Use of a trade mark

In a couple of weeks I have to give a talk on the subject of trade mark use - specifically, on the developing controversy about how extensive use of a trade mark must be within the European Union. But I have just come across this interesting posting on an Australian case, E.& J.Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15 which tells us that the use that might keep a trade mark registration alive does not even have to be known to the trade mark owner - as where a parallel importer brings goods into the country and they are sold to consumers. On the one hand, I can see that it's consistent with the origin-indicating function of the trade mark: on the other, it's hard to conceive of it as use by the trade mark owner, and it does seem to be use by the trade mark owner (or with the trade mark owner's consent) that is required in Australian law.

Hat tip to Barry Eager and his Bazpat blawg, which I'll add to the blawgroll.

As for my subject for the talk, it seems to me of the essence of a Community trade mark that it should function at the Community level, and if a trade mark functions only at the national or regional level it is not right that commercial speech should be restricted in countries where the trade mark is unknown. I think it's a big difference between the US and the EU - indeed, between a federal system and the confederation that is the European Union. And if Community trade marks were intended to work even if they only meant anything to consumers in one country, why have parallel national trade mark registration systems at all?  The justification for a trade mark has always been the way that it reduces consumer search costs, but if the trade mark is completely unknown that justification is completely lacking.

Other people don't share this view!

Crocs and disclosure of a design

I will have to keep a closer eye on things like decisions of the boards of appeal in Alicante, if I am to keep my podcasts up to date - because they come up with some interesting stuff, even if it doesn't have the authority of the General Court's views. The latest edition of Alicante News just popped into my inbox, closely followed by Dave Musker's post on the Class 99 blog on an appeal decision reported in the latter - R 9/2008-3 of 26 March 2010. So as you see it's taken a while to come to my attention, though if Dave has only just seen it too I don't feel too bad.
It reads like the sort of scenario an examiner might invent: products exhibited in the US, sold to the public and featured on a website, all this more than a year before the priority date (and therefore unable to benefit from the absurdly long 12-month grace period in EC design law). Did these activities amount to anticipation? The Board said:

The test is whether the sales could have reasonably become known to the relevant circles in the Community. And the answer is, in the Board's estimation, in the affirmative. The launch of a new product on the marketplace always attracts attention from the public at large, the press and the business circles. This sort of news circulates instantly and easily in the Internet era.

So (as Dave Musker observes) our design law tends towards being an absolute novelty regime. To be fair, it was always clear that only very obscure disclosures would be taken to have escaped the attention of the relevant circles, but even since the time when the wording of the directive and regulation were being debated  things have changed dramatically - the Internet, as the board observes, makes this information much more available, and much more speedily, than would have been the case a decade or so ago.

Book reviews: Practical Approach to Trade Mark Law (4th ed), The Requirement for an Invention in Patent Paw, Working within the Boundaries of Intellectual Property

I was once book reviews editor for the Business Law Review. Even after I stopped doing that, I found books from Oxford University Press appearing regularly, on arcane subjects like capital markets law, takeovers, arbitration and the World Trade Organisation. Some, I am embarrassed to admit, are doing duty as doorstops.

Eventually I managed to stem the flow of not-really-wanted books (there being no such thing as an unwanted book), but recently it has started again. This time, though, the books are on intellectual property subjects. Having checked that they weren't coming to me at the behest of a publication that would expect a review, I decided (with a little help from a friend) that I should review them here. Who knows? The flow might even increase as a result. And with a book of my own nearing completion, it might not be a bad idea to say some nice things about other people's books.


A Practical Approach to Trade Mark Law, by Amanda Michaels (now with Andrew Norris, for the fourth edition) really needs no introduction - does it? Fourth editions don't often get reviews - second editions don't, for that matter - but I am happy to write that I am pleased to have this book to hand. It's clearly laid out and clearly written: the commentary on trade mark law fills 234 pages, which means it is not a deep treatment of the subject (but if it were, it would have a rather different title, wouldn't it?). I would have created more than 9 chapters out of the material, so that the numbering of the paragraphs which is usually fairly helpful would not have 9.157 and so on - a bit more subdividing would, I think, have aided clarity and accessibility.

It's good to have remedies and procedure covered, as befits a practical book, and likewise the chapter on practice and procedure in the UK Registry and OHIM (although it's only 24 pages): 20 pages on passing off might however be too little to be of much help, though of course a book on trade marks can't ignore the subject. I don't need the 1994 Act (or the Directive and Regulation) in such a book, really, and I do sometimes wonder whether publishers are just bulking up tomes that would otherwise look too slim for their comfort. But, as Lord Justice Jacob says in his Foreword, "A non-specialist lawyer faced with a trade mark problem could hardly do better than start from here" (the context makes clear that he meant the book, not the Foreword, though that in itself is an excellent read). And at £44.95 it's very reasonably priced, for a law book.

Only £15 more would get you The Requirement for an Invention in Patent Law by Justine Pila (an Oxford lecturer, among other distinctions). Of course, it would be no good if you wanted a book on trade marks - I'll give up trying to create any sort of connection between them. This is a hardback, 351 pages in total, not copies of statutes to pad it out but no Foreword by Sir Robin either (it seems that one a year might be his limit, going by what he wrote in Amanda's book). It explores an interesting area that shouldn't really even exist, because the patent system is so self-evidently, inherently, about inventions that surely the requirement for an invention in patent law is, in modern parlance, a no-brainer? But of course the Patents Act 1977 fails to define an invention - it merely tells us about inventions that aren't patentable - so there is something to discuss, and discuss it the author does. This isn't a book to dip into for practical guidance, but it doesn't pretend to be: it is a densely argued examination of one small part of patent law, and a completely different reading experience from the Michaels book. I will, I am sure, learn something new every time I dip into it. I won't dip into it in search of an answer to a client's problem, as I might the trade marks book, but it certainly won't be gathering dust on my shelf either.

Working Within the Boundaries of Intellectual Property is sub-titled Innovation Policy For The Knowledge Society, which tells you quite a lot about it. Edited by Rochelle C. Dreyfuss, Diane L. Zimmerman, and Harry First, who can fairly be described as American academic lawyers, it features a cast of dozens - the chapters being based on papers submitted to a conference presumably a year or two ago - the date doesn't seem to be mentioned. 

This is a companion volume to the "highly acclaimed" (as the publishers describe it) book, Expanding the Boundaries of Intellectual Property, published by Oxford University Press in 2001. That work argued for "strong private rights whilst at the same time calling for caution in the expansionary trend. In the period since the first volume," the blurb goes on, "intellectual property protection has grown ever stronger, and this new book focuses on finding ways to cope with the fragmentation of rights and the complex framework this expansion of rights has created." I can certainly relate to that stuff about expansionary trends.

Among the topics covered are patent clearing models, standard setting organizations, licensing arrangements and informal work-arounds. The book also examines the measures that seek to protect the public domain, including strategic licensing, collective rights organizations, and non-profit ventures such as creative commons and open-source publishing. It's multi-national and cross-disciplinary, but obviously most of what it contains is going to be of interest to intellectual property lawyers. Not practitioners in search of answers to their clients' problems, of course, but this is an area of law where the practitioners are often as interested as the academics in this sort of approach. Again, I am going to be dipping into this work, enjoyably, for a long time to come - and learning something new every time I open it. 524 pages and £75 - it is a hardback, too, so that's not a bad price.

Now, one book that I'd really like to review is Jonathan Turner's new one, Intellectual Property and EU Competition Law, the launch party for which I attended not long ago. But given that it's twice the price of the most expensive of this trio, I don't expect I'll be finding a copy on my desk when I next go into the office.

No guidance on computer implemented inventions

News today that the Enlarged Board of Appeal of the European Patent Office has published an Opinion on the reference to it by the President of the EPO of questions about the patentbility of computer-implemented inventions. The full story is on Axel horns's IP::JUR blog here and the IPKat also has it. Suffice to say that we get no guidance on what is patentable: we do get guidance on what is admissible in a reference to the Enlarged Baord, and it's not this sort of political question. Different boards of appeal might come to different conclusions about issues like this, but it's for the legislator to sort out not the Enlarged Board. So there.

Cartel prosecution collapses

The first prosecution under the provisions in the Enterprise Act 2002 which created the offence of being involved in a cartel started a couple of days ago and didn't last long. I don't need to reiterate the facts: the FT has the story here. It doesn't reflect well on anyone, except the British Airways executives who have left court without a stain on their characters. Virgin, who blew the whistle on the alleged (as I'd better make sure I call it) price-fixing arrangement, faces accusations that it was not as frank with the Office of Fair Trading as it was obliged to be to win immunity, while it says that the OFT was responsible for failing to find the emails that fatally undermined the prosecution. Questions have also been raised about the OFT's conduct, and it's alleged that they effectively delegated evidence-gathering to Virgin's lawyers. At least, that's what the reports say, but you should never believe what you read in the papers (even, unfortunately, the FT, although you can believe more of it than others, I think). The US authorities aren't amused, either, as they seemed to be relying on their British counterparts to deal with a competition issue that hit consumers there too.
Leaving aside the consequences for this particular case, it seems to me that this raises important questions about the forensic skills of the OFT. The competition people were doing what must have been their first criminal investigation, and the rules are different from those that apply when they are doing a regular competition investigation, so I can imagine there's plenty of scope for error. When a client was raided by the OFT a few years ago I marvelled at the way the investigators searched for emails - asking executives to search through email files using key words chosen by the OFT. That seems to offer plenty of opportunity for concealment, if you can guess what words the investigator might think would yield the evidence they wanted. It also seemed just a little low-tech, though that's not to say that it might not be effective.
Here, a load of emails, in a supposedly corrupted file, seem to have slipped through the net - although they were eventually picked up, but so late that the trial still had to be aborted. It hardly looks like a piece of law with the teeth we were given to believe it had been endowed with, although it never reached the stage where the application of the law fell to be considered. How long before anyone tries to wheel it out again, I wonder? Or will we just quietly forget that it was ever placed on the statute book - tacitly acknowledging it to be the aberration people thought it was at the time?

Intellectual Property resources

I have moved my free IP book to a new location, linked from this blawg, and will be providing further materials as and when I can, including recorded lectures to accompany the book. I am now able to update it much more easily than previously, though as it stands there are several chapters that are rather out of date and others that are not yet ready to upload.
I hope it will nevertheless be informative for anyone looking for an introductory text on intellectual property. Please pass any comments to me here - observations, criticisms, corrections, anything. But remember - it's not legal advice ...

April 2010 Lawcast

You can download the latest edition of the IPso Jure Lawcast, sponsored by Olcott & Co LLC, from here - the notes are here although not in a final form: I will be replacing that file with a better one later, but the link will still work.
I hope that CPD accreditation is only a short time away, and that the May edition will bring with it the possibility of satisfying your training requirements, or rather a small part of them. Please email me to register your interest in subscribing. I propose to make the audio file available for free download, as now, and the notes too, but to charge for the multichoice questions that are the key to a proper CPD distance learning course. I anticipate a charge of £25 for one programme, but will offer annual subscriptions (12 monthly episodes) for £240 and a special founder subscribers' rate for the first year, for early adopters. Payment will be strictly in advance, by PayPal or cheque. Cash will also be acceptable!
For more details or to to register your interest please email peter@petergroves.co.uk. If you have any comments on this product, please tell me by the same means, or by commenting on this blog.

Double patenting

Many years ago, I did a programme for Television Education Network in which I spoke about the House of Lords judgment in Asahi Kasei Kogyo KK’s Application. In fact the programme took the form of an interview, which was conducted by Jill Dando. Reading that complicated and lengthy judgment played an important part in making me more than just slightly interested in patent law.
The whole area of double patenting is more complicated than it first appears. There are several aspects to it: first, there's the fundamental question of whether an earlier application forms part of the state of the art, and second there's the specific issue of whether a second patent can be granted for the same invention. This can arise in divisional applications, but not exclusively so. It also raises the 'whole contents approach', explored in Asahi and rejected by Laddie J in Re Woolard's Patent. Double patenting also arises when a later European covers the same ground as an earlier national patent.
The reason I am turning my mind to such an arcane subject is a European Patent Office decision, T-1423/07, which confirms that there is no general prohibition on double patenting in the Convention. Previously, in an earlier decision T-307/03, it had invoked Article 60 to prevent double patenting, because it talks only about an inventor being entitled to the grant of a patent for the invention. That caused consternation at the time (see, for example, what the IPKat and EPLaw patent blog) but now the Board has decided that an application cannot be refused simply on grounds of double patenting. However, it distinguishes the 'parent and divisional' situation, where both have the same priority date, and the situation in the appeal, where the applicant had a legitimate interest in the second application which had its own filing date (later, of course, than the first).
All clear? No, I thought not. But interesting, certainly.

Copyright yes, database right no

The other day, I did my standard half-day course on copyright for CLT. Less than half as much time as I need to cover copyright, I'd say, but OK for a sprint along the main straight. Far better to have time for a relaxed Marathon, appreciating the scenery, the birdsong, and the byways of the subject. But modern life doesn't allow time for that.

I talked about the difficulty - even the  near-impossibility - of finding anything in a database that could be protected by copyright, in the post-Directive world - the problems of 'author's own intellectual creation'. I outlined the sui generis database right, and told the delegates that the BHB case smashed a big hole in that with its requirement that the 'substantial investment' referred to in the Directive had to be directed to the right sort of activity, creating a commercial database rather than governing a sport.

Then I read Football Dataco Ltd & Ors v Brittens Pools Ltd (In Action 3222) & Ors [2010] EWHC 841 (Ch) (23 April 2010) and felt the need to eat my own words. Do I have an excuse based on the fact that my talk was only six days after the judgment was given? I don't believe it helps. In this new case, Mr Justice Floyd held that there was copyright in the fixture lists, the preparation of which had involved 'very significant labour and skill in satisfying the multitude of often competing requirements of those involved.' The process was not 'entirely deterministic' and not everyone would come up with the same answer:

Some solutions will better accommodate the requirements of the clubs and rules than others. The more sophisticated the compilation process, the more permutations it will be able to consider and the more requirements it will be able to satisfy. Judgments have to be taken as to the relative importance of certain rules in comparison to others. On occasions rules will have to be broken.

This work is not mere “sweat of the brow”, by which I mean the application of rigid criteria to the processing of data. It is quite unlike the compiling of a telephone directory, in that at each stage there is scope for the application of judgment and skill. Unlike a “sweat of the brow” compilation, there are some solutions which will simply not work, and others which will be better.

There is clearly more to making up a fixture list than I had ever thought - enough, it seems, to make it an original literary work. Just as well, from the point of view of the compilers, because there's no database right in it - the FML cases in the Court of Justice make that clear enough, and given the subject matter of the present case there was little hope of distinguishing the cases. Fixture lists (like the BHB's information) are created by first creating or collecting the data: the creation of the database does not involve anything like a substantial investment. An interesting judgment, which is going to reward further reading.