The colour purple

Cadbury UK Ltd v The Comptroller General of Patents Designs And Trade Marks [2018] EWCA Civ 2715 (05 December 2018) is an unedifying case. It is the latest skirmish in the war over the colour purple - not the Pullitzer Prize winning novel of that name by Alice Walker, nor the film made from it by Stephen Speilberg, but the colour of the packaging applied to Cadbury's chocolate, Pantone shade 2685C. It has not yet come to rival the Budweiser 'Hundred Years War' (per Jacob LJ - and BTW, if I may digress slightly, if you have not seen this wonderful article by Brentan O'Toole in the Irish Times of 3 February 2018, conveying the reassuring message that Brexit is not the maddest thing England has ever done, do read it) but it has certainly exceeded the duration of the Seven Years War, and is beginning to approach the duration of the Thirty Years War.

The belligerants in the conflict are Cadbury (which became part of the Kraft empire while the war was raging) and Nestlé, partly through their acquisition some time ago of Rowntrees. The Comptroller General is perhaps cast in the role of a UN peacekeeping force. A second front in the war opened up within the last decade, the territory being fought over there being the shape of the Kit-Kat chocolate wafer bar (a product which I have always considered fatally flawed for the simple reason that there is boring wafer concealed in what would otherwise be a satisfying lump of chocolate, so why is it even worth arguing about?). Although I have not checked, and it would be futile to speculate about the motives of the parties (entertaining, though), there does seem to be a lot of tit for tat involved here.

The Court of Appeal was asked to rule on whether it was permissible for Cadbury to re-categorise their colour trade mark, 2020876A, as a series of trade marks. Their wish to do this gives a striking illustration of how tricky it sometimes is to keep up with the constant changes to trade mark law and practice. The application claimed that the trade mark 'consists of the colour purple'. Then the Registrar (who is also the Comptroller General) promulgated guidance on how to draft a colour trade mark application. In line with this guidance, Cadbury sought to amend their application (which was still pending) to add the words 'as shown applied to the packaging or labelling of goods covered by the registration'. The registrar replied on 9 September 1997 suggesting instead that the description (I think 'representation' is the correct word, going by the statute, though I would also argue that what the words are is in fact a description not a representation, which should to my mind be enough to knock the whole thing on the head) of the mark be amended to read: 'The mark consists of the colour purple, as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods.' The conjunction 'or' seems to justify me in characterising this as a two-legged formulation.

Cadbury didn't like the word 'predominant', but accepted it - until the Court of Appeal upheld an opposition to another similar registration, in Société des Produits Nestlé SA v Cadbury UK Limited [2013] EWCA Civ 1174 ("Cadbury 1"). The words used in the registration did not represent a sign, they represented an almost infinite number of signs of which purple was only the predominant element. So Cadbury applied to have the registration changed into a two-part series of trade marks, so they could then surrender the second one - the one that used the word 'predominant'. Retaining the first leg would suffice for most purposes, and the similarlity-plus-likelihood-of-confusion test for infringement would take care of marginal cases.

The problem was that you cannot alter a trade mark after registration. It could be surrendered in part, but ony in respect of some of the goods and services for which it is registered - not for part of the description or representation of the trade mark. If however the trade mark could be treated as a two-part series, it would be possible to delete one part of it. Unfortunately, even when the Registrar suggested amendments to the application Cadbury had not opted to make it a series trade mark (and you can't blame them, as the problem that eventually emerged was unforseen). Could it just be treated as a series? After all, that description reads like a description of a series of trade marks. But the Court of Appeal (Floyd LJ giving the judgment of the Court) took the view that this would be a fiction - that the application was to register a single trade mark, which did not meet the requirements for clarity and precision. It looks to me like a bold attempt to rewrite history to save the trade mark - perhaps tabula in naufragio is a better expression, and certainly one that I'd like to see used a bit more often.

No copyright in taste: Outbreak of common sense at Court of Justice

The Court of Justice has today handed down its judgement in Levola Hengelo [2018] EUECJ C-310/17 (13 November 2018), holding that the taste of cheese spread is not a copyright work. Why should it even have had to consider the matter? In UK copyright law it would surely have been disposed of very quickly, as taste does not fall into any of the categories of copyright work set out in the 1988 Act. But the UK is unusual among EU Member States in having a "closed list" approach to copyright works - more often, in the civil law world, the scope of copyright protection is not so constrained, which is how perfumes have achieved copyright protection in come countries. The Court of Justice has previously threatened (in Case C-393/09 Bezpečnostní softwarová asociace –Svaz softwarové ochrany v Ministerstvo kultury ("BSA")) to make the open approach EU-wide, so that whatever an individual might create will receive protection, but the present judgment neatly sidesteps that issue (or perhaps more accurately does not have to consider it) - of which more later.

The concept of a "work" is used in EU copyright legislation (in particular in the Information Society directive, 2001/29), but not defined. This invites an activist court to make up its own definition: "Accordingly, in view of the need for a uniform application of EU law and the principle of equality, that concept must normally be given an autonomous and uniform interpretation throughout the European Union (see, to that effect, judgments of 16 July 2009, Infopaq International, C-5/08, EU:C:2009:465, paragraphs 27 and 28, and of 3 September 2014, Deckmyn and Vrijheidsfonds, C-201/13, EU:C:2014:2132, paragraphs14 and 15)."

In the two cases it cites there, the Court decided that copyright works must be their authors' own intellectual creation, thus at a stroke making copyright much narrower than it had been - in the UK, at least. Not a bad outcome, to my mind, although the reasoning might not convince you. Here, the Court could have interpreted the word "work" widely: the only guidance it had was from Berne, which extends copyright protection to authors' literary and artistic works, and the TRIPS agreement and the WIPO copyright treaty, which tell us that expression not ideas is what copyright protects (which is IMHO another way of saying that copyright protects works).

However, very sensibly, the Court was not about to bring tastes within the scope of copyright protection. It told us that there are two cumulative conditions for something to be considered a "work":

36      First, the subject matter concerned must be original in the sense that it is the author’s own intellectual creation (judgment of 4 October 2011, Football Association Premier League and Others, C-403/08 and C-429/08, EU:C:2011:631, paragraph 97 and the case-law cited).
37      Secondly, only something which is the expression of the author’s own intellectual creation may be classified as a ‘work’ within the meaning of Directive 2001/29 (see, to that effect, judgments of 16 July 2009, Infopaq International, C-5/08, EU:C:2009:465, paragraph 39, and of 4 October 2011, Football Association Premier League and Others, C-403/08 and C-429/08, EU:C:2011:631, paragraph 159). [Emphasis added.]

The idea/expression dichotomy, which dictates that only expression can be protected by copyright, means that a work must be "expressed in a manner which makes it identifiable with sufficient precision and objectivity" - language adopted for the present case by Advocate General Wathelet from the Court of Justice's landmark decision in Sieckmann. The Court refrained from mentioning that case by name, which (as it is of course a trade mark case - although it was smell trade mark, so there is a connection) is a blessing - it gives us one less thing to worry about. Conceptually it's a sound approach, I think, but the idea that it rests on a precedent from another area of law is a bit uncomfortable.

Taste, like olfactory trade marks, cannot be pinned down with sufficient precision and objectivity and therefore cannot be a copyright work. Thank goodness. And thus the Court avoids the issue of closed and open lists of copyright works. It didn't even have to mention BSA, which remains a threat to our approach to copyright but not one that will allow cheese flavours to enter the copyright system.

Why?

Magical properties have long been ascribed to intellectual property rights - but I find that the situation is not as recent a development as I thought. In the trade marks world, one might date the explosion of interest in protecting every little aspect of a business's branding for the widest possible range of goods and services to the advent of the Trade Marks Act 1994 (and the Community, now EU, trade mark regulation), but I can now date it back to at least 1926.

My favourite pointless trade mark has long been EU trade mark 5238599 ROYAL MARINE COMMANDO registered for an extraordinary range of goods including, to pick one absurdity at random, bird tables. Although 5338959 is actually even more pointless, being almost identical to the earlier one, with some exiguous changes to the specification of goods and services (it adds souvenir plastic bags and paper hats, for example, and the spelling of "napking rings" [sic] is corrected). This is what we pay our taxes for.

Back in 1926, in Weimar Germany, matters were a great deal more serious. The Roter Frontkämpferbund was a workers’ self-defence organisation founded in 1924 and active, in later years illegally, until 1933. The organization was founded by the Communist Party of Germany in response to the growing activity of militarized fascist organizations, although membership was not limited to Party members (The Great Soviet Encyclopedia, 3rd Edition (1970-1979)). Its symbol was this surprisingly modern-looking clenched fist.

This is not the first example of the use of the clenched-fist symbol which later became ubiquitous among left-wing (not just Communist) groups (see The Communist pedigree of the clenched-fist salute courtesy of American Opinion Publishing, Inc. via The Free Library): it dates back to the French Revolution, and was also used in the revolutions of 1848 and at the First and Second Internationals. But this is the first instance of it achieving a surprising degree of bourgeois respectablity: on 1 March 1926 it was registered as a trade mark in Germany. (I have not been able to work out how to find details of Weimar Republic trade marks, and the German Patent and Trade Mark Office (DPMA.de) doesn't seem to offer such historical information.)

Why on earth register it as a trade mark? Not because the German Communist Party wanted to use it for a range of merchandise like that now purveyed from the Redbubble.com website, such as this nice laptop skin. (Redbubble is a site through which independent artists sell their designs, so the choice of the RFT logo seems to be nothing to do with them, and there also appears to be no political significance to the name of the site.) Using trade mark rights against other anti-Nazi organisations in Germany at that time would have demonstrated a reprehensible lack of solidarity. Suing political opponents for infringement if they used the trade mark would be a waste of time, and anyway what's the point of being paramilitaries if you fight your opponents in the court system? The French left adopted the symbol after the dissolution of the Weimar Republic, but there probably wasn't anyone in a position to grant them a licence even if they had registered a French trade mark (or an International trade mark - wouldn't that have been appropriate - as Germany had signed up the Madrid Agreement, to which France had been a party since its inception in 1892, in 1922). Since when, of course, it has become - perhaps - a generic symbol for everything left-wing, and therefore unsuitable for use as a trade mark on its own (I looked for other clenched-fist trade marks but not very diligently, as it could have occupied a lot of time: I expect that if there are any registered, or any unregistered ones, they will have verbal elements too, which is a pretty important matter for any political movement.)

What, I wonder, would Karl Marx have thought? Turning a symbol of working-class solidarity into a piece of property would (I hope) have rankled with him, but I hope he might have appreciated the benefits of taking advantage of bourgeois or capitalist (which?) trade mark laws to protect something of value to the proletariat - an important element in the class struggle, indeed. But that's not to say that trade mark protection per se would have advanced the cause very much.

.eu domain names after UK withdrawal

Some 317,000 domain names in the .eu top level domain (TLD) are registered to UK holders, who look likely to be inconvenienced (at least) by the UK's withdrawal from the EU. The regulatory framework for the .eu TLD, principally Regulation (EC) No 733/2002, does not permit .eu domain names to be registered by non-EU registrants, as Article 4(2)(b) (as interpreted by the Court of Justice in Case C-276/11 Pie Optiek) makes clear. The Commission's Notice to Stakeholders dated 27 March 2018 makes clear that "[a]s of the withdrawal date, undertakings and organisations that are established in the United Kingdom but not in the EU and natural persons who reside in the United Kingdom will no longer be eligible to register .eu domain names or, if they are .eu registrants, to renew .eu domain names registered before the withdrawal date." So that seems like three different ways to say the same thing.

UK registrants will not be eligible to have .eu domain name registrations after E-Day. They will neither be able to register nor renew them. It is not clear whether they will be able to hang on to them until they become due for renewal: EurID can revoke registrations on its own initiative but there are doubts about whether it has sufficient capacity to do much about so many registrations.

There are further ramifications for the .eu TLD arising from the UK's withdrawal. UK rights will no longer count against bad faith registrations - so UK registered trade marks will not give protection against others registering .eu domain names. So long as businesses maintain EU trade marks as well as UK ones, this will not be a problem, but it could be a persuasive reason for registering more trade marks.

Finally, agreements with registrars handling .eu domain registrations will no longer be able to designate UK law, courts, or dispute bodies in their dispute resolution procedures. UK-based registrars will be excluded from handling .eu TLD registrations anyway, but for other registrars who are still in business after E-day this will mean that they might have to change their contract terms.

Exhaustion of trade mark rights after B****t

If and when the UK crashes out of the EU (and whatever agreement is made to soften the blow, it will be a crash, certainly as far as trade marks are concerned) the Trade Marks Act 1992 will not be unchanged. The European Union (Withdrawal) Act 2018 sees to it that the government will be able to change it to take account of the new circumstances - using what have come to be referred to as Henry VIII powers, after that paragon of democracy and due process. One aspect of huge volumes of legislation that will need attention is that the statute book is peppered with references to the European Union, which when they were written included the UK. So, as in the case of public lending right about which I wrote the other day, it might be necessary to change it to "UK and EU". More often, I suppose, it will be changed from "EU" to "UK" - after all, that's what the Will of the People asked for (American readers please note, that statement is heavy with irony).

Section 12 says that the trade mark owner's rights are exhausted when the goods have been placed on the market in the European Economic Area by the trade mark owner or with their consent. Within a single market that's an important exception to the general idea of trade mark protection (or any other form of IP, come to that). So from E-day, or perhaps from the end of the transition period, section 12 should refer to placing the goods on the market in the UK.

Or must it? It's not many years ago - OK, it is quite a few years ago, but it's within living memory - that the UK government thought it would be a nice idea to replace the EU-exhaustion rule with an International-exhaustion one - so if the trade mark owner had placed the goods on the market anywhere in the world they would be unable to resist parallel imports into the EU. The government's idea seemed to be that this would ensure cheap designer clothes for the masses, who would then re-elect it. Our EU partners were almost unanimous in declining to support the UK government in this - as I recall, only Sweden agreed. But after withdrawal we won't have to worry what the EU27 (or the EEA members) think, and given that the government will be casting around for some benefit to highlight to the electorate I have a horrible feeling that this will be back on the agenda.

Trade marks after B****t

If and when the UK leaves the EU, which still cannot be considered a certainty, trade mark practice will change dramatically. The law will remain mostly unchanged, as having implemented the trade marks directive the Trade Marks Act 1992 stands on its own merits, but this conceals some radical changes to the way UK trade mark owners will have to protect themselves. While the directive will survive in the guise of the Act, the same is not true of the EU trade marks regulation: what will happen there will depend on the terms on which the UK leaves.

The draft withdrawal agreement covers much of the ground, of course, but it's just that: a draft. Every day the chances of a "no deal" departure seem to grow, so while it's obviously important to consider the draft agreement we've got to remember that the UK could still be crashing out with no agreement on these important points.

From "exit day", 29 March 2019 (the name comes from the European Union (Withdrawal) Act 2018, a surprisingly concise piece of legislation considering it rewrites most of the statute book), EU trade marks (and Registered Community Designs, a topic for another day) will cease to give protection here. That's pretty obvious. According to the draft agreement, a magical process will be put in place to carve out from existing EU trade marks the rights that apply in the UK, creating equivalent registered and enforceable rights or "corresponding" UK trade marks and the government (in the draft withdrawal agreement) promises that this will be without charge. Whether the temptation to raise some revenue from the exercise proves too much, only time will tell.

Non-UK owners of corresponding trade marks will, presumably, need a correspondence address in the UK: and by the same token UK owners of EU trade marks will need correspondence addresses in the EU27. Of course before red tape can be abolished more has to be created, and additional costs must be imposed on business before they can enjoy savings! And UK practitioners will no longer be able to represent clients before the EUIPO, so clients will need new representatives and will, of course, incur additional expenses. The UK professions will lose important export business, too, and being deprived of the right to pursue part of my practice is enough to make me unhappy, and justifiably I think.

EU trade mark applications that remain pending on E-Day will not be dealt with automatically. Corresponding trade marks will not be available - UK trade marks will have to be obtained separately. Applicants will be given a nine-month priority period during which they will be able to file in the UK and claim priority from the earlier EU trade mark application. One thing that might help trade mark owners here is that if their EU application faces a potential opposition but is OK in the UK, they can wait and take advantage of the priority period to file a UK application.

If an EU trade mark is subject to invalidation or revocation proceedings on exit day, and is later cancelled, the corresponding trade mark rights in the UK will be lost too unless the grounds for cancellation do not apply in the UK (which might be because there is a conflicting trade mark in Malta or the trade mark is descriptive in Estonian, or something like that which would count against an EU trade mark but not a UK one). New secondary legislation will be needed to achieve this. Where the EU trade mark from which the corresponding trade mark is derived enjoys priority from an earlier trade mark, or has the seniority of an earlier UK trade mark (this refers to the process by which trade mark owners were allowed effectively to backdate their EU trade mark to the date of national trade marks, so they could then allow them to lapse - which would never have been a great idea, in fact) the corresponding trade mark will benefit from the priority or seniority.

What if the EU trade mark has not been used in the UK in the past five years? Then it will be immune to challenge on those grounds until the end of the transition period (31 December 2020). Similarly, during the transition period owners of EU trade marks will be able to rely on a reputation in the EU for the purposes of UK infringement proceedings, but after the end of the transition period their reputation will have to be in the UK.

I have been advising clients that it would be a good idea to go for UK national trade marks even if they have EU ones for some time already. The application of the rules about use and reputations if the trade mark has not been used widely in the EU make relying on UK trade marks rather uncertain already, and withdrawal is not going to make it any easier.

There are questions still to be dealt with concerning the treatment in the UK of internationals designating the EU, especially if they have not been granted protection by E-Day. These are for the UK to sort out - nothing to do with Brussels.

One aspect of the Trade Marks Act which will change is section 12, which deals with exhaustion of trade mark rights. That's a topic for another posting, I think.

Brand extension: A step too far?

The news (here in The Guardian) that Tesla is facing competition is, at first glance, probably welcome. Anything that takes Elon Musk down a peg or two can't be a bad thing. But the competition comes from an unexpected quarter: the putative manufacturer is Kalashnikov, a brand whose values do not seem at first sight to be particularly congruent with the electric vehicle field. Can the fearsome reputation that the Kalashnikov brand has undoubtedly accumulated translate into this new field?

India: Use of a trade name similar to a trade mark does not necessarily constitute infringement

In a recent Trademark infringement matter, the Delhi High Court has held that in order to qualify as infringement under Section 29(5) of the Trademarks Act, 1999 (“Act”) there has to be exact use of the registered mark and mere use of a prefix/suffix would not amount to infringement. The Court was hearing a trademark infringement matter wherein the defendant had used a word “MERCYKIND” as part of its trade name which was allegedly similar to that of Plaintiff’s registered trademark “Mankind”.

BACKGROUND

Mankind Pharma Ltd., one of India’s largest Pharmaceutical Company (the “plaintiff”) instituted a Trademark Infringement suit seeking an injunction against Chandra Mani Tiwari and Mercykind Pharmaceuticals Pvt. Ltd[i]., for infringing its registered trademark “MANKIND” and a series of other marks with the suffix/prefix “KIND” and for passing off their business/goods by adopting and using the trade name “MERCYKIND PHARMACEUTICAL PRIVATE LIMITED”.

While passing the order, the Court mentioned that the registered trademark “MANKIND” would be infringed under Section 29(5), if the defendants were found to be using “MANKIND” as part of their trade name. Here, the defendants are using “MERCYKIND” as part of their trade/corporate name which is not a registered trademark of the plaintiff. Thus, there would have been infringement under Section 29(5), if the defendants, as part of their trade name, had used “MANKIND”. Merely because the name of the defendant’s Company is deceptively similar to the plaintiff’s trademark “MANKIND” or any other registered trademarks of the plaintiff with “KIND” as prefix or suffix, it does not amount to infringement under Section 29(5).

This case makes an interesting read for the following reasons:

He who comes into equity must come with clean hands:

In this case, the Court took a strong objection to the fact that the plaintiff had concealed certain information from the Court which the Court considered to be relevant and had weightage in the matter.

The Plaintiff, not so long ago while responding to certain Trademark Examination Report for registration of two of their trademarks had taken a stand that “ATORVAKIND” (plaintiff’s mark) is different from “ATORKIND”; and “STARKIND” (plaintiff’s mark) is different from other cited marks such as “KINDERPLEX”, “KINDERBON”, “KINDERCAL”, “KINDIGEST”, “STAR-VIT”, “STAR”, “STARNET” and “STARCET”. The Court stated that such conduct of the plaintiff disentitles them to the equitable relief. Though the plaintiff contended that the statement made by the advocates for the plaintiff in the communications to the Trademark Registry is a submission of law made in the context and the plaintiff cannot be bound, however the Court refuted the plea and stated that the said contention would not make the fact “irrelevant”.

“Use” of a trade mark:

Since the Plaintiff had alleged infringement under sub-sections (1) to (4) of Section 29, the Court took cognizance of the fact and considered to test whether the defendants were really using “MERCYKIND” as a trade mark.  

Section 29(6) of the Act defines the “use” of the mark: a person is considered to be using a registered mark, if, in particular, he—

(a) affixes it to goods or the packaging thereof;

(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;

(c) imports or exports goods under the mark; or

(d) uses the registered trade mark on business papers or in advertising.”

In this case the primary objection of the plaintiff was the word “MERCYKIND” which was being used by the defendants. However, upon observation, the Court found that the word “MERCYKIND” was used only in the name of the defendant Company. The Plaintiff had also contended that the defendants are carrying on the business in the same goods as the plaintiff, under the marks “MERCYMOX”, “MERCYCOUGH”, “MERCYCOPE”, etc. The Court observed that the issue was about the usage of the word “MERCYKIND”, which in fact was not the trade mark of the defendants and was also not used as a trade mark by the defendants. Once, it was established that the defendant’s trademarks were words with the mere prefix “MERCY”, the question of “MERCYKIND” also being the trade mark of the defendants with respect to the same goods of the defendants would not arise. Therefore, it was observed by the Court that “MERCYKIND” was not the trade mark of the defendants, therefore, Section 29(1) to (4) do not apply in this case.

Infringement of a trademark under Section 29(5):

The Court further determined the alleged infringement test under Section 29(5) of the Act, which is: “A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.”

What has been constituted as infringement under Section 29(5) is use of the registered trade mark as trade name or part of the trade name. Thus, the Court held that there would have been infringement under Section 29(5), if the defendants had used the plaintiff’s registered Trademark “MANKIND” as part of their trade name. Merely because “MERCYKIND” is the name of defendant Company, which may be deceptively similar to “MANKIND” or any other registered trade mark of plaintiff with “KIND” as prefix or suffix, would not amount to infringement under Section 29(5). Therefore, it was held that the use of a trade name similar or deceptively similar to the registered trade mark would not constitute infringement under Section 29(5). Thus, prima facie, no case of infringement within the meaning of Section 29 is made out.

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[i] http://delhihighcourt.nic.in/writereaddata/upload/Announcements/AnnouncementFile_8J7VKAUHFZD.PDF

https://www.livelaw.in/use-of-a-trade-name-similar-or-deceptively-similar-to-the-registered-trade-mark-would-not-constitute-infringement-under-section-295-of-trade-marks-act-delhi-hc-read-judgment/

No B****t dividend for authors

In the Public Lending Right Scheme 1982 (Amendment) (EU Exit) Regulations 2018 which were published on 13 August (they have not yet been laid before Parliament), the Government has paved the way for public lending right to carry on unchanged after the UK leaves the EU. As PLR is not a creature of EU law, you might wonder why this is necessary: the answer is that the Regulations will ensure that UK-resident authors will still be eligible to register for PLR after the UK is no longer a member of the EEA. This requires an amendment of the definition of "eligible person", effected by these regulations - made under the Henry VIII powers given by the European Union (Withdrawal) Act 2018.

The amendment inserts the words "the United Kingdom or" before "EEA", meaning that the geographical extent of the scheme remains the same - authors resident in other EEA countries (or, from "exit day", authors in EEA countries) will be eligible. Since PLR is distributed out of a set fund, the amount available per loan depends on how many eligible authors there are. Leaving the EU might have meant a huge reduction in their numbers - but it won't, and my PLR statements will probably continue to tell me that I haven't earned enough to justify the writing of a cheque. Still, it's not the sort of windfall I'd have wanted.

Sir Cliff Richard's expectation of privacy

I hope that the law on privacy is drifting away from its origins in the law on breach of confidence, if only for the selfish reason that I don't enjoy trying to lecture on or write about privacy as if it were part of the intellectual property world. Too often it seems to be concerned with little-known celebrities (spot the oxymoron) seeking to cover up their failings. But the chances of it appearing in exam papers just got a lot bigger than they already were.

Richard v The British Broadcasting Corporation (BBC) & Anor [2018] EWHC 1837 (Ch) (18 July 2018), a case which involved a genuine celebrity and a grievance that everyone should be able to acknowledge, suggests to me that the right to privacy is diverging from the law on breach of confidence, and I hope it will work out well for both areas of law. The claim was brought on the basis of Article 8 of the European Convention on Human Rights and also invoked the Data Protection Act 1998. Article 8 of course has to be balanced against Article 10, freedom of expression. So the questions for the court were, did Sir Cliff have a reasonable expectation of privacy in respect of the events reported, and was there a public interest in publishing the facts such that the BBC's Article 10 rights would prevail?

It's hard to imagine a more egregious (yes, that's my word of the day) invasion of one's privacy than to have the One O'clock News showing aerial footage of police officers swarming all over your house. But that's not what the court had to consider: only if Sir Cliff had a reasonable expectation of privacy would that have mattered. Mann J held that he did indeed have such an expectation, so he went on to balance the BBC's rights against that. The judgment contains a lengthy review of the various factors to be taken into account, but concludes that Sir Cliff's rights were, in effect, stronger than the BBC's. My reading of the judgment is that a highly persuasive part of this was the egregious nature of the breach. Some invasions of privacy can be regarded as minor, no doubt, but this was not one of them.

The judgment contains a long section devoted to the application of the rules about damages, and also a lot about contributions between the defendants. Life is not too short, but it is too full, to read all that at the moment. It contains nothing more about data protection, other than to mention it as part of the pleadings: damages would not be recovered twice over if there were a data protection breach, so perhaps the point is pretty well moot anyway, but I can't immediately see anything in the facts that would be actionable. What personal data were involved? What did the BBC or South Yorks Police do with any such data? Data protection legislation is obviously an important part of the scheme of protection for an individual's privacy, but this doesn't seem to be a case in which it adds anything.

Yesterday at Prime Minister's Questions, Anna Soubry MP (whom I knew quite well, many years ago) asked for government support for a bill she had introduced (if it's a new one, it seems to be in the same terms as one she introduced in 2010) to protect the privacy of people being investigated by the police. She proposed that it be known as Cliff's Law. Sorry, Anna, but the Copyright and Duration of Rights in Performances Regulations 2013 (SI 2013/1782) got there first.

The Prime Minister made the point (which has also been made by others, including The Guardian here) that revealing names can encourage other victims to come forward. (It can also, of course, encourage non-victims to take a chance too, but that's another issue.) That's hard to argue with, but in the context of the Richard case surely one could say that the suspect's reasonable or legitimate expectation of privacy, which is intact while the police are searching his house for evidence, is not nearly so strong when the police have begun to assemble a case, particularly if the case is a strong one. If there is (say) a reasonable chance that there are more victims who have not come forward, that further dilutes the expectation of privacy. I am no human rights lawyer, but this situation seems to be covered by Article 8.2, a carve-out for law enforcement purposes, and Article 10 is not the right provision on which to rely for this purpose - although I suppose the media would have to be able to rely on it even if 8.2 allowed the police to name names.

Data protection and the redistribution of public funds

Data protection. You can't get away from it. I am spending nearly all my working hours at present helping clients comply with the General Data Protection Regulation - a piece of legislation that, however well-meaning, is crazily technical and obscure (as I remarked in a post a little while ago). Even my morning scan of The Guardian's website has thrown up a data protection story this morning.

The story (and I don't use the word to suggest that it is made up!) says that the ICO has fined the independent inquiry into child sexual abuse £200,000 for revealing a number of email addresses from which individuals could be identified - the email was sent to 90 participants in the inquiry, 52 of whom were identified by name in their address, and "vulnerable people were placed at risk", although the report doesn't say how - it depends in part on where the email went, I suppose. One complainant was reported to be very distressed, which I don't think requires any explanation. This all seems to me to be exactly what data protection law is there to deal with.

How did this disclosure come about? By a failure to use the bcc box for email addresses. So simple, so damaging, so expensive. It doesn't seem the most egregious breach of the law, but the potential consequences are probably completely out of proportion to the mistake, and equally out of proportion to the ease of making sure it didn't happen. Human error can be largely avoided if humans are trained in how to do their jobs - but I've come across so many instances where people have been ignorant of the importance of using bcc.

A further twist is that the IICSA hired an external provider - a data processor in the terminology of the Data Protection Act 1998, which although now repealed and replaced was the governing law at the time - to handle its mailing list, and in doing so breached its own privacy notice. There's an object lesson in the importance of keeping these things under review and making sure you aren't doing things with people's data that you haven't told them you are doing.

The IICSA is a statutory inquiry under the Inquiries Act 2005, although it started life as a panel inquiry and has had a chequered history, which I think it's fair to say just became even more chequered. In the year ending 31 March 2017, according to its financial report, it spent £20.8 million. The data protection penalty will therefore be a substantial part of its spending, although the report says that its "full year budget" for the financial year ending 2017 was £30.94 million, which I must say sounds rather odd but I don't feel I need to look into it for the purpose of this blog. My point is that it's a lot of public money, and even when it is just being redistributed to another emanation of the state it is a pretty appalling state of affairs. Even if the inquiry isn't spending its entire budget, I'd prefer that its money was going on looking into the important matters that it was set up to deal with rather than filling the coffers of the Information Commissioner.

One final point: under the new legislation, the very wonderful General Data Protection Regulation, the ICO is able to levy much larger financial penalties. Perhaps, with a little effort, the Information Commissioner could appropriate the entirety of the UK's public spending! Only if public bodies continue to make such appalling errors, and I hope the lesson is not lost on them.

The essence of a trade mark

The draft agreement I am currently reviewing - I won't disclose more about it - contains a definition of "Corporate Design" which has a nice form of words in it: "[T]he official design of the logo and name of the [redacted] brand by which the brand's personality is brought to life in communication." I wonder why the drafter of the trade marks directive and the regulation on the EU trade mark didn't see fit to put it that way? It's not exactly poetic, being (I think) spoilt by the last couple of words, which don't seem to add anything, but it's much closer to poetry than most EU legislation.

"Have you not considered Recital 171?"

This week, few lawyers have the luxury of not having to be data protection experts, which is why the subject is intruding into my IP blog. Thank goodness it will all be over on Friday and we can settle down to working with the General Data Protection Regulation, until data protection law is repatriated and instead we have the Data Protection Act 2018 and "the Applied GDPR".

We are all acutely aware that many data controllers are taking the opportunity to refresh consents from the people whose data they publish. It's a great opportunity to do some housekeeping, of course, but not all the consents are necessary, nor do they need to be refreshed. First of all, consent should rarely be the lawful basis of choice for data processors: the legislation offers several other possibilities, of which "legitimate interests" is probably the most useful. The data processor's legitimate interests in processing personal data must, it is true, be balanced against the interests and fundamental rights and freedoms of the data subject, which may override them - thus removing the lawful basis: so legitimate interests per se are not a lawful basis. But when will the data subject's interests (etcetera) override them? How long is a piece of string? It's questions like this that make advising on data protection like nailing jelly to a wall.

For data controllers who still feel the need for consent, it's not always necessary to get it afresh at this point, as this article from The Guardian reports. Consent obtained under the old law, provided it meets the conditions of the GDPR, still works. How do we know? Because (apart from common sense) Recital 171 to the Regulation tells us so. And that, I think, tells us a great deal about this almost impenetrable piece of legislation ... (What do you mean, you gave up before you got to Recital 171?)

Interpretation or truth?

Nex week there will be a Luxury Law summit in London, I discover. The concept of "luxury law" baffles me, but I guess I am looking at it wrongly - the law that applies to the luxury end of the goods and services market, not a particularly soft, comfortable, exclusive and expensive set of rules. Although come to think of it, the law is a luxury beyond the means of most people. The wonderful quote from Anatole France, 'The law, in its majestic equality, forbids rich and poor alike to sleep under bridges, to beg in the streets, and to steal their bread', doesn't quite say what I am getting at here but as it had come to mind I could not resist the temptation to repeat it. Mr Justice Darling's famous dictum, “The law courts of England are open to all men like the doors of the Ritz Hotel”, is more apposite but a bit of a cliché.

In an article on the Internet intended (I guess) to generate interest in the Luxury Law summit, Arrigo Cipriani, described as "one of the the elder statesmen of luxury" (what?), complains that intellectual property law no longer serves the "luxury industry" - an industry, presumably, that produces not luxury cars or clothes or perfumes or hotel accommodation or meals, but just inchoate luxury. The headline is even more alarming: "Interpretation is trumping truth in copyright law, says Arrigo Cipriani."

Mr Cipriani goes on: "The copyright world has become more and more complicated. The people who write the rules should be professors in mathematics problems rather than copyright law writers. There is too much space given to interpretation and very little space for the truth.”

First, what is his beef about copyright law? He's right that it has become more and more complicated, although I'd say that it's the world that became more complicated and copyright law, to do its job of maintaining a balance between the owners and users of copyright had to follow suit. But how does that affect luxury goods and services? Or is somebody getting copyright and trade marks mixed up? And does the criticism extend to patents and designs?

I should not, I suppose, get too excited about what is little more than a marketing puff (Carlill v Carbolic Smoke Ball Company [1892] EWCA Civ 1) - an attention-grabbing but legally dubious proposition. Instead, I ask you to consider the point that too much emphasis is placed on interpretation and too little on the truth. (I don't think "space" was a particularly helpful concept in the piece.)

So, is there too much emphasis on interpretation? I think not. How can the need to interpret the law (or, for that matter, patent claims) be avoided? Copyright law, perhaps more than any other type of law, needs to develop, and it cannot keep pace with technology unless judges interpret it. In the common law system for certain, and in the civil law system to a lesser extent I guess, the law proceeds by a process of judicial interpretation. It is not the place to look for truth (unless, as I remarked elsewhere, you are reading the law in Exodus or the equivalent in another religion - perhaps a better example is the Golden Rule, found in much the same form in all major religions: "do unto others as you would have them do unto you" could be a satisfactory replacement for the whole of intellectual property law, although it would probably not remove the need for interpretation).

I hesitate to suggest that Mr Cipriani might have been influenced by his family's defeat in Hotel Cipriani Srl & Ors v Cipriani (Grosvenor Street) Ltd & Ors [2010] EWCA Civ 110 (24 February 2010). But that case turned on the court's conservative interpretation of the "own name" defence in trade mark law, and also of the protection by passing of a foreign reputation. It is hopeless to state that the law should not be interpreted, but applied as immutable truth: in the Cipriani case, it seems to me that a bit more in the way of interpretation would have helped the defendants - and perhaps made the decision accord a little better with commercial reality.

On the other hand, the case arose from dealings with names and trade marks which had effectively given a multinational corporation the right to use the family name. In the modern world, that's not uncommon, but isn't it a bit weird? An example, perhaps, of the sort of changing commercial practice that IP law has to keep up with.

Has the difficulty of ascertaining freedom to operate led to a patents arms race?

Reading Boldrin and Levine's "Against Intellectual Monopoly" (Cambidge University Press, 2008, and here), I am struck by a thought that isn't directly related to the authors' arguments against the patent and copyright systems (I expect they will get round to trade marks in due course, although that will have to be on a different basis). Perhaps it is such a banal thought, it isn't even worth putting out here, but I don't recall it being expressed in these terms before so maybe I have something original to say ...

There are so many granted patents in existence (why on earth did I waste time typing "granted"? There are so many patents in existence ...) that "freedom to operate" searches must be little more than a lottery. This may explain why patent owners (in some fields at least) now put their efforts into collecting extensive portfolios so that when (not if) a competitor sues them for infringement they will be able to find a patent which the competitor is infringing in their own portfolio. Then the problem can be dealt with by cross-licensing rather than fighting out the infringement claim in court.

There must also be a problem with unpublished applications (not quite submarine patents but similar) which form an undiscoverable part of the state of the art - they would not show up in "freedom to operate" searches but could prove fatally damaging. The accelerating pace of technological change must make these a bigger and bigger problem, which in turn makes freedom to operate searches even less reliable, and gives further encouragement to alternative defence mechanisms.

Abbreviations, acronyms, and their plurals

Creating a slide show this morning, a task that demands brevity and therefore frequent recourse to abbreviations, I wrote "TMs" for "trade marks". Autocorrect didn't like it, but that was no surprise and I overrode it. Then I wondered whether the correct way to form the plural of an abbreviation wasn't just to add an "s" - should I be adding another "M" (or "m", perhaps)? After all the plural of "p" for page is "pp", and of "op" for work (opus) is "opp". (The use of full points turns out to be another contentious matter.)

In fact The Economist Pocket Style Book (Economist journalists must have bigger-than-average pockets) tells me that the right way to set out an abbreviation is in small capitals, and to use a lower case "s" for plurals. I suppose that in the name of a case (e.g. "Re Le Mans TM") the phrase would have capital initials by virtue of forming part of the title - "title case" is in fact the correct expression for that, I think. And actually the words of the trade mark should be in upper case: Re LE MANS Trade Mark (BL O-012-05, a decision of Richard Arnold QC as he then was). But of course the heading of the decision is in block capitals, although in the body of the decision it is in upper case. None of the three IP textbooks at my right hand have it in the table of cases, so no guidance from there. I could have scanned them for another such decision but life is too short, especially when I can reach up to the top shelf and take down a dusty copy of the 12th edition of Kerly - in which I look up the Perfection case (Crosfield [1910] 1 Ch. 118; 26 R.P.C. 561) and find the trade mark rendered just like that - a capital initial only.

Neither Fowler's Modern English Usage nor The Oxford Style Manual offer any assistance in their entries on abbreviations. The King's English doesn't even have an entry in its index for the topic. The Oxford Dictionary of English Grammar is however more helpful: it tells me that the initial letters of the (main) words of a phrase should appear in upper case, so BBC and OTT get the same treatment, which is not what The Economist prescribed. It goes on to say that "[t]here are a few special written conventions for plurals", of which it gives three: "pp", which is from where I embarked on this little voyage through English grammar, MSS which I was also thinking about, and "ff" for "following pages". Elsewhere, I read that "p" stands not for "page" but for its Latin equivalent, "pagina", and "pp" ("paginae") is an example of a special rule for Latin words or expressions in English usage. ("Op" and "opp" presumably follow the same rule.)

Finally, since it seems that uppercase or small capitals is correct, and an added "s" rather than a doubled last letter is right, should there be an apostrophe? I can see a reason why there should be a difference in the treatment of contractions (e.g. Dr) and true abbreviations, where there is something missing between the initial letter in the abbreviation and the plural "s". But The Oxford Style Guide says just add the "s", so TMs would be correct, and I could have saved myself half an hour or so on this interesting diversion. Maybe some helpful reader will be able to guide me further, but unless I hear otherwise I'll go with TMs.

Interpreting patent claims: Actavis v Eli Lilley

It's now 13 years since Lord Hoffmann told us definitively how to interpret patents claims, in his opinion in Kirin Amgen v Hoechst Marion Roussel [2005] 1 All ER 667. The courts had spent a lot of time pondering how to do what should have been a pretty simple task: judges have always been in the business of finding the meaning of legal documents, and patent claims should never have been much different. Or should they? For many years the courts have eschewed (nice word) a literal interpretation and chosen instead to look at the claims as practical documents written for practical readers.
I have never bought into that view (but who cares what I think?). Patent claims are usually written by highly skilled and trained patent attorneys for other patent attorneys, members of the patent bar and ultimately specialist judges to read. Why should it be necessary to adopt a different rule about interpretation from that which governs the interpretation of, say, conveyances?
I suppose that, centuries ago, when patents for inventions first came before the courts, the judges were able to say "we know how to interpret documents like this: we look at the wording." Only later did the fiction arise that the claims were anything other than highly specialised documents written by and for experts. The idea that patent claims are addressed to some hypothetical individual skilled in the art strikes me as nonsense: what ordinary person, however skilled they might be in the art, ever reads patent claims?
The courts pursued this strange idea through a series of cases, tying themselves in more and more knots. Catnic, for one, should probably have been a professional negligence case - which is not to say that the patent agent who write the claims was necessarily negligent, but it would have been helpful if the courts had considered the point. Then in the Improver case Hoffmann J formulated a series of questions for the judge to ask, which turned into the Protocol Questions when the Protocol on Interpretation of Article 69 (of the EPC), originally dating from 1973, became recognised as the governing document, and in due course Lord Hoffmann put his own Improver Questions out of their misery.
In Activis UK Ltd v Eli Lilley & Co [2017] UKSC 48 (12 July 2017) the claim in issue was a Swiss-style claim for pemetrexed disodium, with vitamin B12, used in the manufacture of a medicament for treating cancer. Actavis sought a declaration that it would not infringe by marketing drugs containing other pemetrexed compounds (for example, with potassium instead of sodium). Arnold J at first instance gave the declaration, and the Court of Appeal upheld him, both following (as they pretty well had to) Kirin Amgen. The Supreme Court, however, allowed Actavis's appeal.
Lord Neuberger (who, remember, is a Oxford chemistry graduate) held that when a court has to consider a possible infringement by a variant, there are two questions that it must ask:

• First, does the variant infringe the claim at issue as a matter of interpretation? If it does, that's all the court has to do.
• If not, ask whether the variant infringes because it varies only in a way, or in ways, which are not material. Put another way, is the variant equivalent to the claimed invention?

Lord Neuberger said that the Improver or Protocol Questions remain useful in finding an answer to the second question, but needed to be changed slightly. They now require the judge to consider

1. whether the variant has a material effect on the way the invention works;
2. whether the notional addressee, on learning what the variant does, would consider it obvious that it would achieve substantially the same result in substantially the same way as the invention; and
3. whether the notional addressee would have uderstood from the language of the claim that the patentee intended strict compliance with the primary meaning to be an essential requirement of the invention.

The courts had previously set their faces against introducing a doctrine of equivalents into UK patent law, but the amendment to the Protocol which introduced Art.2 made this untenable. Potassium was, in effect, equivalent to sodium for the purposes of the patent and Actavis would infringe if they marketed the products about which they asked in the first place.
The further the courts move away from a literal interpretation of patent claims, the less certainty there is for those, like Actavis, who want to operate in the field but also don't want to infringe. One argument - perhaps the argument - against a literal interpretation is that it prevents a patent claim being read in the light of technological developments. But is it right that a patentee who has chosen to specify a sodium compound rather than using broader language (if, of course, they could get away with it) should receive such an extensive, and flexible, monopoly? Perhaps the correct approach would be to regard the discovery that a potassium or some other compound would do the job as leading to an invention in its own right.

Steve Jobs: Trade marks and personal names

The news that two Italian brothers have registered what turn out to be two EU trade marks, one for the name Steve Jobs and the other for a logo comprising the name with the letter J, missing a bite-shaped piece like another well-known logo, illustrates how difficult it is to accommodate celebrities' personal names within the trade mark system. There was a time, long before EU trade marks arrived on the scene, when the Trade Marks Registry in the UK would not have allowed an application for registration of someone else's personal name as a trade mark to proceed without the consent of the owner of the name.

You might think that is how a trade mark system should work, but these Steve Jobs trade marks show the limitations of the law. First, the story tells us that the brothers were surprised that Apple had not registered Steve Jobs's name as a trade mark. But why should Apple have done so? Actually for the very bad reason that if you don't register a trade mark you run the risk of someone else grabbing it - a possibility since the switch from a use-based trade mark registration system, where the register records what distinctive signs businesses are using, to a registration-based system in which the property right comes into existence through registration. When we made that change in the UK in 1994, it put trade mark law on a very different footing - and incidentally condemned small (and not small) businesses to paying lots of fees and lawyers' bills for trade marks that up until then they never really needed to register.

Although there are many personal names of celebrities on the register, there are also examples of celebrities failing to secure registration. There are significant distinctiveness problems, as the Elvis Presley estate and later Sir Alex Ferguson, the Princess of Wales's executors and Corsair Toileteries Ltd who tried to register Jane Austen as a trade mark, found. Celebrities' names are not necessarily perceived as indications of commercial origin: in the case of deceased celebrities, they might be seen as some sort of commemoration.

Apple apparently tried to prevent the trade marks being registered, but without a trade mark of their own they must have been relying on common law rights - and even if Steve Jobs had used his name in trade and thus accumulated goodwill, which doesn't seem to be the way things happened because he adopted the Apple trade mark for his business, that would have been Mr Jobs's goodwill not Apple's (unless it had been assigned to the company). Would his estate have been better-placed to sue? Yes, probably, but still only if it owned some goodwill. Reputation - of which Mr Jobs had plenty - only becomes goodwill when it is used in trade.

A better argument might, perhaps, have been that the trade marks were not applied for in good faith - and that is an argument that I suppose could yet be deployed to have them declared invalid. But that is a very difficult route to take, the facts being hard to prove and the standard probably quite low. So a situation that most ordinary people (which in this context means "not trade mark lawyers") would imagine the law would not allow to arise, might be something that the perceived rightful owner can do nothing about.

Where there's a hit there's a writ

The old saying doesn't work so well now we don't have writs any more, but anyway the litigation reported by the BBC today is taking place under US law. That also means that considering how it might pan out under English law is pretty speculative, but it does serve to illustrate some important points of copyright law.

The story is about the family of a playwright (a Pullitzer Prize winner, Paul Zindel) suing several parties concerned with the film The Shape of Water. The fact that it is tipped to win an Oscar or two goes some way to explaining why it has generated litigation - the simple fact is that if it wasn't a hit, it would not be worth the price of a writ.

The plaintiffs (they still have them in the USA) argue that the film is "in many ways identical" to Mr Zindel's play Let me hear you whisper. The defendants say they never heard of that play, although the article says that there was a TV production of it at about the time the idea of the film was forming in its writer's mind. The writer might have been exposed to it, and it's possible that subconscious copying took place. It's also possible that nothing of the sort happened, and that the "at least 61" ways in which the films are identical are down to the fact that if you tell a story about an aquatic creature kept in a laboratory and its relationship with a cleaner or janitor those similarities are going to happen. Like Hoehling v Universal Studios  618 F.2d 972 (2d Cir. 1980) which turned partly on the point that if you're going to make a film set in Nazi Germany you are bound to have scenes in beer halls and people giving straight-arm salutes.

US copyright law works differently from the way our copyright law works. Because it expressly excludes ideas from protection, US law requires the judge to go through what has become formalised as a three-step process of abstraction, filtration and comparison - to reduce the work to a copyright-protected "golden nugget" before putting it beside the alleged copy to compare the two. The equivelant in our law is the rule that copyright is infringed if the defendant has taken the whole or a substantial part of the work - it all comes down to substantiality at this stage. In other words (and if an American friend should happen to read this I stand to be corrected), US copyright law protects elements of a work which qualify for protection (which are the author's original work, basically) whereas the UK law looks at the work as a whole and asks whether it meets the originality standard, then considers whether a substantial part has been taken. This is a point that I have discussed before on this blog: it seems unlikely that any element which is not the author's original work could be regarded as a substantial part, but this is not an area of the law where everything is set in stone at present.

The news story is by no means a comprehensive disclosure of the facts, so it would be wrong to speculate much about the possible outcome, but an interesting illustration of copyright principles.