The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Saturday, 22 July 2017

In memoriam of Kenneth Jay Lane: "My designs are all original"; original from someone"


Fakes and imitations have long held a fascination in the world of creation, not always pejoratively. This Kat remembers his notion of what is "genuine" being challenged in 1990 by an iconic exhibition presented by The British Museum, entitled ''Fake? The Art of Deception.'' In reviewing the exhibition at the time, The New York Times made the following observations--
“One lesson of the British Museum exhibition is that fakery is a matter of context. In ancient Egypt and the Orient, copying earlier works was a sign of respect and even piety. In Europe, where authorship was not acknowledged or legally protected until the Renaissance, medieval imitation was in no sense a personal or moral affront. ... But still in Renaissance Italy, a sculptor could legitimately test his skill by trying to pass his work off as ancient; the young Michelangelo excelled in this ''misrepresentation.''

During the Gothic Revival of the 19th century, the ''great age of faking,'' according to the catalogue, copying was an esthetic imperative. The idea was to re-create an antique world filled with artifacts from the past, some of them real, and some [not]….”
Fast forward from that 1990 article in The York Times, this Kat read in the July 21st on-line edition of the newspaper that--
“Kenneth Jay Lane, the designer and bon vivant who built a global business from glittering acts of unabashed deception, producing fake and junk jewelry — or, as he liked to say, tongue in cheek, ‘faque’ and ‘junque’ — has died at his home in Manhattan. He was 85.”
“ I myself am a fabulous fake," Mr. Lane once said of himself.

However he chose to describe himself, this much is for sure: Lane made it “chic” to wear fake jewelry all in support of a life-style that belied his cheap jewelry offerings. Lane came from Detroit, then the epicenter of the automobile industry, seemingly far removed from the design of anything that did not have four wheels. He left Detroit as a teenager in search of a design career in New York, where he is said to have augmented his flat Midwestern accent with a bit of a British-sounding overlay. His first ten years in design focused on footwear, before he moved to jewelry, where he made his fame and fortune.

It is said that many women wore their own jewels together with jewelry designed by Lane, Not infrequently, even experts, were hard-put to distinguish what was what. Indeed, it appears that Coco Chanel had accomplished the same dynamic some years earlier, but her fakes were meant for a more limited, well-heeled market and, unlike Mr. Lane’s, they were not intended for mass distribution.

"My designs are all original,” Lane is reported to have told The New York Times in 2014, that is, “original from someone.” Customers were apparently quite prepared to wear Lane's "original" designs with "genuine" original designs. At his best, Lane’s designs were known as “faux masterpieces.”

Lane’s two worlds, the glamorous elite and the mass market customer, were reflected in his diverse clienteles. At the one end, customers were said to include such personalities as Jacqueline Kennedy Onassis, Audrey Hepburn, Elizabeth Taylor, Greta Garbo, Nancy Reagan, Princess Margaret, Princess Diana, Babe Paley and Diana Vreeland.

On the other hand, Lane made a fortune though his appearances on QVC, an acronym for "Quality Value Convenience", an American cable, satellite and broadcast television network, whose main outlet is a shopping channel. Lane’s genius in reaching this mass audience was at once giving a titillating mini-view into the glamour of 0.1 of the top percent, while also giving tips to viewers how they could wear the merchandise that he flogged, enabling them to conflate, if only for a moment, between what they might wear in Detroit and what Audrey Hepburn might be wearing in Paris.

This interweaving of the glamorous with the mass market can be seen in the following story. As told by The New York Times
“One of Mr. Lane’s best-known designs is a copy of a Van Cleef and Arpels Maharani necklace given to Mrs. Onassis during her marriage to Aristotle Onassis. Mrs. Onassis asked for the copy, and Mr. Lane offered her a choice: pay for the master model (for about $1,000) or allow him to mass market copies. She agreed to the copies. Some time later, in the 1980s, he said, she had been watching television and told him, “I saw our necklace on ‘Dynasty.’”
Circling back to the 1990 exhibition at The British Museum, consider Lane’s life and the industry that he helped spawn. Then, as now, how we view so-called “fakery” remains a matter of context, one tension being between one-of-a-kind and being the focus of adulation via imitation.

By Neil Wilkof

What can the possible implications of the CJEU Pirate Bay decision be? A new paper

As this blog reported, on 14 June last the Court of Justice of the European Union (CJEU) issued its much-awaited judgment in Stichting Brein v Ziggo BV and XS4All Internet BV, C-610/15 (the Pirate Bay’ case).

There, the Court developed further its construction of the right of communication to the public within Article 3(1) of the InfoSoc Directive, and clarified under what conditions the operators of an unlicensed online file-sharing platform are liable for copyright infringement.

The CJEU judgment builds upon the earlier Opinion of Advocate General (AG) Szpunar in the same case [reported here], yet goes beyond it. This is notably so with regard to the consideration of the subjective element (knowledge) of the operators of an online platform making available copyright content. Unlike AG Szpunar, the Court did not refer liability only to situations in which the operators of an online platform have acquired actual knowledge of third-party infringements, but also included situations of constructive knowledge (‘could not be unaware’) and, possibly, even more.

Overall, the CJEU decision is not limited to egregious scenarios like the one of The Pirate Bay: the Court’s findings are applicable to different types of online platforms, as well as operators with different degrees of knowledge of infringements committed by users of their services.

In my view the judgment is expected to have substantial implications for future cases (including at the level of individual Member States), and overall prompts a broader reflection on issues such as the interplay between primary and secondary liability for copyright infringement, applicability of the safe harbour regime within the E-Commerce Directive, as well as the current EU copyright reform debate, notably the so called value gap proposal within Article 13 of the draft Directive on Copyright in the Digital Single Market.

Further to a request of the International Federation of the Phonographic Industry (IFPI), I prepared a paper that would explore the possible implications of the judgment. The paper is going to be published as an article in the European Intellectual Property Review later this year. In the meantime, you can find a pre-edited version here.

Friday, 21 July 2017

Never Too Late: If you missed the IPKat Last Week!

Dear IPKat followers, if you could not make time for your small IP doses last week, you don’t have to worry! The 156th edition of Never Too Late is here to give you your weekly dose of IP in one go!

We started the week quite glamorously on the Promenade de la Croisette, where Kat Neil discussed A film is a film is a film: at Cannes, it's not that simple. This year, two Netflix films were competing in the Cannes Festival, but the on-line broadcaster’s presence for next year is not so steady. The philosophical question is: is a film still a film if it never sees the inside of a cinema?

My patent!
Back to court, Kat Mark reports that the BGH grants compulsory license in preliminary proceedings. The Düsseldorf Regional Court awarded pharma company Merck a compulsory licence to produce Isentress, an HIV-treatment drug. The court ruled that Isentress fulfilled the requirement of public interest as prescribed in the German Patent Act.

Continuing on with the chemical formulas, Guest Kat Stephen asked the question: An improved Improver? UK Supreme Court moves towards a UK Doctrine of Equivalents in Lilly pemetrexed battle. The post discusses the reasons for the unanimous conclusions reached in the  Eli Lilly v Actavis UK [2017] UKSC 48 case.

As the news about Google’s paid research was on all the headlines all around the World, Kat Nicola gave her own critical insight on the news on: The Smoking Gun - Is IP research the next tobacco scandal? The answer is: maybe not!

As the concern about health and safety threat caused by counterfeit products, Katfriend Dr Marina Perraki  introduces us to the special world of pesticide products, counterfeits and parallel imports and discusses the Regulation on counterfeit pesticides and how the matter was dealt with by the Greek courts.

In one of IPKat recurring topics, there were news of a New CJEU reference ... asking whether InfoSoc Directive envisages digital exhaustion. Kat Eleonora sets the scene and reports on the four preliminary questions which possibly will be decided by the supreme European Bench. Parties can make comments on the drafting of the questions. Look out for more updates!

Kat Eleonora, together with Katfriend and art law expert Gilberto Cavagna di Gualdana, discuss the question: Freedom of panorama in Italy: does it exist? While in Italy a formal exception to copyright on freedom of panorama does not exist, Mr. Cavagna di Gualdana discusses both the provisions of the Italian Copyright Act and Cultural Heritage Code. Hopefully freedom will be on sight!

The Enhancing access to 20th Century cultural heritage through Distributed Orphan Works Clearance (EnDOW) project, together with the Centre for Intellectual Property, Policy and Management (CIPPM) at Bournemouth University held a symposium revolving around the question whether: Can Crowdsourcing Solve the Orphan Works Problem? InternKat Hayleigh reports.

It is Kat Annsley’s turn to tell us that the EU IPO Observatory study finds trade secrets rule the roost over patents in Europe. This study had the aim to serve as a basis for the policy makers following the adoption of the European Trade Secrets Directive. The results uncovered interesting data but more is needed in order to achieve more definite results.

On to sweet news, Kat Friend Dario Palmas delighted us with the report of a Mock (culinary) trial at INTA 2017 which revolved around a dessert called “Hunting for truffles”. Get ready for the delicious hunt!

And finally, Guest Kat Rosie reports cereal-ous news from New Zealand.  Hundreds of boxes of Weetabix have been impounded as  Weetabix in New Zealand Customs dispute over local rival Weet-bix. The milk shall judge.

Weekly Roundups: Sunday Surprises

Image credits: Cecilia Sbrolli


PREVIOUSLY ON NEVER TOO LATE

Never Too Late 155 [week ending Sunday 9 July] First application of the parody exception in Canadian law - long live Deckmyn!| "Big Box" not found generic or lacking distinctive character, but still .... | Changes to the Singapore copyright system: an update on the recent public consultations | he diplomatic crisis of Qatar and Gulf Cooperation Council's IP | Bundesgerichtshof's landmark ruling to hook extra-territorial patent infringement in Germany | BREAKING: Eli Lilly success as UK Supreme Court finds Actavis products directly and indirectly infringe pemetrexed patent | Monday Miscellany | Sunday Surprises

Never Too Late 154 [week ending Sunday 2 July] I Book Review: Patent Drawing Rules I German Supreme Court holds that extra-territorial delivery can result in patent infringement I Canadian Supreme Court holds promise doctrine "unsound" in AstraZeneca v Apotex Nexium dispute I EU General Court finds bad faith in VENMO trade mark dispute I “Correction” of expiry dates for granted SPCs now finally possible in Italy...sometimes I Book Review: The Law of Trade Secret Litigation Under the Uniform Trade Secrets Act I Chanel victorious in California court battle against Amazon sellers of counterfeit goods I Simplifying Community Registered Design litigation in the UK - Spin Master v PMS I 77M v Ordnance Survey - access to justice for SMEs in IPEC I Canadian Supreme Court holds that Google can be ordered to de-index results globally I Life as an IP Lawyer: Copenhagen, Denmark I UK UPC ratification timetable to continue in September, while Prep Committee acknowledges German constitutional hold-up I Hendrix's portrait is original afterall say Paris Court of Appeal I Covfefe ... the trade mark?! I Injunction available after claimed licence fees paid - PPL v JJPB I Trademark application for the devil's horn withdrawn I Jo Johnson to continue as IP Minister I UPC Order on Privileges & Immunities placed before Parliament today I Celebrate 120 years of AIPPI in Sydney I Event invitation - The Pirate Bay communicates to the public: are there any more online infringement questions to be answered? I Re-using Amazon item numbers (ASINs) for similar goods can constitute trade mark infringement and passing off

Never Too Late 153 [week ending Sunday 25 June] | US Supreme Court holds provision preventing registration of disparaging trade marks unconstitutional | Wolfing down those veggies: it's a matter of the right descriptive term | A googol of generic questions in Ninth Circuit's Elliott v Google decision | Life as an IP lawyer | Former Constitutional Court judge weighs in on UPC ratification suspension | AG Szpunar advises CJEU to rule that a red sole may not be just a colour | Trump and his coat of arms | BMW wins appeal over use of trade mark to promote spare parts business | Around the IP Blogs | Saturday Sundries

Never Too Late 152 [week ending Sunday 18 June] German Constitutional Court stops implementing legislation for Unitary Patent Package | Conference report: Innovation and Competition in Life Sciences Law - Part I | Conference report: Innovation and Competition in Life Sciences - Law Part II | Special K and beyond: tennis brands | CJEU says that site like The Pirate Bay makes acts of communication to the public | The challenge of big data: we ignore it at our professional peril | German court orders Google to stop linking to Lumen Database | Event report: Trends in the creative digital economy | A Tale of Stability - Business Models in the Creative Industries | Paris Tribunal supports heir's claim to looted painting | Kiss singer seeks trade mark registration for hand gesture | Tuesday Wonders | Sunday Surprises





The protection of TV formats: an Italian mock trial

Milan's Triennale
Effective protection of TV formats has often proved a challenging topic, no matter the jurisdiction considered. But what is the situation like in Italy? A few weeks ago I had the pleasure of attending a dedicated mock trial in Milan, organised by Elisabetta Mina and Mariangela Liuzzi (Milalegal) in collaboration with Viacom Italia. The event was held at the stunning premises of the Triennale.

Elisabetta has now prepared an event report. Here’s what she writes:

“How are TV formats protected in Italy and in the rest of the world? On 21 June last, during the Mock Trial at the Triennale di Milano organised by Milalegal and Viacom Italia on the “Domestic and international TV FORMAT protection”, the discussion focused on the actual protection of TV formats in Italy and abroad, as well as on the forthcoming Italian self-regulation code for the protection of formats. The latter is currently being drafted by a working group composed of the main stakeholders – authors, producers, distributors – coordinated by the Italian Ministry of Cultural Heritage and Activities and Tourism (Mibact), and should be finalised by the end of the year. 

The most recent available data on national and international markets demonstrate a global production of TV formats that is constantly growing. In 2013 more than 28,386 hours of programs transmitted on European TV channels were based on formats. The global leader for exportation of formats is the United Kingdom. Although it represents one-quarter of the European TV market, Italy is mostly an importer, together with France, Spain and Germany.

As all international players taking part to the morning’s roundtable underlined, protecting TV formats in Europe and in most countries around the world can be challenging, as most jurisdictions do not afford protection to TV formats via a self-standing legal right. It is believed that a format which includes an adequately detailed substantial description of the programme to realise (i.e. script, screenplay, etc.) is not a mere idea and could enjoy copyright protection. Moreover, in certain countries courts have concluded that TV formats may be protected per se by means of copyright or unfair competition.

Milalegal created a ‘fictional case’ for the event, which discussed the copying of an original format that has been already produced and broadcasted in Italy. The goal of this exercise was to demonstrate the complexities of protecting TV formats in Italy, as well as in all those countries where there is no normative definition that identifies the essential and protectable elements of a format. Protection is overall uncertain and often unpredictable, despite most recent Italian case law is in the sense of granting protection of TV formats characterised by originality, creativity and completeness of expression (i.e. fixed in a material form), under the Italian Copyright Act.

Italian scholars and commentators have submitted that the comparison between format-based programs has often led to an assessment based on the perceived perception of the target audience, with the result that protection has been extended to individual elements that are not original, but rather functional to the genre to which the format belong. This was one of the main criticisms against the well-known 2011 injunctions of the Court of First Instance of Rome, which – further to an application by RAI in relation to its own Italian version of Dancing with the Stars (Ballando con le Stelle), prohibited the airing of RTI’s Baila.

Dancing with the Kats
In addition, in terms of format protection, it would not suffice to invoke unfair competition rules or provisions on the protection of distinctive signs, as well as confidentiality obligations.

In the course of the Mock Trial a panel chaired by Milan judge, Mario Barbuto, with the help of an industry expert, confirmed that a TV format can be protected as long as the requisites of originality and self-expression are reached, thus also pointing out that in order to establish if there has been a copyright infringement, it is necessary to determine if the work that is deemed infringing has misappropriated key and original elements of the format or its narrative structure, provided that the latter is original and creative.

This is good news for competition to the extent that format authors create formats which are not just different from previous ones, but also original and creative.

The afternoon roundtable discussion focused on the forthcoming self-regulation framework, which is due also to provide a definition of ‘format’, as well as protecting paper formats, ie formats for which the actual TV programme has not been realised yet.

In the current scenario writers, producers and distributors face the uncertainty of format protection. In order to strengthen their position they may want to think of a number of different, practical measures: writing detailed formats, registering formats if the national set of rules allows for it (in Italy this is indeed possible), concluding confidential agreements and storing all correspondence, concluding exclusive licence agreements; and, last but not least, returning formats not required to senders in sealed envelopes, to avoid plagiarism claims.” 

It may be use, but is it trade mark use?


One of the most challenging issues in trademark revocation is the claim that while the mark is being used, it is not being used “in a trade mark sense”. Kat friend Anna Toh brings us a recent example of this as it played out before the Intellectual Property Office of Singapore.

Where a trade mark is coined by a trader to identify its goods, but also alludes to a characteristic of the goods, can its use be considered "use as a trade mark” to fend off a non-use revocation action? This question arose in the recent Singapore case of FMTM Distribution Limited v. Van Cleef & Arpels S.A., a non-use revocation action before the Intellectual Property Office of Singapore. FMTM, a member of the Franck Muller group, had applied to revoke Van Cleef’s registration for the mark “MYSTERY SET”, which had been registered since April 2008 in respect of jewellery and watches in Class 14.

FMTM argued that Van Cleef had not proven that it had used the mark. Evidence-wise, Van Cleef only submitted invoices showing the mark, but proffered no other evidence, such as advertising or packaging material, or any evidence that the mark had been applied onto the goods themselves. Moreover, FMTM argued that “MYSTERY SET” is descriptive of a method of setting precious stones on jewellery. Thus, even if the mark was used on such goods, its use is merely a description and does not constitute use as a trade mark (i.e. to denote commercial origin).

Under Singapore law, to successfully resist a non-use revocation application, a trade mark owner must have put the mark to “genuine use in the course of trade”. This requires that the owner make genuine use of the mark, rather than merely token use for the sole purpose of preserving the mark, and also that the trade mark was used as a trade mark. The Principal Assistant Registrar (PAR) held that Van Cleef had met this test and refused the application for revocation of “MYSTERY SET” as a trade mark for jewellery.

The PAR noted FMTM’s evidence (including from Van Cleef’s own website) that the term “MYSTERY SET” refers to a technique of setting precious stones on jewellery such that there is no visible mounting, giving the impression that the gemstones are – mysteriously – floating on top of the supporting metal. However, she also concluded from the evidence that the trade term for such a technique was actually “invisible setting”. The PAR determined that Van Cleef had invented a variant of the invisible setting technique, patented it, and called the technique “MYSTERY SET”.

Consequently, she found that “MYSTERY SET” alluded to the invisible setting technique, but did not directly describe it. Therefore, it functioned as a badge of commercial origin and was used as a trade mark on Van Cleef’s jewellery products. In addition, the PAR gave weight to the fact that the mounting technique referred to as “MYSTERY SET” was a patented technique exclusive to Van Cleef. She also observed that on Van Cleef’s website, the phrase “MYSTERY SET” was accompanied by the ™ symbol, indicating that Van Cleef intended the term to function as a trade mark.

In view of the PAR’s findings, the revocation application failed in relation to jewellery, for which there were invoices indicating sales under the “MYSTERY SET” mark. The PAR held that such invoices were sufficient evidence of use, and there was no requirement for other types of evidence, or for the mark to have been applied onto the goods themselves. [The revocation action succeeded in relation to watches, for which there was no evidence of use at all.]

It seems to this blogger that a mark like “MYSTERY SET” falls in the grey area between obviously distinctive marks and obviously descriptive marks, perhaps somewhat closer to the “descriptive” end of the scale. How then should the use of such allusive marks be viewed with respect to distinctiveness and genuine use? As has been noted by the Singapore courts, the rationale for requiring proprietors to use their marks as a trade mark is inextricably linked to the function of trade marks and the justification for granting exclusive rights. If a trader does not use its registered mark as a badge of commercial origin, it is difficult to provide an explanation why a statutory monopoly is warranted.

However, the line becomes blurred when a mark which is intended to denote a specific trader is one that could also describe or allude to the goods or services in question. The stronger the allusion, the lower the likelihood that the mark will serve its essential function, and the weaker the justification for granting statutory protection.

Monday, 17 July 2017

An improved Improver? - Part 2



Here as promised is the second part of this GuestKat's commentary on Eli Lilly v Actavis UK [2017] UKSC 48, which promises to have much ink spilled and air of various temperatures emitted on its behalf in the coming weeks, months and years. As noted in the first post, the Supreme Court reformulated the Improver questions, originally posed by Lord Hoffmann when at first instance and subsequently further evaluated by him in the House of Lords in Kirin-Amgen, which thoroughly examined the UK approach to patent claims. This GuestKat has regarded Lord Hoffmann's judgment in that case as a definitive guide to interpretation and construction and it is a bit of a shock to see his analysis criticised as "wrong in principle" by the Supreme Court. More on that later. Now we should move on to the other aspects of the case, starting with the question of the role of the prosecution history in interpreting the scope of claims.

The file was not extensive ...
The starting point for the claims of the patent was a claim to "use of a methylmalonic acid lowering agent in the preparation of a medicament useful in lowering the mammalian toxicity associated with an antifolate, and the medicament is administered in combination with an antifolate". Here the "methylmalonic acid lowering agent" is something like vitamin B12 and the antifolate is the pemetrexed derivative. 

In a first attempt at amendment of the claims during prosecution, Lilly offered limitation of the antifolate to "pemetrexed" and of the methylmalonic acid lowering agent to vitamin B12, but the examiner objected that the amendments introduced subject matter beyond that originally filed, contrary to article 123(2) EPC. Reference to "pemetrexed" did not find any basis in the application documents, which referred only to pemetrexed disodium. That, according to the examiner, is a distinct compound from pemetrexed (the free acid). In response, Lilly filed claims limited to the use of pemetrexed disodium in combination with vitamin B12. This led the Supreme Court to the consideration of two important questions: when is it permissible to have recourse to the prosecution history of a patent when considering whether a variant infringes, and whether the prosecution history in this case should alter the provisional conclusion the court had reached on direct infringement.

After looking at the comments of Lord Hoffmann in Kirin-Amgen about the undesirable consequences of permitting reference to prosecution history, and at the approach of courts in other EPC states, the court concluded that it was appropriate to take "a sceptical, but not absolutist, attitude" to reference to the prosecution file "along substantially the same lines as the German and Dutch courts". The comments of the court on the practicalities of reference to the file are interesting. They thought it was tempting to exclude the file on the basis that anyone should be entitled to rely on the content of the patent itself, without reference to other material, "as a matter of both principle and practicality". However, given that the contents of the file are publicly available, there might be occasions when justice might require reference to the file. The court seems to have been influenced in that conclusion by having been told that the contents of the file "are unlikely to be extensive". However, the circumstances in which a court can rely on the prosecution history "must be limited". That meant where (i) the point at issue is truly unclear if one confines oneself to the specification and claims, and the contents of the file would unambiguously resolve the point, or (ii) it would be contrary to the public interest for the contents of the file to be ignored. An example of (ii) would be where the patentee had made it clear to the EPO that he was not seeking to contend that his patent, if granted, would extend to the sort of variant which he now claims infringes.

Applying that to the facts of the case, the court didn't think the prosecution file justified departing from its conclusion on direct infringement. The reason the examiner thought the claims should be limited to pemetrexed disodium was because the specification did not expressly extend to any other anti-folates (although the court seemed to think the examiner was wrong about that, without explaining why). But in the court's opinion, "the whole point of the doctrine [of equivalents] is that it entitles a patentee to contend that the scope of protection "extends beyond the ambit of its claims as construed according to normal principles of interpretation". 

This GuestKat has noted with interest comments which suggest that this case opens the way to a doctrine of "file wrapper estoppel" in the UK, but wonders whether the case really goes much further than existing UK case law which has admitted reference to the file in cases of "admissions against interest" - see for example Rohm & Haas v Collag [2002] F.S.R. 28 and Furr v Truline [1985] F.S.R. 553. The refusal of the court to admit reference to the file in this case is consistent with the court not regarding the limitation to the disodium salt during prosecution as determinative of whether the patentee could argue for scope of the claim to include other salts or the free acid after grant based on the reference to equivalents in Article 2 of the Protocol. Presumably the court took the view that Lilly had not "made it clear to the EPO that [it] was not seeking to contend" that the patent, if granted, would extend to other salts such as pemetrexed dipotassium. 

Such an approach might open the door to more difficulty in interpreting a claim from the point of view of infringement, if one cannot decide on the question of equivalents without recourse to external resources such as expert evidence. Note that the court itself says that answering its question (ii) "does the variant nonetheless infringe because it varies from the invention in away or ways which is or are immaterial?" raises questions "which would normally have to be answered by reference to the facts and expert evidence". This seems potentially to admit far more extraneous material into the process of claim construction than reference to the file, which at least is self contained, even it may sometimes be more "extensive" than the court had been led to believe. 

This GuestKat is impressed with the number of comments which the first post on this case has generated on the question of claim scope and interpretation, and thanks those who have contributed to an intelligent debate on the subject. The Supreme Court was clearly influenced in its decision by its study of the case law in other European countries, for example these quotations from the Bundesgerichtshof: that a variant will infringe if (i) “it solves the problem underlying the invention with modified but objectively equivalent means”, (ii) this would be recognised by the person skilled in the relevant art, and (iii) that person “focus[sing] on the essential meaning of the technical teaching protected in the patent” would regard the variant “as being equivalent to the solution” offered by the invention (Case No X ZR 168/00, 2002 GRUR 519 (Schneidmesser I). It seems to this GuestKat that in the context of the present case, this leads to a focus on the practical and technical solutions which an appropriately skilled person might regard as "equivalent" to the solution defined by the claim, with less regard to the actual words which the drafter has used to express that solution. It is not clear to this Kat whether this makes a patent attorney's job easier or more difficult, particularly if the object of clear wording in the claim might be to exclude embodiments which the drafter wants to exclude, for example if they fall within the prior art. It also surely means that the scope of a claim can't be definitively determined without recourse to material outside the patent specification, such as expert evidence (as considered above), which surely makes the job of advising on infringement more difficult. No doubt debate on the meaning and consequences of this decision will continue for some time to come. 

Taking another pause for breath at this point, the remaining aspects of this case will be explored in Part 3 of this series.

Sky v SkyKick - no CJEU reference re removal of own name defence to EUTMs

Is Article 1(13) of Regulation 2015/2424 contrary to fundamental rights?  This is a question that SkyKick recently sought to refer to the Court of Justice of the European Union (CJEU) in Sky v SkyKick [2017] EWHC 1769.  We will not find out the answer for a while (possibly ever) because Birss J denied the defendants' desired pre-trial reference.

SkyKick offers a range of cloud based services including data backup, and cloud management software facilities.  SkyKick is a US company.  They carried out US searches in November 2011 and applied to register SKYKICK in the US in 2012.  In 2016 they filed and international trade mark (IR) designating the EU and other territories.  Sky brought its claim shortly after this filing in May 2016. 

Why does the own name defence matter?

The own name defence remains for UK trade marks until the new Directive is implemented (the deadline for national implementations is 14 January 2019).  However, Article 1(13) removes the own name defence for corporate defendants (it remains for natural persons) from article 12 of the European Trade Mark Regulation (i.e. Regulation (EC) No 207/2009).  SkyKick wanted to rely on the defence against Sky.


SkyKick alleged that Article 1(13) was contrary to:


  • Article 16 of the EU Charter (Freedom to conduct business);
  • Article 17 of the EU Charter (Right to property);
  • Article 20 of the EU Charter (Equality before the law); and
  • Article 21 of the EU Charter (Non-discrimination).

SkyKick also relied on:

  • Article 51 of the EU Charter (the field of application);
  • Article 52 of the EU Charter (scope and interpretation of the rights and principles); and
  • Article 17 of TRIPS.

In summary, SkyKick alleged that the change to the law interferes with the freedom to conduct business and right to property which companies had under the existing law.  In particular, they alleged that there has been no proper assessment of the impact of the change in law, it is discriminatory as against natural persons, and there is no good reason for it.

Sky pointed out that the defence was originally only intended to apply to natural persons but was construed as covering legal entities as well by the CJEU in the Anheuser-Busch v Buddejovickybudvar (C-245/02 [2004] ECR-I-10989).  In other words, all that has happened is that the EU legislature has made an express alteration to the law so as to return it to the original intention.


Having considered these arguments, Birss J declined to make a reference at this time.


They think it's all over?

Birss J was clear that it was open to him to refuse a reference if he considers that SkyKick's arguments are unfounded (see IATA v European Low Fares
C-344/04 [2006] ECR 1403).  In other words, whilst the question of validity of an EU law is not a matter for a national court to decide the application itself can be rejected if the national court considers that there are no grounds for saying that an EU law is invalid.


While it is open to a court to refer questions on the validity of EU law when considering the kind of legal conclusion the national court is entitled to reach (see R (Telephonica 02 Europe PLC) v Secretary of State for Business Enterprise and Regulatory Reform [2007] EWHC 3018 (Admin)), the timing is important. 


In other words, the main question Birss J considered in this application was whether a reference should be made in the middle of proceedings.  He considered the following principles:


  1. references should not be made of matters which are of purely academic interest (Meilick and Bacardi Martini v Newcastle United);
  2. the CJEU prefers for the relevant factual matrix to have been determined before a reference is made.
Although he considered that both sides have a properly arguable case on the merits he noted that:

  1. SkyKick may win the action without a reference to the own name defence (their key argument was that there was no infringement by the goods and services that SkyKick offers);
  2. Sky may win the action without the question of law being decided as the own name defence will have to be considered in any event in the context of the UK trade mark;
  3. this means that the trial will consider the honest practices of the Defendants in detail and make findings of fact which will help with the question regarding the necessity of a reference.  These findings of fact will make it easier for the CJEU to make a decision;
  4. although the Defendants' required the reference to be as soon as possible in order to achieve business certainty for their startup the Defendants had also made a request for a stay which was inconsistent with their purported desire for immediate certainty.
The own name defence question may become relevant if SkyKick wins in relation to the UK mark but loses in relation to the EU mark but it could just as easily be an unnecessary reference.  The best way for SkyKick to get a speedy resolution was to keep the trial timetable on track for early 2018.  


Although there are parallel proceedings to invalidate Sky's marks at the EU IPO, the parties and the judge agreed that there were special grounds for continuing with the proceedings. This was because:

  1. the parties agree (although this is not determinative);
  2. there was a real risk of inconsistent decisions;
  3. the need to keep the early 2018 trial on track;
  4. the High Court claim also concerned passing off and UK trade mark infringement.

Sunday, 16 July 2017

Sir Richard Arnold awarded honorary doctorate of law for his services to IP

The smile of every new doctor
Attending graduation together with fellow 'graduand' Sir Richard Arnold? For the finalist students at Westminster Law School this is indeed what happened earlier this week.

On 12 July, in fact, the University of Westminster awarded Sir Richard Arnold a Doctorate of Law honoris causa for his services to intellectual property law.

Sir Richard Arnold was educated at Highgate School and went on to study Chemistry at Magdalen College in Oxford, obtaining his Diploma in Law (Dip.Law) in 1984 from the Polytechnic of Central London, now the University of Westminster. He was called to the Bar of England and Wales in 1985 and became a QC in 2000.

Appointed to the High Court Bench in October 2008, Sir Richard specialised in intellectual property, entertainment and media law, and data protection, both domestically and in European Courts and Tribunals. He was Chairman of the Code of Practice for the Promotion of Animal Medicines Committee from 2002 to 2008, an Appointed Person hearing trade mark appeals from 2003 to 2008 and a Deputy High Court Judge from 2004 to 2008.

He was appointed to be Judge in Charge of the Patents Court in April 2013 and as an External Member of the Enlarged Board of Appeal of the European Patent Office in March 2016.

The University of Westminster recognised Sir Richard for his contribution to Westminster Law School as a key Associate Fellow of the Centre for Law, Society, and Popular Culture. He has also generously donated to Westminster’s 125 Fund, a bursary scheme for Westminster Students enabling them to undertake projects and activities that enhance their employability and help them to achieve their full potential.

In his acceptance speech, Sir Richard Arnold said: “I would like to begin by thanking the University of Westminster for the great honour it has done me by conferring an honorary Doctorate of Law. It is also this University that I have to thank for setting me on the path that led me to this point. In the space of just one year, I was given a foundation in law that not only enabled me to succeed in my careers, but also sparked a wider interest in the subject which has remained with me until now.”

Congratulations Dr Arnold!

Weetabix in New Zealand Customs dispute over local rival Weet-bix

According to The Telegraph, hundreds of boxes of Weetabix have been impounded by New Zealand customs because they allegedly infringe Weet-Bix's marks.   Weetabix is not well-known in New Zealand but a Christchurch-based shop, A Little Bit of Britain, had ordered 300 boxes to serve to its British immigrant customers.

Apparently Weet-Bix's owners have agreed to release the product if they are overstickered at point of sale and references to Weetabix are removed from the shop's website.  The shop owner considers this offer "ridiculous" because the boxes look nothing alike and customers will not be confused.

Thanks to Lawrence Ryz for sharing this story!

For the inevitable Change.org petition see here and Twitter hashtag see here.

This is not the only international scandal involving British food.  Trader Joe's in the US has been attempting to claim that the invented the "genius" sausage roll - or "puff dog" as Trader Joe's calls it.  For more on this see here.

Sunday Surprises

In these July Ides, (bit less famous than March's, but what can we do?) let's look at news, events and everything IP-related!

We start off with an insight on how China clamps down on pirate trademark ransoms for famous brands, offered by Frederic Mostert, director of the Walpole Group. Mr. Mostert's article talks about the impact five high-profile IP cases, namely involving Facebook, upmarket grocer Fortnum & Mason, former basketball player Michael Jordan, MGM Studios and Esso, had in the bad faith registration doctrine in China.

Sheena Jacob and Daniel Lee of JurisAsia LLC informed us that the Singapore Government, together with the national IP office, is seeking public feedback on proposed changes to the patent legislation. The proposed changes include, among others: new re-examination option for patentees and third parties, amendments to examination guidelines on the new grace period for filing, and proposed amendments to Patents Rules concerning patentable subject matter and supplementary examination. Closing date for feedback is August 1st.

Kat more focussed on catching
crickets than in the news
In Indian shores, the famous white and blue-rimmed sari worn by Mother Teresa and by the order Missionaries of the Charity and the name Mother Teresa itself are now trade marks in India. The Guardian tells that that the name of the famous nun and her clothing have been used by other orders without permission and that this had misleading effects. Biswajit Sarka, the lawyer of the order, tells that the plans are now to have the name of Mother Teresa and her sari copyrighted (hopefully they meant trademarked) also in other countries.

Climbing a little north, Russia has a fast growing pharmaceutical market but recent political events as well as economic instability, might cut the presence of international innovators in the country. Mr. David Aylen of Gowling WLG, wrote the second edition of the comprehensive report The Universe of Pharmaceutical Trademarks in Russia 2017, discussing the trade mark aspects of the Russian pharmaceutical world. The full report can be dowloaded here.


Sailing on Radio Rock, if you are looking for pleasant things to do over the weekend, in the BBC's “50 Things That Made the Modern Economy” series, Tim Harford talks about the role Intellectual Property had in the Modern Economy, starting from Charles Dickens' harsh experience in the US, where at the time copyright laws did not apply to foreigners and he saw his works pirated. Stay tuned!

And lastly, if you ever wondered why it takes so long to have a patent granted in the and how can the process be sped up, well, the UKIPO has he answer: it all has to do with the number six and queues! Very intriguing indeed.


Image credits: Cecilia Sbrolli

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