Tuesday, 30 October 2012

Orphan works directive becomes law

Directive 2012/28/EU has been published in the Official Journal and is now law. Member states have two years in which to tranpose it into national law.

Thursday, 25 October 2012

Death of Copyright

An interesting article from Los Angeles Lawyer (back in November 2010), by Steven T Lowe of Lowe Law, describing how the Second and Ninth Circuits (which I think I am correct in describing, without intending to disparage the others, as the most important ones) have taken an approach to infringements by movie studios and broadcasters which makes it very difficult for creators. Killed it, indeed: he didn't even see a need for a question mark at the end of the title.

Judges have taken to disposing of such claims summarily, assuming responsibility for both the extrinsic and intrinsic analyses of the alleged infringement and therefore denying plaintiffs (as they are still called in those parts of the world where Lord Wolfe's dumbing-down exercise could not reach) their constitutional right to a jury trial (denied to copyright owners here rather earlier, I think). Worth a read: like so much American legal writing, the prose is clear and attractive, and the story is potentially relevant in our copyright system.

Wednesday, 24 October 2012

Guest book review: Intellectual Property in Israel

I am delighted to present a review of Intellectual Property Law and Practice in Israel by Eran Liss and Dan Adin, Oxford University Press, 2012), a guest post by my good friend Mehmet Artemel, of Bogazici University, Istanbul. The rest of this post is his work ...

The book is published by Oxford University Press with the following particulars: OUP USA, 676 pages, 235x156mm, ISBN13 978-0-19-991741-9 / ISBN10: 0-19-991741-8; Paperback; 31 May 2012.

Existing reviews and references:
To the best of this reviewer’s knowledge, save for the publishers’ blurb and the promotional message on the website of the authors’ firm, Adin-Liss Law Offices, commentaries hitherto made on the book have been located in the following sources:



Scope and breadth:
A page count of each one of the 11 chapters attests to the authors’ contention that “[t]his book provides a comprehensive view of the laws and case law in the entire range of intellectual property laws in Israel” (p. xxiii, Preface).

Perhaps, the most striking first impression one gets from a cursory flip through the book before undertaking a detailed reading of this hefty volume is the scope and comprehensive nature of the contents. Indeed, as noted by all three eminent reviewers, the book’s “length reflects its comprehensiveness” (Michael Factor), while “the breadth of coverage and depth of analysis” (Amir Khoury) gives one the impression that the authors “have written the definitive text” (Jeremy Phillips).

The book as the authors put it “includes very detailed chapters on the three main branches of intellectual property laws: patent, trademark, and copyright laws” (p. xxiii, Preface). Perhaps at the expense of an imbalance between chapter lengths, the above three areas are covered in minutiae. While chapter 2 on “Patents”, chapter 4 on “Trademarks and Passing Off”, and chapter 5 on “Copyright” span 134, 164 and 140 pages, respectively, the length of the remaining substantive chapters, range between a minimum of 3 pages (“Introduction to the Israeli Legal System”, chapter 1) and 58 pages (“Major Issues in the Information Technology Context”, chapter 9). In view of its brevity, it might have been an idea not to have numbered the 3-page synopsis on the Israeli legal system, as chapter 1, but perhaps simply to have presented it as a condensed overview on a par with the Preface.

Chapter headings and subject-matters
The authors have achieved a remarkable feat by managing to cover in a single volume the entire spectrum of IP fields as well as complementary rights and obligations under chapter 6 (“Unjust Enrichment”) and chapter 7 (“Trade secrets”). Moreover, having incorporated two sector-specific chapters on IT and the Pharmaceutical industries, in both of which Israel boasts an impressive performance, the authors provide a rare insight into the dynamics of IP as they feature within the context of these sectors in the country. One is almost left wishing that there could have been room for the authors to cover other specialist industries, such as biotechnology and nanotechnology in which Israel equally excels or perhaps technology transfer and commercialisation of R&D output within the framework of industry and academia collaborations, where Israeli success stories enjoy worldwide acclaim.   

“Related Rights”, however, as a choice of title for chapter 8, where seemingly incongruous areas including “Appellation of Origin” and “Geographical Indications” (sections 8.1 and 8.2, respectively), “Plant Breeders’ Rights (section 8.3), “Right of Publicity” (section 8.4) and “Unfair Intervention” (section 8.5) have been examined, could possibly occasion slight confusion among those readers who have come to associate the use of the expression ‘related rights’ as a term of art, exclusively in connection with copyright such as “neighbouring rights”.

The first (“Introduction to the Israeli Legal System”, ch. 1) and the final chapters (“Enforcement of IP Rights”, ch. 11) of the book should be treated, in this reviewer’s opinion, as being of paramount significance for non-Israeli readers who may not be familiar with the Israeli legal system, which is a reflection of “the profusion of legal and business cultures” as aptly expressed by Jeremy Phillips (see back cover) and upon which the Israeli intellectual property jurisprudence is built. Therefore, while an excellent overview of the Israeli judicial system is provided under section 11.1.1, one wonders whether that information might have been a welcome addition to the introductory chapter 1 on the Israeli legal system. For readers who set out to read the book from cover to cover as in the case of this reviewer or indeed for those who intend to benefit from the text as a reference source and consult the desired sections as and when needed, it might be advisable to read chapter 11 first, or at the very least section 11.1.1, before delving into other chapters which, as the authors put it “... deal with substantive issues in IP law” (p. 600, para. 1).

Since a list of abbreviations which would have been a helpful addition at the beginning of the book, is unfortunately missing, it is suggested that either chapter 1 or 11 might have been an appropriate place where some explanation about the case citation style adopted in the text by the authors could have been given (see further below under ‘Case law and legal citations’).

Liss and Adin provide readers, in each chapter, with a brief historical account of the IP legislation introduced in Israel when the latter was subject to the British Mandate between 1922 and 1947. Notwithstanding that “[m]any of the intellectual property statutes in Israel find their roots in British Mandatory law”, as noted in WIPO’s Document by the Advisory Committee on Enforcement, the Israeli IP legislation forms part of a complex legal system inherited from the past (“The Protection of Intellectual Property Rights in Israel: A Survey of Legislation, the Court System, Enforcement and Public Awareness Programs”, Second Session, Annex, p.4, WIPO/ACE/2/12, June 25, 2004). The abridged legal history of Israel as presented in chapter 1, therefore, may be excessively terse for non-Israeli readers to appreciate the country’s immensely rich legal heritage and culture. In fact, as Dr. Michal Tamir (Associate Professor at Shaárei Mishpat College of Law, Hod Hasharon, Israel) remarks, “[a]lthough influenced by both common law and civil law, the Israeli legal system has its own special characteristics” (“A Guide to Legal Research in Israel”, GlobaLex, August 2006, http://www.nyulawglobal.org/Globalex/israel.htm; the guide as updated by  Ms. Esther Mann Snyder is available at http://www.nyulawglobal.org/Globalex/israel1.htm).

Tamir goes on to explain the eclectic nature of the Israeli legal system as follows:

Three layers of law, reflecting the historical background of Israel, can be identified in various degrees in contemporary law: Ottoman, British Mandatory and Israeli.


Between the years 1517–1917 Palestine was ruled by the Turks as part of the Ottoman Empire. The local law was dominated by codes. The Mejelle, an Ottoman codification of civil law, held a major role. Drafted by Moslem scholars, it was influenced by Napoleon’s Code Civil and published in1867-1877 by the Ottoman Sultan. It consisted of legal provisions for obligations, torts, property, commerce, corporation and procedure, and was liberally illustrated by examples. The Mejelle was rescinded in 1984 by a special Israeli law. The Mandate and the subsequent Israeli legislature rescinded most of the Ottoman laws, leaving only a few remainders that still exist today. For example, articles 80-82 of the Ottoman Civil Procedure Law (1879) are a part of Israel’s evidence law. The contemporary significance of the Ottoman legal system arises from the basic legal rule by which a legal system does not deny rights previously given by a former legal system. Thus, although the Israeli Real Estate Law rescinded the Ottoman Real Estate Law, it protected rights that had been gained according to it.

Ruth Levush (Senior Legal Specialist at the Eastern Law Division, Directorate of Legal Research, Law Library of Congress, Washington DC, USA) provides an equally colourful and comprehensive account of Israel’s rich legal history. (see Levush, “A Guide to the Israeli Legal System”, LLRX.com, http://www.llrx.com/features/israel.htm; see also Legal Research Guide: Israel, Library of Congress, http://www.loc.gov/law/help/israel.php, which is by and large an abbreviated version of the text at LLRX.com.

Despite the detailed scope of the information provided, the authors manage to preserve a practical slant which is conveyed in a vivacious tone that is reinforced by terse affirmative phrases in the form of single sentence paragraphs,  e.g. “We shall discuss both aspects” (p. 301, above section 4.11.3.2), “We shall discuss each of these remedies” (p. 310, just above section 4.12.2)  or brief rhetorical questions which read like FAQs that are interspersed throughout the text,  e.g. “What happens if an applicant seeks to amend the specification in the course of opposition proceedings?”  (p. 62, para. 2), “What must the license include?” (p. 244, section 4.8.5.4). These short phrases and questions help maintain the reader focused and ensure the book’s standing as a handy reference work for consultation. Perhaps, therefore, for purposes of providing citations from the work, a preference for numbered paragraphs over cumbersome subsection numbers (such as “4.9.3.4.2.6” at p.263) might have been more appropriate, in view of the fact that the book is likely to be a contender for being considered as an indispensable source of reference for practitioners and legal advisors on intellectual property law in Israel.

Typography:
Without going as far as Michael Factor according to whom “[u]nfortunately, the readability of the book suffers from the lack of professional editing” (
http://blog.ipfactor.co.il/book-reviews/) it is impossible not to notice the presence of typographic errors and inconsistencies that appear to have made their way through to the published text.

Notwithstanding a predilection for American English spelling throughout the book, readers are occasionally likely to stumble upon a word that is spelt variably in British English (e.g. ‘defence’, p. 258, fn. 265 as opposed to ‘defense’, p. 284, section 4.9.5).   A selection of other inconsistencies and typos which seem to have slipped the editors’ attention is listed below:

  • “L’oreal” spelt with lowercase ‘O’ at p. 557, as opposed to the correct form in capital ‘O’ as provided in the corresponding footnote 92. With respect to this case, it has also to be noted that (i) the order of the claimant/defendant has been reversed in the main text; and (ii) the case has been omitted in the Table of Cases. 
  • Inconsistent spacing between hyphens, e.g. “Abstraction- Filtration-Comparison” at p. 373, last line; 
  • Inconsistent use of certain legal phrases, e.g. “conditioned imprisonment” at p. 629, fn. 26, as opposed, perhaps, to “conditional (?) imprisonment”; “an acknowledge country” at p. 587, fn. 21, as opposed to “an acknowledged (?) country” as referred to in the main text at subsection (2); 
  • Inconsistent use of capitals/lowercase letters for ‘trademark owner’, e.g. “Trademark Owner”, at p. 233, para. 2, where both initials are in capitals; “Trademark owner” at p. 237, section 4.8.1.1, para. 2, where the ‘T’ is in capital and ‘o’ lowercase letters; “trademark owner” at p. 239, penultimate paragraph, where both initials are in lowercase letters; 
  • Inconsistent use of capitals/lowercase letters for ‘registered user’, e.g. “registered user” at p. 233, para.2; where both initials are in lowercase letters; “Registered User” at p. 245, first paragraph, third line, where both initials are capitalised; 
  • Inconsistency in the use of bold fonts: It’s not clear as to why registration numbers cited at fn. 170 on p. 226 are in bold unlike others, e.g. at fn. 171. 
  • Misspelling of the eponymous Anton Piller case: This would have been less conspicuous had it not been in a legal work, e.g. spelt as “Pillar” in the Index at p. 663 and in the introductory chapter 1 at p. 3, para. 2. 
Case law and legal citations
An excellent feature of the book is the abundance of references to the Israeli case law together with relevant quotes from judgments as well as accompanying comments by the authors. Several rulings that date from 2011 provide the reader with the reassurance that access to the current legal dynamics and trends in Israeli IP law is available at hand. Considering the paucity of reported Israeli decisions in English, the effort by the authors to compile, summarise, and quote judiciously from these cases is a commendable service to English-speaking readers.

As practising lawyers who have acted on behalf of their clients in a number of the cases cited, the authors provide readers with access to several unreported and unpublished cases (e.g. Pharma Israel v. The Ministry of Health, p. 589, fn. 24), which serve as a gateway to a legal treasure grove for scholars and practitioners in other jurisdictions.  That said, the use of acronyms, in the absence of a table of abbreviations at the beginning of the book containing information about the citation method adopted, might lead the reader to despair unless as fortunate as this reviewer to be able to resort to the counsel of Israeli legal experts. While it may not have been particularly necessary to indicate in brackets that “R&D” would stand for “Research and Development”, e.g. p. 9, para. 3 and p. 577, para. 2 or “POA” for “Power of Attorney” at p. 240, where in the latter case it may have been more appropriate to introduce the abbreviation at p. 200, para. 3 when first mentioned, the same can hardly be said of cryptic acronyms, highlighted in bold by the reviewer, that precede case names such as in those listed below, as quoted in the book:

C.A. 8802/06 Unipharm Ltd. v. SmithKline Beecham PLC et al (p.26, fn. 57):

C.A.: Civil Appeal


Above at p. 26, fn. 57, “Smith Kilne” stands as a typographic error which is replicated at p. 27, fn. 61.

At p. 590, fn. 32, the company name has been spelt as “Smith Kline” in the form of two distinct words. In the same footnote, the company is identified as a “PLC” whereas in the corresponding Table of Cases (p. 660) the company is spelt correctly in one word, it is this time indicated as “Co.”
While the year of the case is included at fn. 32, p. 590 and in the Table of Cases (p. 660), neither at fn. 57 (p. 26) or fn. 61 (p. 27) is there any such mention.  

C.C. 115/98 Microsoft Corp. V. Data Pool Ltd. et al. (p. 630, fn. 28):
C.C.: Criminal Case

C.F. (Haifa) 12313/04 Tzur Aviram et al. v. Komda Ltd. et al (p.368, fn. 165):
C.F.: Civil File (i.e. Civil Case)

M.A. (Tel Aviv) 1281/06 Amgen Fremount Inc. v. The Patent Registrar (p. 50, fn. 115)
M.A.: Miscellaneous Appeals -- an optimistic guesswork by the reviewer based on the reference to “Miscellaneous Appeals” at p. 520, fn. 1, where the case is referred to as “Miscellaneous Appeals (Tel Aviv) 501/80 Rozenthal Shunia v. The Patent Registrar”, while the same case is cited in full at p. 14, fn. 18 as “Miscellaneaous Appeals (Tel Aviv) 501/80 Rozenthal Shunia v. The Patent Registrar (p.m 1984 (3) 441)”. It should be noted that “p.m”, usually abbreviated as “P.M.” in capital letters, is the acronym for the case reporter i.e. Psakim Mehoziim in which the case was published.
MLA 1091/05 Issawi Achmad v. The State of Israel (p. 630, fn. 27):
MLA: Proving a particularly tough one to crack – stands for “Motion for Leave to Appeal” (see p. 222, section 4.6.5.5, para. 3)
SC 13729-11-09 Alon Koren Meidan v. Global Networks ICI Ltd. (p. 569, fn. 125):
SC: Small Claims (see also SC 15988-02-10 Boris Gale v. Cellcom Ltd., p. 569, fn. 126; SC 36975-03-10 Guy Mayor v. Tel Aviv University, p. 570, fn. 127
As in the above example of “MLA”, the reader is left to his own means if he truly wishes to discover the type of procedure by going back and forth between the index, the Table of Cases as well as trying to spot a clue either in the  text or most likely in the footnotes

O.M. 506/06 Matim Li Fashion Chain for Large Sizes Ltd. et al. v. Crazy Line Ltd. et al. -- as spelt in the Table of Cases at p. 644, which, probably is better than the citation at p. 546, fn. 69 where inconsistency in the use of capital letters prevails:
O.M.: Opening Motion: Not listed in the index but conversely mentioned in the Table of Contents and constituting the title of section 11.1.2.1 at p. 603.
Though this reviewer was able to decipher some of the acronyms thanks to the generous help and expertise of his friends and colleagues, Ms. Li Maor, Legal Consultant, Head of Israel Desk, Division for Certain Countries in Europe and Asia (DCEA) at WIPO in Geneva and Dr. Assaf Jacob, Lecturer in Law at the Interdisciplinary Center (IDC) in Herzliya, who could deduce the meaning of the acronyms that precede the cases cited, from the facts and procedural history of the dispute, it has to be admitted that some,  such as “MLA”,  seemed equally mystifying to them. It is, therefore, highly questionable whether the majority of readers will ever make any sense of them. These initials are all the more inaccessible when one considers that they neither follow the leading US nor UK standard citation guidelines for Israeli case law.

By way of illustration, in “C.C. 115/98 Microsoft Corp. V. Data Pool Ltd. et al.” (p. 630, fn. 28)”, C.C. could be taken to stand for either a ‘Civil Case’ or a ‘Criminal Case’. To make the distinction, in the Guide to Foreign and International Legal Citations of the Journal of International Law and Politics by New York University School of Law, authors are instructed to adopt “C.C.” for civil cases and “Cr.C.” in respect of criminal cases (section 3.1, p. 94, (
http://www.law.nyu.edu/ecm_dlv1/groups/public/@nyu_law_website__library/documents/documents/ecm_dlv_006388.pdf). On the other hand, in its “Instructions for Contributors” for publications in the Israel Law Review by Cambridge Journals, civil cases are required to be abbreviated as “CC” and criminal cases to be cited as “CrimC” (p. 11, http://assets.cambridge.org/ISR/ISR_ifc.pdf). This particular style might have been a more befitting choice for the publishers of this book in view of the fact that the “Israel Law Review – albeit published by Cambridge University Press --  uses the style of citation formulated by the Oxford University Standard for Citation of Legal Authorities (OSCOLA)” (p. 3, B. 2. (a), ibid).

In view of the fact that the book is likely to attract the attention and interest of an international audience, it is, therefore, disappointing, that the publishers have not deemed it necessary to provide a comprehensive list of abbreviations at the beginning of the book.  

Nevo, the legal publishers:
It may, perhaps, have been helpful had some information been provided, at some point, on the local legal publishers for the benefit of readers who may not be familiar with Israeli legal resources, as Ruth Levush, or Dr. Michal Tamir, have done in their guides to the Israeli legal system (see above).
The date as of which Nevo -- an Israeli legal publishing house to which laconic references are made in brackets following a number of cases cited in the text (see e.g. C.F. 827/07 Erez Ben Simon v. Monitz Iro et al. (published in Nevo))” -- assumed the publication of the judgments of the Israeli Supreme Court,  which were previously published by the Israeli Bar, however, differs by a year in Levush and Tamir’s respective guides. Tamir maintains that Nevo began to report cases since 1997 (see section 8.8, ibid) whereas Levush pins the date at 1999 (see LLRX.com, ibid and Library of Congress, ibid, under “Official Case Reports (in Hebrew)”).
This reviewer is inclined to place his bet on the advice kindly offered by his friend Li Maor, according to whom, it was, actually, in the mid 1998 that Nevo Press began to report cases following a successful bid for tender and was duly licensed as the official publishers of the judgments of the Supreme Court.

Case/judgment dates:
Readers may find it disconcerting that dates relating to cases frequently appear to be missing. Unfortunately, phrases such as “As recently held by the Patent Registrar ...” (see p. 147, section 3.3, para. 3 and corresponding footnote 23) or “In the recently published guidelines for examination ...” (see p. 67, last para, and the corresponding footnote 152) without further precision as to the exact dates either in the text or in the corresponding footnotes, are not particularly helpful. For instance, in connection with the landmark JAFFA case which is covered under chapter 8 at p. 505, no dates are to be found either in the text or at footnote 4 where the case is cited in full or, for that matter, in the Table of Cases at p. 638. In a lucid and detailed article on the same decision by Neil Wilkof and Shir Uzrad in the Journal of Intellectual Property Law & Practice (“In the matter of the appellation of origin for ‘JAFFA’”, 2008, Vol.3, No. 1, doi:10.1093/jiplp/jpm222), the authors, by contrast, introduce their article with a citation that leaves not a shred of doubt as to the full particulars of the case not least the date: “The Citrus Division of the Plant Production and Marketing Board v Israel Commissioner of Patents and Trade Marks [2007] 1011/05, Appeal Board (Jerusalem), 12 July 2007” (at p.17).

Practical focus:
As might be expected from a text that is written by two litigation lawyers, the practical slant of the content is a pervasive feature of this book. Liss and Adin would, therefore, appear to have achieved what they set out to accomplish as stated in the Preface at pp. xxiii-xxiv:
Our aim is to provide the readers with a very practical overview, which includes all the relevant information: from instructions of how to register IP rights in Israel, to numerous illustrations of how Israeli Courts have ruled on pertinent issues, and a very extensive analysis of important case law.

The use of flow charts as in the case of the “standard” or “fast procedure” on pp. 617-18 and p. 620, respectively, within the context of procedural steps as prescribed by the Customs Guidelines, as well as illustrated comparisons of trade marks on pp. 177-79,  251-56,  264, and 267-68 are particularly helpful and informative.

Frequent commentaries and suggestions throughout the text, such as to the manner in which damages are assessed (at p. 311) may be welcome as useful complimentary legal advice to the foreign businessperson or legal advisor, as well as providing the non-practitioner with a deeper understanding of the underlying issues and the local jurisdiction. The authors do not hesitate to express their forthright criticisms of decisions with which they disagree (see e.g. p. 258, second paragraph or at p. 304, first line). In this respect, albeit written in English, one may surmise that the authors intend that the Israeli legislature (e.g. at p. 243, section 4.8.5.3, para. 3), the judiciary and the Israeli Patent Office be among the target audience for the book.

Sections of various IP legislation and passages from judgments, as quoted by the authors in English, in parts of the text appear to have been selected judiciously and in good measure. Though, unfortunately not made clear as to whether the English translations are those of the authors or the officially authorised version, they do help the reader to form an opinion which is not strictly influenced by the observations and objections that reflect the authors’ own views and deductions.

Comparative perspective:
In support of the virtues of comparative studies, this reviewer should like to quote from Henry H. Ehrmann:
Although the careful study of a single legal culture can yield valuable insights, only the analysis of a variety of legal cultures will recognize what is accidental rather than necessary, what is permanent rather than changeable in legal norms and legal agencies, and what characterizes the beliefs underlying both. (Comparative Legal Cultures, Prentice Hall Inc. Englewood Cliffs, New Jersey, 1976, p. 11)

The authors’ deliberate choice to adopt a comparative approach with references to the US, UK and the EU appears sagacious, as it thus has not only the potential to appeal to a wider audience but also to render Israeli IP jurisprudence more accessible to the foreign reader who may, by drawing comparisons, have a yardstick against which to judge and appreciate the nuances of another legal system.

At times, Liss and Adin simply consider the differences between two of the jurisdictions mentioned above such as the EU and Israel (e.g. at p. 169, final para. concerning the registration of single letter marks) or the UK and Israel (at p. 230, comparison between the position in the UK and Israel in the context of the use of a trade mark) and in other instances between all three, e.g. at chapter 9, on the subject of “software, e-commerce and business patents”, where the authors successively trace the developments in the US (at pp. 522-24, para. 9.1.1.2.1), the EU (at pp. 524-27, para. 9.1.1.2.2) and Israel (at pp. 527-31, 9.1.1.2.3).

Currency and reliability
Another of the book’s forte is the abundance of case law that helps put the law into context and observe how it is applied by the Israeli judiciary. Several cases that are cited are as recent as 2011, such  as the decision by the Israeli Supreme Court sitting as the Court of Appeal in the case of C.A. 3960/106 The Customs Authorities v. Christian Dior Couture (2011) (see p. 618).

The information is current and up-to-date. Petach Tikva, which became the sixth District Court of Israel in 2007 (see
http://www.israelnationalnews.com/News/News.aspx/123435 as cited on http://en.wikipedia.org/wiki/Israeli_judicial_system) on top of the existing five, comprising Be’er Sheva, Haifa, Nazareth, Tel Aviv, and Jerusalem, is mentioned in chapter 9 at p. 602. It has to be noted that in this instance, Liss and Adin are one step ahead of the official website of the Israeli Foreign Ministry where the number of district courts still stands at five (see “Judiciary: The Court System”, under “District Courts” at http://www.mfa.gov.il/MFA/Government/Branches%20of%20Government/Judicial/The%20Judiciary-%20The%20Court%20System, as at 30 September 2012).

Concluding remark:
Despite some minor typographic and editorial lapses, the reviewer is assured that the book is an extremely valuable guide to Israeli intellectual property law and practice and, as a comprehensive textbook, is likely to appeal to the international academia, while at the same time serving as an authoritative reference source for the business world and the legal profession.

Saturday, 13 October 2012

The ICLR Blog: An obvious observation about obviousness

From The ICLR Blog: An obvious observation about obviousness: The law of patents is not always patently clear, but one point is obvious. The question of obviousness is not one that admits of endless el...

Better read the rest on their blog. It's a note on MedImmune Ltd v Novartis Pharmaceuticals UK Ltd [2012] EWCA Civ 1234, which the very name tells you can only be a patent case.

Apple takes licence for clock design


Reports throughout the media tell us that Apple has agreed to licence a clock design from Schweizerische Bundesbahnen (SBB), the Swiss railway operator, because the clock provided in Apple's iOS 6 was too similar. SBB's iconic design, the red second hand of which is in the shape of a railway guard's signalling disc, dates from 1944, and was designed by their employee Hans Hilfiker. It remains in use in stations throughout the railway service, and the design is licensed to Mondaine, a Swiss watch maker.

But this all begs the question, what intellectual property rights are there in a 58-year-old clock design? None in the UK, for starters. Copyright, which I guess would have applied back in 1944, will have been curtailed under Schedule 1 to the Copyright, Designs and Patents Act 1988, and if there were ever a registered design that protection will long since have expired. Surely Swiss law isn't very different (although the licence must be worldwide, and looking at national laws doesn't get us very far). So what's the problem? Evergreening, that's what ...

The terms of the licence remain confidential, but it looks as if (contrary, perhaps, to the reports) this isn't a licence of a design at all, but another type of intellectual property.

Competition law films

The Australian Competition and Consumer Commission has produced a short film about cartels, well worth a look, reported (with additional material) on her blog by Caron Beaton-Wells, associate professor at Melbourne Law School here. And that reminded me about a wonderful animated film, and entry in a competition run by the Competition Commission of Singapore - what an excellent way to raise awareness of competition laws.

EU patent court proposals

A guest post on Dennis Crouch's Patently-O blog by Angelos Dimopoulos, Assistant Professor at Tilburg Law School and Petroula Vantsiouri, Doctoral Candidate at the University of Cambridge, Faculty of Law, about the relationship between the existing courts of the EU and the proposed patent courts: A new highest patent court for Europe? Not as long as the Court of Justice of the EU is here - Patent Law Blog (Patently-O).

Monday, 1 October 2012

Fallon welcomes new procedure for small IP claims

Today saw the introduction, long-awaited, of a small claims track in the Patents County Court (which despite its name does not deal exclusively with patent actions). The Intellectual Property Office has put out this press release quoting my old friend Michael Fallon (why not Lord Marland, who is supposed to have the IP portfolio?): it seems to be the same as that put out by the Minister's own department, here, which seems like unnecessary duplication ... and, in these days of IP absolutism, perhaps a copyright problem? Surely not.

Cadbury can register colour purple as trade mark


Cadbury can register colour purple as trade mark

HHJ Birss QC, sitting as a judge in the High Court, has upheld a decision of a Trade Marks Registry Hearing Officer to allow registration of a trade mark comprising, in essence, a single colour: Société Des Produits Nestlé S.A. v Cadbury UK Ltd [2012] EWHC 2637 (Ch) . Back in 2004, Cadbury UK Ltd filed an application (number 2376879) of a trade mark comprising a block of colour and a verbal description:
The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface, as being the predominant colour applied to the whole visible surface, of the packaging of the goods
The goods specified were in Class 30:
Chocolate in bar and tablet form, chocolate confectionery, chocolate assortments, cocoa-based beverages, preparations for cocoa-based beverages, chocolate-based beverages, preparations for chocolate-based beverages, chocolate cakes.
The Examiner rejected the application on the grounds that it was devoid of distinctive character: however, on production of evidence of use the application was accepted and published in the Trade Marks Journal on 30th May 2008.
In August 2008 Société des Produits Nestlé opposed the Application in Opposition No. 97819 and on 20th October 2011 the Hearing Officer, Mr. James, essentially found for Cadbury and allowed the application. Nestlé appealed, arguing that the subject-matter of the application was not a sign, and that it was not capable of graphical representation. Under Section 3(1)(a) of the Trade Marks Act 1994, Nestlé contended, it was not registrable.
In the latest judgment, HHJ Birss QC explained that to prevent unjustified monopolies, registration of trade marks should be ‘kept firmly in its proper sphere’, and then, reflecting on the visible electromagnetic spectrum, posed the question ‘can Cadbury, even if they have shown that the public associate the colour purple with Cadbury’s chocolate, obtain a trade mark registration for that colour per se?’ He considered four judgements of the Court of Justice, which the Court of Appeal also reviewed:
·         Libertel v Benelux, in which the Court of Justice considered whether a Dutch telecommunications company could register the colour orange for telecoms goods and services; court held that a colour alone, which is not bound by any shape or outline, is capable of being registered as a Trade mark, but to satisfy the conditions of Article 2 of the Trade Mark Directive (i.e. Section 1(1) of the Trade Marks Act), the colour must also be a sign capable of distinguishing the goods/services of one undertaking from another.
·         Sieckmann v Deutches Patent und Markenamt, the Court of Justice addressed whether the smell of cinnamon (ethyl cinnamate) could be registered as a mark. The court held that smell could be a sign under Article 2, but it must also be capable of being represented graphically - which despite the sample and chemical formula, did not satisfy that requirement.
·         Heidelberger Bauchemie in which, a combination of blue and yellow ‘in every conceivable form’ was considered
·         Dyson v Registrar of Trade marks where Dyson sought to register the transparent collection chamber of a vacuum cleaner as a trade mark. The Court of Justice in Dyson confirmed its decisions in Libertel and Heidelberger and held that because the mark was for ‘all conceivable shapes’ of a clear collecting bin, this did not satisfy the requirement that the graphical representation should be clear and precise.
Nestlé argued that the mark applied for fell foul of Dyson because it relied on human subjectivity and other indeterminate factors: how can you judge with certainty whether a colour is ‘predominant’? That wording allowed many alternative readings, and the description of the mark was inherently uncertain The colour could not be a sign and could potentially lead to abuse and anti-competitive effects. Moreover, the mark was for a colour combination but would fall foul of Heidelberger since it was not spatially delimited.
The judge disagreed with Nestlé’s arguments. He stated that a mark is capable of satisfying Article 2 provided it is defined properly in words and with a Pantone code, even though that colour can ‘obviously be used in an infinite variety of ways’. The law in Libertel and in Heidelberger was robust and clear. The judge held that Cadbury's registration, was capable of being a sign under Article 2, and on the evidence had acquired distinctiveness for chocolate. He did however narrow the specification of goods, by adding the word ‘milk’ in front of ‘chocolate’, which given that the Cadbury’s product is not chocolate because it does not contain 25 per cent cocoa solids, but can be called ‘milk chocolate’ in the UK (and IE) by special dispensation under Directive 2000/36/EC (Annex 1 para A sub-para (4)(d)) seems entirely right.
 

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