Rabbit skin patent refused

An appeals board of the European Patent Office has upheld the refusal of a patent for "rabbit skin comprising biological active substance and its use" on public policy grounds. And, having read the first claim, I heartily approve; more than that, I am appalled not only that the application was ever filed (it was an international application seeking a European patent, by a Chinese pharmaceutical company) but that the invention was even devised. Claim 1 is just ghastly.

Article 53 (a) EPC tells us that European patents will not be granted in respect of (the draftsman must have been paid by the word, otherwise why not just "for"?) inventions the exploitation of which would be contrary to ordre publique or morality. (Note that it's the exploitation of the invention that has to be considered, not the invention itself, or the rights and wrongs of giving it patent protection) The applicant argued that in Decision T19/90, which I would have recognised more easily had the Board referred to it as Onco-Mouse, the suffering of the unfortunate animal had to be weighed against usefulness to mankind, a point reinforced by the EPO's examination guidelines (GII- 4.1) .

Unfortunately the Guidelines and the Board's decision fall into saying "ordre publique and morality", which is probably acceptable of the word "and" is construed disjunctively - but why on earth depart from the clear wording of the Convention? It is plain that the two concepts are independent, and the fact that the guidelines mention anti-personnel mines as an example seems to me to reinforce the distinction. Anyway, it appears clear enough that the Article does not intend that ordre publique and morality be cumulative requirements. But which was engaged in the present case? That isn't clear. The Board, and the Onco-Mouse board before it, seem to have treated ordre publique and morality as synonymous, which I don't think can be correct. Both decisions go on to balance the suffering of animals against the invention's usefulness to mankind - which is appropriate if ordre publique is being considered, because there are competing public policy goals involved, but surely not if you are considering morality, which has to be absolute.

In the end the Board came to what I think (as if anyone cares what I think) is the right decision, albeit perhaps not for the right reason. Its view was that the invention lacked the degree of usefulness needed to outweigh the suffering its exploitation would cause, because while it was the only way to produce the product, there were other products that do the same job. But I do wish it could have got there more directly.

 

That Redskins decision: guest post from Chad Smith

In a precedential decision on June 18, 2014, the United States Trademark Trial and Appeal Board (TTAB) granted a petition for cancellation of six registrations for marks comprising or containing the word REDSKINS, for entertainment services, as used by the Washington Redskins professional football team. Amanda Blackhorse, Marcus Briggs-Cloud, Philip Gover, Jillian Pappan, and Courtney Tsotigh v. Pro-Football, Inc., Cancellation No. 92046185.  The Board found that the registered marks disparaged Native Americans in accordance with Section 2(a) of the Trademark Act of 1946, 15 U.S.C. § 1052(a). Judge Bergsman dissented, concluding that the petitioners had failed to prove disparagement by a preponderance of the evidence.

 

The determination of a disparagement claim under Section 2(a) involves a two-part inquiry: 1) What is the meaning of the term in question, as it appears in the mark and as the mark is used in connection with the identified goods and services identified in the registrations?; 2) Is the meaning of the marks one that may disparage Native Americans?

 

As to the first question, the Board concluded that “the evidence overwhelmingly supports a determination that the term REDSKINS as it appears in the marks retains the meaning Native American.” As to the second question, the petitioner needed to show that the term REDSKINS was disparaging at the time each mark was registered between 1967 and 1990.  The Board concluded that  "a substantial composite of Native Americans found the term REDSKINS to be disparaging in connection with respondent's services during the relevant time frame of 1967-1990.”

 

Having concluded that the six registrations must be cancelled as required by Section 2(a) of the Trademark Act, the Board next turned to the laches defense which was successfully raised by respondent in an earlier related case in 1999. In the first case, Harjo v. Pro Football, Inc., the federal courts overturned the TTAB’s decision to cancel the marks and ultimately ruled that the claims of the Native American petitioners were barred by laches. (Pro-Football, Inc. v. Harjo, 90 USPQ2d 1593 (D.C. Cir. 2009)).  Here, the D.C. Circuit Court of Appeals found that because the first of the Redskin’s trademarks had been registered back in 1967, the petitioner was time-barred from bringing suit finding that the delay was "unusually long by any standard" and "unreasonable in light of the undisputed facts in this case.” The court therefore granted Pro-Football’s renewed summary judgment motion to dismiss the case based on its laches defense.

 

After a brief summary of the previous case and a general discussion of laches, The Board noted that in the current case, each of the petitioners had recently reached the age of majority, the age from which, according to the D.C. Circuit Court of Appeals, laches began to run.  After stating that the petitioner’s “were entitled to assess the situation and determine whether it was in their best interest to file the petition for cancellation and then act in accordance with that assessment,” the Board held that “respondent has shown nothing more than a minimal delay in seeking cancellation” and such a minimal delay was insufficient to support a defense of laches.

 

The decision quickly gained notoriety and much was written about the continued validity and control over the Washington Redskins name.  However, soon after the Board’s decision, the United State Patent and Trademark Office issued a Media Fact Sheet outlining, among other things, 1) the Board does not have the jurisdiction to stop a business from using a mark that has been cancelled; 2) the Board’s decisions are subject to review in federal court, and no canceled trademark is removed from the register until after such a review is complete. Attorneys for The Washington Redskins have already stated that they plan to appeal the Board’s decision so a final ruling on the fate of the six registrations is still many years away.

 

Until then, the Washington Redskins will certainly continue to claim common law protection over the marks and enforce their rights to the exclusive use and ownership over the Redskins name.  However, public opinion is clearly turning against the continued use of the name.  A majority of the United States Senate is already on record opposing the name, as is the President, Minority Leader of the House of Representatives, both co-chairs of the Congressional Native American Caucus, Civil rights and religious leaders, media figures and NFL reporters, as well as high-profile current and former players.

This post was contributed by Chad M. Smith  of Ironmark Law Group PLLC, Seattle, a fellow-member of the international IP-PG network.

Cool branding

In the local branch of Tesco the other day, I was taken with the idea of doing a comparative review of energy drinks, precisely the sort of thing for which I maintain another blog ... especially as I can't write about running on it at present, and writing about running injuries isn't so much fun. Perhaps partly because injury prevents me from running, my energy levels have been low and energy drinks (and foods) have been on my mind. There are limits to how many cappuccinos one can take in a day, although anyone who knew my mother and her daily intake of coffee would wonder how I can have failed so massively to inherit the smallest part of her capacity for the stuff.

Of course, I could just go for the market leader, but (a) I have a predisposition, in all matters, towards the underdog and (b) the leader of this particular market, by dint of certain opposition proceedings directed against a client's Community trade mark application, has forever lost me as a customer (and, pleased though I was at Mark Webber's victory yesterday (that underdog thing again, perhaps), it was very much about his achievement and not that of the team for which he drives). So I picked up four of those oddly small cans in which energy drinks are presented, which perhaps merely serves to emphasise their potency, and have been trying them out and writing tasting notes as I go. In due course I will publish the results on the appropriate blog. But what I want to comment on here is the branding of one of the products.

Now clearly I am not an average consumer, because I don't pick up the look-alike own-label products mistaking them for the branded ones (generally I pick them up because I don't want to pay the prices commanded by the branded ones). Only when I took the third of my sample energy drinks from the fridge did I notice something strange about it. The name on the can was "P***y", and I don't think (before it was bowdlerised for Tesco) it was intended to allude to the IPKat. According to the maker's website, www.pussydrinks.com (Bowdler has no role to play on the Internet), "The drink's pure - it's your mind that's the problem". Indeed it does seem to be made exclusively from natural ingredients, and I can vouch for the fact that it tastes good - none of the medicinal flavour of the established energy drinks, though without the kick of the competition from Zen Republic (where do they get these names from?) which contains chili and ginger.

Of course, trade marks cannot be registered if they are contrary to public policy and morality, and the caselaw on this provision makes entertaining reading. How can anyone have ever thought some of those trade marks would ever attract customers? But Pussy Drinks (Holdings) Limited have a CTM registration for Pussy Natural Energy (here) and an honourable mention in Marketing Week, in an article on how cool brands can keep their coolness - FCUK being a classic instance of how not to do this. For my part, I love the product but I love better the fact that the competition - the second healthiest energy drink in the UK, its website proclaims, in a "we try harder" moment - contains no taurine, the very sound of which makes me want to avoid it, and is approved by the Vegetarian Society, making me wonder what's in Pussy that might prevent a similar endorsement, or did they just never ask? The branding, to me, is neither here nor there (so long as there are no off-colour bovines involved), and once again I find myself wondering about the way trade marks are used in the modern world. I guess it's all about fashion, and I am put in mind of a quote from Oscar Wilde which I read the other day: "Fashion is a form of ugliness so intolerable that we have to alter it every six months."

Trade marks and public policy

The General Court has also decided that, as a trade mark, PAKI is contrary to public policy or to accepted principles of morality: T-526/09, PAKI Logistics GmbH v OHIM. The court remarked that the word was a racist expression and therefore unacceptable as a trade mark. This notwithstanding that the applicant is a reputable German logistics company and the mark is used in the form PAKi. (I can see the connection between the PAK element and logistics - and they have been around since 1974.) Pakistan, incidentally, is called Pakistan in German.

For those unfamiliar with English racist slang, the expression was commonly used, is used less often now, with a considerable measure of ignorance as well as malice to denote just about anyone from the Indian sub-continent. I don't believe it was, or is, used exclusively with malice, and it can sometimes be intended neutrally - we have an "Indo-Pak" restaurant not far away from home, although there is a big difference between using the term for a whole people and using it for an individual. Often people use expressions like this with the best of intentions, unaware of the hurt they cause.

The court also noted that protection against discrimination is a fundamental value of the EU, provided for in Articles 2 and 3, paragraph 3 of EU Treaty and Articles 9 and 10 of the Treaty on the Functioning of the European Union, and Art.21 of the Charter of Fundamental Rights of the European Union.

Well, the measure of what should be acceptable is easy enough: if people don't like it, we should all respect their wishes, not use the word, and not allow it to be registered as a trade mark. The court was presented with evidence that the word is used in the Pakistani community, and is not necessarily offensive to them: but even if the law is protecting the sensibilities of the chattering classes, perhaps that's reason enough to refuse registration. But it does seem an unfortunate side-effect of the Community trade mark system that a German company should find its name unprotectable at EU level.

Because it involves the same provision of the regulation, and because I have only recently caught up with it, and because of my visit to Russia last weekend, I'll also add a reference to Case R 1509/2008-2 Couture Tech, a decision of the OHIM Second Board of Appeal in an appeal against a decision to refuse registration of the old Soviet Union symbol of hammer, sickle, globe, red star, and "workers of all countries, unite!" in 15 languages (none of them English, rather like a General Court judgment). The board noted that the Soviet Union - which the board seems to treat as interchangeable with the Soviet Communist Party, perhaps rightly - was

... a totalitarian state that massively violated human rights, under the leadership of the Soviet Communist party, committed crimes against humanity, including summary executions, torture, sending innocent people to labour camps, involuntary settlement and stripping of citizen’s rights. It is commonly  accepted that the ethnicity-targeted population transfers in the Soviet Union led to million deaths due to inflicted hardships. For example, 10 percent of the entire adult Baltic population was deported or sent to labour camps, as can bee seen from Wikipedia printouts.

Allow me in passing to exclaim - "Wikipedia???". But the historical facts are beyond dispute, even if there might be arguments about the details, and the Board's conclusion that the trade mark the subject of the application would cause offence in countries which suffered under the Soviet regime, some of which ban such signs as some countries do Nazi insignia.

Good call: but what baffles me is why anyone would think this a suitable sign to use as a trade mark in the first place?