Thursday 11 December 2008

Longer copyright for sound recordings

So the government has swallowed the line about extending copyright for sound recordings, and the minister has announced this morning that they are thinking about 70 years - at least not as long as the 95 years that the European Commission has fallen for.

No explanation is offered for this most flagrant u-turn, not yet anyway: and it seems as if one of the few sensible things in the Gowers review is going to be ignored. Well, that's politics.

As I have noted before, somewhere, if the extended rights come to the performers my objections to the extension of protection are diluted a bit - but there is no indication about how that is to be dealt with, and copyright in sound recordings usually belongs to the record company. Contracts might contain something to make the rights pass to the artist if the recording is deleted (but just as with print-on-demand, knowing when a recording is no longer available is now impossible) but that's not enough to rely on when extending these rights. Far better, I would have thought, to create some sort of moral right to allow performers to control their work whoever owns the copyrigt - which is largely already provided for in part II of the Copyright, Designs and Patents Act as amended: can't we increase the period of protection for rights in performances instead?

Let us hope this is not the dead hand of copyright being placed on these copyright works on behalf of the record companies (who largely don't need it anyway), and that instead it's an enlivening hand that will keep performers performing and recording instead of having to earn their livings as bricklayers or petrol-pump attendants ...

Cipriani: using your own name

Hotel Cipriani SRL have, I find, been in the law reports before, in fact just last month. The day before yesterday Mr Justice Arnold gave judgment in a major trade mark infringement and passing off case involving the same company, Hotel Cipriani SRL and others v Cipriani (Grosvenor Street) Ltd and others [2008] EWHC 3032 (Ch), not yet on Bailii, although there are state aid cases and other exciting reports of Cipriani litigation). It's an old story: family sets up business, sells out to another (usually larger, multinational, corporate) party with little sense of history and none of humour, then another member of the family sets up another business (perhaps a long way away) under the family name, and gets sued by the humourless multinational.

Humour and trade mark ownership, of course, rarely go together. I often tell my audiences on training courses that trade mark owners must suspend their senses of humour: if you have a well-known trade mark (and I don't mean that in the specialised Paris Convention sense, necessarily, especially because no-one really knows what that means anyway) you have to wield a big stick at every pizza restaurant, night club, escort agency, one-man building firm or teenage computer programmer who threatens the distinguishing function or (which is sometimes different) value of your trade mark. So I am not criticising the Italian company (actually, that should be plural as there were three claimants in the action, according to the IPKat), rather the mindset that places the protection of every little bit of intellectual property above more conventional forms of competition.

Well, perhaps that isn't happening here, but it's not a case where I feel instinctively that the IP owner was in the right. Maybe that's because I was acting a couple of years ago in a similar dispute - also in the hospitality industry, as we should now call it - and my client was on the receiving end. There, the nasty corporate had a Community trade mark but no discernible intention of trading in the Community. They were carving out an exclusive position that they might never wish to exploit: and meanwhile there were businesses in the Community with legitimate reasons to use the same name - indeed, like the Cipriani case, there was a "common origin" issue.

In the present case, the defendant's restaurant was called Cipriani London and usually referred to (there being little need most of the time to identify the city) as just Cipriani (as its website does this morning, though probably not for long). The claimants were companies in the Orient Express group. Both the Venice and the London establishments were set up by members of the family, though the Venice hotel had been sold on some time ago (on terms that don't seem to have protected the family's rights to carry on using its name, though perhaps that was just not on offer at the time) and the London restaurant is owned by a group of companies of which the most important was Cipriani (Grosvenor Street) Limited.

The defendants conceded that their activities were prima facie infringements, but that they could use their own name (section 11 of the Trade Marks Act 1994). The judge held that there was an infringement as the distinctive element in the defendant's sign was the name Cipriani, and then went on to say that the "own name" defence was not available because Cipriani was the company's trading name, not its own name. This is difficult to grasp without the full judgment: would the answer have been different had the company been Cipriani Limited? Surely if Cipriani is the distinctive part of the trading style ("London" adding nothing), it is also the distinctive part of the company name, "(Grosvenor Street)" adding nothing (though the address is Davies Street, incidentally) and "Limited" not making a ha'porth of difference. Had the defence applied, the judge didn't think it would extend to the trading name anyway.

The claimants also won on passing-off, as they had customers here when the restaurant opened and had foreign customers who booked direct (although i don't understand quite what difference that makes). They had a substantial reputation her, and more importantly they had valuable goodwill too.

There is a lot about this case that will require careful thought when the judgment becomes publicly available. It is more than an example of David losing out to Goliath, though it does not seem to be one of those cases of over-reaching intellectual property rights that trouble me so often. Perhaps what my reaction comes down to is an instinctive sense that customers will patronise all the four establishments concerned on the strength of the Cipriani name, and the connection between the family and the Orient Express businesses will never go away completely. The parties, like parties to similar disputes including that of my former client, should learn to live with it: no-one needs a monopoly over a mere name.

The Court of Appeal [2010] EWCA Civ 110 upheld Arnold J’s judgment (24 February 2010), though Lloyd LJ expressed some reservations about the ‘direct bookings’ test, which he thought might in the Internet age be outmoded although the case before him did not provide an opportunity to deal with the matter.

Three cyclones or two?

I thought cyclones were dangerous things, until Sir James Dyson (as he now is) tamed them and applied them to the tricky business of extracting foreign bodies from carpets. Perhaps that opened up a new set of dangers: one friend needed a replacement power cable for his Dyson vacuum cleaner, and was horrified at the price and the fact that the spare part was an integrated assembly comprising much more than just the cable.

Dyson (the company as well as the man) have been generous to anyone presenting courses on intellectual property. The Hoover patent infringement litigation is based on a relatively easy-to-understand patent, the infringement is fairly clear-cut, and the issue of inventiveness demonstrates how there is nearly always some scope for challenging a patent. The designs case against Qualtex rehearses all those old points about spare parts, and there is trade mark litigation to which an audience of lay people can relate. Now we have an instance of the boot being on the other foot: Dyson is challenging the patentability of Samsung's "triple cyclone" design. Dyson's counsel, Piers Acland, told the court that Samsung's claims were "largely verbiage" (a criticism that could perhaps be levelled against nearly all patent claims) and (deconstructing the report in The Daily Telegraph, which talks rather more about "trademarks" than one would normally expect in a story about a patent case) argued that adding a third cyclone to the two in the Dyson patent did not amount to an inventive step.

It sounds as if the contribution to the art is at best small. If two cyclones do the job, why not three? This might be another illustration of the unhealthy and anticompetitive trend of large businesses who can afford the bills collecting more and more marginal, borderline invalid, pieces of intellectual property to extend their competitive advantage. Thank goodness that there is a comparatively resourceful challenger in this case.

Perhaps I'll have a nice new case on obviousness to refer to when next year's training course season comes around.

Marks & Spencer - of all people - test the law on Google keywords

Woolworth's and Marks & Spencer are connected in my mind by virtue of the fact that both were in Lynn Street when I was a child. That was before Lynn Street was demolished, and I well remember sitting in a pub one lunchtime in my student days with an old schoolfriend while the buildings around us were flattened. Now Woolworth's is undergoing a corporate demolition, while Marks & Spencer finds itself on the wrong end of a lawsuit arising from its use of Google keywords.

Selling keywords that might be someone's registered trade mark always struck me as a strange and dangerous thing to do. In fact selling exclusive keywords to anyone is a bit dodgy. But there seems to be a tendency for the rules on intellectual property to be rewritten by Internet businesses (and others too) with little regard for the fact that the law has developed, imperfectly to be sure, over many decades.

So M&S bid for Google keywords including Interflora and Inter-Flora. So too (according to press reports - I have a cutting from the Telegraph here) did Flowers Direct Online. Interflora says this is a trade mark infringement. Marks & Spencer - who went to the House of Lords a few years ago arguing that they could copy press cuttings without paying the Newspaper Licensing Agency, remember - thinks otherwise. Perhaps the reinvention of one of the oldest names in British retailing is complete: they are at the cutting edge of intellectual property law.

Am I showing my age and conservatism by thinking that this is as egregious a form of trade mark infringement as any other? It serves to divert customers from the business they were looking for - and while it does not mislead customers into believing that they are dealing with the trade mark owner (though there must be some scope for confusion, especially with the amount of consolidation going on at the moment, and with the tendency for businesses to develop separate on-line brands), and it does so using the trade mark owner's reputation.

The monopolisation of generic or descriptive keywords is another worrying and highly anti-competitive development. If one online retailer grabs the word or words most apt to describe what it sells, it makes it harder for others to sell those goods ... But that is a story for another day.

Monday 24 November 2008

A likelihood of confusion

Whenever journalists write about intellectual property, there is a strong likelihood of confusion. In fact, it's almost a certainty. Last weekend's FT contains a classic example: the headline tells us that companies are anxious to protect their copyright in these straitened times, while the article is mostly about patents and trademarks, though it quotes a trade mark practitioner talking about designs, too. A perfect example of the genre, and a reminder to me that nothing I read in the newspapers is ever right.

Saturday 22 November 2008

European Community and European Union

Nothing irritates me more than sloppy use of language, especially when it's lawyers who are being sloppy.  Whenever I hear mention of, or read about, European Union competition law, or trade marks, or directives, or regulations, or whatever, I cringe.

Some people seem to think that the European Community ceased to exist when the Union was created.  Far from it.  The Community (the merged Community, that is, previously the European Economic Community, the European Coal and Steel Community, and the European Atomic Energy Community) is the organisation with the power in the competition and single market areas (as well as lots of others).  It is one pillar of the Union, along with the Common Foreign and Security Policy pillar and the Police and Judicial Co-operation in Criminal Matters pillar: when (if) the Lisbon Treaty comes into operation the three pillars will be subsumed into the Union, which will save a lot of time and effort talking about cumbersome titles - but until then it is utterly wrong to talk about European Union trade marks, competition law and so on.  Especially for lawyers to do so!

As for the so-called European Court of Justice (or to give it its proper name the Court of Justice of the European Communities - it seems appropriate that it should retain the plural form of the last word of its name given that it still has jurisdiction over matters arising under the three original treaties), don't get me started - and I am not a non-EU European.  I wonder how the Swiss, or Norwegians, or other Europeans, feel about the instition adopting a short name that impliedly givves it jurisdiction over them?

Wednesday 19 November 2008

Is your trade mark going to work?

Two cautionary tales are very much in my mind at the moment. They illustrate the dangers of filing trade mark applications without doing enough homework first - indeed, they demonstrate that the process of obtaining a trade mark registration is not widely understood and does benefit from professional advice.

First, I am helping a small business client who filed a Community trade mark application themselves without carrying out any research into what others had already registered, and now faces three oppositions. The oppositions are, I think, rather optimistic, but in a way that hardly matters: if the opponents stand their ground, my client will be liable for costs if they lose, and are likely to be unwilling to take that risk. To say they were being bullied would perhaps be unduly pejorative, and of course I know nothing of the opponents' motives, but the fact is that the client might well feel bullied, which is just as bad.

Second, I have been reminded of a slightly odd experience many years ago, when I received a phone call from my firm's PI insurers. They explained that another of their insured firms was facing a negligence claim arising out of a trade mark application that had gone wrong. The insurers, unsurprisingly, knew little about trade mark practice and came up with the idea of calling someone else they insured who did practise trade mark law. I suspect that the firm facing the claim had mistakenly thought that, as if was only a matter of filling in a form and sending it off the the Registry, a trade mark application was well within their competence.

An applicant is not required to carry out a clearance search before filing a trade mark application, not in the UK or the European Community system. If the trade mark is as yet unused, and time would permit it to be changed if conflicts were detected, the most effective way to proceed (certainly for a small business for whom costs were important) would often be to file the application and let the Registry perform the clearance search. But commonly the problem is that the business is already using what it wants to register, and having to change it would be an expensive, perhaps even a fatal, setback.

My reply to the insurance company was that there was nothing inherently wrong with what their insured had done, but that the terms of their "client care" letter (how I dislike that infantile term which the Law Society has foisted upon us) would be crucial here. Had they explained to the client how important a clearance search would be, and the possible consequences of going ahead without? If the client had come to them too late, as is so often the case, had they covered their backs? I know nothing more about this case, but I have a suspicion that the firm probably hadn't done this: but the more important lesson to learn from this is not to dabble.

I think I might spend some time this morning reviewing my standard terms for trade mark work ...

Trade mark registration scams

Sending documents that are not invoices, but look very much like them, demanding payment for vaguely-described services, is nothing new. When I worked for the Confederation of British Industry in the mid-eighties, there were several bogus directory publishers (some who even produced a spurious directory from time to time) sending out these things. Now, the technique has been transferred to the world of trade marks.

A client has just asked me about a document - expressly calling itself a "solicitation" and not a request for payment - from an outfit called IBIP with an address in South Carolina. (The company quotes a phone/fax number, which in this day and age seems to me to speak volumes about the sort of set-up it must be.) They trawl trade mark office journals, and contact applicants (not representatives) offering an entry in some sort of database. The solicitation, and the terms and conditions, are written in terrible English which helps to make far from clear what it is all about.

The charge for whatever it is that is being sold is over $1500: these parasites are making more than professional representatives who actually bring something useful to the process of trade mark registration. I tell my clients that they need pay nothing to anyone except my firm, and they should ignore any demands for payment from any other party: but presumably people are still being caught out otherwise these scams would soon evaporate.

Thursday 13 November 2008

INTA midyear leadership meeting

INTA's midyear meeting is a new experience for me: only 1100 delegates (or "attendees", in US English - surely it should be "attenders", if it has to be "attend-" anything? I was attending the meeting, not the other way round). So too is sunshine, at least these past couple of years, and the Country Club lifestyle is certainly alien to me.

The meeting itself has been good. I have been attending the educational sessions, most unusually for me, and while one yesterday was poorly staged (speakers not addressing microphones, a rather hard-to-follow discussion) the second, on trade marks and human rights, was fascinating. Actually, it could better have been entitled "trade marks as property", and it showed me why Bill Patry referred to the property metaphor when I heard him lecturing about copyright last year - that IP is property is not settled in US law.

Wednesday 29 October 2008

Objections to Company names

There has not, until recently, been much anyone could do about companies being incorporated under names that were similar to existing trading names, although in one recent case the High Court adopted a novel approach and allowed a claimant to pass a special resolution on behalf of the shareholders of the defendant company to change its name. The Registrar of Companies would refuse registration of a company whose name was the same as one already on the Register, but for the purposes of company law it was enough just to avoid almost identical names. Rights in trade marks – registered or unregistered – counted for nothing.
Since 1 October, there has been a right to object to company names that include trade marks or similar marks, thanks to section 69 of the Companies Act 2006 which came into force on that day. (The old provisions are also retained.) Section 70 allows the Secretary of State to appoint company names adjudicators, and these individuals form the Company Names Tribunal. The rules governing adjudications are set out in SI 2008/1738.

Company name as trade mark infringement or passing-off

It is fairly well-established in English law that registration of a company is likely to amount to infringement of a trade mark that is identical with or similar to the company name, or to passing-off. In Glaxo v GlaxoWellcome [1996] F.S.R. 388 a squatter who registered the portmanteau name in anticipation of a merger between the two pharmaceutical companies was ordered to surrender it. Direct Line v Direct Line Estate Agency [1997] F.S.R. 374 was similar. Likewise registering a domain name that is the same as or similar to a registered or unregistered trade mark, as in Global Project Management v Citigroup [2006] F.S.R. 721 where Park J granted summary judgment (on Citigroup’s counterclaim) even though the claimant had no history of cybersquatting. Often, cases involving company or domain names have been decided on the basis that the names are “instruments of fraud” where the intention is to sell them at inflated prices to the businesses who have the goodwill in the name. This was the case in British Telecommunications and others v One In A Million and others [1999] F.S.R. 1.
The Court of Justice of the European Communities took a rather different view in Case C-17/06, Céline SARL v Céline SA in which it held that merely adopting a company name might not amount to infringement, though this is not necessarily at odds with the English courts’ approach, which does require something (even if only the “instruments of fraud” element) over and above the mere act of registration. There was no evidence in the Céline case that this element was present.
It remains the fact, however, that it is often easier and cheaper to purchase the company name or domain name from the squatter than to try to use trademark rights to secure it. The “ransom” amount will commonly be set at a level that takes into account the cost of litigation or other dispute resolution.

The right to object

The new law allows objections to be made where a company name is registered that is:

  • the same as a name in which the objector has goodwill; or

  • sufficiently similar to such name that its use within the UK would be likely to mislead by suggesting a connection between the company and the objector.
Objections are made to the Tribunal. If the complaint is successful then the company will be forced to change its name.
The first limb seems to set down a similar test to that already applied by the Registrar of Companies, so small differences will probably suffice. The second limb protects names with goodwill, regardless of whether there is a registered trade mark. However, one shortcoming of the new legislation is that there is no remedy (as there is in trade mark law) where there is no likelihood of confusion but the mark has a reputation and the second user takes unfair advantage of that reputation or is otherwise detrimental to it. On the other hand, the adjudicator will be able to consider a connection suggested by a similarity in names such as an implied parent-subsidiary relationship.

Overcoming objections

A number of defences are available, amounting to presumptions that the name was adopted legitimately:

  • the name was registered before the objector began the activities on which it now relies to show goodwill;

  • the company is operating under the name, or is proposing to do so, and has incurred substantial start-up costs or was formerly operating under the name and is now dormant; or

  • the name was registered in the ordinary course of a company formation business and the company is available for sale to the objector on the standard terms of that business.
Unless the respondent is able to show one of these three defences applies, the objection will be upheld unless the name was adopted in good faith, or the interests of the objector are not adversely affected to any significant extent. But even if a defence is available, the objection will be upheld if it can be shown that the name was registered to try to obtain money from the objector or to prevent the objector registering it.

The adjudicator’s powers

If an objection is upheld, the adjudicator may set a deadline for the company to change its name to one that is not objectionable. If the deadline is not met, the adjudicator may determine a new name for the company – another significant change from the old system, where the registrar could only direct a change.
There is no way of obtaining damages under the new procedure. An action for trade mark infringement or passing-off would be necessary if the objector wanted to make a financial claim.


The rules are intended to make sure that it is not unduly burdensome (in time or money) to make an objection. The Tribunal’s office is at the Intellectual Property Office, which produces the forms needed to file an objection. The applicant has to pay £400 on filing an objection: a respondent has to pay £150 on filing a counterstatement, which is highly unusual. The costs look small, but if there are numerous names to which objection is taken they could quickly mount up.
Applications and defences must be filed using the prescribed forms, and must include a concise statement of the grounds on which the application is made or opposed. Once an objection has been received, the adjudicator must send it to the primary respondent specifying the date by which a defence must be filed. The defence itself must also contain a concise statement of grounds. Either party may request an oral hearing, which will be public. The Adjudicator has wide powers to direct the form and content of the proceedings, and to dispense with a hearing. He may strike out applications and defences that he considers to be vexatious, to have no reasonable prospect of success or to be otherwise misconceived. He may also call a hearing on 14 days’ notice.
Evidence may be filed by witness statement, affidavit, statutory declaration or any other form that would be admissible as evidence in proceedings before the court, subject always to the Adjudicator’s directions.
The adjudicator may award such costs as he considers reasonable to any party at any stage in the proceedings.
Once a decision is made, the adjudicator sends written notice to the parties setting out the reasons. An appeal lies to the High Court, and the time limit for notice of appeal will be included in the Adjudicator’s decision.

Tuesday 28 October 2008

Enlarged board of Appeal to consider software patents

Following my post the other day about the recent Court of Appeal judgmentin Symbian, the IPKat reports a reference to the Enlarged Board of Appeal of the European Patent Office of the vexed question of software patents

Sunday 26 October 2008

Microsoft in China

The Telegraph reports yesterday (and a couple of days ago too, here) that Microsoft has been annoying Chinese users of counterfeit programs by causing their computers' screens to go black and display a message "admonishing" them. In response, 90 per cent of respondents in a survey by Chinese web portal said they would not buy Microsoft products again.

The emptiness of that threat was reduced somewhat by calls to develop Chinese software. It might take a while to overcome the head start that Microsoft have gained, but I dare say that China is one place where the resources to do that are to be found.

But why bother when there are acceptable alternatives to Microsoft everywhere, available for free (and therefore proof against piracy)? If Windows is really not acceptable to computer users in China, why don't they try Linux - and if they don't like it, adapt it until they do?

The problem stems from the perception that Microsoft charges too much for its products - perhaps taking advantage of the widespread use of programs like Word which use proprietary file formats and do not readily handle files created in other programs (or vice versa). The only major drawback with openOffice, as far as I have been able to discover, is that it does odd things to Word files. So when Microsoft stresses the importance of "respect for intellectual property rights", we might reasonably ask about its commitment to open file formats.

Saturday 25 October 2008

INTA's TM Topics email discussion group

I have been following the INTA listserv for many years now, occasionally contributing to discussions on the rare (and increasingly so) occasions when they did not concern purely US matters, recommending friends in other countries and a couple of times asking for recommendations when I needed an overseas associate. It is a useful group to belong to and open to non-INTA members too. I commend it to all of you who practise in the field, especially because it would be good to have some more participation from here.
The need for more input from Europe is highlighted by a recently thread in the group. It started discussing issues arising in the US when applications were based on what the Americans (sic) will refer to as European applications. It became clear that it was specifications in CTM applications that were the cause of the problem.
The originator of the thread stated that a European associate had asserted that it would be malpractice to file for anything less than all the goods or services in a class, by reference to the Nice Classification headings. I stuck my neck out and said that, on the contrary, I thought it might be malpractice to do just that.
The substantive points merit deeper consideration, and it will be interesting to hear others' views, but I'll be starting that discussion elsewhere.

Thursday 23 October 2008

Drafting trade mark specifications

The specification of goods or services for which a trade mark is registered is supposed to reflect what the mark is being used for. An application will be invalid, or partially invalid, if it is made in bad faith, and that can cover the situation where the specification (nowadays called a list) of goods or services is over-ambitious.

Moreover, a UK application embodies a declaration to the effect that the mark is being used on everything in the specification, or the applicant intends so to use it. Signing the application form is not something to do lightly.

That said, it is hard to make a false declaration. Goods or services can be described at many different levels of generality, and the Nice Classification is just the highest level of generality. An applicant could truthfully say that the trade mark would be used on clothing if he made teeshirts, although that use would be most unlikely to support the registration. The Minerva case illustrates one consequence of over-ambitious claiming.

It seems that the practice of kitchen-sink drafting (or actually non-drafting) is becoming more common. If so, it is in my opinion an abdication by lawyers of their responsibilities to their clients. Getting the widest possible protection might seem clever, and saving costs by not crafting the specification might appeal to the client, but it might merely defer the expense which could end up being much greater.

It has been suggested to me that this is a result of avaricious lawyers trying to create invalidity work for themselves. it seems more likely that it is a result of the box-ticking approach which is rife in so many areas of our professional lives.

Tuesday 21 October 2008

Symbian: Software patents come to the UK?

“IP chambers 8 New Square has scored a Court of Appeal win for technology company Symbian, in a decision that could see software patents allowed in the UK for the first time.” So The Lawyer (a paper for which I will always have a soft spot, as it featured me on its first ever front page) tells us, anyway. It will, I think, be a sad day if that happens, for intellectual property law (already seeing unwarranted extensions into areas that should be free from private monopolies) and for society as a whole. But I think it is still some way off, and with luck will never arrive. And in fact, the judgment has actually reinforced what was already happening - no broadening of the availability of patents for software, indeed a rejection of the EPO's more generous approach. Software patents were available, within tight constraints, and they remain available on the same terms. Perhaps we should not look to The Lawyer for careful legal analysis.
Back in June, I went to the inaugural meeting of the Institute of Brand and Innovation Law at the University of London, where we were treated to a fascinating (though in essence private) discussion between two learned judges and one learned former judge. It struck me at the time that it was important, but reading Symbian v Comptroller-General of Patents [2008] EWCA Civ 1066 I begin to understand why.

In that case, the Court of Appeal decided not to follow recent authorities from the European Patent Office but to stay with the four-part test it had formulated in Aerotel v Macrossan. Not that it would never follow the EPO rather than domestic authorities: that is what it did in Actavis UK Ltd v Merck & Co Inc [2008] EWCA Civ 444 earlier this year, but it had reservations about following recent case law in the software patents field.

In Aerotel, the Court considered the previous authorities from both the UK and the EPO and Jacob LJ formulated this four-stage test:

  • First, properly construe the claim. Decide what the claimed monopoly is before going on to ask whether it is excluded.

  • Second, identify the actual contribution. What has the inventor added to human knowledge? Consider factors such as the problem which the invention claims to have solved, how the invention works and what are its advantages.

  • Third, ask whether the invention falls solely within the excluded subject matter. This step deals with the "as such" qualification.

  • Finally, ascertain whether the actual or alleged contribution is technical in nature. This step might not be necessary, as it could have been dealt with in step 3, but it was included to ensure consistency between Macrossan and earlier Court of Appeal judgments.

Symbian’s patent application was for a method of accessing data in a dynamic link library, or DLL, in a computer. It claimed to overcome problems frequently encountered with DLLs, which store functions that are common to a number of programs, but are vulnerable to malfunctions when new functionality is added. The invention claimed to overcome this by splitting the DLL into two parts, one of which remained fixed while the other – the “extension” part – allowed further functionality to be added. The extension functions would be accessed not through direct links to the applications that needed to use them, but via another library or interface.

The examiner objected that the claims related to a program for a computer, and that they could not be saved by amendment, and the Hearing Officer agreed. Symbian appealed, and Patten J held that the Patent Office had taken too narrow a view of the technical effect of the invention. The Comptroller-General of Patents appealed.

The judgment of the Court of Appeal was given by Lord Neuberger (taking time off from his day job in the House of Lords). Why? He had been the chairman of that meeting of the Institute of Brand and Innovation Law, where Jacob LJ had got into a long discussion about how the Court of Appeal should deal with a conflict between a decision of the Boards of Appeal of the European Patent Office and one of the House of Lords: his view was that the CA should follow the EPO because if the case went to the HL they would just reverse the conflicting judgment and follow the EPO anyway, so his solution was cheaper. According to the notes I made of the meeting, “Sir Hugh Laddie was asking him provocative questions and the chairman of the meeting, Lord Neuberger, was looking bemused. In the middle of this rather rarefied debate, the chap sitting in front of me, a solicitor from [name of well-known law firm redacted], wrote a note to the girl next to him saying he preferred the Solicitors Wine Society.”

In the present case, it was not a matter of conflicting authorities in the EPO and House of Lords, but between the EPO and the Court of Appeal. The Court of Appeal’s last word on the subject was Aerotel but the Boards of Appeal at the EPO didn’t like it. In Duns Licensing a Technical Board of Appeal held that it was inherent in the concept of an invention that the subject matter had technical character, and that a contribution could be patentable even if it were related to the categories of matter listed in Article 52(2). Moreover, the Board of Appeal took the opportunity to criticise Aerotel as “not consistent with a good-faith interpretation of the EPC.” Strong stuff.

Lord Neuberger thought that the third and fourth stages of the Aerotel test taken together gave the same result as that in Duns Licensing, namely asking whether the contribution cannot be regarded as technical: but then went on to consider a bunch of more recent EPO authorities (including Pension Benefit (T931/95), Hitachi (T258/03) and Microsoft (T424/03)), which the court concluded were inconsistent with other decisions of the Boards of Appeal and with the current approach of the English courts (found, of course, in Aerotel).

So the question for the Court of Appeal was, should it depart from its own previous decisions and follow the EPO case law, or was it bound by its own earlier decisions? In Actavis v Merck Jacob LJ said:

... we hold that there ought to be, and is, a specialist and very limited exception to the rule in Young v The Bristol Aeroplane Company [1944] KB 718 . Spelling it out it is that this court is free but not bound to depart from the ratio decidendi of its own earlier decision if it is satisfied that the EPO Boards of Appeal have formed a settled view of European Patent law which is inconsistent with that earlier decision. Generally this court will follow such a settled view.

So Jacob LJ had left the door open a couple of inches. The Court was able to say that this was not a case in which it would be appropriate to depart from its previous decision, as there was no settled view of the Boards of Appeal. "The fact that there are now three such decisions of the Board subsequent to Aerotel which appear to support the approach disapproved in Aerotel might suggest that this court should now adopt that approach. We do not agree", said Lord Neuberger, going on:

First, there is no decision of the Enlarged Board. Not only does that mean that the view of the Board is not as authoritative as it could be; it also suggests that the Board does not consider that the time has arrived for the point to be conclusively determined. Secondly, the approaches in the four decisions since Aerotel are not identical: in particular, one of them appears more consistent with the view preferred in Aerotel. Thirdly, we are concerned that, particularly if the passage quoted from File search method/Fujitsu represents the Board's view, the computer program exclusion may have lost all meaning. Fourthly, it is not as if the English courts are alone in their concern about the approach of the Board, as the observations from the German judiciary quoted in para 30, and referred to in paras [129] to [131] of Aerotel, demonstrate. Fifthly, if this court is seen to depart too readily from its previous, carefully considered, approach, it would risk throwing the law into disarray.

As far as the Symbian application was concerned, an application of the Aerotel approach revealed that the invention did make a technical contribution and was therefore not excluded. The instructions of the invention solved a technical problem lying within the computer itself, and the benefits would be available to other devices running the program.

We must still wait for a case in which Jacob LJ has the opportunity to implement his proposed cost-saving approach and decline to follow the House of Lords. Will Lord neuberger take time out again to keep an eye on him when that opportunity arises?

Forthcoming courses

Trade marks, for Quorum Training, on 6 November, my last appearance there before the Quorum operation is swallowed up in CLT and admin moves to Sutton Coldfield.

Trade marks for shopping centres

Not new case - the judgment was handed down in July - but as I have just been looking at it, I thought a comment on Land Securities and others v Registrar of Trade Marks would be worthwhile. The judge (Floyd J) concludes that there is no reason why, if a trade mark can be registered for retail services, shopping centres cannot be allowed to build their own brands.

On the basis of the opinion of the Court of Justice of the European Communities (commonly referred to as the European Court of Justice, which assumes that the European Communities, and the Union, is co-extensive with Europe) in Case C-418/02 Praktiker Bau- und Heimwerkermärkte AG [2005] ECR I-5873 which established that trade marks should be capable of being registered, in class 35, for "retail services". Shopping centres have brands and rely on their goodwill to attract customers - which is the reason retailers take places in the shopping centres to start with.

Shopping, the judge observed, is a major leisure activity. A day out at a shopping centre is akin, I suppose, to a day out at some other attraction. But is that reason enough for another extension of trade mark protection? The law in ths area has always had to adapt to new usages of trade marks, of course, and it was the CJEC that drew the line that this case observed. But little by little the English language is being enclosed by commercial interests, and so too are graphic designs - often pretty banal ones. It just seems too easy for businesses to get trade marks these days.

Saturday 4 October 2008

Courses for Quorum Training

I have also been presenting courses for Quorum Training for many years - and have had some great times, met many wonderful people, and learnt a lot myself (though I hope the delegates have learnt much more). The next course is Exploiting IP And Licensing Arrangements on 24 October - a new course this year which has been fun and interesting to put together.

Forthcoming CLT courses

There's not much point in maintaining (however erratically) this blog and not using it to tell people about courses I am presenting. Sometimes, this might even bring in enough additional customers to make sure that the course runs - although that is not the case with my presentations on designs, trade marks and copyright for CLT in London the week after next. They are going ahead - though I'm sure there will be room for more in the audience. Not sure in what order they will appear, but I am sure that will be sorted out by the time they take place.

Tuesday 12 August 2008

Draconian increases proposed in copyright penalties

There are several criminal offences in the copyright world, dating back to the time when piracy as we understand the term nowadays started to become a significant problem, in the early 80s. The Copyright, Designs and Patents Act 1988 has had its collection of offences added to with subsequent amendments. Now the list comprises:
  • s.107 – criminal liability for making or dealing with infringing articles etc;
  • s.198 – criminal liability for making, dealing with or using illicit recordings;
  • s.296ZB – devices and services designed to circumvent technological measures;
  • s.297 – offence of fraudulently receiving programmes;
  • s.297A – Unauthorised decoders.
Gowers recommended that the penalties for online and other activities be brought into line, which meant increasing the penalties for online infringements. The fines would only apply to commercial-scale activities. There would be a single maximum penalty on summary conviction of £50,000 for all the offences under the Act, although the consultation paper explores several different ways to implement this. At present, the statutory maximum fine is a mere £5,000, which is generally considered to be an inadequate deterrent where large illegal profits can be made.

Swifter UK trade mark applications

When the then newly-renamed (though it still hasn't really been renames) UK Intellectual Property Office responded to the Gowers Review's recommendation about speeding up trade mark applications by allowing applicants to pay a premium and have their applications examined in 10 days, many practitioners failed to see the point. All that would do was get you to the fixed three-month opposition period a little sooner than would otherwise be the case.

Now the Trade Marks Rules 2008 (see also the guidance notes from the IPO, which appear to have been written by someone who doesn't understand about sentences) have addressed that point. The opposition period will be reduced to two months from 1 October (for applications filed after that date, presumably) so the process of applying for a trade mark will become significantly faster, and paying the premium for quick examination makes more sense. The IPO reckons that 90 per cent of applications are unopposed anyway, and even for those that are three months is an long time: but just in case, a would-be opponent will be able to request an extra month, free of charge, if it can't make up its mind whether to oppose or not. This should also give the UK IPO an edge when competing for business with OHIM.

There are other changes too, but having taken a month from when the Rules were laid before Parliament to report this much I think I had better deal with the rest later.

Monday 11 August 2008

Some differences between the UDRP and Nominet’s dispute resolution policy

Domain name dispute resolution policies set out to do the same thing, and it would be reasonable to expect that they would achieve this in the same way. The Uniform Domain Name Dispute Resolution Policy, approved by ICANN on 24 October 1999, applies to a number of generic top-level domains (including, most importantly, com) and some of the CC top level domains. It does not include the .uk TLD, and Nominet, the registry for .uk domain names, has its own DRP – and there are differences between the two.

The purpose of this posting is to look at the circumstances that can give rise to a complaint under these two systems. If I ever have a good reason, I will look at differences in the procedures and perhaps compare other dispute resolution policies.

Under the UDRP, a complainant may assert that a domain name is "identical or confusingly similar" to a trade mark or service mark in which the complainant has rights. (Note that the distinction between trade marks and service marks was abolished in UK trade mark law in 1994, and both species of mark are now called simply trade marks.) It doesn't matter where the trade mark is registered, or indeed whether it is registered at all (if the law of the country concerned recognises unregistered trade marks). "Confusingly similar" is an expression known to US trade marks law, but in the UK we speak of "a likelihood of confusion". This is not the place to consider whether there is a difference …

Nominet's policy asks whether "the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name". Interestingly, this approaches the matter from the other direction, though that is unlikely to make a substantive difference to the way it works. That capitalised word "Rights" is defined to mean "rights enforceable by the Complainant, whether under English law or otherwise, and may include rights in descriptive terms which have acquired a secondary meaning." It therefore embraces common law rights as well as registered trade marks – indeed, it reads as if the drafter has taken great care to ensure that common law rights are included.

The UDRP then addresses the rights the registrant of the domain name might have in it. A complaint will be entertained if the registrant has no rights or legitimate interests in respect of the domain name, and the domain name has been registered and is being used in bad faith. Rights and legitimate interests in a name might well arise only after a period of use, so provided that the use itself cannot be impugned the registrant has an opportunity to create for itself a right or legitimate interest in the domain name.

Nominet applies only a single-stage test at this stage, asking whether the registration is, in the hands of the registrant, an Abusive Registration. The definitions clause provides us with:

Abusive Registration means a Domain Name which either:

i. was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; or

ii. has been used in a manner which has taken unfair advantage of or has been unfairly detrimental to the Complainant's Rights …

That is a rather different test from that applied under the UDRP, although it does seem to cover very similar ground. There is no express "good faith" criterion, however, which suggests that the Nominet policy is more friendly to trade mark owners. The language of these paragraphs owes a great deal to provisions of the Trade Marks Act 1994 (and therefore in turn to the EC Directive on the approximation of trade mark law): unfair advantage and detriment (though without the qualifying "unfair") are touchstones for dilution of trade mark rights.

That is not the end of the story. Both documents then proceed to discuss the evidence that might support a claim. In the case of the UDRP, of course, this is concerned with evidence of registration and use in bad faith (there being no real need for detail about rights and legitimate interests", while Nominet are concerned with what will support a claim that a registration is abusive. Setting them out side by side is instructive …




b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

3. Evidence of Abusive Registration

a. A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is as follows:


i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:


(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

A. for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;


(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

B. as a blocking registration against a name or mark in which the Complainant has Rights; or


(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

C. for the purpose of unfairly disrupting the business of the Complainant;


(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

ii. Circumstances indicating that the Respondent is using or threatening to use the Domain Name in a way which has confused or is likely to confuse people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;


iii. The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;


iv. It is independently verified that the Respondent has given false contact details to us; or


v. The Domain Name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant:

A. has been using the Domain Name registration exclusively; and

B. paid for the registration and/or renewal of the Domain Name registration.


b. Failure on the Respondent's part to use the Domain Name for the purposes of email or a web site is not in itself evidence that the Domain Name is an Abusive Registration.


c. There shall be a presumption of Abusive Registration if the Complainant proves that the Respondent has been found to have made an Abusive Registration in three (3) or more DRS cases in the two (2) years before the Complaint was filed. This presumption can be rebutted (see paragraphs 4(a)(iv) and 4 (c)).

The numbers in the left-hand column are for convenience only. Although the lists are constructed rather differently, there are striking (and one presumably intentional) similarities between them.

The paragraphs in row 1 both make clear that these are non-exhaustive lists. Row 2 introduces three paragraphs in the Nominet policy, the equivalents to which in the UDRP are not treated in quite the same way.

Rows 3, 4, 5 and 6 contain closely-matching pairs of provisions: there is little if any difference between the two policies.

The provisions in rows 7 to 9 are not reflected in the UDRP.

Both policies then set out some exceptions or defences. Again, it is instructive to set them out side-by-side:




c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint.

4. How the Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration


When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

a. A non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration is as follows:


(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

i. Before being aware of the Complainant's cause for complaint (not necessarily the 'complaint' under the DRS), the Respondent has:


A. used or made demonstrable preparations to use the Domain Name or a domain name which is similar to the Domain Name in connection with a genuine offering of goods or services;


(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

B. been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name;


(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

C. made legitimate non-commercial or fair use of the Domain Name; or


ii. The Domain Name is generic or descriptive and the Respondent is making fair use of it;


iii. In relation to paragraph 3(a)(v); that the Respondent's holding of the Domain Name is consistent with an express term of a written agreement entered into by the Parties; or


iv. In relation to paragraphs 3(a)(iii) and/or 3(c); that the Domain Name is not part of a wider pattern or series of registrations because the Domain Name is of a significantly different type or character to the other domain names registered by the Respondent.


b. Fair use may include sites operated solely in tribute to or in criticism of a person or business.


c. If paragraph 3(c) applies, to succeed the Respondent must rebut the presumption by proving in the Response that the registration of the Domain Name is not an Abusive Registration.


d. Trading in domain names for profit, and holding a large portfolio of domain names, are of themselves lawful activities. The Expert will review each case on its merits.


e. Sale of traffic (i.e. connecting domain names to parking pages and earning click-per-view revenue) is not of itself objectionable under the Policy. However, the Expert will take into account:


i. the nature of the Domain Name;
ii. the nature of the advertising links on any parking page associated with the Domain Name; and
iii. that the use of the Domain Name is ultimately the Respondent's responsibility.

It seems that there are three pretty similar defences (rows 3 to 6), one unique to Nominet (row 7) and a few which relate to the matters evidencing abusive registration which appear in the Nominet policy but not the UDRP.


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