Monday, 21 January 2019

New podcasts

I have had a break of a few years from podcasting, for various reasons. I hope you will have seen the IPso Jure YouTube channel (link on the right hand side bar) which I started up a few months ago, on which I plan to publish some basic material including a lot of stuff for law students (such as how to answer exam questions) as well as practitioners.

Today I have relaunched my podcasts with a production about the reform of UK trade mark law which came into effect on 14 January this year. It's about 40 minutes long and I am selling copies for £1 each. I will soon be recording a monthly update podcast (like I used to do a few years ago) and selling that too. Please visit the Podcasts page (there are links on the left hand side bar) for more information and to download the first programme. You can also download the accompanying slides here.

Wednesday, 16 January 2019

The effect of a "no-deal" departure from the EU

Yesterday's vote in the House of Commons, a record-breaking defeat for a government, leaves us with no clearer idea of what might happen at the end of March. By default, according to the law as it stands, we leave the EU on 29 March, and as there is no withdrawal agreement we will leave with nothing to govern our relationship with the EU. The chances of that changing are fairly good, given that Parliament (which is trying to wrest control of the process from the government - ironic, given that "taking back control" was supposedly at the heart of the whole idea of leaving the EU) has put in place provisions that make it pretty well impossible to crash out without a deal.

The most likely alternatives at present seem to be an extension beyond 29 March of the notice period given under Article 50 TFEU, or withdrawal of that notice (which the Court of Justice has kindly indicated can be done unilaterally, although only if it is in good faith - that is, not simply to delay matters). Neither of those requires consideration at present, because the status quo would be preserved.

The government has published guidance on what will happen in a variety of areas if there is no deal. One of its briefings concerns trade marks and designs. Originally these documents said that a "no-deal" withdrawal was unlikely: more recent editions seem to lack that reassurance. Ho hum. Although it does say: "We expect to negotiate a successful deal with the EU."

Of particular interest to trade mark and registered design owners is what will be the effect of their EU trade marks if no deal is reached. After all, for years they have been encouraged to believe that all they needed was protection at the EU level and many allowed their UK national rights to fall away, to save renewal fees. The answer is:
The government will ensure that the property rights in all existing registered EU trade marks and registered Community designs will continue to be protected and to be enforceable in the UK by providing an equivalent trade mark or design registered in the UK.
Note that this says nothing about charges. Under the draft withdrawal agreement, there would have been no charge for this: will the government be able to resist an opportunity to raise some revenue, especially when so much would come from foreign companies? Perhaps the financial arrangements of the Patent Office (or Intellectual Property Office as it prefers to be called) remove any attraction to this course of action - it might not benefit the Treasury.
Right holders with an existing EU trade mark or registered Community design will have a new UK equivalent right granted that will come into force at the point of the UK’s exit from the EU. The new UK right will be provided with minimal administrative burden. The trade mark or design will then be treated as if it had been applied for and registered under UK law.
And if a new corresponding trade mark has not been used in the UK in the past five years - will it immediately be liable to revocation? Will the proprietor be able to rely on the reputation acquired by the trade mark in other EU countries, when suing an infringer in the UK? The rejected withdrawal agreement dealt with these points, but the guidance says nothing. Logically, leaving the EU should mean that the new trade mark's past counts for nothing - the five year non-use period should start from scratch, and any reputation acquired elsewhere in the EU should be irrelevant.
This means that these trade marks and designs:
  • will be subject to renewal in the UK
  • can form the basis for proceedings before the UK Courts and the Intellectual Property Office’s Tribunal
  • can be assigned and licensed independently from the EU right
No surprise there.
After exit, business, organisations and individuals with EU trade mark and Community design applications which are ongoing at the date of exit will be able to refile with the Intellectual Property Office under the same terms for a UK equivalent right, using the normal application process for registered trade marks and registered designs in the UK.
Was that even worth saying?
This means that for a period of 9 months from exit, the government will recognise filing dates and claims to earlier priority and UK seniority recorded on the corresponding EU application. Right holders taking this step will need to meet the cost of refiling the application in accordance with the UK application fee structure.
 Does this actually follow? I would have thought that if the normal application process were followed there would be a 12-month priority period, although seniority (being a pecularily EU thing) is a different matter. Anyway, this "special priority period" could be useful for applications for EU rights outstanding on the key date (29 March 2019 or such other date as might emerge) because it could enable an applicant whose EU application is opposed to salvage UK protection while retaining the priority date.
These same provisions will apply to international registrations designating the EU filed with the World Intellectual Property Organisation. This ensures that there is continued protection in the UK from March 2019 onwards for trade marks and registered designs (filed through the Madrid and Hague Systems, and designating the EU as the area where they apply).
That seems reasonable, if "reasonable" is a word that can be used in connection with any of this.

Two other points are worth mentioning: first, without an agreement to govern withdrawal the rights of UK lawyers to represent clients before the EUIPO will be in the gift of the European Union rather than based on a sound legal right; and second, EU TM owners might need to find themselves an address for service in the "residual" EU after the UK leaves. More headaches for small businesses.

You might find it useful to listen to this presentation which I published a while ago on the IPso Jure YouTube channel, although it is now to be treated with care!

Tuesday, 15 January 2019

Purposive construction

A little while ago, I illustrated the concept of a transformative copyright work by referring to what Rachmaninov did to Pagannini's Caprice no 24. A little while? It was October 2017. Now another illustration of an important aspect of intellectual property law from the world of music has come along.

This time my inspiration came from Record Review on BBC Radio 3 a few weeks ago (on 14 December 2018, to be precise - if you go to the Radio 3 website you might still be able to find the programme, perhaps in the podcast version). The work being reviewed was Richard Strauss's Till Eulenspiegels lustige Streiche. It's a piece I came to love when I was still at school (the horn solo particularly appealed), and the three boxed set of LPs of Strauss's Orchestral Works by Kempe and the Dresden Staatskappelle were quite an early part of my record collection. But I digress, as usual.

About 17 minutes and 20 seconds into the podcast, the reviewer (the composer William Mival) is considering the 1959 recording by the New York Philharmonic under Leonard Bernstein - another of my favourite musicians. "Bernstein even adds in detail that isn't in Strauss's score", he tells us. "A snap or Bartok pizzicato in the double basses right at the end of the market scene just before till rides off into the far distance. It means that the string is plucked with so much force that it rebounds against the fingerboard producing a distinctive crack. This kind of addition is of course typical of Bernstein who would often be far more interested in the spirit of the written score rather than the literal instructions on the page."

That neatly brings together two memorable events from my first term at University, back in 1974: the opening of the new arts centre, when honorary degrees were conferred on Peggy Ashcroft, Eurgene Ionescu, Michael Tippett and Leonard Bernstein, and one of the earliest concerts there given by the Amadeus String Quartet, which included a Bartok quartet from which I learnt about that pizzicato. But again, I digress.

Thanks to YouTube, I can direct you to exactly the right moment in Lennie's recording. But how does this relate to intellectual property law? Less well than it would have done a few years ago, I admit, but it's still relevant. Ever since Lord Diplcok's speech in Catnic v Hill & Smith [1981] FSR 60, [1982] RPC 183 (HL) we have been familiar with the idea of a purposive approach to interpreting patent claims - considering what the applicant had in mind, the spirit of the claims, rather than the precise words used. And although the way the courts approach patent claim interpretation now has developed from that starting point, the idea of a purposive approach remains important. Modern claim interpretation, I suppose, can be said to date from the moment Lord Diplock chose to seek out the purpose of the claims rather than fixating on the words - a departure which I do not believe is an unalloyed good thing, but who am I to criticise the noble Lord and his colleagues? Suffice to say (for the time being) that to my mind the purposive approach works far better in musical performances than in patent litigation.

Happily, the outcome of the review of the available recordings was that the Kempe version which I have owned for about 45 years came out well ahead of the rest. Although I do like the Bernstein ...

Monday, 14 January 2019

Revised Trade Marks Act: generic use in dictionaries

Today is the day the revised Trade Marks Act 1994 comes into operation. The changes have been brought about by the Trade Marks Regulations 2018 (SI No 825), and implement the EU directive 2015/2436. My friend Jane Lambert has written about it on her NIPClaw blog so I don't feel the need to deal with it all - although I am preparing a recorded lecture. But one provision does strike me particularly.

New section 99A implements Article 12 of the Directive, which deals with the inclusion of a trade mark in a dictionary, encyclopedia or other work of reference so as to give the impression that it is the generic name for the product or servicefor which it is registered. Hoover, for example, should be described as a trade mark for vacuum cleaners - which is exactly what my Bloomsbury Concise English Dictionary does (except that it adopts the American convention of joining the words "trade" and "mark").

The Directive, unhelpfully, prescribes no mechanism for enforcing this right, saying only that the proprietor has the right to request the publisher to put matters right, and that this must be done without delay and certainly in the next edition if the work is a printed on. The Act allows the court, on the proprietor's application, to order compliance, to order erasure or amendment or even destruction, and to grant such other order as the court considers appropriate.

So the proprietor of a vulnerable trade mark has new and valuable protection against genericide. But I realised over the weekend that this is not enough. That dawned on me in the course of solving the Financial Times prize crossword, which tested me with 23 down: "Starts to loot your store of lavatory disinfectant (5)". I had never heard of LYSOL*, but it's the subject of a couple of hundred trade marks around the world owned by Reckitt Benckiser including several EU ones and 3359242 filed last month (313061, from 1909, having died) - the proprietor obviously taking steps to protect itself after 29 March 2019.

I don't like this, though my old friend and fellow cruciverbalist Bob Cumbow of Miller Nash Graham and Dunn LLC, with whom I colaborate on the FT puzzle each weekend, tells me it is fairly common in US puzzles: and he pointed out that the solution to 2 down, "Utter tosh about US estate agent", was also a trade mark: REALTOR ("real" for "utter", "rot" for "tosh", reversed). In fact it belongs to the National Association of Realtors, so it seems to be functioning as a sort of collective or certification mark, so I learnt something new from the exercise, but more importantly it occurred to me that s.99A gives no protection against this important sub-type of genericide. Should it? Or does the law go as far as one might reasonably expect? I should have been writing this when the government (through the agency of the IPO) consulted on the implementation of the new directive. Maybe next time.

*You probably don't need this, but "Starts to ..." is a pretty clear direction to make a word out of the initial letters of what follows.

Monday, 7 January 2019

Independent garage defeats manufacturer's trade mark application

Thanks to Jane Lambert and her NIPC Law blog for drawing my attention to Jaguar Land Rover Ltd v Twisted Automotive Ltd [2018] EWHC 3536 (Ch) (20 December 2018) which is a judgment of Rose J in an appeal against the 15 May 2018 (O-289-18) decision of Ms Louise White acting for the Registrar of Trade Marks. In her decision, Ms White upheld the opposition by the Respondent to the registration by the Appellant of the trademark "LR" (except for bicycles and scooters and related goods): and in her judgment Rose J dismissed the appeal. Quite right too, IMHO, although on the facts it could be a pretty close-run thing.

Twisted, who trade as specialists in Land-Rover Defender vehicles, parts and services, had no registered trade mark, so they had to rely on section 5(4)(a) of the Trade Marks Act 1994 - which in essence required them to show that they could have succeeded in a passing-off action. The main reason that I think it might have been a close-run thing was that their use only goes back to November 2015, and although the point did not detain the learned judge the appellant pointed out that the date on which the strength of the respondent's goodwill had to be measured was the application date - 23 August 2016.

JLR put forward the interesting argument that their use of the sign LR would not be a misrepresentation, because the respondent was indeed dealing in Land-Rover products. Remember that what was at issue was not (as is usually the case when manufacturers sue independent repairers) whether the respondent could use the sign, but whether the appellant could be allowed to register it. JLR were, in a sense, too late: unless the Hearing Officer had got it very wrong (a gross over-simplification of the principles set out by Arnold J in Apple Inc v Arcadia Trading Limited [2017] EWHC 440 (Ch)) an appeal court cannot interfere, and anyway JLR's assertion that the sign would be recognised as identifying their business was just that, an assertion, unsupported by evidence. In fact, JLR had never used the sign at all. The learned judge saw no reason to interfere with the Hearing Officer's decision.

While on the face of it you might not expect such a short period of trading under the sign to create enough goodwill for a passing-off action to succeed, that didn't influence the outcome of the case. And actually in my view there could well have been enough goodwill. If (as the Mullers Margarine case tells us) goodwill is the attractive force that brings in custom, you have to take the customers as you find them. Land-Rover Defenders are specialist vehicles. Indeed, Land-Rover don't make mass-market vehicles at all, but I think there is a distinction to be drawn between its Range Rover, Discovery and Freelander ranges and the utilitarian Defender, developed from the original Land-Rover which required no fancy model name - indeed, had nothing remotely fancy about it and often attracted the adjective "agricultural", which was always meant in a good way. No-one buys a Defender as an ordinary family run-around: it is designed to do a particular job, which it does very well, and if you don't want a vehicle to do that you won't buy one. Simple. As I remarked in a slightly different context - in 2013, though it seems like only yesterday - not all car owners are the same. In that earlier post I was considering Porsche owners, but (while there might be little overlap with Defender owners) the same principle applies. We are talking about enthusiasts. "Petrolheads" might not be the right word, given that Defenders often have diesel engines, but you get my drift, don't you?

While the owner of a bog standard cooking family saloon or hatchback might not bother to understand the intricacies of the motor trade - distinguishing between manufacturer and dealer, and between authorised repairer and independent - and indeed these days might not even own their car but just lease it, we should not assume that enthusiasts are the same. They buy a Defender (or a Porsche, or whatever), not mobility. When they look for specialist services, or parts or accessories, they are quite likely to trust independent experts rather than authorised dealers.

It's a fact of life that authorised workshops only usually get to see cars under three years old. Once they reach MoT age they tend to become the preserve of independent garages. Maintenance contracts, personal leases and warranties might all contribute to extending that period of exclusivity, but as a rule the buyer of a secondhand car isn't as likely to entrust it to the authorised workshops for servicing and repair. They often cost more - sometimes a great deal more - and their up-to-date knowledge isn't particularly important if you don't have an up-to-date car. The last Defender (apart from a limited edition for the 70th anniversary in 2018 - only 150 examples) was made nearly three years ago, so Land-Rover dealers will be seeing less and less of them anyway: owners will be aware of the independent sector, and to keep their running costs proportionate to the value of their vehicle they will be inclined to use it.

Enthusiasts, such as Defender owners, should be assumed to know the value of the independent sector and to understand the differences between it and the franchised motor trade. So while this isn't how Rose J reached her decision (neither is it how the Hearing Officer Ms Louise White reached hers), I think it demonstrates that the decisions were absolutely right.

Friday, 7 December 2018

The colour purple

Cadbury UK Ltd v The Comptroller General of Patents Designs And Trade Marks [2018] EWCA Civ 2715 (05 December 2018) is an unedifying case. It is the latest skirmish in the war over the colour purple - not the Pullitzer Prize winning novel of that name by Alice Walker, nor the film made from it by Stephen Speilberg, but the colour of the packaging applied to Cadbury's chocolate, Pantone shade 2685C. It has not yet come to rival the Budweiser 'Hundred Years War' (per Jacob LJ - and BTW, if I may digress slightly, if you have not seen this wonderful article by Brentan O'Toole in the Irish Times of 3 February 2018, conveying the reassuring message that Brexit is not the maddest thing England has ever done, do read it) but it has certainly exceeded the duration of the Seven Years War, and is beginning to approach the duration of the Thirty Years War.

The belligerants in the conflict are Cadbury (which became part of the Kraft empire while the war was raging) and Nestlé, partly through their acquisition some time ago of Rowntrees. The Comptroller General is perhaps cast in the role of a UN peacekeeping force. A second front in the war opened up within the last decade, the territory being fought over there being the shape of the Kit-Kat chocolate wafer bar (a product which I have always considered fatally flawed for the simple reason that there is boring wafer concealed in what would otherwise be a satisfying lump of chocolate, so why is it even worth arguing about?). Although I have not checked, and it would be futile to speculate about the motives of the parties (entertaining, though), there does seem to be a lot of tit for tat involved here.

The Court of Appeal was asked to rule on whether it was permissible for Cadbury to re-categorise their colour trade mark, 2020876A, as a series of trade marks. Their wish to do this gives a striking illustration of how tricky it sometimes is to keep up with the constant changes to trade mark law and practice. The application claimed that the trade mark 'consists of the colour purple'. Then the Registrar (who is also the Comptroller General) promulgated guidance on how to draft a colour trade mark application. In line with this guidance, Cadbury sought to amend their application (which was still pending) to add the words 'as shown applied to the packaging or labelling of goods covered by the registration'. The registrar replied on 9 September 1997 suggesting instead that the description (I think 'representation' is the correct word, going by the statute, though I would also argue that what the words are is in fact a description not a representation, which should to my mind be enough to knock the whole thing on the head) of the mark be amended to read: 'The mark consists of the colour purple, as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods.' The conjunction 'or' seems to justify me in characterising this as a two-legged formulation.

Cadbury didn't like the word 'predominant', but accepted it - until the Court of Appeal upheld an opposition to another similar registration, in Société des Produits Nestlé SA v Cadbury UK Limited [2013] EWCA Civ 1174 ("Cadbury 1"). The words used in the registration did not represent a sign, they represented an almost infinite number of signs of which purple was only the predominant element. So Cadbury applied to have the registration changed into a two-part series of trade marks, so they could then surrender the second one - the one that used the word 'predominant'. Retaining the first leg would suffice for most purposes, and the similarlity-plus-likelihood-of-confusion test for infringement would take care of marginal cases.

The problem was that you cannot alter a trade mark after registration. It could be surrendered in part, but ony in respect of some of the goods and services for which it is registered - not for part of the description or representation of the trade mark. If however the trade mark could be treated as a two-part series, it would be possible to delete one part of it. Unfortunately, even when the Registrar suggested amendments to the application Cadbury had not opted to make it a series trade mark (and you can't blame them, as the problem that eventually emerged was unforseen). Could it just be treated as a series? After all, that description reads like a description of a series of trade marks. But the Court of Appeal (Floyd LJ giving the judgment of the Court) took the view that this would be a fiction - that the application was to register a single trade mark, which did not meet the requirements for clarity and precision. It looks to me like a bold attempt to rewrite history to save the trade mark - perhaps tabula in naufragio is a better expression, and certainly one that I'd like to see used a bit more often.

Tuesday, 13 November 2018

No copyright in taste: Outbreak of common sense at Court of Justice

The Court of Justice has today handed down its judgement in Levola Hengelo [2018] EUECJ C-310/17 (13 November 2018), holding that the taste of cheese spread is not a copyright work. Why should it even have had to consider the matter? In UK copyright law it would surely have been disposed of very quickly, as taste does not fall into any of the categories of copyright work set out in the 1988 Act. But the UK is unusual among EU Member States in having a "closed list" approach to copyright works - more often, in the civil law world, the scope of copyright protection is not so constrained, which is how perfumes have achieved copyright protection in come countries. The Court of Justice has previously threatened (in Case C-393/09 Bezpečnostní softwarová asociace –Svaz softwarové ochrany v Ministerstvo kultury ("BSA")) to make the open approach EU-wide, so that whatever an individual might create will receive protection, but the present judgment neatly sidesteps that issue (or perhaps more accurately does not have to consider it) - of which more later.

The concept of a "work" is used in EU copyright legislation (in particular in the Information Society directive, 2001/29), but not defined. This invites an activist court to make up its own definition: "Accordingly, in view of the need for a uniform application of EU law and the principle of equality, that concept must normally be given an autonomous and uniform interpretation throughout the European Union (see, to that effect, judgments of 16 July 2009, Infopaq International, C-5/08, EU:C:2009:465, paragraphs 27 and 28, and of 3 September 2014, Deckmyn and Vrijheidsfonds, C-201/13, EU:C:2014:2132, paragraphs14 and 15)."

In the two cases it cites there, the Court decided that copyright works must be their authors' own intellectual creation, thus at a stroke making copyright much narrower than it had been - in the UK, at least. Not a bad outcome, to my mind, although the reasoning might not convince you. Here, the Court could have interpreted the word "work" widely: the only guidance it had was from Berne, which extends copyright protection to authors' literary and artistic works, and the TRIPS agreement and the WIPO copyright treaty, which tell us that expression not ideas is what copyright protects (which is IMHO another way of saying that copyright protects works).

However, very sensibly, the Court was not about to bring tastes within the scope of copyright protection. It told us that there are two cumulative conditions for something to be considered a "work":
36      First, the subject matter concerned must be original in the sense that it is the author’s own intellectual creation (judgment of 4 October 2011, Football Association Premier League and Others, C-403/08 and C-429/08, EU:C:2011:631, paragraph 97 and the case-law cited).
37      Secondly, only something which is the expression of the author’s own intellectual creation may be classified as a ‘work’ within the meaning of Directive 2001/29 (see, to that effect, judgments of 16 July 2009, Infopaq International, C-5/08, EU:C:2009:465, paragraph 39, and of 4 October 2011, Football Association Premier League and Others, C-403/08 and C-429/08, EU:C:2011:631, paragraph 159). [Emphasis added.]
The idea/expression dichotomy, which dictates that only expression can be protected by copyright, means that a work must be "expressed in a manner which makes it identifiable with sufficient precision and objectivity" - language adopted for the present case by Advocate General Wathelet from the Court of Justice's landmark decision in Sieckmann. The Court refrained from mentioning that case by name, which (as it is of course a trade mark case - although it was smell trade mark, so there is a connection) is a blessing - it gives us one less thing to worry about. Conceptually it's a sound approach, I think, but the idea that it rests on a precedent from another area of law is a bit uncomfortable.

Taste, like olfactory trade marks, cannot be pinned down with sufficient precision and objectivity and therefore cannot be a copyright work. Thank goodness. And thus the Court avoids the issue of closed and open lists of copyright works. It didn't even have to mention BSA, which remains a threat to our approach to copyright but not one that will allow cheese flavours to enter the copyright system.

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