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).

Friday, 30 September 2005


1 More PDO applications

Issue C240 of the European Commission's Official Journal announces the filing of three applications for registration under Article 6(2) of Regulation 2081/92 on the protection of geographical indications. The applications are for

* CAROTA DELL'ALTOPIANO DEL FUCINO, an Italian carrot of which it is said: "Precisely because of the very loose and unstructured nature of the soil itself, the carrots produced in Fucino are notable for the shape of the vegetable which is mainly cylindrical with a rounded tip, free of root hairs and with no deep scarring where the leaves emerge, with a smooth skin and the whole root has an intense orange colour". The carrots are rich in thiamine, riboflavin and (surprise, surprise) carotene.

* PATACA DE GALICIA or PATATA DE GALICIA, for Spanish potato tubers with a diameter of 40 mm to 80 mm (calculated as the length of one side of a square mesh through which the potato just passes without forcing) and being (i) oval to round, (ii) shallow eyed, (iii) thin, smooth, bright yellow skinned, (iv) white fleshed and (v) firm to the touch.

* CLÉMENTINE DE CORSE for pipless Corsican clementines grown at an altitude of between 2 and 300 metres.
The IPKat rather liked the idea of protecting products that had genuine character and were held in repute, so that other traders could not get better prices for their inferior goods by stealing the 'good' product's name. But he is more than somewhat disenchanted with the continuous trickle of PGI and PDO registrations for products that, in general, no-one except the growers and their immediate families have ever heard of and which are defined by sometimes ludicrous pseudo-technical descriptions. Merpel adds, is it still possible to buy generic products - or will prices be forced up by all producers turning themselves into growers or makers of PGI and PDO products?

Corcisan pipless (left);
Corsican pipsqueak (right)

2 Database sui generis right review

The sui generis database right in the European Union's 25 Member States protects databases in which there has been
"qualitatively and/or quantitavely a substantial investment in either the obtaining, verification or presentation of the contents".
Under Article 16(3) of the European Union's Database Directive 96/9, the Commission has to submit every three years to the European Parliament, the Council and the Economic and Social Committee
"a report on the application of this Directive, in which, inter alia, on the basis of specific information supplied by the Member States, it shall examine in particular the application of the sui generis right ... and shall verify especially whether the application of this right has led to abuse of a dominant position or other interference with free competition which would justify appropriate measures being taken, including the establishment of non-voluntary licensing arrangements. Where necessary, it shall submit proposals for adjustment of this Directive in line with developments in the area of databases".
The IPKat wonders if he must have missed something, since he can't recall having seen any of these reports (which, according to his calculations, should have been submitted in 2001 and 2004), though he has heard rumours that a review of the impact of sui generis right is currently taking place. Can anyone enlighten him? If so, please feel free to post comments below or to email the IPKat here. A future blog will consolidate all responses, giving credit where due.

3 Putting the Kat out?

The IPKat's terrestrial snailmail this morning contained a very handsome brochure from the UK's Institute of Trade Mark Attorneys entitled "UK Trade Mark Professionals: Providing a Gateway to Europe and the World". The front cover contains a partial picture of the British Isles, South Wales (the location of the Trade Mark Registry) having fallen off the bottom of the page.

More sinister was the accompanying letter of welcome from the affable President of ITMA, Stephen James (right), normally the nicest of people, which closes with the menacing words "You may even consider becoming one of our many Overseas Members". The IPKat quite enjoys his occasional forays across the water but, being a staunch Londoner, he is a little alarmed at what appears to be a tacit invitation to go into exile. A word of reassurance from the Institute - which must be congratulated on its modernity - would be very much welcomed.

Join ITMA here
Another ITMA here for people who are very old

Thursday, 29 September 2005


1 Daniel Alexander: don't knock the ECJ

A rapt audience of practitioners, postgraduates and professional cynics listened to Daniel Alexander QC's surprisingly sympathetic appraisal of the operation of the European Court of Justice's roles in fielding Community trade mark appeals and processing references for preliminary IP rulings from national courts. Speaking at Queen Mary's Dean Rees House, his main point was that the fact that ECJ/CFI procedures were different to those we know and love in the UK doesn't actually mean there's anything wrong with them. Alexander (right) went to particular lengths to defend the tendency of Advocates General to produce Opinions replete with cultural tours d'horizon rather than just focus on the law; he also painted a kindly picture of the paper-based submissions and minimal hearings that precede the Court's rulings.

The meeting concluded with seconds and thirds of wine, but the discussions continued long beyond the point the meeting ended. The IPKat always enjoys these little events: they cloak the law's grand abstractions with a gentle coating of reality. Merpel says, come off it - and forget your intellectual pretensions: you're only there for the wine!

If you'd like to be kept informed of future Queen Mary IP lectures, seminars and meetings, they are usually posted in advance here.

2 Sole IP practitioner? Looking for company?

One of the odd topics that emerged in the social aftermath of Daniel Alexander's talk (above) was that of the position of the sole intellectual property practitioner. Some lawyers are determined to work on their own, for the sake of flexibility, personal satisfaction or lifestyle. Others go solo, tempted by the prospect of servicing the IP needs of a specific client. Some, formerly working in-house with a large company, are "outsourced". Others again have no option, having left larger practices through no fault (or choice) of their own. What they all have in common is the need to juggle limited personal resources when working under pressure and to focus on detailed work while also picking up new and potentially significant developments as they break across the horizon.

It occurred to the IPKat that it might be quite fun to organise a brief meeting early one evening at which sole IP practitioners (and perhaps also members of micro-practices even if they work with others) could get together to discuss the problems they face and they ways they seek to solve them. If nothing else, it might improve the lot of their clients ... Perhaps 5 till 7 at a convenient hostelry, for people to drop in, say hello and do a little light networking. If you're interested, email the IPKat here: if he gets 10 takers or more, he'll organise it.

3 Keeping an eye on two Worlds ...

With September nearly out, there's just time for the IPKat to mention this month's Patent World and Copyright World. These two titles, published by Informa, contain a selection of short, brightly written and topical pieces on their subjects, together with a selection of news items.

In Copyright World , Olswang's Sarah Wright (left) and Priya Vatvani (right) cheerfully ask whether the EU's sui generis database right is about to die, following the British Horseracing Board case. Regular copyright is apparently now off the sick-list on both sides of the Atlantic following the US Supreme Court decision in Grokster, according to Eugene Quinn (IPWa and Simon Baggs (Wiggin, Cheltenham).

Patent World carries a review by Peter Ward (Bird & Bird) of life after the failure of the European Union to sort out the software patent directive, as well as a thoughtful article by Jinseok Park (KIPO) on claim strategies in the light of the fact that criteria of patentability, though often similar in different countries, are only imperfectly harmonised.


1 Big day for Bahrain

15 December 2005 - the day before National Day - will see one hell of a celebration among intellectual property enthusiasts in the Kingdom of Bahrain: on that day it accedes to

* the Madrid Protocol on the international registration of trade marks,

* the Nice Agreement on trade mark classification,

* the Patent Law Treaty,

* the WIPO Copyright Treaty and

* The WIPO Performances and Phonograms Treaty.

The IPKat is thrilled. No longer will anyone be able to say that there is a 'Gulf' between Bahrain and other countries in terms of its IP protection.

Information on IP law and resources in Bahrain here and here
Planning to visit Bahrain? What the British Council can do to help.

2 At last, another InfoTLR

Issue two of Lawtext Publishing's bimonthly law report series, Information Technology Law Reports, has now been released. These reports frequently carry intellectual property-related cases, though this issue does not. It focuses on
* Johnson v Medical Defence Union Ltd (on a data subject's request under the UK's Data Protection Act 1998 for access to data held by him, contrasted with his right to secure the same information through normal disclosure procedure in the course of civil litigation),

* Tektrol Ltd v International Insurance Company of Hanover Ltd and others (insurance repercussions for viruses and loss of source code following a burglary) and

* Computer 2000 Distribution Ltd and other v ICM Computer Solutions plc (sale of goods issues arising out of delivery of hardware in pursuit of a fraudulent purchase).
The IPKat has a soft spot for the InfoTLR and hopes he doesn't have to wait too long for the next issue!

3 European Court of Justice to rule on the meaning of LIFE

Flag Thursday 6 October in your diaries: it's Judgment Day in Case C-120/04 Medion. This is the reference for a preliminary ruling on whether the single word mark LIFE, being
"a single word with ‘normal distinctiveness’ and which, although it does not shape or mould the overall impression conveyed by the composite sign, has an independent distinctive role",
is likely to be confused with the later mark THOMSON LIFE. The referring court wants to know whether the German doctrine of Prägetheorie is part of European trade mark law. Prägetheorie (from the Advocate General's Opinion at para.8) is explained as follows:
"The starting point in determining trade mark similarity where individual components of conflicting trade marks are the same is the overall impression conveyed by the marks; what must be ascertained is whether the common component characterises the composite mark to the extent that the other components are largely secondary to the overall impression. There will be no likelihood of confusion on the sole ground that the common component merely contributes to the overall impression. Nor does it matter whether a sign incorporated in a composite mark has retained an independent distinctive role. Individual elements in the overall presentation of goods may however have a distinct role that is independent of the distinguishing function of other components; the components are then viewed in isolation and compared. A component of a sign which the trade recognises as designating not the product as such but the undertaking from which it originates is not generally regarded as characterising the sign. Where a designation of an undertaking is recognisable as such it should as a rule be secondary in terms of overall impression because the market concerned identifies the actual product designation from the other component of the sign".
The Advocate General's advice to the Court was as follows:

"In determining whether a composite word or word/figurative sign comprising a company name followed by an earlier mark which consists of a single word with ‘normal distinctiveness’ and which, although it does not shape or mould the overall impression conveyed by the composite sign, has an independent distinctive role therein is sufficiently similar to the earlier mark to give rise to a likelihood of confusion on the part of the public within the meaning of Article 5(1)(b) of Council Directive 89/104, a national court must base its assessment on the overall impression given by each mark, bearing in mind, in particular, their distinctive and dominant components, the nature of the public concerned, the category of goods or services in question and the circumstances in which they are marketed".
In other words, the answer's "no" but you'll probably get the same answer to the "is it likely to confuse?" question whether you apply Prägetheorie or follow the words of the Advocate General in respect of 99% of given facts. Anyway, to find out what the ECJ says, don't forget to check this blog next Thursday for news and comment.


The Puss's Privacy Puzzle, posted only yesterday (scroll down - it's immediately under this blog), has received numerous comments and responses. Apart from those attached to the original blog, the following are worthy of note:

First, fellow blogger C. E. Petit explains in brief:

"The reason that Outlook has that particular behaviour is the problem with webbugs--usually 1 x 1 pixel items. The privacy hook is that code in the webbug tells the computer from which the picture is downloaded what email address requested that picture and its IP number--which are both immensely valuable to spammers, as they indicate that a given message has reached a human being. Thus, the privacy issue".
In similar vein David Pearce (Eric Potter Clarkson) explains:

"Outlook blocks by default downloading of material referenced in emails, including pictures, because they can in fact uniquely identify you. What is common to find in (html-formatted) spam emails is that they contain html links which have codes in them unique to the email address to which the email was sent. By downloading the picture sent in response to accessing this link, the spammer is easily able to tell whether the email was read, and can update his records accordingly, i.e. mark your email address as being 'live', and therefore more valuable".
For those who want a fuller technical description, David Brophy (F. R. Kelly, Dublin) really goes to town:

"There were two pictures attached to your email. One of them was:, and the other was

In order to see those pictures my email client has to contact the sites and, so the owners of those sites can (at a minimum) see that someone at my IP address has looked at those pictures. If those addresses were created solely for use in that email circular, then those site owners could tell that I opened that email (though not of course if Outlook prevents me from opening the pictures).

Taking this a step further, the address of a picture attached to an email sent to you could be something like addresses/jeremy@.asp. An otherwise identical email sent to Merpel could have an embedded picture with an address of addresses/merpel.asp. If you opened the email using an old version of Outlook and Merpel opened it with a newer version including the "privacy" feature (and without clicking on the picture to download it), then the evil spammer would be able to tell that your address was active but would be unable to determine that Merpel's address was active.

Taking this a final step, if the spam email purported to provide cheap credit (or indeed Viagra without prescription), the ability to identify those recipients of a spam email who were both active addresses and interested enough to open the email (thereby automatically downloading the pictures and alerting the web server) would enable those addresses to be sold on for a premium and would almost certainly result in more spam in the future".
Chris Rycroft (Oxford University Press) adopts an approach based more on moral than on technical reasoning:

"Could it possibly be that it is supposed to protect the "privacy" of someone (most commonly in the workplace) in the sense that it guards against embarrassing pictures automatically being displayed on screen in full view of work colleagues…; whereas text is just text and cannot be so easily read from a distance...".
Finally, Anonymous posted a Comment this morning that reads as follows:

"... the IPkat should note that hotlinking to images from other sites for its posts is also not a good idea. First, it uses bandwidth that is being paid for by somebody else, and indeed increases their costs. Secondly, if this annoys one of those people, all they have to do is upload another picture in the same place with the same name and IPKat's visitors could be subjected to a different sight entirely".
Anonymous is right, but it seems to be accepted blogging custom and practice to hotlink images and the IPKat has received many appreciative emails from people who actually like them. He also checks back-blogs regularly in case offensive images have been superimposed. It is also the IPKat's policy to remove any images where (i) the copyright owner objects and (ii) the objection is sustainable under copyright law - but that's another issue entirely!

The Kat (above) takes time
to look up his copyright law.

Wednesday, 28 September 2005


The IPKat frequently receives (and indeed, it seems, sends) emails that contain pictures. As a user of Microsoft Outlook, the IPKat generally finds when he opens his emails that the pictures are not actually displayed. Instead, there's a little box that contains the following text:

"Right-click here to download pictures. To help protect your privacy, Outlook prevented automatic download of this picture from the internet".
That seems very nice but what, the IPKat wants to know, does this have to do with privacy? If anything invades the recipient's privacy, it's the arrival of an unsolicited email as such, not the appearance of a picture. And how does the fact that the picture is not automatically downloaded protect his privacy? It's not as if the downloading of the picture enables the sender to see the recipient, or anything like that, is it? Or is this a proposition of US law that is meaningful on one side of the Atlantic but a little perplexing on the other?

Answers, please, by comment below or by email here.


1 Liberia signs up for Phonograms Treaty

The Director General of the World Intellectual Property Organization presents his compliments to the IPKat and has the honour to notify him that, according to the information received from the Secretary-General of the United Nations, the Government of the Republic of Liberia deposited, on 16 September 2005, its instrument of accession to the Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms of 29 October 1971. The Convention enters into force with respect to Liberia, on 16 December 2005.

There are now 75 members of the Phonograms Convention: they are listed here.

2 Albania joins UPOV Convention

The Secretary-General of the International Union for the Protection of New Varieties of Plants (UPOV) - who also happens to be the WIPO Director-General in his spare time - presents his compliments to the IPKat and has the honour to notify the deposit by the Government of the Republic of Albania, on 15 September 2005, of its instrument of accession to the International Convention for the Protection of New Varieties of Plants of 2 December 1961 (as revised to 1991).

The Convention will enter into force, with respect to Albania on 15 October 2005 when the Republic becomes a member of the International Union for the Protection of New Varieties of Plants.

Sixty UPOV members here
More on Albanian plant research here

3 Four Times table ...

IPKat pen-friend Sofia Smith has just informed him that this week's Times Law carried no fewer than four news items on intellectual property. These features addressed

* Google's book scanning program;

* the splendidly anomalous topic of UK Crown copyright;

* destroying site-specific art works (this topic was touched on in a recent blog) and

* celebrity endorsement for brands (a regular IPKat topic).

The IPKat is delighted. All too often, newspaper coverage of law at the national level tends to cover the same few areas (criminal law, legal aid, divorce and custody, constitutional issues and regulation of the legal professions) but leave IP law untouched. There will be much better understanding of IP issues among the non-legal community if newspapers regularly report on such items.

Merpel demurs: hold on a minute, she mews - you don't generally believe half of what you read in the daily papers, so why should you assume the public at large will teach itself all about intellectual property because a few journalists decide to give it an airing?


1 A reminder: Daniel Alexander comes to QMIPRI

In case you missed Monday's announcement, leading intellectual property silk Daniel Alexander QC is speaking this Thursday, 29 September at 5.30pm in Dean Rees House, Charterhouse Square, London EC1 on Intellectual Property Litigation before the European Court of Justice. Drinks will be served, the company is scintillating and admission is absolutely free! If you're coming, please let us know by clicking here.

2 A question of copyright and public policy

Like most email users, the IPKat gets bombarded with scams. Some of these are invitations to send his bank details to someone who is masquerading as a bank (usually one for which he holds no accounts); others are 'Nigerian-style' or '419' scams that seek to invoke a mixture of misplaced pity and greed, inviting the addressee to cooperate in a scheme for removing vast sums of money from a developing country so that the scammer and his victim can share the proceeds. Finally there are the prizes and exotic holidays accruing from competitions he has never entered.

What the IPKat wonders is this: if he chose to compile a collection of the best scam emails he has received, publishing it as a regular book (he can just see it now, The IPKat Book of Champion Scams, available in all good bookshops), would he be liable to the scammers - if they dared to show their faces in court - for copyright infringement? Or would these scam-mails be deprived of copyright protection on public policy grounds? Also, what would the measure of damages be? He asks for readers' comments. Merpel grumbles, why is it always the readers' comments he wants, not mine ...?

More on scams here and here
Scambusters here

Tuesday, 27 September 2005


1 CARGO PARTNER gets that sinking feeling

In Case T-123/04 Cargo Partner AG v OHIM, decided today, the Court of First Instance (CFI) dismissed Cargo Partner's appeal against an OHIM Board of Appeal's dismissal of an appeal against the examiner's refusal to grant registration of the word mark CARGO PARTNER as a Community trade mark for services in Class 39 (transport; packaging and storage of goods; travel arrangement). The stumbling-block that prevented registration was the considered opinion of everyone except the applicant that the words lacked distinctive character. As the CFI explained the Board's decision,

"in English, the terms ‘cargo’ and ‘partner’ were devoid of any distinctive character in relation to the list of services at issue, consisting in transport services and related services, such as packaging and storage of goods. .. [T]he English expression ‘cargo partner’ could be translated into German by 'Frachtpartner’ or ‘Transportpartner’ and ... the formation of that expression was in conformity with the grammatical rules of the English language".
Having dismissed OHIM's objections as to the admissibility of the appeal, the CFI then rejected the applicant's arguments that the mark was distinctive:
"52 The word ‘partner’ is used in various contexts, including the supply of services, to describe relationships of association or partnership by suggesting positive connotations of reliability and continuity (Case T-270/02 MLP Finanzdienstleistungen v OHIM (bestpartner)... paragraph 23)

53 The term ‘cargo’ indicates that the services at issue are freight services and the packaging and storage of goods.

54 Therefore, it must be concluded that the terms ‘cargo’ and ‘partner’ are generic words which are accordingly not capable of distinguishing the applicant’s services from those of other undertakings.

55 As regards trade marks composed of words, such as the mark at issue here, the absence of distinctive character must be determined not only in relation to each word taken separately but also in relation to the whole which they form. Any perceptible difference between the terms of a word sign submitted for registration and the terms used in the common parlance of the relevant class of consumers to designate the goods or services or their essential characteristics is apt to confer distinctive character on that sign enabling it to be registered as a trade mark (BABY-DRY, ... paragraph 40).

56 In this case there are no elements which indicate that in English the expression ‘cargo partner’ has, in common parlance, a meaning other than that of presenting the partner offering services of transport, packaging and storage of goods. In relation to the terms which compose it, the sign CARGO PARTNER does not present any additional characteristic capable of making the sign as a whole appropriate to distinguish the services of the applicant from those of other undertakings in the mind of the relevant public.

57 It is the case that the applicant is established in Austria, a German-speaking country. However, since registration may be refused once there are grounds for refusal in part of the Community, it is clear that, where it is established that there is a ground for refusal in the English-speaking part of the Community, the existence of such a ground in other parts of the Community does not affect the outcome of the present case (bestpartner, ... paragraph 21).

58 Moreover, it must be stated for the sake of completeness that the two words ‘cargo’ and ‘partner’ can also be used in German with substantially the same meaning as in English.

59 It follows that the sign CARGO PARTNER is, from the point of view of the relevant public, devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 40/94 as far as services of transport and packaging and storage of goods are concerned".
The IPKat has some sympathy for the applicant. While the mark is not a terribly elegant or exciting one, it strikes him as an Anglophone Kat that the words, taken globally (a word that does not appear in this decision), jar somewhat because they are not a normal idiom. Expressions in English that contain 'partner' (bridge partner, tennis partner, sleeping partner, senior partner, partner in crime) tend to be well-worn usages that have a meaning of their own. But to tack 'partner' on to other words (eg. pencil partner, sausage partner, newspaper partner, flower partner) would sound distinctly odd and might arguably therefore be distinctive.

2 Joy turns to misery...

The IPKat was so happy when he received his lovely big (389 pages) INTA (International Trademark Association) Membership Directory 2005-2006 today. But his joy was diminished somewhat by the fact that, while full and associate members have all their contact details listed, and even INTA staff members have their telephone numbers and email addresses provided, Professor and Student members are just unceremoniously listed alphabetically by surname and again by institution, without listing any contact details.

This is a silly sort of discrimination. It means that academics, who pay very little for their membership, can easily contact everyone else in the Directory, while people who pay the full rate for their membership have to resort to such trusty tricks as playing around with Google (or asking their secretaries to do it for them) if - as often happens - they need to contact a trade mark academic.


1 Patent problems "hard to fix"

Right: some critics have unkindly suggested a new name for the USPTO, in the wake of some of its recent patent grants

The IPKat has just read in South Florida's The Business Journal of the problems faced by Congress when seeking to improve the quality of United States patents. Despite the hiring of more examiners, the US Patent and Trademark Office can't keep up with a rising flood of patent applications, with filings over the past decade up by a whopping 85%. Inventors now have to wait more than two years between application and grant and many critics maintain that, under this rising pressure, the USPTO is granting many patents that should not be granted.

Below: patentees' fees - everyone wants a slice of the revenue

Apparently, between 1992 and 2004 Congress diverted more than US$741 million in fees collected by the USPTO to other government programs (this practice has now been suspended). The USPTO reputedly plans to hire about 940 new examiners this year, plus an additional 1,000 examiners annually till 2011. It can however take a long time for new examiners to develop sufficient expertise to evaluate patent applications, while many experienced examiners are leaving the agency. Ronald Stern, president of the Patent Office Professional Association, says that many examiners are frustrated by production goals that give them only 20 hours on average to examine an application for a new invention. These goals have not changed since 1976, despite the increasing complexity of patent applications.

Below: the only court most patent owners want to end up in

The IPKat sympathises. He's implacably opposed to examination targets. They send out a message that economic demands are somehow a higher norm of conduct than the thorough and efficient examination of remarkably complex documents. Merpel adds, I bet industry would be happy to pay even 20% more for their patents if it meant that fewer, but better and more presumptively valid patents were granted in result, thus greatly reducing their exposure to unwanted and avoidable litigation.

Full text here of Ronald Stern's submission to the Subcommitte on Courts, the Internet and Intellectual Property, Committee on the Judiciary, 8 September 2005.

2 French help bloggers beat the ban

Here's something to praise the French for. The IPKat has just learned through Findlaw that a Paris-based media watchdog has released an ABC guide of internet blogging, partly financed by the French Foreign Ministry, that includes tips for evading censors and reaching dissidents in countries from China to Iran. The Reporters Without Borders (Reporters sans frontieres) Handbook for Blogger and Cyber-Dissidents includes technical advice on how to remain anonymous online. It was launched at the Apple Expo computer show in Paris last Thursday. According to Julien Pain, head of the watchdog's Internet Freedom desk
"Bloggers are often the only real journalists in countries where the mainstream media is censored or under pressure".
In a bid to inspire budding web diarists around the world, the 87-page booklet gives advice on setting up and running blogs. It can also be downloaded from RSF's website in Chinese, Arabic, Persian, English and French. Tips include using pseudonyms and anonymous proxies, which can be used to replace easily traceable home computer addresses.

The IPKat can confirm how effective and blogs can be, having used his blog to good effect when establishing clandestine links to dissident elements in several significant EU and UK institutions where intellectual property freedom of speech is discouraged, fortunately without needing to remain anonymous (though several of his friends have had to conceal their identities when sending him information).

Monday, 26 September 2005


The IPKat has been straying far from home again, this time reaching that portion of cyberspace that corresponds to the Emerald Isle. He's just found two recent trade mark decisions, both from the Irish Patents Office. They are

* McDermott Laboratoties (yes, that's how they're spelled on the click-through and on the pdf file containing the decision) Limited's application; opposition of May & Baker Ltd, 29 August 2005. McDermott applied to register ZIMOCLONE for pharmaceutical products in Class 5; May & Baker opposed, arguing that there was a likelihood of confusion with their earlier Class 5 mark for ZIMOVANE. Reminding the parties that the test was one of likelihood of confusion, not possibility of confusion, the Tim Cleary (for the Controller) said that while he could not rule out any possibility, he would not say that confusion was likely, especially since they were prescription products.

May & Baker also opposed on a load of other totally unsubstantiated grounds. The IPKat considers this to be a stupid, unnecessary, time-wasting practice that has no right to persist in the fair land of Ireland and which does no credit to any of us in the twenty-first century. As Tim Cleary said:

"Notwithstanding the fact that the Opponent did not formally abandon the other grounds of opposition, namely those under Sections 6(1), 8(1)(b), 8(3)(b), 8(4)(a), 10(1), 10(3), 10(4)(b), 37(2) and 42(2) of the Act, I am satisfied that there is no need for me to give them any serious consideration. Because those grounds have not been supported by relevant evidence or argument, a prima facie case has not been made out under any of the relevant Sections of the Act and there is no onus on the Applicant to respond. Nor do I consider it necessary for me to do more than to state that I dismiss the opposition under each of those Sections as unsubstantiated".
The IPKat has a golden rule in these cases: the more unsubstantiated grounds the opponent raises, the more he shouts to the high heavens that he doesn't have an arguable case. Merpel asks, what's a laboratotie?

* "Podravka" D.D. Prehrambena Industrija's application; opposition of Société des Produits Nestlé S.A., 11 July 2005 (also a decision of Tim Cleary). Croatian company Podravka applied to register, for foods in Classes 29 and 30, a figurative sign consisting of a chef. Nestlé opposed, (i) citing a likelihood of confusion with its own word, logo and figurative chef signs for foods in Classes 29 to 32 and (ii) the proposition that it could bring an action for passing-off against Podravska's chef. Both chefs are displayed in the transcript of the decision.

The opposition - which invoked eight grounds, most of which once again were non-starters (similarly commented on by the hearing officer) - succeeded on both grounds, there being not merely a likelihood but a high probability that consumers would be confused, given the similarity of the respective chefs and the similarity of the parties' respective products. No rocket science here, but a piece of solid judgment from the Patents Office.

Irish chefs here, here and here


Daniel Alexander QC, who is speaking this Thursday at the QMIPRI

September's guest speaker in the QM Intellectual Property Research Institute's series of Thursday afternoon lectures is Daniel Alexander QC, who speaks this Thursday, 29 September, at Dean Rees House, Charterhouse Square, London EC1 (near Barbican tube station) on handling intellectual property litigation before the European Court of Justice. Daniel, of IP specialist chambers 8 New Square, has acted in more than 20 cases before the ECJ and the Court of First Instance, which means that he must be one of Luxembourg's most frequent visitors. Daniel's talk begins at 5.30pm and wine, water and fruit juice will be served. If you are planning on coming, can you please click here and let the IPKat know so that the Institute can cater for approximately the right number of people.

Check your recent European Court of Justice cases here.
For things to do in Luxembourg after 9pm, click here.

Sunday, 25 September 2005


1 What Katy did ...

"What Katy did" is a short piece in today's Sunday Telegraph on the risks inherent in one of the more overt elements of intellectual property law: celebrity endorsement licensing. The article briefly chronicles the misdeeds of various celebrities (including Tiger Woods, David Ginola and Lawrence Dallaglio) and discusses the element of risk inherent in pinning the reputation of a popular consumer product to the sometimes random or irrational behaviour of high-profile celebrities. The piece then goes on to consider whether supermodel (but not super role-model) Kate Moss (right) has destroyed her chances of securing further lucrative product endorsements through her self-confessed drug habits.

The IPKat has an idea. Since live stars so often let down the brand that they're supposed to be boosting, why don't brand owners seek endorsement exclusively from dead ones? You can hardly go wrong with Elvis, James Dean, Jimi Hendrix, Einstein or Mozart (seen here, left, endorsing Mirabell products), since their portfolio of objectionable activities was closed upon their death. Merpel says, in some cases their activities, which seemed antisocial when they commiited them, might now seem positively endearing ...

What Katy really did here

3 Japanese copyright law: a festschrift

Dr Gerhard Schricker is best known for his authoritative commentary on German copyright law. He also directed the Max Planck Institute for Intellectual Property until his retirement in 2003, since which time he has been freed from administrative shackles and enabled to pursue his own research and domestic interests.

The IPKat has just been looking at a rather lovely collection of essays on Japanese copyright law, edited by the Max Planck's Peter Ganea, Christopher Heath and Hiroshi Saito. The chapters are authored by distinguished Japanese academics such as Shikegi Chaen, Takuya Iizuka, Shinich Isa, Hisao Shiomi and Tatsuhiro Ueno, whose brief biographical notes summon up a wealth of cross-fertilisation of disciplines and legal experiences. The only thing missing, the IPKat notes, is any contribution from anyone who admits to being tarred with the brush of legal practice. The Kat thinks this is a shame. Some academics (though he's sure the editors of this work do not fall into this category) view legal practitioners as a sort of cross between the lab assistants and the rats in the maze: they conduct the experiments and indeed form their very subject-matter but are somehow not fit to pronounce on the results of the experiments.

Anyway, these essays give a remarkably good perspective on Japanese copyright law in terms of its history, its reaction to the Berne Convention norms, its response to modern technological challenges, its regulation of copyright-related contracts and its enforcement. The book is not a daunting read: its nine segmented chapters only cover 130 or so pages, followed by an appendix containing all the relevant laws. Published in hardback by Kluwer Law International, the book is quite pricey at 130 euro/US$166, but that is not surprising, given the relatively specialist readership of English-language books on Japanese law. Every good IP research library should get a copy.

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