Starbucks (HK) v British Sky Broadcasting Group (Supreme Court)

One thing that baffled me about this case when I saw the first instance judgment ([2012] EWHC 3074 (Ch) (02 November 2012), on appeal [2013] EWCA Civ 1465 (15 November 2013)) was the claimant's name. It turns out that I should have read Arnold J's judgment more carefully, because a footnote tells the reader that "Starbucks HK’s name came from the bucks raised by the sale of Star [a Chinese-language TV station] by Richard Li’s Pacific Century group to Rupert Murdoch’s News Corporation", who of course were the parent company of the defendants in the present case. So the claimant is nothing to do with the purveyor of what my great friend Markus, from Munich, is pleased to refer to as "brown liquid", a generic beverage which he maintains is drunk on every occasion by every American, whether its is masquerading as coffee, tea, or beer or is some sort of soft drink.
Originally a trade mark infringement (and validity) and passing-off case, by the time it reached the Supreme Court (which has now handed down its judgment: [2015] UKSC 31 (13 May 2015)) it was only concerned with passing off and in particular whether it is good enough for the claimant to have international goodwill. That's a very important point in the law of passing off, so this is an interesting and (sad to admit) exciting case.
However, the outcome doesn't appear to be as exciting as I would have liked. Because they didn't actually have any paying customers in the UK, the claimants have no goodwill to protect (and having goodwill is essential for a passing-off action to lie, of course - part of Lord Oliver's classic trinity from the JIF Lemon case, Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491). Old cases show that sometimes a foreign trade can generate some goodwill in this country - taking bookings, for example - but making its TV programmes available online in the UK amounted to nothing more than advertising and created no protectable goodwill.
I am disappointed that the court should have taken such a narrow view of what constitutes goodwill. It is, of course, a tricky thing to define (and you should read my Dictionary of Intellectual Property Law to learn more on that score), but in the modern age (by which I mean on the Internet) surely businesses create what most people would recognise as goodwill by promoting their services in other jurisdictions. Goodwill is, certainly, local in nature, but I think it is time to move on from the old view of goodwill and to embrace the idea that a trade reputation (is it the same thing?) can exist without money changing hands. It is a small step from making the TV programmes available to online viewers in the UK and charging them even a small amount to watch, and it should not be on such small steps that these things turn. (But perhaps when I read the judgment carefully I will find the answer to that.)
It need not even make any difference to the final result. The court could have distinguished the old cases and held that there was protectable goodwill, but gone on to hold that no damage had been suffered. To my mind, that would be a more logical place for the law to have ended up in. I certainly don't say that the court was wrong in any way, and those old cases can't just be wished away, but I do think the ratio does not reflect what people who commonly use the world wide web expect, and the alternative route to the same result might have given a more satisfactory ride.
You can conveniently watch the hearing using these links, which I have copied from the Supremes' website:

Watch hearing
25 Mar 2015	Morning session	Afternoon session
26 Mar 2015	Morning session	Afternoon session

'via Blog this'

Failure to tell applicant about renewal of earlier trade mark infringes CTM rules

Lidl Stiftung v OHMI - Horno del Espinar (Castello) (Judgment) [2015] EUECJ T-715/13 (05 May 2015) is a weird case in the General Court. The German supermarket applied for a figurative trade mark in which the dominant element was the word, Castello, for various comestibles in classes 29, 30 and 31. It was opposed by the owner of a Spanish trade mark, also figurative and also with the dominant element being a single word, in its case Castelló. As I have learned when trying to communicate with Spanish people, that accent makes a world of difference (shifting the stress from the "e" to the "o"): I recall struggling to tell the Hertz representative from whom I had hired a car at Jerez airport the name of the village, Gaucín, to which I would be driving it, oblivious to the fact that the stress lay on the second syllable - and I was so proud of pronouncing the soft "c" correctly. I was also anxious because the Renault Grande Espace to which they had "upgraded" me (for which read, it's the only car we've got at the moment) was not much smaller than the village.

No-one, from OHIM and the Board of Appeal to the General Court, thought that they two were not similar: only Lidl tried to argue the contrary, and they were rather obliged to give that a whirl. Thank goodness for a bit of common sense somewhere in the EU trade mark system. But still, Lidl got what they wanted and the decision was annulled. How come? Simple, really, although the story is somewhat hidden in the turgid prose of the judgment (it is always so difficult to work out what happened, and why, in an EU case). It turned out that a failure by OHIM to provide Lidl wth information about the opponent's filings meant that the applicant was unable to mount its defence properly. (I think that's a fair summary). So, a procedural irregularity on the part of the office - hard to believe, with everything being so thoroughly automated in Alicante, but there it is, nothing is perfect.

IP Draughts pans Google patent contract

Do no evil …drafting is a typically robust piece of work from Mark Anderson, whose IP Draughts blog should be essential reading for anyone with any aspirations to write contracts, whether relating to intellectual property or not. In it he demolishes a badly-drafted contract the terms of which are intended to govern the acquisition by Google of any US patent you might wish to sell to them - the rest of the world, typically, not existing for the purposes of their mindset. Google's professed aim is to prevent unwanted patents falling into the hands of trolls - in the pursuit of which Google will become potentially the biggest troll in the world. Just as well that its well-known slogan (quoted by Mark in the title of his posting) rejects any possibility of trollery!

General Court: Likelihood of confusion between SKYPE and SKY

The General Court (one of the constituent parts of the Court of Justice of the European Union, as I have pointed out many times, another part being confusingly called the Court of Justice) has handed down its judgment on whether there is a likelihood of confusion between SKYPE and SKY, and has decided - to no-one's surprise, I imagine - that there is. The press release is here. I see that the Court refers to itself as "the General Court of the European Union", which is not the title given to it by the Treaty.
It is an interesting contest between two weak but fairly well-known (not necessarily in the Article 6bis sense) trade marks. Allowing registration of a word mark like SKY, irrespective of any distinctiveness acquired through use, contributes greatly to the twin problems of depletion and foreclosure - the processes which make it increasingly difficult to coin a new trade mark. Although the word SKY is present in the word SKYPE (and it is not actually word trade marks anyway - there is some figurative content, which didn't help the applicant) surely that added bit at the end makes a difference, and is unlikely to be lost in aural use, short of the most extreme glottal stop ever. So I am not convinced that there is a likelihood of confusion, even before considering how well-known the trade marks are: and the better-known, the less likely members of the public are to become confused. At least, that's how I think it should be.
Since posting this, I have done an interview with the BBC World Service (using, of course, Skype). Preparing for that caused me to dig a little more deeply into the case, which made me realise that the applications were filed in 2005 and the oppositions in 2006, at which time Skype (first release August 2003) would have been much less well-known than it is now. Sky, on the other hand, was already well-known by then (having been founded in 1990). That suggests to me that there would still be little chance of confusion arising from any similarity between the names, given that people knew Sky and would notice that Skype was different; but also that the market for VOIP back then was much much smaller than now (indeed, I suppose that Skype created the market) and people who might be interested in obtaining services from Skype would be switched-on types who would understand that it was nothing to do with Mr Murdoch's empire. So it doesn't alter my view of the likelihood, or lack thereof, of confusion: a well-known trade mark should receive less protection because it is less vulnerable to confusion.
Because there were three Skype trade marks, there are three reported appeals, though the judgments might involve a lot of copying and pasting. Here are links to the BAILII reports: Skype v OHMI - Sky and Sky IP International (SKYPE) (Judgment) [2015] EUECJ T-184/13 (05 May 2015), Skype v OHMI - Sky and Sky IP International (SKYPE) (Judgment) [2015] EUECJ T-183/13 (05 May 2015), and Skype v OHMI - Sky and Sky IP International (skype) (Judgment) [2015] EUECJ T-423/12 (05 May 2015).

Court of Justice rejects Spain's objections to UPP

The IPKat reports that what he insists on calling the CJEU has rejected Spain's objections to the Unitary Patent Package: you can read the Court's press release here.

"IP and Other Regulations" by Mark Lemley

Only a short article, an introduction to a set of conference papers, but for anyone interested in the justification for, and theoretical basis of, intellectual property, IP and Other Regulations by Mark A. Lemley is a great read, and contains several pointers to more detailed discussions of the same topic.

Another Chinese clone, this time with a retro feel

Automotive news reports that Mercedes G-Wagen is the latest victim in China's clone wars. At least the Evoque is a new design - it seems strange to go back to such an old vehicle as the G-Wagen, which I remember driving as a battle-bus in Enfield North in the 1987 general election. Could it really have been so long ago? It had a turning circle comparable to that of an oil tanker.

JLR gave up on the Evoque copy as a bad job, noting that there was nothing in Chinese law which would help them. Mercedes, presumably, have less ground for complaint because the have to assume that even if there ever had been any rights in the design, they would have expired by now. Unless they could rely on copyright, of course, but that is an unreliable way to protect designs of anything, but especially motor vehicles, and particularly functional-looking ones.

This time the copyist is Beijing Automotive, which is where the story becomes complicated - they are Mercedes's local joint venture partner in China. Imitation may be the highest form of flattery, but it doesn't seem that Mercedes see it that way, and the problem is as much a political one as a legal one.

 

NIPC Law: Damages for Infringement of Database Rights

Damages for Infringement of Database Rights is the latest posting by my friend Jane Lambert on her excellent NIPC law blog - essential reading about an apparently minor intellectual property right which seems to become more important every time we hear about it.

Reposting from NIPC Law: Damages for Infringement of Database Rights: Inter...

NIPC Law: Damages for Infringement of Database Rights: Inter...: Jane Lambert The first claimant.  Intercity Telecom Limited ( "Intercity" ) , is one of the largest independent com...

Right to repair a four-wheeled computer

According to this story in WIRED (hat-tip to Warwick Rothnie for posting it on Facebook) John Deere and General Motors are trying to change the very idea of ownership, of tractors and cars at any rate. Actually, personal leasing plans in the motor sector (and, no doubt, similar arrangements in the agricultural machinery sector) have already years ago changed the ownership equation, but in a rather different and direct way than what is described here.

The simple fact is that, because vehicles rely increasingly on software to operate them, the owner of the hardware is beholden to the owner of the copyright in the software running on it. As with computers, so with tractors and cars. To characterise this as the manufacturer retaining ownership of the hardware is at best hyperbole, at worst downright wrong. But it nevertheless appears to pose problems for owners in the USA.

Would it happen here? I think not. First, an owner deprived of the ability to repair his or her car or tractor (or anything else) would be able to refer to the House of Lords decision in that great case, British Leyland Motor Corp & Ors v Armstrong Patents Company Ltd & Ors [1986] UKHL 7 (27 February 1986) where their Lordships (or at least a majority of them) held that the owner of a motor car had the right to repair it as economically as possible, and that to use intellectual property rights to thwart the owner was a derogation from grant which the courts would refuse to uphold. And since 1986, the software directive has introduced several provisions (in particular section 50A and 50C of the Copyright, Designs and Patents Act 1988) to permit "reverse engineering" of software and the fixing of problems with it. So, between those two pieces of law, one judge-made and the other statutory, I don't see much to worry about: except, of course, for the fact that if a large multinational leans on an individual car-owner or farmer there is a good chance that they will prevail regardless of the merits of their legal case.

For more see Autoblog.com, Automakers to gearheads: Stop repairing cars

Green Party sustains gunshot wound to foot over copyright, of all things

Who would have imagined that the biggest policy gaffe of the election would be over the duration of copyright? Well, go back a few years and it could have been "New" Labour swallowing the "Cliff's Law" argument hook, line and sinker, but actually this goes completely the other way. The Green Party, which had already ensured that it would not be getting my vote* by accepting the endorsement of the dreadful Russell Brand, announced that if elected ("if" being a very important word here, as the Greens had a single MP, their first, in the last Parliament) they would take us back to 1709 or 1710 (it always depends on whose calendar you use) and reduce copyright to 14 years. From creation or publication, it was not entirely clear, but certainly not PMA which might have been a bit more comprehensible.
It transpires - allegedly - that 14 years came from a Cambridge University postgrad student. Isn't that how the Iraq war started, too? To be fair to the Green Party (and of all the political parties they are the only one to which one should have any reason to be fair) this is mentioned in the same breath as their "Citizen's Income" idea, although the two policies seem to be associated because the latter would ensure people had time to devote to cultural activities which would (they imply) somehow justify reducing the term of copyright protection (the total volume of copyright, works multiplied by years protected, would remain much the same, on my reading of the policy). Had they said that because everyone will have the Citizen's Income there will be less need for people to earn money from copyright, it might have made a little sense: but as it is there is no logic underlying it at all, except for Mr (or presumably Dr now, as his work seems to date back to 2007) Pollock's thesis.
I have found myself participating in a couple of discussions on Facebook about this crazy idea, and it is clear that the Greens have upset a lot of creative people who might otherwise be more-than-averagely likely to favour them. And in addition to the damage they have done to their own support, how do they imagine it could be achieved? 14 years would not comply with the Berne Convention, so the UK would have to denounce (I think that's the right verb) that, and other international instruments. TRIPS probably isn't the Greens' favourite international agreement anyway, and certainly it has plenty of questionable things about it, but this is surely not the issue on which to challenge it. What about the directive? Copyright duration would be an odd reason for a Brexit. Then there would be inevitable claims under the European Convention on Human Rights, that copyright owners had suffered the loss of property. At least Cliff's Law would be a thing of the past.
There is plenty wrong with copyright, but anyone proposing to reform it would do best to consider its breadth rather than its depth. It is the omniverous nature of copyright, the indiscriminate way in which it confers protection on works with minimal originality, permitting big businesses to bully small users and reap super-normal profits, that should be addressed, and to my mind the way to do that is to reconsider the originality requirement (along with the notion of what constitutes a copy of an earlier work, in the case of sound recordings and films: given that "original" means, basically, "not copied", this amounts to the same thing). But I don't think that presses the right buttons in a general election.
The Greens also propose to legalise peer-to-peer filesharing where it is not commercial, and to "liberalise" the rules about fair use (which of course are absent from our copyright law entirely at present - "fair dealing" being rather different, a distinction which seems to have escaped the Greens). They claim they want it to apply outside academia, which - correct me if I am wrong - I thought was one of the places where fair dealing didn't run very far anyway. Still, we needn't worry too much: few people will vote Green just because of these policies, and they aren't within sight of even holding the balance of power in Parliament (are they?).

*I plan to support whoever is most opposed to the desecration of the North Wessex Downs AONB by massive housing developments, as per the draft Local Plan which the Conservative Group on our District Council voted through without demur. Unless that's the Greens, who won't get my support because of this copyright gaffe and the Brand thing. My local MP also alienated me by "cutting" me at the All Party Writers' Group winter party in December, and lost any possibility of getting my vote. Just so you know.

Art and Artifice: The dirty side of artistic copyright: septic tank ...

Art and Artifice reports on a case in the Privy Council, not something we come across every day, or even every decade: apart from Lego and Opportunity Knocks, which are now almost ancient history, I can't remember any in my time as a lawyer.


This is Gold Rock Corp Ltd & Anor v Hylton (The Bahamas) [2015] UKPC 17 (20 April 2015), a case which demonstrates (if the point needed demonstrating) that design protection often involves some rather unpleasant subject-matter - pig fenders (not too bad), slurry separators (a great deal more distasteful), and now septic tanks. Although we are in the realm of copyright here, so we are not considering septic tanks but rather designs for them, which is a much cleaner and more pleasant proposition.


Bahamian copyright law, in the form of the Copyright Act 1998 (amended in 2004, though not in a way material to the present case) bears some similarities to our law in the way it treats copyright in designs, but the wording is significantly different and as far as I can see there is no unregistered design protection, only a registered design system (under the Industrial Property Act 1965) which borrows heavily from the Registered Designs Act 1949 v1, allowing applicants to request a grant of "design copyright" (remember that?) and imposing an eye-appeal test. Oh, those were the days!


As for copyright protection, technical drawings are expressly included in the definition of artistic works, which is one significant difference from our law (though perhaps a difference of words only). The Bahamian Act then goes on (in section 2(3)) to restrict copyright in a design for a useful article:

the design of a useful article ... shall
be considered an artistic work only if, and only to the extent that,
such design incorporates artistic features that can be identified
separately from and are capable of existing independently of, the
utilitarian aspects of the article.

That seems, on the face of it, to be intended to deny copyright protection for designs for utilitarian things. Back in the heyday of copyright protection for designs, we might have expected an interesting debate about septic tanks in various fanciful and artful shapes, as I remember discussing the possibilities of conrods cast in the shape of the female human form: in each case a completely pointless exercise, because no-one in their right minds would think to copy the crazy design. Here, though, we get an extraordinarily narrow interpretation of those words, turning on a distinction between design (abstraction) and technical drawing (piece of paper: I almost wrote "concrete", in contradistinction to abstract, but concrete is precisely what the septic tanks were, so I would have confused the issue no end). The Board (well, Sir Kim Lewington, at any rate, speaking for all of them) said:

A “useful article” is ... a three-dimensional physical artefact. A technical drawing which gives instructions about how to make such an artefact is not itself a “useful article”; not least because its function is merely to convey information about how to make it. In the Board’s view the “design” of a useful article is a reference to the physical aspects of the article itself, rather than a technical drawing conveying instructions about how to make it. Any other interpretation would mean that it was almost impossible for any technical drawing to be protected by copyright, even though technical drawings are specifically included in the primary definition of “artistic works.”

So the drawings remained protected, and the PC advised Her Majesty that the appeal should be allowed, and no doubt she will take that advice rather then try to work out whether a better solution might be available. I find it hard to believe that this is the result the draftsman intended, although it is no doubt a correct reading of the words (especially in the light of all the experience we have of copyright and designs): but if the draftsman's intentions have been thwarted, we can all console ourselves by remembering that this whole area of law developed quite by accident, mostly as a result of the law of unintended consequences (the same law which I imagine will make the repeal of section 52 a disaster - but I digress ...).

Intel bullies home improvement company into name change

Intel trademark letter prompts UK business re-brand,  World Intellectual Property Review reports. The UK business, which seems to be the division of the Intelligent Home Improvement Group that deals in windows, had the temerity to use the now name, Intell Windows. Well, Intel had to stop that, didn't they? The window company complains that it cost £1,800 just for lawyers to send a letter back to Intel (either someone is being economical with the truth or a lawyer is having a laugh) and rebranding cost £15,000.

A humourless spokeswoman for the semiconductor maker is quoted as saying: "As with any other asset, we have an obligation to our shareholders to protect the value of our brand." If that statement could be reduced to a single word, Dr Johnson's definition of patriotism could nicely be applied to it. Unfortunately it explains (even, perhaps, sometimes excuses) a lot of trade mark bullying, but here it looks pathetic: would the shareholders really feel sufficiently threatened to have the company spend their money threatening the window company? There is clearly not the slightest risk of confusion - oh, Intel chips are capable of running Microsoft Windows(R), huh? - and if there is any possibility of dilution, tarnishment or unfair advantage it is vanishingly small. Shareholders might well ask themselves whether the legal bills, let alone the damage to the company's reputation, were worth it. They might be less humourless than the spokeswoman.

Had it been a fish and chip shop, it might have been a different story.

Assos, Asos and the "own name" defence

According to WIPR, Assos (a Swiss clothing manufacturer) is appealing against the Court of Appeal's April Fool's Day judgment (Maier v Asos [2015] EWCA Civ 220) holding that although the marks in suit were similar, and there was a likelihood of confusion and damage to the claimant's mark, Asos (an online retailer) could rely on the "own name" defence under section 11 of the Trade Marks Act. Read the WIPR report: there is no point in my paraphrasing it here, and I cannot direct you to the BAILII report because it is not online yet. At the same time, marvel at the WIPR's author's inability to identify members of the judiciary by their correct titles. What amateurs!
Assos are proposing to appeal to the Supreme Court, according to their solicitors Bird and Bird, and one can see why they might. Surely, despite cases which say otherwise, the "own name" defence was never intended to apply to company names which can so easily be invented to suit a particular purpose. However, that particular point (subject to what I find in the judgments in the Court of Appeal when they are published) seems to have become part of the corpus of trade mark law.
Of course, the defence is subject to the proviso that the use has to be in accordance with honest practices in industrial and commercial matters. That must be the key issue in this case, notwithstanding that Sales J seems to have based his dissenting judgment on logical restrictions on the scope of the defence.

The Washington Post: YouTube’s copyright system has taken Rand Paul’s presidential announcement offline

This report of a spectacular own goal almost made me laugh (but the excesses of modern intellectual property law and practice will never get past that "almost" - they are more likely to make me cry). The headline tells you everything.

I suppose it illustrates the importance of clearing rights for all the uses to which a copyright work might be put in the modern age. Perhaps Senator Paul, or at least his people, had obtained the myriad permissions (or the omnibus permission) needed but YouTube's robots, acting as WMG's agents, took it down anyway.

The reference in the article to huge music companies (the expression "Big Copyright" comes to mind) being able preemptively to apply copyright law encapsulates the problem in a way I have not read before: I will try to file that expression away for future use, although I think it is better called pre-emptive (my dictionary tells me that the hyphen is correct in the adjectival form but not in the adverb) enforcement, not application, which is too imprecise a term for lawyers to use (acceptable, though, for journalists, I think). Maybe it is a synonym for bullying. And read in the context of the Senator's attack on the power of special interests, the story becomes even more powerful.

Jeremy Phillips talks to Law Vox by Oxford Academic (OUP)

I am hugely enjoying this podcast, an interview with Jeremy Phillips produced by the publisher of so many IP books (including many of Jeremy's). It's highly informative and a great explanation of the importance of intellectual property law, although there are some themes that he might have explored such as the immense growth in the power of intellectual property rights ... although he does say that most trade marks are not intellectual property, a very useful proposition. When I have listened to it fully, and perhaps a couple of times, I might post more.
(Actually, is it right to call it a podcast if it cannot be downloaded?)

Intellectual property protection for Russian armaments

The Moscow Times reports that:

The [Russian] Defense Ministry is working on a system to keep track of Russian military innovations at home and abroad in an attempt to wrestle [sic] control of copyrights on Soviet-era equipment away from a global industry of imitators, state news agency RIA Novosti reported Wednesday.

Compared with other events in Russia, that's not really very worrying but it certainly gave me pause for thought. Do they really mean 'copyrights' (or even 'copyright')? Copyright is of course a feeble way to protect industrial designs these days, in the UK and in most other countries too. But patents would be even weaker, because the end of the Soviet era is more than a patent's lifetime ago ... To my surprise, though, I discovered that MT Kalashnikov (who died only in 2013, at the age of 94) was applying for patents with priority dates as recent as 1997 (this one for example - but why did a Chinese patent come up first on Espacenet?) and his son Viktor seems to be keeping up the - er - good work. So perhaps it's the words 'Soviet-era' in that quote that are questionable.
Lieutenant-General Kalashnikov has seemingly been responsible for arming most of the world. His inventions must constitute a large part of the production of the world's second-biggest arms exporter, albeit presumably at the lower end of the price scale: you have to sell a lot of assault rifles to make as much money as you would from a single jet fighter sold to, for example, India. It's probably not the jet fighters the Russians are worried about, though I recall that there were a lot of Chinese reproductions of Soviet aircraft around some time ago (just like the reproductions of various vehicle designs which the Chinese motor industry specialises in these days). Indeed, the Moscow Times story makes clear that the problem the Russians face is that sanctions mean they can't sell AK-47s like they used to, and that production in former Warsaw Pact countries, and China, where fraternal munitions factories were established during the Cold War (the First Cold War, as we might soon be calling it) is filling the gap. A large part of the market is probably in the USA, which is a nice paradox. (The manufacturer's website tells me, interestingly, that its Saiga-12 Mod. 340 sporting shotgun is widely used by law enforcers in the US, which may be a more significant piece of information: and Saiga hunting rifles are apparently very popular in the US too). Maybe Lenin's theory of imperialism could explain Russia's territorial expansionism, creating new markets for weapons among the little green men ...
Let's get back, as quickly as possible, to intellectual property. There might be some relevant patents: there might be some relevant copyright, in some countries: there might be some of the more exotic intellectual property rights like gebrauchsmuster. Design right in the UK would be no help, because it would have expired and in any case the designer was not an EU citizen nor was he habitually resident in the EU, and articles to his designs were not first marketed here. Registered designs are apt to protect the appearance but not the function of an article, so while they could be of some help (the appearance of the AK-47 is certainly important) it will be small - and even if relevant registrations were ever obtained they are likely to have expired long ago. Perhaps, unlikely as it seems, copyright is the manufacturer's strongest suit.
Unless ... what about trade marks? Both the surname of the inventor and the familiar designation of the weapon are highly distinctive. They meet all the requirements here for registration as a trade mark, leaving aside the question of public policy and morality I suppose, although the fact that 'AK' stand for Автома́т Кала́шникова (Kalashnikov automatic) might create a descriptiveness problem, against which 66 years' use might be an effective counterargument. But there's nothing I can find on the UK or EU registers that might assist, which is a rather surprising omission. Of course it is possible that the Polish, Bulgarian, Romanian, Serbian and Chinese manufacturers referred to in the Moscow News article are not using either trade mark - but I bet the retailers in the US are. Which makes me wonder whether Russian-owned US trademarks can easily be enforced. I think that in the English courts an order for security for costs could put a spanner in the works - is there something similar in the US?
All of this highlights the important point, that it is the activities of foreign undertakings that are worrying the Russians. No point in bringing an infringement case in Syria or Iraq against whoever is supplying ISIL: this is a problem that can only be dealt with at the manufacturer level, and that won't affect the huge second-hand trade. Perhaps the Russians could persuade some of the offending manufacturers to stop, although unless they have a lot more legal protection in Poland, Bulgaria and Romania than they seem to have here they will be hard-pressed. Maybe the Serbs will be more open to the Russians' blandishments. The chances of stopping production in China are, one assumes, at best negligible.
If there were any point in trying to use legal steps to stop this trade in fake firearms in the UK, an action for passing off would seem to be the logical way to go, in the absence of anything better: and it could stand an excellent chance of success. But I don't think the UK is really their main worry, notwithstanding that the manufacturer's website mentions that it exports products to us. Precisely what, I don't know, but Izhmash, the distinctly Soviet-era name of the manufacturer (Izhevsk Machinebuilding Plant, or Ижевский Mашиностроительный Завод) before it merged with Izhmech (don't ask) to become a wonderful double entendre, the Kalashnikov Concern, made motorcycles which were sold here under the Cossack and Neval brands, along with motor vehicles and other mechanical items. The company's motorcycle (dating from 1928), the IZh 1, "owed a little" to contemporary motorcycles made by the German company DKW, according to Andy Thompson's Cars of the Soviet Union (Haynes Publishing, Somerset, UK, 2008), p.180, which rather brings us back to the start of this story: what goes around comes around, or Как ау́кнется — так и откли́кнется. And intellectual property law is not, I submit, the place to look for a solution, even if they do have any useful rights.

My favourite passing-off case

In an area of law where the cases are, almost by definition, often highly amusing, Rolls-Royce Motor Cars v Dodd [1981] FSR 519 is in a class of its own. John Dodd, the proprietor of an automatic transmission repair business, built his own car - actually taking over a rolling chassis which someone else had started and building a body on it - powered by a second-world-war vintage Rolls-Royce Merlin engine. The first iteration used an engine from a Centurion tank, rather less romantic than had it come from a Spitfire, the most celebrated machine in which the Merlin was used: the second car (its predecessor having been destroyed in a fire) had an engine from a bomber (a Mosquito, apparently). It also had a very different body style. Both cars featured a Rolls-Royce radiator grille and Spirit of Ecstasy mascot, at least until the manufacturer (whose company secretary at the time happened also to be called John Dodd) took him to court where Walton J granted an injunction to prevent passing off (referring to the car as a Rolls-Royce) and infringements of the company's trade marks.

Following the case, Mr Dodd started referring to the car as The Beast. When he promised the judge that he would change the name, Walton J asked where was Beauty. Perhaps in the eye of the beholder?

Thanks to the Internet, I find that Mr Dodd, who moved to Spain after he had breached the injunction within a couple of days (Whitford J fined him £5,000), is still running his automatic transmission repair business. Better still, YouTube has several clips of The Beast in action, including this one from an old edition of Top Gear. The embedded one below includes Mr Dodd executing a doughnut in it, sadly filmed from inside the car so you have to rely on his daughter's commentary.

Danish designers face problems in UK

Kluwer Copyright Blog reports that a Danish Court has issued a website blocking ruling concerning the illegal distribution of replica products. What is particularly interesting - to me, anyway - is that Danish designers of particularly furniture are facing problems with copyists making replica products in the UK and selling them over the Internet to Danish consumers. Is our design law really that pathetic? Yes, and it has been for years, although for good reason and car manufacturers must bear most of the blame: but for their excess of enthusiasm for trying to use copyright to control the spare parts market we might never had had the 1988 New Deal. Will repealing section 52 (which pre-existed the new deal, incidentally) make things any better? Perhaps it will bring our copyright law more in line with continental ones, but as critics of repeal have pointed out it was part of a sophisticated system of checks and balances, and removing it will throw the whole system into confusion.

Rihanna tee shirt case: Topshop lose on appeal

Fenty v Arcadia Group [2015] EWCA Civ 3  just appeared on BAILII. The Court of Appeal has upheld the decision of Birss J that the defendants committed a passing-off when they sold tee shirts bearing the image of the singer Rihanna without her consent - exacerbated by the fact that she has previously had a commercial relationship with the retailer, so there was greater scope for deception of the public than usual. It's a very important case for the developing law on character merchandising and celebrity endorsement. I will comment a bit more when I have read the judgmemt, but the BBC's report of the case is worth a look.