Copying music without knowing

The Guardian this morning reports another case in which a piece of music was held to infringe copyright in an earlier piece. It happens more and more often, it seems - as the twin evils, long identified in the trade marks world, of depletion and foreclosure insinuate themselves into copyright, albeit with changes to their form to take account of the very different subject-matter of trade mark protection.

The case in the papers today was decided in the United States, and by a jury, which means that the same will not happen here, not by the same route anyway. Katy Perry's song Dark Horse was found to have a similar beat to a piece called Joyful Noise by Flame, a Christian rapper (a new genre to me). It seems that several others were accused of infringing, too.

For copyright infringement to happen, in the USA as well as in this country (and every other country that has a copyright law, which I think is every country although in some of them the situation is a bit unclear), there has to be a nexus between the copyright work and what an infringer has produced (you can't say the infringer created it, because the whole point is that he or she hasn't, nor can you call it a work because it doesn't represent work, just appropriation). If an alleged infringer has no knowledge of the copyright work in question, there is no infringement: there is a second, similar or identical, copyright work, created independently by the defendant.

Many copyright owners don't like this situation, of course. They would rather their copyright was a true monopoly right. But copyright law is not patent law, and quite right too. Copyright doesn't protect the piece of music (or the book, or the painting) per se, but the effort that the creator put into it. So the owner of copyright in a piece of music has to show that the defendant had heard that piece. The case law tells us that it isn't necessary to show that the defendant has to recall the piece - if that were the case, a little selective amnesia would be enough to defeat any infringement claim - but merely that they have been exposed to it.

To avoid being exposed to others' music, composers will not generally listen to the recordings that they might receive from aspiring composers hoping for an endorsement (or perhaps hoping to contrive a situation in which an infringement action might lie). But in the modern world it becomes much more difficult to avoid exposure to music. When it is playing, unnecessarily, in lifts, shops, restaurants, gyms, and workplaces, it's impossible to get away from. I might have heard Dark Horse and Joyful Noise many times, quite involuntarily, but I certainly don't recall either of them. Were I a songwriter, I might well have incorporated some part of them (one or other of them) in a work of my own. And to some extent that's how music gets written, and always has been.

What strikes me as novel in this case is that sheer numbers of YouTube views seem to have raised a presumption that Katy Perry and her co-authors must have heard it. That's frightening. I might be exposed to a piece of music in the gym, however hard I try to shut it out and concentrate on my workout, and therefore become a prospective infringer.

How can this be addressed? It's right that the copyright owner should get something when another composer appropriates their hard (or even not-so-hard) work. What is needed is a narrower concept of what amounts to actionable appropriation, as well as consideration of what damages should be awarded and whether there ought to be some sort of licensing scheme to cover some types of infringing act. In the Kay Perry/Flame case, the situation is complicated by the fact that a jury made the decision that there had been an infringement, and having a jury decide matters like that doesn't appeal to me as a sound way to deal with them. Perhaps that accounts for why just taking the beat was held to be an infringement. In the name of research I have listened to the two songs on YouTube, and indeed the beats are very similar, although they are also pretty mundane and I wonder where Flame's came from in the first place. A rigorous analysis of the originality of the claimed work would be the starting point for a more rational approach to questions of infringement.

Another important difference between UK and US copyright law is that while the UK law considers the originality of a work as a whole, US copyright law is more inclined to take the work apart and look for originality in its components. Here, it seems to me quite likely that an English judge, asked to consider the two, might remark that the beats sounded similar but that the two songs as a whole were so completely different that the similarities could not be considered substantial. Perhaps it's not a problem that would ever come to court in this country, but the fact is that US copyright casts its shadow over the whole world and we need to take care always to distinguish what goes on there from our own approach.

Commodities, commodification, commoditization and intellectual property laws

In a piece in The Guardian today, Anish Kapoor is quoted as saying: "Only poetry and the more serious classical music seem able to resist becoming commodities." He admits that he has benefitted from "neo-liberalist commodification", and indeed few artists can have done as well as him out of it, but even so he doesn't make it sound like a good thing. Which I guess he doesn't think it is.

Commodification is not a necessary consequence of copyright (or more generally intellectual property) protection. What the world of commerce needs is proprietary rights:

The merchant must have property in the things in which he trades, his rights to that property must be identifiable, When he sells an article he must be able to assure the buyer that the things is his to sell; he must be able to prove his property in it, if he is challenged. (Hicks, A Theory of Economic History, OUP, 1969, p.34).

It is true as much for intangibles as for tangible things. Argubly, a far-reaching law prohibiting unfair competition could do the job of all IP laws, but giving them the status of property rights probably makes them much more useful - much more tradeable, and available for use as security - than a mere right of action against an unfair competitor would be.

So, to make intellectual property tradeable it is commodified - turned into objects of trade. "Commodification" is a term used in Marxist theory, where it denotes the process of giving an economic value to something that it didn't have already, by producing it and presenting it for sale rather than just consuming it oneself. It's different from commoditization, which is a term found in business literature to denote the process by which goods that have economic value and can be distinguished by their attributes - their uniqueness or brand - become simple commodities in the eyes of the market or consumers. Here, the meaning of "commodities" is somewhat different from the Marxian one: the word denotes goods that have full or substantial fungibility (a great word), meaning that the market doesn't care who produced them, as one person's commodities are much the same as another person's.

So it seems to me that commodification is an essential result, or perhaps a goal, of copyright protection, whereas commoditization is what intellectual property laws (trade marks probably play a more important role here than copyright) are designed to prevent. Kapoor can earn a living (a very good one, I imagine) because his work is commodified, but it would be incorrect to consider his creations as commodities because they are readily distinguishable from the works of other artists. Ineed, I can see an argument for saying that anything that can be labelled a commodity in the second sense mentioned above should not receive any form of protection from intellectual property laws (by which I mean, in the trade marks field, that purely descriptive or non-distinctive trade marks like BREAD for bread must not be registrable, not that bakers should be denied access to the trade marks system altogether).

This is an aspect of intellectual property law about which I am developing my thoughts, so please excuse any half-bakedness in this posting. Any comments would be gratefully received.

Spare Rib archive threatened by B****t

I was surprised when I read about this today in the Guardian. Why should the British Library's digital archive of the celebrated feminist magazine have any problems arising from the impact on the orphan works directive of B****t?

My first thought was that the Directive (implemented in s.44B and Sched.ZA1 of the 1988 Act) must surely remain part of UK law. But (according to its website) the BL has been advised by the soi-disant Intellecual Property Office that the "legal exception" (properly, permitted act) would no longer apply. Which makes me ask, what is the BL doing taking legal advice from there? Don't they have lawyers (with insurance)? Given the extent to which the BL works with copyright (all the time), I would have thought the advice should have been flowing, if at all, in the opposite direction.

Thanks to Eoin O'Dell's Cearta blog I have now looked at the draft Intellectual Property (Copyright and Related Rights) (Amendment) (EU Exit) Regulations 2018 (pdf) and their Explanatory Memorandum (pdf). I am astonished to see that the government plans to throw the baby out with the bathwater, repealing (or "omitting", as the legislation says - is that another example of B****t Newspeak?) section 44B which is the permitted act, along with Schedule ZA1 (and I do think that with a title like that it probably deserves something, though I'm not sure repeal is called for).

Is the real problem that the right to issue copies etc across the EU will be lost (and as the archive is online it is available, presumably, EU-wide)? Would geo-blocking help (but if it would, is it acceptable)? The BL won't be able to add anything to the EUIPO database, but if it has published stuff in reliance on the fact that it was in the database then it seems to have complied with para 5 of Sched. ZA1 and I don't see anything to require it to refresh its due diligence. It looks as if Cultural Heritage Institutions in the UK will no longer be able to look at the EUIPO database (which seems a bit miserly) so in future it would be impossible to comply with para 5: but that doesn't have to destroy the legal basis for the Spare Rib archive.

The domestic licensing scheme (s.116A and SI 2014/2863) might help but seems too limited, and expensive, so I am disregarding it as a practical alternative. I will however note that the SI is being amended to remove references to the EU database - which as the Regulations stand is an essential component of a diligent search. Well, of course this has to be done, but why couldn't the same approach be taken to the permitted act?

The answer is, I guess, that there was always a certain amount of tension between the UK's licensing approach and the Directive's permitted act approach - described by Eleonora Rosati in this paper and by the IPKat, 22 November 2013. Eleonora suggested that the UK law was incompatible with the directive, the Infosoc directive, the Copyright, Designs and Patents Act 1988, and even the Charter of Fundamental Rights, which is a pretty comprehensive charge sheet. On that basis, I can imagine that the UK government was content to see the back of the EU orphan works scheme: in the orphan works sphere, the UK had been taking back control since 2013. So following B*****t orphan works will be subject to the IPO-operated licensing scheme, and the BL and others (a wider range of others than under the Directive) can pay for the privilege of using orphan works.

Of course we have to respect the will of the so-called majority (including, I am pretty confident, no readers of Spare Rib) who voted to trash all the hard work that has gone into this.

Numbering of "comparable" UK trade marks

The UK-only trade marks that will, if leaving the EU ever becomes a reality, be carved out of existing EU trade marks are being called "comparable" trade marks. It seems like an odd choice of word, but compared with the madness that is Brexit this is a minor quibble. The Patent Office has published a notice about how these will be numbered:

In order to identify comparable UK rights and distinguish them from existing UK trade marks, the number allocated to the comparable mark will be the last 8 digits of the EUTMprefixed with UK009.
The following examples show how comparable UK trade marks will be numbered:

Existing EU trade mark	Comparable UK trade mark
000000977	UK00900000977
000025197	UK00900025197
000340513	UK00900340513
017867542	UK00917867542

By retaining the EUTM number, we aim to keep the administrative process to a minimum.

Of course the best way to "keep the administrative process to a minimum" (let's read that as if it had the word "burden" in place of "process" - one does not keep processes to a minimum, and in any case it is surely more accurate to say it's as small as possible, not a minimum) would be to stop the nonsense altogether, but our Prime Minister is clearly dead set on it. As a numbering scheme this makes sense and is pretty simple - it reminds me of how when the 1994 Act came into operation the Registry started with number 2,000,000, which meant losing only a few numbers but provided a nice easy way to recognise "new Act" trade marks.

I wonder what will happen to comparable UK trade marks when the country rejoins the EU in a few years' time? Is the government planning for that contingency yet?

Book review: Copyright Law and Derivative Works by Omri Rachum-Twaig

Calling a work "derivative" is not a compliment, but there has been a tendency (since at least the Gowers Review) to consider the way that copyright laws treat derivative works as too restrictive. The author's starting point is the proposition that copyright regulates creativity: indeed, "regulating creativity" appears as a sub-title on the front cover. It seems to me that exploring creativity through the prism of derivative works is the wrong starting point, but I don't think it detracts from this fascinating and important book.
It seems customary these days to explain that one has been given a review copy of a book, so let me start by stating (though it seems pretty obvious to me) that I have been given a review copy of this book, published recently by Routledge at the eye-watering price of £115 - that being the main reason that declaring the gift of a review copy is surely redundant. I wouldn't go so far as to say that it's worth £115 of anybody's money, but it will be worth that much of some people's money, and it is a very interesting not-so-little (190 pages of real text) monograph, not padded out with lots of front- and back-matter.
After considering matters of quantum, always the first thing I notice about a book, I start to wonder about the author. He is, the book tells me, an adjunct professor of law at the University of Tel Aviv. The Internet tells me more, and I was particularly interested to read that his first degree is a Bachelor of Music and that he has had an impressive orchestral career already. That might have been his route into copyright law, but if it was it doesn't show in this book, and I found that slightly disappointing: but it doesn't claim to be a book about music copyright, so my disappointment is probably misplaced anyway.
The work, my reservations about the focus on derivative works notwithstanding, is an exploration of how well copyright understands creativity, compared with other fields of study: so, despite the title, it is quite light on black-letter copyright law - and more interesting for it, IMHO. It uses derivative works to inform its discussion of creativity, considering whether the law's treatment of the right to make derivative works (and its inclusion, generally, in the bundle of exclusive rights that the copyright owner enjoys) is compatible with what other disciplines teach us. The author examines the cognitive aspects of creativity before going on to look at genre theories (with an interesting discussion of how Sherlock Holmes derives from the work of Edgar Allen Poe) and the justifications for what he calls the "derivative works right", though I am not convinced of the need to identify it as a distinct instance of copyright protection - reproduction right ought to do the job.
But perhaps that remark just shows me to be unsympathetic to the argument that copyright, in the interest of encouraging creativity, should be more liberal in its treatment of derivative works: surely "derivative" is the opposite of "creative" or "original", and where a later creator wants to use another's copyright material it is a transaction that should be resolved by licensing, not by permitting otherwise infringing acts. A transformative work is another matter, and to my mind copyright should be encouraging the creation of such works rather than engaging in a sterile argument about creating space to make derivative works, space which already exists and is regulated by the requirement that making them requires the copyright owner.

Crown use as a solution to drug costs

There's nothing new about controversy over the cost to the NHS of patented pharmaceuticals. It's inherent in the patent system that patentees who invest possibly eye-watering amounts of money in devising inventions will want to use their monopoly rights to recover that investment and gain a return on it.

Today The Observer reports on a novel solution to the sometimes terrible problems that can arise when drugs are available to treat life-threatening conditions but the price is out of reach. Mechanisms are in place to try to ensure that the NHS is not charged excessively for new drugs, but they have failed to close the gap between what the NHS can afford and what the patentee wants (£105,000 per patient) in this case. The mooted solution is to use the Crown use provisions of the Patents Act 1977, under which the patentee will receive a modest royalty. Section 55 actually uses the expression "for services of the Crown", but section 56(2) specifically includes "the production or supply of specified drugs and medicines" within "the services of the Crown", making it a surprisingly wide concept.

I don't recall section 55 being invoked very often, and while the facts as narrated by The Observer are rather thin - it concentrates on the undoubted human interest aspects - this certainly looks like an interesting departure in patent law. I hope above all else that a solution can be reached that delivers what the unfortunate patients need.

New podcasts

I have had a break of a few years from podcasting, for various reasons. I hope you will have seen the IPso Jure YouTube channel (link on the right hand side bar) which I started up a few months ago, on which I plan to publish some basic material including a lot of stuff for law students (such as how to answer exam questions) as well as practitioners.

Today I have relaunched my podcasts with a production about the reform of UK trade mark law which came into effect on 14 January this year. It's about 40 minutes long and I am selling copies for £1 each. I will soon be recording a monthly update podcast (like I used to do a few years ago) and selling that too. You can get your copy here. You can also download the accompanying slides here.

The effect of a "no-deal" departure from the EU

Yesterday's vote in the House of Commons, a record-breaking defeat for a government, leaves us with no clearer idea of what might happen at the end of March. By default, according to the law as it stands, we leave the EU on 29 March, and as there is no withdrawal agreement we will leave with nothing to govern our relationship with the EU. The chances of that changing are fairly good, given that Parliament (which is trying to wrest control of the process from the government - ironic, given that "taking back control" was supposedly at the heart of the whole idea of leaving the EU) has put in place provisions that make it pretty well impossible to crash out without a deal.

The most likely alternatives at present seem to be an extension beyond 29 March of the notice period given under Article 50 TFEU, or withdrawal of that notice (which the Court of Justice has kindly indicated can be done unilaterally, although only if it is in good faith - that is, not simply to delay matters). Neither of those requires consideration at present, because the status quo would be preserved.

The government has published guidance on what will happen in a variety of areas if there is no deal. One of its briefings concerns trade marks and designs. Originally these documents said that a "no-deal" withdrawal was unlikely: more recent editions seem to lack that reassurance. Ho hum. Although it does say: "We expect to negotiate a successful deal with the EU."

Of particular interest to trade mark and registered design owners is what will be the effect of their EU trade marks if no deal is reached. After all, for years they have been encouraged to believe that all they needed was protection at the EU level and many allowed their UK national rights to fall away, to save renewal fees. The answer is:

The government will ensure that the property rights in all existing registered EU trade marks and registered Community designs will continue to be protected and to be enforceable in the UK by providing an equivalent trade mark or design registered in the UK.

Note that this says nothing about charges. Under the draft withdrawal agreement, there would have been no charge for this: will the government be able to resist an opportunity to raise some revenue, especially when so much would come from foreign companies? Perhaps the financial arrangements of the Patent Office (or Intellectual Property Office as it prefers to be called) remove any attraction to this course of action - it might not benefit the Treasury.

Right holders with an existing EU trade mark or registered Community design will have a new UK equivalent right granted that will come into force at the point of the UK’s exit from the EU. The new UK right will be provided with minimal administrative burden. The trade mark or design will then be treated as if it had been applied for and registered under UK law.

And if a new corresponding trade mark has not been used in the UK in the past five years - will it immediately be liable to revocation? Will the proprietor be able to rely on the reputation acquired by the trade mark in other EU countries, when suing an infringer in the UK? The rejected withdrawal agreement dealt with these points, but the guidance says nothing. Logically, leaving the EU should mean that the new trade mark's past counts for nothing - the five year non-use period should start from scratch, and any reputation acquired elsewhere in the EU should be irrelevant.

This means that these trade marks and designs:

• will be subject to renewal in the UK
• can form the basis for proceedings before the UK Courts and the Intellectual Property Office’s Tribunal
• can be assigned and licensed independently from the EU right

No surprise there.

After exit, business, organisations and individuals with EU trade mark and Community design applications which are ongoing at the date of exit will be able to refile with the Intellectual Property Office under the same terms for a UK equivalent right, using the normal application process for registered trade marks and registered designs in the UK.

Was that even worth saying?

This means that for a period of 9 months from exit, the government will recognise filing dates and claims to earlier priority and UK seniority recorded on the corresponding EU application. Right holders taking this step will need to meet the cost of refiling the application in accordance with the UK application fee structure.

 Does this actually follow? I would have thought that if the normal application process were followed there would be a 12-month priority period, although seniority (being a pecularily EU thing) is a different matter. Anyway, this "special priority period" could be useful for applications for EU rights outstanding on the key date (29 March 2019 or such other date as might emerge) because it could enable an applicant whose EU application is opposed to salvage UK protection while retaining the priority date.

These same provisions will apply to international registrations designating the EU filed with the World Intellectual Property Organisation. This ensures that there is continued protection in the UK from March 2019 onwards for trade marks and registered designs (filed through the Madrid and Hague Systems, and designating the EU as the area where they apply).

That seems reasonable, if "reasonable" is a word that can be used in connection with any of this.

Two other points are worth mentioning: first, without an agreement to govern withdrawal the rights of UK lawyers to represent clients before the EUIPO will be in the gift of the European Union rather than based on a sound legal right; and second, EU TM owners might need to find themselves an address for service in the "residual" EU after the UK leaves. More headaches for small businesses.

You might find it useful to listen to this presentation which I published a while ago on the IPso Jure YouTube channel, although it is now to be treated with care!

Purposive construction

A little while ago, I illustrated the concept of a transformative copyright work by referring to what Rachmaninov did to Pagannini's Caprice no 24. A little while? It was October 2017. Now another illustration of an important aspect of intellectual property law from the world of music has come along.

This time my inspiration came from Record Review on BBC Radio 3 a few weeks ago (on 14 December 2018, to be precise - if you go to the Radio 3 website you might still be able to find the programme, perhaps in the podcast version). The work being reviewed was Richard Strauss's Till Eulenspiegels lustige Streiche. It's a piece I came to love when I was still at school (the horn solo particularly appealed), and the three boxed set of LPs of Strauss's Orchestral Works by Kempe and the Dresden Staatskappelle were quite an early part of my record collection. But I digress, as usual.

About 17 minutes and 20 seconds into the podcast, the reviewer (the composer William Mival) is considering the 1959 recording by the New York Philharmonic under Leonard Bernstein - another of my favourite musicians. "Bernstein even adds in detail that isn't in Strauss's score", he tells us. "A snap or Bartok pizzicato in the double basses right at the end of the market scene just before till rides off into the far distance. It means that the string is plucked with so much force that it rebounds against the fingerboard producing a distinctive crack. This kind of addition is of course typical of Bernstein who would often be far more interested in the spirit of the written score rather than the literal instructions on the page."

That neatly brings together two memorable events from my first term at University, back in 1974: the opening of the new arts centre, when honorary degrees were conferred on Peggy Ashcroft, Eurgene Ionescu, Michael Tippett and Leonard Bernstein, and one of the earliest concerts there given by the Amadeus String Quartet, which included a Bartok quartet from which I learnt about that pizzicato. But again, I digress.

Thanks to YouTube, I can direct you to exactly the right moment in Lennie's recording. But how does this relate to intellectual property law? Less well than it would have done a few years ago, I admit, but it's still relevant. Ever since Lord Diplcok's speech in Catnic v Hill & Smith [1981] FSR 60, [1982] RPC 183 (HL) we have been familiar with the idea of a purposive approach to interpreting patent claims - considering what the applicant had in mind, the spirit of the claims, rather than the precise words used. And although the way the courts approach patent claim interpretation now has developed from that starting point, the idea of a purposive approach remains important. Modern claim interpretation, I suppose, can be said to date from the moment Lord Diplock chose to seek out the purpose of the claims rather than fixating on the words - a departure which I do not believe is an unalloyed good thing, but who am I to criticise the noble Lord and his colleagues? Suffice to say (for the time being) that to my mind the purposive approach works far better in musical performances than in patent litigation.

Happily, the outcome of the review of the available recordings was that the Kempe version which I have owned for about 45 years came out well ahead of the rest. Although I do like the Bernstein ...

Revised Trade Marks Act: generic use in dictionaries

Today is the day the revised Trade Marks Act 1994 comes into operation. The changes have been brought about by the Trade Marks Regulations 2018 (SI No 825), and implement the EU directive 2015/2436. My friend Jane Lambert has written about it on her NIPClaw blog so I don't feel the need to deal with it all - although I am preparing a recorded lecture. But one provision does strike me particularly.

New section 99A implements Article 12 of the Directive, which deals with the inclusion of a trade mark in a dictionary, encyclopedia or other work of reference so as to give the impression that it is the generic name for the product or servicefor which it is registered. Hoover, for example, should be described as a trade mark for vacuum cleaners - which is exactly what my Bloomsbury Concise English Dictionary does (except that it adopts the American convention of joining the words "trade" and "mark").

The Directive, unhelpfully, prescribes no mechanism for enforcing this right, saying only that the proprietor has the right to request the publisher to put matters right, and that this must be done without delay and certainly in the next edition if the work is a printed on. The Act allows the court, on the proprietor's application, to order compliance, to order erasure or amendment or even destruction, and to grant such other order as the court considers appropriate.

So the proprietor of a vulnerable trade mark has new and valuable protection against genericide. But I realised over the weekend that this is not enough. That dawned on me in the course of solving the Financial Times prize crossword, which tested me with 23 down: "Starts to loot your store of lavatory disinfectant (5)". I had never heard of LYSOL*, but it's the subject of a couple of hundred trade marks around the world owned by Reckitt Benckiser including several EU ones and 3359242 filed last month (313061, from 1909, having died) - the proprietor obviously taking steps to protect itself after 29 March 2019.

I don't like this, though my old friend and fellow cruciverbalist Bob Cumbow of Miller Nash Graham and Dunn LLC, with whom I colaborate on the FT puzzle each weekend, tells me it is fairly common in US puzzles: and he pointed out that the solution to 2 down, "Utter tosh about US estate agent", was also a trade mark: REALTOR ("real" for "utter", "rot" for "tosh", reversed). In fact it belongs to the National Association of Realtors, so it seems to be functioning as a sort of collective or certification mark, so I learnt something new from the exercise, but more importantly it occurred to me that s.99A gives no protection against this important sub-type of genericide. Should it? Or does the law go as far as one might reasonably expect? I should have been writing this when the government (through the agency of the IPO) consulted on the implementation of the new directive. Maybe next time.

*You probably don't need this, but "Starts to ..." is a pretty clear direction to make a word out of the initial letters of what follows.

Independent garage defeats manufacturer's trade mark application

Thanks to Jane Lambert and her NIPC Law blog for drawing my attention to Jaguar Land Rover Ltd v Twisted Automotive Ltd [2018] EWHC 3536 (Ch) (20 December 2018) which is a judgment of Rose J in an appeal against the 15 May 2018 (O-289-18) decision of Ms Louise White acting for the Registrar of Trade Marks. In her decision, Ms White upheld the opposition by the Respondent to the registration by the Appellant of the trademark "LR" (except for bicycles and scooters and related goods): and in her judgment Rose J dismissed the appeal. Quite right too, IMHO, although on the facts it could be a pretty close-run thing.

Twisted, who trade as specialists in Land-Rover Defender vehicles, parts and services, had no registered trade mark, so they had to rely on section 5(4)(a) of the Trade Marks Act 1994 - which in essence required them to show that they could have succeeded in a passing-off action. The main reason that I think it might have been a close-run thing was that their use only goes back to November 2015, and although the point did not detain the learned judge the appellant pointed out that the date on which the strength of the respondent's goodwill had to be measured was the application date - 23 August 2016.

JLR put forward the interesting argument that their use of the sign LR would not be a misrepresentation, because the respondent was indeed dealing in Land-Rover products. Remember that what was at issue was not (as is usually the case when manufacturers sue independent repairers) whether the respondent could use the sign, but whether the appellant could be allowed to register it. JLR were, in a sense, too late: unless the Hearing Officer had got it very wrong (a gross over-simplification of the principles set out by Arnold J in Apple Inc v Arcadia Trading Limited [2017] EWHC 440 (Ch)) an appeal court cannot interfere, and anyway JLR's assertion that the sign would be recognised as identifying their business was just that, an assertion, unsupported by evidence. In fact, JLR had never used the sign at all. The learned judge saw no reason to interfere with the Hearing Officer's decision.

While on the face of it you might not expect such a short period of trading under the sign to create enough goodwill for a passing-off action to succeed, that didn't influence the outcome of the case. And actually in my view there could well have been enough goodwill. If (as the Mullers Margarine case tells us) goodwill is the attractive force that brings in custom, you have to take the customers as you find them. Land-Rover Defenders are specialist vehicles. Indeed, Land-Rover don't make mass-market vehicles at all, but I think there is a distinction to be drawn between its Range Rover, Discovery and Freelander ranges and the utilitarian Defender, developed from the original Land-Rover which required no fancy model name - indeed, had nothing remotely fancy about it and often attracted the adjective "agricultural", which was always meant in a good way. No-one buys a Defender as an ordinary family run-around: it is designed to do a particular job, which it does very well, and if you don't want a vehicle to do that you won't buy one. Simple. As I remarked in a slightly different context - in 2013, though it seems like only yesterday - not all car owners are the same. In that earlier post I was considering Porsche owners, but (while there might be little overlap with Defender owners) the same principle applies. We are talking about enthusiasts. "Petrolheads" might not be the right word, given that Defenders often have diesel engines, but you get my drift, don't you?

While the owner of a bog standard cooking family saloon or hatchback might not bother to understand the intricacies of the motor trade - distinguishing between manufacturer and dealer, and between authorised repairer and independent - and indeed these days might not even own their car but just lease it, we should not assume that enthusiasts are the same. They buy a Defender (or a Porsche, or whatever), not mobility. When they look for specialist services, or parts or accessories, they are quite likely to trust independent experts rather than authorised dealers.

It's a fact of life that authorised workshops only usually get to see cars under three years old. Once they reach MoT age they tend to become the preserve of independent garages. Maintenance contracts, personal leases and warranties might all contribute to extending that period of exclusivity, but as a rule the buyer of a secondhand car isn't as likely to entrust it to the authorised workshops for servicing and repair. They often cost more - sometimes a great deal more - and their up-to-date knowledge isn't particularly important if you don't have an up-to-date car. The last Defender (apart from a limited edition for the 70th anniversary in 2018 - only 150 examples) was made nearly three years ago, so Land-Rover dealers will be seeing less and less of them anyway: owners will be aware of the independent sector, and to keep their running costs proportionate to the value of their vehicle they will be inclined to use it.

Enthusiasts, such as Defender owners, should be assumed to know the value of the independent sector and to understand the differences between it and the franchised motor trade. So while this isn't how Rose J reached her decision (neither is it how the Hearing Officer Ms Louise White reached hers), I think it demonstrates that the decisions were absolutely right.

The colour purple

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

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

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

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

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

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

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

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

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

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

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

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

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

Why?

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

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

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

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

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

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

.eu domain names after UK withdrawal

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

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

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

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

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

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

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

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

Trade marks after B****t

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

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

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

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

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

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

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

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

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

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

Brand extension: A step too far?

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

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

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

BACKGROUND

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

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

This case makes an interesting read for the following reasons:

He who comes into equity must come with clean hands:

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

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

“Use” of a trade mark:

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

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

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

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

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

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

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

Infringement of a trademark under Section 29(5):

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

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

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

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

No B****t dividend for authors

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

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