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.

Sunday, 29 March 2015

Trade mark trolls in Cuba: will 'General Washington' come to the aid of US brands?

Does history repeat itself? Not as such, but it does throw the light of the past on the problems of the present.  This Kat well recalls the problems faced by international brands, returning to South Africa after years of boycotts in the Apartheid era, only to find that other were mischievously using their brands.  There are some parallels with the situation in Cuba today, though the politics are different -- and so too is the legal framework within which problems fall to be resolved.

In this guest post Jaime Ángeles (Angeles & Lugo Lovatón, Dominican Republic) gives an account of the problems faced by US brand owners in Cuba, following a decades-long embargo. Jaime is quite involved in this field, having contributed to last week's New York State Bar Association Online Market on the subject. This is what Jaime tells us:

Trademark trolls and trade mark hijacking in Cuba
The start of negotiations and eventual opening of commercial relations between Cuba and United States is tempting some individuals to jump at the chance to register US trade marks in order to force trade mark holders to negotiate their entrance into the Cuban market. This means the emergence of the Cuban “trade mark troll” and “trade mark hijacking”.

A group of people has started to file applications of US trade marks, including some very famous ones. One of these is a Cuban citizen, Gustavo Alejandro Fuentes Ledo, who has appliedto register at least 65 well known US trade marks including CHASE and NFL; in most cases he has applied for logos or device trade marks.

Impact of the embargo 
While filing an opposition is the legal procedure that allows you to try to stop a published mark going on to the register, Cuba operates a first-to-file rule and many US trade marks were not  previously registered in Cuba due to the US embargo. While many trade mark owners have started litigation in the Cuba Trade Mark Office through opposition or cancellation procedures, the territoriality protection rule of trade marks may go against the US trade mark owners' legitimate interests. However, if the US trade mark can also be considered a copyright work or reproduces a commercial name, there is a good chance that the opposition or cancellation procedure will succeed.

Cuba is a member of the Paris Convention but it is difficult to prove that a mark is well-known in Cuba when products bearing US trade marks have not been present on the Cuban market for many years.
A little-known Convention 
'General Washington'
An interesting and important exception to the territoriality principle in Cuban law can be found in the little-known General Inter-American Convention for Trade Mark and Commercial Protection (Washington 1929). This convention remains valid and in force today in all original contracting countries. Unlike the Paris Convention priority right, it is neither limited in time nor applied as of right. It is unlike the Paris Convention’s “well-known marks” protection in that the senior user does not have to prove fame in the country in which it seeks protection, but merely that the junior user was aware of the senior user’s rights in a member country.

Does Facebook tell the truth? 
We have been searching on the internet for information on Gustavo Alejandro Fuentes Ledo. It seems he is a Cuban citizen who has lived abroad (Spain) is actually based in Tampa, Florida (USA), travelling frequently to Miami. He is behind the portal and publication website These are a highly important facts, because Mr Fuentes is not a Cuban citizen who suddenly had a bright idea and created those trade marks in order to start up 65 new businesses in Cuba. It will be difficult for a Cuban trade mark applicant who lives in the United States and who travels around to avoid being found to be a bad faith trade mark applicant, being a person with previous knowledge of all those trade marks.

Mr Fuentes has incidentally invested more than 50,000 Euros in filing fees.

There are positive precedents in Latin America with the implementation of the 1929 Washington Convention. Colombia has the lead so far with international cases [Ann Taylor, Resolución 65875, Superintendencia de Industria y Comercio Colombia; Timberland Company v Stanton & Cia SA, Case 2002-3003-01], with one even being decided by the Andean Community Court of Justice [Nautica, Proceso No.26-IP-97. Tribunal de Justicia de la Comunidad Andina].

Apart from invoking the infringement of an earlier copyright work or of the commercial name of the real trade mark owner, the Cuban Trade Mark Office thus has other means of preventing the hijacking of US trade marks under the Inter-American Convention for Trade Mark and Commercial Protection -- but acceptance of evidence of previous knowledge and the implementation by Cuban authorities of the Washington Convention is crucial. 
Does the Cuban Trade Mark Office have the legal and political ability to enforce the provisions of the Washington Convention? This is a big question, taking into account the litigation of Cuban trade marks in the United States [Only accepted in TTAB proceedings: see "TTABlog Guest Comment: Marty Schwimmer on TTAB's "CUBITA" Summary Judgment Under The Pan American Convention"]. The actions before the Office were commenced late in 2014; we wait with interest and excitement to see how they will turn out.
This Kat is grateful to Jaime for enlightening him, both in relation to the problem and particularly in relation to the General Inter-American Convention for Trade Mark and Commercial Protection, with which he was hitherto unfamiliar.

Polo not the same as football, but Royal Berks give Yanks a partial whipping

It's the polo season again in Luxembourg, which hosts a forum that may have seen more POLO-related litigation than anywhere else in Europe, and possibly beyond (POLO cases that have come before the European Union's top courts so far can be seen here). The latest is Case T 581/13 Royal County of Berkshire Polo Club v OHIM - Lifestyle Equities (Royal County of Berkshire POLO CLUB), a decision rendered last Thursday by the General Court of the European Union in another POLO-related dispute, this time involving a Community trade mark (CTM) application [it seems to this Kat that the word "polo" has the same effect on brand owners as catnip has on cats -- its appeal is irresistible] The story behind the ruling runs like this:

In January 2011, the Royal County of Berkshire Polo Club Ltd ('RCB') applied to register as a CTM the figurative sign reproduced, above right, for inter alia, ‘spectacles, spectacle cases, spectacle frames, spectacle glasses, sun glasses; and accessories therefor’ (Class 9); ‘watches, jewellery, precious stones, precious metals, goods coated in precious metals’ (Class 14); ‘leather goods; imitation leather goods; trunks, travel bags, umbrellas, parasols, whips, harnesses, saddlery, walking sticks’ (Class 18) and ‘articles of clothing, footwear and headgear’ (Class 25). Lifestyle opposed, basing its opposition on four earlier figurative CTMs, all of which were represented by the sign which is reproduced on the left. As luck would have it, Lifestyle's marks were registered for pretty much the same goods as those for which RCB sought to register its CTM (the finding that the parties' goods were identical was not challenged).  Said Lifestyle, applying Article 8(1)(b) of Regulation 207/2009 on the Community trade mark, there was a likelihood of confusion of the relevant consumers on account of the similarity of the respective marks and the identity of goods.

Not much fun without the whip and
harness, not to mention the saddle ...
The Opposition Division rejected the opposition in its entirety. However the Second Board of Appeal uoheld the opposition with regard to all the goods for which RCB sought registration. Said the Board, the goods at issue were everyday consumer goods and were directed at the general public of the European Union, whose level of attention was normal; the image of the polo player, and the words ‘polo club’, in the two signs in question had an inherent enhanced distinctiveness in relation to the goods in Classes 9, 14, 18 and 25 covered by them; the signs at issue had some visual similarity, a degree of aural similarity (which the Board did not further define) and significant conceptual similarity. Since the earlier marks had an average distinctiveness, the Board held that there was a likelihood of confusion between the marks at issue.

Now it was RCB's turn to appeal. RCB applied to the General Court for the annulment of the Board's decision on two grounds: (i) that the reasoning given by the Board was inadequate and (ii) that it was wrong anyway.

The General Court gave the judgment of Solomon, upholding the Board's decision for most goods but annulling it to the extent that it refused the CTM for ‘whips, harness, and saddlery’. Here, in a nutshell, is what the Court said:

Adequacy of Board of Appeal’s statement of reasons

The General Court had no problem finding that the Board's statement of reasons was perfectly adequate, adding that the duty to state reasons for decisions is an essential procedural requirement, the reasoning of a decision consisting in a formal statement of the grounds on which that decision is based. If those grounds are vitiated by errors, those errors vitiate the substantive legality of the decision, but not the statement of reasons, which may be adequate even though it sets out reasons which are incorrect.

Alleged misapplication of Article 8(1)(b) of Regulation 207/2009

The Board was correct in finding that the goods of the respective parties must, in the absence of further details concerning their possible status as luxury goods, be regarded as goods for everyday consumption and as directed at members of the general public, who are not expected to pay a particularly high degree of attention to them. The Board was therefore correct to find that the level of attention of the relevant public was normal [Katnote: believe it or not, the goods in question, which are deemed to be 'goods for everyday consumption' and not luxury goods in the absence of evidence to the contrary, include 'jewellery, precious stones, precious metals, goods coated in precious metals'].

Distinctiveness of the image of a polo player and the words ‘polo club’

The Board of Appeal, relying, directly or by analogy, on the judgments of 21 February 2006 in Cases T-214/04 Royal County of Berkshire Polo Club v OHIM — Polo/Lauren (ROYAL COUNTY OF BERKSHIRE POLO CLUB) [noted here by the IPKat] and T-376/09 POLO SANTA MARIA, EU:T:2011:225, found that the image of a polo player and the words ‘polo club’ had an inherently enhanced distinctiveness in relation to the goods in this opposition, because that image and those words had an imaginative content in relation to those goods, as they did to the goods involved in the cases that gave rise to those judgments. RCB submitted that the image of a polo player and the words ‘polo club’ was descriptive of the sport in question and of the place where it is played. In POLO SANTA MARIA, the General Court found that the image of a polo player had an enhanced distinctiveness in relation to, inter alia, the Class 18 and Class 25 goods pertinent to this opposition, but with the exception of ‘whips, harness and saddlery’ in Class 18, relying on the fact that the goods other than ‘whips, harness and saddlery’ were not directly linked to the playing of polo and that, in that case, the opposing party had proved to the requisite legal standard that the relevant public was familiar with its mark. Thus the Board was wrong to hold here that POLO SANTA MARIA supported a finding that the intrinsic characteristics of the sign were sufficient on their own to endow the image of a polo player and the words ‘polo club’ with enhanced distinctiveness in relation to the Class 25 goods at issue. The Boards finding relating to the enhanced inherent distinctiveness of the image of a polo player and the words ‘polo club’ could not therefore be upheld in its entirety, since the image and those words had
(i) weak inherent distinctiveness in relation to ‘whips, harness and saddlery’ in Class 18, given their close connection to the playing of polo, 
(ii) normal inherent distinctiveness in relation to the Class 25 goods in this action, given that they could be used for polo playing, although there was nothing in their description to the effect that they related to goods specifically designed for that purpose and 
(iii) inherent distinctiveness which was more enhanced, and at the very least normal, in relation to the other goods in this action, given that they had no connection with the playing of polo.
In terms of comparison of the marks, the Board's decision could not be faulted. As for the conceptual comparison, the signs did share a high degree of conceptual similarity, in so far as each referred to a polo club and displayed a similar device of a polo player. Even if, notwithstanding the arrangement of their word elements, the relevant public were to associate those word elements with two different polo clubs, the degree of similarity would be only marginally reduced in so far as both signs would still continue to refer to the idea of polo playing, albeit at different clubs. There was nothing to suggest that the non-English speaking public understood the meaning of the word element ‘Royal County of Berkshire’ in RCB's mark. Nor could any support for the application for annulment be found in the argument that there was no likelihood of confusion between the marks of different football teams.  Apart from the fact that this was wholly irrelevant, RCB did not put forward any evidence at all as grounds for concluding that it was possible to compare the general public’s knowledge of polo with its knowledge of football; nor did RCB explain how the two polo clubs concerned in this case would be comparable, in the eyes of that public, to football teams.

The likelihood of confusion

As for ‘whips, harness and saddlery’, the similarity between the signs was reduced significantly by the fact that their common elements had low inherent distinctiveness in relation to those goods. For that reason, the earlier marks must be regarded as having a low inherent distinctiveness in relation to those goods. Further, those goods were more likely to be purchased by the relevant public with the help of a specialised seller with whom the purchaser may speak, with the result that the aural similarity of the signs would gain in importance. This being so, the Board was wrong to find that there was a likelihood of confusion between the signs at issue in relation to ‘whips, harness, and saddlery’.

This Kat puts his money on an appeal by both parties, not because the General Court's decision is necessarily wrong (though he personally would have regarded the horse-and-rider combination and the words 'POLO CLUB' as having near-zero distinctiveness for anything relating to polo in the absence of persuasive evidence to the contrary), but rather because the potential value of the marks in commercial terms is great and the market for whips and harnesses may well have received a boost in light of the recent launch of Fifty Shades of Grey, with its helpful hints for keeping fit and achieving inner contentment.

How to pronounce Berkshire here
Rules of polo here and water polo here; rules for litigating Community trade marks here and here

Taste of nature in court as plant growers slug it out over red radish patent

We've just had tomatoes and broccoli [on which see last week's Katpost by David, here], and now it's the turn of red radishes [this Kat's favourite is the white radish: for more information on radishes, click here]. From Rita Prins of Cresco BV comes the following episode from The Hague where, this Kat can confirm, it's not just the human rights of European Patent Office employees that come under scrutiny but real patents too. This is what Rita tells the Kats:

The District Court of The Hague delivered a decision in a patent dispute between Cresco and Taste of Nature on 18 March when it held that Taste of Nature’s patent for red radish plants was invalid since the seeds, sprouts and the plant itself -- all of which fell within the scope of the patent -- had been made public to customers of Koppert Cress before the patent was even applied for. Cresco is very pleased with this outcome and will resume deliveries of red radishes to its customers.

These proceedings began in 2011 when Taste of Nature  accused Cresco of infringing patent EP 1 290 938 for red radish sprouts. The patent describes a plant that can exclusively be bred by using essential biological processes (which are excluded from patentability under Article 53(b) of the European Patent Convention).

Cresco was initially successful in resisting an application for interim injunctive relief, arguing that a plant that can only be bred using an essential biological process should also be excluded from patentability. The Court of Appeal decided otherwise and ordered Cresco to stop producing and selling the red radish sprouts. The latest decision, on the merits, has however gone in favour of Cresco.
You can read the decision on the merits, in Dutch, here.

This Kat would appreciate some clarification as to why the decision on the merits was based on lack of novelty rather than on the ground of non-patentable subject matter.  Can anyone give further information, please?

Why and how cats and radishes should be kept apart here and here
Slugs and radishes here
Heartburn and radishes here

Friday, 27 March 2015

Friday fantasies

Forthcoming events. There's plenty to choose from on the IPKat's Forthcoming Events page, but some events come to this Kat's notice so late that he doesn't have the chance to get them loaded up on to it. One such event, organised by the UK branch of AIPPI, fits that description: it's taking place this coming Monday, 30 March. Titled "What’s the CJEU said this time? A review of the latest SPC musings from Luxembourg", it has much to commend it, apart from the fact that it's either free or cheap (depending on your status) and will be accompanied by refreshments.  If you love (or hate) the idea of extending the term of pharmaceutical patents, this is the place for you to be. Check it out here.

Thank you for the thank-you.  Safe harbour provisions and online service providers: A Discussion Paper is the latest set of state-of-the-art policy thinking from Mike Weatherley MP, former Intellectual Property Adviser to the Prime Minister but who is still placing ideas and advice in the public arena. Quite apart from this slender publication's discussion points and recommendations, there's one little bit that the Kats liked best. Under "Acknowledgem["Oh no they're not!", cries Merpel as we carry her kicking and screaming away from her keyboard]". He then graciously thanks this among others, this weblog.  Thanks, Mike, for thanking us (and by implication particularly thanking Eleonora for her excellent contributions on this topic). Giving credit where due is a great way of earning respect and making friends.
ents" the good Mike writes "I would like to thank the following organisations and individuals for their co-operation on this discussion paper. However, I should make clear that all opinions expressed in the paper are mine

The IPKat thought he should post this sufficiently early that it does not get labelled as an April Fool's story. If you are planning to work over the Easter period, and if your work requires that you access any of the European Patent Office (EPO) online services listed below, you may want to replan your weekend and go searching for Easter eggs rather than for patents.

From 19:00 Central European Time (CET) on Thursday 2 April 2015 to 07.00 CET on Tuesday, 7 April 2015 the following services will be unavailable:
Prior art check
  • Espacenet - patent search
  • European Patent Register
  • Open Patent Services
  • Online Fee Payment
  • My Files
  • Mailbox
  • Administration
  • Common Citation Document
  • PDF downloads from EPO website
  • Searching of EPO website
  • Searching of OJ
  • Searching of Board of Appeal decisions
  • Credit card payments
  • Contact forms
Online filing software, new online filing (CMS), web-form filing and the EPO website itself (other than the listed functions above) will be working during this period. The EPO is of course closed for the receipt of documents on Good Friday (3 April) and Easter Monday (6 April) so any deadlines are extended automatically to the 7th. The EPO's announcement (first spotted by fellow Kat David, who has a paw or two in drafting this item) can be verified here, in case you uspected that this Kat was playing a prank.

Even ordinary people
can become customers
of the UK IPO ...
Ever wonder what IP offices make of their contacts with ordinary people? From the UK Intellectual Property Office's Nigel Hanley (one of the IPO's Katfriends in Residence) comes the following: "As part of our visit programme we summarise the views and information that customers have shared with us during visits within an annual report which can be downloaded from the IPO website". And indeed you can download the IPO's report, Customer Visit Programme 2014, here.

There are probably national offices around the world that are more engaging, more efficient or more geographically convenient than the UK IPO [though there can't be many, to be sure, says Merpel], but there can hardly be any that take their mandate to be helpful and user-friendly than this office. Keep up the good work, adds the IPKat -- especially when it means not only listening to what your users say but weighing it up and acting on it.

The European Patent Office: a Message from Merpel

Readers of this weblog will not fail to have noticed the quantity of blogposts on the legal, administrative and social issues that have turned the European Patent Office (EPO), once a byword for expertise, efficiency and excellence, into the setting for a modern soap opera in which the three 'e's are replaced by the three 'p's: power-politics, point-scoring and paranoia.

By recognising both the "social unease" that exists in the EPO and by timetabling the need to address it, this month's Administrative Council Meeting appears to have provided at least a basis for the various interested parties -- the President, Boards of Appeal, management, staff and unions, and also the members of the Administrative Council themselves if truth be told -- to start afresh by building relationships that are founded on respect, on tolerance and understanding, on listening to one another, plus a leavening dose of humility.

The outcome of the Administrative Council Meeting will certainly not be to everyone's liking. For one thing, it approved the controversial healthcare reforms which, viewed from the standpoint of an objective bystander, appear to be one of the most significant causes of the "social unrest" and which will remain a permanent obstacle to its being remedied. Nor will its acceptance of the proposal for a Board of Appeal Committee, in the face of some sensible and constructive criticisms from the Praesidium and Board members, have done much to enhance respect or confidence for the Council itself. However, a door has been opened and a small step has been taken in the right direction. The question to ask now is whether, now that this opportunity has been created, it will be taken and built upon -- or mocked and spurned.

It is easy to be sceptical and to say that something won't work, particularly if you can do it anonymously by penning comments on a blogpost. It's also rather fun to be able to say to anyone who can be bothered to listen "See, it didn't work. I told you so!"  It's far harder to swallow one's pride, sit down with people you have not hitherto liked, trusted or respected, and talk through the problems that the EPO has to address, both those which it always has to face and those which it has recently created for itself. But that is what this Kat is calling for.

Essentially, what is needed now is for the President and all the other parties involved to make sure that their first concern is the running of the Office, not the ruining of it.  This requires all of them to demonstrate skills of statesmanship, a commodity that has been in short supply of late and a skill that should not be confused for even one moment with bending others to one's will through force. No-one knows the EPO better than those who are involved in its operations at all levels and it is only through them that its salvation will be brought about, not through ideal solutions imposed from outside the Office.

It seems to this Kat that, while the main focus of attention will remain the President, management, unions and employees, the Administrative Council is also on trial. It has finally taken a decisive step but its members should remember that their responsibility does not stop at this juncture. On the contrary, now that they have set the ball rolling, it is incumbent on them to make sure that it continues to do so. If this hard-earned momentum is lost now, it may difficult or impossible to regain. The Administrative Council's members, collectively and individually, cannot now turn their backs on the governance of the EPO and hope that, now that they have had their say, all will be well. They need to know what is happening in the Office, and why it is happening; they need to applaud each step that is taken in the right direction, to offer encouragement and advice where necessary. Some say the Administrative Council is too large to be efficient and that a better, sharper tool is needed for the tasks it faces. Its performance now will be an indicator of whether this is true.

This Kat expects that, unless something very tragic happens, the number of frenetic blogposts on the latest news of the Eponia conflict zone will diminish sharply.  She looks forward to being able to report on happier news in the future, though that will only be the case if the warring factions read and take to heart the third paragraph of this missive -- though naturally she will be swift to point to evidence that any of the players in this game are not taking her message to heart. Maybe one day she will be able to write that the EPO has gone from its three 'e's and three 'p's to the three 'o's: optimism for the future, organisational fairness and transparency, and overall contentment for all who commit their careers and their endeavours to the EPO cause.

When the translation is the prior art: or is it?

Translations have long engaged IP law and practice. In the 19th century, the fundamental issue focused on whether copyright extended protection to a translation. After an initial period of disagreement (U.S. law said “no”, English law said “yes”), consensus was reached in favour of protection. Later on, the right to translate reached the international arena, as dispute arose at the Berne convention level about whether to allow translations to take place in developing even without explicit authorization in name of encouraging the flow of information. The issue of translation has taken on a more meat-and-potatoes aspect in the patent system, namely the requirement for translation of the patent application and the attendant costs as an aspiring applicant seeks to achieve broad scope of protection. But even in the patent system, translations seem to raise legal questions, as this Kat was reminded this week as he exchanged coffee-klatch thoughts on the subject with a colleague.

In particular, this Kat got to wondering about how translation interacts with a determination of whether a given document constitutes prior art. Let’s assume that the document at issue is written in a language other than that of the jurisdiction in which the patent is being adjudicated, such that neither the parties involved nor the adjudicator have any direct understanding of it. As such, each side commissions a translation. Not surprisingly, the two translations are not identical. More than that, however, they differ with respect to the translation of several key sections. If one relies on the translation of Party A, the reasonable conclusion is that it does not constitute prior art. However, the translation of those sections as contained in the translation submitted by Party B lead to the opposite conclusion. So is, or is not, the document prior art?

If no issue of the language of the document itself is at issue, then all sides are working from the same text. A difference of opinion may arise as to how to understand the text, but there is no disagreement over what the text says (as contrasted with what it means). That is why we have an adjudicator. But in the scenario described above, the parties do not have any ability even to know what the document “says”. Instead, all they can do is refer to two different texts in translation that each purports to convey the language of the original text into the lingua franca of the parties. This in effect means that there is no original text (indeed, it can be assumed that if additional translations were commissioned, each of them would also differ, one from the other). Not only is there a difference of opinion on whether the document constitutes prior art, but there is also a disagreement over what the document actually is.

There also seems to be a bit of a legal fiction at work here. This Kat is reminded of the well-known query about what do we mean by sound: if a tree rustles in the wind, but no one hears it, has a sound been made? In our situation, from the point of view of the consciousness of the parties involved, the putative prior art document is only embodied in the translation commissioned by Party B, which post-dates the filing date of the application. A translation may be, in modern copyright parlance, a derivative work, but it still stands as a work separate from the underlying work. But in order for the original document to be treated as prior art, we need to deem the translation as being identical in both time and substance with the original document. The tendency to treat two distinct acts as a unified whole reminds this Kat of trade mark licensing law, where the quality control function was developed to support the conclusion that use of the mark by the licensee is deemed use by the licensor. Something similar seems to be work in our situation as well.

Thursday, 26 March 2015

TVCatchup heads back to Luxembourg for a second preliminary ruling

A familiar sight for lawyers
involved in TVCatchup suits
ITV Broadcasting Limited, ITV 2 Limited, ITV Digital Channels Limited, Channel Four Television Corporation, 4 Ventures Limited, Channel 5 Broadcasting Limited and ITV Studios Limited v TVCatchup Limited (in administration), TVCatchup (UK) Limited and Media Resources Limited (a Mauritian company) [2015] EWCA Civ 204 is the latest development in the long-running copyright litigation saga which is usually known by its shorter name of ITV v TVCatchup. It's also a development that pretty well ensures that it'll be running for some considerable time to come. 

This litigation first hit the headlines in July 2011 when Mr Justice Floyd gave a ruling at [2011] EWHC 1874 (Pat) on ITV's allegatgion that TVCatchup ('TVC') had infringed the copyright in its broadcasts by communicating them to the public through a process of electronic transmission. This process consisted of TVC running a website which allowed ordinary viewers to watch live UK television -- including broadcasts by ITV -- on their own computers, smart phones and games consoles. To do this, the viewer had to become a member of TVC, which gave him the option to choose one of 50 or so channels. The viewer, having made a choice, would be taken to a new screen on which TVC provided a stream of the programme being broadcast. 

In case you were wondering ...
ITV agreed that these transmissions to viewers were not "broadcasts" under section 6 of the Copyright, Designs and Patents Act 1988 (CDPA) and that TVC hadn't made ITV's broadcasts available to the public so that they could be accessed from a place and at a time individually chosen by them. However, ITV did feel that TVC’s services, which communicated its broadcasts to the public by means of an electronic transmission were a "communication of the broadcasts to the public by electronic transmission" under section 20 of the same Act. TVC disagreed, arguing that, in order to infringe the copyright in a broadcast under section 20, the alleged infringer's transmission must itself be a broadcast within the meaning of section 6 (which even the ITV agreed it wasn't). 

Floyd J referred the case to the Court of Justice of the European Union for a preliminary ruling on whether streaming constituted a "communication to the public". The CJEU's answer, in short, was "yes" in its 7 March 2013 ruling [noted by the IPKat here]. The case then came back to Floyd J who ruled, in October 2013, that TVC had basically infringed and its defences failed -- except that, to the extent that TVC had streamed ITV, Channel 4 or Channel 5 to members of the public by cable (which included transmission via the internet but did not include transmission to mobile devices via any mobile telephone network) and to users situated in the region to which the original broadcasts were made, it had not infringed the broadcasters' copyright by reason of the defence contained in section 73 of the CDPA [the relevant bits of which are reproduced below]. The judge also declared that it was not possible to interpret section 73 so as to be compatible with Article 5(3)(o) of the InfoSoc Directive (2001/29) which, the broadcasters said, was the only provision of that directive which could provide a proper basis for such a defence. Article 5(3)(o) permits

use in certain other cases of minor importance where exceptions or limitations already exist under national law, provided that they only concern analogue uses and do not affect the free circulation of goods and services within the Community, without prejudice to the other exceptions and limitations contained in this Article.
The parties then appealed against the judge's findings and his order so far as it concerned the scope of the section 73 defence and its application to the facts.  In January 2014 the Secretary of State for Business, Innovation and Skills was permitted to intervene, his interest in these issues being apparent from the declaration of incompatibility made by the judge. 

Today the Court of Appeal (Lady Justice Arden and Lords Justice Kitchin and Underhill) surprised us all by deciding, after dismissing TVC's appeal, that it was necessary to send the case back to Luxembourg for a further preliminary ruling of the CJEU, this time on the section 73 issue. Said Kitchin LJ:
  1. Under Article 267 of the Treaty on the Functioning of the European Union this court may submit a request to the Court of Justice for a preliminary ruling on a question of European Union law if it considers it is necessary to do so in order to resolve the dispute brought before it.
  1. The present case raises a difficult question as to the scope of Article 9 of Directive 2001/29 ["This Directive shall be without prejudice to provisions concerning in particular patent rights, trade marks, design rights, utility models, topographies of semi-conductor products, type faces, conditional access, access to cable of broadcasting services, protection of national treasures, legal deposit requirements, laws on restrictive practices and unfair competition, trade secrets, security, confidentiality, data protection and privacy, access to public documents, the law of contract"] and whether it permits the retention by a Member State of a provision such as s.73 of the CDPA which, in the particular circumstances set out in that section, affords a defence both to an allegation of infringement of copyright in a broadcast and of the copyright in any work included in the broadcast arising from the streaming of public service broadcasts to members of the public where that streaming takes place by wire (a) via the internet (but not including transmission by mobile devices via any mobile telephone network) and/or (b) to users situated in the original broadcast area. ...  I am satisfied that a ruling on this question is necessary for this court to give judgment.
  1. It only remains to consider whether this court should exercise its discretion to request a preliminary ruling from the Court of Justice. I am conscious that none of the parties before us has invited us to take this course. However, as is well established, the court may do so of its own initiative. I have come to the conclusion that it is appropriate to do so. The relevant facts are clear. The issues raised by the question I would refer are critical to our final decision and I do not believe that this court can resolve them with complete confidence without guidance from the Court of Justice. Moreover, they are important issues in relation to which a uniform approach across the European Union is essential. It is regrettable that there needs to be a second reference to the Court of Justice in this case but that is a consequence of the fact that the issues on which this appeal turns were never fully developed before the judge.
  1. I should add that after the hearing and this court having formed the provisional view that it was appropriate to make a further reference, we invited the parties to file further written submissions on this issue. The parties duly did so, but the submissions we received did not alter the provisional view to which we had come. We have also been informed that the European Commission has sent a letter of formal notice to the United Kingdom pursuant to Article 258 of the Treaty on the Functioning of the European Union in relation to s.73, but we have not been provided with a copy of this notice and no party has suggested that it should affect our decision [not even Merpel has seen this letter, but she says it would be good to know what her European servants are writing to her English ones, since she her taxes pay their salaries and this is hardly something worth keeping secret -- is it?]. In all these circumstances and for all of the reasons I have given, I would make a reference and invite the parties to make submissions as to the precise wording of the questions I have identified.
The exact formulation of the questions remains to be fine-tuned by the parties. The Kats will of course keep you informed once they have them. Meanwhile, don't be surprised if one or more of this Kat's more copyright-minded colleagues returns to this case and posts some more scholarly comments on it.

APPENDIX: the most relevant bits of the CDPA, section 73:
Reception and re-transmission of wireless broadcast by cable.

(1) This section applies where a wireless broadcast made from a place in the United Kingdom is received and immediately re-transmitted by cable.

(2) The copyright in the broadcast is not infringed—
(a) if the re-transmission by cable is in pursuance of a relevant requirement, or

(b) if and to the extent that the broadcast is made for reception in the area in which it is re-transmitted by cable and forms part of a qualifying service.
(3) The copyright in any work included in the broadcast is not infringed if and to the extent that the broadcast is made for reception in the area in which it is re-transmitted by cable; but where the making of the broadcast was an infringement of the copyright in the work, the fact that the broadcast was re-transmitted by cable shall be taken into account in assessing the damages for that infringement.

BREAKING: EPO staff union to win formal recognition?

The President of the EPO and Chairman of the Administrative Council (AC) have just published a joint statement following the recent AC meeting. Merpel is pleased to see that the AC is at last starting to address the crisis in staff relations that has developed in recent years and which has come to a head in recent months.

While nothing is promised other than a kick-off meeting, the intention would appear to be to formally recognise the staff union, SUEPO. It remains to be seen if such formal recognition will include the actions that the Hague Court of Appeal ordered the EPO to undertake, including unblocking SUEPO's emails to staff members, abolishing the President's power to dictate the terms of industrial action, and allowing for collective bargaining. We shall see what develops and as always expect that our readers will have strong views to express in the comments below (bearing in mind the rules at the bottom of this post).

Joint statement from the Chairman of the Administrative Council and the President of the Office
26 March 2015

Call for a social dialogue

The Administrative Council acknowledges the results achieved by the Office and its staff which represent the outcomes of the Efficiency and Quality strategy adopted in 2011.

The Administrative Council confirms its clear will to continue the policy of reforms to the benefit of users. It is determined to address with the highest priority the issue of the social tensions which have occurred in this process.

Therefore, the Chairman of the Administrative Council and the President of the Office will launch new initiatives to restore social peace.

To achieve this, they call for a renewed social dialogue.

They consider in particular that the formal recognition of the trade unions within the EPO's legal framework could create the conditions to re-launch the process and to overcome some longstanding issues.

The Chairman and representatives of the Administrative Council, and the President of the Office with representatives of the management invite the trade unions of the EPO to a dedicated kick off meeting on 22 April 2015.

As ever, Merpel welcomes comments, but begs to remind readers of the following:
Henceforth, in respect of all EPO-related blogposts, no comment will be posted if it is merely ascribed to "Anonymous".  Any reader wishing to conceal his or her identity must adopt a pseudonym (which should not be obscene and should not be the name, or the mis-spelling of the name, of a real person).  The pseudonym need not be an actual login name, as long as it is stated clearly at the beginning and/or end of the comment itself. This way, it will be easier for people who post later comments to identify and remember the earlier comment-poster and to recall the discussion string.  Where, as has already happened on occasion, a string carries over from one blogpost to a later one on the same or a related subject, readers will be encouraged to use the same pseudonym for the sake of continuity.

Broccoli & Tomatoes, part deux: more from the Enlarged Board

The Enlarged Board has been busy indeed. Not content with clarifying the law on clarity (see here), it has also now emerged from the garden clutching two prize specimens: G 2/12 (Tomatoes II) and G 2/13 (Broccoli II).

Broccoli & Tomatoes - Jacob Levine
Both cases (they were dealt with in a consolidated hearing) relate to the exclusion from patentability under Article 53(b) EPC for plant or animal varieties or essentially biological processes for the production of plants or animals (with the caveat that the exclusion does not apply to microbiological processes or the products thereof).The decisions are  (pdf download links).

This Kat, who prefers a nice piece of fish to either broccoli or tomatoes, will leave it to a colleague with greener fingers paws to explain the decisions in the coming days. In the meantime, the headnotes are posted below, these being identical other than the addition of a point dealing with process features of a product-by-process claim in Broccoli II (Headnote 2(a)).

Tomatoes II:

1. The exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plant material such as a fruit.

2. In particular, the fact that the only method available at the filing date for generating the claimed subject-matter is an essentially biological process for the production of plants disclosed in the patent application does not render a claim directed to plants or plant material other than a plant variety unallowable.
3. In the circumstances, it is of no relevance that the protection conferred by the product claim encompasses the generation of the claimed product by means of an essentially biological process for the production of plants excluded as such under Article 53(b) EPC.
Broccoli II:

1. The exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plant material such as plant parts.

2. (a) The fact that the process features of a product-by-process claim directed to plants or plant material other than a plant variety define an essentially biological process for the production of plants does not render the claim unallowable.

2. (b) The fact that the only method available at the filing date for generating the claimed subject-matter is an essentially biological process for the production of plants disclosed in the patent application does not render a claim directed to plants or plant material other than a plant variety unallowable.
3. In the circumstances, it is of no relevance that the protection conferred by the product claim encompasses the generation of the claimed product by means of an essentially biological process for the production of plants excluded as such under Article 53(b) EPC.

Thanks to our commenters Anonymous and P de Lange for pointing us to the existence of these decisions.

G 3/14: Clarity from the Enlarged Board

Readers who are currently involved in European Patent Office (EPO) opposition proceedings where the patent has been amended (i.e. about 70% of opposition cases) will no doubt be as excited as this Kat to learn that the Enlarged Board has issued its decision in G 3/14, a copy of which can be downloaded (PDF) from here.

The decision is a big one, and the IPKat is only starting to digest it. More detailed analysis may follow but here's the shortish version of a 96 page decision. The one sentence synopsis is that clarity examination in opposition must henceforth be of a much more limited scope than the more recent case law would suggest.

Alleged lack of clarity of the claims (Article 84 EPC) is excluded as a possible ground of opposition, but Article 101(3) says that the opposition division must examine whether the amended patent meets the requirements of the EPC in coming to its decision to maintain or revoke the patent. Whether this latter provision means that the opposition division or board of appeal must examine the amended claims for clarity is a recurring issue, and one which has given rise to two diverging lines of case law, which you can read about in detail in the decision itself, or in the referring decision T 373/12.

The Enlarged Board was asked to give an opinion on whether it was allowable to examine the clarity of amended claims in cases where elements of a dependent claim were added to an independent claim, and if so, to clarify how extensive that clarity examination ought to be.

Surprisingly perhaps, but in a move that practitioners, examiners and appeal boards must welcome for the increased certainty that it brings (even if the actual result is not to one's taste as an examiner or opponent), the Enlarged Board has used this referral as an opportunity to go far beyond the narrow question of combining dependent claim elements (or complete dependent claims) and has reviewed the entire subject of clarity in opposition proceedings de novo in a major judgment which rewrites the law on clarity examination post-grant.

The existing case law
The "conventional" jurisprudence (to use the Enlarged Board's terminology) is exemplified by T 301/87, which is the sort of landmark decision that most young children who yearn to be patent attorneys learnt while sitting on their grandfather's knee. According to this approach when claims are amended in opposition proceedings, objections of lack of clarity cannot be raised if the objections "do not arise out of" the amendments made.
 The "diverging" cases, again using the Board's terminology, are represented by T 1459/05 in its more moderate form and by T 459/09 in its more extreme form. T 1459/05 said that the clarity of a combination of dependent claim 4 with independent claim 1 was to be examined as an exception, due to the fact that the added feature was both unclear and yet was the only possible distinguishing feature over the prior art. In T459/09 the Board held that where claims were amended with a technically meaningful feature, this justified an "unrestricted exercise" of the examination power under Article 101(3).

As regards what it means for a lack of clarity to "arise out of" an amendment, this was initially interpreted (in T 301/87) as follows: a lack of clarity "arises" from an amendment when it did not exist before, so that the effect of the amendment is to give rise to a lack of clarity for the first time. However in T 472/88, the Board went further in a statement that has been followed in many decisions over the years. Here the Board looked to the Oxford Dictionary definition of "arise": "originate, be born, result from, come into notice, present itself". Later decisions both approved this broad definition and extended it to include "concealed" lack of clarity which then was "made visible" after the amendment. Although the referral did not ask the Enlarged Board to look at this aspect of clarity, the Enlarged Board did so.

Three major points from the decision

1. The answer to the referred questions

The Enlarged Board was given a series of questions, the first being:
1. Is the term "amendments" as used in decision G 9/91 of the Enlarged Board of Appeal (see point 3.2.1) to be understood as encompassing a literal insertion of (a) elements of dependent claims as granted and/or (b) complete dependent claims as granted into an independent claim, so that opposition divisions and boards of appeal are required by Article 101(3) EPC always to examine the clarity of independent claims thus amended during the proceedings? 
Questions 2, 3 and 4 explored the implications of a yes or no answer to question 1. The Board noted that the issue was not the interpretation of G 9/91 (as the referring Board had put the question) but rather the proper interpretation of Article 101(3), and it considered that in answering question 1(a), all of the referred questions were also dealt with:
The questions referred to the Enlarged Board of Appeal are answered as follows: 
In considering whether, for the purposes of Article 101(3) EPC, a patent as amended meets the requirements of the EPC, the claims of the patent may be examined for compliance with the requirements of Article 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC.
2. Which approach is correct: T 301/87 (conventional) or T 1459/05 & T 459/09 (diverging)? 

The Board explicitly says [Reasons, 87]:
The Enlarged Board thus approves the conventional line of jurisprudence as exemplified by T 301/87 (section E(a), points 18 to 26, above), and disapproves [...] the line of "diverging"  jurisprudence (as exemplified in the cases set out in section E(c), points 30 to 43, above).
3. When does a lack of clarity "arise out of" an amendment?

Eagle eyed readers will see that the IPKat edited out some text in the preceding quotation. The missing part deserves its own spotlight:
The Enlarged Board thus approves the conventional line of jurisprudence [...] and disapproves the line of jurisprudence as exemplified by T 472/88 (explained in section E(b), points 27 to 29, above) [...]
T 472/88 was the case where "arises out of" was given a broad construction based on the OED definition, i.e. "originate, be born, result from, come into notice, present itself" . The Enlarged Board enlarged (sorry) on this particular point at [Reasons, 29], saying:
In the Enlarged Board's view, development of the jurisprudence of the Boards of Appeal in this way [interpreting "arise" to include each of the synonyms given in the dictionary definition]  is not legitimate. It is of course appropriate to use a dictionary when interpreting a statute to help elucidate its meaning, but statements in a decision of a court using ordinary words do not require further interpretation in this way: they are to be understood in their context. Given the facts of those cases (see points 18 and 20, above) the Enlarged Board does not consider that the Boards there intended these words to have the expanded meaning given to them in T 472/88 and the later cases which followed this approach. In any event, it is unclear to the Enlarged Board what the test developed on the basis of this construction actually amounts to or when precisely an amendment can be said to bring into notice, highlight or focus attention on a previously existing ambiguity (see further, point 80(k), below). This line of cases has not generally been regarded as belonging to a diverging line of cases (although it was identified as such in T 1577/10).
There's plenty more to digest in this decision, and the IPKat eagerly awaits readers' comments.

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