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 April 2004


Yesterday the ECJ gave its judgment in Procter & Gamble v OHIM, considering whether a number of shape and colour configurations of dishwasher tablets were barred from registrability as CTMs for lack of distinctive character under Art.7(1)(b) of the CTM Regulations. The highlights of the ECJ’s judgment are as follows:

♦ In principle, a product’s shape and colour may be a trade mark. However, for this to be the case, they must be distinctive. The CFI was right to determine whether the mark was devoid of distinctive character by reference to (a) the products or services for which registration was sought and (b) the perception of the relevant public.
♦ The CFI’s criteria for assessing the distinctiveness of three-dimensional product shape marks were also correct. In principle the criteria are the same as for assessing the distinctiveness of all other types of marks. However, the public are not used to distinguishing products by their colour or shape or the shape of their packaging so it may be more difficult to prove that a 3D mark is distinctive.
♦ The more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character. Only a trade mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin, is not devoid of any distinctive character for the purposes of that provision.
♦ The CFI’s assessment of these criteria in this particular case was a finding of fact and could not be reviewed unless the evidence submitted to it was distorted.
♦ The average consumer normally perceives marks as a whole. Therefore, the overall impression given by the mark must be considered in assessing distinctiveness. However, this does not mean that the assessing authority may not first examine each of the individual features of the get-up of the mark in turn. Thus, the CFI was not at fault in adopting this approach.
♦ The level of attention paid to dishwasher tablets by the average consumer was a finding of fact and therefore was not liable to be reviewed by the ECJ.
♦ The CFI was correct to find that it did not have to determine what the relevant date was at which distinctiveness had to be assessed because the marks for which registration was sought were not capable of identifying the origin of the products concerned and that that finding was not affected by how many similar tablets were already on the market.

The IPKat notes that the ECJ has not considered whether Art.7(1)(b) includes an assessment of whether there is a need to keep the applied-for mark free for others to use, even though this hot topic was mentioned in the CFI’s judgment. A similar issue has been considered in the Henkel case (also decided yesterday), but the decision has not been translated yet.


In Case C-371/02 Björnekulla Fruktindustrier AB v Procordia AB Björnekulla brought proceedings against Procordia for revocation of the BOSTONGURKA trade mark. It claimed that the trade mark had lost its distinctive character, as it was considered to be a generic name for chopped pickled gherkins. In support of its application, it relied principally on two market research surveys of consumers. Procordia contested that application, citing in particular a market research survey of leading operators in the grocery, mass catering and food stall sectors. Relying principally on the travaux préparatoires for the Swedish Law on Trade Marks, the tingsrätt (District Court) held that the relevant circle for determining whether or not the trade mark had lost its distinctive character was the distribution chain level which had been the subject of the research carried out by Procordia. It dismissed Björnekulla's application on the ground that Björnekulla had failed to prove that the trade mark no longer had a distinctive character.

Björnekulla appealed to the Svea hovrätt (Court of Appeal), which asked the ECJ: “In cases where a product is handled at several stages before it reaches the consumer what is or are, under Article 12(2)(a) of the Trade Mark Directive, the relevant circle or circles for determining whether a trade mark has become the common name in the trade for a product in respect of which it is registered?”. In response, the ECJ ruled yesterday: “Article 12(2)(a) of the Directive should be interpreted as meaning that, in cases where intermediaries participate in the distribution to the consumer or the end user of a product which is the subject of a registered trade mark, the relevant circles whose views fall to be taken into account in determining whether that trade mark has become the common name in the trade for the product in question comprise all consumers and end users and, depending on the features of the market concerned, all those in the trade who deal with that product commercially”.

The IPKat thinks this must be right. This decision accords with OHIM practice to limit registration of a trade mark to the use of that mark for sale to trade consumers, even where the wider consuming public would regard the mark as descriptive or otherwise non-distinctive: see the Board of Appeal decision in respect of the word mark IDEAL.

Bostongurkas here and here (Swedish readers only!)


Sunrider Corp v OHIM (Vitakraft-Werke Wührmann & Sohn and Friesland Brands BV, opponents at OHIM) (see IPKat's Translation Watch blog of yesterday's date) was an appeal by Sunrider from the OHIM Board of Appeal decisions in two opposition cases, R 386/2000-2 of 17 January 2002 and R 34/2000-1 of 21 February 2002. wholly about costs awards, Art 81 CTMR and Rule 51 of the Implementing Regulations (IR). The competing marks were (in the first case) Sunrider's VITATASTE and the opponents' VITAKRAFT and VITA and (in the second case) METABALANCE 44 and BALANCE and BALANS, respectively.

In the first opposition Sunrider limited its goods, whereupon the opponent withdrew the opposition while requesting a decision on costs. In the second, the parties terminated the opposition by mutual agreement as to limitation of goods but not as to costs and Sunrider requested a decision. The Opposition Division decided against Sunrider on costs. On appeal the Board of Appeal annulled the decision and ordered each party to bear its own costs of the opposition and of the appeal. Essentially the same things happened in the 2nd opposition. In this case the Opposition Division also stated that each party should bear half the cost of the opposition fee, but the Board of Appeal again annulled the decision and ordered each party to bear its own costs. However, it ordered a reimbursement to Sunrider of the appeal fee, considering that the unexplained ("non-motivated") decision of the Opposition Division was a substantial procedural violation.

The Court of First Instance considered that Art. 81(3) was a special case ("lex specialis") of the general legal provision in Art. 81(4) and that, therefore, the Boards of Appeal in question were right in rejecting the appeal to them. And in response to the appellant's plea of inequity, because its claims were smaller in extent than the opponent's claims, the CFI also rejected the appeal and the notion that the Board of Appeal exceeded its discretion, pointing out among other things that the discretion was broad and also that the fee payable when filing an opposition does not depend on the extent of the opposition.

Sunrider also appealed against the non-reimbursement of the appeal fee in the first opposition. It alleged infringement of R. 51 IR and Art. 73 (which requires that reasoned decisions be given). The CFI also rejected these pleas, mainly because there is no obligation on a Board of Appeal to consider non-pleaded matters, which was the case here. In other words there is no duty to explain in a decision the reasons for omitting to do something which it was not obliged to consider. Sunrider's appeal was rejected in its entirety and it was ordered to pay the costs of the appeal before the CFI.

They say that curiosity killed the cat. Well, until he knew what the Sunrider case was about, the IPKat was really curious to find out. But now, well, he sort of wishes he hadn't ...

The IPKat is endebted to polyglot polymath Tibor Gold (of London-based patent and trade mark practice Kilburn & Strode) for this information.

Thursday, 29 April 2004


Advocate General Francis Jacobs has now given his opinion in Case C-31/03 Pharmacia Italia SpA, a reference for an preliminary ruling on supplementary protection certificates (SPCs).

SPCs extend the life of medicinal and agrichemical patents which must undergo lengthy field tests before they can be allowed on to the market. The German Bundesgerichshof had asked essentially whether the grant of a supplementary protection certificate in Germany for a medicinal product for human use, which was protected by a patent when the Regulation entered into force, was precluded in circumstances where a marketing authorisation had been granted before 1 January 1988 for the same (patent-protected) product as a veterinary medicinal product but not as a medicinal product for human use.

In his opinion the Advocate General advises the European Court of Justice to rule that:

"References in Council Regulation 1768/92 concerning the creation of an SPC for medicinal products to the first authorisation to place a product on the market in the Community are to the first authorisation to place that product on the market, whether as a veterinary medicinal product or as a medicinal product for human use".

The IPKat, ever egalitarian, is thrilled that veterinary and human medicament patents are accorded equal treatment in this regard, despite the failure (so far) of the European courts to extend human rights to cover animals.


The ECJ has ruled in favour of the arguments submitted by IMS. According to a press release issued by the ECJ today, "The refusal of an undertaking in a dominant position to grant a licence for a copyright only constitutes an abuse of a dominant position in certain circumstances. In order for such a refusal to be regarded as abusive it must prevent the emergence of a new product or service for which there is a potential demand, be without objective justification and be capable of eliminating all competition on the relevant market". The court has held that

"In order for the refusal by an undertaking which owns a copyright to give access to a product or service indispensable to carry on business to be regarded as an abuse, three conditions must be fulfilled:

* the undertaking which requested the licence must intend to offer new products or services not offered by the owner of the copyright and for which there is a potential consumer demand;
* the refusal cannot be justified by objective considerations, and
* the refusal is such as to reserve to the undertaking which owns the copyright the relevant market, by eliminating all competition on that market".

The IPKat doubts that these conditions will be met either in the IMS case or in the vast majority of cases in which abuse of the copyright monopoly is alleged.


As the IPKat reported on Tuesday, the entire OHIM Staff Committee resigned on Monday. The former Staff Committee has issued a press release, blaming its decision on the failure of OHIM management to consult with the Committee, particularly on employment policy. The Committee has also voiced its concern at what it sees as a decline in the quality of granted Community trade marks (CTMs).

The Committee alleges that, while other EU bodies have been willing to meet with them, OHIM and its President Wubbo de Boer have failed to engage in any meaningful dialogue with them. This is despite a series of demonstrations at the Office which culminated in a one-day strike on 15 January 2004 (see IPKat blogs of 15 and 26 January). In fact, the Committee claims that Mr de Boer has not met the Staff Committee since 6 November 2003 while the Committee new staff policy, which was presented to the Administrative Board and Budget Committee on 27 April 2004. This has provoked the entire Committee to resign as a “final and extraordinary sign of protest”.

Before resigning, the Staff Committee distributed a note on quality. In it, the Committee makes harsh criticisms of the efficacy of the examination process and hence of the quality of the CTMs and Community designs which are the result of that process.

The main accusation is that OHIM is putting time targets before quality. In 2004, the target for examining each trade mark was cut from 11 minutes to just six minutes. In such a short period of time, errors are common. They claim that “The actual, legal quality of our work, the legal value of our product simply does not matter anymore.” Guidelines are not being updated and there is no harmonised practice in OHIM between the different services and the different Boards of Appeal. Moreover, staff are being forced to carry out tasks they were not hired or trained to do and the resultant decisions are unsatisfactory. Additionally, quality control is unsatisfactory and difficult files are being left aside in favour of easier files which are quicker to deal with. As a result, marks are not being properly examined, leaving them more vulnerable to cancellation. This could act as a disincentive to undertakings to filing applications and is of particular concern to the Staff Committee: fewer applications could lead to a reduction in jobs. The problem can only get worse as 10 new Member States join the EU. Accordingly the Staff Committee has called upon OHIM:

“* To provide registered rights which are safe and valuable.
* To provide legal services of the highest quality.
* To advance the harmonisation of trade mark and design law within the European Union.

In order to achieve this, management must stop:
* Cutting corners.
* Treating its users like fools – because they are not.
* Treating its staff like fools – because we are not”.

The IPKat is obviously disturbed by the Staff Committee’s allegations and would like to hear OHIM’s side of the story.

Things you can do in 11 minutes here, here and here
Things you can do in six minutes here, here and here
Er, career opportunities with OHIM here

Wednesday, 28 April 2004


the BBC reports on the findings of a group of researchers at the University of Amsterdam's Institute for Information Law that the Euiropean Commission's anti-spam legislation is totally useless. For one thing, it doesn't apply to spam originating from the US (in other words almost all serious spam). For another, more than six months after its implementation date, the EU Directive on Privacy and Electronic Communications has still not been implemented in eight EU jurisdictions: Belgium, Germany, Greece, France, Luxembourg, the Netherlands, Portugal and Finland.

The IPKat says look on the bright-side - at least spam fills up your inbox and makes you look popular.


The European Court of Justice website now features today's Court of First Instance decision in Cases T-124/02 and T-156/02 The Sunrider Corp. v OHIM (registrability of VITATASTE). Unfortunately the decision is reported in only six of the EU's 11 official languages (all northern languages, plus Greek, have been omitted). Says the IPKat, since this is the year of POSTKANTOOR and BIOMILD, here's the decision in Dutch.

Learn about VITATASTE here, here (if you're Chinese) or here (if you're Russian)
Speak Dutch? Or want to do so? Click here, here and here
Dutch cats here and here

IT'S NOT TOO LATE ... tell the Commission what you think about the European Commission's proposal to link Community registered designs to the Geneva Act of the Hague Agreement (if you need an explanation of this, take a look at the WIPO link below). The idea of making the link is to bring down the administrative costs involved in securing international design protection. You can make your views felt by completing the Commission's electronic survey by not later than this Friday, 30 April.

In a message to its members, European trade mark owners' organisation MARQUES says: "As a brand owners organisation, MARQUES favours simple and cost effective registration systems. You will recall that MARQUES supported the accession of the EU to the Madrid Protocol, and we would be in favour of this link too. It will again increase the flexibility of the registration systems offering protection for IP rights. With a link between the two systems in place, it would not be unrealistic to hope that more countries will join the international registration system and thus making it truly useful".

The IPKat wonders who will object -- and why.

Why WIPO says "vote yes to Hague"


Tomorrow’s Big Thursday, a red-letter day on which the European Court of Justice’s thinking concerning a whole bunch of big IP cases comes out into the open (for details, see Monday’s blog). Remember to check the IPKat for the latest ECJ news!


The BBC reports that a new lunar mineral has been discovered in a lunar meterorite that crashed into the Earth in 2000. The mineral has been named hapkeite after the scientist, Bruce Hapke, who predicted the existence of the iron and silicon compound on the Moon 30 years ago. It is claimed that hapkeite is probably made when tiny particles impact the Moon at very high speeds, say Mahesh Anand and his colleagues (their investigation of meteorite Dhofar 280 is reported in the Proceedings of the National Academy of Sciences).

The formation of rocky debris and soil on the surfaces of airless bodies in space involves processes that are virtually non-existent on Earth. This "space weathering", as scientists call it, includes the impact of micro-meteorites which crush and pulverise surface rocks on a minute scale. The micro-meteorites are about 0.1mm or less in diameter but, because of their velocities (they reputedly travel at about 100,000km/h), they carry a great deal of energy that is transferred to their tiny areas of impact. The impacted surface is "flash-melted", vapourising metals and causing chemical and structural changes.

The IPKat recalls that matter that is found in nature is incapable of being patented, since it has the status of a discovery rather than an invention. Since it fell to Earth only in 2000, hapkeite cannot be said to form part of the traditional knowledge base of Oman, where it was found. Will this lack of IP interest result in any lack of enthusiasm in exploiting the commercial possibilities that hapkeite might possess, he wonders.

Merchandising of moon rock here
Moon rock here, here and here

Tuesday, 27 April 2004


The IPKat has learnt that the entire Staff Committee of OHIM resigned yesterday in protest at the policies of OHIM management. More from the IPKat will follow soon.


The BBC reports that the comely twin actresses Mary-Kate and Ashley Olsen are suing video game publisher Acclaim for $178,000 in unpaid royalties. This item has led the IPKat into some idle speculation along the following lines: if Acclaim take a licence to use the name and likeness of one identical twin, and the licence explicitly provides that the licensee may use two images of the same twin together, it would appear at first blush that it would be unnecessary for the licensee to obtain a second licence from the other twin. This leads to the riddle: what cause of action (if any) might the other twin have against (i) the licensing twin and (ii) the licensee, to compensate for loss of licence income?

More on twins here, here and here
Unrelated lookalikes here, here and here
Fear of lookalikes here


Never mind WIPO's Intellectual Property Damp Squib Day (see previous blog) -- Thursday 29 April’s a big, big day for European Union intellectual property law. Just look what’s coming out from the ECJ in Luxembourg:

* Judgment in Case C-418/01 IMS Health v NDC. This involves the interpretation of Article 82 EC in the light of IMS’ refusal to grant a licence agreement to use part of a copyright-protected data bank relating to the structuring of the German market for pharmaceutical products (Advocate General’s Opinion here).

* Opinion of Advocate General Jacobs in Case C-31/03 Pharmacia Italia (formerly Pharmacia & Upjohn). This is a reference from the German Bundesgerichtshof for a preliminary ruling as to the interpretation of Article 19(1) of Council Regulation 1768/92 concerning the creation of a supplementary protection certificate for medicinal products. The case involves a medicinal product which was authorised first as a veterinary medicinal product and then as a medicinal product for humans.

* Judgment in Joined Cases C-456/01 P, C-457/01 P Henkel v Office for Harmonisation in the Internal Market; Joined Cases C-468/01 P, C-469/01 P, C-470/01 P, C-471/01 P, C-472/01 P Procter & Gamble v Office for Harmonisation in the Internal Market; Joined Cases C-473/01 P, C-474/01 P Procter & Gamble v Office for Harmonisation in the Internal Market. All these cases are appeals against the judgment of the Court of First Instance in which the CFI dismissed an application to annul the refusal to register a three-dimensional trade mark consisting of square or rectangular coloured detergent tablet (Advocate General’s Opinion here).

* Judgment in Case C-371/02 Björnekulla Fruktindustrier (the BOSTONGURKA cucumber case). This is a reference from the Swedish Svea Hovrätt on the interpretation of Article 12(2)(a) of Directive 89/104 in relation to the degeneration of a formerly wholly distinctive trade mark into a trade mark that was subsequently regarded as a generic term by consumers (Advocate General’s Opinion here).

The IPKat is agog with excitement at the outcome of these cases. He hopes to cover all of them before the weekend, so watch this space …

Monday, 26 April 2004


…on World Intellectual Property Day? You may have blinked and missed it, but the IPKat definitely had his party hat on and tucked into jellies and ice-creams. The British contribution to the celebrations, according to the WIPO website was as follows “The British Copyright Council (BCC) is a non-governmental organization which has acquired observer status with WIPO. It has created a website, on which World Intellectual Property Day will be reflected. This is at:”. Other countries it seems entered more into the festive spirit.

Let the IPKat know how World Intellectual Property Day made a difference to your 26 April by leaving a comment below.

See how other people are celebrating World Intellectual Property Day here

Sunday, 25 April 2004


… offers a fresh look at the reasons behind the increasing popularity of getting the music of one’s choice through the licensed internet channel of iTunes rather than by buying CDs.

The IPKat is still suspicious of digital rights management systems. They may resolve many pressing copyright issues, but he is unsure of their long-term effect on consumer choice and competition within the recorded music industry.

100,000,000 iTunes here
Eye tunes here, here and here
More on digital rights management systems here, here and here


…until the INTA’s annual conference in Atlanta. If you’d like to meet him or his masters Jeremy and Ilanah there, send an email to the IPKat here.

Find out about Atlanta here and here


The BBC reports that a Dutch judge has found that a degree of exaggeration is permissible in comparative advertising. Gillette took exception to Wilkinson Sword’s claims in its adverts that "independent tests and consumer research have shown that no other shaving system shaves smoother and softer than Quattro". Wilkinson counterclaimed that Gillette’s boast that its Mach3 Turbo shaving system was “the best a man can get” was false. However, Judge Schapen found that both ads were permissible and that "By a good legal tradition, some exaggeration is permissible, as long as it's not misleading in nature, because it will be sceptically received by the average consumer". Thus, both ads would be taken with a pinch of salt by consumers. Wilkinson’s ad was not found to be misleading even though the tests referred to had only been carried out on a sample of forty men, and in some of the tests, as few as nine men had been used. The two companies are also engaged in a patent battle in the US over three-headed shaving systems.

The IPKat (who is keen to hold on to his whiskers) points out that this case reminds him of the UK comparative advertising case of British Airways v Ryanair , where the judge held that a degree of exaggeration did not impair the fundamental honest of the comparative claim in question.

Close shaves here, here, here and here (the IPKat says don’t try this at home folks PLEASE!)


The BBC reports on a fake milk scandal in China which has already claimed the lives of 13 infants in Anhui province. Chinese TV reports indicate that 10 brands of fake milk powder were found on sale in Shandong province. The brands in question have not been named, but a BBC reporter suggests that the problem results from a combination of get-rich-quick business culture, poor consumer knowledge and slack supervision of products on the market.

The IPKat hopes that the Chinese authorities will recognise that intellectual property protection and the integrity of brands are notions that can benefit the Chinese consumer and that they do not exist solely to enrich greedy entrepreneurs.

How to make fake milk here
Dangers posed by genuine milk formula manufacturers here; Nestle's response here
Facts and myths of breast-feeding here

Friday, 23 April 2004


Following his blog on the subject of 17 February 2004, the IPKat was interested to read in The Scotsman that Scottish Courage, the brewers of Newcastle Brown Ale, are definitely going to switch production from Newcastle across the River Tyne to Gateshead. The move will lead to the loss of 110 jobs, but major cost savings are predicted. The changeover raises a tricky legal problem though. Scottish Courage has obtained protection of the term NEWCASTLE BROWN ALE as a geographical indication under EU legislation. Ordinarily, this would stop it from using the name if the product was produced anywhere else. However, Scottish Courage has said it will apply to the EU to have the PGI revoked and foresees no problems with this because it is the only producer of NEWCASTLE BROWN ALE.

The IPKat isn’t sure about this reasoning. PGIs are not meant to be personal property rights, so he’s not sure that they should be revoked at the whim of a single producer. It would in theory be open to other producers to start brewing ale according to the same method in Newcastle, though he notes that NEWCASTLE BROWN ALE is a registered trade mark.

More Scottish courage here, here and here
Gateshead’s beer credentials here and here


At last -- a chance for the disenfranchised masses to make their opinions felt on a sensitive issue. The BBC is conducting a poll as to whether CBS should have broadcast pictures of the late Princess Diana as she lay dying after a car crash. Click here to vote.

The IPKat says the issue is a fine one -- not a beauty contest or a request for a "click if you love Diana" kneejerk response. From one perspective there is the invasion of a grieving family's privacy, quite apart from the question of poor taste. From a second perspective there's a question of alleged murder, or at least criminal negligence, arising from the crash itself and a public interest in determining any issues of liability. From a third perspective there's the curiosity factor. A fourth is that of freedom of expression and a fifth is the opportunity to exploit commercially a valuable piece of intellectual property.


The IPKat is please to report on a rare sighting – an Article 6ter Paris Convention case.

Concept applied to register a figurative mark consisting of a circle of twelve stars in black and white with the letters ECA in their centre for computer hardware and software, the organisation of conferences and other training and services connected with computer software a databases. The application was refused by the OHIM examiner under Article 7(1)(h) of Regulation 40/94, which prohibits the registration of marks which consist of important state symbols or imitations of them from a heraldic point of view. After an unsuccessful appeal to the Board of Appeal, Concept appealed to the CFI.

The CFI dismissed the appeal. The most interesting parts of its reasoning include:

♦ The fact that Concept’s mark also contained a word element did not, in itself, preclude the application of Article 6ter. The important question was whether in this case Concept’s mark contained an element which could be regarded as the European emblem or an imitation thereof from a heraldic point of view. That element did not have to be identical to the emblem in question and the fact that the emblem was stylised or that only part of the emblem was used did not mean that there was no imitation from a heraldic point of view.

♦ When making the comparison from a heraldic point of view, regard had to be had to the heraldic description and not to the geometric description, which is by its nature much more detailed. From the heraldic point of view, the mark applied for only differed from the heraldic description of the EU emblem in that Concept’s circle of stars appeared in white on a black background, rather than in blue and yellow. However, the difference in colour was irrelevant in this case because Concept’s application was not limited to any particular colours and thus could be used in the EU’s colours. Additionally, the EU emblem was itself often reproduced in black and white. The fact that the stars in application were not the same size as those in the EU emblem did not mean that the relevant public would not think that Concept’s application was not an imitation from a heraldic point of view. Both featured twelve stars of the same type and shape.

♦ The fact that the EU emblem had a rectangular background of a flag, compared to the square background of Concept’s mark did not distinguish the two indicia. The heraldic definition did not specific the shape of the background of the EU emblem. It was the circle of stars, rather than the background that was predominant. Finally, though the circle of stars was originally the flag of the EU, it is now considered to be its symbol or emblem.

♦ 5. Under the second sentence of Article 6ter(1)(c), the registration of a mark containing the emblem of an international organisation can be allowed if it is not of such a nature to suggest to the public that a connection exists between the organisation concerned and the emblem in question or if such a registration is not of such a nature as to mislead the public as to the existence of a connection between the user and the organisation. Even though it had not mentioned the provision by name, OHIM had conducted the relevant analysis in making its decision and had found that the registration and use of Concept’s mark was capable of giving rise to the impression on the part of the relevant public that there was a connection between the mark sought and the Council of Europe or the European Community. There was an overlap between the applied-for goods and services and the activities of the EU since the EU provided its publications on CD-ROM and in database form and provided training and conferences. Because of the wide variety of goods and services offered by the EU, it could not be ruled out that the relevant public would believe that there was a connection between Concept and the European institutions. The presence of ECA within the centre of Concept’s mark reinforced the impression of a connection with the EU and could be an acronym for any EU agency or body, including the European Court of Auditors.

The IPKat finds this a rather confusing case. He’s not particularly familiar with the concept of “heraldic similarity” and wonders if any readers can explain how it works and how it differs form the notion of similarity in trade mark law which is his bread and butter (or at least, his fish and milk).

Heraldry here, here, here and here


Ananova reports on another first for major brand-owner Kimberly-Clark: its ANDREX toilet roll puppy has become the first celebrity brand to be commemorated in the Madam Toussaud Celebrity Hall of Fame. The puppy, who has been registered as a series of UK trade marks since 1989, was not available for comment. It is not known whether the waxwork models were made from dogs that featured in ANDREX advertisements or from generic hounds.

The IPKat is not a-mew-sed, but respects Kimberly-Clark's dogged perseverance in building its presumably pensionable puppy into a leading marketing tool.

More on wax and dogs, fire dogs, hot dogs, reservoir dogs

Thursday, 22 April 2004


Marty Schwimmer of the Trademark Blog reports on a US case discussing the protection of the layout of dolls' faces by IP rights.

Barbie here
Distorted Barbie here
Sociology of Barbie here
Free Barbie! here


The Daily Telegraph reports that the registration of the hammer and compass symbol of the former East Germany is to be challenged before the German Patent Office. Manfred Jansen obtained the registration of the symbol, together with various other iconic symbols after applying two years ago. Now however the estate of Heinz Behling, the designer of the East German symbol has expressed its intention to challenge the registration. Jansen is unrepentant and has said “Anyone could have secured these rights. They were lying around long enough”. The registration has also angered some citizens of the former East Germany. However, the German Patent Office has said that when a state ceases to exist, its symbols can be claimed by anybody.

The IPKat notes that under EU law, state symbols that are protected under Article 6ter of the Paris Convention cannot be registered as trade marks. However, Article 6ter only refers to the symbols of states that are members of the Paris Union. As East Germany no longer exists, it cannot be a member of the Union. However, he notes that any prior copyright Behling has in the symbol may lead to invalidation. He also wonders whether such a sign will be perceived as an indication of origin.

East German symbols here
East German art here
East German jokes here

Wednesday, 21 April 2004


Ananova cites the Herald Sun as reporting that Andre van der Linden, an Australian evangelical Christian, is suing the Channel 7 TV channel after it ran an episode of Prime Suspect in which the words "Jesus Christ" were used as an exclamation. Van der Linden, of Waranga (northern Victoria) is suing because he says such use of the name is insulting and disrespectful to Christians: "It is high time that television stations like yours be called to account for your defamation of the name Jesus Christ, a practice that insults hundreds of thousands of Christian believers". He adds that blasphemous words should be "bleeped out". Channel 7 proposes to defend the legal action, maintaining that the British-made TV show is a realistic reflection of day-to-day life.

JESUS has been registered in the Benelux countries, Austria, France, Italy and Spain but not (so far) in Germany, Switzerland, China, Hungary or Ireland.

The IPKat notes that Basic Trademark's application to register JESUS in the UK as a trade mark for clothing and footwear was refused last year but is currently under appeal. Although the reason for refusing registration is that the use of JESUS is deemed to be morally offensive to the public (as Mr van der Linden maintains), refusal of registration does not mean that the word can't be used for morally offensive activities such as identifying a brand of jeans.

More on naughty words here, here, here and here
Swearing: Jesus' view
Can't find God? Visit the UK Trade Marks Registry here and here

Tuesday, 20 April 2004


The Times reports on the trend for some schools to buy single copies of text books for whole classes and then to distribute photocopies of the contents to their students. The article focuses on the efforts of Keith Diggle, director of the musical publishing company Rhinegold, to take action against City of Ely Community College. Diggle claims that the college illegally copied and distributed 25 pages of the publisher’s A Student’s Guide to AS Music, despite prominent copyright notices on many pages of the book. He claims though that the Copyright Licensing Agency (CLA) was aware of the problem, it had said that there was little that it could do about it. The CLA has said that litigation in such cases is a last resort and that the better option would be for publishers to join the CLA’s royalty distribution scheme, of which Rhinegold was not a member. However, the CLA has said that it will make use of the new Copyirght and Related Rights Regulations in order to bring about a shift from the “inherent culture that it’s OK to copy”. It has also instituted the Copywatch helpline, offering a reward of up to £20,000 to those who report instances of copyright infringement. This though is one of Diggle's gripes. The pupil who brought the college’s copying to his attention had previously reported the copying to the Copywatch helpline but had received no reward. According to Diggle, the CLA helpline is holding out “the implied promise” of a reward to those who blow the whistle on infringers. This promise though was not delivered to the pupil of Ely Community College.

While the IPKat has sympathy with the financial plight of schools and recognises the value of education, neither of these factors are justifications for copyright infringement. Copying text books could be counterproductive if they cause: (i) fewer books to be published or (ii) those books that are published to be sold at a higher rate. Nonetheless, the IPKat isn’t sure about the Copywatch helpline in as far as it could be used by pupils with grudges to cause trouble for their schools with the promise of a monetary reward for doing so.

More copying in Ely here
Copying in schools – what’s allowed? here

Monday, 19 April 2004


In case you've been wondering why the IPKat has been so quiet for the past week, don't worry -- he has been in New York. His excuse for this transatlantic excursion was his attendance at the 12th Annual Conference on International Intellectual Property Law and Policy at Fordham University. He, and 320 attendees from 22 countries, were entertained and provoked by a variety of sharply delivered papers ranging from patents to copyright, trade marks, geographical indications and antitrust. The thing that distinguishes Fordham from other law conferences is the sheer intensity of its focus. Prominent speakers drawn from the judiciary, legal policy makers and academics as well as IP owners and private practitioners were forced to justify their views in front of critical panels of their peers. Papers, often no more than 10 to 15 minutes in duration, became the subject of vigorous and often dramatic debate as big name IP experts came under sustained fire and were required to defend their IP beliefs. This conference is the brainchild of Professor Hugh Hansen, whose enthusiasm, drive and personality do so much to make this a unique event in the annual IP calendar.

Prominent speakers on the judicial side included Fidelma Macken of the ECJ, Nicholas Forwood of the CFI, the Hon. Randall R Rader, Sir Hugh Laddie and Sir Nicholas Pumfrey, Lord Slynn of Hadley and Judge Ryuichi Shitara of the Tokyo High Court. On the administrative side speakers included Alison Brimelow, Alexander von Muehlendahl, Marybeth Peters of the US Copyright Office and the US Commissioner for Patents. There were also many top-quality academics and practitioner - in fact, too many to name here. However, you can get full details of the conference programme here. The IPKat had an informative and highly enjoyable time and strongly recommends anyone who has the opportunity to atttend next year's conference.

New York cats here

Sunday, 11 April 2004


The IPKat has just received a copy of the 30th issue of the Proceedings of the Hungarian Group of AIPPI (the International Association for the Protection of Industrial Property). The Proceedings, happily published in English and even more happily revised by Timothy Holbrook, an Assistant Professor at the Chicago-Kent College of Law), contain some cogent material that is of both practical importance and academic interest. Features include:

* Istvan Gödölle, “Bad Faith in Trademark Law”
* Éva Szigeti, “The Community Trade Mark and the Accession of Hungary to the EU”
* Endre Millisits, “Consumer Protection Aspects in the Hungarian Trademark Act”
* Vilmos Bacher, “Protection of Industrial Property Rights by Criminal Law, with regard to the Civil Law Aspects of Infringement”
* Tivadar Palágyi, “Main Features of the Amended Hungarian Patent Act”

The IPKat is pleased to see the high level of commitment and enthusiasm shown by Hungarian IP practitioners to the development of IP theory and to the monitoring of IP practice, which should stand it in good stead when that country enters the EU next month.

AIPPI here
Other major IP bodies: FICPI, LES, INTA


The BBC reports that a special blue, grey, green and yellow Presley tartan has been created by Mike King of Lonmay, Aberdeenshire to honour the recently-discovered fact that Elvis Presley had ancestors in the town. Mr King explains that "We used blue to represent the nearby town of Peterhead - the Blue Toon - as well as grey for the skies, green for countryside grass, and yellow for local cornfields.The sporran is gold and engraved with thistles and a bald eagle to show the Scottish and American link". Meanwhile, the proprietor of Lonmay’s only hotel has said that he plans to redecorate his lounge using the Presley-Lonmay tartan. A spokesman for the Aberdeen and Grampian Tourist Board has realised the potential of Lonmay’s new-found fame, saying "Hopefully this is the start of entrepreneurs and local businesses moving in to take advantage of the Elvis link and help tourism in the area".

The IPKat cautions that the Presley estate is notorious zealous in its guardianship of the Presley name, and those businesses which do seek to take advantage of the Elvis link may find themselves in hot water.

Elvis – the Scottish connection here
Official Elvis here
Unofficial Elvis here and here
More rock ‘n’ roll tartan here


Commission press release IP/04/7470, issued on 7 April, proclaims the new so-called “safe harbour” block regulation for technology transfer agreements, which replaces the previous block exemption of 1996. The Press Release goes as follows:

Following adoption of the texts, Mario Monti, the Commissioner in charge of competition policy, stated: "The reform of our rules on technology transfer agreements will facilitate wide dissemination of innovation and give companies greater scope and design freedom. By strengthening the incentives for innovation while focusing on those restrictions which can seriously damage competition, competition policy can play an important role in injecting new dynamism into the EU economies and thus help to deliver on the Lisbon targets. "

Licensing is important for economic development and consumer welfare as it helps disseminate innovation and allows companies to integrate and use complementary technologies and capabilities. However, licensing agreements can also be used for anti-competitive purposes. For instance, when two competitors use a license agreement to divide markets between them, or when an important licensor excludes competing technologies from the market. As competition is one of the main driving forces of innovation and dissemination, it is important to find the right balance between protecting competition and protecting intellectual property rights.

Licensing agreements that restrict competition are prohibited by the EU competition rules, in particular Article 81 of the Treaty. However, licensing agreements in most cases also produce positive effects which outweigh their restrictive effects. The new rules consist of a 'block exemption' Regulation and Guidelines. The block exemption Regulation creates a safe harbour for most licensing agreements. The Guidelines explain the application of Article 81 for agreements not covered by the safe harbour.

The new rules replace a 1996 block exemption Regulation(1), which was narrower in scope and created too much of a "strait-jacket" because of its formalistic approach. The new rules leave companies more freedom to devise their licensing agreements according to their commercial needs.

However, the new Regulation provides the safe harbour only below certain market share thresholds, 20% for licensing agreements between competitors and 30% for agreements between non-competitors.

The new block exemption Regulation will have a black list of hardcore antitrust violations. In other words, what is not explicitly excluded from the block exemption is now exempted. This contrasts and eliminates the strait jacket created by the white and grey lists contained in the 1996 Regulation.

To the extent that enterprises do not surpass the market share thresholds they do not have to worry about the compatibility of their agreements with EU competition law. At the same time, clearly defined "hardcore restrictions" which produce negative effects on the market are normally prohibited. In the absence of hardcore restrictions there is no presumption that agreements, either existing or new, falling outside the safe harbour are prohibited. Individual assessment of the likely effects of the agreement is required. This is very different from the old form based approach, where restrictive clauses were often considered illegal outside of the scope of the block exemption. The Guidelines set out the principles for individual assessment outside of the safe harbour.

The new rules also become broader in scope since they will now cover design right and software copyright licensing, as requested by many who commented on the texts, and not just patent and know-how licensing. Where the Commission does not have the powers to adopt a block exemption regulation, as for patent pools and for copyright licensing in general, the Guidelines give clear guidance as to future enforcement policy.

The scope of the new rules is also extended by setting a more lenient policy for a number of important restrictions, in particular output restrictions, customer restrictions and field of use restrictions. These and other changes make that the new regulation will allow for effective dissemination of innovation and give companies greater scope and design freedom.
The rules are aligned on the Commission's new generation of block exemption regulations and guidelines for distribution agreements and horizontal co-operation agreements while not ignoring the differences that obviously exist between licensing and distribution or licensing and R&D agreements.

The Regulation and Guidelines will be published in the Official Journal and will also be available on the internet here.

The IPKat is suspicious of the new provisions, particularly since they appear to be foisted on European traders by the Commission, rather than demanded by traders in the first place. Despite what the Commission says, the 1996 Regulation seemed to work quite well. The IPKat would like to know what his readers think. If you have any comments, please remember to post them below.

Saturday, 10 April 2004


Last December IPKat co-master Jeremy gave a paper at the INTA Forum in Geneva on the somewhat speculative issue "what's next in trade mark law harmonisation?". A revised and shortened version of that paper has now been published in the April issue of Trademark World under the title "Consult the Crystal Ball". Before you ask, no -- the author wasn't consulted before the title was chosen and for all his attempts to gaze into the future he didn't predict it either. If you want to read the full version of the paper, send the IPKat an email.

Friday, 9 April 2004


The BBC News site carries a feature on how P2P file-sharing will mean the end of censorship, whether for good or ill. The feature is based on comments by a Cambridge University computer scientist, Professor Ross Anderson. The same technology can ensure that “unpopular” news gets distributed far and wide even if it’s not going to be profitable for commercial syndication.

So far as the IPKat can see, developments like blogging have already shown that the internet is a medium that’s pretty immune to censorship. But he wonders whether it’s an inevitable part of everyone being able to say whatever they want is that their potential audience seems to listen less and less.

Comments on censorship here, here and here
P2P here; pea to pea here


Professor William Cornish’s three 2002 Clarendon Law Lectures (Intellectual Property: Omnipresent, Distracting, Irrelevant?) have now been published by Oxford University Press.

The background to Professor Cornish’s lectures is as follows. Intellectual property rights are increasingly significant elements of economic policy and, in an age of global trade, they are vital to developed countries. Today's new technologies, derived both from the digital and the biotechnological revolutions, are creating new problems. The three lectures focus on some of the major issues that are the subject of public debate: (i) the omnipresent spread of IPRs across some recent technologies, (ii) the distraction caused by rights that achieve little of their intended purpose and (iii) the apparent irrelevance of intellectual property rights as viewed by users of new technologies such as the internet. Taking these three themes, Professor Cornish surveys current arguments over legal policy in this field. In doing so he touches on issues surrounding the patenting of biotechnological and genetic innovations; the threat posed to copyrights in publishing, computer programs and record and film production by the internet and the tension between legal protection of brands, the freedom to compete and the drive for 'fair trading'.

More on the Omnipresent, the Distracting and the Irrelevant


The BBC reports that Lindows is to give up using the Lindows name outside the US. The producers of the Lindows operating system have come under sustained fire from Microsoft, which claims that the name infringes its rights in the name of its Windows operating system. In fact, they have been blocked from using the name in Sweden, Finland and the Netherlands and challenges are pending in various other European and non-European countries. While Lindows plans to unveil their new international identity next week, they intend to continue fighting for their right to use the Lindows name in the US.

The IPKat is waiting to see what happens in the US action and wonders, if Lindows win it, if they’ll change their name back in at least some of the other jurisdictions.

The benefits of changing your name here and here
Other important name changes here, here and here

Thursday, 8 April 2004


Anna Carboni has informed the IPKat of a forthcoming important change to the Trade Marks Act 1994. Paragraph 7 of Statutory Instrument 2004 No. 946, The Trade Marks (Proof of Use, etc.) Regulations 2004 amends ss5(3) and 10(3), removing the need for the parties goods and services to be dissimilar.

S.10(3) will now read

A person infringes a registered trade mark if he uses in the course of trade in relation to goods or services a sign which is identical with or similar to the trade mark
where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

S.5(3) will now read

A trade mark which is identical with or similar to an earlier trade mark shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom (or, in the case of a Community trade mark, in the European Community) and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

The IPKat notes that this will bring the UK law into line with the effect of the ECJ’s decisions in Davidoff v Gofkid and Adidas v Fitnessworld , which decided that Articles 5(2) and 4(4)(a) of the Trade Mark Directive (the EU’s equivalent of dilution legislation) apply to identical and similar goods type situations and not just to dissimilar goods situations. However, he isn’t aware of any plans to change the Directive.

Dilution here, here and here


The April 2004 issue of the Sweet & Maxwell journal The European Intellectual Property Review carries a sparky note by the IPKat's co-master Ilanah on the recent Dutch litigation between, on the one hand, the owners of the copyright and trade mark rights in J. K. Rowling's book Harry Potter and the Philosopher's Stone and, on the other, the publishers of the Dutch translation of the alleged Russian parody Tanja Grotter and the Magical Double Bass. Ilanah's article, "Parodies: a Touch of Magic", is reported at [2004] EIPR 185.

The Harry Potter empire here
How does magic work? Find out here and here

Monday, 5 April 2004


The BBC reports that, according to Dr Ellie Johnson Searle, director of the Joint Council for Qualifications, those who copy from internet essay websites in their coursework may not be cheating and may instead be engaging in valuable “self-teaching”. While she condemned the full-scale copying of entire essays or parts of essays, she claimed that those who put internet-sourced essays into their own words are displaying an understanding of their subject because they would not be able to rephrase them unless they understood them.

The IPKat says that unless those who wrote the essays which appear on the websites in question have given their consent to their use, students who embark on “borrowing” from such website should be careful of the copyright implications of what they are doing. While there is a defence to copyright infringement for private study and research under s.29 of the UK CDPA 1988, students should be aware that this only covers fair dealing. Wholesale taking of someone else’s work without consent is unlikely to be considered to be fair.

Dealing with exam cheats here and here
How to cheat at exams and here


Today’s the end of the tax year in the United Kingdom. The IPKat, being a conscientious and law-abiding feline, wouldn’t like any UK tax-payers to forget. Accordingly he has put pen to paw and written the following lines:

Another financial new year has passed.
Here's hoping you're not too aghast
And that your savings are many --
So you can afford to spend a penny.

We hope that your endeavour earns
The right to dodge those tax returns.
And when, with care, your profits mass,
You can kick the Chancellor's assets.

Inland Revenue here
Strange taxes here and here

Sunday, 4 April 2004


The Register reports that Google’s Gmail free email service is coming in for a hammering from US privacy groups. Gmail’s attractions include the fact that it’s free and it comes with 100 times more storage than Yahoo!’s webmail service. But Google’s cookies provide a vast database of sites browsed by its users together with their identities; moreover, the company has said it will retail emails even after users close their accounts. The World Privacy Forum points out that this would give Google the chance to create a definitive electronic profile of its users if it chose to do so. Google promises that no humans will read its customers’ emails, but the fact is that the data is there for anyone who wants to join up the dots …

The IPKat appreciates that most email is of little or no interest to anyone other than the sender (and sometimes the recipient). Nonetheless it is most disquieting to think that such a large quantity of personal information can be mosaiced into pretty detailed personal profiles. Whether this calls for explicit legislation or a code of practice is something that should be considered before the existing "trust" system has its first casualties.

More about Google here, here and here
More on electronic privacy issues here and here
How cookies work here and here
Make your own cookies here and here


* Sir Robert McAlpine v Alfred McAlpine [2004] EWHC 630 (Ch). Sir Robert McAlpine established his construction business back in 1869. In 1935 the business was split in two: his son Alfred ran his business in North West England, the Midlands and North Wales, while his other sons operated elsewhere. In 1983 the two businesses agreed to end this geographical partition of the market. The two businesses traded as “Sir Robert McAlpine Ltd” and “Sir Alfred McAlpine & Son Ltd”. In 2003, following a rebranding exercise, Alfred’s business dropped the name “Alfred” and called itself “McAlpine Capital Projects Ltd”. Sir Robert’s business sued for passing off, seeking an injunction. Mr Justice Mann held for Sir Robert’s company, on the basis that, in relation to such areas of activity in which the companies’ interests overlapped, the use of the name McAlpine, unqualified by “Alfred”, would be a misrepresentation. It was found by the court that there was a very real risk that the claimant might suffer loss if such misrepresentation were allowed to continue.

* Interquell v OHIM, SCA Nutrition, Court of First Instance, Case T-20/02. Interquell applied to register a figurative mark containing the words HAPPY DOG as a Community trade mark for goods in Class 31 (dog food). An opposition was lodged based on two earlier UK marks that contained the word HAPPIDOG, also for goods in Class 31. The OHIM Opposition Division allowed the opposition and refused the application. The applicant’s appeal was dismissed on the basis that there was a likelihood of confusion. Aurally the words were identical. Conceptually, both HAPPY DOG and HAPPIDOG suggested to consumers that dogs, on eating the relevant goods, would become happy. The fact that the parties’ respective marks looked different could not overcome the aural and conceptual similiarities.

* Fieldturf v OHIM, Court of First Instance, Case T-216/02. Fieldturf applied to register the slogan LOOKS LIKE GRASS... FEELS LIKE GRASS... PLAYS LIKE GRASS as a Community trade mark for goods in Class 27 (synthetic surfaces). The application was refused on the ground that the mark was devoid of distinctive character under Article 7(1)(b) of the Community Trade Mark Regulation. The applicant’s appeal was dismissed. According to the CFI the applied-for mark suggested that the goods for which it was to be registered looked like grass, felt like grass and were as suitable for playing on as grass. Apart from being a generic description of Fieldturf’s product, the words would be perceived by consumers as a promotional slogan rather than as a trade mark.

The IPKat says: "Happy reading".

McAlpine -- the slippery slope here
Happy dogs here and here; happy dog ownershere . Happy dog lyrics here.
Turn grass into cash here. High grass yield here

Friday, 2 April 2004


The IPKat recently blogged the remarkable decision of the UK's Court of Appeal in Coflexip SA and another v Stolt Offshore MS Ltd [2004] EWCA Civ 213 (see "Yes, You Too Can Infringe an Invalid Patent", 1 March). Basically what happened was that Coflexip had a patent for flexible pipes. It sued Stolt for patent infringement, won and was granted an enquiry into damages. Meanwhile Coflexip's patent was held invalid in proceedings between that company and Rockwater. Stolt tried to get out of paying the damages award, but both the High Court and the Court of Appeal (Lord Justice Neuberger magnificently dissenting) said Stolt still had to pay. The matter has now become somewhat academic, since the Court of Appeal yesterday reversed the decision of the original trial court and said that Coflexip's (now Technip's) patent was valid all along.

The IPKat is sure that Stolt will feel it got a much better deal, now that it knows for sure that the patent it infringed was valid after all.

More about flexible pipe technology here and here. Non-flexible pipes here and here


The IPKat is puzzling once again over the deeper meaning of various provisions of European trade mark law and, once more, he is quite puzzled. Articles 3(1)(c) and 3(1)(d) of Directive 89/104 both provide absolute bars to registration. Article 3(1)(c) bars registration where the mark consists exclusively of "signs or indications which may serve a descriptive function in the course of trade, while Article 3(1)(d) bars the way to applications consisting exclusively of "signs or indications which have become customary in the current language ...".

What bemuses the IPKat is this: both Article 3(1)(c) and Article 3(1)(d) are there to stop a trade mark applicant registering as a trade mark a sign which is basically not distinctive becuse it is either needed or actually used by his competitors. But why should Article 3(1)(c) apply with regard to words etc that are not only descriptive now but may be needed because of their potential for being used in the future, while Article 3(1(d) requires that words currently used as customary and is the need to keep current descriptors free for future use while there is no similar requirement for customary terms something which can be justified by the ECJ's "essential function" doctrine? as usual, a small prize will be offered to the best anwer to this problem.

As usual the IPKat offers a small but tasty present to anyone who can provide him a good answer.


SCRIPT-Ed is the brand new electronic journal of Edinburgh University's AHRB Research Centre for Studies in Intellectual Property and Technology Law. This new title is an online international interdisciplinary and multi-lingual forum for articles, reports, commentaries, analysis, case and legislation critiques, not to mention book reviews pertaining to law and technologies in the broadest sense. It's all perfectly free, though charitable donations are welcome. The first issue, which you can read here, carries features on comparative aspects of personality rights, global pharma patents, European trade marks, traditional knowledge and lots more besides.

SCRIPT-ed also hosts E-Law Review, a bi-monthly legal journal covering Scottish IT issues including Data protection, Financial services, E-Commerce, Consumer law, Intellectual Property and Cybercrime. The E-Law Review is published in association with the Scottish Society for Computers and Law and SCRIPT (the Scottish Centre for Research into Intellectual Property and Technology).

The IPKat is delighted to discover that all articles published in SCRIPT-Ed have first been refereed so as to maintain an appropriate standard of excellence. He wishes this new publication well.

Thursday, 1 April 2004


An appeal by Ms Katy Price (better known as Jordan, the celebrity/model) against the examiner’s refusal to register her highly publicised surgically enhanced breasts as a Community trade mark has been dismissed by an OHIM Board of Appeal (Case R-546/2002-5, not yet available on OHIM website). Ms Price sought registration of her breasts in respect of goods in Classes 16 and 25 and maintained that they were a three-dimensional trade mark which was either inherently distinctive or which had acquired distinctiveness through use. The graphic representation consisted of a series of colour photographs of the relevant body parts, taken in both profiles, from the front, from above and from below. The examiner considered that the sign was not graphically represented for the purposes of the CTM Regulation, Article 4; nor was it distinctive under Article 7(1)(b).

Dismissing the appeal, Board cited the ruling in Case C-104/01 Libertel that a trade mark may be represented graphically “in a way that is clear, precise, self-contained, equally accessible, intelligible, durable and objective”. In the Board’s opinion, the photographs of the applicant’s breasts were inadequate means of representation on the basis that the alleged sign was not “self-contained” or “equally accessible”. Nor, since the sign was itself subject to the vagaries of cosmetic surgery, weight loss, weight gain and gravity, could it be said to be “durable and objective”. On the issue of inherent distinctiveness, the Board’s own internet research concluded that the relevant consumer, on viewing it upon the goods for which registration was sought, would not consider that it was serving as a trade mark and would believe that it was a decoration or embellishment of the goods concerned. As to acquired distinctiveness, the Board considered that the evidence did not demonstrate how the breasts had in fact been used. The Board’s decision also considered issues arising from Article 7(1)(e), considering whether the shape of Ms Price’s breasts were a shape which “gives substantial value to the goods” to which they are applied.

The IPKat is relieved to note that this is not a case in which it has been considered necessary for the applied-for mark to be kept free for use by others.

Other unusual trade mark subject matter here, here and here
Other breast-related trade marks here, here and here
More on enlargement here (well, what did you expect?)


The BBC reports on a dispute taking place between the artist Tracey Emin and an inner-London school. Ms Emin worked with the pupils of Eccelsbourne School in Islington in 2000 as part of the Art in Sacred Places project. Taking as her theme the title "Tell me something beautiful", she instructed the eight-year-olds involved to nominate their ideas of beauty and then to sew the keywords in felt letters on bright fabric squares which were joined to make a quilt. Now however the school is seeking to sell the quilt because it cannot afford the £4,000 needed to purchase a case to display it in and the proceeds would make a welcome addition to the school budget. However, Emin objects to the sale of the quilt and is seeking to have it returned to her. She has said that she will not authenticate it if it is sold, which will reduce its value.

From the IPKat’s point of view, there are potentially some tricky joint authorship issues involved and he would advise any organisation embarking on such a project to contractually lay our who has the rights to sell the resultant work in advance. He’s also a bit puzzled by the idea of Ms Emin not “authenticating” the work. Unlike France, in this country authors do not have a moral right to disclaim authorship of their works. In any event, the publicity resulting from her opposition to the sale will ensure that everyone knows that she was involved with the creation of the work.

Tracey Emin’s bed here
Tracey Emin’s quilts here and here
Quilting with children here
Quilting history here
Crazy quilts here

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