Monday 29 November 2010

Apostrophe abuse and neglect

I'm reading a recent judgment - no need to mention which one - which quotes at some length from correspondence passing between the parties' solicitors. I am appalled that neither side manages consistently to use apostrophes correctly. There are possessives that lack apostrophes and a possessive form of the neuter third person singular pronoun with one in. At least that partly restores the number of apostrophes present, even if they are not in the right places.

I have worked in busy offices where dictation has come back - often in a ready-to-sign form - with errors in it, and I have probably taken the view that trying to correct them all would be beyond Sisyphus. Sometimes the letter (or fax, or whatever) just has to go, and there is no time to correct it. We are dealing with what is possible here, not trying to achieve perfection. I suspect that the solicitors involved were in such a situation. In any event, I will be charitable. I will also be charitable to the persons who abused and neglected the apostrophes, as I don't think the education system imparts a sufficient understanding of the rules of grammar, though bearing in mind that JK Rowling and others have caused a huge increase in the amount of reading done by young people, and therefore in their exposure to the correct use of apostrophes, the education system's failings are a feeble excuse.

What has struck me is that any temptation to cut corners when correcting correspondence, or other documents, must be resisted. It's one thing getting it wrong when only the other side will see: it's quite another to have your work uploaded to BAILII.

Saturday 27 November 2010

US Government seizes domains

The US Government - to be precise, the Department of Homeland Security - has seized a load of domain names used for file-sharing (or suspected file-sharing) sites. Thanks to Dan Ballard (Twitter: @ballard_ip, for explaining that this was following a court order pursuant to a seizure request by the DOJ in furtherance of its criminal investigations into counterfeiting, nothing to do with the Combating Online Infringement and Counterfeits Act (COICA) (another entry for the second edition of my Dictionary of Intellectual Property) which has not yet become law.
However, my understanding is that COICA will allow a Web site's domain name to be seized if it "has no demonstrable, commercially significant purpose or use other than" offering or providing access to unauthorised copies of copyrighted works. The Attorney General will be given extensive powers to do all this.
I had fondly (in the "foolishly" sense of the word, as in that wonderful north-eastern expression which my parents used to apply to me from time to time, fond gonniel, meaning silly fool, or worse) imagined that the DHS was exclusively concerned with preventing terrorist outrages, but it seems its writ runs further than that.

Read more here.

Friday 26 November 2010

Meltwater fails to wash NLA away

I'm glad I'm not the Newspaper Licensing Agency. Collecting societies are rarely loved, but the NLA must be the least loved (or most unloved) of the lot. It exists because, after the Copyright, Designs and Patents Act 1988, it became easier to set up a body to licence the copying of press cuttings, which is what was was hurting the newspaper proprietors at the time. Now the way in which the products of the newspaper proprietors are consumed has changed again, as have the activities of press cuttings agencies (for which there's a new generic name which escapes me for now): they distribute links to the stories in the online editions of the papers, and PR companies pass them on to their clients.

The question in The Newspaper Licensing Agency Ltd and Ors v Meltwater Holding BV and Ors [2010] EWHC 3099 (Ch) (26 November 2010) was whether subscribers to a news aggregation service needed a licence from the NLA (which had enterprisingly devised a new form of licence to cover precisely this). Does merely following a link require the copyright owner's consent? And, in addition, do the end users need permission to receive the compilation of news items made by Meltwater (and, more particularly, what it contains, which includes headlines), and what if, being a PR company, the end user passes Meltwater News or its contents on to its clients?

The matter is going to the Copyright Tribunal, which has jurisdiction over licensing schemes, anyway, but it seems that there is enough bad blood between the parties (not including Meltwater, who undertook to pay for a licence anyway) to fuel a High Court case too.

The judge had to consider whether the activities of the end users are comprised in the grant of the licence to Meltwater. Interesting: this raises questions about non-derogation from grant, a useful fall-back when things get complicated (as in BL v Armstrong), exhaustion, and whether there is in fact only a single copy which is treated like a press cutting used to be in ancient times. Once Meltwater is licensed to provide services, its clients must be licensed to receive them - so the PRCA argued. But, given that when something is received in electronic form and passed on to clients there are unavoidably going to be more copies made - incidental and transient ones, true, but copies nonetheless - the end users couldn't rely on this analysis.

What does copyright protect here? The judge had to consider whether the headlines that were reproduced could be literary works in their own right. Were they, as the PRCA contended, integral with the articles themselves, in which case perhaps they would not be substantial parts of the works, or did they have an existence of their own? They did in Shetland Times Limited v Wills [1997] FSR 604, but that was a Scots case and only at an interim stage. Now, however, there's the Court of Justice decision in Case C-5/08, Infopaq, which at least lends weight to the argument that headlines are literary works and capable of being protected by copyright.

What about the websites' terms and conditions? There's precious little law on these, so this case is interesting for that alone. Generally, online newspapers prohibit access to their websites for commercial purposes - which involves, as the judge pointed out, an "element of circularity", because you have to access the site to read the terms and conditions. Not that anyone ever does anyway, but if everyone knows they say that, perhaps there's no need to read them. The judge was not impressed by the lack of authority and the fact that she was being asked to adopt a "broad brush approach" to this part of the case. The arguments presented contained inconsistencies, like that element of circularity, and in the end she moved on from the terms and conditions point leaving it hanging a bit.

There was however clearly prima facie (albeit technical) infringement of copyright. Did any permitted acts assist the defendants? Temporary copying? No, not here, because to be "enjoyed" by the end users something more than temporary copies were needed. Fair dealing for criticism or review or reporting current events? That was NLA's nemesis in earlier litigation ... However widely she interpreted "criticism and review", the judge declared herself unable to bring the defendants' activities under that head. "Reporting current events" did not appeal to her as an appropriate rubric to cover showing clients what coverage they had received in the media - it was not reporting to the public. In any event she seems underwelmed by the evidence adduced to support a defence under this head, as she had not been shown how the material was actually used.

Whatever was happening, it probably didn't constitute fair dealing anyway, the overriding test of which reporting current events and criticism and review are specific types. The scale of the use was too great, and the fact that end users could look at the headline and some text before deciding whether to access the whole article on the paper's site meant that they were detracting from the normal exploitation of the copyright works, which Berne, TRIPS and the Information Society directive all say makes it not fair dealing.

Then there's the acknowledgement point. The only thing the defendants could put up on that was the argument that the link served the purpose, like a footnote - but that can't have sounded very convincing even to them, and it certainly didn't wash with the judge.

So now we wait for an appeal or the Copyright Tribunal. It's good to have these matters out in the open, but they serve more to highlight the desirability of looking carefully at the fair dealing exceptions, perhaps with a view to introducing a true fair use exception, which is exactly what the government is threatening.

Here are links to an interview on paidcontent:UK with the CEO of Meltwater and with the NLA plus a piece on

European Parliament approves ACTA

The Anti-Counterfeiting Trade Agreement has been nothing if not controversial - once, that is, the world learnt of its existance. At first it was that most undemocratic-sounding thing, a secret treaty. The fact that MEPs were kept in the dark about it for a long time was reflected in the small majority given for it in the European Parliament, but now the Commission has a mandate to go to Sydney from 30 November to 3 December and agree to it. The EP still wants assurances from the Commission that it will not affect existing basic freedoms under EU law, which already exceeds international standards in this area. It seems that the latest draft wouldn't require any changes to law in the EU for this reason.

The agreement deals with enforcement of intellectual property rights and combatting online piracy and unlawful software. It will also deal with circumvention devices and software, which must form part of any joined-up approach to online infringements. It leaves it open to signatories to impose a three-strikes rule, though that is no longer mandatory as it was in earlier versions of the agreement.

The agreement has been negotiated between Australia, Canada, Japan, South Korea, Singapore, Switzerland, Mexico, the USA and the EU. The omission of China has been perceived as a significant weakness - likewise, I suppose, the absence of the other BRICs.

Enhanced co-operation the key to EU patent?

It will be a bad day when I don't learn at least one new thing. Enhanced co-operation is a new one on me, but it's many years since I purported to teach EC law (and wrote a book on it to help myself get to grips with the subject - not always the best reason to write a book, but it worked for me). They have messed about with the treaties since then.

The story (reported by Euractiv, who seem to have a hazy grasp of what patents are all about, as some people might say about me, here) is that a group of Member States, including the UK because this is a matter in which our government is comfortable being more coommunitaire than some, has decided to find a way forward with the project senza Italy. The problem with the EU patent has always been connected to language, and at one stage Poland put the kybosh on the project because of the language issue. It was thought then that the Polish stance was terminal, but this thing keeps bouncing back -  Italy (with suport from Poland) was unhappy with French, German and English being the official languages. (Incidentally, Euroactiv is quite wrong to call these the official languages of the Union!) Even Spain seems to have overcome its objections, perhaps having made its point.

Commissioner Barnier has promised a proposal on enhanced co-operation in this area for the Competitiveness Council on 10 December. It's only the seocnd time the procedure has been used - the other being last July, when 14 countries got together to agree simplied divorce rules for couples of differnt nationalities. Then Italy was on the side of the angels: this time its minister, the magnificiently-named Signor Pizza, argues that it will undermine the internal market. I can see that divorce rules lack the ability to do that.

If it is agreed on the basis of enhanced co-operation, it will need 9 Member States to go ahead with it. Approbal by a qualified majority in Parliament and Council would be required, too, but only participating Member States would be allowed to vote in Coucil.

Copying without infringing conference

It was, I'm afraid, over a week ago, but it has only recently occurred to me that I should provide a link to the nearly-live report of my talk at the Copying without infringing conference last week. Somehow Jeremy managed to blog the whole thing on the IPKat as the conference proceeded - not for the first time, either, although as he remarked to me it was the first time he had heard me give a talk - afterwards, when I asked, confirming that he hadn't been disappointed.

I should point out that I specifically said I wasn't going to quote from H2G2, taking my theme instead from Dirk Gently's Holistic Detective Agency ... so perhaps Jeremy wasn't paying quite so much attention. But that's nitpicking.

French for plagiarists

Who needs format rights? Here from Transparent Language's French blog is American talk show host (well, the show is American, he doesn't sound as if he is) Craig Ferguson drawing attention to the cloning of his CBS show by a French self-proclaimed “enfant de la télé”.

I draw this to your attention, gentle reader, for two reasons. First, it seems to me to show that there is no need for any special protection for formats, in such egregious cases as this. (OK, three reasons: I wanted an excuse to use the word "egregious".) To my mind, less egregious cases probably require no remedy - but I know others don't necessarily agree with that .... Second (or, now, third) because I happen to have heard Mr Ferguson's name many times in the last few months. He and I (and numerous others) share an enthusiasm for Stackridge, and he takes it so far as to perform The Last Plimsoll in his stage show - see the embedded clip, and Stackridge performing it at Cropredy a couple of years ago. The band - my clients, in a small way - have just been to LA to record it for him, their first visit to the States in their 40+ year history, and it will be broadcast in January.

But will they play it at the Borderline this evening? And will I be in the audience? Why not get along there yourelf and see ...

'Tis pleasant, sure, to see one's name in print

So wrote Lord Byron in English Bards and Scotch Reviewers, which I don't think was about whisky tasters, going on "A book's a book, although there's nothing in it".  There's not much of substance in my latest published work, a book review in the Journal of Intellectual Property Law & Practice (full reference 2010; doi: 10.1093/jiplp/jpq171, which can be found here though perhaps not unless you have a subscription) under the title The most penetrating of criticisms, which I found in Point Counter Point. No, I didn't, I found it on-line in some collection of quotations, but that's the same thing these days, isn't it? As it happens, I bought a complete set of Huxley at a village fete some 25 years ago. The vicar, a great friend though one I have lost touch with, complimented me on the bargain I had got. (I bought a Soft Machine LP, too, and still haven't made time to listen to it. Just as I haven't read Point Counter Point, or any of the others).

Even though there's not much in it, I hope it might bring a little amusement to readers - and illuminate the debate about copyright and parodies just a little.

Wednesday 24 November 2010

Tip of the Day: Protecting book titles part II

If you can register a book title as a trade mark, you've put yourself in a very strong position. Copyright in the book will expire 70 years after the death of the author, whereas a trade mark can keep going for ever. However, a trade mark's life can be cut short if it stops being distinctive: the Registry's own examination guide explains that the name of Sherlock Holmes has been used over the years by too many traders for it still to function as a trade mark. It distinguishes Spiderman, which is not only the name of a fictional character but is also capable of identifying the goods of one trader. So, as with other trade marks, it's important to take care of book titles that you might wish to protect this way.
And other people might well have registered literary trade marks for their own purposes. "Ulysses" is registered in class 16 (the appropriate class for books) - but not by the Joyce estate: it's the trade mark of H-D Michigan, Inc., who also sell motorcycles and related goods. They own many more trade marks too, mostly showing the full name by which they are better known, Harley-Davidson. Should it ever come to it, the Joyce estate would have rights to carry on using the name for books, although whether that use would be considered trade mark use is a moot point. That does show the importance of checking for other people's registered trade marks before you choose a title for your book, though.

Face the music

Here's a report that Facebook, Inc., is joining the ranks of the absolutists - trying to, anyway - by registering FACE as a trade mark. Trademark, I should write, because it's in the US. It puts me in mind of Red Bull's RED Community trade mark - by which I mean, it's not actually their trade mark, it's part of it, and to register it as a trade mark is a bit of monopolisation that would be unjustified save for the compelling argument that if the law gives you the opportunity you'd be well-advised to grab it, especially before someone else does. So - IMHO - the law is wrong to permit this sort of thing.
Of course (he writes patronisingly - not intended to sound that way) in the US they have this sensible rule that you have to file a statement of use, and if Facebook, Inc. is using it only as part of FACEBOOK that won't (shouldn't be) possible. No such thing in the UK or EU - but it's about time there was (again, IMHO) to stop this sort of nonsense. I'll be writing to my MP about that - as soon as he stops making a fool of himself in the British Museum.

Community design infringement reference

On Class 99, Jeremy reports a reference in a designs case to the Court of Justice. It seems it's hard to track down, but David Musker has found a Dutch version and suggests using Google Translate on it. I did as he suggested, verified the translation (ha, ha) using Babel Fish and then tried a bit of guesswork, and came up with this:

C-488/10 Emparanza Celaya y Galdos International
November 19, 2010

The applicant (CEGASA) holds a community model for a bollard / column. It brought proceedings against the trading company Proyectos Integrales SL Balizamiento (PIB) for alleged violation of its rights. The defendant denies this because the traffic pole is a reproduction of a registered Community design in its name. Parties have for some time been discussing with each other about the existence of an infringement. PIB has always challenged, but changes made to the draft legal proceedings. Now CEGASA for the second time submit a request to amend PIB has refused to respond.

Regardless of whether the PIB column creates a different overall impression on the informed user from the applicant's registered Community design, the Spanish national court seeks further explanation of Article 19 of Reg. 6 / 2002, particularly as regards the term 'third'. It refers the following questions:
1. In a proceeding for infringement of a registered Community design exclusive right, does the right to prevent third parties to use it as provided for in Article 19, paragraph 1 of Regulation (EC) No 6 / 2002 of the Council of 12 December 2001 on Community designs extend to all third parties who use designs that do not give the informed user a different overall impression, or does a third party that uses a later Community design registered in his name as contrary not until that model not be annulled [or: does a third party who uses a RCD registered in its own name have a defence until that registration is annulled]?
2. Does the answer to the previous question depend on the intention of the third party, or will it vary depending on his behaviour, which shows that the third party has applied for and registered the subsequent community model after he had been requested by the proprietor of the earlier Community design after the product had been placed on the market to stop infringement of the rights attached to that older design?
Perhaps that's not much more helpful than the machine translations, and of course I might have introduced all sorts of errors of my own. Translated from Dutch into Double Dutch. But it sounds as if the Spanish court is asking whether it's a good defence to a RCD infringement action to say you're using your own registered design, and if so does it matter if that RCD was only applied for after the defendant was told by the senior rights owner that it was infringing? Put another way, perhaps, should the claimant have attacked the junior registration first? That might have been a better way to deal with the matter.
UKIPO wants comments by 29 November, which is difficult if you can only read it in Dutch - there's still nothing on the Curia website.

Monday 15 November 2010

Tip of the Day: Protecting book titles

A friend asked me today about protecting a book title, and it's a good subject for a general tip. Book titles - and similar things, such as song titles - won't usually be protected by copyright. A great deal of thought might go into them, but it's not enough to make them original literary works. But the law of passing-off might give them protection, and they might be registrable as trade marks. A bit of lateral thinking might well get you the protection you hope for.
Trade marks are, however, supposed to be badges of origin, and book titles aren't. They often refer to what's in the book rather than indicating the commercial source of the book, which is usually done by identifying the publisher separately or in the name of a series, such as the Rough Guides. As trade marks, titles that describe what the book's about will be pretty useless.
With time, a descriptive trade mark can become registrable: it might also be protected under the law of passing off. Marketing activities and evidence of sales revenue will help show that the title has broken through the barrier and acquired the features of a trade mark. So too will ancillary products, commercial spinoffs, and merchandising: they might exist at a distance from the book, but they will help make the title an indication of origin. "Gone With The Wind" has been a UK registered trade mark since 1993, "The No 1 Ladies detective Agency" since 2004, though that title could be considered to have attached itself to a series of novels.

Colour combination: Deutsche Bahn does not have exclusive rights

In cases T-404/09 and T-405/09 (12 November 2010, reported here by Class 46) the General Court has confirmed that the criteria applied for assessing the distinctive character of colour trademarks is the same whether the proprietor is supplying goods or performing services. It rejected Deutsche Bahn’s argument that the supply of services does not inherently involve the use of a colour, so the colour performs no function in connection with services and colour trademarks can therefore be registered (see case T-173/00 KWS Saat AG v OHIM).

The Court decided that the two colours lack distinctiveness individually, and in combination they presented no perceptible difference from the colours commonly used for railway services. As the OHIM Board Appeal had noted, light grey is commonly used for technical equipment used on railways, and red is used for warning signs and other situations in which the aim is to make people notice something, including advertising. The Board of Appeal also noted that grey could be seen as dirty white, the combination of which with red is commonly found on barriers and similar devices, including those at railway crossings. Looked at overall, red and "dirty white" was functional, not an indication of the origin of the services.

Sunday 14 November 2010

Local significance?

Article 8(4) of the CTM Regulation tells us that relative grounds for refusal of registration of a Community trade mark may exist where a senior user has common law or similar rights. Those rights, however, must be "of more than mere local significance". Only the European Community could have come up with such a vague expression, and used it in legislation. What is it supposed to mean?

In Case T-318/06 to T-321/06, Alberto Jorge Moreira da Fonsecal OHIM - General Optica, the General Court thought that an assessment of this condition required a consideration of not only the geographical dimension but also the economical dimension of the sign's significance, in the light of how long the sign has fulfilled its function in the course of trade and the degree to which it has been used.

Case T-430/08 Grain Millers, Inc. v Office for Harmonisation in the Internal Market involved opposition proceedings between Grain Millers GmbH & Co. KG and Grain Millers, Inc. The opposition succeeded, and the General Court rejected Inc’s appeal. Arguing that the General Court failed to follow that earlier case, the applicant has appealed to the Court of Justice (Case C-447/10 P). It contends that the General Court had erroneously held that Article 8(4) does not require proof of genuine use of the sign in support of the opposition, as required by Article 43(2) of the Regulation.

The CTM register, and national and regional trade mark registers, are becoming more crowded all the time. The stock of available trade marks is becoming depleted. It is already hard – perhaps too hard – to obtain registration in the face of local or distant oppositions, one of many ways in which the trade mark system of the European Union is failing businesses. This is another aspect of the problem highlighted in the Pago case (reputation in one Member State) and (on the other hand) ONEL in Benelux and City Hotel in Hungary. The court’s view will be eagerly awaited – and perhaps this is a subject for the Max Planck Institute too?

I'll be coming back to this topic - it might be heretical, but I'm on the side of Benelux and Hungary.

Saturday 13 November 2010

EU trade mark study extended

The Max Planck Institute is currently carrying out a study on the functioning of the trade mark system in the EU, at the behest of the European commission. It was originally given a year in which to report: that expired yesterday, and it has been granted an extension - rather appropriate, given the importance of extensions in the trade mark world - of a month.

I am keen to see what it says about some of the pressing issues in the trade mark world: whether use of a Community trade mark in only one Member State is sufficient (I hope it will be deemed not sufficient, as the Benelux and Hungarian offices have decided, but I fear that pro-integration correctness will prevail over common sense), whether a Community trade mark will be deemed to have a reputation if it is largely unknown except in one Member State (another situation in which the national trade mark system is the one that should be engaged), and lots of other exciting things.

I am not holding my breath.

Friday 12 November 2010

The perils of naming new cars

Bamboo and Bees, a French business law blog that I don't read as often as I should, reports on a matter that I'd been vaguely aware of - the trouble Renault have run into as a result of a decision to call their new small car Zoé. Not, presumably, to be confused with Zoë, or even Zoe (sans accent). What about the dignity and image of members of Renault familes (of which there are many in France) a member of which might have been given the forename Zoé? Two such families took the car manufacture to court recently, and had the case thrown out.

B&B's report says that this was the juge de référés, who is a judge of fact or evidence, which sounds as if it might not actually be his or her job: and the cases were thrown out because the families had chosen the wrong jurisdiction.

B&B then explains in some detail the jurisdiction of the référés, which is supposed to be for cases of urgency. The cases were brought under Article 809 of the Civil Procedure Code, which is a conservatory jurisdiction - designed to prevent threatened damage occuring. The parties argued that there was imminent damage, in the form of the risk of mockery, attacks on the dignity of the Zoé Renault, and a breach of the principle that forenames are for humans. Renault argued that they had been using the name, sans accent, for some years, and that there wer plenty of other examples of forenams being used as product names. This, they argued, negated any urgency in the case, which was all they had to do.

The families' lawyer says they will appeal - so we haven't heard the last of this yet.

TfL monopolises Routemaster bus design

It seems from reports that TfL (that's Transport for London, in case you haven't encountered it before: the successor body to London Transport, so I suppose it had to distinguish itself somehow) has applied to register the design of the new Routemaster bus that's supposed to be on our streets, replacing those horrible, completely unsuitable and lethal-to-cyclists "bendibuses", in 2012. Why?

What does TfL need registered design protection for, and how can it justify taking the rights in a design created by a participant in a competition? It's not an in-house design: if it were, that would make the situation a little more understandable. I expect the terms of the competition insisted on an assignment of all rights - I have drawn up competition rules containing such a clause, though not on this sort of scale - but, again, why? Because everyone believes in the magic properties of intellectual property, and are determined to have as much of it as possible.

Mayor Boris thinks that there will be demand from elsewhere for these new buses, so TfL should be able to earn some nice royalties. Some commentators seem to doubt that: other cities are a bit more suited to bendibuses, for example. What if someone starts making a bus that looks like the Boris Bus (as it might yet be called), so similar that it doesn't create a different overall impression - TfL will sue for infringement of their registered design, I suppose, and perhaps fares will have to go up to fund the litigation. Either that or they'll have to take out before the event insurance, and the fare-paying public can pay the premiums.

Why didn't they leave the rights with the designer, and let him enforce them if anyone should happen to make a lookalike double decker bus (no small undertaking, I imagine!). Then they might have struck a better price for the work, given that the designer has the expectation, however optimistic, of selling the design elsewhere.

Why are emanations of the state such as TfL paying good money to collect intellectual property rights anyway? If the design work has been paid for by the public, what's the justification for enclosing it, bringing it into a form of private ownership? To enable TfL to exploit it? But TfL should get on with the task of running an acceptable level of transport services in London, not indulge in some ridiculous sideshow. They need to keep their corporate eye on the ball. It's like those Royal Marine Commando Community trade marks I commented on a while back, or the re-branding of the Patent Office - all completely unnecessary, and done (I imagine) at the taxpayer's expense. What we need to protect matters like those is something like Canada's "official marks" - the Patent Office already had something rather like that, which was almost surrendered when they rebranded. That deals with the need for these public bodies to register trade marks: as for bus designs, I see no justification whatsoever.

There's one ray of light, though. To be validly registered, the new design has to make a different overall impression compared with the prior art. It looks so like a real, much-lamented Routemaster that it might well fail to clear that hurdle.

Monday 1 November 2010

Initial interest confusion comes to the UK

Initial interest confusion has always, since I first came across it in the Movie Buff case (Brookfield Communications, Inc v West Coast Entertainment Corp 174 F. 3rd 1036 (9th Cir., 1999)), appealed to me as a useful extension of trade mark protection. If you lure someone to your business by making a reference in some way to another's trade mark, you have at least got part of the way to taking a customer off that other trader by means of a deception. The deception stops there, but you have taken advantage of the other trader's trade mark to get that far, and that isn't fair - especially when the other trader is a competitor.

Since then trade mark protection has grown in so many ways, many of them quite regrettable beside IIF, but in the Google Adwords case the Advocate General was adamant that there was no such doctrine (though he didn't mention it by name)  in European Union trade mark law (nor, if it is a different thing, in the approximated laws of the Member States). Now, however, it seems that the English courts have imported it anyway, in Och-Ziff Management Europe Ltd & Anor v Och Capital LLP & Anor [2010] EWHC 2599 (Ch) (20 October 2010). The claimants are part of an asset management group and the defendants are an independent investment house. The claimants have Community trade marks, while the defendants have adopted their founder's nickname as the "trade marky" part of their corporate name. Some people might be able to distinguish the services they provide, but they could be lumped together under the heading "financial services", which is enough to raise a likelihood of confusion. But the claimants argued that they didn't have to prove a likelihood of confusion in the normal way, but only had to show initial interest confusion.

The judge - Arnold J, waiting patiently for the CJEU to answer his questions on Adwords in the Interflora v M&S case - carefully fits the case into the existing body of case law, referring to English, Irish and European Union cases. Even so, to have an infringement where the likelihood of confusion is dispelled before a transaction takes place, so the customer is in no doubt about with whom he or she is doing business, is a radical step. In the real world it might have its applications, but online it is revolutionary - and the very opposite of what the Advocate General suggested in the Google France case. There has, however, long been a "bait-and-switch" doctrine in English trade mark law, so perhaps it's not Arnold J who is being revolutionary, it was the Advocate General and Arnold J is the counter-revolutionary. Anyway, it's likely to be in the field of Internet searches and keywords that the doctrine finds its application, and it will bring a whole new dimension to trade mark infringement.


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