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).

Saturday, 27 September 2008

USPTO/EPO clogs up the prosecution highway with red tape

The EPO has just announced that the Patent Prosecution Highway (their capitals) is due to begin on 29 September.  This scheme will allow patent applications that have been examined and allowed in either the USPTO or the EPO to be fast-tracked in the other office.  The programme will run for a trial period of 1 year, after which the offices will assess whether it is worth being fully implemented.  

For any European applicants who wish to take advantage of the programme, there will be a few requirements to meet:

(1) The EP application is a Paris Convention application validly claiming priority to one or more applications filed in the USPTO. [The IPKat presumes this rules out the majority of applications, which use the PCT system]

(2) The USPTO application(s) have at least one claim that was determined by the USPTO to be patentable/allowable. Applicant must submit a copy of the patentable/allowable claims from the USPTO application(s). [Why is this even necessary? Everyone knows how to use the EPO and USPTO register nowadays, don't they? Isn't this simply red tape for the sake of it?]

(3) All the claims in each EP application for which a request for participation in the PPH pilot programme is made must sufficiently correspond or be amended to sufficiently correspond to the patentable/allowable claims in the USPTO application(s) [This is very odd. Why not just allow applicants to say: "We want to go with the claims allowed in EPxxxxxxx/USxxxxxxx"?]. Claims will be considered to sufficiently correspond where, accounting for differences due to claim format requirements, the claims are of the same or similar scope [If it is simply a matter of format, surely the US or EP examiner can easily suggest the required amendments?]. Applicant is also required to submit a claims correspondence table in English [Not French or German then?]. The claims correspondence table must indicate how all the claims in the EP application correspond to the allowable claims in the USPTO application(s). [Surely pointless: see above]

(4) Examination of the EP application for which participation in the PPH pilot programme is requested has not begun. [Doh.  What would be the point of doing it otherwise?]

(5) Applicant must file a request for participation in the PPH pilot programme programme. A request form (EPA/EPO/OEB 1009) will be available from the EPO website at on 29 September 2008. [Oh dear, more forms.  What is the problem with saying "We request that this application is entered into the PPH pilot programme? Is this not clear enough?]

(6) Applicant must submit a copy of all the Office actions (which are relevant to patentability) from each of the USPTO application(s) containing the allowable claims that are the basis for the request. [Yet again, more unnecessary paperwork.  All the prosecution history from each office is available online to each examiner, who can peruse it at their leisure.  Why the need for more photocopying?]

(7) Applicant must submit copies of all the documents cited in the USPTO Office action and translations thereof in one of the EPO official languages except EP patents or EP patent application publications. [Yet again, totally unnecessary, since everything is readily available online]
The IPKat can see how this sort of programme could ultimately be useful to the EPO and USPTO, and to a limited selection of applicants, but thinks that the whole thing is so unnecesarily bound up in red tape that there are distinct disincentives to use it.  Assuming it does not apply to ex-PCT applications, the number of applications that will fall within the criteria are in any case inevitably going to be quite small (but this is probably deliberate).  

The IPKat cannot see how a simple request to enter the programme, citing the corresponding application, would not be sufficient.  All the information needed to begin the process could be summarised in two lines at most, so why the need for all the extra paperwork?  Even if everything is carried out online, what is the point of duplicating all the material required, which is in any case already readily (and in most cases freely) available?  This seems to be a wasted opportunity for improvements to be made in how the system operates, and more like yet another way of making applicants jump through silly hoops to get the system to work for them. 

Friday, 26 September 2008

Friday fix-ups

The number of events listed in the IPKat's efficiently-updated 'Forthcoming Events' feature, which lives on the left-hand side-bar of this weblog's front page, stands at 49. FREE events are listed in this charming shade of purple ... but the colour may change suddenly and without notice, so you have been warned.

He tries very hard to avoid the temptation, but the IPKat drifts in the general direction of The Register ("Biting the hand that feeds IT") more often than he'd like to admit. And that's where he found this delicious item concerning the Cleveland (UK) Police. The very same squad of elite enforcers that has brought six people to court for alleged involvement in the OiNK BitTorrent network has not been paying licensing fees for the music played in its canteens, it seems.

From Howard Knopf's excellent Excess Copyright blog, Canada, comes information concerning proposals to introduce a statutory defence to copyright infringement in respect of works of parody and satire. Howard writes: "That leaves Canada alone without an actual satire or parody right or a willingness to seriously consider it amongst the major common law jurisdictions to which we normally compare ourselves. Even France, where copyright is taken very seriously, has such a right". The IPKat is in two minds about who has got this one right. Satire or parody based on a work whose copyright owner can't sue for copyright infringement, thus making himself look even more foolish in the process, misses out on half the fun. It's a bit like sticking your head inside the mouth of a lion on tranquilisers. Merpel adds: come on, Canadians -- first show us your satire and parody! Then we'll decide if it's good enough to merit protection. Incidentally ... Google hits for "Canadian satire": 3,070. Google hits for "Canadian parody": 1,150. Google hits for "Lumberjack Song": 93,200 ...

Inspired both by the O Canada item below and the parody item above, the IPKat took at peek at both the English and the French versions of O/Ô Canada. They go like this:

O Canada!Our home and native land!
True patriot love in all thy sons command.
With glowing hearts we see thee rise,
The True North strong and free!
From far and wide,
O Canada, we stand on guard for thee.
God keep our land glorious and free!
O Canada, we stand on guard for thee.
O Canada, we stand on guard for thee.

Ô Canada! Terre de nos aïeux,
Ton front est ceint de fleurons glorieux!
Car ton bras sait porter l'épée,
Il sait porter la croix!
Ton histoire est une épopée
Des plus brillants exploits.
Et ta valeur, de foi trempée,
Protégera nos foyers et nos droits.
Protégera nos foyers et nos droits.

Something tells him that these verses -- just like those of pretty all the other national anthems he has come across -- are crying out for a little parody, particularly if it has an intellectual property theme [Merpel notes, WIPO does not yet have its own anthem; perhaps Canada's can be put to transformative use]. There's no prize, but the Kats would love to see their readers' best efforts. Just send them here, with the email subject line "Anthem".

O Canada

The Canadian Press reports that the organisers of the 2010 Olympic Games have applied to register two lines of the Canadian national anthem as trade mark: "with glowing hearts" and "des plus brilliants exploits". The two lines of the anthem, which is out of copyright, have been adopted as slogans for Canada's hosting of the games in 2010. Canada has already passed legislation to protect words which wouldn't normally qualify for trade mark protection, such as 'winter'.

As the article points out, the trade mark would only be able to be used to crack down on traders selling Olympic merchandise, rather than people actually singing the national anthem.

The IPKat notes that problems related to overlaps in IP protection involving trade marks normally involve product shapes, not words, so this throws up different potential problems. Surely here there are good grounds for objecting to even a limited taking out of the public domain of elements of Canada's cultural heritage? As a general principle, the IPKat doesn't really understand why the Olympics are treated as such a special case for being granted extra protection. Do they really differ that much from other commercial sporting events?

The Law and the Profits: 10 commandments for IP finance?

Writing in the October 2008 issue of the WIPO Magazine, IPKat team member Jeremy has tried to enumerate some of the key issues that IP owners -- and those involved in IP transactions -- have to bear in mind when finance issues arise. His short article "IP Financing -- The Ten Commandments" has a stab at listing the five most important "dos" and the five correspondingly significant "don'ts" for IP owners. These are listed below. Readers of this blog are invited to post their comments below, preferably with reasons attached ....

Thou shalt …

1. Identify your IP clearly. Inventors make inventions. Designers create designs. But it’s the lawyers who create IP rights when they examine a newly-created concept and proclaim it to be comprised of various different intellectual properties. Thus an inventor may come up with a new torch, but to a legal specialist there’s a patent for the functionality, a design for the shape, a possible trademark again for the shape, and so on. If you are pledging IP to a lender or licensing it to a manufacturer, be sure to know what exactly it is that you are dealing with.

2. Read the small print in finance documents. Not just banks but all commercial lenders are sensitive about their money. They are as excited about their money, which is their principal asset, as the IP innovator is excited by his new creation. This is why they include terms in a contract for the financing of IP development that are for their own protection. So read the details of the contract and, if need be, have them explained to you. If consumers refuse to buy the exciting new widget for which a bank has advanced cash on the security of some patents, and the borrower defaults, does the bank just get to keep the patents, or can it collect on your work-tools, your car or anything else?

3. Keep proper records. Particularly if you have received public funding – or if you are called to account for not having used investment cash for the purposes for which it was lent. Proper records may be a pain to prepare but they can protect you from untold annoyance and embarrassment later.

4. Recognize your limitations. The modern creator rarely has all the plant, equipment, know-how and management skills to take a project from drawing board (or computer screen) to marketplace. Don’t spend time and money learning what you can buy from or outsource to others, unless it makes business sense to do so.

5. Make contingency plans. Even the best plans can go wrong; this is certainly the case with business plans for innovative products and services. By definition, no one has ever done what the IP owner hopes to do, so the past gives few clues as to how the future will turn out. That’s why it’s wise to have a Plan B. Keep asking “what if …?” questions and see what answers emerge. If there is no realistic Plan B, ask if it’s worth taking the financial risk of developing the IP in the first place.

Thou shalt not …

6. Don't be greedy. Most IP rights generate little or no profit on their own, but they can prove valuable when combined with the products or services of others. A chef’s new pizza recipe will earn him more if he licenses its use to a chain of franchised outlets –even if the chain makes more from each pizza than he does – than if he opens his own pizzeria and spends his days policing competitors in case they copy his delicious product.

7. Don’t overlook other people’s IP rights. The value of an IP right might be entirely contingent on receiving permission from other IP owners to use their IP. For example, a patented lubricant that cannot be made without infringing a patent for the original version of it. Payments to other IP owners can be substantial – and their existence must always be disclosed to potential lenders on security, since they will sue the borrower if a secured IP turns out to be unusable in this way.

8. Don’t forget the dynamics of the marketplace. It is easy to view the commercialization of an innovation as being literally the ‘last word’, the dawn of a halcyon era in which a new product is manufactured, distributed, purchased and profitably marketed until the end of time. This rarely happens. Competitors rise to the challenge of innovating around any successful new product in order to share, or improve upon, its money-earning ability (who still uses portable cassette players?); fashions and tastes change (how much revenue would a new Bing Crosby song generate in 2008?); even the environment takes its toll, as dazzling new contrivances are rejected for their carbon footprint. The moral is clear: when computing how many years of income you may enjoy, during which you hope to pay off a loan or redeem a mortgaged IP right, be realistic: you may have far less time than you think.

9. Don’t overlook the effect of ‘leakage’. Copyright in works such as sound recordings can be difficult to police and enforce in a world inhabited by private copying devices, even though those works are hugely profitable at launch. If IP rights cannot plug infringement leakage, works may remain hugely popular, but the stream of income from them may diminish to a trickle.

10. Don't borrow more than you need. Public funding usually doesn’t have to be paid back, but the private sector does – and the lender gets his profit by charging interest or its equivalent. This means that, over the period of the loan, you may have to repay far more than you borrowed. To reduce the risk of doing this, (i) only borrow as much as your budget suggests you need, and (ii) don’t borrow it until you really need it, or you’ll be paying interest on the loan before you’ve been able to put it to use".

Thursday, 25 September 2008

The UK-IPO's thoughts on inventive step: "nothing to see here, move along please"

The IPKat thinks that those nice people at the UK-IPO must have had a slow summer, as they have been making work for themselves in thinking yet again about the requirement for an inventive step in patent applications, in particular whether the requirement is being correctly applied across the different fields of invention they deal with. As they say, following a review of inventive step back in 2006 (noted by the IPKat here and here), and the responses they received as a result (noted by the IPKat here), the UK-IPO has been carrying out "further internal work" to assess the consistency of application of the inventive step test in different technological areas.

The UK-IPO have now issued a new report of their thinking following this work, and apparently welcome comments or thoughts on the emerging conclusions. Given that they received only 26 responses to the initial consultation, this is probably being a little hopeful.

The IPKat has taken a look at the report and sees that the conclusions the UK-IPO have arrived at are hardly earth-shattering. They can be quite effectively summarised in the final line, which states: "there does not appear to be a problem of inconsistency in the application of the inventive step test over different technology areas". The report, nonetheless, makes several recommendations on how inventive step should be assessed, particularly in light of the slight revision of the Windsurfing test in Pozzoli. The authors are concerned, although not necessarily troubled, that examiners do not tend to pay much attention to assessing who the hypothetical skilled person might be, and what common general knowledge might be imputed to them, but they think that is not really a problem because lots of inventions are quite complicated.

The IPKat wonders whether users of the system, particularly those with experience of a wide range of subject matter, would agree with these conclusions. Merpel, being pernickity as ever, is troubled by the extensive use of 'CGK' in the report, as it seems to suggest a worrying trend towards an American-style obfuscatory approach to aspects of patent law, which she is very much against. We should all start worrying when they start referring to the NSBUAITAATPA...

OHIM fees fudge: the MARQUES response

On Monday the IPKat posted the compromise solution for resolving the OHIM fee crisis (see here for background and details). In response to the document in question, ”How to better balance OHIM’s budget – the way forward” (this being the compromise solution as proposed at last week’s Joint Meeting of the administrative Board and the Budget Committee of the OHIM), MARQUES -- the Association of European Trade Mark Owners -- makes the following statement (the key passage being highlighted by the IPKat):

"The proposed compromise will result in a significant reduction of the fees for registering a Community trade mark (CTM). The proposal is that the combined cost of applying for and registering a CTM would be reduced from €1,750 to around €1,000. In future there will be one application fee and no registration fee, which will reduce administration both for OHIM and applicants. MARQUES welcomes this reduction as well as the proposal to put the fees together into one.

Users have been supporting the concept of an automatic review procedure according
to which the OHIM would set the future fees in consideration of financial results of
past years and future budget planning and which could result in both reduction and
increase of fees. However, the compromise solution proposes a regular biannual review by the Commission. While this mechanism is more bureaucratic than the original proposal, MARQUES accepts it as a compromise on the basis that the lengthy discussion and debate that have been experienced in the past can be avoided to a
much greater extent.

A Cooperation Fund will be established using 50 million Euros of the OHIM surplus
for use by the national offices of member states for various projects for the benefit of users. The nature and scope of these projects has yet to be decided but it will be in close consultation with users and such projects will be carefully audited. However, greater flexibility will be sought than was the case with previous cooperation funds.

MARQUES would approve of the creation of a Cooperation Fund on the basis that
users are directly involved in judging the projects that are approved as worthy recipients of funding.

The creation of a reserve fund of around 190 million euros is foreseen. While
MARQUES feels that the amount is quite large, it appreciates that OHIM needs some kind of reserve in order to hedge against reverses in the future.

Finally, the compromise solution includes a proposal to distribute to the National Offices of Member States an amount equivalent to 50% of the renewal fees. It is foreseen than this money will replace the Cooperation Fund in due time and the plan is to ensure that the funds would be used for purposes closely related to protection, promotion and enforcement of trade marks and designs. Again, users will be closely consulted about this.

It is more difficult for MARQUES to accept this part of the compromise solution in view of the fact that MARQUES has consistently spoken against diversion of fees, both on the OHIM level as well as on the national level. MARQUES has conducted research that demonstrates that in a number of Member States national fees are diverted into national state budgets. MARQUES is very concerned that diversion of
CTM fees to national offices will result in a corresponding decrease of the budgets of these particular offices, which will make the problem of diversion on a national level even worse.

It is highly desirable that measures are taken to promote financial independence of
all National Offices, and until this is fully implemented, it is equally important that it is ensured that any funds transferred from OHIM to national offices are used to increase the abilities of an office to improve its services to users and to society.

MARQUES notes that the distribution criteria for the 50% renewal fees are to be defined in a way which would guarantee a minimum amount for each Member State.

MARQUES assumes that the totality of these minimum amounts could not at any
time exceed the 50%.

MARQUES would have strong expectations of any office that were to receive means
as proposed by the compromise solution. Some of these expectations could also be met through applications to the Cooperation Fund and would include the following items:
- Offices will create and maintain electronic databases which are made available
for free on-line searching over the Internet
- Offices will create and maintain databases for rights that have been claimed
as seniorities
- Offices will make the data freely and fully available to the TMView project
- Offices will work to develop the EuroClass system of agreed classification
- Offices will have options for on-line filing with credit card payment facilities
- Offices will put in place and encourage electronic communication with users,
OHIM, EPO and WIPO so as to cut back on paper, inefficiencies and duplication
of work and manual updating of data
- Offices will display transparency in their accounts and will specify their income
and expenses in a way that will i.a. disclose the origin of income
- Offices will demonstrate an understanding of their dual role, i.e. to register
rights efficiently and with cost-effective procedures on the one hand and to
promote the value of IP towards companies and society in general on the
other hand
- Offices will work with users, both local and European, to improve communication
and services

The remainder of the current OHIM surplus is to be used in the interests of users and the Commission is being asked to study this issue in consultation with users.
MARQUES welcomes this initiative and will be pleased to participate in the study.
MARQUES has been informed that the compromise solution would bring the OHIM’s budget into balance and trust that any future change in CTM or RCD fees would not
spark similar procedures.

With the above statements in mind MARQUES would be willing to support the compromise solution and to work in a positive spirit with all parties involved to ensure that the proposals are implemented in an appropriate way".

Wednesday, 24 September 2008

Upcoming QMIPRI Events

The Queen Mary Intellectual Property Research Institute (QMIPRI) is hosting two very special events in the next couple of weeks.

The first in this season's Herchel Smith series, Creative Archives: Archives in Creativity in Research, will be held Monday 29 September at QMIPRI, 67-69 Lincoln's Inn Fields, London. Speakers include Marko Daniel (Tate Modern), Neil Cummings (artist, ChanceProjects), Andrew Kenyon (University of Melbourne) and Judith Sullivan (IP Consultant). As always, the seminar is free and open to the public, but places go quickly so make sure you register to QMIPRI. The seminar is accredited for 2 CPD.

The second is the exciting collaboration with the Software Information Industry Association (SIIA) to stage the one day symposium, Software Cultures Hardware Laws, 2 October 2008. Speakers from civil society, government, practice and academia from the US and Europe will debate the issues. The conference attracts 6 CPD.

For information on these and other events and news, visit QMIPRI events and news pages. If you would like to be on the mailing list, email QMIPRI.

We look forward to seeing you there!

(At left: Hearing about the refreshments, the IPKat registers for these value-added events early)

Bad luck for Harry; do you want to be a policy advisor?

Puttar beats Potter

According to Reuters, Harry Potter has failed to cast his spell over the Delhi High Court. The Court has held that Hari Puttar: a Comedy of Terrors can be screened. Warner Brothers failed to convince the court that the title was too close to Harry Potter. According the court, a Hindi-speaking rural child wouldn't have heard of Harry Potter while an English speaking city-dwelling child would know enough about Harry Potter to not mistake him for Puttar, a child left alone in London by his parents, seemingly without magical powers.

The IPKat can see that confusion was unlikely to be an issue here, but he's left with the distinct feeling that the combination of 'Hari' and 'Puttar' wasn't quite coincidental. He feels a little sorry for Warner Bros - if they hadn't brought this action, who, outside of the Hindi film-viewing market, would have heard of Hari Puttar?

UK IPO Policy Advisors

Ever wanted to win friends and influence people? The UK IPO is offering you the chance to do the latter. It's advertising five new positions as Policy Advisors in the Copyright and Enforcement Directorate and International Policy Directorate. According to the advert 'If you take up this challenge you’ll be involved in driving forward policy in a key area for the UK - building relationships with industry, NGO’s and negotiating with and influencing European and international counterparts.'

Diplomacy never was Tiddles' strong point

More details here.

"My name's Pat, ... Postman Pat"

Following the example set by Disney in keeping Mickey Mouse both fashionable and highly IP-protectable through a succession of makeovers, The Daily Mail reports that the world's best-known fictitious Cumbrian character, Postman Pat, has been updated too. For years, Postman Pat has relied on his trusty van (right) and his black-and-white cat Jess. Now he has been equipped with a gyrocopter (below, left), a motorbike with sidecar and what the newspaper -- having carefully studied the ECJ's ruling in Case C-2/00 Michael Hölterhoff v Ulrich Freiesleben -- non-infringingly calls a "BlackBerry-style" mobile phone.

The news item describes "a ‘high-octane’, ‘energetic’ Pat, who has been compared to James Bond by his makers and who ends each episode by declaring: ‘Mission accomplished.’ Jane Smith, chief commercial and creative director of Entertainment Rights, the company behind Pat, tellingly reveals:

"He is more heroic. Previously, Pat was everybody’s friend, everybody’s local postman. 'He is now everybody’s local hero because he has so many more challenges in his job. He delivers everything and anything – animals, bouncy castles, live bats, a runaway cow – and he has a mission every episode. 'There is a lot more action; children are used to seeing a lot of fast-paced programmes now".
Postman Pat has been broadcast in more than 150 countries, including China, with book sales of 15 million.

The IPKat notes that James Bond is being 'refreshed', in consequence of which, in Quantum of Solace, he will no longer be delivering his trademark (sic) line: "My name's Bond, ... James Bond". This clears the way for Postman Pat to break the ice by opening: "My name's Pat, .... Postman Pat". Merpel just wonders whether Postman Pat is ever called on to deliver infringing goods purchased from Dodgy Rolex websites ...

Official Postman Pat site here
More than you ever wanted to know about Postman Pat here

Tuesday, 23 September 2008

WIPO -- New DG's first words ...

The Acceptance Speech of new World Intellectual Property Organization Director-General Francis Gurry, delivered yesterday to the WIPO General Assembly, has now been posted on the WIPO website here. Following the various polite and diplomatic things he says are the substantive IP bits:

"The evolution of technology, the economy and global society in recent years has raised a number of challenges of a fundamental nature for this Organization. The most fundamental of all is perhaps the new attention that is directed at intellectual property. As a highly specialized subject matter, intellectual property enjoyed many long and quiet years in the shade before, quite suddenly, in the last two decades, coming under the full glare of the blazing sun of public opinion and scrutiny. The management of this climate change in the world of intellectual property is itself a major task.

In this regard, it is useful to remember that intellectual property is not an end in itself. It is an instrumentality for achieving certain public policies, most notably, through patents, designs and copyright, the stimulation and diffusion of innovation and creativity on which we have become so dependent, and, through trademarks, geographical indications and unfair competition law, the establishment of order in the market and the countering of those enemies of markets and consumers: uncertainty, confusion and fraud. In the end, our debates and discussions are about how intellectual property can best serve those underlying policies: whether modifying the international framework will enhance or constrain innovation and creativity and contribute to their diffusion, and whether it will add confusion, rather than clarity, to the functioning of the market.

There are a number of developments affecting the institution of intellectual property as we have always known it that risk impairing its capacity to deliver on its basic mission of stimulating innovation and creativity and contributing to market order. WIPO needs to anticipate and to address directly the implications of these developments.

A first such development is the sustained trend towards the infusion of technology into every aspect of our daily lives and into every part of economic existence. As the trend has accelerated, the economic value of innovation has increased and, with it, the desire to acquire property rights over the frontiers of knowledge. When the Paris Convention for the Protection of Industrial Property was first concluded in 1883, there were approximately 80,000 patent applications, or new technological solutions, filed around the world. Last year the number was 1.7 million. As Arthur Conan Doyle said, “Knowledge begets knowledge, as money bears interest”.

The functional consequence of this trend is that the system is becoming a victim of its own success. Patent Offices are choking on demand and struggling to perform in a manner that is timely enough to be responsive to the needs of the economy. There are an estimated 3.5 million unexamined patent applications in the world today. The quality of the output of Patent Offices, pushed to cope with such strong demand, is also under critical scrutiny. The Patent Cooperation Treaty (PCT), the financial backbone of this Organization, was designed to provide a multilateral means of dealing with the growth of demand and internationalization of the patent system. While it has been a major example of success in international cooperation, for various reasons, related more to the behaviour of actors in the system than to the system itself, it is not providing a sufficiently adequate solution to the crisis in demand management. The problem is of such a critical and urgent nature that a solution will be found. It is of fundamental importance, I believe, that the solution be a multilateral one, rather than one established by a group or groups of the most adversely affected States. The PCT provides a better basis for constructing the future solution than any other one under consideration or in the range of current imagination.

In the area of creative works - the artifacts of our culture - the challenges are even more fundamental. The twentieth century model of returning value to creators, performers and their business associates, which relied on the distribution of physical packages containing the works, is under the most radical of threats from the convergence of expression in digital technology and the distributional power of the Internet. This development may well work to the special disadvantage of the developing world, where creators and performers do not have the same access to the Internet, bandwidth and alternate models of obtaining financial rewards as their counterparts in the developed world.

For the whole world, incentives to the creation of content for the educational system and the enrichment of our lives with literature, music, films and other creative works are fundamental questions. As in the case of the choking of the patent system, solutions will be found. Perhaps here, the market itself may find the solutions in systems of private law and in the private application of technological solutions. Perhaps those solutions would be appropriate. But it would be unfortunate if we were to move from a centuries-old system of publicly created and overseen rights to systems of private law simply by default, as opposed to conscious choice. The discussion is not an easy one. In each country, there are many more consumers than creators and performers, making the political management of the discussion uncomfortable. This feature of domestic politics, as well as the global nature of file-sharing on the Internet, suggests that it may be more appropriate to conduct the discussion at the international, rather than the national level. The Berne Convention, one of the origins of WIPO, was founded in the nineteenth century as a consequence of the concern of authors about the impact of the international movement of their physical works. I believe that WIPO remains the right forum to conduct the discussion in the twenty-first century about the same question dressed in different technological clothes.

The widespread illegal downloading of music and films from the Internet raises more generally the question of respect for intellectual property. Very significant developments have occurred also in the counterfeiting of physical products. The phenomenon has long ceased to affect only luxury goods and has spread to many other sectors of the economy, raising serious concerns for health and safety and consumer protection. Organized crime has become a major participant. On one estimate, the value of counterfeit goods in international trade exceeds $200 billion per annum. Plurilateral accords to deal with the scourge are under active consideration. The risks to health and safety and to consumer protection, however, are present globally and the illegal activity occurs everywhere and not only in specific localities. Reflection is needed, therefore, on the appropriate role in this area for WIPO, the international organization responsible for intellectual property. Should that role be confined to awareness-raising and the training of customs officials, the police and the judiciary? Or should it encompass a more robust engagement and, if so, alone or in cooperation with other concerned international agencies?

So far I have referred to factors in the external environment that pose risks to the functioning of the intellectual property system as it stands today. No less important, however, are the developments that call upon the intellectual property system to broaden its horizon and to make its mission more attuned to the collective consciousness of the international community.

First and foremost is the question of how intellectual property can contribute to the reduction of the knowledge gap and to greater participation on the part of the developing and least developed countries in the benefits of innovation and the knowledge economy. The differences that exist are well known to all of us, but are perhaps most starkly illustrated by the fact that a number of corporations now each spend more each year on the generation of new knowledge than the majority of Sub-Saharan countries each have available to spend on the whole of their countries’ needs in all fields of government, including education, the health system, infrastructure and so forth. Overall, across the world, a trillion dollars is spent each year in research and development. Intellectual property alone is not going to bring about the solution to differential levels of development. But the recent consensus in this Organization on a Development Agenda provides a wonderful opportunity for the Organization to be part of the solution.

For the Development Agenda to fulfill this promise, I believe that it essential that we translate the political consensus into concrete and effective projects. The opportunity exists for the Organization to construct a global knowledge infrastructure, comprising public, freely available databases of technological and scientific information and operating on common standards for data interchange. Such an infrastructure would contribute in a practical way to sharing the social benefit of intellectual property systems. Through office automation and training, intellectual property offices and research institutions and universities in the developing world could be equipped to participate in this infrastructure.

The Development Agenda offers equally an opportunity for WIPO to review the effectiveness of its service delivery in the area of capacity building. I believe that the adoption by countries of National Intellectual Property and Innovation Strategies, which WIPO could assist in developing, where so desired, would provide excellent vehicles for aligning the capacity-building activities of the Organization with the economic resource base and the economic objectives and priorities of countries.

The Development Agenda and WIPO’s capacity-building activities also provide an opportunity to address the special needs of the Least Developed Countries (LDCs). I propose to build upon my predecessor’s initiative of establishing an LDC Division by strengthening the human and financial resources in this Division.

There is also a dimension to the Development Agenda which reaches beyond capacity-building and infrastructure and which calls for a continual analysis and reflection on the best means of making intellectual property work to the advantage of all countries, regardless of their level of development. It is not a simple reflection. The Secretariat needs to be better equipped with resources for economic research and statistics in order to provide the Member States with a sound empirical basis for the reflection. I intend to establish a Division for this purpose. Its mission will be to provide impact studies to support Member-State processes; to anticipate developments affecting the world of intellectual property; and to equip management with the means of identifying future strategic developments that may impact upon the Organization.

The protection of traditional knowledge and traditional cultural expressions is another area that has been identified as a means of broadening intellectual property to make it more responsive to the needs of the developing world. The same phenomena of a globalizing economy and the advances in communication technologies have exposed special vulnerabilities of indigenous peoples and traditional communities to the unfair loss and appropriation of the products of their traditional knowledge systems. In the course of addressing these vulnerabilities, it has become apparent that there is a need to recognize explicitly the contribution to human society of collectively generated and maintained innovation and creativity and to protect the artifacts of that innovation and creativity. The Organization has undertaken a long process of discussion and negotiation on the means of meeting this need. I believe that it is time to move this process to concrete outcomes that will see WIPO embrace a broader base of constituents and a more universal mission.

WIPO is not alone in facing challenges of a fundamental nature. The nature of our carbon-based technological society, and our increased interconnection and interdependence, has created a series of problems that preoccupy the international community because of their gravity and potentially destructive impact. Many of these challenges have been identified in the Millennium Development Goals. Others have been identified through the collective expression of concerned Governments, commentators, the media and civil society. They include climate change, desertification, epidemics, access to health care, food security and the preservation of biodiversity. History shows that human society has usually turned to technology, the application of science to the solution of practical problems, as one of the principal means for dealing with threats and difficulties confronting society. Policies designed to stimulate the creation and diffusion of technology are thus directly relevant to the consideration of the ways in which the global community can respond to the problems.

That relevance calls for more active engagement by this Organization in the dialogue and search for solutions that takes place in the international community. I propose to establish a Division in the Secretariat that will have this engagement as its mission, focusing on the specific contribution that intellectual property and WIPO can make within the framework of collective action to address these global challenges. It will provide, I hope, a means of bringing the Organization into closer cooperation with the rest of the United Nations system, an opportunity for greater interaction between the Organization and its Member States and a concrete demonstration of the relevance of intellectual property.

In order for WIPO to address the challenges that I have outlined – and there are others that time does not allow me to canvass – we need a functional Organization. The Organization is not, of course, the Secretariat. It is the Member States and the Secretariat, as well as an increasingly large and active body of users of its services and non-governmental stakeholders. A precondition to the effective functioning of the Organization is trusted communication between these various actors. This will be a priority from the outset. I shall endeavour to find ways in which to communicate better to all our constituents and to intensify the dialogue between constituents.

As far as the Secretariat is concerned, the Member States in recent years have made clear their desire to improve its functioning and performance. I plan to undertake a thorough process of strategic realignment in the coming years. It will cover the corporate culture of the Secretariat, the efficiency of our business processes and the alignment of our programs, structure and resources to the Organization’s strategic goals. It will unfold in a measured, systematic and professional manner, with full and transparent communication both within the Secretariat and between the Secretariat and the Member States. It will take several years to accomplish. Even then, the pace of change in the external circumstances confronting the Organization is such that the process might more properly be considered as a continuing one. To my colleagues in the Secretariat, I would emphasize that the process will be, and will require, a collective effort and I look forward to working with all of you and count on your support.

As far as the Member States are concerned, I have sought to indicate the main challenges that I consider lie before the Organization. I have offered more questions than solutions, which I think is appropriate for a Chief Executive of a Member-State-driven Organization. The questions challenge the capacity of multilateralism to provide timely responses.

In this regard, it is worth recalling the quickening pace of technological change. It took humanity five million years to progress from the point where it began walking on two feet, thus freeing its hands for purposes other than locomotion, to the development of the first stone tools, then 1.8 million years to the mastery of fire, 700,000 years to the agrarian revolution, only 12,000 years to the industrial revolution and a mere 140 years to the information revolution. The questions that confront intellectual property are, in many ways, generational questions and it would be a pity to see them squandered in polemics and in the narrow considerations of local politics. The challenge for the multilateral community is that these generational questions are arising more and more frequently because the pace of technological progress is reducing the time separating the generations. Responding to the questions will require our combined ingenuity and versatility".
The IPKat says, so far so good -- and it's good to see IP viewed as a "generational issue" rather than an absolute and immovable value that is fixed for all time. He looks forward to the ingenuity and versatility, but suspects that they will be displayed in inverse proportion to the amount of lobbying, political correctness [another generational issue?] and diplomatic pomposity to which the new WIPO team at the top is exposed. Merpel says, it would be nice to see a clear reference to cooperation with the World Trade Organization, to make sure that the Twin Powers of world IP are pulling in the same direction -- but it's probably premature for the making of such welcome noises.

Monday, 22 September 2008

STOP PRESS! OHIM fee scandal comes closer to resolution

The IPKat has just received a Press Release from MARQUES, the Association of European Trade Mark Owners, that is so hot it is absolutely sizzling! It contains information concerning the Extraordinary Joint Meeting of the Administrative Board and the Budget Committee of the OHIM [=Office for Harmonisation in the Internal Market], which took place on the Thursday and Friday of last week (while the MARQUES conference was in full swing). The Press Release goes as follows:

"How to better balance OHIM’s budget – the way forward”

MARQUES has actively participated in the debate regarding the CTM [=Community trade mark] fees since years before the first reduction in 2005. MARQUES supported the compromise to make the national searches undertaken in connection with CTM applications voluntary and accepted the set-up of the so-called cooperation agreements between the OHIM and the national offices which resulted in 2007 in a transfer of 1.8 million € to national offices for services performed in connection with the CTM and the RCD [=Registered Community design].

Notwithstanding the 2005 measures the surplus of the OHIM continued to grow.
MARQUES continued to push for benefits to industry, including a further reduction of fees, and to speak against diversion of fees, whilst at the same time taking the initiative to create the Trademark Users’ Forum that has met twice a year since 2005. The Forum focuses on supporting the work of national offices by analysing the needs of businesses and identifying relevant services in an attempt to bridge the gap between users and national offices on a European level.

The above extraordinary meeting was announced and discussed at the opening of
the MARQUES Annual Conference last week, and MARQUES wishes to inform
members, delegates and other interested parties of the compromise solution that is
being put forward as a result of the meeting.

You can find the summary on the MARQUES website at and at the OHIM website at

MARQUES will study the compromise in order to take a position later this week".

The compromise solution is contained in a two-page communique. Its main bit is as follows:

"On the abovementioned proposed package of budgetary measures, the results of the discussions are the following:

- As regards to the proposed fee reduction a new very straightforward proposal
emerged during discussions, which would not only substantially reduce the fees,
but simplify the fee structure and result in a significant reduction of administrative burden in relation to the handling of fees. This would consist of concentrating the impact of the fee reduction on the current registration fee, and bringing the combined value of the application and registration fees down to around €1,000 [this is welcome, says the IPKat, and 1,000 is a nice round sum that's easy for simple souls like CTM applicants to remember].

- Furthermore, as an alternative to the proposed automatic reduction mechanism of fees, Member States considered a regular biannual review of the financial situation of the Office by the Commission to be more appropriate in order to making the necessary proposals in the commitology [the IPKat couldn't find this word in his dictionary: it must be Eurospeak ...] procedure with a view to balancing the Office’s budget.

- Member States have supported the proposal of distributing to the National Offices of Member States an amount equivalent to 50% of the renewal fees in accordance with distribution criteria to be defined in a way which would guarantee a minimum amount for each Member State. It should be specified, in the Council Regulation 40/94, that the transfer of 50% of renewal fees should be done in a way that would ensure that the funds would be available to the Member States’ National Offices and would be used for the purposes closely related to the protection, promotion and/or
enforcement/combat counterfeiting of trade marks [the IPKat's sure that the Member States are pleased to see this money repatriated, but wonders what the businesses whose money it used to be it may be feeling. Merpel asks, can anyone tell her what national offices have done in the past hundred years to combat counterfeiting, and what difference this injection of cash is likely to make to that objective?].

- The vast majority of Member States have supported the proposal to allocate around 190 million euros to the Reserve Fund and to create a Cooperation Fund. This Cooperation Fund would be established with an allocation of 50 million euros and would phase out once the repartition [the WHAT? Repatriation, perhaps?] of renewal fees is in force. It should be specified that the funds for cooperation should be available to the Member States National Offices, and would be used for the projects closely related to harmonization and the protection, promotion and/or enforcement of trade marks and designs. Users should be associated with the operation of this fund in an appropriate way. The structure of the fund should be as light as possible and its access should be facilitated and avoid unnecessary administrative bureaucracy.

- Member States supported the idea of using the remaining surplus in the interests of users, and asked the Commission to study this issue in consultation with users within the context of the overall evaluation of the trade mark system to be conducted by the Commission.

Member States and the OHIM top management agreed that from the discussions held in this meeting, sufficient support was gathered around a number of basic elements, identified above, that should be included in a package of budgetary measures aiming at guaranteeing a balanced budget for OHIM in the future and took the decision to inform the European Commission accordingly, by way of formal joint letter from the Chairmen of the AB and BC and the President of the OHIM, to be considered within its forthcoming initiatives in this field".

The IPKat feels that this whole episode has been a wretched one from start to finish and he hopes that it will soon be resolved. Merpel just feels really vexed. How much, she wonders, has been spent in flights, hotel rooms, hospitality and the usual niceties that will have been indulged in while people have been shuttling around Europe in search of a solution to a problem that should never have been allowed to happen? And how much good could have been done with those resources in the meantime?

RIAA sues dowload defence lawyer

The IPKat has learnt from Computer World that RIAA (the Recording Industry Association of America) has brought legal proceedings against Ray Beckerman, a New York based lawyer who had defended a number of individuals who have been at the receiving end of RIAA downloading lawsuits.
Ray Beckerman (left)
It appears that the claims against Mr Beckerman are part of a motion to dismiss a case, brought by RIAA, against a lady who claims not to know how to operate a computer. RIAA is arguing that its ability to uncover evidence was impaired by Beckerman and his client and that various ‘frivolous’ motions were filed.

RIAA has also objected to the fact that Mr Beckerman posts details on cases on his blog, ‘Recording Industry vs The People’, arguing that this ‘demeans the integrity of these judicial proceedings and warrants this imposition of sanctions’.

The IPKat doesn’t like the sound of this too much. He is particularly disturbed by the idea that an attorney shouldn’t be able to publicise details of his cases – what about free speech? After all, RIAA tends to be vocal about the lawsuits it is bringing in order for those actions to have the deterrent effect that it desires.

Monday meanderings

Recent Treaty activity monitored by the IPKat: the World Intellectual Property Organization (WIPO) has been busily announcing accessions to and ratifications of some of its favourite treaties.

* Sao Tome and Principe has signed up for the Madrid Protocol on international trade mark filing;

* Sao Tome and Principe (here) and Denmark (here) have both signed up for the Geneva Act of the Hague Agreement on international design registration;

* Latvia (here) and Kyrgyzstan (here) have committed themselves to the Singapore Treaty on Trademarks -- though a few more countries will still have to follow them before the agreement reaches the minimum number of 10 that brings it into force.

The Intellectual Property Institute, London, has asked the IPKat to remind readers of its forthcoming event, “The Future of IP”, at which Joly Dixon, Chairman of the Strategic Advisory Board for Intellectual Property Policy (SABIP), will be outlining his vision, flanked by a supporting cast of SABIP members. The date: Wednesday, 15 October 2008. For further details and booking arrangements click here.

It may be a recondite minority-interest blog but The SPC Blog has been creeping along just fine, thanks. Providing a diet of news concerning supplementary patent certificates, patent extensions and info on national patent office websites concerning SPCs, this little blog has now notched up its 150th email subscriber.

The IPKat thanks his Australian friend Ian Drew for sending him this link to the Review of the National Innovation System and associated materials. The review, clumsily called venturousaustralia - building strength in innovation, invites comments -- which have to be made here on Comment on the Review report by 30 September 2008. Presumably in the interests of public debate and transparency the word "not" in the statement "these comments will not be made public" has been inserted by accident. Strongly recommended, especially but not exclusively for people with a warped sense of humour is FirstDogOntheMoon's innovation cartoon gallery, a sample of which ("Frog in a Pot") appears above.

If you, like the IPKat, are puzzled about the attitude of China towards intellectual property, you might like to take a look at "Feasible Commitments or Road to Nowhere Paved With Good Intentions" by keen China-watcher Danny Friedmann (of IP Dragon fame). It reviews China's National IP Strategy 2008 and leaves the reader pondering: if Rome wasn't built in a day, how long was an IP-friendly Chinese protection and enforcement policy not built in ...?

Gratitude is owed to the knowledgeable Melonie Atraghji for forwarding this link to news from the BBC that disaster for the banking sector brings light relief and indeed the prospect of a little profit from the cybersquatting community, which has been speculating on domain names for the new banking entities that will result from the current batch of rescue-mergers. Names for the Bank of America/Merrill Lynch pairing as well as for Lloyds TSB/HBOS have already been snapped up, with at least one hybrid domain name already being put up for sale on eBay. Following the demise of Lehman Brothers,,, and have been registered too. The IPKat doubts though that the financial sector will ever see the likes of ...

Friday, 19 September 2008

Friday fixatives

The number of events listed in the IPKat's efficiently-updated 'Forthcoming Events' feature, which lives on the left-hand side-bar of this weblog's front page, stands at 49. FREE events are listed in this charming shade of purple ...

Don't forget, if you're in the vicinity of the Grange Hotel from 5.30pm to 7.30pm next Tuesday, at least two members of the IPKat team should be available to join you in a drink to celebrate this weblog's one millionth visit. Details here.

Right: Cat cocktail, one of the lovely stickers available from Purple Moon

Something else not to forget is the IPKat's "Best advice" competition, for which the prize is free entry to the Copying Without Infringing conference (details of competition and conference here). If you are entering the competition, PLEASE remember to put the words "Best Advice Competition" in your email response. The IPKat was scared out of his wits earlier this week when he received what looked like a dire threat to his very existence; it was only when he read the cordial signature at the bottom of the page that he realised that it was a competition entry ...

Returning from the MARQUES conference in Noordwijk, the Netherlands (you can read all about it on this and earlier posts on Class 46), IPKat team member Jeremy was musing about next year's conference. The host town for MARQUES 2009 is Brighton, on the sunny south coast of England. Jeremy was wondering about Brighton's intellectual property connections. Body Shop began its upwardly mobile and highly politicised existence in Brighton, and Graham Greene wrote a celebrated, pretty scary novel called Brighton Rock -- , later turned into a movie that helped launch Richard Attenborough's acting career. But what else is there? If you can think of any good IP connections with Brighton, do please email the IPKat here and let him know.

Nodus meeting

One quarter of the IPKat's human representatives attended last evening's Nodus event in Nottingham, at which a quadumvirate from 3 New Square spoke about various aspects of what they do. The speakers were Denise McFarland, Douglas Campell and Tom Hinchliffe, who were coralled by Colin Birss QC. Denise gave a very enlightening (to this Kat, at least) presentation on how to instruct chambers. Key points that the IPKat took away from this were that things don't always have to be wrapped up in pretty tape, but it does help to organise your papers and keep it simple. It might also help to consider barristers like difficult children who have a tendency to scribble on things and ask awkward questions.

Douglas gave an overview of the 'Bolar' exemptions relating to experimental use of patented products. Most of this went over the IPKat's head, but there appears to be one main lesson from this, which is that if you are considering relying on the exemption it's best to get some very heavy duty advice first unless you like living dangerously.

The highlight of the evening, however, was Tom Hinchliffe who talked about the recent case of Actavis v Merck (see the IPKat's commentary here). Much of this case was about whether the court of appeal could go against an earlier judgment of theirs (BMS v Baker Norton, to be exact), and in the end it decided it could, partly because the EPO case law in the area was 'settled' and happened to arrive at the opposite answer to what appeared to be the case in the UK. Unfortunately, at the very last minute a new referral to the EPO Enlarged Board appeared, which seemed to cast a fair degree of doubt over the very issues that were thought to be settled. This was all very interesting, and will certainly keep the lawyers busy for a little while longer, but the IPKat was shocked to find out that his faint suspicions at the time (see the comment here) were actually correct. It was his posting here that apparently prompted the last minute panic, which resulted in a postscript being added to the judgment, which allowed an unusually extended time for leave to appeal to the House of Lords until after the Enlarged Board had delivered their decision. 

The IPKat would like to thank all those at 3 New Square for taking time out to visit Nottingham, and especially Ann Critchell-Ward at Freeth Cartwright for organising the event.  Tufty would also like to thank Denise for her clever idea; he is working on it right now and should have the results shortly...

Recent publication

The Summer 2008 issue of Olswang's Life Sciences Newsletter is now out. You can access it here. Highlights include the following morsels:

Generics v Lundbeck, in which Lord Hoffmann sat in the Court of Appeal for England and Wales and gave the leading opinion regarding the concept of Biogen insufficiency in patent law;

Conor v Angiotech, a House of Lords decision concerning taxol-coated coronary stents in which Lord Hoffmann also gave the leading opinion.

If you'd like to sign up to receive these Newsletters on a regular basis, email Jeremy here and he'll see that you are added to the circulation list.

Thursday, 18 September 2008

Charity begins at home, but goes to Luxembourg

Advocate General Mazak delivered his Opinion today in Case C‑442/07 Verein Radetzky-Orden v Bundesvereinigung Kameradschaft ‘Feldmarschall Radetzky’, a reference for a preliminary ruling from the Oberster Patent- und Markensenat (Austria). The Bundesvereinigung Kameradschaft ‘Feldmarschall Radetzky’ (BKFR), a non-profit-making association, does not sell any goods or provide any services for remuneration. Its activity consists in the preservation of military traditions, such as the organisation of memorial services for members of the armed forces who have died in combat, remembrance services, military reunions and the upkeep of war memorials. It also does charitable work, such as the collection of money and donations in kind and their distribution to the needy. BKFR also owns the Austrian word and figurative marks for goods and services in classes 37 (upkeep of war memorials), 41 (entertainment; sporting and cultural activities; organisation of military reunions) and 45 (charitable work for the needy).

Additionally the BKFR founded a Radetzky Order, within which orders and decorations are awarded which corresponded to its trade marks. Members of the order wear the decorations at various events and when collecting and distributing money and donations in kind. The marks are printed on invitations to events, on stationery and on the association’s advertising material.

The Verein Radetzky-Orden ('Orden') applied to have BKFR's trade marks cancelled on the grounds of non-use, claiming that BKFR had not used the trade marks commercially over the course of the previous five years. The Austrian Patent Office cancelled the marks, whereupon BKFR appealed to the Oberster Patent- und Markensenat. That court decided to stay the proceedings and to refer the following question to the Court for a preliminary ruling:

"Is Article 12(1) of [Directive 89/104] to be construed as meaning that a trade mark is put to (genuine) use to distinguish goods and services of one undertaking from those of other undertakings in the case where a non-profit-making association uses the trade mark in announcements for events, on business papers and on advertising material and that trade mark is used by the association’s members when collecting and distributing donations inasmuch as those members wear badges featuring that trade mark?".
What did the Advocate General say? He advised the European Court of Justice to rule as follows:
"Article 12(1) of First Council Directive 89/104 ... should be construed as meaning that a trade mark is put to genuine use where a non-profit-making association uses the trade mark, inter alia, in announcements for public fund-raising events, when collecting donations from the public and distributing donations, on business papers addressed to members of the public and on advertising material soliciting donations from the public, where the trade mark has been registered in connection with such services. It is thus for the Oberster Patent- und Markensenat to assess the facts in the main proceedings in the light of that guidance".
The IPKat says, the interesting bit in this Opinion comes at the end when the AG says:
"28. The contention by the Orden that the purely non-profit-making activity of collecting and distributing donations cannot be protected by trade mark law is ... unfounded. ... ‘charitable fund raising’ is specifically listed in Class 36 of the Nice Agreement. Moreover, contrary to the submissions of the Orden, I do not consider that the terms ‘using in the course of trade’ as contained in Article 5 of Directive 89/104, which enumerate the rights conferred by a trade mark, necessitates that goods and services be supplied for profit or indeed for consideration. The question of whether the proprietor of a trade mark uses that sign for the purposes of personal enrichment is thus not relevant when assessing whether the trade mark is being put to genuine use in accordance with Article 12(1) of Directive 89/104.

29. In that regard, I consider that the use of a trade mark by a non-profit-making association when collecting funds from the public and distributing such funds, where the trade mark has been registered in connection with such services, serves as an indication to donors, or potential donors, of the identity of the association in question and the purposes for which the funds are used and thus constitutes a genuine use of a trade mark in accordance with Article 12(1) of Directive 89/104.

30. However, in the light of the ruling of the Court in Ansul, I consider that the use of a trade mark by a non-profit-making association during or for the announcement or advertisement of purely private ceremonies or events involving existing members of that association constitutes an internal use of that trade mark and would thus not constitute a genuine use of a trade mark for the purposes of Article 12(1) of Directive 89/104. Thus, in my view, the award of badges incorporating a trade mark to existing members of a non-profit-making association in gatherings where the public is excluded would appear to be an internal use of the trade mark. Moreover, I consider that the use of a trade mark on business papers when addressing existing members of a non-profit-making association is, in principle, an internal use of the trade mark which would not constitute a genuine use of a trade mark. In such circumstances, it would appear that the registered trade mark is being used in a purely private manner and not in the course of trade".
The IPKat thinks this makes good sense, since it appears to respect the terms in which the Directive is couched as well as the case law of the Court; Merpel's not so sure: the division of the activities of charitable organisations into external and internal ones does not take into account that there is likely to be a close connection between the two in the eyes of the organisation itself and in the view of its members.

Another budding beer dispute, but this time it's Bavaria

Via the IPKat's informative friend Stephanie Bodoni (Bloomberg) comes news of the European Court of Justice hearing today in Case C-343/07 Bavaria N.V. and Bavaria Italia Srl v Bayerischer Brauerbund e.V. In this reference for a preliminary ruling Bavaria NV, the Netherlands' second-biggest beer brewer, is challenging a group of German brewers that want it to stop using the name Bavaria on that beautiful golden beverage. At issue is the validity of EU rules (Regulation 2081/1992, now consolidated as Regulation 510/2006) that gave the Bavarian brewers rights in the terms "Bayerisches Bier", the German term for "Bavarian beer", and whether they can block Bavaria's trade marks. Says another of the IPKat's friends Massimo Sterpi (left), arguing for the Dutch brewers:

"The Bavaria trade marks were valid, are valid and were registered before the EU rights were given to the Bavarian brewers". Those rules "can't be used as a weapon to attack earlier trade marks".
The Bavarian brewers' association disagrees. It received EU protection for the name "Bayerisches Bier" in 2001, then sued Bavaria NV in Germany, Spain and Italy, seeking to cancel the company's trade mark rights or to force it to stop using the Bavaria name on its brew. According to their spokesman Walter Koenig:
"In Italy, which is our number one export market, the distribution of Bavaria beer by the Dutch brewer confuses Italian consumers. We don't want to have others take this business away".
Lawyers for various EU member states and the commission asked Bavaria why it didn't seek to challenge the German brewers' right in 2001, saying that now it is now too late to do so. But Sterpi replied that Bavaria -- who are supported by the Netherlands government -- believed then that the EU Regulation allowed its trade marks to co-exist with the Bavarian brewers' rights.

The IPKat wonders why it is that beer brands beginning with the letter "B" seem to be so troublesome. Just when it seems that the Budweiser saga is drawing to a close, the Bavarians spring into action. Merpel says, if Bavaria beer from the Netherlands is confusing, after a beer or two the terms "Dutch" and "Deutsch" can have much the same effect.

To read the questions that were referred to the ECJ, click here
Bavaria in Switzerland here; Bavaria in South Africa here; Bavaria in Colombia here

Wednesday, 17 September 2008

ECJ allows limits on supply intended to stop parallel trade

Yesterday the ECJ delivered its judgment in Case C-468/06 Lelos v GSK, a reference from the Greek competition authorities concerning a failure by GSK to fully meet orders submitted to it by Greek wholesales which GSK deemed to be well in excess of demand on the Greek market.

Although it is an abuse of a dominant position under Art.82 of the EC Treaty for an undertaking to refuse to supply wholesalers in order to put a stop to parallel importation, an undertaking can stop supplying if orders are placed which are out of all proportion to those previously sold by the same wholesalers to meet the needs of the market in that Member State. It is for Member States' courts to determine whether orders are not 'ordinary', i.e. if they are out of proportion to the needs of that Member State's market. The court stressed that such supplies can only be limited to protect the undertaking's economic interests. It is for the Member State's authorities, and not for pharma companies to crack down on parallel imports which are so extensive that the exporting market finds itself within sufficient supplies of the drug in question.

The IPKat notes that the ECJ wiggled out of commenting on a couple of issues of particular interest to IP lawyers:

  1. The argument was raised that consumers wouldn't ultimately benefit from parallel importation because any price differential between the importing country and the country of origin would be eaten up by parallel importers are resellers. No matter, said the ECJ - price competition would still result in the shape of 'financial benefits not only for the social health insurance funds, but equally for the patients concerned, for whom the proportion of the price of medicines for which they are responsible will be lower. At the same time... parallel trade in medicines from one Member State to another is likely to increase the choice available to entities in the latter Member State which obtain supplies of medicines by means of a public procurement procedure, in which the parallel importers can offer medicines at lower prices.' The IPKat says that this reasoning is limited to industries like pharma, where there is massive public procurement, backed by social funds. He also notes that this reasoning assumed that patients are responsible for a proportion of the cost, unlike the NHS, where a flat rate applies.
  2. The court felt it unnecessary to consider the argument that undertakings might need to limit parallel importation to recoup their R & D costs.
The Kat also detects a whisker of the court's old IP-scepticisim in para.64:

On the other hand, it should be recalled that, where a medicine is protected by a patent which confers a temporary monopoly on its holder, the price competition which may exist between a producer and its distributors, or between parallel traders and national distributors, is, until the expiry of that patent, the only form of competition which can be envisaged.

EQE 2007 - the mystery 10 marks explained

A little bird has informed the IPKat of a recent decision by the EPO Disciplinary Board of Appeal that casts some light on what went wrong with paper C of the 2007 European qualifying exam. As all candidates will know, the pass rate for this exam was substantially lower than for previous years. This was apparently at least partly a result of the examination board taking the (to some rather surprising) view that there was only one 'correct' document to start from as the closest prior art when considering an attack on inventive step. Starting from another document would therefore result in no points for the attack. The board later relented, and rather surprisingly awarded a blanket 10 marks to everyone who took the paper to account for their inability to foresee that another attack might be possible.  

Before the examination board did so, however, at least one candidate filed an appeal against the decision to award her a fail on the paper. She will, of course, by now already have had another chance at passing by retaking the exams earlier this year. The decision, therefore, is rather pointless for anyone who took and failed the exam in 2007, and is also a strong disincentive for anyone to think about appealing their results (particularly when the examination board will be changing for next year's papers). The decision does, however, have some rather interesting things to say about the examination board's approach in marking the paper, and why it was wrong in principle, including the following:

"The Examination Board itself recognised that the examination committees were wrong to award no points across the board in respect of a particular part of the paper [...]. However, awarding points for an (in the examination committees' and/or Examination Board's view) incorrect yet logical and, in keeping with the recognised practice, justified attack, is not just due practice but is also legally prescribed: under Rule 4(2) and (3) IPREE the number of points to be awarded for every paper (on a scale of 0 - 100) is based on how and to what extent "on the merits of that paper alone, a candidate can be considered fit to practise as a professional representative". This is not reconcilable with marking an examination paper as if it were a list of unrelated individual questions (as in a multiple-choice system) to which there is only one correct answer. On the contrary, the fit-to-practice criterion obliges the examiners in marking the individual parts of the answers not to disregard their merit in the context of the examination paper as a whole [...] and the need to allow for fair marking of answers which deviate from the scheme but are reasonable and completely substantiated [...]. This is something to which every candidate has a legal entitlement". (point 5 of the reasons)
The DB considered that the blanket awarding of 10 points was a violation of the law, and the EB acted beyond its powers (ultra vires) in doing this. The fact that no candidate was disadvantaged by this award did not offset the illegality of the measure, nor was it an appropriate way of offsetting the legal disadvantage incurred by individual candidates owing to a specific infringement of marking principles.

The DB decided that the appellant would be allowed to keep her extra 10 marks, because they had been awarded to everyone, but also ordered the examination committee to re-mark the paper and base its decision on the marking plus an extra 10 marks.

The IPKat thinks that, although the outcome is a little strange and could result in someone passing who might justifiably have failed, this is the only possible outcome that could have resulted once the DB decided that the EB had acted illegally. For those who didn't make it this year, the decision does provide some food for thought, particularly if anyone is considering (or has already filed) an appeal this time. Would it be worth the effort? Or is it better to simply have another go next time round?

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