Thursday, 6 October 2016

Should've refused it

So the Trade Marks Registry has accepted Specsavers' application number 3175246 to register SHOULD'VE and (even more bizarrely) SHOULDVE (series of two: see here). And of course in line with modern (absolutist) practice it covers several classes of goods and services, some of them fair enough but others (retail services, printed matter), unqualified by reference to any particular sector, far too wide - tending towards patent-type monopoly protection over an ordinary English expression.

It's not as if Specsavers BV were short of protection. They have EU trade mark no 4694551 already, for SHOULD'VE GONE TO SPECSAVERS. Even taking account of the lunacy of Brexit, or "Eurocide" as I saw it called in The Guardian this morning, which will require proprietors of EU trade marks to obtain (by some mechanism about which we are yet to be told) separate UK protection, this new application would be wholly unnecessary in any truly rational trade mark system. Indeed, if the system worked rationally rather than promoting trade mark fetishism, the application would have been rejected out of hand. Not only can the word - whether correctly punctuated or not - never be distinctive enough to function as a trade mark: the applicant simply isn't using it as one. It is not the trade mark. It is one of the four or five words (depending on how you count contractions) which together comprise their trade mark. Alone, it should not have received more than a couple of nanoseconds' attention from the Registry.

I don't criticise the applicant for trying to get protection if the law will give it: nor do I criticise the agents who filed the application, who are obliged to serve their clients to the best of their ability. Specsavers has shareholders who will demand the strongest possible protection for its assets, including trade marks. I will however criticise both the applicant and the agent for making a series of two marks by adding an incorrect variant - especially given that, if an infringer used it, a judge would surely hold it so similar to the correctly-punctuated contraction as to cause a likelihood of confusion. In fact, the apostrophe might even be considered to be an insignificant detail which would not be noticed by the average consumer, so SHOULDVE would be treated as identical with SHOULD'VE. Given that "its" and "it's" are commonly treated as identical, that appalling possibility seems very real.

I do however criticise the law, which should never countenance granting exclusive rights like this. It panders to the wishes of the absolutists, who want the strongest possible protection for all their intellectual property, and fails to strike a balance between their interests and those of new entrants trying to find a trade mark which they can use, and ultimately of consumers too. The EU had an opportunity recently to make some repairs to a broken system, but with this acceptance the Trade Marks Registry has (IMHO) broken it a bit more.

Philip Glass on copyright

An insight into the importance of copyright to creative people, specifically composers (or at least one composer) but applicable to others whom the copyright legislation refers to as "authors". Read it here.

Tuesday, 13 September 2016

Repair clause referred to Court of Justice

My great friend David Musker reports on the Class 99 blog that a court in Milan has referred to the Court of Justice (how nice to see the institution being identified by the correct name!) for an interpretation of the repair clause (Article 110 of the EU designs regulation, No 6/2002). The questions asked - of which there are two - are (as is so often the case, partly I suspect as a result of their having been translated into English) pretty incomprehensible. Why do these questions so often have to ask if something is "precluded"? In BMW v Round and Metal, to which David's article refers, Arnold J, in a judgment that epitomises the adjective "Arnoldian", rejected the proposition that the defendant's alloy wheels fell within the scope of the repair clause: they were sold not as straight replacements but as alternatives, with different dimensions - and tellingly they were usually supplied in sets of four. What a misfortune to damage all the wheels of your car at once! Although it reminds me of a client who found her Boxster (this was probably 20 years ago) completely devoid of wheels one morning ...

An interesting point in the reference is that it appears to try to establish a connection between the "complex product" (the car) and the replacement part by reference to the fact that the wheels are approved under UNECE Regulation No 124 for use on that particular model of car. I'm looking forward to seeing what the court makes of that. I'm also trying to find some more enticing prospects to look forward to.

Friday, 2 September 2016

Monkey selfie: Animal charity Peta challenges ruling - BBC News

BBC News reported a while ago that Peta, the animal rights charity, with which I usually have complete sympathy, is arguing in a court in California that copyright in the now-famous macaque self-portrait belongs to the photographer. It sounds as if there is some dispute about which monkey took the photo (by which I mean pressed the shutter release or whatever it's called on a digital camera, as I can't imagine that he or she had the faintest idea what the action would lead to), but that leaves the main point that the charity argues that "[n]othing in the Copyright Act limits its application to human authors…".

I claim no particular expertise in U.S. copyright law, and am prepared to accept that there is at least an arguable case to support that proposition. Whether that justifies Peta spending charitable funds on a lawsuit which most would consider frivolous is another matter. Ever since I read Peter Singer's "canonical" (nice word - thanks Wikipedia) book Animal Liberation (here on Amazon), one of the many ways in which I distracted myself from the grinding boredom of articles of clerkship (1978-1980), I have tried to be as conscious of speciesism as of racism and sexism. I haven't perfected it, but I hope I have got close.

I can't put my hands on my well-worn copy (the paperback version of the first (1975) edition, published 1977) just at the moment, but I don't think it contains anything about animals' copyright. [later: I have found it now, and there is no entry in the index for "copyright" or "intellectual property", or even just "property", which isn't conclusive but will do for now.] In UK copyright law, the author of a work (and therefore, usually, the first owner of copyright in it) is the person who creates it. A person is (this from the Oxford Companion to Law) typically defined as "a being, entity or unit which can bear legal rights and duties". The word "being" without the adjective "human" seems to leave open the possibility of animals being authors. However, legal personality, the article in the Companion goes on, has to be distinguished from legal status, citing as an example that we can say the legal status of an animal [a non-human animal, I would add, not for the avoidance of doubt but to highlight the ambiguity or inaccuracy of the original statement] is that of property and that of a human is a person.* Professor Singer might, I imagine, take issue with the narrow definition of "person", especially as the whole point of his thesis is, as I understood it, that we should regard animals as having rights (though not necessarily accompanying duties). However, that is clearly the way the law works and I don't see any way for Peta to put forward a case for an alternative interpretation in the English courts, even if the Charity Commission would let them.

Now that I have found my copy of the book again, I'll search it for any suggestion that animals' rights should extend to owning property, and in particular intellectual property. I'm fairly confident that, however proprietorial some animals might be, Professor Singer didn't advocate extending legal personality to them to that extent.

Not Lucy's book
*See further, R. Tur, 'The "Person" in Law', in A Peacocke and G Gillett (eds), Persons and Personality: A Contemporary Inquiry (Oxford: Basil Blackwell, 1987), 121, and N Naffine, 'Who are Law's Persons? From Cheshire Cats to Responsible Subjects' (2003) 66/3 Modern Law Review 346. Professor Naffine is also the author of the article in the Oxford Companion to Law to which I referred and from which I repeat these two references.

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Visibly Faster Turnarounds By Indian Trademark Registry

This morning, when I opened my inbox, one email in particular surprised me. The email contained our first ever “e-certificate” for a trademark application filed just about one year ago! In the past, such prompt action by Indian IP Offices was almost unheard of. But clearly, the technology-enabled procedural changes introduced over the past year or so have begun to bear fruit.

The issues faced by the Registry in printing and dispatching hard copy (Registration Certificates) are quite well-known. On many occasions, the certificates did not reach the intended recipients. This not only caused delay and inconvenience to stakeholders but also imposed needless cost on the Registry as well as Applicants (who had to apply for a duplicate certificate).

About a month ago, the Indian Trademark office, via its notification dated 28th July 2016, had notified the new system of sending only e-certificates (Registration), and doing away with the century old system of sending hard copies. This was made effective from 1st August 2016 for all trademark applications:
  • published in the Trade Marks Journal on or after November 23rd, 2015;
  • where no request for amendment filed on behalf of the applicant is pending disposal;
  • where Trade Mark registry’s database contains the original application;
  • where no compliance requirement is pending on part of the applicant; and
  • which have not been specifically prohibited for registration by the order of any court, IPAB or any competent authority.

With the adoption of the new system it appears that the Registry is taking every possible step to eliminate the root cause for delay and thus expedite the registration process and deliver on the higher standards outlined in India’s new IP Policy.

Friday, 22 July 2016

Letters of Note: Mark Twain on copyright

Letters of Note - which is highly recommended reading at all times - has reproduced this letter by Mark Twain about US copyright law - more specifically about its failure to deal with cheap imports from Canada, and an early example I think of an international exhaustion rule. I think he should have been complaining about Canadian copyright law (which at the time was presumably Imperial copyright) - or perhaps about his own country's Declaration of Independence, or USexit as we might now call it. Which reminds me: one of the many, many disastrous effects of the UK leaving the EU (should it ever actually happen) will perhaps be the revival of the argument that exhaustion should happen globally - and without the constraints of EU law (and the more general constraint of the EU project) it will be harder to resist ... no doubt it would be hard to go the international exhaustion route if we remain in the single market, but that looks like an increasingly less likely outcome: if we want the single market we have to accept free movement, so the outcome is virtually identical to what we already have, and no doubt those who believe we are better off out of the EU will prefer to go for broke and cast the UK adrift in the stormy seas of global trade under the auspices of the WTO.

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Friday, 15 July 2016

Trade secrets directive becomes law (but will we have to implement it?)

The European Commission proposed a directive to harmonise protection of trade secrets throughout the European Union in 2014. The directive was unanimously adopted by the Council and three weeks later published in the Official Journal on 15 June 2016, and came into force on 5 July (Directive (EU) 2016/943 of the European Parliament and of the Council of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure.) Between publication and entry into force, of course, the UK's referendum on EU membership reduced the importance of the directive to this country.
Being a directive, the new law has to be implemented by the Member States. In the general confusion about how the UK will effect its exit, no one knows whether the directive will be implemented. Member States have two years in which to do is that, and two years is also the interval after giving notice under article 50 of the treaty when the UK will leave. However long passes before the UK gives notice, will determine how long the UK will be required to comply with the directive. That could be only a few months.
As with other areas of intellectual property law, however, it does seem quite likely that the UK will continue to ensure that its laws are aligned with those of the European Union. Depending on the future relationship with the EU, the UK might be obliged to comply with the directive anyway. In any event, it is hard to imagine that Parliament could possibly find time to replace more than a tiny part of our EU-derived law. The trade secrets directive is likely to remain important. However, the detailed shape of the Directive is likely to emerge only once the Court of Justice is seised of some cases in which it can give its interpretation of the law – and its rulings will cease, at some point, to apply to the UK.
Article 2 defines a trade secret as information that
  • Is secret in the sense that it is not generally known among or readily accessible to persons within the circles that normally deal with this kind of information;
  • Has commercial value because it is secret; and
  • Has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.
While the first and third of these requirements are at least similar to English law, the requirement for commercial value narrows the scope of the definition – which is hardly surprising, as the Directive is seeking to define a narrower class of information than the broad class of confidential information which our law protects.
The acquisition of a trade secret is unlawful when it is carried out by unauthorised access to materials, or any other conduct which is considered contrary to “honest commercial practices”. Where the trade secret is acquired from a third party and the person who acquired it knew or should have known that the third party was acting unlawfully, that acquisition will also be considered unlawful. Using or disclosing a trade secret will be considered unlawful when it is in breach of a confidentiality agreement or some other duty not to disclose the trade secret or to limit its use.
Remedies are dealt with in Article 11. They include the usual remedies in intellectual property cases – damages, interim and final injunctions, destruction of unlawful goods. There are no criminal offences, but Member States remain free to introduce their own.
The Directive has been criticised as “a threat to public interest and democracy” because of the perceived threat it poses to whistle-blowers and the press. The Panama Papers scandal in 2016 highlighted these concerns. The Directive does provide some protection for whistle-blowers and the press, so the question is whether the exceptions are sufficient. They are set out in Article 5 and cover disclosure of a trade secret for:
  • exercising the right to freedom of expression and information as set out in the [European] Charter [for Fundamental rights], including the respect for freedom and pluralism of the media;
  • revealing misconduct, wrongdoing or illegal activity, provided that the respondent acted for the purpose of protecting the general public interest.
Recital 20 says that “the measures, procedures and remedies provided for in this Directive should not restrict whistle-blowing activity. Therefore, the protection of trade secrets should not extend to cases in which disclosure of a trade secret serves the public interest insofar as directly relevant misconduct, wrongdoing or illegal activity is revealed.” Nevertheless, critics argue that the burden for showing that disclosure is in the public interest will fall on the whistle-blower or journalist, and there have been calls for a further directive to give more extensive protection to them.
English law on breach of confidence, non-statutory as it is, gives narrower exceptions to protect whistle-blowers and the like. The changes demanded by the Directive would not be great, but some extension of the public interest rule (covering, remember, only trade secrets) might well be needed.

Wednesday, 22 June 2016

Lending of electronic books is comparable to the lending of traditional books

Lending a digital book to a reader must be the equivalent of lending a physical copy: it hardly seems to need thinking about, does it? But in the copyright world things are often not as simple or logical as they first appear. When an e-book is lent to a reader, is that the restricted act of lending (or perhaps rental, if money changes hands) or is it making available to the public? And should it fall within public lending rights schemes, which it would if it were regarded as lending? Which act it is, determines whether authors are remunerated for the activity. In the UK it has been treated as "making available", and therefore outside the scope of public lending right, a matter of concern to my trade union the Society of Authors - but perhaps not for much longer.

In Case C-174/15, Vereniging Openbare Bibliotheken v Stichting Leenrecht, Advocate-General Szpunar has indicated that the activity should be treated as a form of lending. Provided it is on the "one copy, one user" basis (the library lends the e-book to one person, and can't lend it to another until it has been "returned") this is economically no different from lending a hard-copy book. The Advocate-General considered that the fact that the 2006 rental and lending directive was silent on the matter of e-books indicated no more than that the technology was in its infancy - a bit of a feeble excuse, because although the Kindle was launched in November 2007, less than a year after the Directive was passed, Sony had produced the Librie in 2004 and the Reader in 2006. More to the point, perhaps, e-books have been around since at least 1971 when Michael S Hart set up the very wonderful Project Gutenberg, so why didn't the directive take into account what was already pretty old technology?

Whatever the answer to that, the Advocate-General thinks that the directive should be read so as to cover e-books. This is exactly the sort of judicial activism that gives the Court of Justice a bad name - not reason to vote Out tomorrow, but certainly (for me) a reason to be with Jeremy Corbyn - about 70 per cent "remain". If the EU produced half-decent legislation to start with, I might be up to 75 or 80 per cent.

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Friday, 17 June 2016

Garage's use of carmaker's trade mark

It's rather hard to see why a case in which an unauthorised repairer, sued by the manufacturer for trade mark infringement, would even incur the expense of going to court. Nevertheless in Bayerische Motoren Werke AG v Technosport London Ltd and Anor [2016] EWHC 797 (IPEC) (13 April 2016) that is exactly what happened, and the defendant won on one count of trade mark infringement. But it lost on another two, and on passing off, so had a bad day overall.

BMW alleged infringements of their BMW trade mark, the roundel device and the "M" device which denotes certain high-performance models in their range. Perhaps I should write "extra-high performance".

The first two are Community or now EU trade marks, and the third an International designating the EU, so the legislation which was engaged in the case was Council Regulation (EC) No. 207/2009. In each case the claimant invoked art.9(1)(a) (double identity) and (b) (likelihood of confusion) and in the case of the "M" device art.9(1)(c) (unfair advantage) as well, and all three infringements had associated passing off claims. That seems pretty comprehensive.
 The uses of the trade marks were all the things that one expects of an unauthorised repairer. There was the use of the description "BMW Specialist" on the fascia on the garage premises, which it was accepted was not liable to affect any of the functions of the trade mark (Case C-63/97, Deenik): it was an accurate message about the services offered by the defendant, and was not even pleaded. The roundel also appeared on the fascia, which was another matter: and it was on a van, business cards and a banner inside the premises. The "M" logo appeared on the website.

The novel allegations of infringement concerned the fact that Mr Agyeton, the proprietor of the defendant, wore a shirt with the initials "BMW" on it and he or the defendant operated a Twitter account with the handle @TechnosportBMW. That claim did not succeed, but the others did. The fact that the roundel featured on the packaging of parts which were supplied (through the authorised dealer network) to the defendant, as the law requires them to be, made the claim a little more complicated. In addition, promotional items bearing the roundel were provided to dealers as part of the manufacturer's efforts to encourage the sale of genuine parts, and would be passed on to non-authorised dealers, who would pass them on to customers, which further complicated the matter. In the end, however, the judge was satisfied that the average consumer would not understand the roundel on the packaging to indicate that the garage was an authorised repairer. But where the roundel was displayed on or in the premises, the average consumer would assume that this indicated a connection between the garage and BMW, or (if that was not the case) at least it would cause consumers to wonder about the connection.

The use of the roundel also amounted to taking unfair advantage of the reputation of the trade mark (art.9(1)(c)), although that won't have added anything to the remedies (and, being an IPEC case, the amount of damages available was limited anyway).

The use of the "M" device would also have those effects, so that too amounted to an infringement. But the use of the BMW signs conveyed no suggestion that the defendant was an authorised repairer, partly because the evidence provided didn't get BMW far enough, so this line of attack is hardly foreclosed by this judgment.  There is an interesting argument that, because BMW dealers commonly include "BMW" in their business names, the addition of the defendant's name could actually made it seem more like a representation that there was a connection: the judge thought that too subtle for the average consumer, but it should definitely not be discounted in future. A manufacturer might well find a way to make that approach work in their favour.

Where, you might wonder, do the art.12 defences feature in this case? The answer is that the defendant accepted that art.12 added nothing to the defence to the infringement claim, namely that "the defendant's use of the signs was not liable to affect the functions of the Trade Marks.  This was because the signs as used by TLL would in each case have conveyed to the average consumer that TLL was a specialist in the repair and maintenance of BMW vehicles, using genuine BMW spare parts." I expected to see detailed consideration of the "honest practices in industrial and commercial matters" proviso, as in Volvo v Heritage, but the judge wasn't asked to get into that.

Regarding the passing-off claims, these stood or fell with the trade mark claims, and the judge explained the connection between the two which strikes me as an interesting point:
 Had I found that the message conveyed by TLL’s use of its roundel and the M logo signs in each case did no more than render the average consumer unable to determine whether there was an economic link between TLL and BMW, as opposed to causing the average consumer to take the view that there was such a link, on that evidence I would have concluded that there had been no passing off by TLL, see Reed Executive plc v Reed Business Information Ltd [2004] RPC 40, at [111] and Phones 4U Ltd v Ltd [2007] RPC 5, at [16].
"Unable to determine" and "caused to wonder" amount to the same thing (so it appears from this judgment), so the test for passing off is somewhat stricter than that for trade mark infringement.

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