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

Thursday, 31 March 2005


MARQUES and Information Week report that the long-awaited .eu top level domain name has finally been approved by ICANN. The sunrise period, during which only public bodies and trade mark proprietors will be able to obtain .eu domain names is expected to start in the fourth quarter of 2005.

A beautiful sunrise – but how long will you need to wait before you can see it?

The IPKat says, if you’re after a .eu domain name, don’t hold you’re breath. The timetable is still tentative.

Sunrise period timetable here
Capturing sunrises here
Musical sunrise here

Wednesday, 30 March 2005


At last, and delayed from Monday...RxPG News reports that NGO Medicin sans Frontiers has expressed concern at India’s recent amendments to its Patent Act. Previous India did not grant product patents, but this has changed in an attempt to make India TRIPs compliant. This will make it easier for pharmaceutical companies to obtain Indian patents. India has also made it harder to get compulsory licences granted on public health grounds. However, patented technology that is already the subject of a compulsory licence will continue to be available to the manufacturers of generics, but on payment of a licence fee. Currently 50% of those on anti-retroviral drugs rely on Indian generic versions.

The IPKat thinks that, if there’s a problem, the correct way isn’t to attack India for complying with its international obligations. Either it’s to call for TRIPs to be amended to better take into account the needs of those who cannot afford crucial treatment, or to continue to encourage the IP rights-holders to make those drugs available to those in serious need on preferential terms.


...don't worry, I haven't deserted you. The Blogger software isn't very co-operative at the moment, but normal service will be restored ASAP.

The IPKat isn't taking a cat-nap, he's just thwarted by his software.

Tuesday, 29 March 2005


If you haven't yet booked up for CLT's Trade Marks 2005 conference, there's not much time: it takes place on Tuesday 5 April at London's Cafe Royal. Chaired by Bird & Bird IP enthusiast Katharine Stephens, the programme covers a full day's worth of trade mark topics: there are two sessions on registration issues, then one each on regular infringement (IPKat co-master Jeremy is doing this slot) and its common law cousin passing off. After lunch it's time for parallel imports, anti-counterfeiting and domain names, followed by the customary discussion session.

Bird & Bird ... but no likelihood of confusion?

Monday, 28 March 2005


IPKat co-master Jeremy has been labouring for the past few days in trying to write a conference paper on the European Court of Justice's attitude to "likelihood of confusion" in EU trade mark law. He has got as far as a fairly advanced draft and now welcomes comments, however critical, from anyone who wants to take the trouble to read the paper. If you'd like to see it, click here and a copy will be duly dispatched. The paper is to be given later this week at Fordham University's Annual International Intellectual Property Law and Policy conference in New York (click here for details).

The joys of confusion here and here
Word confusion here and here
Consumer confusion here

Sunday, 27 March 2005


Two unrelated copyright stories from across the Pond:

- From the Mercury News - A screenwriter has lost a copyright case before the 9th Circuit Court of Appeals after the court found that she had no right to bring the action. The writer claims that her script for the TV movie The Other Woman, in which a mother teaches her children to get along with the woman that is to be there stepmother after her death from cancer, was copied in the cinema film Stepmom. The writer’s script is owned by the company which produced the TV movie. Though that company purported to assign her the right to bring an action, the court found that copyright holders can't assign or sell the right to sue for copyright violations to anyone else.

- From Reuters: On Tuesday, the Supreme Court will hear MGM v Grokster. The court will eventually have to decide whether those who make P2P file sharing networks available incur secondary liability in relation to those who swap illegal downloads over their networks.

The IPKat awaits the Supreme Court’s highly important decision with interest.

Grokster background here, here and here


Is registration of this trade mark contrary to EU wine labelling regulations?

Continuing its recent trend towards themed issues, the April 2005 European Trade Reports, published monthly by Sweet & Maxwell, carries ten decisions which share the common theme of opposition. Four are appeals to the Court of First Instance against decisions of OHIM's Opposition Division; another three are OHIM Opposition Decisions themselves. Of the remainder, two are British and the third Irish. Highlights include an attempt to prevent the registration of Mezzacorona as a trade mark for wine in the UK on the ground that it is illegal under EU regulations on wine labelling and a heavyweight scrap between DIESEL and DIESELIT for flat irons in the EU

Saturday, 26 March 2005


The Boston Globe reports that Harvard students are up in arms over the college’s decision to drop brand-name cereals. Even though students pay $ 4,286 per annum for their meal costs, cereals such as Apple Jacks, Cheerios, Frosted Flakes, Froot Loops and Cap'n Crunch, have been exchanged for less expensive, apparently healthier options such Tootie Fruities and Colossal Crunch. The new regime is said to be saving the college 25% on its six-figure breakfast cereal budget. However, the students are mobilising, with the establishment of groups such as ''Harvard Students for the Reimplementation of Brand-Named Cereals". Other Ivy League and state universities though are continuing to serve brand-leader cereals.Says David Roth, the owner of two cereal bars situated near to college campuses:

''There's a fierce brand loyalty with cereal. Give people what they know and love. It's just something that nurtures and comforts them."

If this is what brand-name cereal advocates, the IPKat is glad that Harvard has ditched it…

The IPKat says that this just goes to show the power of brand loyalty. Watch out for more coverage of this story – it could become a serial.

More Harvard breakfasts here
The link between cereals and education revealed here
Know your cereals here, here and here
Cereal Harvard might consider introducing here

Friday, 25 March 2005


The UK Patent Office has made available the Communiqué from the Working Group of Industrialised Nations on Intellectual Property and Development, which met at the EPO in Munich on 21 and 22 March. The Working Group was established in February of this year and the meeting was attended by delegates from Austria, Belgium, Canada, the Czech Republic, Denmark, the European Commission, the European Patent Office, Finland, France, Germany, Hungary, Italy, Ireland, Japan, Lithuania, Luxembourg, the Netherlands, New Zealand, Norway, Poland, Portugal, Romania, Spain, Sweden, Switzerland, United Kingdom and the United States of America.

At the meeting the group backed WIPO’s work in development-related areas of IP and called for members to pay more attention to the need to efficiently meet the requirements of developing countries. Members, it said, should adopt a “demand driven” approach. Mere capacity building isn’t enough said the group. Instead, more attention should be paid to the relationship between IP and economic, social and cultural development. Existing proposals concerned the disclosure of the origin of genetic resources and traditional knowledge in patent applications were also discussed.

The outcome of these discussions sound sensible to the IPKat but, at the risk of appearing ignorant, the IPKat admits that he has never heard of this influential-sounding working group (though he thinks it might be this) and wonders whose (if anyone’s) auspicies it is under. Any information would be gratefully received.

More on IP and development here and here


The March 2005 issue of Sweet & Maxwell's European Copyright and Design Reports contains seven cases, several being available for the first time in English. Cases include

* Bild-Kunst v Focus (Bundesgerichtshof, Germany): on whether the parodic use of a typically German representation of an eagle is permitted;

Watch the birdie -- but don't take too many liberties with it or you may be sued

* Paperboy (Bundesgerichtshof, Germany): another case dealing with the legality under copyright and database right of a website providing a news service that links through to copyright-protected third party web pages;

* Hundertwasser-Haus (Bundesgerichtshof, Germany): unauthorised postcards made from photos of buildings situated in public places;

* Copyright and Communications Advisory Agency v Latvian Radio (Supreme Court, Latvia): another spat over unpaid licence royalties owed to a collecting society.
Other cases in this issue are Case C-88/04 European Commission v United Kingdom (UK castigated for failing to implement Information Society directive in Gibraltar), Sawkins v Hyperion (copyright exists in edited version of ancient musical works) and Griggs v Evans (No. 2), a fascinating analysis of the extent to which a British court can make rulings that determine ownership of copyright outside the jurisdiction.

Thursday, 24 March 2005


...why, on the EUR-LEX list of ECJ case-law catagories, there's a heading for silkworms, but there isn't one for intellectual property.


Decided yesterday by Mr Justice Mann, Fraser-Woodward Ltd v British Broadcasting Corporation and another [2005] EWHC 472(Ch) is the latest in a line of copyright infringement cases to raise the issue of how far an alleged infringer can rely on the sometimes unreliable defence of "incidental inclusion" of the allegedly infringed work in a work created by the defendant.

Brighter Pictures, a TV production company, used images of newspaper pages on which 14 photographs of the family of a well-known footballer and pop singer had been published under licence, in a television programme entitled ‘Tabloid Tales’ which was made for and broadcast by the BBC. Fraser-Woodward Ltd (FW), which owned the rights to those photographs, sued Brighter Pictures and the BBC for copyright infringement. The principal defences were fair dealing within s.30(1) of the Copyright, Designs and Patents Act 1988, and incidental inclusion within the meaning of s.31(1) of the same Act. The defendants argued that the purpose of the programme was to criticise and/or review tabloid journalism and the methods employed by the tabloid press and/or the celebrities featured in it to build and exploit a story to their advantage.

Fair dealing and incidental inclusion: where would the Beeb be without them?

Mann J dismissed FW's claim.
* The first 13 photographs was clearly used for the purpose of criticism or review within the meaning of s.30. The programme contained many shots of newspapers, their mastheads and their stories, together with their pictures. It also contained various film clips demonstrating the public presentation of, or public appearances of, the family. They were all there to demonstrate a certain style of journalism, the coverage of celebrity, and to comment on (in the form of criticism) that style as manifested in the relevant publications. There was nothing unfair about this use.

* The 14th photograph was included only incidentally. It was a small photo appearing within a newspaper headline. The focus of the filmed shot was on the headline, which appeared as an example of a sensational headline. In that context the small photograph was incidental: it was only there because it happened to be in the original.
The IPKat agrees. If in a blatant case of infringement like the Mandy Allwood case [1999] FSWR 610 the unauthorised use was fair, this case was ten times less likely to end up with a finding of infringement.

More on incidental inclusion here and here

Wednesday, 23 March 2005


The Court of Appeal yesterday delivered a decision on entitlement to a patented invention in Markem Corporation v Zipher [2005] EWCA Civ 267. The opinion of the court was delivered by Lord Justice Jacob, who appears to be something of a one-man Court of Appeal in IP disputes these days since the judges he sits with always seem to find his judgments highly agreeable.

The disputed patents in this case related to thermal printers for print "best before" dates on packaging for foodstuffs. Zipher (who employed some key staff that were formerly employed by Markem) obtained patents for a printer" and ribbon drive that were said to be invented by former employees of Markem, who claimed an interest in the patents on the ground that they were developed from its own materials. Markem made no allegation of breach of confidence or breach of contract or duty against its former employees.

In the Patents County Court Judge Fysh held that those involved with the development at Zipher had used matter contained in Markem's documents. Declining to believe their evidence as to the making of their inventions, he ruled that various claims of the patents belonged either to Zipher or to Markem, or were jointly owned. On appeal Zipher submitted that the judge was not entitled to make adverse findings about the truthfulness of the inventors of the patents. Markem maintained that they were entitled to be granted a patent for the invention, that the validity of the patent was irrelevant to the issue of entitlement to it and that, in entitlement proceedings, each claim of the patent had to be considered separately.

The Court of Appeal allowed Zipher's appeal, holding in particular that

* the judge erred in making adverse findings about the truthfulness of the inventors. If their evidence was to be disbelieved they had to be given a fair opportunity to defend themselves. In any event, since the judge's reasons for the adverse findings were inadequate, the inventors' evidence as to the making of the inventions and the subsequent patenting process had to be accepted.

* The issue of Markem's entitlement to apply for a patent was irrelevant to the issue of whether Markem could claim an entitlement to an application by Zipher.

* Proceedings relating to an entitlement to a patent under the Patents Act 1977, s.8 could not turn into a full-scale inquiry into validity. However, where an unanswerable case of validity was raised, the comptroller could act upon it. If the patent was clearly and unarguably invalid in whole or part, the comptroller could take that into account.

"Best before" dates: a metaphor for priority in patent law?

* Markem's claim-by-claim approach under the Patents Act, s.8 was fallacious and was not called for by the Act. The word "invention" in s.8 had to have some more general meaning than what was in the claims. This was because the question of entitlement could arise even before claims existed, since applications did not have to have claims.

* Markem's materials indicated what would be desirable in a printer rather than how actually to produce such a machine. In the absence of any clear duty to the contrary, there was nothing in the materials which Markem's ex-employees could not use at Zipher. The

* In the circumstances, breach of confidence proceedings brought by Markem against the inventors after trial of the entitlement proceedings were an abuse of process and should be struck out.

The IPKat is grateful for clarification of the utility of the claim-by-claim approach as a means of determining entitlement to patent rights. Where a dispute as to entitlement arises at an early stage at which an intention to apply for a patent has been expressed by a s.15 filing but no claims have been made, it is obvious that a claim-by-claim approach is of no use at all; but where claims have been made and a dispute arises as to, for example, the question whether one or more alleged joint inventors is indeed a joint inventor, tracing each alleged inventor's contribution back to a specific claim has its attractions. Merpel says, it's amusing to see how Lord Justice Jacob refers to his former self as "Jacob J (as he then was)", eschewing the temptation to use the first person singular.

More on "best before" here and here


The UK Patent Office has issued a new Practice Amendment Notice, which explains the Registry practice concerning offensive trade marks in the light of the LCAP's decision in JESUS JEANS.

Merpel has enjoyed looking at all the examples of offensive trade marks given (with pictures!)

In favour of scandalous marks here

Tuesday, 22 March 2005


Noting that Camilla Parker-Bowles will soon be married to Charles, Prince of Wales and heir to the thrones of England and Scotland, the IPKat wondered whether any speculative CAMILLA applications were finding their way on to the UK trade mark register. Whether because (i) Camilla is less popular than the late Princess Diana, (ii) someone is exercising great vigilance in discouraging such applications or (iii) the name CAMILLA is not seen as possessing any inherent commercial attraction, it seems to be business as usual for the trade mark professions. The IPKat's search listed just four CAMILLAs, the most senior of which dated back to 1972. Not to be outdone, Merpel then checked out CAMILLA AND CHARLES and CHARLES AND CAMILLA combinations, but there were none on file. There is no overt evidence of gold-digging, though all of this could change in the event that the cautious Brits finally warm to the good lady.

Every dog has his day -- but when will happiness smile on the Prince of Wales?
UK provisions on the registration of royal names and insignia here (scroll down to section 4)
Search UK trade marks here
Gold-diggers here and here
Pots of gold here and here

WORD OF MOUTH MARKETING COMES OF AGE notes that, later this month, hundreds of corporate and ad agency executives will come together for what may well be the first conference devoted to word-of-mouth marketing. Wired adds:

"That a conference is being held on such a topic -- not to mention that there are now multiple trade associations for word-of-mouth marketing and its cousin, viral advertising -- is testament to the rapid growth and success of these forms of advertising, which until recently were the province of a very few maverick practitioners. "Every company we've spoken to already has somebody working on this," said Andy Sernovitz, CEO of the Word of Mouth Marketing Association, or WOMMA. "It's called different things -- viral, buzz, customer satisfaction. But in the four months since we started, we've got 60 corporate members, and 3,000 people on our mailing list."
If word of mouth is such an effective means of communication, the IPKat wonders, why does WOMMA need a mailing list?

Spreading information by word of mouth here
Other things spread by mouth here
Chinese whispers here


The European Commission announced today that it is referring Italy and Luxembourg to the ECJ for failing to implement the 1992 EC Directive on rental right and on certain rights related to copyright properly into their legislation. Both Italy and Luxembourg do not pay authors when their works are lent out by public libraries, even though this is required of them by the Directive. The Commission has also decided to launch infringement proceedings against Belgium, Finland and Sweden because those countries have not complied with the 2004 rulings of the Court requiring them to implement the 2001 Copyright Directive, which provides anti-circumvention protection. If they continue to flout the ECJ’s ruling, the Commission will first issue a reasoned opinion and they ask the ECJ to levy fines on the countries.

A real headache for lending right ...

The IPKat is glad to see the Commission effectively discharging its duty to ensure that EU legislation is properly and equally implemented throughout the EU.

The public lending right in the UK here
How to avoid the public lending right here
Something you’ll want to take out of the library here

Monday, 21 March 2005


According to Ananova, Swiss authorities are planning to wrap mountain glaciers with tin foil this summer in an effort to stop them melting. Carlo Danioth, head of mountain rescue services in Andermatt, said: "We will initially cover around 30,000 square feet on the upper Gurschen glacier at the beginning of May as a test." Scientists hope that the high-tech foil will prevent the sun's rays from melting the ice in popular ski resorts during the summer months. Environmental groups have however criticised the plan as "absurd".

Foil: more commonly used to keep items warm, not to keep them cool

The IPKat is fascinated by this development. First, he wonders whether the foil-wrapped glaciers are protected by copyright as artistic works. Secondly, he wonders if Christo -- the king of wrapped artworks -- might object to the apparent emulation of an art form he has made his own.

Art under wraps: Christo's wrapped coast and wrapped trees; Edelmann's wrapped mountain
Wrapped glaciers here

Sunday, 20 March 2005


PKat co-author Jeremy is currently writing a conference paper on the closely-related propositions put forward by the European Court of Justice that

* the more distinctive the earlier mark, the greater the likelihood of confusion with similar marks for the same or similar goods or services (SABEL v Puma)
* the more highly distinctive the mark, the broader the protection it enjoys (Canon v MGM).

One very confused cat seeks help on European Court of Justice case law

He'd very much appreciate any insights from IPKat readers as to whether these principles are sound bases for the protection of registered trade marks or whether they are illogical aberrations. In return, he'll be happy to send a draft of his paper to anyone who wants to see it. Please send your comments to the IPKat.

More on confusion here, here and here


Intellectual Asset Management, the handsome journal for hands-on IP investors and managers published by Globe White Page, has just released a special supplement entitled "From IP to IPO -- Key Issues in Commercialising University Technology". Its aim is to bring together those who hold different stakes in the commercialisation of academic-generated research product: venture capitalists, entrepreneurs, technology licensing professionals as well as universities and their legal advisors.

The IPKat reckons that the publishers, supported by the Association of University Technology Managers, their partners in this venture, have done a pretty good job. This supplement packs a lot into its 80 pages and gives an excellent perspective on the problems and pitfalls on the route from IP to IPO, as well as striking an upbeat note as to their solution.

Measuring intellectual assets here
For people who have intellectual assets, click here and here
Brains for sale here


The IPKat brings you a definition of Restitutio in Integrum (the ability of a party before OHIM to have his rights restored if he misses a deadline in exceptional circumstances) under Art.78 of the Community Trade Mark Regulation, courtesy of the OHIM Second Board of Appeal in Deutsch Telekom v E! Online. In that case, a deadline had been missed because the a worker in the office of the opponent’s legal representative had accidentally deleted the deadline from the firm’s computer system:

Words trade mark lawyers should keep in mind

No right is prejudiced where failure to comply with a deadline is a result of the existence of an excusable error, unforeseeable circumstances or force majeure.

Both force majeure and unforeseen circumstances involve an objective element relating to abnormal circumstances which are unconnected to the trader in question and a subjective element involving the obligation on its part to guard against the consequences of the abnormal event by taking appropriate steps without making unreasonable sacrifices. This subjective element includes an obligation to pay close attention to the procedure in question and demonstrate diligence in order to comply with prescribed time limits.
Where a party employs a profession representative, that duty of due diligence extends to the professional representative.

In this case, a working system in the office of a professional representative which allowed the deletion by a single member of staff of such an important deadline as a filing date for a statement of grounds of appeal, without any fail-safe mechanism, either computerized or through simple double checking by another member of staff, displays an absence of due care which cannot be remedied by the application of Article 78 CTMR. If due care had been taken, the mistake would have been noticed by the partner supervising the work of the staff-member in question or would have been picked up by the electronic monitoring system. Here the error was not unforeseeable since, where the responsibility for carrying out a vital task is placed on one individual, there is always the possibility of human error and of that error going unnoticed until it is too late to remedy.

The IPKat has been idly wondering what measure of damages would be payable by a lawyer to its client for the missed opportunity to oppose a trade mark.

How to meet deadlines here and here


The IPKat stumbled across Coffey v Warner/Chappell Music Ltd and others [2005] EWHC 449 (Ch), a Chancery Division decision that has been trawled up by LexisNexis' subscription-only All England Direct service. Coffey, a singer and songwriter, alleged that, in publishing and recording Madonna's 'Nothing Really Matters' (NRM), the three defendants (the Warner/Chappell record company and two publishers) had infringed her copyright in a song she wrote between November 1995 and March 1996. NRM, which was credited as being co-written by Madonna and Patrick Leonard, appeared on Madonna’s 'Ray of Light' album which Warner/Chappell released in 1998. Coffey did not claim copyright in the entirety of her song, but cited specific elements of it such as voice expression and pitch contour.

The defendants applied (i) to strike out the claim on the ground that the particulars of claim, as re-amended, disclosed no reasonable grounds for bringing it, or (ii) for summary judgment on the basis that Coffey had no reasonable prospect of succeeding on her claim. They argued that the copyright existed in a work in its entirety, rather than in parts of or extracts from the work, and that the work relied on by Coffey could not have constituted a musical work in which copyright could exist, in that it comprised no more than features of, or extractions from, the work.

Madonna: no infringement through "voice expression" and "pitch contour"

Mr Justice Blackburne allowed the defendants' application. He held as follows:

* What constituted the copyright work in any given case was a matter for objective determination by the court. If the subject matter of a copyright infringement claim were defined too narrowly, it might to deprive a defendant of a good defence that what he took had not involved the taking of a substantial part of the true copyright work. This approach might also create layers of different artistic copyrights.

* In this case, what was relied upon as the copyright work was not, in law, capable of being properly so regarded. It was clear that cherry-picking those features of the work, such as voice expression and pitch contour, in order to identify as the material copyright work matters where arguably NRM was the same was precisely what Coffey appeared to have done. Accordingly, the claim would be struck out.

The IPKat thinks this is the right course to take. Even where the bulk of a claimant's work is unoriginal (for example where it is an old musical work that has been re-edited, as in Sawkins v Hyperion), the comparison between works for the purpose of establishing substantiality is based on the entire work as edited by the author, not just on his own added bits. This decision seems to be based on the same approach.

Nothing really matters here and here

Saturday, 19 March 2005


CNN reports that French newservice Agence France Press is suing Google over its inclusion of AFP’s contents and pictures in its Google News service. The French service charges a subscription fee for access to its services and is claiming copyright infringement in the Columbia District Court. Google has said that it gives publishers the opportunity to opt out of Google News, but most choose not to.

The IPKat wonders whether actions like this will do for the sharing of news over the internet what RIAA’s lawsuits did for file-sharing.

Bad news here and here

Friday, 18 March 2005


While sitting in front of his keyboard today, the IPKat was musing on an issue of terminological interest. If they do not consist of words or logos, trade marks are often categorised as being "non-traditional". Examples of non-traditional marks include the smell of new-cut grass, the roar of a lion, the flavour of artificial strawberry and a person tapping the side of his nose with a finger.

Artificial strawberry: looks pretty enough, but would consumers want
to taste it in order to see if the product in front of them is the one they want?

The IPKat thinks this is not a very good term. For one thing, "traditional" and "non-traditional" are strange words for trade marks, since they suggest something that is handed down from generation to generation. Secondly, the words "non-traditional" do not convey sufficiently the rich vein of folly with which such marks should more appropriately be associated, particularly in areas such as smells, tastes and motion.

But what then should such marks be called? "Fringe marks", "wacky marks", "zany marks", "nutty marks" ...? The IPKat asks your advice. Do please post your constructive comments below.


Earlier this week the Court of First Instance (CFI) dismissed an appeal against the Board of Appeal's decision in L'Oreal's FLEXI AIR application, in Case T-112/03 L’Oreal SA v OHIM.

L'Oreal had applied to register as a Community trade mark the words FLEXI AIR for shampoos and hair preparations (Class 3). Revlon opposed, citing the likelihood of confusion with its earlier French, Swedish and UK registrations of the word mark FLEX for much the same goods. Although the Opposition Division invited Revlon to submit further evidence and gave L'Oreal a deadline for receiving its response, neither evidence nor observations were received. Somewhat too late, L'Oreal asked for proof of genuine use of Revlon's FLEX mark. The Opposition Division declined to take account of that request or of late observations submitted to it and rejected the application on the ground of likelihood of confusion. L'Oreal's appeal to the Board of Appeal having failed, the cosmetics giant appealed further to the CFI.

Flexing its muscles ... but L'Oreal really must pay more attention to the time

In its appeal L'Oreal contended that (i) the Board of Appeal was wrong to refuse to allow L'Oreal's request for proof that Revlon's mark had been used; (ii) the Board was wrong to conclude that there was a likelihood of confusion and (iii) the Board should have considered whether Revlon's FLEX mark could validly be put forward in opposition under United Kingdom law.

Revlon's FLEX: good for removing unwanted competing marks?

The CFI dismissed L'Oreal's appeal. The Board of Appeal was entitled to adopt a decision which rejected the request for proof of genuine use where L'Oreal had not justified the failure to submit that request within the time limit set by the Opposition Division. The Board was also entitled to take the view that FLEX and FLEXI AIR were similar at visual, phonetic and conceptual levels. The final argument of L'Oreal was also dismissed: it was based on the hypothesis that the Community Trade Mark Regulation 40/94 conferred on the proprietor of an earlier national trade mark greater rights in connection with an application for a Community trade mark than those conferred on him by the national legislation governing that earlier mark. This was not the case: national laws of member states governing likelihood of confusion between a trade mark applied for and an earlier national mark were fully harmonised. In those circumstances, L'Oreal's hypothesis was wrong.

The IPKat thinks the legal bits of this decision are right, but wonders whether the "likelihood of confusion" bit is right. FLEXI AIR is three syllables to FLEX's one; it is pronounced quite differently too. Conceptually, the common "flex" bit sounds a bit allusive to hair being flexible rather than rigid. Merpel agrees: cognoscenti of hair-care products are quite capable of distinguishing products bearing these brands.

Hair care here and here
Hair-raising activities here and here


The European Court of Justice gave its ruling today in Case C-228/03 The Gillette Company and Gillette Group Finland Oy v LA-Laboratories Ltd Oy, a request for a preliminary ruling from Finland.

The facts

Gillette registered in Finland the trade marks GILLETTE and SENSOR for "hand tools and implements (hand-operated); cutlery; side arms; razors" (Class 8) and, through its exclusive licensee, sold razors in that country, particularly razors composed of a handle and a replaceable blade and such blades on their own. LA‑Laboratories also sold in Finland razors that were composed of a handle and a replaceable blade and blades on their own, similar to those marketed by Gillette. Those blades were sold under the mark PARASON FLEXOR; fixed to their packaging was a sticker with the words "All Parason Flexor and Gillette Sensor handles are compatible with this blade". LA‑Laboratories was not authorised by a trade mark licence or any other contract to use Gillette's marks. Gillette sued for trade mark infringement, arguing that the practices of LA‑Laboratories created a link in the mind of consumers between its products and those of Gillette, or gave the false impression that that company was authorised, by virtue of a licence or for another reason, to use the GILLETTE and SENSOR marks.

In its judgment the Helsingin käräjäoikeus held that Gillette had the exclusive right to affix its marks to those products and their packaging, and to use those marks in advertising. Accordingly, by mentioning those marks in an eye-catching manner on the packaging of its products, LA‑Laboratories had infringed that exclusive right. The Helsingin käräjäoikeus further held that Article 4(2) of the Finnish trade mark law, which provided for an exception to that principle of exclusivity, must be interpreted narrowly in the light of Article 6(1)(c) of Directive 89/104. In its view, that provision did not relate to the essential parts of a product but only to spare parts, accessories and other similar parts which were compatible with the manufactured product or marketed by another person. That court held that both the handle and the blade were to be regarded as essential parts of the razor and not as spare parts or accessories. It therefore held that the exception under Article 4(2) of the Finnish law did not apply and that LA‑Laboratories had infringed Gillette's marks.

LA‑Laboratories appealed to the Helsingin hovioikeus (Court of Appeal of Helsinki), which held that, where a razor of the type currently at issue was composed of a handle and a blade, the consumer could replace that latter part by a new blade, sold separately. The latter, being in substitution for a former part of the razor, could therefore be regarded as a spare part within the meaning of Article 4(2) of the tavaramerkkilaki. Secondly, the indication on the sticker affixed to the packaging of the razor blades marketed by LA‑Laboratories could be useful to the consumer. LA‑Laboratories might therefore be able to demonstrate the need to mention the GILLETTE and SENSOR trade marks on that sticker. Thirdly, the packaging of razor blades marketed by LA-Laboratories clearly bore its own PARASON and FLEXOR signs, unequivocally indicating the origin of the product. The reference to the GILLETTE and SENSOR marks in small standard lettering on stickers of a relatively modest size affixed to the exterior of that packaging could not in any way have given the impression that there was a commercial connection between Gillette and LA‑Laboratories. The Helsingin hovioikeus therefore annulled the judgment of the Helsingin käräjäoikeus and dismissed the action brought by the Gillette companies.

Gillette then appealed to the Korkein oikeus, which took the view that the case raised questions as to the interpretation of Article 6(1)(c) of Directive 89/104 in relation to the criteria for determining whether, by its nature, a product is comparable to a spare part or an accessory, in relation to the requirement that use of a mark belonging to another person must be necessary in order to indicate the intended purpose of a product, and in relation to the concept of honest practices in industrial or commercial matters, the interpretation of those provisions also having to take account of Directive 84/450. In those circumstances, the Korkein oikeus decided to stay the proceedings and refer the following questions to the Court of Justice for a preliminary ruling:
"When applying Article 6(1)(c) of the First Council Directive 89/104/EEC to approximate the laws of the Member States relating to trade marks:,

(1) What are the criteria

(a) on the basis of which the question of regarding a product as a spare part or accessory is to be decided, and

(b) on the basis of which those products to be regarded as other than spare parts and accessories which can also fall within the scope of the said subparagraph are to be determined?

(2) Is the permissibility of the use of a third party’s trade mark to be assessed differently, depending on whether the product is like a spare part or accessory or whether it is a product which can fall within the scope of the said subparagraph on another basis?

(3) How should the requirement that the use must be “necessary” to indicate the intended purpose of a product be interpreted? Can the criterion of necessity be satisfied even though it would in itself be possible to state the intended purpose without an express reference to the third party’s trade mark, by merely mentioning only for instance the technical principle of functioning of the product? What significance does it have in that case that the statement may be more difficult for consumers to understand if there is no express reference to the third party’s trade mark?

(4) What factors should be taken into account when assessing use in accordance with honest commercial practice? Does mentioning a third party’s trade mark in connection with the marketing of one’s own product constitute a reference to the fact that the marketer’s own product corresponds, in quality and technically or as regards its other properties, to the product designated by the third party’s trade mark?

(5) Does it affect the permissibility of the use of a third party’s trade mark that the economic operator who refers to the third party’s trade mark also markets, in addition to a spare part or accessory, a product of his own with which that spare part or accessory is intended to be used with?"
The ruling

In answer to those questions the European Court of Justice ruled as follows:
"1. The lawfulness or otherwise of the use of the trade mark under Article 6(1)(c) of the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks depends on whether that use is necessary to indicate the intended purpose of a product.

Use of the trade mark by a third party who is not its owner is necessary in order to indicate the intended purpose of a product marketed by that third party where such use in practice constitutes the only means of providing the public with comprehensible and complete information on that intended purpose in order to preserve the undistorted system of competition in the market for that product.

It is for the national court to determine whether, in the case in the main proceedings, such use is necessary, taking account of the nature of the public for which the product marketed by the third party in question is intended.

Since Article 6(1)(c) of Directive 89/104 makes no distinction between the possible intended purposes of products when assessing the lawfulness of the use of the trade mark, the criteria for assessing the lawfulness of the use of the trade mark with accessories or spare parts in particular are thus no different from those applicable to other categories of possible intended purposes for the products.

2. The condition of ‘honest use’ within the meaning of Article 6(1)(c) of Directive 89/104, constitutes in substance the expression of a duty to act fairly in relation to the legitimate interests of the trade mark owner.

The use of the trade mark will not be in accordance with honest practices in industrial and commercial matters if, for example:

– it is done in such a manner as to give the impression that there is a commercial connection between the third party and the trade mark owner;

– it affects the value of the trade mark by taking unfair advantage of its distinctive character or repute;

– it entails the discrediting or denigration of that mark;

– or where the third party presents its product as an imitation or replica of the product bearing the trade mark of which it is not the owner.

The fact that a third party uses a trade mark of which it is not the owner in order to indicate the intended purpose of the product which it markets does not necessarily mean that it is presenting it as being of the same quality as, or having equivalent properties to, those of the product bearing the trade mark. Whether there has been such presentation depends on the facts of the case, and it is for the referring court to determine whether it has taken place by reference to the circumstances.

Whether the product marketed by the third party has been presented as being of the same quality as, or having equivalent properties to, the product whose trade mark is being used is a factor which the referring court must take into consideration when it verifies that that use is made in accordance with honest practices in industrial or commercial matters.

3. Where a third party that uses a trade mark of which it is not the owner markets not only a spare part or an accessory but also the product itself with which the spare part or accessory is intended to be used, such use falls within the scope of Article 6(1)(c) of Directive 89/104 in so far as it is necessary to indicate the intended purpose of the product marketed by the latter and is made in accordance with honest practices in industrial and commercial matters".
The IPKat can't help feeling that the Court has couched its ruling in terms that are a good deal narrower than is good for the environment of robust competition that the European Union wishes to create. But since he feel asleep three times while trying to read the decision, he promises to give it his further attention tomorrow, when he is fresher.

Thursday, 17 March 2005


The IPKat has learned that Peter Prescott QC has issued a supplementary decision to his judgment in Animal v Oakley, a case concerning the constitutionality of the UK design system. It seems that he didn't mean what people think that he meant. More when the decision becomes available.

The IPKat says, watch this space...

Wednesday, 16 March 2005


Thanks to Andres Guadamuz of Technollama for pointing out that the March edition of Edinburgh´s superior online IP journal, SCRIPT-ed is now online. This issue includes:

- Laureation for Honorary Degree of LL.D: Professor W R Cornish, Professor Hector MacQueen, p.1.

Special feature:
- Identifying Risks: National Identity Cards, Wendy M. Grossman, pp.2-17.

Peer-reviewed articles:
- The Significance of UNESCO’s Universal Declaration on the Human Genome & Human Rights, Shawn H.E. Harmon, pp.18-47.
- Evolution of Industry Knowledge in the Public Domain: Prior Art Searching for Software Patents, Jinseok Park, pp.48-82.
- Public Domain; Public Interest; Public Funding: Focussing on the ‘three Ps’ in Scientific Research, Dr. Charlotte Waelde and Mags McGinley, pp.83-106.
- The Shape of Things to Come: Swedish Developments on the Protection of Privacy, Rebecca Wong, pp.107-124.

- Regulación Para Mundos Digitales: El Mundo Comunitario, (Regulation of Online Worlds: The Community World), Erick Iriarte Ahon, pp.125-134.

Book Reviews:
- The International Political Economy of Intellectual Property Rights, Meir Perez Pugatch. Reviewed by Geoff Gregson, p.135
- Intellectual Property Law in Practice, Thomas E. Hays and Claire C. Milne. Reviewed by Christine Riefa, p.136.

The IPKat says read and enjoy!

Tuesday, 15 March 2005


The initial review of the London Office has now concluded. The findings suggest the nature of work being undertaken by the Patent Office represents a shift to more policy-oriented activities whilst maintaining traditional operational functions. The Patent Office Board believe this focus warrants a definite presence in London. The Patent Office says:

"The review also clearly indicates considerable under-occupancy of the hearing and tribunal rooms and decreasing utilisation of the search room. There is a need to address these and other issues. As a result a number of options have been identified for reconfiguring the operation. The next steps of the project are to work up in detail options to address the findings of the review.

The Patent Office is consulting customers and users over the next month for views on their plans. Options we will be pursuing for individual business areas include:

- Redesigned reception with integrated personnel attending to any visitor to the building, thereby facilitating movement within the building more efficiently

- Provision for customers to file documents at reception during business hours enabling our users to complete their business with the Patent Office promptly

- Potentially relocating the remaining filing functions to the ground floor thereby removing the need for users to be held up behind the security barriers and being able to complete their business promptly

- Exploring the need to recover the costs for additional services over and above a basic receipting service, e.g. checking contents of packages

Both of these options address the reality that e-filing solutions will become more prevalent in the coming years. The Office also proposes to

- Combine facilities with those already present at the British Library to create a superior service in London for database searching of patents, trademarks and designs as well as viewing reports, files and journals

- Continue to hold hearings in London but explore options for reducing the number of rooms

- Integrate booking systems that facilitate maximising utilisation of the rooms

- Promote the use of technology for hearings in order to offer a wider range of times

- Integrate the Copyright and Central Enquiries Units to standardise practices across the Office and provide customers with a holistic service.

- The policy support function will become a distinct activity and incorporated into the Intellectual Property and Innovation Directorate policy support team.

- Integrate the tribunal secretary role with other tribunal functions in the Office

- Explore opportunities for external provision of the secretary function

- The Patent Office believes it is necessary to have some facilities for meetings at its disposal in London. Similar to hearings we will pursue the option to reduce the overall capacity.

The overall location in London will also be explored. Alternative locations within the current vicinity will be considered on their merit.

We will also consider a new focus for the Patent Office that involves support for the innovation and research policy agenda. Currently we are working the above proposals up into practice and a Business Case will be presented to the Patent Office Board mid-April for a definitive decision on the future of London.

We will be keeping our customers and stakeholders updated through Practice Work Group Meetings, All Presidents Meeting, notices in professional journals and websites and emailed to specific interests".
The IPKat says, if you want to comment on these proposals please do so before Friday 1 April to


The March 2005 issue of Sweet & Maxwell's monthly European Intellectual Property Review is now out. What's in it this time? Lots of good stuff, as usual. The IPKat's selection includes the following choice goodies:

* Rebecca Baines (Slaughter and May) explains the legal issues arising from a failure to take a formal assignment of copyight in a commissioned work, which led to extensive litigation in Griggs v Evans (the Doc Martens case here, here and ultimately here);

* Academics Mark J. Davison and Bernt Hugenholtz tackle the ECJ's recent decisions on database right;

* Carolina Pina and Ana Gil-Robles (Garrigues) write on steps taken to combat one of the IPKat's favourite commercial tactics, ambush marketing.

Monday, 14 March 2005


The IPKat's co-masters have edited a book containing a collection of essays by eminent colleagues on the controversial subject of trade mark use. To mark the launch of this book, which is published by Oxford University Press, there will be an afternoon seminar on trade mark use from 2pm to 6pm on Tuesday 22 March at the Institute of Shipping (Carthusian Street), followed by a reception. The distinguished cast of speakers includes Bojan Pretnar (WIPO), David Keeling (OHIM) and Simon Thorley QC (Three New Square).

Although space is limited, there are still a few spaces for any friend of the IPKat who would like to attend (there is no registration fee). If you'd like to come, please email us and we'll send you (i) an invitation, (ii) details of the programme and (iii) instructions on how to find the seminar.

Sunday, 13 March 2005


Euromoney's prestigious near-monthly Managing Intellectual Property for March 2005 has just squeezed itself through the IPKat's letterbox. It was a tight squeeze too, since MIP has surged to a muscular 132 pages. Even allowing for a generous dollop of advertising, that still leaves a huge amount of editorial copy. Well done, MIP.

Content in this issue includes the following:

* Boudewijn van Vondelen (NautaDutilh) writes on the Benelux's first year of experience of opposition proceedings;

* Roderick McKelvie and Scott Weidenfeller (Covington & Burling) examine recent reforms of Pennsylvania patent litigation and consider whether they will attract more business to the Western District Federal Court;

* Mark Abell and Tina Ran (Field Fisher Waterhouse) review current law and practice on franchising in China.

TO BE, OR NOT 02 BE ...

Now for the promised blog on O2 Holdings Ltd and another v Hutchison 3G UK Ltd [2005] EWHC 344 (Ch), first noted on the LexisNexis All England Direct subscription service and then swiftly posted on to BAILII in full.

This was a spat between O2 and 3, two businesses that provide services in the UK's crowded and vicious mobile phone market. Since O2's name was the same as the chemical formula for oxygen the company adopted a ‘blue bubble imagery’ and registered trade marks which included bubbles. Rivals 3 launched comparative advertisements on TV and elsewhere, comparing 3 with O2 and featuring a bubble sequence shot in black and white. O2 sued for trade mark infringement and passing off. Although O2 failed to obtain an interim injunction, the court ordered a speedy trial. In this hearing O2 applied to the court to refer 12 questions to the European Court of Justice (ECJ) for a preliminary ruling. According to O2 this reference should be made before the trial on the merits of their claim. It was inevitable, they argued, that a reference would be made at some stage and, if it was made now, the ECJ's responses would or might eliminate, reduce in scope or at least affect substantial areas of factual inquiry. 3 opposed the application on the ground that a reference to the ECJ was unnecessary at this stage and the Vice-Chancellor, Sir Andrew Morritt, agreed.

3: pricking the bubbles of O2's hopes of a reference to Luxembourg

The judge agreed that the conventional view was that the facts should be found before a reference was made. It was clear, however, that that was not an indispensable requirement. In this case, though, the court could not say that it would definitely need the answers to the questions O2 wanted to refer. A reference to the ECJ at this stage would thus be premature and probably incomplete. If so, it would actually delay the trial and prejudice the quality of evidence to be adduced at the trial. None of the 12 questions would arise if 3 succeeded in making good its counterclaim that each of O2's bubble marks was devoid of any distinctive character.

The IPKat thinks this approach is correct. We have already seen the mess that results when the same dispute gets referred to the ECJ twice (in the Boehringer Ingelheim case) and the delays that result from it. Merpel says, "what a shame the ECJ doesn't fast-track references that arise in fast-moving areas like commercial law and intellectual property, where business decisions have to be taken, while leaving the boring constitutional and institutional stuff to be slow-tracked instead".

Bubbles here and here
Power of three here and here


The Register reports that on Friday, a UK High Court judge ordered six internet service providers (ISPs) to reveal the names and addresses of 31 downloaders to the British Phonographic Industry (BPI). Once the names of the alleged downloaders are revealed, the BPI will write to them, offering them the chance to settle. The order comes hot on the heels of the decision of a number of “pirates” to settle cases brought against them by the BPI.

The IPKat says that (unlike France – see blog of Friday 11 March) it seems pretty clear that illegal downloaders are infringing copyright. However, ISPs aren’t usually too keen on being made to reveal information through court orders.

More internet compulsion here and here

Friday, 11 March 2005


An application to refer questions to the European Court of Justice for a preliminary ruling has just been refused today by the Vice-Chancellor, Sir Andrew Morritt, in O2 Holdings Ltd and another v Hutchison 3G UK Ltd [2005] EWHC 344 (Ch).

The IPKat doesn't have a transcript to hand, but will blog this in full as soon as he can. The bottom line is that, since the defendant in trade mark infringement proceedings won't need to argue his defence of comparative advertising if his counterclaim that the claimant's marks are invalid is successful, it would be premature to refer questions relating to that defence to the ECJ now.

STOP PRESS. Transcript now available on BAILII - but no time to read it. A full blog will follow.


Thanks to his friend Jean-Baptiste Soufron the IPKat learned yesterday the Cour d'appel de Montpellier released a 22 year old internet user without charge after he was sued for copying nearly 500 movies on the internet, burning them on CDs and sharing them with friends. The Court based its decision on Article L-122-5 of the French Intellectual Property Code:

"authors can’t forbid copies or reproductions that are only intented for the private use of the copyist".
In a similar case in January however, the Discrict Court of Pontoise found another internet user guilty and ordered him to pay more than 15,000 euros. In December the French Association of Audionauts helped another defendant who was able to win his case before the District Court of Chateauroux. There are still more than 50 criminal procedures pending in France. More than 20 of them are being helped by the French Association of Audionauts.

An Audionaut: he may just be coming to rescue you
The IPKat knows where to go if he should ever want to do so much copying. Merpel wonders why, the easier it is to copy things, the less there is that she actually wants to copy. Must be a sign of increasing maturity ...

Press release of the Association of Audionauts here
Audionauts here; Astronauts here; Argonauts here


Happy news for all English-speakers! Following the IPKat's plaintive mew on Wednesday about the absence of an English-language translation of Case T-33/03, Osotspa v OHIM, the European Court's translation department has now come up trumps and has now provided one. Thank you, o thank you, says the IPKat. Don't be so ingratiating, says Merpel: it'll only make it more difficult for you to start complaining next time ... (btw thanks also to Jenny Kirkwood at Freshfields for letting us know).

Our message to the translators


Sweet & Maxwell's European Commercial Cases have never before been mentioned on this blog, but they are from time to time a useful research resource for anyone who is trying to track down English-language decisions from non-English speaking national courts. Part I of the ECC for 2005 is s case in point: it carries an English version of the extremely short but to-the-point judgment of the Cour de Cassation, France, in Banque de France v Editions Catherine Audval -- a 2002 decision that banknotes are NOT intelledtual property (unlike the position in some other jurisdictions).

The ECC used to look like this, before it got its recent makeover,
but Sweet & Maxwell's website hasn't been updated yet ...


Why, when the year is 2005, does the IPKat receive volume 6, issue 6, for 2003-2004 of a well-regarded legal periodical in the field of IP? The answer is that this is Lawtext's BioScience Law Review, which adopts an unconventional, idiosyncratic calendar of its own which is designed to (i) baffle the tax man, (ii) confuse contributors and readers alike with its anachronism and (iii) violate everything that well-ordered folk like law librarians hold sacred. Anyway, the year is 2005, the volume is 2003-4 and the BioSLR goes its own sweet way. If it wasn't for the high quality of the content, says the IPKat, he thinks he'd catterwaul.

This is what it looks like ...

Interesting content in this issue includes the following:

* Cambridge University lecturer Kathleen Liddell writes on the mythical connection between data protection and confidentiality (always nice to see popular myths debunked);

* Nigel Jones (Linklaters) and David Marsh (Arnold & Porter) contrast UK and US approaches to the doctrine of equivalents in patent law.

Thursday, 10 March 2005


The IPKat will be attending the March Queen Mary Monthly Seminar, which is taking place next Thursday, 17 March, from 5.30pm till 7.00pm. The speaker is Angus Johnston of the University of Cambridge, who will be speaking on “Neither Rhyme nor Reason? Consistency and Coherence in Remedies for Breach of Confidence”. Angus’ wide range of interests, which include intellectual property law, European law, competition law and tort law, enable him to look at the “bigger picture” where intellectual property is concerned. The subject of his talk is of continuing importance, both in terms of the protection personal privacy and the protection, of commercial secrets.

Angus Johnston: see his live gig next Thursday

The IPKat says that anyone who would like to attend is welcome to come. However, places are limited and will be allocated on a first-come, first-served basis. If you’d like to come then email for further details. Merpel points out that there’s a glass or two of wine for everyone who comes too!


The winner of the wackelpudding competition (see comments on Tuesday's Ipkat translation watch) is whoever left the first comment on Jeremy's "ECJ TRANSLATORS, WHERE ARE YOU?" blog yesterday.

Mmm, wackelpudding...

The IPKat points out that that person has remained anonymous. If s/he doesn't make him/herself known, s/he can't be furnished with a suitable prize. Merpel says "Great, that way I'll get to keep the prize!"


This comes to the IPKat from Haaretz, via his friend Mena Kaplan of Marval O'Farrell & Mairal, Argentina.

Tel Aviv District Court Judge Yehuda Zaft has ruled that Herzl Ozer, general manager of Off-Tov and founder of the AllJobs internet site, is allowed to continue to copy job opportunity notices from the classified ads of Maariv newspaper - and apparently from other newspapers, too. The judge rejected Maariv's petition for an injunction against Ozer and his website and advised Maariv to consent to the dismissal of the newspaper's NIS 1 million (173,317 euro) damages suit. This ruling effectively paves the way for any commercial body to use the situations vacant listings of another, without such use constituting information theft or copyright infringement.

Maariv: the name means "evening" in English. Will the sun be setting on its paper-based jobs columns?
In this particular case, there was no information theft: information on avaliable jobs didn't belong to Maariv, but rather to the advertisers, who just use the daily newspaper as a platform and advertisers have an interest in their notices being published in other places apart from Maariv and the job-seeking public is also interested in "an accessible site that enables them to easily survey job offers". Maariv argued that people would stop buying its spaper and would surf Ozer's site instead, to which the judge responded:

"The internet poses new challenges to businesses that relay information to the general public via old platforms. The public has an interest in promoting initiative ... The paper must find a way to exist alongside it."

Maariv has claimed that in the past decade it had invested NIS 174 million (over 30 million euro) in publishing job opportunity supplements and marketing campaigns and another $1 million in launching its own internet site. This did not move the judge, who observed: "The petitioner is to be viewed as nothing more than an enterprise that offers an advertising platform in exchange for payment. The resources invested by the petition were aimed mainly at promoting the reputation of the platform and not at collecting the data included in the notices that were published". The IPKat thinks this must be correct so far as copyright law is concerned: that right protects the form in which information is presented, not the information itself. However, on the right facts Ozer's website, if operated within the European Union, may possibly infringe the sui generis database right. Merpel says, "I prefer the internet to newspapers every time -- it's easier to search and I don't get newsprint on my paws".

Some unusual situations vacant here , here and here

Wednesday, 9 March 2005


Here's another curiosity which has so far surfaced only on the LexisNexis-owned Butterworth All England Direct subscription service (how do they get these cases?). In Phones 4u Ltd and another v Internet Ltd and others [2005] EWHC 334 (Ch) Phones 4u had since 1995 run a chain of shops called ‘Phones 4u’; its parent company owned a trade mark consisting a logo limited to the colours red, white and blue.

In August 1999 obtained the domain name ‘’ and set up an internet-based business selling mobile phones. The domain name ‘’ was also acquired. was incorporated in April 2000 but did not trade; cash generated as a result of sales from the website were accounted for personally. Phones 4u sued for passing off and trade mark infringement. The primary issue for determination by the court was whether Phones 4u had established that it had, at the relevant date, acquired sufficient goodwill or reputation in the term ‘phones4u’.

Richard Sheldon QC, serving as a Deputy Judge in the Chancery Division, dismissed Phones 4u's claims.

On passing off
* Taking trade presence, turnover and brand awareness into account, Phones 4u failed to shift the burden of proving that it had the requisite goodwill or reputation in the expression ‘Phones 4u’ at the relevant date.

* Bearing in mind the descriptive nature of the name ‘Phones 4u’, the fact that there was significant use was insuffficient to establish the existence of reputation in August 1999.
On trade mark infringement
* Phones 4u, having opted for a limitation as to the colours of its registered mark under the Trade Marks Act 1994, s.13, could not then assert infringement arising out of's use of the mark in different colours. Accordingly, the claim for trade mark infringement would also be dismissed.

Phone 4u or Phones 4u? It's a close call ...

The IPKat can't believe that the limitation of a trade mark to just three colours means that a mark loses the protection available against similar marks that cause a likelihood of confusion -- but he's prepared to wait till he sees the full judgment before taking sides ... Merpel says marks of this nature are so descriptive it seems a shame they're entitled to any protection at all. Such protection as there is must be a kindness to consumers rather than a favour to unimaginative traders.

Phones 4u here; here
Some interesting phone sites here, here and here


Case T-33/03 Osotspa Co. Ltd, Bangkoka v Iekšējā tirgus saskaņošanas biroju (preču zīmes, paraugi un modeļi) (ITSB) has now been posted on the ECJ website. Languages in which this decision appear include Lithuanian, Estonian, Slovenian and Slovakian -- but NOT English.

The IPKat can see that this case involves a rather attractive trade mark that looks like this:

Unfortunately he can't make out a word of the judgment.

For those of his readers whose Lithuanian is up to it, the court ruled as follows:
"Pagal Darbo reglamento 87 straipsnio 2 dalį pralaimėjusiai šaliai nurodoma padengti išlaidas, jeigu laimėjusi šalis to prašė. Kadangi ieškovė pralaimėjo bylą, jis turi padengti bylinėjimosi išlaidas pagal VRDT ir įstojusios į bylą šalies pateiktus reikalavimus. Remdamasis šiais motyvais, PIRMOSIOS INSTANCIJOS TEISMAS nusprendžia: (1) Atmesti ieškinį. (2) Priteisti iš ieškovės bylinėjimosi išlaidas".
The IPKat's store of righteous indignation is far from being used up: he's seething with rage that the most widely-comprehended language in the world is being treated in this way. Merpel says: "МЯУКАНЬЕ".


Today's Daily Telegraph reports on a real disaster for jeans manufacturer Levi Strauss. Local police in Mexico City, pressured by one the company's lawyers, targeted a factory run by Mexican enterprise Comexma was suspected of producing fake goods. Local media were invited along to witness the raid. Comexma's factory was indeed producing Levi branded jeans, but that was just what it was supposed to be doing: it was one of Levi's own suppliers, legitimately producing clothes under licence from the US company. Comexma then sued Levi's, seeking compensation both for commercial loss and for damage to its reputation as a result of the raid. A court in Mexico City has now ordered Levi's to pay $24.5m in damages and lost income, plus a further $20.5m for harm to Comexma's reputation.

Levi's: is there a need to patch up its legal act in Mexico?

Levi has now admitted its mistake, claiming that its Mexican trade mark protection counsel failed to check with the company's US headquarters before proceeding. A Levi's spokesman is however reported as saying that the US company "strongly disagrees" with the court decision, against which it was appealing: the raid occurred after Levi Straus had told Comexma it was terminating its contract and the Mexican company was in the process of shutting down the facility. Levi Strauss said that, even if the damages awards stand, its operating income would be higher in the first quarter than during the same period last year.

The IPKat says this is a nightmare scenario which -- irrespective of the rights and wrongs of the Mexican court decision -- both should and could be avoided by adequate policing of licensees' activities. "I didn't know Mexican courts awarded such large sums by way of damages", adds Merpel. "Is it only because Levi Strauss is a US corporation, or would a similar award be made against a local business too?"

Levi's jeans and social responsibility here
Invention of Levi Strauss blue jeans here; swinging blue jeans here
Levi Strauss and the structural study of myth here


The IPKat is grateful to Ed Meikle for pointing out this article from the BBC. 93 teenage pupils at a school in Carlisle received an incorrect vaccine as a result of an incorrect order being placed with the manufacturers. Following a flood which destroyed the original stock of vaccines, any emergency order was placed by telephone. However, instead of obtaining REVAXIS, which contains Diphtheria, Tetanus and Polio vaccines, the health authority ended up with REPEVAX, which contains the same combination and a whooping cough vaccine that is aimed at under-fives. Luckily, the additional vaccine was not harmful. Both vaccines are produced by Aventis Pasteur MSD.

The IPKat says that this goes to show how, in cases where the goods are ordered by telephone, the aural element of the marks in question can be crucial. In this case of course, there is no issue of trade mark infringement since both vaccines are made by the same company. The IPKat though is sure that, had the marks been in the hands of different proprietors, this would be a clear case of confusion.

More on the UK’s vaccination programme here.

Tuesday, 8 March 2005


L'affaire T-32/03, Leder & Schuh AG contre l'Office de l'harmonisation dans le marché intérieur (marques, dessins et modèles) (OHMI) has been posted on the OHIM website, in French and German. It's something to do with the JELLO SCHUHPARK trade mark. If anyone can tell the IPKat what this is all about, can he or she please post a comment below. Merpel says the IPKat should stop moaning and learn another 20 languages.

Monday, 7 March 2005


The IPKat has received this little note from the Campaign for Creativity:

EU Governments endorse continued patentability of computer-implemented inventions

London – 7 March 2005 The EU’s Competitiveness Council has formally agreed its Common Position endorsing the continued patentability of Computer Implemented Inventions this morning.

The Directive will now return to the Parliament for a Second Reading.

Campaign for Creativity director, Simon Gentry, has said supporters of the continued patentability of CI inventions will today be relieved that European Governments are going to support and defend its innovative high-tech industries.

“The Directive explicitly states that software itself will not be patentable, but inventions that use software will be. The Directive’s objective has always been to ensure there is a clear legal framework in place to support the existing practice of the European Patent Office.

“It has been a frustrating period for our supporters who vehemently believe arguments against the Directive have been deeply misleading, and that the debate has been subverted into an anti-patent debate.

The European Parliament now has to consider whether it really wants to be responsible for stripping Europe’s innovative high-tech companies of their patent protection just as other parts of the world, notably India and China are introducing CII patents to encourage and protect their innovators”,
he said.

The Campaign for Creativity also believe the outcome of this morning’s meeting was the result of the Directive being heard in the appropriate Council meeting, following a series of objections and delays in the Agricultural and Fisheries Council late last year.

The Second Reading in the European Parliament on the Directive will need to take place within the next three months.

The IPKat says, all possible links pertaining to this subject must surely have been exhausted by now.


BPI, the organisation of the British Phonogram Industry, reports that 23 illegal file-sharers have paid settlements of up to £4,500 in settlement of copyright infringement claims brought on behalf of the organisation's members. The BPI proposes to bring 31 further actions against peer-to-peer file-sharers across the UK, spanning eight different filesharing networks (KaZaA, eDonkey, Grokster, Soulseek, DirectConnect, Limewire, Bearshare and Imesh). Said BPI Chairman Peter Jamieson:

“Unauthorised filesharing is against the law. It effectively steals the livelihood of musicians and the record companies who invest in them. We will not hesitate to protect the rights of our members and the artists they represent”.
BPI General Counsel Geoff Taylor added:
“We are determined to find people who illegally distribute music, whichever peer-to-peer network they use, and to make them compensate the artists and labels they are stealing from. These settlements show we can and we will enforce the law. No one should be in any doubt that we will continue to do so".

KaZaA - said to be "in sharp decline". Is this through fear
of legal action or the fashion for iPods?

The 23 settlements mentioned here arise out of the original 26 cases launched by the BPI in October 2004. Three cases are still in negotiation and legal action may follow. The settlements include internet users from all over the UK – 17 men and six women. The average settlement is more than £2,000 – which the BPI claims is more than a month’s salary for the average UK worker. Two illegal file-sharers are paying more than £4,000 each to settle their cases. BPI General Counsel Geoff Taylor explained,
“We have no desire to drag people through the courts. So we have attempted to reach fair settlements where we can. We hope people will now begin to get the message that the best way to avoid the risk of legal action and paying substantial compensation is to stop illegal filesharing and to buy music online, safely and legally, instead".
Although impressive developments in legal download services saw an estimated 9 million download sales in the UK in 2004, there are still millions of individuals in the UK who persist in trading files illegally. Said Taylor,
“If illegal filesharers think that they can avoid getting caught by staying away from the most popular networks like KaZaA, they’re wrong. We are going to continue bringing cases against people who distribute music illegally, whichever filesharing network they use, for as long as it’s necessary. Legitimate music services can only prosper if we continue to fight the theft of music on the internet".
The BPI’s action against illegal file-sharing in the UK is part of a global campaign by the record companies who invest in new music, seeking to turn the tide on internet piracy. The BPI says that research shows that illegal activity on the once most-popular filesharing network Fast Track – on which KaZaA runs – has plummeted, with the number of users in January 2005 down 45% from its peak in April 2003. While some more determined illegal file-sharers are migrating to other networks, the combination of superior legal services and the threat of legal action means that despite increasing broadband penetration, authorised services are growing at a faster rate than illegal services. With thousands of cases launched against the users of other illegal networks, illegal uploaders are learning that there is no place to hide; the number of eDonkey servers is down by 61%, BitTorrent servers and users are down 66% while the Direct Connect network has also seen a decline in the number of servers.

The IPKat, a terminal coward if ever there was one, has no intention of facing the wrath of the BPI. He has unplugged his computer and buried it in the garden, just to be sure he's safe. Merpel meanwhile just hopes they don't make it an infringement for her to borrow CDs from her friends ...

No place to hide here and here

Sunday, 6 March 2005


An intriguing little case (little being the operative word – the reasoning takes up a mere two paragraphs) case from the OHIM Second Board of Appeal.

Level 3 filed an application to register a figurative mark consisting of the number three in parentheses (3) as a CTM for various communication services in Class 38. The examiner refused the application, stating that the mark lacked distinctiveness and that numbers in parentheses are commonly used to refer to ordinals. As such, they belonged in the public domain. Level 3 appealed.

This about sums up the IPKat's thoughts...

The Board annulled the examiner’s decision and remitted the case to the examiner for further prosecution:

In principle, a single numeral by itself is not inherently distinctive as a trade mark. The same though was not necessarily true of a number enclosed in ordinary round brackets.
There was logic to the examiner’s argument that the number three in brackets would be seen as an ordinal e.g. as referring to the third item in a series. However, there was perhaps even greater logic in Level 3’s argument that a number enclosed in brackets without matter outside the brackets would not be seen as an ordinal. A number in brackets without anything before or after it has no obvious propensity to convey information about the position of an item in a list. This suggested that the sign applied for might have the capacity to act as a trade mark.

Ultimately the decision as to whether to refuse the application on absolute grounds depended on the effect that registration of the trade mark applied for would have on the rights of other traders. In this case, the availability of numbers in brackets for the purpose of indicating the position of an item on a list would not be restricted in any way because such use would not amount to trade mark use and therefore would not constitute, or be thought to constitute, a trade mark infringement

The IPKat says that this may be a small case, but it packs a mighty punch. The Board has used the scope of trade mark infringement in its determination of registrability, despite clear indications from the ECJ (see for example Linde) that infringement is not relevant to this assessment. Despite the ECJ’s contrary position in Arsenal v Reed, the Board seems to have assumed that trade mark use is a necessary ingredient of infringement. Finally, the Board has considered the need to keep certain marks free for others to use in assessing distinctive character, rather than in its usual role in assessing descriptiveness.

Proper use of parentheses here
Everything you never wanted to know about ordinals here
Musical brackets here

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