Wednesday, 8 April 2015

Assos, Asos and the "own name" defence

According to WIPR, Assos (a Swiss clothing manufacturer) is appealing against the Court of Appeal's April Fool's Day judgment holding that although the marks in suit were similar, and there was a likelihood of confusion and damage to the claimant's mark, Asos (an online retailer) could rely on the "own name" defence under section 11 of the Trade Marks Act. Read the WIPR report: there is no point in my paraphrasing it here, and I cannot direct you to the BAILII report because it is not online yet. At the same time, marvel at the WIPR's author's inability to identify members of the judiciary by their correct titles. What amateurs!
Assos are proposing to appeal to the Supreme Court, according to their solicitors Bird and Bird, and one can see why they might. Surely, despite cases which say otherwise, the "own name" defence was never intended to apply to company names which can so easily be invented to suit a particular purpose. However, that particular point (subject to what I find in the judgments in the Court of Appeal when they are published) seems to have become part of the corpus of trade mark law.
Of course, the defence is subject to the proviso that the use has to be in accordance with honest practices in industrial and commercial matters. That must be the key issue in this case, notwithstanding that Sales J seems to have based his dissenting judgment on logical restrictions on the scope of the defence.

The Washington Post: YouTube’s copyright system has taken Rand Paul’s presidential announcement offline

This report of a spectacular own goal almost made me laugh (but the excesses of modern intellectual property law and practice will never get past that "almost" - they are more likely to make me cry). The headline tells you everything.

I suppose it illustrates the importance of clearing rights for all the uses to which a copyright work might be put in the modern age. Perhaps Senator Paul, or at least his people, had obtained the myriad permissions (or the omnibus permission) needed but YouTube's robots, acting as WMG's agents, took it down anyway.

The reference in the article to huge music companies (the expression "Big Copyright" comes to mind) being able preemptively to apply copyright law encapsulates the problem in a way I have not read before: I will try to file that expression away for future use, although I think it is better called pre-emptive (my dictionary tells me that the hyphen is correct in the adjectival form but not in the adverb) enforcement, not application, which is too imprecise a term for lawyers to use (acceptable, though, for journalists, I think). Maybe it is a synonym for bullying. And read in the context of the Senator's attack on the power of special interests, the story becomes even more powerful.

Friday, 27 March 2015

Jeremy Phillips talks to Law Vox by Oxford Academic (OUP)

I am hugely enjoying this podcast, an interview with Jeremy Phillips produced by the publisher of so many IP books (including many of Jeremy's). It's highly informative and a great explanation of the importance of intellectual property law, although there are some themes that he might have explored such as the immense growth in the power of intellectual property rights ... although he does say that most trade marks are not intellectual property, a very useful proposition. When I have listened to it fully, and perhaps a couple of times, I might post more.
(Actually, is it right to call it a podcast if it cannot be downloaded?)

Monday, 16 March 2015

Intellectual property protection for Russian armaments

The Moscow Times reports that:
The [Russian] Defense Ministry is working on a system to keep track of Russian military innovations at home and abroad in an attempt to wrestle [sic] control of copyrights on Soviet-era equipment away from a global industry of imitators, state news agency RIA Novosti reported Wednesday.
Compared with other events in Russia, that's not really very worrying but it certainly gave me pause for thought. Do they really mean 'copyrights' (or even 'copyright')? Copyright is of course a feeble way to protect industrial designs these days, in the UK and in most other countries too. But patents would be even weaker, because the end of the Soviet era is more than a patent's lifetime ago ... To my surprise, though, I discovered that MT Kalashnikov (who died only in 2013, at the age of 94) was applying for patents with priority dates as recent as 1997 (this one for example - but why did a Chinese patent come up first on Espacenet?) and his son Viktor seems to be keeping up the - er - good work. So perhaps it's the words 'Soviet-era' in that quote that are questionable.
Lieutenant-General Kalashnikov has seemingly been responsible for arming most of the world. His inventions must constitute a large part of the production of the world's second-biggest arms exporter, albeit presumably at the lower end of the price scale: you have to sell a lot of assault rifles to make as much money as you would from a single jet fighter sold to, for example, India. It's probably not the jet fighters the Russians are worried about, though I recall that there were a lot of Chinese reproductions of Soviet aircraft around some time ago (just like the reproductions of various vehicle designs which the Chinese motor industry specialises in these days). Indeed, the Moscow Times story makes clear that the problem the Russians face is that sanctions mean they can't sell AK-47s like they used to, and that production in former Warsaw Pact countries, and China, where fraternal munitions factories were established during the Cold War (the First Cold War, as we might soon be calling it) is filling the gap. A large part of the market is probably in the USA, which is a nice paradox. (The manufacturer's website tells me, interestingly, that its Saiga-12 Mod. 340 sporting shotgun is widely used by law enforcers in the US, which may be a more significant piece of information: and Saiga hunting rifles are apparently very popular in the US too). Maybe Lenin's theory of imperialism could explain Russia's territorial expansionism, creating new markets for weapons among the little green men ...
Let's get back, as quickly as possible, to intellectual property. There might be some relevant patents: there might be some relevant copyright, in some countries: there might be some of the more exotic intellectual property rights like gebrauchsmuster. Design right in the UK would be no help, because it would have expired and in any case the designer was not an EU citizen nor was he habitually resident in the EU, and articles to his designs were not first marketed here. Registered designs are apt to protect the appearance but not the function of an article, so while they could be of some help (the appearance of the AK-47 is certainly important) it will be small - and even if relevant registrations were ever obtained they are likely to have expired long ago. Perhaps, unlikely as it seems, copyright is the manufacturer's strongest suit.
Unless ... what about trade marks? Both the surname of the inventor and the familiar designation of the weapon are highly distinctive. They meet all the requirements here for registration as a trade mark, leaving aside the question of public policy and morality I suppose, although the fact that 'AK' stand for Автома́т Кала́шникова (Kalashnikov automatic) might create a descriptiveness problem, against which 66 years' use might be an effective counterargument. But there's nothing I can find on the UK or EU registers that might assist, which is a rather surprising omission. Of course it is possible that the Polish, Bulgarian, Romanian, Serbian and Chinese manufacturers referred to in the Moscow News article are not using either trade mark - but I bet the retailers in the US are. Which makes me wonder whether Russian-owned US trademarks can easily be enforced. I think that in the English courts an order for security for costs could put a spanner in the works - is there something similar in the US?
All of this highlights the important point, that it is the activities of foreign undertakings that are worrying the Russians. No point in bringing an infringement case in Syria or Iraq against whoever is supplying ISIL: this is a problem that can only be dealt with at the manufacturer level, and that won't affect the huge second-hand trade. Perhaps the Russians could persuade some of the offending manufacturers to stop, although unless they have a lot more legal protection in Poland, Bulgaria and Romania than they seem to have here they will be hard-pressed. Maybe the Serbs will be more open to the Russians' blandishments. The chances of stopping production in China are, one assumes, at best negligible.
If there were any point in trying to use legal steps to stop this trade in fake firearms in the UK, an action for passing off would seem to be the logical way to go, in the absence of anything better: and it could stand an excellent chance of success. But I don't think the UK is really their main worry, notwithstanding that the manufacturer's website mentions that it exports products to us. Precisely what, I don't know, but Izhmash, the distinctly Soviet-era name of the manufacturer (Izhevsk Machinebuilding Plant, or Ижевский Mашиностроительный Завод) before it merged with Izhmech (don't ask) to become a wonderful double entendre, the Kalashnikov Concern, made motorcycles which were sold here under the Cossack and Neval brands, along with motor vehicles and other mechanical items. The company's motorcycle (dating from 1928), the IZh 1, "owed a little" to contemporary motorcycles made by the German company DKW, according to Andy Thompson's Cars of the Soviet Union (Haynes Publishing, Somerset, UK, 2008), p.180, which rather brings us back to the start of this story: what goes around comes around, or Как ау́кнется — так и откли́кнется. And intellectual property law is not, I submit, the place to look for a solution, even if they do have any useful rights.

Wednesday, 28 January 2015

My favourite passing-off case

In an area of law where the cases are, almost by definition, often highly amusing, Rolls-Royce Motor Cars v Dodd [1981] FSR 519 is in a class of its own. John Dodd, the proprietor of an automatic transmission repair business, built his own car - actually taking over a rolling chassis which someone else had started and building a body on it - powered by a second-world-war vintage Rolls-Royce Merlin engine. The first iteration used an engine from a Centurion tank, rather less romantic than had it come from a Spitfire, the most celebrated machine in which the Merlin was used: the second car (its predecessor having been destroyed in a fire) had an engine from a bomber (a Mosquito, apparently). It also had a very different body style. Both cars featured a Rolls-Royce radiator grille and Spirit of Ecstasy mascot, at least until the manufacturer (whose company secretary at the time happened also to be called John Dodd) took him to court where Walton J granted an injunction to prevent passing off (referring to the car as a Rolls-Royce) and infringements of the company's trade marks.

Following the case, Mr Dodd started referring to the car as The Beast. When he promised the judge that he would change the name, Walton J asked where was Beauty. Perhaps in the eye of the beholder?

Thanks to the Internet, I find that Mr Dodd, who moved to Spain after he had breached the injunction within a couple of days (Whitford J fined him £5,000), is still running his automatic transmission repair business. Better still, YouTube has several clips of The Beast in action, including this one from an old edition of Top Gear. The embedded one below includes Mr Dodd executing a doughnut in it, sadly filmed from inside the car so you have to rely on his daughter's commentary.

Saturday, 24 January 2015

Danish designers face problems in UK

Kluwer Copyright Blog reports that a Danish Court has issued a website blocking ruling concerning the illegal distribution of replica products. What is particularly interesting - to me, anyway - is that Danish designers of particularly furniture are facing problems with copyists making replica products in the UK and selling them over the Internet to Danish consumers. Is our design law really that pathetic? Yes, and it has been for years, although for good reason and car manufacturers must bear most of the blame: but for their excess of enthusiasm for trying to use copyright to control the spare parts market we might never had had the 1988 New Deal. Will repealing section 52 (which pre-existed the new deal, incidentally) make things any better? Perhaps it will bring our copyright law more in line with continental ones, but as critics of repeal have pointed out it was part of a sophisticated system of checks and balances, and removing it will throw the whole system into confusion.

Thursday, 22 January 2015

Rihanna tee shirt case: Topshop lose on appeal

Fenty v Arcadia Group [2015] EWCA Civ 3  just appeared on BAILII. The Court of Appeal has upheld the decision of Birss J that the defendants committed a passing-off when they sold tee shirts bearing the image of the singer Rihanna without her consent - exacerbated by the fact that she has previously had a commercial relationship with the retailer, so there was greater scope for deception of the public than usual. It's a very important case for the developing law on character merchandising and celebrity endorsement. I will comment a bit more when I have read the judgmemt, but the BBC's report of the case is worth a look.

Thursday, 6 November 2014

India: Government sets up IPR think-tank

By Santosh Vikram Singh, Partner, Fox Mandal, Bangalore 

The Department of Industrial Policy and Promotion (DIPP), Ministry of Commerce & Industry, Government of India, through a press release dated 22 October 2014 announced setting up an IPR Think Tank to draft a National Intellectual Property Rights Policy and to advise it on IPR issues. The committee will also give its views/opinions on possible implications of demands placed by negotiating partner countries. This becomes essential especially when India and the US are trying to find a common ground on the prickly IPR issues in the working group to be set up under the bilateral trade policy forum.
IPR Think Tank is a six member committee chaired by Justice (Retd.) PrabhaSridevan, who had in 2012 figured among the 50 most influential persons in the world in the IPR field, Ms. Pratibha Singh (Senior Advocate)-Member, Ms. Punita Bhargava (Advocate)-Member, Dr. Unnat Pandit of Cadila Pharmaceuticals-Member, Sh. Rajeev Srinivasan (Director Asian School of Business, Thiruvananthapuram)-Member and Sh. Narendra K. Sabarwal (Retired DDG, WIPO)-Member and Convener.

This move comes at a time when the Government of India has launched a ‘Make In India’ campaign in order to raise the capabilities of the country’s manufacturing sector while also generating employment. A strong and favorable IPR regime will doubtlessly augment this programme by attracting foreign investment. Most large western pharma majors already have a manufacturing base in India; they are ready to set up additional units and invest in R&D facilities provided India amends its IPR regime suitably.

India’s move to constitute this think tank must also be seen in the backdrop of recent Patent Judgments in the pharmaceuticals sector, where Indian Courts prevented frivolous patenting as well as the extension of patents held by pharma companies just by tweaking existing drugs and passing them off as innovations. The US pharma industry has not taken kindly to these judgments and many companies have again attacked India’s IPR regime.

DIPP’s move is thus welcome, as it is in this context of growing concerns voiced by developed countries over India's level of protection to intellectual property rights over drug and agricultural products, and Prime Minister Modi’s promise (during his recent visit to the USA) to create a more investment and business friendly environment in India.

The think tank is expected to highlight instances where India has respected innovation in patent cases, while deciding to fast-track and finalize the policy road map by early next year. In its first meeting held on October 29, the committee decided to finalize the draft IPR policy by March 2015. The committee will advise the government on best practices to be followed in trademark offices, patent offices and other government offices dealing with IPRs to create an efficient and transparent system of functioning. The committee will also keep the government regularly informed of developments taking place in IPR cases that are likely to have an impact on India’s IPR policy. It will examine the current issues raised by industry associations and those that may have appeared in media and advice the government on addressing issues.


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