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).

Monday, 31 October 2005


UNESCO has adopted the text of a Convention on the Protection and Promotion of the Diversity of Cultural Expressions. The Convention aims to protect and promote the diversity of cultural expressions, but it also envisages interaction and dialogue between cultures. From the IP point of view, this Convention may be significant since Art.5-7 speak about the protection that states may give to cultural expression. The form that such protection should take is gloriously imprecise, although there is a non-exhaustive list of the types of protection that Member States might want to offer in Art.6. There is also the possibility for Members to take special measures to protect cultural expressions that are on the verge of extinction or otherwise in serious or urgent danger. However, there does not appear to be an inbuilt mechanism for enforcing the treaty “obligations”.

The IPKat isn’t too familiar with the workings of UNESCO. If anyone can tell him what this Convention will mean in practice for IP law, he’d be much obliged.

What the Convention might mean for geographical indications here.


1 IPKat translation watch

The IPKat has complained long and hard at the failure of the European Court of Justice to furnish English translations of its decisions. This time it's the turn of the European Court of Human Rights. It's now nearly three weeks since the ECHR ruled, in Anheuser-Busch Inc v Portugal, that registered trade marks were "property" within the meaning of the European Convention on Human Rights, but that anything short of a granted right - for example unconfirmed registrations and applications - was not. However, the ECHR website only appears to have a French version of this case.

What about the human right of IP lawyers to access and understand the law in a language that they understand, growls the Kat. Merpel agrees and also wonders whether the ECHR's website is as user-friendly as it could be - the ECJ's site (when it's working) would be a good model to emulate.

2 Latest EIPR

The November 2005 issue of Sweet & Maxwell's monthly European Intellectual Property Review has now appeared. As usual there are lots of goodies in it. Of particular note are

* An Opinion by the intriguingly named Oxonian Leslie Kim Treiger-Bar-Am on the relationship of the meaning of art works and the relationship of their meaning to copyright law, with special reference to Christo's The Gates;

* A learned account by Dutch academic Sven J. R. Bostyn on the referral to the European Patent Office's Enlarged Board of Appeal of some questions concerning the patentability of diagnostic methods;

* A lovely piece by the IPKat's friend Duncan Matthews entitled "TRIPs Flexibilities and Access to Medicines in Developing Countries: the Problem with Technical Assistance and Free Trade Agreements";

* A note by South African IP/IT lawyer Daniel Greenberg, now in London, on the celebrated Black Labour trade mark parody case.

Sunday, 30 October 2005


The IPKat has come across an interesting OHIM Board of Appeal unfair advantage decision.

Hoya Corporation applied to register the ABBSOLUTE word mark as a CTM for lenses for eyeglasses, frames for eyeglasses, eyeglasses, sunglasses and contact lenses in Class 9. V&S Vin & Spirit AB opposed the application based on its CTM for goods in Classes 6, 14, 16, 18, 21, 24, 28, 29, 30, 32, 33, 41 and 42 and the fact that it had a reputation for vodka in Class 33 and goods in Classes 6 and 14. V&S argued that the applied for mark was barred from registration under Arts 8(1)(b) and 8(5) of the CTMR.

The opposition failed before the Opposition Division since the goods were dissimilar (this eliminated the Art.8(1)(b) claim) and the relationship between the parties goods was not of such a nature as to cause consumers to associate the two marks (eliminating the Art.8(5) claim). V&S appealed, arguing in particular that its sponsorship activities had cause the reputation of its mark to spread beyond the field of vodka.

The appeal was allowed by the First Board of Appeal, and the ABBSOLUTE mark was barred from registration under Art.8(5). Of particular interest is that, even though the earlier ABSOLUT mark was primarily used for vodka, the use of the mark in promotions for that vodka gave the mark a reputation in the field of fashion.

In particular, V&S had engaged in sponsorship in the field of fashion, encouraging prominent and undiscovered designers to incorporate the ABSOLUT bottle into their designs. The results were featured in Vogue. Although the main purpose of this practice was to promote the mark, it meant that the relevant public became used to seeing the mark on such goods in connection with the fashion industry. Since the relevant public was used to seeing ABSOLUT as a young, fashionable brand, by using the ABBSOLUTE mark on lenses for glasses, frames, glasses, sunglasses and contact lenses, Hoya would take unfair advantage of the reputation of the ABSOLUT mark to benefit itself in selling the goods that it had applied for. Hoya’s use on the applied-for goods would enable it to attract to itself the goodwill currently associated with V&S as a sponsor of the fashion industry which was the result of a large investment of time, effort and money on V&S’s part. This amounted to both free-riding on the coat-tails of a renowned mark and an attempt to trade on its reputation and consequently was a case of taking unfair advantage of the repute of the earlier mark.

The IPKat says that this decison goes to show that sponsorship activity need not (according to OHIM) be assimilated to the use of the mark in relationship to the primary goods which the sponship is designed to draw attention to. Instead, it can build up a field of reputation around itself. This may however be an exceptional decision. The promotional clothing that was produced here counted as high fashion. The same would not be true of, say, promotional T-shirts or hats and such use may not lead to a separate reputation for fashion independent of the reputation of the marks for the goods being promoted.


1 Going to Pot

The IPKat has just learned from Freelance UK that the famous Pot Noodle is investing £10 million on revamping its image in order to take the brand upmarket. From 2006 the just-add-water soup snack will - to the doubtless diaappointment of its many addicts - contain no artificial colours, flavourings, preservatives or lumps of powder that don’t dissolve (the ingredients that give Pot Noodle its iconic junk-food status). Advertisements for the product, whose trade mark totters on the verges of descriptiveness and genericity - will shift their focus from students and sex and will now target women and older consumers.

The IPKat welcomes the shift in the product's contents, but wonders whether going upmarket will achieve the desired aim, given the strong and almost ingrained association of the product with those who have either no cooking facilities or no time to use them.

Left: an embarrassing parody

Right: the new image?

2 Something to smile at

The IPKat found this on Wordlab, via Marty Schwimmer's handsomely restyled Trademark Blog. The essence of the issue under consideration is that you need to be very careful, when opting for a domain name that consists of fused words, to read it carefully before you register it.

Friday, 28 October 2005


1 A quick request for information on TRIPs

IPKat co-blogmeister Jeremy is wondering whether very much has been written on the provisions of Article 17 the TRIPs Agreement that enable Member states to make exceptions to the trade mark right. He knows about the books by Daniel Gervais and Carlos Correa, but he'd like to find if anyone has written on this topic from a specifically trade mark-oriented perspective. If you can recommend any good reading, please email Jeremy here and tell him.

2 Intel v Intelsoft

The IPKat has picked up on a spat between Intel Corporation and Intelsoft Ltd, whose use of the term "intelsoft" on its website has not endeared it to the US chip giant. Subscription service All England Direct informs him that the court (Mr Justice Mann) has ordered the defendant's director to provide fuller and more informative answers to Intel's questions about its website.

The IPKat promises it will let you know what happens next ... if he can ever find out about it.


Don’t forget, this Monday (31 October) Queen Mary Intellectual Property Research Institute is hosting two speakers:

• At 12.30, Simon Anholt (right) of Earthspeak on ‘Nation as Brand - the Ultimate IP Challenge?’

• At 5.30, Richard Davis (left) of Hogarth Chambers on ‘Design Infringement After Woodhouse’

It’s not too late to come along – email Ilanah for details.


1 Latest European Trade Mark Reports

The November 2005 issue of Sweet & Maxwell's European Trade Mark Reports has now been published, a few days ahead of schedule. Cases reported in English for the first time in this issue are

* Home Depot (Hanseatic Higher Regional Court, Germany) - the now famous decision on whether damages for trade mark infringement in several countries are assessed under the law of each country in which infringement occurred or under the law of the country whose courts are hearing the case;

* Mariotte, Dorler v La Française des Jeux (Cour d'appel de Paris, France) - an unusual case arising from a battle between the owners of the LOTO and EUROLOTO trade marks, involving issues of bad faith and deceptiveness as well as likelihood of confusion;

* Koninklijke Philips v Rotary Shaver Sweden AB (Svea Court of Appeal, Sweden) - final order in a Swedish case relating to the invalidity of the Philips Philishave "three heads" shaver configuration;

* Adidas v H & M Hennes ('s-Hertogenbosch Court of Appeal, The Netherlands) - action for infringement of three-stripe motif by user of two-stripe motif on clothing, and counterclaim for invalidity, both dismissed.
There are also plenty of other cases to read, including the delicious LISMORE/LISA MORI case from Ireland.

The IPKat reminds and urges readers of this blog to let him know if ever they come across interesting recent cases, especially from outside the United Kingdom, that are important enough to include in the European Trade Mark Reports. If you come across any, please email him here.

2 When it comes to the crunch, there's an Onion

The IPKat's good friend Miri Frankel sent him this link to the New York Times. According to Katharine Q. Seelye the White House has been in pursuit of satirical publication The Onion which, it complains, has been using the presidential seal. The newspaper regularly produces a parody of President Bush's weekly radio address on its website, where it features a picture of President Bush and the official insignia. Wrote Grant M. Dixton, associate counsel to the President:
"It has come to my attention that The Onion is using the presidential seal on its website. The seal is not to be used in connection with commercial ventures or products in any way that suggests presidential support or endorsement".
Exceptions may be made, he noted, but The Onion had never applied for such an exception. For The Onion, attorney Rochelle H. Klaskin responded:
"It is inconceivable that anyone would think that, by using the seal, The Onion intends to 'convey... sponsorship or approval' by the president".
She added that, since The Onion and its website are free, the seal is not being used for commercial purposes. That said, The Onion asked that its letter be considered a formal application to use the seal but has not yet apparently received a response.

The IPKat wonders whether President Bush, whose popularity is currently at its nadir, might not increase his ratings in the polls by making retaliatory use of The Onion's own insignia.

President Bush to appoint someone to run the country here
President Bush to appoint next person to walk through the door here

3 Benefactors or conspirators? Proposals on cross-border copyright management unveiled

People have strong feelings about copyight collecting and rights management societies. Some people view them as benefactors whose activities enable creators to harvest a cornucopia of royalty revenues from a diverse and scattered crop of licensed use; others see them as conspirators, plotting to force up the cost of using copyright-protected materials and then wastefully squandering the proceeds. Last Friday the European Commission published Commission Recommendation 2005/737/EC of 18 October (it actually says May, but that's a mistake) 2005 on collective cross-border management of copyright and related rights for legitimate online music services. It's based on the following principles (among others):
* Right-holders should have the right to entrust the management of any of the online rights necessary to operate legitimate online music services, on a territorial scope of their choice, to a collective rights manager of their choice, irrespective of the Member State of residence or the nationality of either the collective rights manager or the right-holder.

* With respect to the licensing of online rights the relationship between right-holders and collective rights managers, whether based on contract or statutory
membership rules, should, at least be governed by the following:

(a) right-holders should be able to determine the online rights to be entrusted for collective management;
(b) right-holders should be able to determine the territorial scope of the mandate of the collective rights managers;
(c) right-holders should, upon reasonable notice of their intention to do so, have the right to withdraw any of the online rights and transfer the multi territorial
management of those rights to another collective rights manager, irrespective of the Member State of residence or the nationality of either the collective rights manager or the right-holder;
(d) where a right-holder has transferred the management of an online right to another collective rights manager, without prejudice to other forms of cooperation
among rights managers, all collective rights managers concerned should ensure that those online rights are withdrawn from any existing reciprocal representation
agreement concluded amongst them.

* Collective rights managers should inform right-holders and commercial users of the repertoire they represent, any existing reciprocal representation agreements, the territorial scope of their mandates for that repertoire and the applicable tariffs.

* Commercial users should inform collective right managers of the different features of the services for which they want to acquire online rights.
The IPKat thinks this could really shake up collective rights management. He's fascinated to know, however, how competing rights managers would seek to strike a balance between the demands of rights owners - who want to be paid as much as they can reasonably get - and rights users, who want to pay as little as they can get away with. Merpel adds, the Recommendation will require a lot more transparency than is demanded at present, which may serve to make both owners and users of copyright materials less suspicious of their aims and objects.

Thursday, 27 October 2005


The IPKat brings tidings of an OHIM decision, displaying something of a lack of knowledge on the part of the Board of Appeal as to how the English language works.

Ascot Racecourse Limited applied to register a figurative sign, consisting of the words ROYAL ASCOT, a crown figurative element, and the words “since 1771” as a CTM for various items of clothing. Royal Ascot is the name of a prestigious annual race meeting that takes place annually at the Ascot racetrack in Ascot, Berkshire, in the UK. Ascot Karl Moese GmbH opposed the application for the clothing that the racecourse had applied for, but not for footwear. Its opposition was based on its ASCOT mark, which was registered in Germany for ties. The Opposition Division rejected the application both for clothing, and for footwear, even though footwear had not been contested. The racecourse appealed, arguing in particular that the ASCOT mark was not particularly distinctive, since it was descriptive of a type of tie, and this reduced the likelihood of confusion between the ASCOT mark and the applied-for mark.

The Board partially allowed the appeal, finding:

  • The racecourse had been right to argue that, if the earlier mark was non-distinctive, this could have an impact on how the conflicting marks were perceived and whether there would be a likelihood of confusion. While it was true that, according to the dictionary, “ascot” was a common word in the English language for a sort of necktie, it was the perception of consumers in Germany, and not in England that was relevant. The racecourse had presented no evidence that the word “ascot” had this meaning in German and thus that the average German consumer would see “ascot” as a generic designation for ties, rather than as a brand name. It appeared that the earlier ASCOT mark was validly registered in Germany, and so it was deemed to enjoy an average level of distinctive character.
  • The fact that consumers would associate the ROYAL ASCOT mark with an English city and with horseracing did not rule out the likelihood that consumers who had been exposed to the use of ASCOT on ties would be confused if they saw the ROYAL ASCOT MARK on the same or similar items.

  • The differences between the two marks were not very distinctive, and would not outweigh the similarity caused by the presence in both marks for the word ASCOT. In fact, it was implicit in the racecourse’s argument that the word ASCOT was the dominant element of its mark since the mark and the horseracing event were based on the same name and the horseracing event was well-known under the ASCOT name. Conceptually the marks were similar because, if German consumers were not familiar with the meaning of the ASCOT term as a generic word for a type of tie or as the name of the horseracing event, they would only see the use as meaning a brand of tie.

  • German consumers would likely be confused on seeing the applied-for mark used for ties, and also for cravats and scarves since they were sold in the same outlets and made of the same material as ties. Also, both were worn around the neck.

  • Confusion was unlikely between the ASCOT mark as registered for ties and the ROYAL ASCOT MARK as applied for for items of clothing other than ties, cravats and scarves. Ties are accessories, rather than clothing per se and unlike clothing, they are not intended to cover the body. One could not wear a tie instead of other clothing articles and clothing and ties tended to originate from different manufacturers.

  • AKM could not rely on rights in its corporate name, Ascot Karl Moeses GmbH, to prevent the registration under Art.8(4) of the CTMR since the Karl Moeses element of that name was as distinctive as the Ascot element.
The IPKat notes that, while it did not make a difference to the end result in this case, since the relevant consumers were German and not English, the Board is assuming that the way words are used in English dictionaries automatically reflect the way in which English consumers speak. This can lead to results that do not reflect reality in the market. The IPKat would like to know how many of his English readers knew that “ascot” was the name of a type of tie.


Disruption ahead!

Don't even think of looking for key intellectual property decisions of the European Court of Justice and the Court of First Instance over the coming weekend. According to a notice on the Curia website:

"Due to maintenance on the Data Centre infrastructure (Power Supply), the information system Curia case-law database will be unavailable between Friday 28 October 2005 19:00 and Tuesday 01 November 2005 06:00.

We do apologise for the inconvenience caused".
The IPKat thanks Curia for this warning. The inconvenience caused by not being able to access ECJ and CFI decisions for a few days is however quite trifling in comparison with the inconvenience caused by finding those decisions but not being able to understand them because they have not been made available in one's own language. Merpel says, stop complaining! In intellectual property cases at any rate, the situation seems to have improved quite a bit since the Dark Ages last year.

2 Today's fruit cases

Meanwhile, the rulings in two juicy Community trade mark appeals relating have been posted on the Curia website today. They are

* The case of the smelly strawberry

Case T-305/04 Eden Sarl v OHIM, in which Eden applied unsuccessfully to register the smell of ripe strawberry in conjunction with the image of a strawberry (left) in respect of a large range of goods in Classes 3, 16, 18 and 25. The examiner rejected the application on the grounds that the mark was neither capable of being graphically represented (being, in part, a smell) nor distinctive for the goods in question. The Board of Appeal upheld the decision on the ground of lack of graphic representation alone. Eden appealed. The CFI, relying on earlier ECJ case law, had no difficulty in dismissing the appeal. For those who lament the passing of Monty Python, just try imagining a bench of judges adjudicating as follows without collapsing into peals of laughter:

"31 ... the study carried out by Coopération européenne dans le domaine de la recherche scientifique et technique ... does not bear out the applicant’s argument that all varieties of strawberries have the same smell. ... [t]hat study indicate[s] that examiners on a sensory panel were able to distinguish five of the nine crops ... by their smell with a probability of error equal to or less than 5%. That means ... that the different varieties of strawberries produce significantly different smells. That interpretation is borne out by the fact that the probability of error for the descriptive term ‘smell of strawberries’ is identical, in respect of certain crops, to that found for other descriptive terms, such as ‘strawberry‑flavour (fragrance)’ or ‘sweet flavour’, which are considered by the study to be very effective in terms of differentiating the varieties of strawberries.

32 Admittedly, ... the smell of strawberries did not make it possible to distinguish between the varieties of strawberry in a significant way in respect of all the different crops. However ... in order to verify whether the applicant’s argument that the smell of ripe strawberries is unique and unequivocal in respect of all varieties is well founded, it is not necessary that those varieties systematically produce significantly different smells. The mere finding that it was possible to differentiate the varieties by their smell in five of the nine crops analysed in the study is sufficient to show that strawberries do not have just one smell.

33 It must therefore be held that the evidence adduced before ... shows that the smell of strawberries varies from one variety to another. Consequently, since the description ‘smell of ripe strawberries’ could refer to several varieties and therefore to several distinct smells, it is neither unequivocal nor precise and does not eliminate all elements of subjectivity in the process of identifying and perceiving the sign claimed.

34 It is, moreover, common ground that ... there is no generally accepted international classification of smells which would make it possible, as with international colour codes or musical notation, to identify an olfactory sign objectively and precisely through the attribution of a name or a precise code specific to each smell. [...]

36 As regards ... the figurative element, the Board of Appeal stated that ‘such a representation (was) even less precise than a description in words’ on the ground that, first, ‘it (was) not possible for the competent authorities and the public … to determine whether the sign, which is the subject of protection, is the image of the ripe strawberry itself, or its smell’ and, second, the image of the strawberry [would] be replaced in the mind of the consumer by its equivalent in words ‘red strawberry’ (or) ‘ripe strawberry’, which amounts to defining once again the smell in words, such a definition having already been considered to be too vague’.

37 ... [t]here is no reason to consider that the authorities and the public will not be able to determine whether the protected sign is a figurative sign, consisting of a strawberry, or an olfactory sign which is supposed to have the same smell as ripe strawberries. Since it is stated in the application for registration that it is an olfactory mark, there can be no doubt concerning the nature of the sign registered, in the same way that the authorities and the public are able to determine whether a musical stave represents a figurative sign, consisting of lines and signs, or the melody of which the stave is the transcription.

38 Second ... the fact that the image of the strawberry can be replaced in the mind of the consumer by the expression ‘red strawberry’ is irrelevant. Any figurative representation of a mark, whatever its type, may be described in words and will be replaced in the mind of the consumer by a description whenever that description is easier to commit to memory than the figurative representation itself. ...

39 In Sieckmann ... the Court of Justice held that the graphic representation of an olfactory mark must, in order to be accepted, represent the odour whose registration is sought and not the product emitting that odour. It therefore held that the chemical formula of the substance emitting the odour in question could not be regarded as a valid graphic representation.

40 The Court of First Instance cannot but find therefore that since the image of a strawberry contained in the application for registration represents only the fruit which emits a smell supposedly identical to the olfactory sign at issue, and not the smell claimed, that does not amount to a graphic representation of the olfactory sign.

41 Moreover, that image is subject to the same criticism as the description ‘smell of ripe strawberries’. As it has been established that strawberries, or at least some of them, have a different smell according to their variety, the image of a strawberry whose variety is not specified does not enable the olfactory sign claimed to be identified with clarity and precision.

42 Consequently, the findings of the Board of Appeal in relation to the image of the red strawberry must also be upheld".
The IPKat finds this whole exercise risible. Why could not the Community Trade Mark Regulation simply have said that smells aren't registrable as trade marks and just have done with it? And why do businesses persist in wasting their time, money and effort trying to register these worthless things?

* The Case of the Irritating Orange

Case T- 336/03 Les Editions Albert Rene v OHIM, Orange A/S involved a failed opposition. Orange applied to register MOBILIX for telecommunications-related goods and services in Classes 9, 16, 35, 37, 38 and 42. Rene, publishers of the Asterix stories that featured a character called Obelix, opposed, citing its earlier Community and national trade mark registrations of the word OBELIX for a large number of goods and services and pleading a likelihood of confusion. Partially annulling the decision of the Opposition Division, the Board of Appeal allowed the opposition in respect of certain goods and services in Classes 9 and 35 but rejected it in respect of all the others. Rene appealed.

The CFI dismissed the appeal. Attempts by Rene to admit fresh evidence to support the contention that OBELIX was a well-known mark (and therefore that it was entitled to protection under Article 8(5) of Council Regulation 40/94) were rejected. Nor, having failed to oppose the application on the basis of Article 8(5), could Rene raise that ground of opposition on appeal to the CFI. As to the likelihood of similarity of MOBILIX and OBELIX, the words were at best only slightly similar in visual terms; any aural similarity was however negated by their conceptual dissimilarity.

The IPKat thinks this must surely be right and wonders whether Orange must be regretting not having appealed against the refusal of its application for some of its Class 9 and 35 goods and services.

3 New Advocate General appointed

Francis Jacobs - whose Opinions in major trade mark cases including BABY-DRY, DOUBLEMINT and DAVIDOFF have helped shape European trade mark law - retires this December as one of the eight Advocates General of the European Court of Justice. His replacement is Eleanor Sharpston QC (right), who has a longstanding interest in, and substantial experience of, European law, but who does not (yet) appear to have cultivated an interest in IP law. The Kat will be watching ...

Wednesday, 26 October 2005


The ECJ has delivered its judgment in the dispute over whether non-Greek undertakings can describe their cheese as FETA. The has found that the term FETA is not generic for a type of cheese, and therefore is protectable as a protected designation of origin for a type of white cheese soaked in brine produced in a region of Greece. Contrary to the arguments of Denmark, France, Germany and the UK, the court found that, while white cheeses soaked in brine have been produced throughout the south-east Mediterranean and Balkan region, those cheeses have not been known as FETA. Also, while there has been substantial production of cheese known as FETA in other EU countries, 85% of the EU’s FETA consumption has occurred in Greece. Greek consumers were said by the court to perceive FETA as tied to a single geographical area, while in other countries, even FETA that is not Greek in origin often makes a reference to Greek associations or culture on its packaging.

Merpel wonders whether this case was a feta compli…


1 Copyright Law in the Digital Society

A most impressed IPKat has been perusing the pages of King's College London academic lawyer Tanya Aplin's recently-published Copyright Law in the Digital Society: the Challenges of Multimedia (Hart Publishing, 2005). According to the website (in a passage also found in the book itself):

"Multimedia technology is a key component of the Digital Society. This book comprehensively examines the extent to which copyright and database right protect multimedia works. It does so from the perspective of UK law, but with due attention being paid to EU law, international treaties and comparative developments in other jurisdictions, such as Australia and the U.S. The central argument of the book is that the copyright and database right regimes are, for the most part, flexible enough to meet the challenges presented by multimedia. As a result, it is neither necessary nor desirable to introduce separate copyright protection or sui generis protection for multimedia works.

This important and original new work will be essential reading for any lawyer engaged in advising on IP matters relating to the new media industries, and scholars and students working in intellectual property and computer law".

The IPKat is always amused to see books described as "essential reading": it makes him wonder how he ever managed without them in the first place.

Merpel says, if you really want to know about the book, I'll tell you. It's developed from Tanya's thesis. While it claims to contribute a thorough examination of the protection of multimedia in the UK, it goes a good deal wider than that since the relative dearth of UK-specific multimedia case law and statutory provision - partially compensated by EU materials - stands in stark contrast with the wealth of jurisprudence and academic thought from the US and indeed Australia. The bibliography and lists of cited cases show how diligent she has been in identifying the digital/multimedia dimensions of both case law and legal writing that was often oblivious to the wider picture which she has constructed. I won't spoil the book by saying how the story ends, but I will say that it shows that the existing legal structure, despite its haphazard evolution, has more virtue and flexibility in it than might be imagined.

Bibliographical details: ISBN 1-84113-356-6. Hardback, xxxvi and 288 pages, £60. Nice blue and silvery-grey cover with white writing (and NOT as illustrated above, right).

More essential reading here.
Inessential reading here.

2 Time for reflection ...

Ananova reports that a 33 year old Belgian man, named only as Gunther R, has been jailed for six months for wearing a fake ROLEX watch. The court, in Dendermonde, heard that the man had been spotted by representatives of Rolex wearing the fake watch; they then complained to the authorities who prosecuted him. The court, ruling that the man had knowingly bought the fake, sentenced him to six months in prison under laws for handling counterfeit goods. He was also ordered to pay a £700 fine for breaching brand name registration laws.

The IPKat would like to know more about this case. While he does not condone counterfeits, six months for knowingly wearing a fake watch does seem a remarkably severe sentence. Do any of this blog's Belgian readers have any further details?

3 CLOPPENBURG not just a pretty place

The IPKat has just found this Court of First Instance decision, delivered yesterday on an appeal against a refusal to register a Community trade mark: Case T-379/03, Peek & Cloppenburg KG v OHIM. P&C applied to register the word mark CLOPPENBERG for retail trade services in Class 35. The Fourth Board of Appeal rejected P&C's appeal, taking the view that CLOPPENBERG designated a German town in Lower Saxony and that the Landkreis Cloppenburg, a territorial district to which that town had given its name, numbered more than 152,000 inhabitants in 2002. The suffix ‘burg’ (castle) was seen as indicating a place and that towns and districts of the size of Cloppenburg were regularly referred to in the meteorological reports and forecasts broadcast throughout German territory and that similar information appeared on signs which could be read by persons driving on motorways or heard by them in traffic information bulletins. The Board added that the name CLOPPENBERG designated the place where the provider of services was based and thus the place where the retail trade services had been planned and from where they were supplied. It deduced that German end users would thus perceive the word CLOPPENBERG as an indication of geographical origin.

To the IPKat's great delight, this bizarre and partly irrelevant decision has been annulled. As the CFI noted:
"41 With regard to the evaluation of the descriptiveness of the sign Cloppenburg, first, the grounds set out in the contested decision which are intended to show that average consumers in Germany know that sign as a geographical location are not persuasive.

42 In the first place, while a word ending in ‘burg’ often corresponds to a geographical location, that ending cannot of itself suffice to demonstrate that consumers recognise in the word ‘Cloppenburg’ the name of a particular town. In point of fact, that ending is used also for surnames and invented words.

43 In the second place, the Board of Appeal’s argument that towns and regions of a size comparable to that of Cloppenburg are regularly mentioned in weather reports and forecasts throughout German territory is unconvincing. In fact, weather forecasts broadcast in the whole of Germany generally take as reference points the great cities such as Hamburg, Hanover, Düsseldorf, Cologne, Berlin, Frankfurt-am-Main, Stuttgart or Munich, and mountains or large rivers. It is rare for a town the size of Cloppenburg to be mentioned.

44 In the third place, while the town of Cloppenburg may appear on motorway and federal road signs and while it may be mentioned in traffic news, the fact remains that such information is intended for a local public. First, directions given on motorway signs for the whole of federal territory are limited to large towns with well-known locations, such as those referred to in the previous paragraph. The town of Cloppenburg will be mentioned only in the surrounding area, thus being addressed to persons wishing to go to that town or region. Second, the same consideration applies to traffic news which is followed with attention only by those for whom the traffic situation in that region is of present interest.

45 Finally, the Board of Appeal has not referred to any attraction or any economic activity for which the town of Cloppenburg would be familiar to consumers throughout Germany".
This was clearly not a case like Nordmilch (Case T-295/01 Nordmilch v OHIM (OLDENBURGER) [2003] ECR II-4365, in which the name of the town was also associated with dairy produce and consumers might have taken it to be a protected geographical indication rather than as a trade mark.

Monday, 24 October 2005


1 Nepal hits the heights with copyrights

Summoning up his best school-kat French, the IPKat has discovered that the mountain Kingdom of Nepal has decided to throw in its lot with the Berne Convention on the Protection of Literary and Artistic Works, with effect from 11 January 2006. There are now 156 countries who have pledged themselves to support the Convention which, over a century ago, gave reality to the dreams of French literary giant Victor Hugo (portrayed here, left, stressing over how to invest his copyright royalties).

The IPKat hopes that WIPO will soon have recovered sufficiently from its financial impoverishment to be able to afford an English translator.

Right: the WIPO Buy-Another-English-Translator Fund - every penny counts!

2 ECC again

Part 5 of the 2005 volume of Sweet & Maxwell's European Commercial Cases has just reached the IPKat who, as usual, is scanning its pages for signs of intellectual property interest.

This issue contains three significant decisions. From the Court of Appeal, England and Wales, there's BHB Enterprises v Victor Chandler, on (among other things) whether BHB's means of exploiting its database of horse-racing runners and riders constituted an abuse of a dominant market position. There's also Barbelivien v Agence Business, a French Cour de Cassation ruling on whether public policy forbids an author from being allowed to sign away all his rights in advance. From the same court comes CCP SA (trading as FEL2) v Ginger Sarl, a case in which rescission of a contract is demanded where it turns out that the contract was for the sale of copyright-infringing clothing.


Stephen Stewart Memorial Lecture

This year’s Stephen Stewart Memorial Lecture takes place on Tuesday 15 November. The event, organised by the IP Institute and hosted at the offices of Slaughter and May features William Rooklidge (AIPLA president) speaking on ‘Reform of Patent Laws: The US Experience in Forging Legislation from Disparate Interests’. In the chair is Sir Hugh Laddie. The event is free, but those wishing to attend should return this form to Anne Goldstein of the IPI by 9 November.

Nominet Judicial Review

The IPKat must have been taking a catnap while the High Court dismissed CyberBritain’s application for judicial review of Nominet’s decision to strip it of the domain name in August. The Kat is indebted to Mark Engelman of 7 New Square, who brought the decision to his (or rather blogmeister Ilanah’s) attention when s/he was attending ICI Intellectual Property Group’s Legal Seminar last Monday. While it seems that, in principle, the decisions of Nominet are subject to judicial review, CyberBritain’s application for JR was made out of time and, in failing to use Nominet’s internal appeal procedure, CyberBritain has failed to exhaust its rights of appeal before coming to the court.

It seems that the decision is hard to get hold of – if anyone has a copy, the IPKat would be most grateful to receive it. Like Mr Engelman, the IPKat is not surprised that Nominet decisions are judicially reviewable, since it meets the traditional JR criterion that, if it didn’t exist, the Government would have to set it up.

Further coverage is a available from OutLaw

Sunday, 23 October 2005


1 Paxman vobiscum, Mr Comptroller

The prowling IPKat has found a little patent gem on BAILII: Paxman v Hughes [2005] EWHC 2240 (Pat), another early decision from newly-appointed Patents Court judge Mr Justice Kitchin (dated Friday 21 October) on the powers of the Comptroller of Patents.

Above: testing out the new drinks cooler

Paxman and Hughes were joint proprietors of a patent for a type of drinks cooler. They formed a company, Trim Cool, to sell the patented coolers. After the parties fell out, Paxman sought an order permitting him to grant licences to certain specified third parties to make and supply the coolers. Hughes objected that the Comptroller of Patents had no jurisdiction to make such an order because (i) the terms of the order would require an extra-territorial jurisdiction, (ii) the comptroller had no general jurisdiction to permit a co-proprietor to grant commercial licences to third parties against the wishes of another co-proprietor and (iii) Paxman's fiduciary duties as a director of Trim Cool stopped him even asking the Comptroller for such an order.

At a preliminary hearing Mr Probert, for the Comptroller, struck out the proceedings. In his opinion (i) the Comptroller had no jurisdiction to order the licensing of a foreign patent; if the application were not struck out, Paxman would need to amend his application to make it clear that the relief he sought was confined to the United Kingdom; (ii) the Comptroller did have jurisdiction, under the Patents Act 1977, s.37, to determine whether a licence should be granted to a third party in the circumstances of this case but (iii) the order Paxman wanted would inevitably result in his breaching his duties as a company director.

Below: the Comptroller's mission statement

Kitchin J allowed Paxman's appeal. He held that
* the circumstances of the case and the fact that Paxman's application was based on his status as co-proprietor of the patent, not as a director of Trim Cool, Mr Probert was wrong to conclude that the order would automatically constitute authorisation to do something that would inevitably amount to a breach of his fiduciary duties;

* it was plain from s.36 of the Patents Act 1977 that co-proprietors should not have the right to grant licences to third parties. Nevertheless, s.36 was expressly subject to s.37, which gave the Comptroller discretion to order licences in favour of third parties where appropriate. It In other words, where co-proprietors are deadlocked and could not exploit an invention themselves, one or other should be entitled to apply to the Comptroller and ask him to break that deadlock by ordering that a licence be granted to a third party.

* on such an application, the Comptroller had a wide discretion to grant such a licence, He could exercise it only on reasonable grounds and any order made had to protect the interests of the co-proprietor.
The IPKat applauds the judge's succinct reasoning in this decision, which lays open the entirely reasonable and pro-commercial basis of ss 36 and 37 of the 1977 Act. Merpel adds, I'm still not making any silly puns about the kitchin (sic) being the appropriate place for a drinks cooler ...

2 Competition Law and Economics

As autumn's leaves turn gold and rustle gently to the ground, the IPKat is briefly reminded of the summer when he reviews the June 2005 issue of the Oxford University Press quarterly Journal of Competition Law & Economics which has recently squeezed in through his letter box.

Moaning as usual about how little of the subject matter seems to address intellectual property rights, the IPKat has to concede that there is a wider picture of which IP forms just one small corner. However, in the absence of anything that's IP-specific, Merpel notes that 'Class Certification in the Microsoft Indirect Purchaser Litigation' by William H. Page (left) is not only really very interesting but can even be made relevant to IP policy enthusiasts. Class actions, whether brought by IP licensees or by purchasers of monopoly products, represent an absolute Amazon basin of unexplored legal and commercial issues arising from the attempts to balance the IP owner's power with the interests of those who are subject to it.


Good news from OHIM! In 2003, the Office set a number of key performance indicators and quality time standards in CTM procedures and it announced last week that it met every one. The increase in productivity is attributed to the fact that OHIM reorganized its operative departments, redesigned its working procedures, redistributed competences and re-trained it examiners. A reduction in the backlog of work can be seen in examinations and oppositions and each step of the process involved in registered a CTM is taking place more quickly.

The IPKat hopes that this increase in speed hasn’t be achieved at the expense of thoroughness of examination. He remembers that the reorganisation led to industrial action by OHIM workers (covered here – scroll down to 26 January), who argued that efficiency was being given priority over sufficiently detailed examination.

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