Thursday, 15 March 2018

Abbreviations, acronyms, and their plurals

Creating a slide show this morning, a task that demands brevity and therefore frequent recourse to abbreviations, I wrote "TMs" for "trade marks". Autocorrect didn't like it, but that was no surprise and I overrode it. Then I wondered whether the correct way to form the plural of an abbreviation wasn't just to add an "s" - should I be adding another "M" (or "m", perhaps)? After all the plural of "p" for page is "pp", and of "op" for work (opus) is "opp". (The use of full points turns out to be another contentious matter.)

In fact The Economist Pocket Style Book (Economist journalists must have bigger-than-average pockets) tells me that the right way to set out an abbreviation is in small capitals, and to use a lower case "s" for plurals. I suppose that in the name of a case (e.g. "Re Le Mans TM") the phrase would have capital initials by virtue of forming part of the title - "title case" is in fact the correct expression for that, I think. And actually the words of the trade mark should be in upper case: Re LE MANS Trade Mark (BL O-012-05, a decision of Richard Arnold QC as he then was). But of course the heading of the decision is in block capitals, although in the body of the decision it is in upper case. None of the three IP textbooks at my right hand have it in the table of cases, so no guidance from there. I could have scanned them for another such decision but life is too short, especially when I can reach up to the top shelf and take down a dusty copy of the 12th edition of Kerly - in which I look up the Perfection case (Crosfield [1910] 1 Ch. 118; 26 R.P.C. 561) and find the trade mark rendered just like that - a capital initial only.

Neither Fowler's Modern English Usage nor The Oxford Style Manual offer any assistance in their entries on abbreviations. The King's English doesn't even have an entry in its index for the topic. The Oxford Dictionary of English Grammar is however more helpful: it tells me that the initial letters of the (main) words of a phrase should appear in upper case, so BBC and OTT get the same treatment, which is not what The Economist prescribed. It goes on to say that "[t]here are a few special written conventions for plurals", of which it gives three: "pp", which is from where I embarked on this little voyage through English grammar, MSS which I was also thinking about, and "ff" for "following pages". Elsewhere, I read that "p" stands not for "page" but for its Latin equivalent, "pagina", and "pp" ("paginae") is an example of a special rule for Latin words or expressions in English usage. ("Op" and "opp" presumably follow the same rule.)

Finally, since it seems that uppercase or small capitals is correct, and an added "s" rather than a doubled last letter is right, should there be an apostrophe? I can see a reason why there should be a difference in the treatment of contractions (e.g. Dr) and true abbreviations, where there is something missing between the initial letter in the abbreviation and the plural "s". But The Oxford Style Guide says just add the "s", so TMs would be correct, and I could have saved myself half an hour or so on this interesting diversion. Maybe some helpful reader will be able to guide me further, but unless I hear otherwise I'll go with TMs.

Saturday, 3 March 2018

Interpreting patent claims: Actavis v Eli Lilley

It's now 13 years since Lord Hoffmann told us definitively how to interpret patents claims, in his opinion in Kirin Amgen v Hoechst Marion Roussel [2005] 1 All ER 667. The courts had spent a lot of time pondering how to do what should have been a pretty simple task: judges have always been in the business of finding the meaning of legal documents, and patent claims should never have been much different. Or should they? For many years the courts have eschewed (nice word) a literal interpretation and chosen instead to look at the claims as practical documents written for practical readers.
I have never bought into that view (but who cares what I think?). Patent claims are usually written by highly skilled and trained patent attorneys for other patent attorneys, members of the patent bar and ultimately specialist judges to read. Why should it be necessary to adopt a different rule about interpretation from that which governs the interpretation of, say, conveyances?
I suppose that, centuries ago, when patents for inventions first came before the courts, the judges were able to say "we know how to interpret documents like this: we look at the wording." Only later did the fiction arise that the claims were anything other than highly specialised documents written by and for experts. The idea that patent claims are addressed to some hypothetical individual skilled in the art strikes me as nonsense: what ordinary person, however skilled they might be in the art, ever reads patent claims?
The courts pursued this strange idea through a series of cases, tying themselves in more and more knots. Catnic, for one, should probably have been a professional negligence case - which is not to say that the patent agent who write the claims was necessarily negligent, but it would have been helpful if the courts had considered the point. Then in the Improver case Hoffmann J formulated a series of questions for the judge to ask, which turned into the Protocol Questions when the Protocol on Interpretation of Article 69 (of the EPC), originally dating from 1973, became recognised as the governing document, and in due course Lord Hoffmann put his own Improver Questions out of their misery.
In Activis UK Ltd v Eli Lilley & Co [2017] UKSC 48 (12 July 2017) the claim in issue was a Swiss-style claim for pemetrexed disodium, with vitamin B12, used in the manufacture of a medicament for treating cancer. Actavis sought a declaration that it would not infringe by marketing drugs containing other pemetrexed compounds (for example, with potassium instead of sodium). Arnold J at first instance gave the declaration, and the Court of Appeal upheld him, both following (as they pretty well had to) Kirin Amgen. The Supreme Court, however, allowed Actavis's appeal.
Lord Neuberger (who, remember, is a Oxford chemistry graduate) held that when a court has to consider a possible infringement by a variant, there are two questions that it must ask:

  • First, does the variant infringe the claim at issue as a matter of interpretation? If it does, that's all the court has to do.
  • If not, ask whether the variant infringes because it varies only in a way, or in ways, which are not material. Put another way, is the variant equivalent to the claimed invention?

Lord Neuberger said that the Improver or Protocol Questions remain useful in finding an answer to the second question, but needed to be changed slightly. They now require the judge to consider

  1. whether the variant has a material effect on the way the invention works;
  2. whether the notional addressee, on learning what the variant does, would consider it obvious that it would achieve substantially the same result in substantially the same way as the invention; and
  3. whether the notional addressee would have uderstood from the language of the claim that the patentee intended strict compliance with the primary meaning to be an essential requirement of the invention.

The courts had previously set their faces against introducing a doctrine of equivalents into UK patent law, but the amendment to the Protocol which introduced Art.2 made this untenable. Potassium was, in effect, equivalent to sodium for the purposes of the patent and Actavis would infringe if they marketed the products about which they asked in the first place.
The further the courts move away from a literal interpretation of patent claims, the less certainty there is for those, like Actavis, who want to operate in the field but also don't want to infringe. One argument - perhaps the argument - against a literal interpretation is that it prevents a patent claim being read in the light of technological developments. But is it right that a patentee who has chosen to specify a sodium compound rather than using broader language (if, of course, they could get away with it) should receive such an extensive, and flexible, monopoly? Perhaps the correct approach would be to regard the discovery that a potassium or some other compound would do the job as leading to an invention in its own right.

Thursday, 1 March 2018

Steve Jobs: Trade marks and personal names

The news that two Italian brothers have registered what turn out to be two EU trade marks, one for the name Steve Jobs and the other for a logo comprising the name with the letter J, missing a bite-shaped piece like another well-known logo, illustrates how difficult it is to accommodate celebrities' personal names within the trade mark system. There was a time, long before EU trade marks arrived on the scene, when the Trade Marks Registry in the UK would not have allowed an application for registration of someone else's personal name as a trade mark to proceed without the consent of the owner of the name.

You might think that is how a trade mark system should work, but these Steve Jobs trade marks show the limitations of the law. First, the story tells us that the brothers were surprised that Apple had not registered Steve Jobs's name as a trade mark. But why should Apple have done so? Actually for the very bad reason that if you don't register a trade mark you run the risk of someone else grabbing it - a possibility since the switch from a use-based trade mark registration system, where the register records what distinctive signs businesses are using, to a registration-based system in which the property right comes into existence through registration. When we made that change in the UK in 1994, it put trade mark law on a very different footing - and incidentally condemned small (and not small) businesses to paying lots of fees and lawyers' bills for trade marks that up until then they never really needed to register.

Although there are many personal names of celebrities on the register, there are also examples of celebrities failing to secure registration. There are significant distinctiveness problems, as the Elvis Presley estate and later Sir Alex Ferguson, the Princess of Wales's executors and Corsair Toileteries Ltd who tried to register Jane Austen as a trade mark, found. Celebrities' names are not necessarily perceived as indications of commercial origin: in the case of deceased celebrities, they might be seen as some sort of commemoration.

Apple apparently tried to prevent the trade marks being registered, but without a trade mark of their own they must have been relying on common law rights - and even if Steve Jobs had used his name in trade and thus accumulated goodwill, which doesn't seem to be the way things happened because he adopted the Apple trade mark for his business, that would have been Mr Jobs's goodwill not Apple's (unless it had been assigned to the company). Would his estate have been better-placed to sue? Yes, probably, but still only if it owned some goodwill. Reputation - of which Mr Jobs had plenty - only becomes goodwill when it is used in trade.

A better argument might, perhaps, have been that the trade marks were not applied for in good faith - and that is an argument that I suppose could yet be deployed to have them declared invalid. But that is a very difficult route to take, the facts being hard to prove and the standard probably quite low. So a situation that most ordinary people (which in this context means "not trade mark lawyers") would imagine the law would not allow to arise, might be something that the perceived rightful owner can do nothing about.

Thursday, 22 February 2018

Where there's a hit there's a writ

The old saying doesn't work so well now we don't have writs any more, but anyway the litigation reported by the BBC today is taking place under US law. That also means that considering how it might pan out under English law is pretty speculative, but it does serve to illustrate some important points of copyright law.

The story is about the family of a playwright (a Pullitzer Prize winner, Paul Zindel) suing several parties concerned with the film The Shape of Water. The fact that it is tipped to win an Oscar or two goes some way to explaining why it has generated litigation - the simple fact is that if it wasn't a hit, it would not be worth the price of a writ.

The plaintiffs (they still have them in the USA) argue that the film is "in many ways identical" to Mr Zindel's play Let me hear you whisper. The defendants say they never heard of that play, although the article says that there was a TV production of it at about the time the idea of the film was forming in its writer's mind. The writer might have been exposed to it, and it's possible that subconscious copying took place. It's also possible that nothing of the sort happened, and that the "at least 61" ways in which the films are identical are down to the fact that if you tell a story about an aquatic creature kept in a laboratory and its relationship with a cleaner or janitor those similarities are going to happen. Like Hoehling v Universal Studios  618 F.2d 972 (2d Cir. 1980) which turned partly on the point that if you're going to make a film set in Nazi Germany you are bound to have scenes in beer halls and people giving straight-arm salutes.

US copyright law works differently from the way our copyright law works. Because it expressly excludes ideas from protection, US law requires the judge to go through what has become formalised as a three-step process of abstraction, filtration and comparison - to reduce the work to a copyright-protected "golden nugget" before putting it beside the alleged copy to compare the two. The equivelant in our law is the rule that copyright is infringed if the defendant has taken the whole or a substantial part of the work - it all comes down to substantiality at this stage. In other words (and if an American friend should happen to read this I stand to be corrected), US copyright law protects elements of a work which qualify for protection (which are the author's original work, basically) whereas the UK law looks at the work as a whole and asks whether it meets the originality standard, then considers whether a substantial part has been taken. This is a point that I have discussed before on this blog: it seems unlikely that any element which is not the author's original work could be regarded as a substantial part, but this is not an area of the law where everything is set in stone at present.

The news story is by no means a comprehensive disclosure of the facts, so it would be wrong to speculate much about the possible outcome, but an interesting illustration of copyright principles.

Friday, 27 October 2017

Transformative use

In trying to explain when a substantial part of a copyright work has been taken (and therefore an infringement might have taken place), I came up with what I thought was a great illustration. It helped, perhaps, that I was doing the teaching in Moscow, so Rachmaninov came easily to mind. Leaving aside the fact that there is no extant copyright to worry about in practice (in any case, Paganini died in 1840, 94 years before the Rhapsody was written), would it ever be thought that Sergei Vasilievich's Rhapsody on a Theme of Paganini (Opus 43) infringed Paganini's copyright, or that it was anything other than a completely original work?

To start with, listen to the last of Paganini's 24 caprices, which is where Rachmaninov got the Theme from, played here by Hilary Hahn:

Then listen to Rachmaninov. There are 24 variations in his Rhapsody, starting with a fairly literal statement of the theme (you can hear that in the last of these three clips). Maybe he would have had to clear that with the Italian virtuoso, had modern copyright law applied at the relevant time. But the point of variations is that they transform the theme, and by the time you reach the glorious and impossibly romantic variation 18 (played in this clip by Valentina Lisitsa with the London Symphony Orchestra conducted by Michael Francis) it has changed beyond recognition, turned upside-down by Rachmaninov to produce one of his greatest tunes (and I write "his" quite deliberately: it's no longer Paganini's).

The great pianist Stephen Hough explains what is going on in this clip.

Of course there are many other examples of authors (in the broad copyright sense) taking someone else's work and transforming it into something utterly original (in the copyright sense as well as the ordinary one), but I think this is a particularly good one as well as being a beautiful piece of music.

Note: "transformative" is not a word used in the Copyright, Designs and Patents Act 1988. It is mentioned as a description of a type of fair use in the US legislation, and it featured in the Gowers Review a decade or so ago - where it was suggested that there should be an "exception", created by by an amendment to Directive 2001/29/EC, in favour of "creative, transformative or derivative works" which would benefit what the Review called "the Hip Hop industry".

Passing-off lecture launches IPso Jure channel on YouTube

It's now over two years since a memorable dinner over which, among other things, the idea of making YouTube videos on intellectual property came up, and finally I have managed to complete the first in what I hope will be a series. It's good that one thing has now worked out well from then.

You can find the YouTube channel here and I will put a link on this blog to make it easy to find. I called this first video a brief guide to passing off, but my old friend Godfrey pointed out that 54 minutes hardly counts as brief so I amended the description (although considering the size of Christopher Wadlow's great book on the subject, 951 pages in the 4th edition and no doubt more in the 5th edition which was published last year but the publisher's website doesn't reveal how many, I think under an hour counts as brief). There's only one possible response to that, and I am delighted that Pascal is the man to quote: "Je n'ai fait celle-ci plus longue que parce que je n'ai pas eu le loisir de la faire plus courte." (Pretentious? Moi?)

I made the video using the Movie Maker program that comes as part of Windows these days (or perhaps it's an app that you have to download). It was very clunky, and I hope I can find an alternative that will make it easier to adjust the time each slide remains on screen - surely there must be a program that allows you just to drag the end of that image along the timeline to coincide with the right point in the audio file. If you're interested I will share my findings in future posts. And if you're not interested, I'll still do that but you can ignore me. If you have suggestions for suitable programs, I'd like to know!

Now that I have broken the logjam that had been building up for a long, long time, I hope I will find it easier to be briefer in future presentations. Certainly I already have several ideas for improving this video, although my next task will be to address trade marks, responding to a request I received a few months ago. But briefly!

Monday, 9 October 2017

Confused in Spain if not in the UK

Co-existence agreements have become routine in trade mark practice in the last few years (by which I now find I mean at least a decade - since 2005, in fact, when the Trade Marks Registry stopped refusing applications on relative grounds, meaning because someone already had a similar or identical trade mark already registered for the same or similar goods). Parties who would otherwise be locked in opposition proceedings can draw lines between their trade marks and the respective goods and services so as to avoid consumers becoming confused. But an agreement that overcomes problems in the UK won't necessarily help when a conflict arises elsewhere.

In a recent case, Ornua Co-operative Limited, formerly The Irish Dairy Board Co-operative Limited v Tindale & Stanton Ltd España SL the European Union's Court of Justice had to deal with a conflict between two Irish dairy companies, the owners of the well-known KERRYGOLD trade mark and the owners of the less well-known KERRYMAID trade mark. KERRYGOLD is registered as a European Union trade mark, while KERRYMAID is registered in Ireland and the UK.

It's not very surprising that the parties had struck an agreement to enable the trade marks to co-exist peacefully in the UK and Ireland. It's possible to argue that there's no likelihood of confusion on the basis that the common part of the trade marks is the name of an Irish county famed for dairy products, so the question whether GOLD and MAID are confusingly similar: but the fact that the KERRY part of the trade marks is the beginning makes them more confusing, and perhaps KERRYGOLD is well-enough known that consumers seeing KERRY-anything on the supermarket shelf would get muddled.

Leaving the co-existence agreement aside, problems arose when KERRYMAID was introduced to the Spanish market. No registered trade mark there, no co-existence agreement. KERRYGOLD sued for infringement (throwing in a dilution claim too), and the Spanish court decided that because the similarity lay in the KERRY element of the trade marks which was just a geographical location, and there was a co-existence agreement covering the UK and Ireland, there was no likelihood of confusion. KERRYGOLD appealed and the Spanish appeal court set off on an expedition to Luxembourg - in other words asked the Court of Justice for a preliminary ruling.

The Court, unsurprisingly, said that you can't assume that because there is a co-existence agreement in two Member States, there won't be a likelihood of confusion in other Member States. If the Spanish court had been persuaded that there was no material difference between the UK, Ireland and Spain, that might have justified a finding that there was no infringement, but that hadn't happened. Indeed, I would go on to say that the fact that there is a co-existence agreement in two Member States indicates that there is a likelihood of confusion in other Member States where the parties haven't struck a deal to prevent it.

I would also have made sure that the UK co-existence agreement made clear that if the junior trade mark owner wanted to enter the Spanish market, there would have to be a new agreement. I'm dealing with exactly the same problem for a client at the moment: the fact that the junior trade mark owner only has a UK trade mark struck me as pretty conclusive about the matter of using their name outside the UK. It would not be use of the UK trade mark in a third country, it would be the use of something identical to the UK trade mark, and therefore the agreement has to stop the junior trade mark owner doing anything outside the UK. Co-existence involving a UK trade mark can't amount to co-existence outside the UK.

Friday, 15 September 2017

Why You Should Register Your (Well-Known) Marks in India- Now!

The enactment of the Trade Marks Rules, 2017, has paved the way for formal registration of “well-known” Marks in India. Although India did recognise Well-Known marks earlier (through its Trade Marks Act, 1999, which came into force on September 15, 2003), there was no provision for their formal registration. After the 1999 Act, the Indian Trademark Registry made efforts to consolidate marks that, over a period of time, were recognised as “well-known” by various Courts, Tribunals, Registrar etc. and made available this list online which has 81 “well-known” marks. 

Going by the list, Trademark “Philips” seems to have been the first trademark that was recognized as a well-known mark in India back in 1983. However, it was the famous case of “BENZ” by Delhi High Court which made Well-known marks concept well known and accepted in India (1994 PTC 287).


Almost every brand is created with the aim of making it a top brand; however, only a few survive the test of time and of those few, just a fraction makes it to the big league.
Looking back in history reveals that brands such as Toyota, Microsoft and Apple, that are today globally-recognised, took several years to enter the league. By contrast, brands such as Google, Facebook and WhatsApp made it to the list in much shorter timelines. Of-course, the nature of their business, the increasing pervasiveness of the internet and the era of rapid globalisation also played a role in these brands achieving global recognition much faster.

There surely are certain benefits of “well-known marks”, the most important of them perhaps being protection from dilution, provided of course, that they continue to deliver superior, differentiated products and services.


Section 2(1)(zg) of The Trade Marks Act, 1999, defines a “well-known trade mark” in relation to any goods or services, as  “a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.”

What that means is - well-known marks are generally those that are acknowledged to have a high degree of reputation even beyond the areas of business of the proprietors of the marks. Such marks have attained such a degree of goodwill amongst general public (within a particular jurisdiction or even beyond) that even the use of such mark in relation to goods/services it is not generally associated with, would remind general public of the original source/product/service/proprietor. 


India being a signatory to the TRIPS Agreement was obligated to amend its Trademark law by providing protection to well-known marks.

Articles 16.2 and 16.3 of the TRIPS Agreement contain certain provisions on well-known marks, which obligate member States to refuse or to cancel the registration, and to prohibit the use of a mark conflicting with a well-known-mark.


Below we try to address a few questions like 'how to register a well known mark' and 'how much does it cost' to register a trademark.

Application for registration of Trademark:

As per Rule 124 of the Trade Marks Rules, 2017, any person may file a request for determination of a trade mark as well-known (interesting to note that here it has been avoided using the term “registration”, using instead the word “determination”). Each such request shall be accompanied by:
  1. A statement of case describing the applicant’s rights and claim over such mark being a well-known mark;
  2. Evidence in support of applicant’s rights and claims;
  3. Details of a court order, if any in which such mark was recognised as a well-known mark; and
  4. Requisite fee (INR 1, 00,000.00).
The Registrar may call for further such documents/information as he thinks fit for the determination of a mark as “well-known”.

Prosecution & Registration:

If the application is found in order, the Registrar may, before determining a trade mark as well-known, also invite objections from the general public. Such objections must be filed within thirty days from the date of invitation.

Notwithstanding the above, if it is found that a trade mark has been erroneously or inadvertently included in the said list, the Registrar may, at any time, remove a trade mark from the list of well- known marks, after hearing the concerned party.


All proprietors who believe their marks to be “well-known” marks must consider making an application for determination of their mark as a well-known mark.

Further, proprietors of the marks that have been recognised by a Court of Law or Registrar as a well-known mark must also consider this registration with the Trademark Registry.


Once a trademark is determined by the Indian Trademark Registry to be as a well-known mark, the proprietor can be assured that no one else can register an identical or a similar mark in any of the 45 classes of goods and services in India. Registration would definitely safeguard the proprietors (of well-known marks) from the trouble of opposing every identical/similar mark every time a third party tries to register or to contest the registration of marks which may have been erroneously registered in any of the 45 classes.


As per Section 11(6) of the Trade Marks Act, 1999, The Registrar shall take into account several factors in determining whether a mark can be recognised in India as “well-known”. Such factors include the following:
  1. the knowledge or recognition of that mark amongst the relevant sections of the public in India as a result of promotion of the trade mark;
  2. the duration, extent and geographical area of promotion/use of the trade mark;
  3. the duration and geographical area of any registration/application of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark;
  4. successful enforcement of the trade mark to such an extent that such trade mark has been recognised as a well-known trade mark by any court or Registrar.
Further, Section 11(7) of the Act states that the Registrar shall, while determining whether a trade mark is a “well-known” mark for the purposes of sub-section (6), also take into account:
  1. the number of actual or potential consumers of the goods or services;
  2. the number of persons involved in the channels of distribution of the goods or services; and
  3. the business circles dealing with the goods or services, to which that trade mark applies.
Section 11(8) of the Act provides that where a trade mark has been determined to be well-known in at least one relevant section of the public in India by any court of Law or the Registrar, the Registrar shall consider that trade mark as a well-known trade mark for registration under this Act.


Certain myths and misconceptions prevail that in order to be a well-known mark, the mark has to fulfil various other criteria- for example, it should be registered/used in India etc. However, Section 11(9) of the Act clarifies that for determination of a mark as a well-known mark in India, the following conditions are NOT necessary to be fulfilled:
  1. that the trade mark has been used in India;
  2. that the trade mark has been registered;
  3. that an application for registration of the trade mark has been filed in India;
  4. that whether the trade mark is well known in; or has been registered in; or in respect of which an application for registration has been filed in, any jurisdiction other than India; or that the trade mark is well-known to the public at large in India.

By making provisions for registration of well-known marks, India has made it easier for entities with well-known marks to safeguard their rights. As many other countries are still contemplating to bring about such legislations by this amendment India has definitely taken the lead here. Although a few organisations have questioned the validity of the provisions relating to registration of well-known marks, none has yet challenged them in a court of law. Proprietors of reputed brands now have an opportunity to register their marks as “well-known” marks in India in order to not only safeguard their marks against unauthorised and unlawful use but also to protect them from the risk of dilution by inferior product/services. 

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