Sunday 13 March 2011

Another day, another misuse of trade mark protection?

There are too many descriptive trade marks registered these days. Too many over-wide trade marks, too many registrations of parts of a trade identity which don't seem to me to constitute trade marks by themselves, as I have remarked before: and too many that simply don't seem to me to be capable of distinguishing one source from another.

These thoughts came to me when I read about a developing trade mark dispute over the expression "urban homesteading" - reported in the Sacramento Bee here. Because it's in the States I won't comment on it specifically, and perhaps the registration as a US trade mark of that expression is perfectly legitimate. The fact that others are using it descriptively might make no difference, as the trade mark owners claim use back to 2001 and have trade marks dating back to 2007: but "The Urban Homesteading Assistance Board" trade mark dates back to 1979 ... and suggests a purely descriptive (though a bit different) meaning.

This episode reveals the chilling effects of trade mark registrations which enclose expressions that others might have a legitimate interest in using. Of course anyone who wants to use the expression can challenge the registration or simply put their heads above the parapet and, when sued, file a counterclaim (at least, they could here): but it's when Facebook (as reported by the Sacramento Bee) starts taking down pages because someone is asserting trade mark rights that the chill really sets in. Too much power over free speech has been placed in the hands of private interests who provide the media through which free speech is exercised - and they should  be obliged to assume responsibility for examining the merits of these claims before cutting people off. IMHO.

Mind you, no trade marks registry in the world should be allowing this sort of thing to happen in the first place. And if (as is often the case) it's because they are applying the law, then the law is plain wrong. No trade mark law should permit this to happen - and providing a means to challenge it when it does happen is no substitute.

Postscript: There's now a Facebook group  Take Back Urban Home-Steading(s) (I bet I know why that hyphen is there) and perhaps the start of a Cooks Source-type campaign.

Tuesday 8 March 2011

December podcast up now

Featuring the Advocate General's opinion in L'Oréal v eBay, questions for the Court of Justice in Football Dataco, the Court of Appeal's judgment in the Pink Floyd case and the Court of Justice giving Bavaria to the Dutch.

Plus lots of General Court trade mark cases and all the usual stuff. I'll get January done by the end of the week, I hope.

Sydney Water: you couldn't make this up

... or could you? This story from the Sydney Morning Herald seems stranger than fiction. An entrepreneur - am I right in thinking that this word, like so many others ("celebrity" springs to mind), has become devalued in recent years? - proposes to sell bottled Sydney Water worldwide. He seems to think that the utility of the same name has inadequately wide trade mark rights to do anything about it, but they are suing him - not for infringement but for money he's received that they say he shouldn't have. Have you lost track yet? I certainly have.

The really entertaining part of the story is that the defendant has demanded that the judge stand down. The defendant suspects a Masonic conspiracy because the New South Wales Treasurer, one of two shareholders in the utility company (but ex-officio,one assumes, not personally) was photographed in a pose that indicated to the defendant that he is a Mason. No, not with a trouser leg rolled up, but with his eyes looking up. Of course, that can't be more than prima facie evidence, can it? Anyway, the judge refuses to say whether he's a Mason. He also refuses to say whether he's Jewish, and the defendant thinks that's relevant because Jewish law doesn't recognise intellectual property. Nothing about the fact that Australian law does - and this is reportedly a trial in the Supreme Court, not the Beth Din (where intellectual property disputes are, I believe, regularly and efficiently dealt with anyway, and Sydney apparently has a particularly eminent one, although it doesn't promote itself as a forum for IP disputes - its London equivalent deals with all manner of litigation).

The Sydney Morning Herald has several pieces about his unfolding story - see also here if you feel so inclined.

Photographing farms in Florida

That might soon be a criminal offence, if legislation currently being considered becomes law. Which I hope it doesn't, not that it would make much difference to my life if I had to abstain from the above alliterative activity. My friend Marc Randazza has the story on his always-entertaining Legal Satyricon blog, along with some his trademark disparaging remarks about what he always refers to as Flori-duh (and a very disparaging illustration for the appreciation of which a schoolboy sense of humour is required - be warned). Not just a criminal offence: a first-degree felony, like murder. As Mark Meyer says in his excellent, erudite and whatever-the-opposite-of-vulgar-is posting:
So if this bill passes and you want to photograph a cow, you are better off breaking into the barn, stealing it and photographing it off-site, a crime for which you might only get five years rather than thirty.

Force India: motor racing becoming a breach of confidence competition

Soon it will be possible to do a one-day course on IP using nothing but examples from the world of motor racing. The Formula One casebook used to contain only Nichols Advanced Vehicle Systems v Rees, Oliver and others [1979] RPC 127, but it's grown (like all legal textbooks) in recent years. The bread-and-butter motor industry is the same, as I noted on my Blog Exemption blog not long ago (and of course Renault are embroiled in a strange story of industrial espionage involving electric vehicles which I'll write up soon).

Now Force India are claiming that an aerodynamics company who did work for them passed on information to the then-new (but distinctly retro) Lotus team about their designs. Fat lot of good it did Lotus - but then again, where might they have been without it? Anyway, this report from tells the story and links though to another interesting piece by Tim Lowles of Collyer Bristow, asking why there aren't more IP disputes in F1. Perhaps because they have to devote what little time remains to actually racing? The Force India case is down for trial next January, and in the world of Formula One a lot might have happened by then.

Mr Lowles explains that the intellectual property system moves too slowly to be of much help in such a fast-moving field. It's also pertinent that the disputes over technology are breach of confidence ones: filing an application for a patent wouldn't produce protection within a useful timescale (chances are the rules would have changed and your invention would be useless by the time you got the patent) and making the details public is exactly the opposite of what's needed. However, when several years ago I was involved in a due diligence investigation of a F1 team I did see a patent, for part of the transmission - a novel clutch assembly, I think. But it will be a sad day when IP litigation replaces racing as the way to win in motor sport.

Of course, Team Lotus are also making a contribution to the trade marks chapter of the notional casebook, locked in a dispute over the name with Group Lotus which is backing Renault's F1 team. And Ferrari have just settled a really daft trade mark claim by Ford, noted elsewhere on this blog and on The Blog Exemption here.

Sunday 6 March 2011

Latest podcast

The latest podcast is now available for download - but I am clearing a backlog, and it covers last November. December will be quicker and easier and soon I'll be up to date ... If you'd like to subscribe,and get your CPD this way, get in touch!

Something rotten in the Indian trade marks registry?

"CBI kept a watch on Trade Marks official" reports the Times of India, but it's nothing to do with my one-time employer the Confederation of British Industry - this is the anti-corruption branch of the Central Bureau of Investigation, who arrested the Deputy Registrar of Trade Marks in the Guindy office of the Indian IPO for allegedly "possessing assets disproportionate to her known sources of income". (The story has also been covered by the Spicy IP blog here.)

How on earth can that be an offence? It might be evidence of some criminal wrongdoing, but plenty of people - throughout history, and all over the world - have had much more in assets than income. I've just been reading  The Little Stranger by Sarah Waters (until I found myself identifying too closely with Roderick and decided I'd better give it up half-finished) in which precisely that lies at the heart of the story.

The Times of India goes on:
The CBI had seized Rs 33 lakh in cash, fixed deposits for a value of Rs 85 lakh and gold ornaments weighing about 3.8 kg from her house.
That gives me an excellent opportunity to share with you, dear reader, my recently-acquired knowledge that a lakh is a hundred thousand in the Indian numbering system. (Oh, you knew already? Please move on to another part of my blog, then.) I can see considerable merit in using this system in preference to what we use at present - it will deal with any ambiguity about the meaning of "billion", originally coined in France in the 16th century to denote the second power of a million (which explains the "bi-" prefix), adopted by us later, then for some reason I haven't yet fathomed but which might be the flip side of the subject of 1000 Years of Annoying the French by Stephen Clarke) changed by French arithmeticians, who decided that numeration would be better divided into groups of three rather than six. The perfidious Americans then followed the French, who decided (the French, that is) in 1948 to switch back to the way they'd organised numbers before. Perhaps that had something to do with post-war hyperinflation? Maybe the Americans stuck with their definition of a billion so they could move on more quickly from being mere millionaires.

The Indian system goes straight from the lakh (the fifth power of 10 - I don't know how to do superscript here) to the crore (the seventh power), so there's no direct equivalent of the million. The ninth power is an arab (an American billion) and again, because after 1,000 (sahasra) the numbers go up in groups of two there's nothing to correspond to a real billion (the twelfth power of 10).

Anyway, it's definitely a lot of rupees, but I still don't understand how it can be an offence to be rich. Actually, on second thoughts ...

Conviction for downloading films

A man in Scunthorpe has been convicted of copyright and trade mark offences after being caught downloading films, according to the This Is Scunthorpe website. He made copies for himself and for family and friends, and made no profit from it: 4000 is the total number mentioned. For some reason he doesn't seem to have understood that there was anything wrong about it, and even a warning from the trading standards department didn't give him pause for thought.

I thought the sole redeeming feature of these criminal offences was that they are squarely aimed at activities that have a commercial dimension to them - where consumers are being ripped off, and perhaps where organised crime is involved. Those features justify the expenditure of public money and the use of public resources. They appear to be wholly lacking in this case. And why the trade marks prosecution too? Kitchen-sink pleading?

First to file or first to invent?

Nearly all the world awards patents to the first person to file a satisfactory application for one. There are exceptions, as in the Asahi case which reached the House of Lords a few years ago - OK, [1991] RPC 485 - in the days when I thought I knew everything and did a programme about it (and the Ninja Turtles case) for TEN which at the time was producing CPD videotapes. They got in high quality presenters (I don't necessarily count the lawyers, although Clive Thorne was also involved): I was interviewed by Jill Dando.

The main exception to this principle is the United States, where patents have always been awarded to the first to invent. This results in much litigation, which goes under the colourful name of "interference proceedings". Why don't we have such nice terms in English law? Well, I guess we do - just think earth closet order ...

The Senate has recently rejected a challenge to a bill that would bring the US into step with the rest of the world (there's a report here and I'm sure there will be plenty of other sources if I had the time to point you to them - like Dennis Crouch's excellent Patently-O blog, starting with this posting and including several more recent ones). I had glibly thought that the Americans were simply incapable of understanding that if they do something one way and everyone else does it another way then perhaps they are wrong. Having a copyright registry falls under the same rubric. I have previously put it down to arrogance, but I'm beginning to appreciate the potential utility of a copyright register: as for the "first to invent" rule, something I read the other day (and can't find now) drew my attention to the fact that the Constitution allowed Congress to pass legislation to give exclusive rights to inventors. So there's more to the first-to-invent/first-to-file controversy than meets the eye - and there's a lot to be said for a system that regards inventors as more important than their employers.

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