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.

Glen Buchenbach

https://www.theguardian.com/law/2018/jun/07/german-whisky-glen-buchenbach-may-mislead-buyers-ecj

Tarnishment of Sesame Street

http://www.bbc.co.uk/news/entertainment-arts-44263925

The creators of the famous children's TV show Sesame Street have launched a lawsuit against an upcoming sex, drugs and violence-laden puppet-based movie called the Happytime Murders.

The movie uses the tagline "No Sesame. All Street" on promotional material.

The lawsuit says this tarnishes the Sesame Street brand and confuses people into thinking the two are linked.

Sesame Workshop, the educational organisation behind the TV show, filed the lawsuit against the film's producers, STX Productions, in New York. The lawsuit calls for punitive damages and a jury trial.

Sesame Workshop says that although the trailer for the movie is "indescribably crude", it is not seeking to block the film's promotion.

"It is only [the] defendants' deliberate choice to invoke and commercially misappropriate 'Sesame's' name and goodwill in marketing the movie - and thereby cause consumers to conclude that 'Sesame' is somehow associated with the movie - that has infringed on and tarnished the 'Sesame Street' mark and goodwill."

It says the '"No Sesame. All Street' tagline has confused and appalled viewers".

The film is directed by Brian Henson, son of the late Jim Henson, who helped develop Sesame Street characters for its launch in 1969 and later went on to create the Muppet Show.

STX issued a response via a character from the film, a lawyer called Fred, saying the movie was "the untold story of the active lives of Henson puppets when they're not performing in front of children".

It continued: "While we're disappointed that Sesame Street does not share in the fun, we are confident in our legal position."

"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.

Transformative use

In trying to explain when a substantial part of a copyright work has been taken (and therefore an infringement might have taken place), I came up with what I thought was a great illustration. It helped, perhaps, that I was doing the teaching in Moscow, so Rachmaninov came easily to mind. Leaving aside the fact that there is no extant copyright to worry about in practice (in any case, Paganini died in 1840, 94 years before the Rhapsody was written), would it ever be thought that Sergei Vasilievich's Rhapsody on a Theme of Paganini (Opus 43) infringed Paganini's copyright, or that it was anything other than a completely original work?

To start with, listen to the last of Paganini's 24 caprices, which is where Rachmaninov got the Theme from, played here by Hilary Hahn:


Then listen to Rachmaninov. There are 24 variations in his Rhapsody, starting with a fairly literal statement of the theme (you can hear that in the last of these three clips). Maybe he would have had to clear that with the Italian virtuoso, had modern copyright law applied at the relevant time. But the point of variations is that they transform the theme, and by the time you reach the glorious and impossibly romantic variation 18 (played in this clip by Valentina Lisitsa with the London Symphony Orchestra conducted by Michael Francis) it has changed beyond recognition, turned upside-down by Rachmaninov to produce one of his greatest tunes (and I write "his" quite deliberately: it's no longer Paganini's).

The great pianist Stephen Hough explains what is going on in this clip.


Of course there are many other examples of authors (in the broad copyright sense) taking someone else's work and transforming it into something utterly original (in the copyright sense as well as the ordinary one), but I think this is a particularly good one as well as being a beautiful piece of music.

Note: "transformative" is not a word used in the Copyright, Designs and Patents Act 1988. It is mentioned as a description of a type of fair use in the US legislation, and it featured in the Gowers Review a decade or so ago - where it was suggested that there should be an "exception", created by by an amendment to Directive 2001/29/EC, in favour of "creative, transformative or derivative works" which would benefit what the Review called "the Hip Hop industry".

Passing-off lecture launches IPso Jure channel on YouTube

It's now over two years since a memorable dinner over which, among other things, the idea of making YouTube videos on intellectual property came up, and finally I have managed to complete the first in what I hope will be a series. It's good that one thing has now worked out well from then.

You can find the YouTube channel here and I will put a link on this blog to make it easy to find. I called this first video a brief guide to passing off, but my old friend Godfrey pointed out that 54 minutes hardly counts as brief so I amended the description (although considering the size of Christopher Wadlow's great book on the subject, 951 pages in the 4th edition and no doubt more in the 5th edition which was published last year but the publisher's website doesn't reveal how many, I think under an hour counts as brief). There's only one possible response to that, and I am delighted that Pascal is the man to quote: "Je n'ai fait celle-ci plus longue que parce que je n'ai pas eu le loisir de la faire plus courte." (Pretentious? Moi?)

I made the video using the Movie Maker program that comes as part of Windows these days (or perhaps it's an app that you have to download). It was very clunky, and I hope I can find an alternative that will make it easier to adjust the time each slide remains on screen - surely there must be a program that allows you just to drag the end of that image along the timeline to coincide with the right point in the audio file. If you're interested I will share my findings in future posts. And if you're not interested, I'll still do that but you can ignore me. If you have suggestions for suitable programs, I'd like to know!

Now that I have broken the logjam that had been building up for a long, long time, I hope I will find it easier to be briefer in future presentations. Certainly I already have several ideas for improving this video, although my next task will be to address trade marks, responding to a request I received a few months ago. But briefly!

Confused in Spain if not in the UK

Co-existence agreements have become routine in trade mark practice in the last few years (by which I now find I mean at least a decade - since 2005, in fact, when the Trade Marks Registry stopped refusing applications on relative grounds, meaning because someone already had a similar or identical trade mark already registered for the same or similar goods). Parties who would otherwise be locked in opposition proceedings can draw lines between their trade marks and the respective goods and services so as to avoid consumers becoming confused. But an agreement that overcomes problems in the UK won't necessarily help when a conflict arises elsewhere.

In a recent case, Ornua Co-operative Limited, formerly The Irish Dairy Board Co-operative Limited v Tindale & Stanton Ltd España SL the European Union's Court of Justice had to deal with a conflict between two Irish dairy companies, the owners of the well-known KERRYGOLD trade mark and the owners of the less well-known KERRYMAID trade mark. KERRYGOLD is registered as a European Union trade mark, while KERRYMAID is registered in Ireland and the UK.

It's not very surprising that the parties had struck an agreement to enable the trade marks to co-exist peacefully in the UK and Ireland. It's possible to argue that there's no likelihood of confusion on the basis that the common part of the trade marks is the name of an Irish county famed for dairy products, so the question whether GOLD and MAID are confusingly similar: but the fact that the KERRY part of the trade marks is the beginning makes them more confusing, and perhaps KERRYGOLD is well-enough known that consumers seeing KERRY-anything on the supermarket shelf would get muddled.

Leaving the co-existence agreement aside, problems arose when KERRYMAID was introduced to the Spanish market. No registered trade mark there, no co-existence agreement. KERRYGOLD sued for infringement (throwing in a dilution claim too), and the Spanish court decided that because the similarity lay in the KERRY element of the trade marks which was just a geographical location, and there was a co-existence agreement covering the UK and Ireland, there was no likelihood of confusion. KERRYGOLD appealed and the Spanish appeal court set off on an expedition to Luxembourg - in other words asked the Court of Justice for a preliminary ruling.

The Court, unsurprisingly, said that you can't assume that because there is a co-existence agreement in two Member States, there won't be a likelihood of confusion in other Member States. If the Spanish court had been persuaded that there was no material difference between the UK, Ireland and Spain, that might have justified a finding that there was no infringement, but that hadn't happened. Indeed, I would go on to say that the fact that there is a co-existence agreement in two Member States indicates that there is a likelihood of confusion in other Member States where the parties haven't struck a deal to prevent it.

I would also have made sure that the UK co-existence agreement made clear that if the junior trade mark owner wanted to enter the Spanish market, there would have to be a new agreement. I'm dealing with exactly the same problem for a client at the moment: the fact that the junior trade mark owner only has a UK trade mark struck me as pretty conclusive about the matter of using their name outside the UK. It would not be use of the UK trade mark in a third country, it would be the use of something identical to the UK trade mark, and therefore the agreement has to stop the junior trade mark owner doing anything outside the UK. Co-existence involving a UK trade mark can't amount to co-existence outside the UK.

Why You Should Register Your (Well-Known) Marks in India- Now!

The enactment of the Trade Marks Rules, 2017, has paved the way for formal registration of “well-known” Marks in India. Although India did recognise Well-Known marks earlier (through its Trade Marks Act, 1999, which came into force on September 15, 2003), there was no provision for their formal registration. After the 1999 Act, the Indian Trademark Registry made efforts to consolidate marks that, over a period of time, were recognised as “well-known” by various Courts, Tribunals, Registrar etc. and made available this list online which has 81 “well-known” marks. 

Going by the list, Trademark “Philips” seems to have been the first trademark that was recognized as a well-known mark in India back in 1983. However, it was the famous case of “BENZ” by Delhi High Court which made Well-known marks concept well known and accepted in India (1994 PTC 287).

WHY WELL-KNOWN MARKS?

Almost every brand is created with the aim of making it a top brand; however, only a few survive the test of time and of those few, just a fraction makes it to the big league.

Looking back in history reveals that brands such as Toyota, Microsoft and Apple, that are today globally-recognised, took several years to enter the league. By contrast, brands such as Google, Facebook and WhatsApp made it to the list in much shorter timelines. Of-course, the nature of their business, the increasing pervasiveness of the internet and the era of rapid globalisation also played a role in these brands achieving global recognition much faster.

There surely are certain benefits of “well-known marks”, the most important of them perhaps being protection from dilution, provided of course, that they continue to deliver superior, differentiated products and services.

WHAT IS A WELL-KNOWN MARK?

Section 2(1)(zg) of The Trade Marks Act, 1999, defines a “well-known trade mark” in relation to any goods or services, as  “a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.”

What that means is - well-known marks are generally those that are acknowledged to have a high degree of reputation even beyond the areas of business of the proprietors of the marks. Such marks have attained such a degree of goodwill amongst general public (within a particular jurisdiction or even beyond) that even the use of such mark in relation to goods/services it is not generally associated with, would remind general public of the original source/product/service/proprietor. 

WHY DID INDIA AMEND ITS LAW TO PROVIDE PROTECTION TO WELL KNOWN MARKS?

India being a signatory to the TRIPS Agreement was obligated to amend its Trademark law by providing protection to well-known marks.

Articles 16.2 and 16.3 of the TRIPS Agreement contain certain provisions on well-known marks, which obligate member States to refuse or to cancel the registration, and to prohibit the use of a mark conflicting with a well-known-mark.

PROCEDURE FOR REGISTRATION OF WELL-KNOWN MARKS

Below we try to address a few questions like 'how to register a well known mark' and 'how much does it cost' to register a trademark.

Application for registration of Trademark:

As per Rule 124 of the Trade Marks Rules, 2017, any person may file a request for determination of a trade mark as well-known (interesting to note that here it has been avoided using the term “registration”, using instead the word “determination”). Each such request shall be accompanied by:

1. A statement of case describing the applicant’s rights and claim over such mark being a well-known mark;
2. Evidence in support of applicant’s rights and claims;
3. Details of a court order, if any in which such mark was recognised as a well-known mark; and
4. Requisite fee (INR 1, 00,000.00).

The Registrar may call for further such documents/information as he thinks fit for the determination of a mark as “well-known”.

Prosecution & Registration:

If the application is found in order, the Registrar may, before determining a trade mark as well-known, also invite objections from the general public. Such objections must be filed within thirty days from the date of invitation.

Notwithstanding the above, if it is found that a trade mark has been erroneously or inadvertently included in the said list, the Registrar may, at any time, remove a trade mark from the list of well- known marks, after hearing the concerned party.

WHO SHOULD REGISTER?

All proprietors who believe their marks to be “well-known” marks must consider making an application for determination of their mark as a well-known mark.

Further, proprietors of the marks that have been recognised by a Court of Law or Registrar as a well-known mark must also consider this registration with the Trademark Registry.

WHY TO REGISTER?

Once a trademark is determined by the Indian Trademark Registry to be as a well-known mark, the proprietor can be assured that no one else can register an identical or a similar mark in any of the 45 classes of goods and services in India. Registration would definitely safeguard the proprietors (of well-known marks) from the trouble of opposing every identical/similar mark every time a third party tries to register or to contest the registration of marks which may have been erroneously registered in any of the 45 classes.

HOW IS DETERMINATION/REGISTRAION OF A “WELL-KNOWN” MARK MADE?

As per Section 11(6) of the Trade Marks Act, 1999, The Registrar shall take into account several factors in determining whether a mark can be recognised in India as “well-known”. Such factors include the following:

1. the knowledge or recognition of that mark amongst the relevant sections of the public in India as a result of promotion of the trade mark;
2. the duration, extent and geographical area of promotion/use of the trade mark;
3. the duration and geographical area of any registration/application of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark;
4. successful enforcement of the trade mark to such an extent that such trade mark has been recognised as a well-known trade mark by any court or Registrar.

Further, Section 11(7) of the Act states that the Registrar shall, while determining whether a trade mark is a “well-known” mark for the purposes of sub-section (6), also take into account:

1. the number of actual or potential consumers of the goods or services;
2. the number of persons involved in the channels of distribution of the goods or services; and
3. the business circles dealing with the goods or services, to which that trade mark applies.

Section 11(8) of the Act provides that where a trade mark has been determined to be well-known in at least one relevant section of the public in India by any court of Law or the Registrar, the Registrar shall consider that trade mark as a well-known trade mark for registration under this Act.

CONDITIONS NOT NECESSARY FOR DETERMINATION AS A WELL-KNOWN MARK

Certain myths and misconceptions prevail that in order to be a well-known mark, the mark has to fulfil various other criteria- for example, it should be registered/used in India etc. However, Section 11(9) of the Act clarifies that for determination of a mark as a well-known mark in India, the following conditions are NOT necessary to be fulfilled:

1. that the trade mark has been used in India;
2. that the trade mark has been registered;
3. that an application for registration of the trade mark has been filed in India;
4. that whether the trade mark is well known in; or has been registered in; or in respect of which an application for registration has been filed in, any jurisdiction other than India; or that the trade mark is well-known to the public at large in India.

CONCLUSION

By making provisions for registration of well-known marks, India has made it easier for entities with well-known marks to safeguard their rights. As many other countries are still contemplating to bring about such legislations by this amendment India has definitely taken the lead here. Although a few organisations have questioned the validity of the provisions relating to registration of well-known marks, none has yet challenged them in a court of law. Proprietors of reputed brands now have an opportunity to register their marks as “well-known” marks in India in order to not only safeguard their marks against unauthorised and unlawful use but also to protect them from the risk of dilution by inferior product/services. 

This article was originally published at http://www.foxmandal.in/why-you-should-register-your-well-known-marks-in-india-now/.   Please visit http://www.foxmandal.in/blog/ for more interesting reading.

David v Goliath in the trade marks world

Bentley Motors has been involved in a trade mark dispute for many years, the other party being a company called Brandlogic which owns a number of trade marks of which the important verbal part is BENTLEY 1962, which have been registered for clothes since as long ago as 1982.

Bentley Motors has been using its trade mark on a small range of clothes for nearly 20 years. The prices of the clothes are, other things being equal, comparable to the price of the cars - a polo shirt will set you back £75, according to the Financial Times. Not happy about someone else using the name, Bentley Motors sought to have the Brandlogic trade marks declared invalid or revoked on grounds of non-use for five years. Although they succeeded in part, they were unable to clear the way entirely, and even an appeal (to the Appointed Person) left Bentley Motors in difficulties.

Now Bentley Motors have filed an EU trade mark application. They might have been hoping that this way they might do without Brandlogic noticing, because on the face of it their earlier trade marks will be a barrier to the new application. I've done it myself, usually the other way round - applying for a UK trade mark so the owner of an earlier EU trade mark wouldn't notice. If so, it hasn't worked. The reason the matter has been in the press recently is because Brandlogic's trade mark attorneys have switched sides, in a perfectly proper manner within the rules (although that's not to say that the rules, or the regulator, are right). Inevitably, they will want to act for the client with the biggest chequebook - that's the way the legal industry works (oh, you thought it was a profession?).

What is deplorable here is not that a company should be trying to maximise the power of its trade marks. As car companies go into making clothes - as everyone goes into making clothes, I suppose - trade mark registrations have to get wider. Often these conflicts are dealt with in a very heavy-handed way - the Goliath tries to bully David. I've seen it happen to my own clients and it isn't nice. But Goliath is answerable to its shareholders, and they are going to insist on trying every trick in the book to overcome the nuisance earlier trade mark, regardless of the merits. Often might alone (or at least a big chequebook) is enough. And that isn't a sound basis for a just trade marks system.

Nottingham Law School graduation

I enjoyed the hugely gratifying experience of seeing many of my students from this past year receive their degrees a few weeks ago. Thanks to the wonders of modern technology it's all there on YouTube. And the vote of thanks at the end is great.

I can't begin to say how much they taught me!

Ferrari's TESTAROSSA trade mark under threat

According to international IP firm Novagraaf, Ferrari face a challenge to their registration of the trade mark TESTAROSSA. Autec AG of Nuremberg has applied to register an identical trade mark (in Germany, presumably) for bicycles (including e-bikes), and Ferrari's opposition has been rejected by the German courts on the grounds that the Italian manufacturer has not used its trade mark for more than five years. Non-use for five years or more makes a trade mark registration liable to revocation, and Autec is now seeking to have Ferrari's German and EU trade marks revoked.

Ferrari had argued that the trade mark was in use, as it was providing maintenance and repair services for the Testarossa - which it stopped making in 1996. But the court, crucially, held that in fact those services were marketed under the Ferrari brand not TESTAROSSA.

That seems quite correct to me. Trade marks perform several functions, not just the traditional origin-indicating one, but essentially a trade mark owner must use a trade mark to indicate the origin of its goods and services. TESTAROSSA in connection with servicing and repair is an indication of the purpose of the services, and should not support the registration of the trade mark for cars. There are 11 various registrations in Ferrari's name for TESTAROSSA (and quite a few in other people's names, hardly surprising given that the word could just as well be used for many different goods), but none of them are for services. Replacement parts are covered, but I suspect that the objection that they are sold under the Ferrari name not TESTAROSSA (and, if it be used at all, that designation is purely descriptive of the purpose of the goods) would apply here too.

A cautionary tale for owners of "heritage" (that is to say, old) trade marks. In the UK, perhaps they don't need to worry so much because an action for passing off might lie even if the trade mark were liable to revocation, but far better and cheaper to keep the trade mark in use, somehow. When the modern Testarossa was launched in 1984 its chosen name harked back to the 1957 Ferrari 250 sports racing car, and the name could similarly be recycled now to maintain protection. 

Intellectual property and competition law

Always an interesting topic ...

Hemphill, C. Scott, Intellectual Property and Competition Law (May 9, 2017). Forthcoming, Oxford Handbook of Intellectual Property Law (Rochelle C. Dreyfuss & Justine Pila eds. 2017). Available at SSRN: https://ssrn.com/abstract=2965617 or http://dx.doi.org/10.2139/ssrn.2965617

And another article of interest:

Lim, Daryl, Retooling the Patent-Antitrust Intersection: Insights from Behavioral Economics (April 14, 2017). 69 Baylor Law Review 124 (2017). Available at SSRN: https://ssrn.com/abstract=2953031

"The Great Intellectual Property Trade-Off"

Tim Harford ("The Undercover Economist") is, I find, always worth reading, and here is his take on the intellectual property system via the BBC (the website article is based on a programme on the World Serve). Nothing new in saying that there is a trade-off involved in the intellectual property system, of course, we have known that for a long time, but it's good to see it aired in this way. The chilling effect of James Watt's steam engine patents is interesting, and I hadn't fully appreciated that before (nor that Watt also suffered because of other patents). Remember though that the patent system was in its infancy in those days, and modern patent legislation is unlikely to allow this to be repeated.

Mr Harford cites "the economists Michele Boldrin and David Levine". ("The economists"? Surely there are more than two?) Their book Against Intellectual Monopoly can be downloaded from here. They are from Washington University of St. Louis, Economics Department, and have done a lot of work on the economics of intellectual property (though what bears a date seems to be ten or more years old). The idea of the book is intriguing, but I am somewhat concerned about the lack of information about publishers - of course self-publication is perfectly respectable, but I'd like to see something objective to enable me to judge whether to spend time reading it (or to suggest my students read it). At first glance, it looks like a popular rather than a scholarly work. It lacks footnotes, though there are extensive notes at the end of each chapter. I would also like to know when it was written - I haven't found a reference to a source later than 2005 yet. Mr Harford should give his readers a bit more information, although I don't expect high levels of academic rigour in his work (that's one of its attractions). When I read more of the book I will write more about it.

And while I am writing about the BBC - "The Bottom Line" on Radio 4, presented by Evan Davis, had a recent episode entitled "Corporate Espionage". It's currently available to download as a podcast here. It features serial inventor and entrepreneur Mandy Haberman, patent attorney Vicki Salmon and investigator-cum-author Chris Morgan Jones. Different intellectual property rights get a little confused but it's definitely worth listening to.

Google in record fine for abuse of dominant position

Google has been fined a record €2.42 billion (more than twice as much as expected, and indeed twice as much as the "bung" given by the UK government to persuade the DUP to maintain it in office) for abusing its dominant position, contrary to Article 102 of the Treaty on the Functioning of the European Union. The Commission found that the search engine gave illegal prominence to Google's comparison shopping service. Unless it terminates the abuse within 90 days, the company will become liable to daily penalty payments up to 5% of the global turnover Google's parent, Alphabet.

The competition Commissioner Margrethe Vestager said:

Google has come up with many innovative products and services that have made a difference to our lives. That's a good thing. But Google's strategy for its comparison shopping service wasn't just about attracting customers by making its product better than those of its rivals. Instead, Google abused its market dominance as a search engine by promoting its own comparison shopping service in its search results, and demoting those of competitors.
What Google has done is illegal under EU antitrust rules. It denied other companies the chance to compete on the merits and to innovate. And most importantly, it denied European consumers a genuine choice of services and the full benefits of innovation.

The Commission keeps imposing record fines on technology companies. In 2009 it fined a record Intel €1.06 billion for paying manufacturers and a retailer to favour its products over those of AMD, surpassing the €497 million penalty imposed on Microsoft in 2004. There's a brief survey of the eight biggest fines imposed on technology companies for breaches of EU competition rules on the Computer Business review website here. And there is, I think, an outstanding investigation into another abuse by Google involving Google Play and the Google search engine being installed on smartphones. There's also the Commission's state aid case involving the Irish tax authorities and Apple. So many that commentators write about the EU being at war with Silicon Valley - which just happens to be where many of the dominant firms come from (and incidentally a long way from Redmond, WA). The fact remains, however, that there is an interesting phenomenon here as the law on abuse of dominant position (and the penalties for breaches) develops. The fact is, the technology sector offers huge scope for abuses of one sort or another.

There's too much to do to write more about the Google decision right now but I will get back to the story later. If you want to know more here is the Commission's press release. There's also an interesting Fact Sheet. And, with a hat-tip to Warwick Rothnie's IPwars.com blog, Ben Thomposon's comments on Stratechery.com are also well worth reading. I found them very eye-opening.