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

Monday, 15 January 2018

Monday Miscellany

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

UK – London

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

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

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

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

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

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

Netherlands, TILT - Call for papers

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

Poland - WIPO roving seminars

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

UK IPO – change in fees

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

USPTO – new data set on office actions

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

Save the date - Retromark: A Review of the Year in Trade Marks

Have you said 'trade mark event'? 
Are you looking for an afternoon devoted to discussing the most recent developments in the area of trade mark law?

Then save the date and register for the event that The IPKat and Simmons & Simmons are organising together.

Based on Darren Meale’s popular Retromark blog posts (Volume I and Volume II), the event will be held at Simmons & Simmons London offices near Moorgate on Wednesday 14 March. 

We can now confirm the full agenda and part of the line-up, as follows:

14:00-14:30 – Registration

14:30-14:40 – Introduction and welcome

14:40-15:40 – Panel 1 – “The fragile state of relations between service providers and brand owners: life after the UK Supreme Court decision in Cartier v Sky

Moderator: Eleonora Rosati (University of Southampton and JIPLP Co-Editor)
Confirmed Panellists: Catherine Palmer (Legal Director at Joseph), Mark Cruickshank (IP Legal Counsel at The Royal Bank of Scotland Group)

15:40-16:00 – The future of trade marks (speaker: Darren Meale)

16:00-16:20 – Coffee/tea break

16:20-17:00 – Keynote address: a year in trade marks [TBC]

17:00-18:00 – Panel 2 – “The colour and the shape: a terrible year for non-traditional trade marks?”

Moderator: Darren Meale (Partner at Simmons & Simmons and Deputy District Judge of the IPEC)
Confirmed Panellists: Giovanni Visintini (Trade Mark & Copyright Counsel at BP),
Amanda Michaels (Barrister at Hogarth Chambers, Appointed Person and Deputy Enterprise Judge of the IPEC)

18:00-19:30 – Drinks and canapes

The first panel will take an in-context look at the UK Supreme Court’s decision in a case due to be heard at the end of January.

The second panel will reflect on the recent decision involving colour marks and Red Bull, as well as various other developments in colour and shape trade marks.

You can register here, but hurry up because places are limited! 

Scents and trade marks - The EU reform of olfactory marks and advances in odour recognition techniques

Millie and "the smell of fresh cut grass"
Less conventional trade marks: are things likely to be easier now that the EU trade mark system has been reformed?

Katfriend Guido Noto La Diega (Northumbria University) looks into issues of registration for olfactory marks at the EU and UK levels.

Here’s what Guido writes:

“In the UK, whereas in theory olfactory trade marks can be registered, there have not been successful applications since the decision of the Court of Justice of the European Union (CJEU) in Ralf Sieckmann v Deutsches Patent- und Markenamt. This contribution suggests that scents may be more easily registered in the near future as a consequence of the EU reform of trade marks and of some technological innovations.

Scents are signs because they can convey information (Phillips Electronics NV v Remington Consumer Products Ltd (No. 1) [1998] RPC 283, 298). After all, Shakespeare taught us that names and words are main carriers of meaning, since ‘(a) rose by any other name would smell as sweet.’ (Romeo and Juliet, II, II) If a scent is not an intrinsic characteristic of the product and is not commonly used (e.g. floral fragrances in fabric softeners), it can be distinctive, since smell ‘is probably the most reliable memory that humans possess’ (Eden SARL v OHIM [2005] ECR II-4705 [25]). Overall, the main hurdle is how to represent them graphically. In order for the representation to be adequate, Sieckmann dictated seven criteria, i.e. clear, precise, self-contained, easily accessible, intelligible, durable and objective. However, the Court did not specify how to meet these criteria. In Sieckmann, it was held that the chemical formula, the description, and a sample, or their combination, did not provide an adequate representation.

Sieckmann was followed by Eden SARL, which again clarified what does not meet the requirements for registration of a scent (the image of a strawberry described as ‘smell of ripe strawberries’), without providing any guidance as to how companies may be able to register scents as trade marks.

After this, it was commented thatthe EU system's graphic-representation requirement makes it virtually impossible in practice, albeit not in theory, to gain registration of a scent mark.’ (Bartkowski 2006). The very narrow interpretation of ‘graphic representation’ provided by the CJEU was not the only choice available. For instance, in Australia even though there is a graphic representation requirement (Trade Marks Act 1995, s 40), olfactory marks have been successfully registered (IP Australia trade mark No 1241420 represented as the Eucalyptus Radiata scent for golf tees). Another example is provided by the  (then) Office for Harmonisation in the Internal Market (OHIM)’s case law ante Sieckmann, that recognised that a description of the scent could meet the graphic representation requirement if it provided ‘clear enough information to those reading (it) to walk away with an immediate and unambiguous idea of what the mark is when used in connection with (the relevant good or service)’ (Vennootschap onder Firma Senta Aromatic Marketing’s Application [1999] ETMR 429 [13]).  

Now, UKIPO’s Trade Marks Manual does not rule out the registrability of olfactory marks. Indeed, it refers to Sieckmann to explain how not to represent olfactory marks graphically, but it seems to imply that they can still be registered, since it goes on to explain how to meet the third requirement for registration, i.e. distinctiveness. In particular, a scent ‘may be distinctive as a trade mark if it is not an inherent or natural characteristic of the goods/services but is added by the applicant to identify their goods and is recognised by the public as indicating trade origin.’ Therefore, whilst a floral fragrance is unlikely to be registrable for fabric softeners and the smell of coffee for a type of coffee, one may argue that the distinctiveness requirement may be met in the event of a scent of a particular type of coffee used consistently applied to all fabric softeners of a single undertaking and accompanied by an advertising campaign clearly referring to this unusual smell. Such a registration would be more likely to be successful in the event of acquired distinctiveness through use (which is what Hasbro is counting on in its Play-Doh application; Galbo 2017).

New possibilities for olfactory branding may be opened by legal and technical innovations. The first one is the EU reform of trade marks. Indeed, the yet-to-be-transposed Trade Marks Directive introduces a new definition of trade marks where the graphic representation of the mark is no longer required. Under the new regime, those who want to register a smell will only need to represent it ‘in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor’ (art 3(b)). Some difficulties may remain because the Trade Marks Directive incorporated the so-called Sieckmann criteria, that the (then graphical) representation must be ‘clear, precise, self-contained, easily accessible, intelligible, durable and objective’ (recital 13). However, even not going as far as arguing that ‘the amendments will abolish the Sieckmann judgement’ (Sahin 2016, 513), it is not excluded that the seven criteria may be interpreted differently in the future, for example as meaning that a combination of description, chemical formula and sample may meet the new requirements for registration. Indeed, with the new definition of trade marks there is a shift from the ‘how’ to the ‘who’. It is immaterial how the trade mark is represented (whether graphically or otherwise), as long as the competent authorities and the public can determine the subject matter of the protection. Arguably, the said combination of description, chemical formula, and sample may suffice from the authorities’ perspective. When it comes to the public, it is likely that this requirement will be absorbed by the distinctiveness. An unusual scent used consistently on a range of products or services of a single undertaking and accompanied by heavy advertising would easily put the public in the position to determine the subject matter of the protection, especially if distinctiveness is acquired through use; thus, the requirement could be easily made out. One could foresee a return to the case law ante Sieckmann that valued the customers’ viewpoint and stated, for instance, that an olfactory mark described as freshly cut grass will be recognised immediately by anyone, reminding ‘of spring, or summer, manicured lawns or playing fields, or other such pleasant experiences’ (Senta Aromatic [14]). The customers’ scent-related power of imagination cannot be underestimated. A number of scents can evoke clear memories and feelings.

Another hurdle may be the extension of some absolute grounds for exclusion from registration that used to refer only to shapes and now include any ‘other characteristic’ (Trade Marks Directive, art 4(1)(e). However, the extension should not have a substantial impact on olfactory marks. The scents depending on the nature of the good were already non-registrable in the UKIPO’s practice (UKIPO 2016, para 3.2). For those adding substantial value to the good, it is likely that companies will keep preferring the route of trade secrets (Hammersley 1998) and patents (e.g. USPTO patent No 9006168). Lastly, it is hard to imagine many scenarios where scents could be necessary to achieve a technical result.

Therefore, it would seem that the EU trade marks reform may leave some scope for scents and other non-conventional marks. The same considerations apply to the European Union Trade Mark (EUTM), given that EUTM Regulation provides the same definition and criteria for representation (art 4 and recital 10; see also the EUTM Implementing Regulation, art 3), as well as grounds for exclusion from registration (EUTM Regulation, art 7(1)(e)(iii)) as the Trade Marks Directive. The EUTM Regulation is relevant for all UK businesses wanting to apply for a EUTM, provided that they have a place of business, a real and effective establishment, or a domicile in the EU, or they have appointed a representative for all proceedings before the EU Intellectual Property Office (EUIPO).

The EUTM Implementing Regulation lists a number of marks and ways to represent them, including non-conventional marks such as holograms and sounds (art 3(3)(a)-(j)). The representation of scents and other marks not comprised in the list, ‘shall comply with the standards set out in paragraph 1 and may be accompanied by a description’ (art 3(4)). Therefore, what matters is that the competent authorities and the public can determine the subject matter of the protection. An obstacle to the registration of scents as EUTMs, however, could follow from the precision that the ‘filing of a sample or a specimen shall not constitute a proper representation of a trade mark’ (art 3(9)).

Alongside the said legal innovations, technological progress could make the registration of scents easier. Two methods that could be used are gas chromatography and smelling screens (Hernandez-Marti Perez 2014).

A scent may well be graphically represented through gas chromatography, the ‘premier technique for separation and analysis of volatile compounds’ (McNair and Miller 2011). However, the WIPO takes the view that this technique be inexact and uncertain, hence, it would ‘not fulfil the demand for unambiguous graphic representation.’ (n.d., 9). However, it would seem that analytical chemistry research is advancing significantly and that, also thanks to artificial intelligence (particularly neural networks), scents can be identified with a high accuracy ‘close to 100%, without any false positives or false negatives.’ (Ugena et al. 2016, 7). Therefore, gas chromatography may be now successfully used to represent olfactory marks.

Scent recognition research has followed many paths. One of them is the smelling screen. This is a ‘new olfactory display system that can generate an odor distribution on a two-dimensional display screen.’ (Matsukura 2013, 606). Smelling screens may enable olfactory marks to be sampled and, as each individual will be able to repeat this process, the ‘principle of easy accessibility will be accomplished.’ (Hernandez-Marti Perez 2014, 668). Such a solution may provide certainty as to the registration of scents and other non-conventional marks, even though much depends on the developments and commercialisation of the relevant technology.

Given the said shift from the ‘how’ to the ‘who’ in assessing the requirement of representation, the commercial success of the smelling screen and of gas chromatography shall be one of the factors to take into account while assessing if the public can determine the clear and precise subject matter of the protection. The importance of this factor is confirmed by the EUTM Implementing Regulation, which provides that the ‘trade mark shall be represented in any appropriate form using generally available technology’ (art 3(1)). This leads us to the Internet of Things (IoT), which has become a key commercial reality, with over 20 billion smart devices in 2017, set to become nearly 80 billion by 2025 (Statista 2017). With the uptake of the IoT, one can foresee that odour recognition techniques will improve visibly. Indeed, the IoT is about devices equipped with connectivity and sensing and actuating capabilities (Noto La Diega and Walden 2016). Hence, it is likely that consumers will expect increasingly accurate and reliable sensors, including odour recognition ones. The ubiquitous availability of accurate electronic noses will make the (formerly) Sieckmann criteria more likely to be made out. When every object in everyone’s home can clearly and accurately tell its users what a product smells like, arguably the public will be able to ‘determine the clear and precise subject matter of the protection afforded to its proprietor’ (Trade Marks Directive, art 3(b)).

Overall, legal and technical innovations promise a new age for olfactory marks and other non-conventional marks. Regardless of Brexit, there are good reasons for the UK to implement the Trade Marks Directive. Not only to prevent a state liability claim, but because a divergence could constitute a barrier for UK businesses to market their products and services in EU. At the same time, EU businesses’ interest in targeting the UK as a market could decrease if they had to develop ad-hoc compliance practices. Once the Member States remove the requirement of the graphic representation, much will depend on how accurate and widespread the odour recognition technologies will be. It would seem that, thanks to artificial intelligence and the Internet of Things, highly reliable solutions will soon be commonly available. The removal of the graphic representation, with its shift from the ‘how’ of the representation to the ‘who’, puts the public back at the centre of the system. The case law underlining the evocative force of scents and the importance of the customers’ imagination may play an increasingly significant role (Senta Aromatic; Sony Ericsson Mobile Communications AB).

The envisaged increased ease in the registration of scents and other non-conventional marks is likely to produce mixed reactions. On the one hand, this will be welcomed positively by businesses willing to innovate their branding strategies. On the other hand, those who fear the monopolisation of ideas underlying the commodification of scents could legitimately be worried.” 

Saturday, 13 January 2018

Multilateralism v Bilateralism: What’s in it for international IP regulation?

A diversity of cats all looking out for global IPRs
From the TPP to the CTPP

The Trans-Pacific Partnership (TPP) (in the post-US withdrawal era called the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP)) continues to be an important plurilateral trade agreement (with substantial and extensive IP provisions) even in the post-US withdrawal era. The remaining parties (Australia, Brunei, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, and Vietnam) agreed in November 2017 to suspend a number of provisions of the TPP text among which also such that concern IP. The negotiations continue and their final outcome is yet uncertain.

But what did TPP say about IP?

Well, to answer this question one should start by answering what did TPP say about anything? The TPP was – if not anything else – a unique specimen of treaty drafting. The Agreement’s 30 chapters regulated a wide range of trade-related issues, with IP being one of them. The obligations stated in these chapters were binding for parties to the agreement.

That is only the case if the several annexes and side letters the agreement contained fail to provide for an exception, derogation or some kind of other special treatment provision. TPP members have in fact during negotiations engaged in the drafting of a considerable number of side letters (bilateral or trilateral), providing for clarifications and interpretation of TPP provisions, as well as special party-to-party deals.

Naturally, one of its most contentious chapters was the one related to Intellectual Property Rights (Chapter 18), while at the same time several provisions in other chapters of the agreement concerned IP intensive industries, thus indirectly influencing the regulation and enforcement of IPRs.

The patent law-related provisions of the TPP include everything from reminders of TRIPS or EPC provisions, to innovative solutions, such as for instance that of 12 months grace period for patent applicants as well as the possibility to require a protection term extension in cases of unreasonable granting authority delays (when no decision is reached five years since the date the patent application was submitted or three years since the request for examination see Article 18.46 TPP).  Chapter 18 provides even for patent linkage, demanding that national marketing authorisation authorities become some kind of patent enforcement police.

Reading chapter 18 of the TPP is of course not enough if you are interested in how TPP would attempt to change global IPRs. You would also need to read Chapter 9 (Investments) where it was stated that IPRs are classified as investments under the TPP which also means that rightholders are entitled to initiate ISDS proceedings (Investor-State Dispute Settlement). States’ decisions considered harmful or discriminatory for investments (thus also for IPRs) including anything from exceptions to patent rights, compulsory licenses and decisions not to grant patent rights could expose a party of the TPP to lengthy and costly arbitration proceedings. Finally, Chapter 26 on Transparency and Anti-corruption gives pharmaceutical companies the mandate to intercede procedures related to reimbursement listings for pharmaceutical products and medical devices. Although not directly related to IP this chapter definitely provides favourable conditions for the commercialisation of patented pharmaceuticals.

The future of TPP / CPTPP

Unfortunately (or fortunately?) the TPP (in this form at least) was not meant to be. The withdrawal of the US marked a new area of negotiations. While the fact that the US is no longer a member undoubtedly limits its scope, it also opens up for new parties not envisioned in the original negotiations. In early January 2018 the UK was been reported to have initiated procedures in order to join CPTPP negotiations in the post-Brexit era.

The future of IP?

While technology and business models develop in a speedy and global manner the work of intergovernmental organisations and international treaty negotiations in the field of trade and IP evolve slowly, if at all.

Since negotiations related to international IP instruments (and notable ones such as the TRIPS Council, the Patent Law Treaty) seem to have paused during the past twenty years, bilateral, trilateral and plurilateral initiatives have dominated the international IP scene. With the IP geography largely modified during the past few years (three Asian countries among the world’s top five patent filing states) there is also a shift in the negotiating forces, and the US and EU do not dominate the game anymore.

The question is of course, which format of international negotiations serves the IP cause best? That of bilateral party-specific IP clauses incorporated in trade agreements or the multilateral treaty model promoting transparency and a certain level of uniformity in the application of rules? Although the TPP was not a multilateral international treaty it was close enough, taking into consideration the importance of its signatories and its scope. However, one cannot but ask what is so positive with multilateralism when it neither provides enhanced transparency nor equal standards for all parties?  The TPP was not transparent, it was not democratic (it was in fact negotiated in secrecy) and it did not entail same (or at least similar provisions) for all. And although some of the provisions are suspended, its format and structure seems to remain intact under the CPTPP. Maybe this is also what has made it so attractive.

Secured diversity in trade and IP regulation even if this is made possible on the basis of the same negotiating platform seems to match the diversity of modern trade actors and their needs.

TRIPS has taught us a major lesson after all … one size does not fit all.

Swedish Supreme Court confirms that domain names constitute property that can be seized by the state

The saga behind the decision I am going to report on first started in April 2015, when prosecutor Fredrik Ingblad directed claims against Fredrik Neij (one of the creators of The Pirate Bay) in an effort to disrupt the operation of The Pirate Bay website in Sweden.

Ingblad also filed a complaint against Punkt SE (IIS), the organisation responsible for Sweden’s .se top-level domain. Mr Ingblad argued that the domains ‘’ and ‘’ were used as “tools” to aid and abet copyright infringement and should therefore be seized by the Swedish state.

Section 53 a § of the Swedish Copyright Act (SCA) states that property used or being used for crimes regulated in the SCA may be seized to prevent further crimes. The same applies to property that is intended for use as a tool in connection with such activities.

The Stockholm District Court (2015) and the Court of Appeal (2016) had found that domain names must be viewed as a form of property and are therefore eligible to fall under the SCA. 

Since the domain names were used as identifiers of the well-known sharing service The Pirate Bay, both courts had held that the domain names should be subject to forfeiture and thus transferred to the Swedish State.

Importantly, since the domain names are considered a type of property, the owner of that property – being Mr Neij - is responsible for the activity over its services.  ISS was not regarded as the domain name proprietor because it only exercised an administrative function over the domain names (organising the database, taking out fees etc.), as opposed to having an exclusive right over it.

Prosecutor Fredrik Ingblad
Fredrik Neij appealed the Court of Appeal decision to the Swedish Supreme Court, arguing that the domain names do not constitute property under Section 53 a § of the SCA.

The judgment of the Swedish Supreme Court

Last month the Swedish Supreme Court confirmed that the two domains can indeed be seized by the state. The (relatively short) judgment essentially tackles two main issues:

(1)  Whether the domain names constitute a form of property in light of Section 53 a § SCA

Domain names are not really regulated under Swedish law and the available framework is primarily of international nature. That being said, in order to determine whether domain names are a form of property, the Supreme Court sought guidance from jurisdictions such as Norway, Denmark and case law of the European Court of Human Rights. Concluding that these courts have opined in favour of seizure of domain names, the Supreme Court held that:

·       the possession of a domain name can be of monetary value for the proprietor;
·       it entails an exclusive right by being having the option of transferring it; and  
·       in some respects, it fulfils a function similar to that of a trade mark.

It was therefore clear that domain names should be recognised as a form of property.

(2)  Whether domain names can be used to aid and abet copyright infringement

Under Section 53 a § SCA, property used to aid and abet crimes against the SCA may be forfeited to prevent further crimes. Following on the previous point, the Supreme Court held that domain names can be indeed used to aid and abet the commission of crimes, and it is not required that the tools used to this end are of any particular type.

A more robust set of enforcement tools in Swedish IP cases

This case is relevant because it confirms the possibility of forfeiture of domain names. It also provides rightholders with an additional possibility to counter the struggle against widespread online copyright infringement. Readers may in fact remember that not long time ago the Swedish Patent and Market Court of Appeal issued the first blocking injunction in the Swedish context, ordering a major ISPs to block access to The Pirate Bay.

Overall, different tools seem now available to rightholders wishing to enforce their rights in this jurisdiction. As regards the efficacy of the various options, it is worth recalling the assessment undertaken by Mr Justice Arnold in his decision in Cartier [here], who considered that there might be scenarios in which domain name seizure might have some value while blocking orders remain probably the most efficient measure.

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':