Tuesday, 11 September 2018

Why?



Magical properties have long been ascribed to intellectual property rights - but I find that the situation is not as recent a development as I thought. In the trade marks world, one might date the explosion of interest in protecting every little aspect of a business's branding for the widest possible range of goods and services to the advent of the Trade Marks Act 1992 (and the Community, now EU, trade mark regulation), but I can now date it back to at least 1926.

My favourite pointless trade mark has long been EU trade mark 5238599 ROYAL MARINE COMMANDO registered for an extraordinary range of goods including, to pick one absurdity at random, bird tables. Although 5338959 is actually even more pointless, being almost identical to the earlier one, with some exiguous changes to the specification of goods and services (it adds souvenir plastic bags and paper hats, for example, and the spelling of "napking rings" [sic] is corrected). This is what we pay our taxes for.

Back in 1926, in Weimar Germany, matters were a great deal more serious. The Roter Frontkämpferbund was a workers’ self-defence organisation founded in 1924 and active, in later years illegally, until 1933. The organization was founded by the Communist Party of Germany in response to the growing activity of militarized fascist organizations, although membership was not limited to Party members (The Great Soviet Encyclopedia, 3rd Edition (1970-1979)). Its symbol was this surprisingly modern-looking clenched fist.


Roter Frontkämpferbund.svg
This is not the first example of the use of the clenched-fist symbol which later became ubiquitous among left-wing (not just Communist) groups (see The Communist pedigree of the clenched-fist salute courtesy of American Opinion Publishing, Inc. via The Free Library): it dates back to the French Revolution, and was also used in the revolutions of 1848 and at the First and Second Internationals. But this is the first instance of it achieving a surprising degree of bourgeois respectablity: on 1 March 1926 it was registered as a trade mark in Germany. (I have not been able to work out how to find details of Weimar Republic trade marks, and the German Patent and Trade Mark Office (DPMA.de) doesn't seem to offer such historical information.)

Why on earth register it as a trade mark? Not because the German Communist Party wanted to use it for a range of merchandise like that now purveyed from the Redbubble.com website, such as this nice laptop skin. (Redbubble is a site through which independent artists sell their designs, so the choice of the RFT logo seems to be nothing to do with them, and there also appears to be no political significance to the name of the site.) Using trade mark rights against other anti-Nazi organisations in Germany at that time would have demonstrated a reprehensible lack of solidarity. Suing political opponents for infringement if they used the trade mark would be a waste of time, and anyway what's the point of being paramilitaries if you fight your opponents in the court system? The French left adopted the symbol after the dissolution of the Weimar Republic, but there probably wasn't anyone in a position to grant them a licence even if they had registered a French trade mark (or an International trade mark - wouldn't that have been appropriate - as Germany had signed up the Madrid Agreement, to which France had been a party since its inception in 1892, in 1922). Since when, of course, it has become - perhaps - a generic symbol for everything left-wing, and therefore unsuitable for use as a trade mark on its own (I looked for other clenched-fist trade marks but not very diligently, as it could have occupied a lot of time: I expect that if there are any registered, or any unregistered ones, they will have verbal elements too, which is a pretty important matter for any political movement.)

What, I wonder, would Karl Marx have thought? Turning a symbol of working-class solidarity into a piece of property would (I hope) have rankled with him, but I hope he might have appreciated the benefits of taking advantage of bourgeois or capitalist (which?) trade mark laws to protect something of value to the proletariat - an important element in the class struggle, indeed. But that's not to say that trade mark protection per se would have advanced the cause very much.

Thursday, 30 August 2018

.eu domain names after UK withdrawal

Some 317,000 domain names in the .eu top level domain (TLD) are registered to UK holders, who look likely to be inconvenienced (at least) by the UK's withdrawal from the EU. The regulatory framework for the .eu TLD, principally Regulation (EC) No 733/2002, does not permit .eu domain names to be registered by non-EU registrants, as Article 4(2)(b) (as interpreted by the Court of Justice in Case C-276/11 Pie Optiek) makes clear. The Commission's Notice to Stakeholders dated 27 March 2018 makes clear that "[a]s of the withdrawal date, undertakings and organisations that are established in the United Kingdom but not in the EU and natural persons who reside in the United Kingdom will no longer be eligible to register .eu domain names or, if they are .eu registrants, to renew .eu domain names registered before the withdrawal date." So that seems like three different ways to say the same thing.

UK registrants will not be eligible to have .eu domain name registrations after E-Day. They will neither be able to register nor renew them. It is not clear whether they will be able to hang on to them until they become due for renewal: EurID can revoke registrations on its own initiative but there are doubts about whether it has sufficient capacity to do much about so many registrations.

There are further ramifications for the .eu TLD arising from the UK's withdrawal. UK rights will no longer count against bad faith registrations - so UK registered trade marks will not give protection against others registering .eu domain names. So long as businesses maintain EU trade marks as well as UK ones, this will not be a problem, but it could be a persuasive reason for registering more trade marks.

Finally, agreements with registrars handling .eu domain registrations will no longer be able to designate UK law, courts, or dispute bodies in their dispute resolution procedures. UK-based registrars will be excluded from handling .eu TLD registrations anyway, but for other registrars who are still in business after E-day this will mean that they might have to change their contract terms.

Exhaustion of trade mark rights after B****t

If and when the UK crashes out of the EU (and whatever agreement is made to soften the blow, it will be a crash, certainly as far as trade marks are concerned) the Trade Marks Act 1992 will not be unchanged. The European Union (Withdrawal) Act 2018 sees to it that the government will be able to change it to take account of the new circumstances - using what have come to be referred to as Henry VIII powers, after that paragon of democracy and due process. One aspect of huge volumes of legislation that will need attention is that the statute book is peppered with references to the European Union, which when they were written included the UK. So, as in the case of public lending right about which I wrote the other day, it might be necessary to change it to "UK and EU". More often, I suppose, it will be changed from "EU" to "UK" - after all, that's what the Will of the People asked for (American readers please note, that statement is heavy with irony).

Section 12 says that the trade mark owner's rights are exhausted when the goods have been placed on the market in the European Economic Area by the trade mark owner or with their consent. Within a single market that's an important exception to the general idea of trade mark protection (or any other form of IP, come to that). So from E-day, or perhaps from the end of the transition period, section 12 should refer to placing the goods on the market in the UK.

Or must it? It's not many years ago - OK, it is quite a few years ago, but it's within living memory - that the UK government thought it would be a nice idea to replace the EU-exhaustion rule with an International-exhaustion one - so if the trade mark owner had placed the goods on the market anywhere in the world they would be unable to resist parallel imports into the EU. The government's idea seemed to be that this would ensure cheap designer clothes for the masses, who would then re-elect it. Our EU partners were almost unanimous in declining to support the UK government in this - as I recall, only Sweden agreed. But after withdrawal we won't have to worry what the EU27 (or the EEA members) think, and given that the government will be casting around for some benefit to highlight to the electorate I have a horrible feeling that this will be back on the agenda.

Trade marks after B****t

If and when the UK leaves the EU, which still cannot be considered a certainty, trade mark practice will change dramatically. The law will remain mostly unchanged, as having implemented the trade marks directive the Trade Marks Act 1992 stands on its own merits, but this conceals some radical changes to the way UK trade mark owners will have to protect themselves. While the directive will survive in the guise of the Act, the same is not true of the EU trade marks regulation: what will happen there will depend on the terms on which the UK leaves.

The draft withdrawal agreement covers much of the ground, of course, but it's just that: a draft. Every day the chances of a "no deal" departure seem to grow, so while it's obviously important to consider the draft agreement we've got to remember that the UK could still be crashing out with no agreement on these important points.

From "exit day", 29 March 2019 (the name comes from the European Union (Withdrawal) Act 2018, a surprisingly concise piece of legislation considering it rewrites most of the statute book), EU trade marks (and Registered Community Designs, a topic for another day) will cease to give protection here. That's pretty obvious. According to the draft agreement, a magical process will be put in place to carve out from existing EU trade marks the rights that apply in the UK, creating equivalent registered and enforceable rights or "corresponding" UK trade marks and the government (in the draft withdrawal agreement) promises that this will be without charge. Whether the temptation to raise some revenue from the exercise proves too much, only time will tell.

Non-UK owners of corresponding trade marks will, presumably, need a correspondence address in the UK: and by the same token UK owners of EU trade marks will need correspondence addresses in the EU27. Of course before red tape can be abolished more has to be created, and additional costs must be imposed on business before they can enjoy savings! And UK practitioners will no longer be able to represent clients before the EUIPO, so clients will need new representatives and will, of course, incur additional expenses. The UK professions will lose important export business, too, and being deprived of the right to pursue part of my practice is enough to make me unhappy, and justifiably I think.

EU trade mark applications that remain pending on E-Day will not be dealt with automatically. Corresponding trade marks will not be available - UK trade marks will have to be obtained separately. Applicants will be given a nine-month priority period during which they will be able to file in the UK and claim priority from the earlier EU trade mark application. One thing that might help trade mark owners here is that if their EU application faces a potential opposition but is OK in the UK, they can wait and take advantage of the priority period to file a UK application.

If an EU trade mark is subject to invalidation or revocation proceedings on exit day, and is later cancelled, the corresponding trade mark rights in the UK will be lost too unless the grounds for cancellation do not apply in the UK (which might be because there is a conflicting trade mark in Malta or the trade mark is descriptive in Estonian, or something like that which would count against an EU trade mark but not a UK one). New secondary legislation will be needed to achieve this. Where the EU trade mark from which the corresponding trade mark is derived enjoys priority from an earlier trade mark, or has the seniority of an earlier UK trade mark (this refers to the process by which trade mark owners were allowed effectively to backdate their EU trade mark to the date of national trade marks, so they could then allow them to lapse - which would never have been a great idea, in fact) the corresponding trade mark will benefit from the priority or seniority.

What if the EU trade mark has not been used in the UK in the past five years? Then it will be immune to challenge on those grounds until the end of the transition period (31 December 2020). Similarly, during the transition period owners of EU trade marks will be able to rely on a reputation in the EU for the purposes of UK infringement proceedings, but after the end of the transition period their reputation will have to be in the UK.

I have been advising clients that it would be a good idea to go for UK national trade marks even if they have EU ones for some time already. The application of the rules about use and reputations if the trade mark has not been used widely in the EU make relying on UK trade marks rather uncertain already, and withdrawal is not going to make it any easier.

There are questions still to be dealt with concerning the treatment in the UK of internationals designating the EU, especially if they have not been granted protection by E-Day. These are for the UK to sort out - nothing to do with Brussels.

One aspect of the Trade Marks Act which will change is section 12, which deals with exhaustion of trade mark rights. That's a topic for another posting, I think.

Wednesday, 22 August 2018

India: Use of a trade name similar to a trade mark does not necessarily constitute infringement

In a recent Trademark infringement matter, the Delhi High Court has held that in order to qualify as infringement under Section 29(5) of the Trademarks Act, 1999 (“Act”) there has to be exact use of the registered mark and mere use of a prefix/suffix would not amount to infringement. The Court was hearing a trademark infringement matter wherein the defendant had used a word “MERCYKIND” as part of its trade name which was allegedly similar to that of Plaintiff’s registered trademark “Mankind”.

BACKGROUND

Mankind Pharma Ltd., one of India’s largest Pharmaceutical Company (the “plaintiff”) instituted a Trademark Infringement suit seeking an injunction against Chandra Mani Tiwari and Mercykind Pharmaceuticals Pvt. Ltd[i]., for infringing its registered trademark “MANKIND” and a series of other marks with the suffix/prefix “KIND” and for passing off their business/goods by adopting and using the trade name “MERCYKIND PHARMACEUTICAL PRIVATE LIMITED”.
While passing the order, the Court mentioned that the registered trademark “MANKIND” would be infringed under Section 29(5), if the defendants were found to be using “MANKIND” as part of their trade name. Here, the defendants are using “MERCYKIND” as part of their trade/corporate name which is not a registered trademark of the plaintiff. Thus, there would have been infringement under Section 29(5), if the defendants, as part of their trade name, had used “MANKIND”. Merely because the name of the defendant’s Company is deceptively similar to the plaintiff’s trademark “MANKIND” or any other registered trademarks of the plaintiff with “KIND” as prefix or suffix, it does not amount to infringement under Section 29(5).
This case makes an interesting read for the following reasons:

He who comes into equity must come with clean hands:

In this case, the Court took a strong objection to the fact that the plaintiff had concealed certain information from the Court which the Court considered to be relevant and had weightage in the matter.

The Plaintiff, not so long ago while responding to certain Trademark Examination Report for registration of two of their trademarks had taken a stand that “ATORVAKIND” (plaintiff’s mark) is different from “ATORKIND”; and “STARKIND” (plaintiff’s mark) is different from other cited marks such as “KINDERPLEX”, “KINDERBON”, “KINDERCAL”, “KINDIGEST”, “STAR-VIT”, “STAR”, “STARNET” and “STARCET”. The Court stated that such conduct of the plaintiff disentitles them to the equitable relief. Though the plaintiff contended that the statement made by the advocates for the plaintiff in the communications to the Trademark Registry is a submission of law made in the context and the plaintiff cannot be bound, however the Court refuted the plea and stated that the said contention would not make the fact “irrelevant”.

“Use” of a trade mark:
Since the Plaintiff had alleged infringement under sub-sections (1) to (4) of Section 29, the Court took cognizance of the fact and considered to test whether the defendants were really using “MERCYKIND” as a trade mark.  
Section 29(6) of the Act defines the “use” of the mark: a person is considered to be using a registered mark, if, in particular, he—
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising.”

In this case the primary objection of the plaintiff was the word “MERCYKIND” which was being used by the defendants. However, upon observation, the Court found that the word “MERCYKIND” was used only in the name of the defendant Company. The Plaintiff had also contended that the defendants are carrying on the business in the same goods as the plaintiff, under the marks “MERCYMOX”, “MERCYCOUGH”, “MERCYCOPE”, etc. The Court observed that the issue was about the usage of the word “MERCYKIND”, which in fact was not the trade mark of the defendants and was also not used as a trade mark by the defendants. Once, it was established that the defendant’s trademarks were words with the mere prefix “MERCY”, the question of “MERCYKIND” also being the trade mark of the defendants with respect to the same goods of the defendants would not arise. Therefore, it was observed by the Court that “MERCYKIND” was not the trade mark of the defendants, therefore, Section 29(1) to (4) do not apply in this case.

Infringement of a trademark under Section 29(5):
The Court further determined the alleged infringement test under Section 29(5) of the Act, which is: “A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.”
What has been constituted as infringement under Section 29(5) is use of the registered trade mark as trade name or part of the trade name. Thus, the Court held that there would have been infringement under Section 29(5), if the defendants had used the plaintiff’s registered Trademark “MANKIND” as part of their trade name. Merely because “MERCYKIND” is the name of defendant Company, which may be deceptively similar to “MANKIND” or any other registered trade mark of plaintiff with “KIND” as prefix or suffix, would not amount to infringement under Section 29(5). Therefore, it was held that the use of a trade name similar or deceptively similar to the registered trade mark would not constitute infringement under Section 29(5). Thus, prima facie, no case of infringement within the meaning of Section 29 is made out.

Tuesday, 21 August 2018

No B****t dividend for authors

In the Public Lending Right Scheme 1982 (Amendment) (EU Exit) Regulations 2018 which were published on 13 August (they have not yet been laid before Parliament), the Government has paved the way for public lending right to carry on unchanged after the UK leaves the EU. As PLR is not a creature of EU law, you might wonder why this is necessary: the answer is that the Regulations will ensure that UK-resident authors will still be eligible to register for PLR after the UK is no longer a member of the EEA. This requires an amendment of the definition of "eligible person", effected by these regulations - made under the Henry VIII powers given by the European Union (Withdrawal) Act 2018.

The amendment inserts the words "the United Kingdom or" before "EEA", meaning that the geographical extent of the scheme remains the same - authors resident in other EEA countries (or, from "exit day", authors in EEA countries) will be eligible. Since PLR is distributed out of a set fund, the amount available per loan depends on how many eligible authors there are. Leaving the EU might have meant a huge reduction in their numbers - but it won't, and my PLR statements will probably continue to tell me that I haven't earned enough to justify the writing of a cheque. Still, it's not the sort of windfall I'd have wanted.

Thursday, 19 July 2018

Sir Cliff Richard's expectation of privacy

I hope that the law on privacy is drifting away from its origins in the law on breach of confidence, if only for the selfish reason that I don't enjoy trying to lecture on or write about privacy as if it were part of the intellectual property world. Too often it seems to be concerned with little-known celebrities (spot the oxymoron) seeking to cover up their failings. But the chances of it appearing in exam papers just got a lot bigger than they already were.

Richard v The British Broadcasting Corporation (BBC) & Anor [2018] EWHC 1837 (Ch) (18 July 2018), a case which involved a genuine celebrity and a grievance that everyone should be able to acknowledge, suggests to me that the right to privacy is diverging from the law on breach of confidence, and I hope it will work out well for both areas of law. The claim was brought on the basis of Article 8 of the European Convention on Human Rights and also invoked the Data Protection Act 1998. Article 8 of course has to be balanced against Article 10, freedom of expression. So the questions for the court were, did Sir Cliff have a reasonable expectation of privacy in respect of the events reported, and was there a public interest in publishing the facts such that the BBC's Article 10 rights would prevail?

It's hard to imagine a more egregious (yes, that's my word of the day) invasion of one's privacy than to have the One O'clock News showing aerial footage of police officers swarming all over your house. But that's not what the court had to consider: only if Sir Cliff had a reasonable expectation of privacy would that have matter. Mann J held that he did indeed have such an expectation, so he went on to balance the BBC's rights against that. The judgment contains a lengthy review of the various factors to be taken into account, but concludes that Sir Cliff's rights were, in effect, stronger than the BBC's. My reading of the judgment is that a highly persuasive part of this was the egregious nature of the breach. Some invasions of privacy can be regarded as minor, no doubt, but this was not one of them.

The judgment contains a long section devoted to the application of the rules about damages, and also a lot about contributions between the defendants. Life is not too short, but it is too full, to read all that at the moment. It contains nothing more about data protection, other than to mention it as part of the pleadings: damages would not be recovered twice over if there were a data protection breach, so perhaps the point is pretty well moot anyway, but I can't immediately see anything in the facts that would be actionable. What personal data were involved? What did the BBC or South Yorks Police do with any such data? Data protection legislation is obviously an important part of the scheme of protection for an individual's privacy, but this doesn't seem to be a case in which it adds anything.

Yesterday at Prime Minister's Questions, Anna Soubry MP (whom I knew quite well, many years ago) asked for government support for a bill she had introduced (if it's a new one, it seems to be in the same terms as one she introduced in 2010) to protect the privacy of people being investigated by the police. She proposed that it be known as Cliff's Law. Sorry, Anna, but the Copyright and Duration of Rights in Performances Regulations 2013 (SI 2013/1782) got there first.

The Prime Minister made the point (which has also been made by others, including The Guardian here) that revealing names can encourage other victims to come forward. (It can also, of course, encourage non-victims to take a chance too, but that's another issue.) That's hard to argue with, but in the context of the Richard case surely one could say that the suspect's reasonable or legitimate expectation of privacy, which is intact while the police are searching his house for evidence, is not nearly so strong when the police have begun to assemble a case, particularly if the case is a strong one. If there is (say) a reasonable chance that there are more victims who have not come forward, that further dilutes the expectation of privacy. I am no human rights lawyer, but this situation seems to be covered by Article 8.2, a carve-out for law enforcement purposes, and Article 10 is not the right provision on which to rely for this purpose - although I suppose the media would have to be able to rely on it even if 8.2 allowed the police to name names.


Data protection and the redistribution of public funds

Data protection. You can't get away from it. I am spending nearly all my working hours at present helping clients comply with the General Data Protection Regulation - a piece of legislation that, however well-meaning, is crazily technical and obscure (as I remarked in a post a little while ago). Even my morning scan of The Guardian's website has thrown up a data protection story this morning.

The story (and I don't use the word to suggest that it is made up!) says that the ICO has fined the independent inquiry into child sexual abuse £200,000 for revealing a number of email addresses from which individuals could be identified - the email was sent to 90 participants in the inquiry, 52 of whom were identified by name in their address, and "vulnerable people were placed at risk", although the report doesn't say how - it depends in part on where the email went, I suppose. One complainant was reported to be very distressed, which I don't think requires any explanation. This all seems to me to be exactly what data protection law is there to deal with.

How did this disclosure come about? By a failure to use the bcc box for email addresses. So simple, so damaging, so expensive. It doesn't seem the most egregious breach of the law, but the potential consequences are probably completely out of proportion to the mistake, and equally out of proportion to the ease of making sure it didn't happen. Human error can be largely avoided if humans are trained in how to do their jobs - but I've come across so many instances where people have been ignorant of the importance of using bcc.

A further twist is that the IICSA hired an external provider - a data processor in the terminology of the Data Protection Act 1998, which although now repealed and replaced was the governing law at the time - to handle its mailing list, and in doing so breached its own privacy notice. There's an object lesson in the importance of keeping these things under review and making sure you aren't doing things with people's data that you haven't told them you are doing.

The IICSA is a statutory inquiry under the Inquiries Act 2005, although it started life as a panel inquiry and has had a chequered history, which I think it's fair to say just became even more chequered. In the year ending 31 March 2017, according to its financial report, it spent £20.8 million. The data protection penalty will therefore be a substantial part of its spending, although the report says that its "full year budget" for the financial year ending 2017 was £30.94 million, which I must say sounds rather odd but I don't feel I need to look into it for the purpose of this blog. My point is that it's a lot of public money, and even when it is just being redistributed to another emanation of the state it is a pretty appalling state of affairs. Even if the inquiry isn't spending its entire budget, I'd prefer that its money was going on looking into the important matters that it was set up to deal with rather than filling the coffers of the Information Commissioner.

One final point: under the new legislation, the very wonderful General Data Protection Regulation, the ICO is able to levy much larger financial penalties. Perhaps, with a little effort, the Information Commissioner could appropriate the entirety of the UK's public spending! Only if public bodies continue to make such appalling errors, and I hope the lesson is not lost on them.

Wednesday, 13 June 2018

The essence of a trade mark

The draft agreement I am currently reviewing - I won't disclose more about it - contains a definition of "Corporate Design" which has a nice form of words in it: "[T]he official design of the logo and name of the [redacted] brand by which the brand's personality is brought to life in communication." I wonder why the drafter of the trade marks directive and the regulation on the EU trade mark didn't see fit to put it that way? It's not exactly poetic, being (I think) spoilt by the last couple of words, which don't seem to add anything, but it's much closer to poetry than most EU legislation.

Wednesday, 23 May 2018

"Have you not considered Recital 171?"

This week, few lawyers have the luxury of not having to be data protection experts, which is why the subject is intruding into my IP blog. Thank goodness it will all be over on Friday and we can settle down to working with the General Data Protection Regulation, until data protection law is repatriated and instead we have the Data Protection Act 2018 and "the Applied GDPR".

We are all acutely aware that many data controllers are taking the opportunity to refresh consents from the people whose data they publish. It's a great opportunity to do some housekeeping, of course, but not all the consents are necessary, nor do they need to be refreshed. First of all, consent should rarely be the lawful basis of choice for data processors: the legislation offers several other possibilities, of which "legitimate interests" is probably the most useful. The data processor's legitimate interests in processing personal data must, it is true, be balanced against the interests and fundamental rights and freedoms of the data subject, which may override them - thus removing the lawful basis: so legitimate interests per se are not a lawful basis. But when will the data subject's interests (etcetera) override them? How long is a piece of string? It's questions like this that make advising on data protection like nailing jelly to a wall.

For data controllers who still feel the need for consent, it's not always necessary to get it afresh at this point, as this article from The Guardian reports. Consent obtained under the old law, provided it meets the conditions of the GDPR, still works. How do we know? Because (apart from common sense) Recital 171 to the Regulation tells us so. And that, I think, tells us a great deal about this almost impenetrable piece of legislation ... (What do you mean, you gave up before you got to Recital 171?)
 

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