assistance to the user in performing the technical task is objectively, reliably and causally linked to the feature.”

The Guidelines add yet another requirement, namely,  the manner of presenting information should produce in the mind of the user an effect that does not depend on the user’s psychological factors but on purely objective physical parameters. The choice of one or another way of presenting information, when this is based on the subjective preferences of the recipient (some prefer that information is presented in numerical way, others in text,  yet others that the information to be conveyed in writing in some audio-visual manner) may thus not be considered technical. On the other hand, when the choice of presentation mode depends on the recipients physiological attributes, the presentation of information has a technical character. 

One of the examples referred to in the Guidelines is  a  visual aid that permits a surgeon to position an implant in a more precise, timely and credible manner. Such a presentation of information would in fact provide technical effect.  Yet another interesting example provided by the Guidelines is that of a soccer game:

“In a video soccer game, the particular manner of conveying to the user the location of the nearest teammate by dynamically displaying a guide mark on the edge of the screen when the teammate is off-screen serves the technical purpose of facilitating a continued human-machine interaction by resolving conflicting technical requirements: displaying an enlarged portion of an image and maintaining an overview of a zone of interest which is larger than the display area”

So far so good! But where do we draw the line of patentability when it comes to inventions that cover methods related to the presentation of information? It seems that the above-stated example allows for a certain  range e of interpretation. When the presentation of information (both content andr method of presentation) allows the recipient to perform a technical act (in the previous examples, placing an implant or identifying a player) in a more timely, precise and credible manner, it will be considered to have a technical effect. 

OK, but how about, for instance, claims related to lean manufacturing? Lean manufacturing covers methods that involve the development of information and the appropriate communication of the information to users (employees involved in the production process)., It has as an objective to minimise waste and costs and to maximise efficient production, taking into consideration objective factors such as the number of employees, the space, the nature of the product, and the constraints of the manufacturing processes.. An application of the Guidelines would lead us to the conclusion that although lean is per se not technical, it might in fact provide a technical result, since it is presented proactively,  depends on the user’s physical parameters, and its goal is to enable the user to perform a task in a more efficient and precise manner. The result of the different steps of a lean production method are in fact technical (such as reduced time, decreased number of accidents, and  enhanced quality of products). Against this backdrop, it seems that the new G II 3.7EPO Guidelines open up  new opportunities with regards to the definition of patentable subject-matter.

A final thought: If applying the Guidelines leads to the conclusion that a method of lean manufacturing could be a patentable invention, how far away are we from discussing patentability of pure business methods in the EPO? 

Wednesday, 17 January 2018

Around the IP Blogs!

As the January blues have seriously started to kick in, the IPKat is in search of some excitement around the IP blogland. Stay warm and cozy, Kat friends!

IPKat doesn’t mind a duvet day!
The 1709 Blog discusses the proposed Music Modernization Act in the U.S., directed to an overhaul of the system of royalty arrangements for mechanical licenses. This piece of legislation proposes a mechanism, under which digital services would fund a Mechanical Licensing Collective, and, in turn, be granted blanket mechanical licences for interactive streaming or digital downloads of musical works.  Although paid for by the digital services, the new collecting society would be run by music publishers and (self-published) songwriters. The law would also change the way the statutory boards and courts that regulate US collective licensing are organised; the selection method for judges to rate courts; and the criteria employed when setting rates that would be altered to reflect market realities.

JIPLP looks at the CJEU’s decision in C-265/16, VCAST, which analyses the intersection of private copying and communication to the public in the context of the cloud. The Court held that a service enabling private individuals to receive free-to-air television content and directly record it onto a personal cloud storage space was unlawful. Even though the Court did not address the applicability of the private copying exception to cloud services in general, it did not foreclose its application of this exception. The exception should arguably apply to copies made by individual customers of the service in cases where the work is lawfully made available or the cloud service is predominantly characterised by the reproduction function.

Over at the Kluwer Patent Blog, the patent light shines onto the IP community’s request for governmental action to ensure continuity and certainty of IP law in the context of Brexit and to prevent disruption both to IP providers and its users. The document of the IP organisations, inter alia, seeks UK’s continued intention to stay in the UPC and to abide by the terms of the UPCA, to retain one of the sections of the Central Division in London, and to ensure continued involvement of UK national judges and participation of legal professionals qualified and based in the UK in all parts of the Court’s procedures.

IP Draughts reviews the process by which this document was drafted and also comments on its substantive contents. It is anticipated that many more such communications from the IP industry stakeholders are on the way, aiming to enlighten governmental officials on the issues that Brexit raises for IP law and policy.

The IPKat snuggles in a trade mark blanket to find some celebratory news from WIPO and EUIPO as announced on Marques.The ROMARIN, Madrid e-Alert and Madrid Realtime Status tools have all been discontinued by WIPO as of the 1st of January 2018, leaving Madrid Monitor the only tool for tracking the status of international trade mark applications and registrations under the Madrid System. The first day of this year also marks the effective date for the 11th edition of the Nice Classification. EUIPO bids farewell to the good old fax as a method for filing and renewing a EUTM.

Image credits: Aymeric Kaczmarski

New presidency of the Council of the European Union ... new position on the EU copyright reform?

Following the conclusion of the 6-month Estonian presidency, the presidency of the Council of the European Union is now Bulgarian, and will be so for the first semester of 2018.

The Council is one of the key EU institutions and brings the voice of Member States' governments into the decision- and law-making process. In fact and among other things - together with the European Parliament - the Council is in charge of adopting EU legislation.

Of course, one of the pending pieces of legislation that might receive a decisive boost towards its formal adoption over the next few months is the Directive - proposed by the EU Commission in September 2016 - on copyright in the Digital Single Market [here; Katposts here].

Since its release, the draft directive has attracted extensive commentary. In particular, the draft provisions contained in Article 11 ('Protection of press publications concerning digital uses', this being a proposal to introduce a new neighbouring right in favour of press publishers) [Katposts hereand Article 13 ('Use of protected content by information society service providers storing and giving access to large amounts of works and other subject-matter uploaded by their users', this being a proposal to be read in combination with Recital 38 in the preamble to the directive and aimed at remedying the so called 'value gap' or 'transfer of value') [Katposts hereare those that have been subject to the most extensive scrutiny, at several levels.

Consensus in the Council regarding the proposed copyright directive

The former Estonian presidency worked indeed on reaching consensus among Member States' governments regarding the position that the Council of the European Union would adopt in relation to Articles 11 and 13 in particular.  

Different versions of the Estonian 'compromise' were made available and, of course, widely commented. 

For the Council to be able to advance its position political consensus among the various Member States' governments is key.

The latest, consolidated, version of the presidency compromise proposal is available here.

Now that the presidency of the Council has passed to Bulgaria, what will change (if anything)?

Bulgarian's questions for Coreper orientation debate

Yesterday, a document prepared by the Bulgarian presidency and aimed at setting up an 'orientation debate' on Articles 11 and 13 of the proposed directive within Permanent Representatives Committee (Coreper) was released.

What's in it?

First, the Bulgarian presidency highlighted the progress made under the Maltese and Estonian leadership, and noted that any progress would have as a basis the latest compromise proposal prepared by the Estonian presidency. 

This said, the Bulgarian document sets up some questions for consideration by Coreper, with the hope that consensus could be reached among Member States.

Press publishers' right: to be kept ... possibly with some nuances

With regard to the proposed press publishers' right, Bulgaria noted that no consensus could be reached on either option advanced by Estonia, ie: (A) an actual right, that would be written in such a way that its scope would be clearer than what the Commission had proposed; or (B) a presumption of entitlement of press publishers to license and enforce the rights in their press publications. 

From the text of the document it would appear that Bulgaria favours option (A). In fact, the document formulates a number of questions around option (A), the answer to which could help Member States achieve consensus in the Council in the form of an acceptable compromise. 

Where do you think you're going?!
In particular, the Bulgarian presidency is asking Member States about:

- determination of the extracts of press publications that would fall within the scope of the right: would that be a matter of originality (and therefore eligibility for protection also under copyright, as per Infopaq) of the part reproduced, or should size be a criterion irrespective of originality?

- whether the type of use made of the press publication (commercial or non-commercial) should be a relevant criterion;

- term of protection: is the original proposal of a 20-year term adequate?

Value gap proposal: also to be kept ... subject to a few clarifications (or not) 

Also here, the Bulgarian presidency seems oriented towards maintaining Article 13 in the text of the directive, but is asking Member States to comment on certain aspects of the provision, hoping that addressing these issues would allow consensus to be reached.

In particular:

- Should the directive clarify or not what is to be intended as communication to the public by platforms that host and make available user-uploaded content [the original proposal does not clarify]?

- Should the directive exclude that platforms that make acts of communication to the public are eligible for the safe harbour under Article 14 of the E-commerce Directive [the original proposal refers to the safe harbour for hosting providers]?

- If platforms are liable for unauthorized acts of communication to the public, should there be some sort of "targeted liability mitigation provided for to avoid potentially excessive impact on platforms storing and giving access to user uploaded content" [this could be so, assuming the ineligibility of such platforms for the Article 14 E-commerce Directive safe harbour]

- If there is a clarification of the communication to the public, should there also be an obligation to apply measures [likely including pro-active filtering - on this point it might be interesting to look at this and bear in mind the recent EU Commission's Communication on Tackling Illegal Content Online, which includes reference to the so called 'good Samaritan clause' (p 3)] as an additional provision, and if so, should it apply to the same service providers as those concerned by the clarification on communication to the public or should the scope of this obligation be different and potentially wider? 

Where to write one's
own thoughts and responses
Finally, Bulgaria is asking whether a better option could be NOT to include in Article 13 any language relating to communication to the public and safe harbours and include, instead, a new recital that would recall the existing principles of EU law which are relevant to determine the conditions under which user-uploaded content platforms engage, based on existing case law of the Court of Justice of the European Union, into a copyright-relevant act and are not covered by the limited liability in Article 14 of the E-commerce Directive.

Conclusion

From this document released by the new Bulgarian presidency it would appear that neither Article 11 nor Article 13 are going anywhere, Council-wise. 

With regard to Article 11, the idea of replacing a right in favour of press publishers with a presumption of representation seems to have been abandoned. 

There is greater room for manoeuvre in relation to the value gap proposal, and on crucial aspects indeed. 

Let's see what happens over the next few months, also at the Parliament level. The JURI Committee is now expected to vote on the report by MEP Axel Voss (who has replaced MEP Comodini-Cachia) on 26-27 March (the January date has been in fact postponed once again), and it will be crucial to see what the report proposes, and how the vote goes.

Tuesday, 16 January 2018

French government claims back « France.com » (as trade mark and domain name)

According to French Courts, the name of a country is like a person’s name. National governments can therefore prevent appropriation by private entities of their country’s name, even in the absence of a registered mark. This was the case of the French government, which succeeded in the ‘Atout France’ decision handed down by the Court of Appeal of Paris on 22 September 2017. According to French newspapers (here), the defendants have lodged an appeal against the decision before the French Supreme Court (Cour de Cassation). 


The French government (represented by the public ‘Atout France’ [Atout France’ is a national Economic Interest Grouping (EIG) dedicated to the development of tourism in France] and the French Ministry of Culture) disputed the registration by a private company of a series of marks using the word, or words, ‘France.com’ (see below). According to French jurisprudence, national states should be able to enjoy rights by virtue of prior use or ‘earlier rights’ (even in the absence of registration) over marks featuring the name of their national territory, even where  suffixes  such as ‘.com’ or ‘.net’ are affixed to it. 


The dispute at the heart of the ‘Atout France’ decision originally involved two private companies, a US company trading as « France.com Inc » and a Dutch company known as « Traveland Resorts ». France.com Inc initiated legal proceedings against Traveland Resorts following the latter’s registration for word and graphic marks featuring the sign « France.com » (see below) at the French and European levels. The companies subsequently settled their dispute via agreement, which included the assignment of the marks by Traveland Resorts to France.com Inc. The assignment was then registered by  OHIM and INPI, the French intellectual property office.
one of the complex marks disputed by the French government

Following the assignments, the French government initiated legal proceedings against the US company France.com, Inc., seeking to  assign the registered marks to the State of France  by virtue of the existence of an ‘earlier right’ in the word ‘France’ as per Article 711-4 of the French Intellectual Property Code (this provision is equivalent to Article 4(b) of the 2015 Trade Mark Directive, see here). 

Both the Paris Tribunal (Tribunal de Grande Instance) and the Paris Appeal Court (name in French as well to be consistent) accepted the government’s contention that the marks and the domain name violated the State of France’s right to its own name. The Court of Appeal stated, in ruling in favour of the government,  that

 "The appellation « France » constitutes for the French government an element of identity similar to the patronym of a natural person ; … this term refers to the national territory in [terms of] its economic, geographic, historic, political and cultural identity, the appellation notably promotes the range of products and services targeted by the registration of the marks at stake ; … the ‘.com’ suffix refers to an internet name domain extension and does not modify the [overall] perception of the sign."

The decision of the Court of Appeal then stressed that the risk of confusion by the public played a critical role in their conclusions:

"Considering therefore that the wider public would identify such goods and services as provided by the French government, or at the very least by an official supplier/service acting with the guarantee of the French government, …   the risk of confusion is further heightened by the stylised graphic representation of the geographic borders of France as part of the complex marks at issue;"

The Tribunal and the Court of Appeal both agreed that the examples of ‘earlier rights’ listed under Article L 711-4 (e.g.,  a protected appellation of origin, authors’ rights; or an industrial property right ) are not exhaustive; thus, a national government  may rely on this provision to defend the name of its territory on these grounds.  

The Court explained:

"Considering that the list of earlier rights provided under Article L 711-4 of the Intellectual Property Code is not exhaustive, the name « France » claimed by the State of France may constitute an earlier right predating the registration of the French marks at  issue  provided there is a risk of confusion in the public’s mind"
one of the complex marks disputed by the French government

As a result, the Court of Appeal  cancelled the French marks and assigned the name domain « France.com » to the State of France. The Court of Appeal also encouraged the French government to seek the cancellation of the registrations at the European level before the EUIPO following the relevant procedure.  This is because the French government had requested the Court to issue an injunction ordering France.com Inc. to withdraw its registration before the EUIPO. The Court of Appeal denied the request,  stating simply that there “was no ground” to order such withdrawal, and that the French government should seek to nullify  the European marks directly before the EUIPO. 

To date, the website ‘www.France.com’ is still live and managed by France.com Inc., which is consistent with the fact that the US company recently lodged an appeal before French Supreme Court. The French government is yet to take actions before the EUIPO in relation the European marks. Any updates readers have on the dispute(s) are most welcome!

Monday, 15 January 2018

Monday Miscellany


Your weekly update on the news and events upcoming in IP is here! Highlights this week include news of inclusivity in London, a reminder of the change in fees at the UK IPO and a new data set to browse from the USPTO.

UK – London

Celebrate the Chinese New Year in style with IP & Me’s inaugural event on 26 February 2018, hosted by Baker McKenzie (near St Paul’s). IP & Me is an IP inclusive group, focusing on ethnic minorities in IP. Everyone is welcome at this free networking event. For further details and registration, see here.

For even more inclusivity, there is also an upcoming IP inclusive workshoon 1 February 2018. The event, hosted by Kilburn & Strode LLP, will focus on the topical issue of Managing banter in the work place. Speakers include a member of the UK IPO’s HR team, Dominic Houlihan. Registration is free and all-inclusive. This Kat can strongly recommend IP inclusive events as great networking opportunities, especially for those at an early stage in their career. For further information on IP inclusive, as well as to sign up to the IP inclusive mailing list, see here.

Attentive IPKat readers will recall from our last events post that Kat Neil Wilkof will be giving a lecture at Kings College London (KCL) on 23 January 2018, on the topic of Changing commercial circumstances, IP and revenge of the common law. For further details, see here.

Kat Neil will also be giving a lecture at University College London (UCL) on 25 January 2018, on the topic of Branding and co-branding: How much do they really contribute to innovation? More information and registration can be found here. A chance to see a Kat in the fur!



This Kat is big on inclusivity
There will also be a research seminar at The City Law School on 7th February 2018, 6pm, delivered by professor Tuomas Mylly from the University of Turku on Fundamental Rights and Copyright Law in the EU. Further information and free registration can be found here.

Finally, the Charted Institute of Trademark Attorneys (CITMA) program of events for the year can be found here. Of note, are the CITMA Intensive Training Seminar on IP contracts on 21 March, the Spring Conference and Gala Dinner on 21-23 March, a Designs & Copyright Seminar on 19 April and the CITMA Christmas Lunch on 14 December.

Netherlands, TILT - Call for papers

The Tilbury Institute for Law, Technology and Society (TILT) PhD Colloquium on Regulating new technologies in uncertain times will take place at Tilburg University on 14 June 2018. To find further information on the topics that will be covered at the colloquium and to submit an abstract see here. The deadline for abstract submissions is 28 February 2018.

Poland - WIPO roving seminars

The WIPO roving seminar series continues in Poland this month, in Cracow on January 23, Gliwice on January 24 and Wroclaw on January 25. The seminars and workshops will be in English and Polish, with Polish translation for the English presentations. For further information and free registration see here

UK IPO – change in fees

The UK IPO’s new patent fee schedule will come into force on 6 April of this year. The UK government’s guidance on the fee changes can be found here. The application, search and examination fee are all set to increase. Renewal fees increase from the year 12 renewal fee onward. According to the UK IPO, reasons for the increase in fees include to “[m]aintain a sustainable income on reasonable assumptions to finance the IPO’s future activities”.

USPTO – new data set on office actions

The USPTO has released a new data set providing detailed information on the office actions (non-final rejections and final rejections) that it issues. According to the USPTO Chief Data Strategist Thomas Beach, these data have been brought to the public by “leveraging emerging technologies such as big data and machine learning”. The data set itself can be downloaded from the USPTO’s open data platform here. A paper published by the USPTO analyzing the data can be read here. See Tables 1 and 2 of the paper for facts on the distribution of reasons for rejection in final and non-final office actions. This Kat's initial browse of the data reveals such interesting facts as 12.4% of the USPTO's §101 subject eligibility rejections being based on the Alice decision (although the significance of this, without merging the data with those on the type of subject matter in examined claims, is unclear...). The USPTO has also updated its patent examination data set to include the prosecution information for the most recent applications, as sourced from public pair.

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