How much intellectual property is a good thing?

The World Intellectual Property Organisation tells us that it was a Record Year for International Patent Applications in 2016 and that there was "strong demand" for international trade marks and registered designs. Applicants from the U.S. led the patents field, as they have done for 39 years, with Japan second and China third. “In an interlinked, knowledge-based global economy, creators and innovators are increasingly relying on intellectual property to promote and protect their competitive edge around the world,” said Director General Francis Gurry, which actually strikes me as such a bland statement that it was hardly worth saying. Of course there is no way of measuring success qualitatively, so a crude quantitative measure is the only one available, but even so it is surely a mistake to consider more patent applications to be unequivocally a good thing.

The days when patents protected big inventions passed a long time ago. I doubt that any of last year's PCT applications were for today's equivalent of the steam engine or the hovercraft, or even the dual-cyclone vacuum cleaner. There might be a blockbuster drug in there somewhere, and that should be a matter for celebration when (and if) it becomes apparent, but the mere fact that thousands of patent applications have been filed is meaningless in terms of technological development and benefit to human kind (although one can understand why patent agents, patent attorneys and patent office bureaucrats might be pleased). Please don't confuse the number of patent filings with the amount of innovative activity in the world - much of it is probably mobile phone companies building their portfolios, the better to defend themselves (or counter-attack) when they are sued for infringement by their competitors. Not an edifying use of the intellectual property system, IMHO. But applauding the number of applications rather than the real achievements of patent protection is another symptom of the modern disease of confusing means and ends.

One interesting fact emerges from reading to the end of the press release: the Hague Agreement is most-used for furniture designs, and the leading user of it is a Dutch company. Who'd have thought? But then again, who'd bother with a registered design to start with? What is there in furniture design that's truly novel? No doubt I am missing something ...

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Famous Hartlepudlians

When I was an articled clerk (for the benefit of young people, this was what we used to call trainee solicitors) in Teesside (not, trademarksandbrandsonline.com note, "Teeside"), and many of the firm's clients frequented the crown court there, it was scarcely imaginable that it would be the venue for a copyright case. But there was nothing criminal in the copyright law in those days, so no reason for the idea to cross our minds.
Now a man from my home town - indeed, a short distance from my old family home, from a road down which we walked the dog every evening - has been convicted of an offence under (presumably) section 297A of the Copyright, Designs and Patents Act 1988, having advertised and sold adapted IPTV boxes - which were designed to enable users to receive encrypted broadcasts without paying the broadcaster for the privilege. As well as a ten-month "bender", as I recall suspended sentences were called in the days of my articles (his sentence being suspended for 12 months), a Proceeds of Crime Order required him to pay £80,000 and costs of £170,000 were also awarded against him. Painful.
The prosecution was brought by Hartlepool Trading Standards department, following an investigation by the National Trading Standards North East Enforcement Team. The original referral came from FACT, which appears now to be the full name of what was the Federation against Copyright Theft - one of those organisations whose names make me cringe but who do, at least sometimes, a good and useful job. Mr Mayes, the defendant, had been caught selling these boxes to pubs and clubs all over the place, placing advertisements which claimed they were "100% legal". He charged £1,000 each, which is probably an attractive price compared with the fee a broadcaster would charge for the sort of public showing licence a pub or club would need. The FACT report (https://www.fact-uk.org.uk/seller-ordered-to-pay-250000-for-illegal-tv-boxes/) says that often they didn't even work - perhaps his business model relied on the customers not going legal over something which was pretty clearly illegal, whatever his advertising stated.
Trademarks and Brands Online's report, which is where I first read about the case but which contains nothing not in FACT's press release except the misspelling, is here.

India: The Trademark Rules, 2017: Process made simpler, Faster, Start-up friendly but dearer

In a constructive attempt to streamline, simplify and expedite the trademark registration processes, the Trade Mark Rules, 2017 have been notified and came into effect from March 6th 2017. In consonance with the National IPR Policy, 2016, the Rules also introduce specific provisions for Start-Ups and Small Enterprises to stimulate and promote innovation and creativity among such entities.

The Salient Features of the Rules are as follows:

GENERAL:

• Definition of Start-Ups and Small Enterprise introduced.
• Number of Forms has been reduced from 74 to 8. 
• Procedures relating to registration as Registered User of trademarks have been simplified. 
• Provisions have been introduced to serve all applications, notices, statements and other documents electronically - from applicants to the Registry and vice-versa.

OFFICIAL FEES:

• Government Fee applicable for various trademark registration related activities has been simplified by reducing the number of entries to just 23. 
• Filing fee of a new application has been increased by about 125 %. (INR 9,000.00).
• Renewal fee increased close to 100% (INR 10,000.00). 
• Fee for expedited registration process increased by 100% (INR 40,000.00).
• Handling fee for Madrid Applications increased by 150% (INR 5,000.00).
• 50% discount on the new filing fee for Individuals/Start-Ups/Small Enterprise. 
• To promote e-filing, the fee for online filing has been kept 10% lower as compared to fees for physical filing.
• Fee for extra characters (beyond 500 characters) in the description of goods/services has been done away with.

EXPEDITED PROCESSING OF APPLICATIONS:

Provisions laid down for expediting the registration from filing through registration on payment of higher fees. Earlier, only examination of application could be expedited.

REPRESENTATION OF SOUND MARKS:

Sound marks applications to be also accompanied by reproduction in MP3 format (not exceeding thirty seconds’ length).

EXPEDITE OPPOSITION PROCEEDINGS:

• Provision to file counter statement to the notice of opposition as soon as it is made available online. 
• The requirement of serving a copy of opposition notice shall be dispensed with if a counterstatement has already been filed based on electronic copy of notice available online. 
• No scope for seeking extensions in case of filing evidences. 
• The number of adjournments for hearings reduced to 2 for each party and each adjournment shall not be allowed for more than 30 days.
• Mandatory costs up to INR 10,000.00 to be awarded to either the Applicant or the Opponent (depending on the case) for not contesting opposition proceedings thereafter. 

WELL-KNOWN TRADEMARKS:

• Modalities for determination of a trademark as a well-known mark have been introduced for the first time. 
• Application to be filed with an exorbitant fee of INR 1,00,000.00 per mark and only through e-filing.

VIDEO-CONFERENCING OF HEARINGS:

Provisions have been laid down to hold personal hearing through video- conferencing or other audio-visual communication devices.

RENEWAL OF REGISTRATION:

The window for renewal of registration now opens one year prior to the date of expiration as against six months under the old Rules.

EXTENSION OF TIME:

Any extension of time, as specifically allowed under the Trademarks Act, 1999, shall not exceed one month.

ASSIGNMENT OF TRADEMARKS:

• Providing a duly certified copy of original document, instrument or deed purporting to transfer the title will suffice; an original instrument or deed is no longer necessary. 
• Filing of Affidavit along with the application for recordal of assignment is no longer required. 

STATEMENT OF USE:

• All applications (except with the intent to use) shall contain a statement of use with respect to ALL goods or services mentioned in the application.
• An affidavit testifying such use (if application claimed prior user date) along with the supporting documents has to be filed.

Land Rover defends the DEFENDER trade mark

There are few vehicles as iconic and instantly recognisable as the classic Land Rover. It has captivated car enthusiasts for decades, and has appeared in several mainstream action films such as The Expendables, Lara Croft: Tomb Raider, and in somewhat of a modified form in James Bond: Spectre. It is no coincidence that the vehicle has appeared in such films, as its heavy duty, military like structure gives an impression of assertiveness, functionality, efficiency and reliability.

To the dismay of many, Jaguar Land Rover discontinued production of the Land Rover Defender in January 2016. However, it did not discontinue the trade mark registrations which protects the model name. Instead, it is working on a replacement, although traditionalists are expressing doubts about whether it will be worthy of bearing the same name.

Jaguar had registered two trade marks for DEFENDER, these being a UK mark registered in 1989 for ''motor land vehicles and parts and fittings therefor; all included in class 12'' and an EU trade mark registered in 2014 for ''land vehicles; motor vehicles; motor land vehicles''.

A Canadian Company called Bombardier marketed a recreational off-road vehicle under the name ''Defender''. Jaguar alleged that this infringed their trade mark under Regulation 207/2009 art.9(2) of the Trade Marks Act 1994, on the basis that it would lead to a position of (1) double identity and (2) likelihood of confusion.

Bombardier only defended the former claim as they had no defence to the infringement action. They issued a counterclaim for partial revocation on the ground of non-use for five years under Section 46(1)(a) of the Trade Marks Act 1994.

They also argued that the trade mark was invalid under Regulation 207/2009 art.52(1)(b) and Section 47, as its scope contained too wide a specification of goods and services. The purpose of this argument was to establish that the trade mark had been registered in bad faith, a tactical move on Bombardier's part.

Issue 1 - Partial Revocation for Non-Use

Bombardier began by arguing that Jaguar Land Rover had only used the DEFENDER mark for part of the class in which it was registered, namely on the single Defender series only, despite being registered for ''Land Vehicles; Motor vehicles; motor land vehicles; parts and fittings for vehicles''.

However, the defendant could not attack the EU trade mark for non-use. It was filed in 2014 and the five-year period had not elapsed. The judge therefore did not consider the matter any further, as even if the UK trade mark were to be revoked the EU claim would still lie.

Issue 2 - The UK Act vs the EU Regulation - Partial Revocation on grounds of bad faith

Bombardier alleged that Jaguar Land Rover had made their application in bad faith, on the basis that they did not intend to use the mark DEFENDER for any other land or motor vehicle except to the models they had applied it to.

Unlike the domestic Trade Marks Act 1994 which requires an applicant for registration of a UK trade mark to make a declaration of use or intention under Section 32(2), the EU Regulation does not require that the applicant must be using or have a bona fide intention to use a trade mark. Therefore, invalidity on the grounds of bad faith could not be established in respect of the EU trade mark.

Nugee J clearly felt somewhat constrained as there was a conflict between the UK Act and the EU regulation. He referred to comments made by Jacob J, who in Laboratoire De La Mer Trade Marks [2005] EWCA Civ 978 said that ''there is simply no deterrent to applicants seeking very wide specifications of goods or services…with all the greater potential for conflict that may give rise to''. He then went on to say that it would be a strange position for somebody to be able to ''register a mark when he has no intention whatsoever of using it''.

However, Nugee J went on to say that because the matter was concerned with the Regulation, the Court was bound by it by virtue of Section 3(1) and Schedule 1 of the European Communities Act 1972 and Article 19(1) of the Treaty on the European Union.

Issue 3 - Was Jaguar in bad faith?

Nugee J analysed the legislation and the relevant authorities, and arrived at the conclusion that ''neither the Regulation nor the case law provides a basis that would enable the court to find that there is bad faith in view of the size of the list of goods and services in the application''. There, the partial revocation claim on the grounds of bad faith failed, affording no defence to the double identity infringement.

Issue 4 - Was the EU application made in bad faith?

Due to the ''expressions of disquiet'' of other judges, Nugee J then felt he had to consider what is exactly is meant by bad faith for the purposes of EU trade mark law, and particularly whether Jaguar was in bad faith in this respect.

In the case of Trillium (Case C000053447/1, March 28, 2000), the Cancellation Division helpfully defined bad faith for these purposes as ''the opposite of good faith''. Although that provides an inadequate consolation as to its meaning, they went further, explaining that it ''generally implies or involves, but is not limited to, actual or constructive fraud, or a design to mislead or deceive''.

Nugee J then went on to highlight the severity of a claim of bad faith and that the burden is on the defendant (the accuser) to prove it. Where a defendant seeks to establish that a claimant has acted in bad faith by applying for an unduly broad specification but is unable to establish a narrower specification which the claimant should have registered, the accusation will be ''manifestly unsustainable''. Despite attempts to do so, Bombardier could not establish a narrower specification, and as a result their claim failed.

Jaguar Land Rover Ltd v Bombardier Recreational Products Inc [2016] EWHC B37 (Ch) (08 November 2016)