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).

Wednesday, 30 November 2016

BREAKING: Antidote found for poisonous priorities

The Enlarged Board of Appeal at the EPO has issued its order in case G 1/15, but not yet its decision. From the order, it appears that poisonous priorities have been neutralised. The Enlarged Board has said:

Under the EPC, entitlement to partial priority may not be refused for a claim encompassing alternative subject-matter by virtue of one or more generic expressions or otherwise (generic "OR"-claim) provided that said alternative subject-matter has been disclosed for the first time, directly, or at least implicitly, unambiguously and in an enabling manner in the priority document. No other substantive conditions or limitations apply in this respect.

A generic "OR"-claim is one that covers multiple alternatives without spelling them out. If such a claim can have partial priority to an earlier application that disclosed one of those alternatives, then the implication is that the publication of the earlier (priority) application cannot deprive the later application of novelty under Article 54(3) EPC.

For more explanation of the issues, see the IPKat's earlier posts here and here, the excellent discussion from Tufty the Cat here, and the article by Malcolm Lawrence beginning on page 23 of in "epi Information" 1/2015, available here.

When the reasoned decision becomes available, the IPKat will let you know.

Never Too Late: If you missed the IPKat last week!

Been away and want to catch up on last week's IP news? No problem! As always, the IPKat is here to bring you a quick summary -- the 123th edition of Never Too Late.

IPKat’s good friend (nothing more) Merpel McKitten cast doubts on the idea to relocate the EPO’s Boards of Appeal to Haar (a municipality on the outskirts of Munich). The official justification for the move seems unconvincing -- not only to Merpel, but also to some BoA members and patent attorneys. Will the relocation truly cause a sequence of “catastrophic effects”, or is the feline simply worried too much? Check out the article and the lengthy yet very readable thread of comments, and afterwards, maybe share your own view? 

Last week, Merpel also reviewed the long, and still ongoing,  “House Ban” in the EPO 2 years ago -- the continued suspension of a BoA member for allegedly disseminating critical opinions about the BoA and for alleged defamation of a member of EPO senior management. This InternKat found Merpel's words to the points, genuine and courageous. Thank you Merpel. 

The AmeriKat, who had been preoccupied of late with a treasure trove of litigation fun, summarised the “need-to-know” about the latest Gilead triumph in appeal. Later, ever-productive Annsley wrote a follow-up post Entitlement to priority: Does Gilead confirm that it is a matterof substance over form? which concerned the consequences of the Gilead decision, and is worth reading for her further insights. 

Sorry for the late delivery of "never too late" this week...
“Is a national law that provides ab initio that a collecting society -- rather than the author of a work -- has the right to authorise the reproduction and communication to the public of such work compatible with EU law?” -- see Eleonora Rosati’s view on the important case Soulier and Doke, C-301/15. Later, she provided a more detailed follow-up analysis: The CJEU decision in Soulier: what does it mean for laws other than the French one on out-of-print books?

Last month a Swedish court was likely the first in Europe to apply the principles that the CJEU set in its landmark decision in GS Media, C-160/15. Eleonora Rosati discussed it in this post. Now, Katfriends Nedim Malovic and Patricia Haddad (Sandart & Partners, Stockholm) also took a look at the decision and shared their opinions with Eleonora. 

Kat friend Jason Rix (Allen & Overy) set out some key principles that IP lawyers might find handy when drafting or reading IP related contracts. “Be the Kat who got the cream”, he heartily wished, “do not let your contract becomes a dog’s dinner instead”. 

* Last but not least, the weekly routines: Monday Miscellany and Around the IP Blogs: Round-up for the latest IP happenings including events, book release and highlighted blog posts. 

Photo courtesy of Ms. Ana Barbara Ribeiro Ramalho.


Never Too Late 122 [week ending on Sunday 13 November] | Is depositing better than sequencing? | European Commission on Biotech Directive: tomatoes about to be squashed? The U.S. presidential election of 1876: votes, cannabis and intellectual property|  CJEU upholds duty to reverse-engineer trade marks in Rubik's cube decision, but what about the actual v abstract test?  BREAKING: CJEU says that EU law allows e-lending| Around the Web Blogs| IP Publishers and Editors' Lunch 2016!| Firings will continue until morale improves - Merpel revisits the EPO| 

Never Too Late 121 [week ending on Sunday 6 November] | Sunday Surprises | Firings will continue until morale improves - Merpel revisits the EPO | Will too much of one and not enough of the other spell bad news for innovation? | BREAKING NEWS Brexit - High Court rules Government cannot Invoke Article 50 under Crown Prerogative | Canada's new approach to diagnostic practices prompts division at CIPO

Never Too Late 120 [week ending on Sunday 30 October] | Court of Appeal on Pregabalin - Pfizer still in pain, but Swiss claims re-interpreted again | Procedural fairness and the Penalties Regulation: R(Roche) v Secretary of State for Health | Meet the Trade Mark Judges (Part two) | AG Szpunar says that the notion of "places accessible to the public against payment of an entrance fee" does not apply to hotel rooms | Charlie Chaplin won't come back from the dead, neither will Montis' copyright in the Chaplin chair | Linking to unlicensed content: Swedish court applies GS Media | Urgent crowd sourcing request-- "ugly" clauses in IP agreements | How much attention should the IP community give to non-compete clauses? | Friday Fantasies | Around the IPKat’s Cousins Blogs

Never Too Late 119 [week ending on Sunday 23 October] | Around the IPKat’s Cousins Blogs | With free trade and globalization under attack, can IP licensing come to the rescue? | The new French law targeting “automated image referencing services”: does EU law allow it? | Unauthorised communication to the public in an online environment as a criminal offence in the UK? | Friday Fantasies | Meet the Trade Mark Judges (Part One) | HHJ Hacon amplifies the law on EU trade mark jurisdiction: AMS-Neve v Heritage Audio | Launch of IP Pro Bono scheme | Lundbeck v European Commission - a rotten decision or effective competition law enforcement?

Tuesday, 29 November 2016

Around the IP blogs

A Matter of Interpretation: Libraries Land a ‘Victory’ in CJEU’s Judgment on E-Lending
Kluwer Copyright Blog provides the full story leading up to and including the CJEU’s preliminary ruling in Vereniging Openbare Bibliotheken v. Stichting Leenrecht (10 November 2016, case C174/15), which found that digital lending should not be excluded from the Rental and Lending Rights Directive’s scope in all cases.

Your move Merpel
Chess Tournament Hot News Misappropriation Prelim Denied
Schimmerlegal reports that a preliminary injunction was denied where the Plaintiff alleged that Defendant’s actions constituted ‘hot news misappropriation’ under New York common law. The circumstances of the case where such that the plaintiff organises and webcasts live chess tournaments, the defendant provides a live feed of the games, displayed on a virtual chess board.

Richard Prince May Offer the SDNY Another Chance to Define Transformative Use of a Work
Richard Prince and the Blum and Poe Gallery were sued again on November 16 for copyright infringement of a photograph in the New Portraits exhibition in Eric McNatt v. Richard Prince, 1:16-cv-08896, Southern District of New York (SDNY). Photographer Eric McNatt alleges that Richard Prince reproduced a photograph taken by Plaintiff of Kim Gordon, a founding member and bassist of Sonic Youth, by downloading it from the web, where it had been published with a copyright notice, and uploading it on his own Instagram account. 1709 Blog suggests this is an opportunity for the court to provide some clarity on transformative use.

Nl – Synthon V. Astellas / Supreme Court / Referral Cjeu
The Court of Appeal Arnhem-Leeuwarden asked several preliminary questions to the Supreme Court with regard to the applicable criteria for an exhibition claim based on art. 843a Dutch Code of Civil Procedure (DCCP) in conjunction with art. 1019a DCCP. The case is available in Dutch and luckily EPLAW Blog talks us through the response of the Supreme Court, which included the decision to apply to the European Court of Justice in order to obtain answers to two of the three questions.

Buying Time for Christmas: a guide for UK Trademark Opponents and Applicants
Worried about meeting those trade mark evidence deadlines over the festive period? SOLO IP gives us some helpful tips on applying for an extension and other ways to buy time!

Competition Law in the Pharmaceutical Sector: Aspen Fined for Excessive Pricing in Italy
The Italian Competition Authority (ICA) fined Aspen Pharmacare 5 million Euro for violation of art. 102, letter a) of the Treaty of the Functioning of the European Union (TFEU) when increasing its prices for some of its oncohematological drugs up to 1500%. Aspen has communicated that it will appeal. Trustinip reviews the decision together the previous case law, which gives rise to uncertainties in relation to assessing reasonable costs.

Master-Puzzlers at the Ready
German toy company Simba Toys GmbH & Co. KG appealed a judgement of the General Court relating to EU trademark no. 162784, showing the three-dimensional representation of a Rubik’s cube. The CJEU annulled the decision of the General Court, indicating that the General Court had interpreted the criteria for assessing Article 7(1)(e)(ii) of Regulation No 40/94 (now replaced by Regulation 207/2009) too narrowly. As such, Kluwer Trade Mark Blog explains, the shape of product was considered necessary to obtain a technical function and cannot be registered.

AIPPI Congress Report 5: Antitrust and Pharma - seeking a balance

The IPKat expertly balancing on the
patent law and competition law
If you are like the AmeriKat and are thinking back to simpler times, really any time before November, then you are in for a treat. Although this year's AIPPI Congress has come and gone, it is not forgotten.  In the fifth of the reports from the festivities in Milan this September, Daniel Lim (A&O) reports on the competition panel during the annual Pharma Day - a full day of panel sessions dealing with the complex IP, regulatory, competition and public health issues facing the life sciences industry.  Daniel reports:
"The last (but not least) session on day 4 was entitled “Antitrust and Pharma – seeking a balance”.  The obvious tension between the policy justification behind patents as a monopoly right and the public interest in competition in the market has always required a careful balance between those competing interests.  However, recently that balance in Europe has shifted, with the European Commission and UK CMA imposing huge fines on originators and generics alike for abusive conduct.  The AstraZeneca (Commission decision here, General Court decision here and appeal decision from the CJEU here), Servier and Lundbeck cases and UK GSK case have made the industry sit up and take note, and have arguably been the main factor in the near halving of patent settlements in 2014 compared to previous years.  Italy has been particularly active in pursuing pharmaceutical companies over alleged anticompetitive behaviour.    A useful background on some of the recent cases and interests at play is available on the European Commission’s website here
 Chaired by Duncan Ribbons (Redd Solicitors) and featuring Prof. Michael Carrier (Rutgers University), Commissioner Gabriella Muscolo (Italian Antitrust Authority - Autorità Garante della Concorrenza e del Mercato) and Yoichi Okumura (Takeda Pharmaceutical Company) as panellists, the session discussed the intersection and relationship between competition law and patent law and explored a number of common scenarios in which antitrust authorities may take an interest in the activities of pharmaceutical companies:

·                  “pay for delay” or early generic entry deals;
·                  non-cash value transfers;
·                  originator patent term extension strategies;
·                  secondary patents; and
·                  “product hopping”.
Pay for delay 
The two pay for delay scenarios put forward were:
  • Patentee pays generic significant sum (seemingly relative to 6 months profit from the product) and generic enters market 6 months prior to patent expiry
  •  Patentee does not pay anything and generic enters market one year prior to patent expiry
Professor Carrier stressed that the heart of the issue with such deals from a competition perspective is that the payment in such circumstances gives the originator a period of exclusivity that the strength of the patent protection would not otherwise confer.  
Accordingly, the earliness of the generic entry before patent expiry (or, viewed in another way, the delay in generic entry from the time they would otherwise launch) and the amount of the settlement payment are key factors in the competition analysis.  He noted that in a situation where there is no payment, this will likely be unproblematic, as the settlement could be seen to be premised on the parties’ assessment of the strength of the patent; the problem only arises where the additional exclusivity granted to the originator out of settlement (through delay of generic entry) is considered to be predicated on the payment, not the patent. 
Commissioner Muscolo arguably went even further, saying that, as a matter of principle, any delay of generic entry may attract scrutiny irrespective of whether a transfer of value has taken place, and that the nature of the value transfer (whether monetary or in the form of a licence or other benefit) may not be critical. 
 It was agreed that a key factor in the analysis would be whether the payment amount bore closer relation to the costs of the case or the value of the market for the product.  The former may be ok but the latter may be problematic.  The question posed by Duncan of how this analysis takes into account costs across multiple jurisdictions remained open. 
 Non-cash value transfers 
The panel gave three examples of non-cash value transfers:
  1. licence
  2.  agreement that originator will not launch an authorised generic product
  3.  territorial/cross-border exclusivity arrangements
Professor Carrier introduced each of these examples, noting that licences come in all shapes and sizes, and that similar factors as discussed in relation to pay for delay would be influential – i.e. is there delay in generic entry, and is the exclusivity the originator obtains derived from the settlement or the patent right?
In the US agreement not to launch an authorised generic is common, as the first mover generic has 180 days of generic exclusivity during which only they and the innovator (via an authorised generic product) may compete.  US courts apparently regard such “no authorised generic” agreements as a form of payment, susceptible to competition scrutiny.
As for territorial arrangements, Professor Carrier noted this was the offending conduct in the Servier case, where the generics were offered 7 markets in the EU in exchange for not launching in the rest of the EU. 
Okumura-san offered a very interesting industry perspective in this regard, noting the typical complexity of such settlement agreements and that in his experience generic companies are often very creative in settlement negotiations and often come up with quite unique and unusual strategies for settlement, which rarely fall into just one category of what could be considered to be a value transfer by a competition authority.  Such novel and complex settlement arrangements encompassing different categories may prove challenging to analyse for antitrust issues. 
Misuse of patent system 
Broadly speaking, the panel identified a number of circumstances in which they perceived that conduct permissible under the patent law system could fall foul of competition authorities (either by itself or as part of a broader strategy deemed to be anticompetitive):
  1.   Patent term extension obtained by provision of misleading information
  2.   Patent term extension obtained through a divisional patent as opposed to the parent patent
  3.   Impediment to generic entry by filing of secondary patent “thickets”
  4.   Impediment to generic entry by acquisition of alternative methods of production and formulations not practised by the originator (i.e. to prevent possible design arounds)
Each of these scenarios represent conduct which could be perceived by a competition authority to demonstrate a complex strategy aimed at impeding the entry of generic drugs in the market, and an abuse of a dominant position in the market which violates competition law.  Commissioner Muscolo gave the Italian Pfizer/Ratiopharm case (where SPCs were obtained and sought to be enforced on the basis of a divisional of the key patent) as an example of this (link to Commissioner Muscolo’s handout distributed at the session here and original Italian Antitrust Authority decision here, for any Italian speaking kats).
The tension between the perceptions of competition authorities and originators was put in sharp relief from a comment from the crowd by Bryan Zielinski, Vice President, Patents at Pfizer, who noted that from Pfizer’s perspective all they had sought to do in that case was to correct an oversight of the company they had acquired, which patent law allowed them to do.
Moving to consider secondary patents and patents over alternative methods, Professor Carrier observed that secondary patents are more likely to be found invalid by courts – the implication being that their enforcement may be seen to be less justifiable and more likely to be abusive than for a compound or primary patent.
Okumura-san countered that he did not like the term “secondary patent” as it had negative connotations.  He stressed that all inventions build on the work of the past and are based on other inventions and the state of the art.  From his perspective so-called “secondary patents” are no less inventions in their own right (if valid) and represent useful and important improvements as well, which should be incentivised and must be enforceable. 
Product hopping 
Last but not least Professor Carrier described a possible type of regulatory misuse of power termed “product hopping” – i.e. a practice whereby the originator product is pulled from the market, or switched in favour of a newer (patent protected) product, in order to block generic entry.  He drew a distinction between “hard switching” where the original product and MA would be withdrawn altogether, and “soft switching” in which the original product would remain on the market, but promotional efforts would be diverted to the new product.  He noted that a hard switch would be more likely to be anticompetitive, as would a switch closer in time to likely generic entry.
Okumura-san considered such product line changes to be a business decision.  He gave an example of a blockbuster originally sold to the elderly as a capsule, which was later changed to a new formulation with improved disintegration to aid in swallowing (a tangible benefit and improved product).  It had been earlier noted that there would be no consumer harm if the switch was truly to make an improvement, but the question of what the position would be if such a switch were deliberately timed to impede generic entry was left open.
The key concerns emerging from the intersection between pharma and antirust at the front of mind of each of the panellists were clear from their closing remarks:
  • Professor Carrier emphasised that exclusion of a generic product from the market due to payment as opposed to the patent would be a problem, as would behaviour which was part of overall conduct intended to delay generic entry.
  •  Commissioner Muscolo remarked that in her eyes competition intervention in the pharmaceutical sector plays a paramount role, and guarantees access to medicine at an affordable level – keeping public healthcare still workable.  She bemoaned “pathological life cycle management”
  •  Okumura-san quoted the USPTO, saying “No IP, no business” and stressing that without appropriate IP protection available, the creation and distribution of new medicines would not be possible.  He noted the need to consider the relationship of the pharmaceutical industry with society.
A PatentKat being made to swallow a competition pill
In this author’s personal view, although the panel did a fine job of outlining and explaining the key scenarios and behaviours which may give rise to antitrust issues, greater emphasis seemed to be placed on the competition policy considerations of each, and little time was devoted to counterarguments from the patent law perspective (particularly when considering patent term extensions, secondary patents and other “product lifecycle management” strategies employed by companies).  Whilst entirely understandable given the competition lawyer heavy composition of the panel, it would have been instructive to have more of a balance of views and consideration of the opposing patent law public policy concerns/real world impact of the activity found to violate competition law. 
Competition arguments have long been in play in the telecommunications field and particularly in respect of standard essential patents.  It is clear that their impact on pharmaceutical patent cases will only continue to grow.  It will be up to courts and legislators to find the right balance between the competing and equally crucial policy interests of public healthcare, incentive for pharmaceutical innovation and fair competition in the cases to come.  Whether the Italian decisions are looked back on as an aberration and the high water mark of antitrust overreach, or ground-breaking decisions heralding the dawning of a brave new world of pharmaceutical patent enforcement, only time will tell."

When the Rolling Stones visited 2120 South Michigan Avenue in Chicago

This Kat feels sorry for all those music kittens who are simply too young to have experienced the formative years of contemporary music, being the 1950’s and 1960’s.(Any Kat skeptics are invited to visit the Rock & Roll Hall of Fame in Cleveland, Ohio, and he or she will quickly come away convinced.) While the music from this period endures, much of the historical back-story to its creation and commercialization has been forgotten. One such tale is the Rolling Stones instrumental composition "2120 South Michigan Avenue", recorded for their second EP, “Five by Five”. The title of the piece refers to the address in Chicago of the recording studios of Chess Records, where the five songs for this EP were recorded in June 1964. Keep in mind--these sessions took place in connection with the group’s first tour of the United States, a year before “(I Can’t Get No) Satisfaction” was released. What was Chess Records, and why did it draw the likes of the Rolling Stones to its music studio, removed from the glitter of downtown Chicago?

Chess Records was the main musical vehicle of Leonard and Phil Chess, two Polish-born brothers. Established in 1950 (they had previously been engaged in their father’s liquor business before trying their hand at operating jazz nightclubs serving the black community in the sprawling South Side of Chicago), the Chess brothers made the fateful decision to move away from black pop and jazz music in favor of blues music. They succeeded to such an extent that Chess Records became, during the 1950’s and 1960’s, the leading label for blues music. Indeed, the studio was described as a “monopoly” for anyone in that genre who wanted to record, do a music session, or release his or her musical work.

Blues music has been characterized as—
“a genre and musical form originated by African Americans in the Deep South of the United States around the end of the 19th century. The genre developed from roots in African musical traditions, African-American work songs and European-American folk music. Blues incorporated spirituals, work songs, field hollers, shouts, chants, and rhymed simple narrative ballads.”
Chess Records both culled the best of blues performers already in the American North as well as seeking out performers still located in the ancestral home for blues music, the deep American South.

What followed was a torrent of recordings by Chess Records by many of the leading blues performers. It began with legendary Muddy Waters, perhaps the great of them all, and included such other musical giants as Howlin’ Wolf, Bo Diddley, Willie Dixon, Buddy Guy, Chuck Berry and Etta James. (Kat readers who are not familiar with these performers are urged to do a bit of searching online for available recordings.) In any event, the line between blues and related forms of modern music began to disappear, with some of those who entered Chess studios later emerging as rock and roll performers and the like. Indeed, it has been observed that— “
[m]any songs created by Chess artists were later reproduced by many famous Rock n’ Roll bands such as The Beatles, The Rolling Stones, The Beach Boys and Eric Clapton. Some of the core riffs … created by Bo Diddley, Willie Dixon, Chuck Berry, Howlin’ Wolf, Muddy Waters, Buddy Guy and others were the basis for a wide amount of Rock n’ Roll.”
Lest we forget, however, while music is about artistic creation, Chess Records, like any record company, was ultimately a business and the Chess brothers were as tough as they come. Gene Santoro, in his positive review of a an account of Chess Records (“Spinning Blues into Gold”, by Nadine Cohodas, 2000), calls the author to task for describing the Chess brothers merely as ''frugal. “As Santoro observes, the evidence is abundant that the two brothers (not unlike others in the industry at that time, it would seem) were characterized by their “notorious unwillingness to part with money”, unless they were the recipients.
“They bought new Cadillacs and rented apartments and paid lawyers' fees for their artists, but almost never handed out royalty statements. … [M]ost of the business was in the brothers' heads, so there is frequently no way to verify Chess Records' numbers and transactions…” and the book's epilogue, “‘Lawsuits and Legacies,’ narrates the numerous financial and copyright clashes [Phil] Chess had with its musicians following Leonard's death.”
The recording business was, and presumably remains, a nasty business, often walking a fine line between paternalism and crass exploitation.

Circling back to the “2120 South Michigan Avenue” musical sessions, the fleeting convergence of the Rolling Stones and Chess Records, brought together by a mutual love of blues music and the centrality of the Chess Records in the world of blues music, has been described thusly:
“In the early 60s many blues fans, and the Stones themselves, considered the Chess studios as the home of the blues. Muddy Waters (who according to legend helped the band unpack when they arrived), Howlin' Wolf, Chuck Berry and a whole host of blues musicians and singers recorded for the label. On their first US tour the Stones were keen to visit and record there and, although Chess didn't let out their studios to non label artists in those days, manager Andrew Loog Oldham managed to blag a session for the band in the summer of 1964.”
But if the Chess Sessions marked the highlight of the blues period for The Rolling Stones, it also seems to have been the precursor for the group becoming the iconic bad boys of rock and roll music. This is so because, it is said,
“By the end of these sessions Keith Richards and Mick Jagger had started writing their own material and Keith had come up with the Satisfaction riff - he actually woke up in the middle of the night with it in his head and, before he forgot it, quickly got it down on tape.”
The time of the visit by the Rolling Stones turned out to be at the zenith for Chess Records. Leonard Chess died in 1969 and the remnants of the company were sold in 1975. The Chess master recordings were purchased by MCA records, which, it would seem, later became part Geffen Records, an imprint of Universal Music.

The Rolling Stones never returned to the Chess studios. That said, it has been claimed that “The Stones brought rhythm 'n' blues to a mass white audience - not only in the US but in the world. No mean achievement.” To the credit of both The Rolling Stones and Chess Records, this Kat might add.

No measure of success in passing off cup case

The get-up - exterior
There are several means of measuring cooking ingredients, ranging from old school scales to measuring cups.  Since the 1930s, one of the most recognisable brands for measuring cups (at least in England) has been Tala.  The company behind the Tala brand (George East Housewares) produces conical shaped metal measuring cups with a round base.

Prior to 2013, George East had enjoyed a near monopoly over this shape and, since the early 1950s, its appearance.

Consequently, George East was far from thrilled to discover a competitor, Probus displaying very similar measuring cups at a Birmingham trade show in 2013.

The similarities went as far as the reproduction of a typographical error on the interior of the measuring cup.
Following an initial complaint, various assurances were given by Probus in an email to George East's lawyers which stated "we will not restock the product that your client objected to".

The following month, Probus took delivery of 2,000 cups which had a near identical interior but different exterior design.  Upon discovery of these and various other related cup designs George East again objected and ultimately issued proceedings for passing off in the Intellectual Property Enterprise Court (IPEC) in London: George East Housewares Ltd v Fackelmann Gmbh & Co KG & Anor [2016] EWHC 2476.

The get-up - interior
In a passing off case, there are three issues which the court needs to determine (the so-called classic Trinity):

1 Does the claimant have goodwill (and if so in what e.g. the brand name, ‘get-up’ or shape)?

2 Was the defendant’s use of that goodwill such that it would misrepresent to purchasers that the defendant’s goods came from (or were associated with) the Claimant?

3 Has the claimant suffered damage as a result of the misrepresentation?

Another classic trinity
In order for a passing off claim to succeed all three must be proven but a claim cannot get off the ground at all unless the claimant can identify their goodwill.

Some features of goodwill such as a brand name or logo are generally easier to establish goodwill in than a shape or appearance of a product (the "get-up").   Because the Tala name was not used by the defendants, this case concerned the get-up of the measuring cups.

Was there goodwill in the get-up?

George East identified the following ‘get-up’ in their measuring cups [12]:

a. The shape of the product
i. A conical shape with an overall shiny/metallic finish;
ii. A silver metallic circular base which consists of a wide base with a curled outer edge, raised edges leading upwards to a smaller flat circular platform upon which the cone shaped cup sits; 
b. The brand name 'TALA' displayed at the top of the cone; 
c. The get-up of the exterior of the product which includes: 
i. A broad stripe of primary colour at the bottom of the cone within which appears a metallic/silver circular section with text appearing therein and an outer thin metallic/silver circle.
 ii. A prominent stripe/central band on the cone of the same primary colour as the aforementioned broad stripe against a silver/metallic background with the text 'COOK'S MEASURE' appearing above it in black capital lettering.
iii. The use of the colours red, blue and/or black against a shiny/metallic finish. 
d. The get-up of the interior of the product which includes: 
i. A creamy/white coloured background which curls over the top of the cup onto the exterior;
ii. A series of vertical tables running down the cup with the outline of the tables and/or the text contained therein appearing in black and/or red;
iii. The names of the following foodstuffs: Rolled Oats Fresh Bread Crumbs... with measurements for each running down each table in grams or ounces highlighted in black. 
As the Defendants had not copied the brand name, the get-up was considered by the judge in the absence of a brand name.
The Claimant's get-up had many variations

Is there goodwill?

The Claimant claimed goodwill in many variations of cup (cup 8 is the version pictured above) and there were several allegedly infringing cups.  In her analysis, the judge noted [21]:

  1. "The shape and size of the defendants' cup 1 is extremely similar if not identical to the Claimant's cups."
  2. "It is clear that the interior of that cup was copied from the Claimant's cups, down to some stray inverted commas"
  3. "The external design of the Defendants' Cup 1 is different to the get-up".
  4. "There is no brand name on the Defendants' cups"
To help establish goodwill, the Claimant provided extensive evidence of advertising including in popular national newspapers.   The Defendants accepted that the Claimant had a reputation in its cups but denied that the Claimant had acquired goodwill in the get-up.
The Defendants' cups

The key English cases on passing off of shape and/or get-up were considered from Reckitt & Colman v Borden (Jif Lemon) to Schweppes v Gibbens and, more recently, Numatic v Qualtex.  These cases all identified the difficulties associated with claiming passing off in a shape or get-up.

As a result, the judge noted that there "are real difficulties in proving that trade dress or get-up has acquired a secondary meaning as an indication of trade origin, where, as here, it is consistently used alongside a trade mark or name" [34].  The Claimant had not provided sufficient evidence to establish that their customers rely on the appearance of the measuring cup in order to get a Tala product.  As the Arnold J put it in the recent London Taxi case, reliance is the acid test for the purposes of acquisition of goodwill in a shape [287].

The judge accepted that: (a) it is possible for features such as shape and decoration to identify a product even when the name by which it is known is missing, and (b) a confusingly similar name is not essential for a passing off to succeed.  However, she concluded that this was not a case where the public has been educated to recognise the shape of a Tala cup as indicative of the origin of the goods and consequently George East lacked the requisite goodwill to get the claim off the ground.

If that was wrong, she went on to consider confusion... Although there was some evidence of actual confusion - such as a photograph of the wrong product being used to illustrate an article in a national newspaper, the judge did not have sufficient evidence to determine how or why these photographs were used.  The absence of actual confusion was not fatal, in part because relatively small numbers of the relatively low cost items had been sold and the judge accepted that it was credible that evidence of actual confusion would not have come to light.

The judge considered the test set out in Interflora and Neutrogena for the level of confusion required, i.e. In Interflora Inc v Marks and Spencer Plc [2012] EWCA Civ 1501 Lewison LJ referred to Neutrogena [1996] R.P.C. 473 that:

"...There is passing off even if most of the people are not fooled most of the time but enough are for enough of the time. By 'enough' I mean a substantial number of the plaintiff's customers or potential customers deceived for there to be a real effect on the plaintiff's trade or goodwill."

On appeal in Neutrogena Morritt L.J. had held that the correct test was whether a "substantial number" of members of the relevant public had been deceived.  Lewison LJ concluded that the "important point is that passing off had been established even though most people were not deceived." [30]

Having considered both cases, the judge concluded that the "conspicuous differences[79], particularly between the exteriors of the cups meant that any confusion whether by members of the trade or consumers would be too low to satisfy the Interflora/Neutrogena test.

Monday, 28 November 2016

BREAKING NEWS: UK signals green light to Unified Patent Court Agreement

It is very difficult making predictions, especially about the future.

This Kat, if you had asked him last week, would have suggested that the most likely outcome for the Unified Patent Court was (in no particular order) that it would either not happen at all, or would proceed without UK involvement.  It seems he would have been wrong.  Today, in relation to the meeting of the EU Competitiveness Council, attended by Baroness (Lucy) Neville Rolfe, the minister with responsibility for Intellectual Property, it has been announced:

"The UK Government has confirmed it is proceeding with preparations to ratify the Unified Patent Court Agreement (UPCA). 

This is part of the process needed to realise the Unitary Patent and Unified Patent Court. Under the new regime, businesses will be able to protect and enforce their patent rights across Europe in a more streamlined way - with a single patent and through a single patent court. 
The court will make it easier for British businesses to protect their ideas and inventions from being illegally copied by companies in other countries. 
UK Minister of State for Intellectual Property, Baroness Neville Rolfe said:
"The new system will provide an option for businesses that need to protect their inventions across Europe. The UK has been working with partners in Europe to develop this option."
"As the Prime Minister has said, for as long as we are members of the EU, the UK will continue to play a full and active role. We will seek the best deal possible as we negotiate a new agreement with the European Union.  We want that deal to reflect the kind of mature, cooperative relationship that close friends and allies enjoy.  We want it to involve free trade, in goods and services.  We want it to give British companies the maximum freedom to trade with and operate in the Single Market - and let European businesses do the same in the UK."
"But the decision to proceed with ratification should not be seen as pre-empting the UK's objectives or position in the forthcoming negotiations with the EU."
Following the announcement today, the UK will continue with preparations for ratification over the coming months. It will be working with the Preparatory Committee to bring the UPC into operation as soon as possible." 
This makes the coming into force of the UPC, with its central division branch for Pharma and Life Sciences in London, pretty much a certainty.  How things will proceed after that remains, at least for this Kat, rather unclear.  The IPKat will keep you posted!

Book Review: Copyright Beyond Law

This Kat was very excited when she heard about "Copyright Beyond Law: Regulating Creativity in the Graffiti Subculture" by Marta Iljadica with Bloomsbury Press. The perfect opportunity to top up her hipster street art card with some proper knowledge.

The book begins with a notice that there are no images contained within the text, precisely because the author argues that graffiti is copyright protected. Iljadica invites readers to explore street art on their own (N.B. For London-based IPKat readers, I highly recommend the Alternative London walking tours near Liverpool St.) The book's focus is instead on the creative process of graffiti making.

The author best describes the crux of the book:
The title of this book, Copyright Beyond Law, draws attention to the interaction between copyright and the graffiti rules in the sense that graffiti creativity is beyond copyright - because copyright cannot account for the crucial aspects of the process of producing graffiti in such a way as to recognise the importance of pleasure and community to those who produce it - but also because the alternative normative framework that is produced to support the creative process is a form of regulation that stands apart from, that is beyond, legal rules.
Much of the book focuses on the norms and culture around a non-copyright understanding of the intellectual property of graffiti. The initial chapters provide a history of graffiti and the legal context, the second section focuses on "form" by breaking down the elements of graffiti, the third section looks at copying from the perspective of both legal and social norms, and the final two sections examine moral rights and interactions between copyright law, artists' social norms and other areas of law.

The book's empirical basis stems from contact with artists and 29 interviews with graffiti writers and street artists. The nuances are fascinating.  Iljadica's interviewees discuss where it is appropriate to tag, when one artist is entitled to paint over another's work, what type of copying is condoned and the acceptability of use of the images elsewhere. To give you an idea, here is a quote from an interviewee regarding tagging a school or a house:
There's definitely ethics involved. And there are kids who'll do it but it's very frowned upon. The people who do that [expletive] are normally 14 year olds with absolutely no idea and bad attitudes. There's not many experienced graffiti writers who would do that kind of stuff.
I was particularly interested in understanding the tension between the presumed illegality of graffiti, when the artist has not secured permission in advance of the work, and the IP protection of said work. Iljadica notes that without such permission, graffiti can be considered criminal damage. While acknowledging that in practice, copyright has very little impact on the creative practices of graffiti artists [Merpel muses whether this applies to artists in general], she describes the pros and cons of granting copyright protection to such images. There is an additional question, when criminal damage is involved, as to whether the focus should be on the artist or the work. She finds limited case law to suggest there is a legal precedent to support or reject copyright protection in criminal cases.

Copyright Beyond Law is the type of book I fantasise about writing. It combines empirical research with structured analysis to present a nuanced view of copyright, cultural norms and IP protection beyond IP rights, with just the right touch of interdisciplinarity. I would have really liked to see images of graffiti in the book, but the author is right to respect her understanding of their copyright. Copyright scholars, sociologists and lawyers involved in graffiti cases will find this book most useful.

Copyright beyond law: regulating creativity in the graffiti subculture, by Iljadica, Marta. Bloomsbury Press. ISBN: 9781509902019 is available here for £70.  Rupture factor: Low, 300 pages in hardback.

Mr Justice Carr's decision in Victoria Plumb is about Adwords (honest)

Would a reasonably attentive internet user be able
to identify the difference between the two?
Adwords.   Remember them?  About five years ago, we seemed to be height of the adwords battles.  Since then, matters have quieted down.  Then about a week ago, Mr Justice Carr handed down his decision in Victoria Plum Limited v Victorian Plumbing Ltd [2016] EWHC 2911 all about the defence of honest concurrent use in the context of keyword advertising.  Jeremy Blum (Bristows) and Andrew Butcher (Bristows) explain:  
"Given that we can count on one hand the number of judgments on the topic of trade mark infringement in the context of key word advertising (by our count they are L’Oréal, M&S, Lush, Mr Spicy) we were unsurprisingly eager to receive last Friday’s decision of Mr Justice Carr in Victoria Plum Limited v Victorian Plumbing Ltd [2016] EWHC 2911 (Ch). However, that anticipation was marginally dampened , but only temporarily, as the main issue in dispute focused on the defence of honest concurrent use, albeit in the context of keyword advertising. The defence is one of those curiosities of trade mark law (like the multiple functions of a trade mark) that you will not find in the Trade Mark Directive or the Trade Mark Regulation. So, read on if you do not want to miss out. 
The claimant and first defendant, both bathroom retailers that operate exclusively or primarily online, have been co-existing under their highly similar names since 2001. The claimant traded under the name “Victoria Plumb” until July 2015, when it changed its name to “Victoria Plum”. However, both sides accepted that for the purposes of this case the omission of the “b” from the claimant’s name is not significant. The first defendant trades under the name “Victorian Plumbing”. 

The two sides’ relatively agreeable co-existence became acrimonious when the first defendant began to spend significant sums bidding on the claimant’s Victoria Plum(b) trade marks (the most important of which being a UK registration for VICTORIA PLUMB) in the context of pay per click (PPC) advertising online, including variations such as “Victorian Plum(b)”. The search engine advertisements displayed in response to the first defendant’s PPC bidding activity fell into two categories:
  1. Ads that include the “Victoria Plumb” trade mark as a result of Google’s “dynamic keyword insertion” service – this service automatically includes the internet user’s search term in the resulting ad text if the search term matches one of the keywords purchased by the advertiser; and 
  2. Ads that include the terms “Victoria Plumbing” and/or “VictorianPlumb” and/or “Victorian Plumbing”. The claimant did not seek to restrain the use of the name ‘Victorian Plumbing’.
In respect of the first set of ads, the first defendant accepted that the PPC bidding that results in the display of these ads constituted trade mark infringement and submitted to judgment and an injunction against further infringement. Disappointingly, Mr Justice Carr refrained from suggesting that had they not submitted to judgment on this point the defendants would have been ‘plumb’ (for the non-cricketer see here).  However, infringement was not admitted in respect of the PPC bidding that results in the display of the second set of ads, with the first defendant relying on the defence of honest concurrent use. 
Victorian plumbing - descriptive of most London plumbing
After identifying the signs complained of ('Victoria Plumb’ and trivial variations of the sign, but not use of the First Defendant’s name ‘Victorian Plumbing’) the judge considered the test set down in the CJEU’s judgment in Google France.   The judge had to decide whether the second set of ads enable normally informed and reasonably attentive internet users to ascertain without difficulty whether the goods or services referenced in the ads originate from Victoria Plum or an undertaking economically connected to it, or from a third party. It was found that the ads do not allow the average internet user to make this determination without difficulty and, therefore, the first defendant’s PPC bidding activity that led to the display of the second set of ads constituted trade mark infringement.
This conclusion is really not surprising given the very close similarity of the Victoria Plum(b) trade marks with the terms used in the second set of ads. It is only if one looks very closely (i.e not the normally informed and reasonably attentive internet user) that one notices the ads do not display the exact words which the user searched for (e.g Victoria Plum(b)) but rather the ad refers to goods from ‘Victorian Plumbing’. There is little context in the advert to provide any clarity either.

The honest current use defence

The central plank of the first defendant’s case was that it had a defence of honest concurrent use.  In the context of validity, the CJEU in Budvar confirmed that where there has been a long period of concurrent use of two trade marks, and that use neither has or is liable to have an adverse effect on the essential function of the earlier trade mark, then the earlier mark’s proprietor cannot cancel the later trade mark.  Summarising the Court of Appeal’s guidance when it applied Budvar, Mr Justice Carr said that honest co-existence for a long period of the same or closely similar names may have to be tolerated. The judge then set out at paragraph 79 the factors to be considered as to whether ‘concurrent use’ is honest.

The judge found that the defence did not apply because the use complained of was that of the claimant’s Victoria Plum(b) marks, by bidding on them as key words. The defence might entitle a defendant to continue to use its own name or mark but it does not give a right to use the claimant’s mark. Further, other than use as keywords, the first defendant has never actually used those trade marks; this leads to a further consideration that the first defendant did not claim the trade marks guaranteed the origin of both entities but instead accepted that the trade marks indicate exclusively the Claimant.

The judge went on, in case he was wrong, to assess if the use was ‘honest’.  He held that
the defence could not apply in this case because the first defendant’s PPC bidding activity was inconsistent with its duty to act fairly in relation to the legitimate interests of the claimant. This finding was influenced by a number of factors, including the first defendant’s decision to substantially increase the amount it spent on bidding on Victoria Plum(b) keywords in late 2012 and the confusion among consumers shown by unusually high click through rates on the defendant’s ads displayed in response to searches including Victoria Plum(b) keywords.  Mr. Justice Carr came to the view that it should have been obvious to the first defendant that its increased spend on bidding on Victoria Plum(b) keywords would exacerbate the inevitable level of consumer confusion, and that the first defendant had encroached upon the claimant’s goodwill such that the honest concurrent use defence could not apply.

The judge then considered whether statutory acquiescence under section 48 Trade Marks Act 1994 applied. Section 48(1) provides that where there has been acquiescence in the use of a registered trade mark for five years or more, the proprietor of an earlier registered or unregistered trade mark loses his right to challenge or oppose the use of the later registration. Section 48(2) goes on to provide that, in that situation, the owner of the later registration cannot enforce it against the party that has acquiesced - this is the provision on which the defendant sought to rely. This statutory acquiescence defence failed for two reasons:
  1. Victorian Plumbing does not own an “earlier right” for the purposes of section 48 of the Act because it only began trading, on a small scale, a few months prior to Victoria Plum; and 
  2. Section 48(2) cannot apply in any event because Victoria Plum is not opposing the use of any earlier right that Victorian Plumbing might own – it is opposing the use of Victoria Plum’s trade marks by Victorian Plumbing. An estoppel defence also failed.
Passing off

Finally, the judge considered the counterclaim for passing off. The first defendant argued that the the claimant’s PPC bidding on “Victorian Plumbing” which resulted in the display of ads containing the term “Victoria Plum(b)” must constitute passing off.

The counterclaim succeeded. The judge found that by the time the claimant began bidding on “Victorian Plumbing”, the first defendant owned sufficient goodwill in the name to enable it to bring a passing off action against use of the name by the claimant. Furthermore, although it was accepted that the claimant’s relevant PPC bidding activity was on a smaller scale to the corresponding activity by the first defendant, and that the likelihood of consumer confusion at the point of click-through may have been somewhat lower in the case of the claimant’s activity than in the case of the first defendant’s activity, the judge found that there is a propensity for confusion when internet users who search for “Victorian Plumbing”(and are therefore likely to be looking for the defendant’s website) are presented with Victoria Plum(b) advertisements for a business unconnected with that of the first defendant.

Applying the test for an actionable misrepresentation, the judge concluded that a substantial proportion of the relevant public are likely to have been misled into believing that the claimant is, or is connected with, the first defendant, and that there is a likelihood of damage to the first defendant’s goodwill. Therefore, the claimant’s PPC bidding on “Victorian Plumbing” in combination with the resulting ads displayed constituted passing off. There is minimal detail on this finding, but Mr Justice Carr confirms that the point to consider when looking at a misrepresentation for passing off is the advertisements and whether they indicate a connection between the parties.

To our knowledge, this is the first UK case where passing off has been found in the context of PPC bidding. Although passing off has been raised in previous keyword trade mark infringement cases, passing off arguments have not previously been pursued to a finding of liability.   It is unlikely to herald a new age of passing off allegations in the Adwords context given the close similarity of the two sides' marks that is likely to be required for an actionable misrepresentation in the context of search engine advertising.

The first defendant is entitled to advertise and promote its business. It has a confusingly similar name which was tolerated for many years. It is easy to see how the first defendant might have thought it could extend its marketing activities by purchasing “Victoria Plum(b)” as keywords given it had existing rights, co-existed for over a decade and had an established brand in the very similar words “Victorian Plumbing”. Since Interflora it has been clear that keyword advertising itself is not an inherently objectionable practice. Moreover, third party competitors are happily bidding on the claimant’s trade marks as key words, so why can’t the first defendant?

In circumstances where two entities co-exist with the same or similar names, they both have to be careful not to overstep the delicate balance. It is noteworthy that the first defendant recognised the parties names are so similar that there was a likelihood of confusion but in spite of actual confusion they co-existed. A claimant’s mark is not impaired by a defendant’s honest concurrent use as the mark does not denote the claimant alone. That is why the honest concurrent use defence exists.

But, the status quo of co-existence needs to be maintained and confusion can not be exacerbated. Of course, the bidding on the keywords is not in itself an infringing act. In these types of circumstances, to avoid the average internet user from having difficulties ascertaining from which entity the goods in the advert originate, the party will need to ensure the advert is clear, if it is possible to do that when the brands are so similar. Consistent with maintaining the co-existence balance, neither party can overstep the mark as the court found that the claimant committed passing off due to its pay per click advertisements being unclear.

The plain similarity between Victoria Plum(b) and Victorian Plumbing means this case is likely to be an outlier from the ‘typical’ AdWords cases and the signs at issue clearly made the question of infringement less arguable (hence the reliance on the honest concurrent use defence). If the defendants had a different trading name e.g Roman Plumbing, but still performed the identical acts complained of, it is highly likely the approach and evidence required to satisfy the Google France test would have been different - if the case would have been pursued at all."

Sunday, 27 November 2016

Sunday Surprises

The IPKat tops the list of the most popular copyright law blogs of all time, according to Justia Blawgsearch. Congratulations to our copyright Kats! Purring Merpel is so proud.

On 24 November 2016, The Institute of Trade Mark Attorneys became the Chartered Institute of Trade Mark Attorneys (CITMA). This honour was awarded by The Queen at a meeting of The Privy Council. The Charter recognises the distinctive and pre-eminent expertise of its members in the trade mark and design fields. The new status provides the title of Chartered Trade Mark Attorney to all fully qualified CITMA members. More information, here.

On 1 December 2016, Dr. César J Ramírez-Montes will present on “The Future of the European Concept of Trade Mark Functionality”, as part of the Global Intellectual Property Lecture Series 2016/2017, organised by the Centre for Commercial Law Studies, Queen Mary University of London. Dr. César will discuss the issues arising from the registrability exclusions namely the shapes resulting from the nature of the goods, necessary to obtain a technical result and value-adding to the product. The venue is the Lecture Theatre in 67-69 Lincoln’s Inn Fields, London. Attendance is free, but registration is required. More details, here.

The fourth annual IPBC Asia will take place from 4 to 6 December 2016 at the Ritz-Carlton Hotel in Shanghai, China. The two-day conference will include such sessions as Asia’s leading companies revealing their IP nightmares, SEPs and FRAND term negotiations, the emerging patent battleground in China, the new US patent litigation reality, and risks and opportunities in the new European patent market. Speakers are business leaders and experts in the IP field. Simultaneous Chinese-English translation will be provided. Register now! More details, here.

LLM, Postgraduate Diploma or Postgraduate Certificate in Computer and Communications Law. The Queen Mary University London is offering this online distance course, starting on 9 January 2017. The programme is for both lawyers and non-lawyers working in the areas of Data Protection, Telecommunications, IP Law, Cybercrime, Computer Forensics, Online Gambling, Media Law, Cloud Computing, and Information Law. Application deadline is 5 December 2016. More details, here.

Free webinar on “The Economic Contribution of IP Rights” with Dr. Nathan Wajsman, Chief Economist of EUIPO. Dr. Wajsman will discuss the results of two studies conducted by EUIPO published on 2013 and 2015, as well as possible future research on the relationship between IP and economic performance. The webinar is hosted by OxFirst and will take place on 8 December 2016 at 15.00 (CET). More information and registration here.

Sprout, IP Xmas charity gigs. This event is dedicated to supporting the charity "Together for short lives" and features The Black IPs, ChIP Shop Boys, Florida Tomato Exchange, The Numbhead Folk Circle and IP Freely and the Incontinents. When and where? On 13th December 2016 at The Old Nick Pub on 20-22 Sandland Street, London. Entrance is free. More information, here.

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