Happy New Year: here's some Kat News

New Year partying in Katland was always a sedate and somewhat genteel affair ...

The IPKat, Merpel and their friends hope that last year was a good one for you and wish you a happy new one too. They have some Kat news to report:

Regular team members

It is with great sadness and also a good deal of pride that we say farewell to Nicola Searle, she of Katonomics fame. As mentioned in a recent post, Nicola’s departure is the fruit of her own success: no doubt it was her excellent blog posts over the past year that caused the UK’s Intellectual Property Office to take her on as Economic Adviser. Good luck, Nicola, we shall miss you!

Another team member — Catherine Lee (alias Cat the Kat) — is stepping down, though this time it’s only to take a sabbatical from blogging while she transitions herself into a new career. We look forward to her return from what he hope will be a good and refreshing break.

Who will fill Nicola’s and Catherine’s places? The team is pleased to announce that it has at least one experienced IP blogger lined up. Current guest Kat Eleonora Rosati will be stepping up and assuming the mantle of regular team status. Eleonora’s appointment broadly coincides with her move to Cambridge University, where she will be pursuing her IP research interests with nothing worse to distract her than the constant quacking of ducks on the River Cam.

 The Kats hope to unveil the identity of a second full team member within a week.

Guest Kats for the period 1 January to 30 June 2013

First, we say a fond farewell to departing guest Kats Robert Cumming and Kate Manning, whose contributions over the past six months have been greatly appreciated.  Merpel agrees with the IPKat that the IP world will surely hear a good deal more from these talented souls -- and sooner, rather than later. Kate, incidentally, joins IPKat team blogger Jeremy in compiling the European Trade Mark Reports, of which she becomes Deputy Editor.

Two fresh faces are stepping up as guest Kats this time around. The first is Jeff John Roberts, who occupies a lawyer-journalist space somewhere in the vicinity of North America and has recently published an e-book, The Battle for the Books, about Google’s ambitious bid to create the world’s biggest library.

The second is Matthias Lamping, a Senior Research Fellow at the Max Planck Institute, Munich, and whose interests include property rights for technical innovation and antitrust law.

We wish both new guests the best of blogging luck for the coming six months.

2012 in facts and figures

Over the past twelve months the number of people following the IPKat on Twitter has risen from 3,410 to 5,250

The number of email subscribers to the IPKat has shot up from 6,280 to 8,074 -- though it did shoot down again to 8,072 shortly before midnight ...

Visits to the IPKat’s website rose from 822,862 in 2011 to a gratifying 1,206,626 in 2012.

Thank you again

No occupant of the blogosphere can take its readers for granted -- and the IPKat makes no apologies for saying "thanks" all over again to the wonderful encouragement he, Merpel and all the team have received from their readership. Your comments, suggestions, links and criticisms have all added to the rich tapestry of IP news and comment which gives this weblog its distinctive flavour.  Thanks!

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Kit Kat: The Nooks and Crannies of Acquired Distinctiveness for Three-Dimensional Marks

It's a biscuit, not a chocolate bar!

Confectionery giants Nestlé and Cadbury have been at it again, this time over the three-dimensional four-fingered shape of the Kit Kat, a chocolate-lined biscuit treat that has nothing to do directly with kits, cats or Kats. Although a green version of Nestlé's product can be found in Japan, colour was not at issue in this recent decision of the Board of Appeal of the OHIM, unlike the previous dispute between the parties concerning exotic trade marks, reported by the IPKat here.

In Case R 513/2011-2 Société des Produits Nestlé S.A v Cadbury Holdings Ltd, Nestlé appealed a decision of the Cancellation Division finding the three-dimensional Community trade mark, consisting of four trapezoidal bars aligned on a rectangular base for 'Sweets; bakery products, pastries, biscuits; cakes, waffles' in Class 30, was devoid of distinctive character and had therefore been invalidly registered contrary to Art. 7(1)(b), Reg. No 207/2009. "The Division has misapplied the law and incorrectly interpreted the evidence! Our mark has surely acquired distinctiveness through use in the relevant territories of the EU and therefore not invalid as provided for in Art. 52(2)!" Nestlé [may have] exclaimed.

Lucky for Nestlé, the Board of Appeal eventually agreed, after making its way through the reasoning assault course of: first, determining whether the Division made a correct assessment as to the distinctiveness of the mark (Art. 7(1)(b)); secondly, assessing whether the mark had acquired distinctiveness through use (Art. 52(2)) and; thirdly, whether the mark's essential characteristics consisted exclusively of technical solutions therefore falling outside the scope of the exception of acquired distinctiveness (Art. 7(1)(e)(ii)).   

It's invalid if it's devoid of distinctiveness...

The Board reiterated the general principle that the essential function of a trade mark is to be distinctive so as to enable the identification of the commercial origin of goods or services by the consumer, which is assessed, first, by reference to the goods or services of the mark and, secondly, by reference to the perception of the relevant public, which consists of the average consumer of those goods or services who is reasonably well informed and reasonably observant and circumspect. Although it was not appropriate to apply more stringent criteria when assessing the distinctiveness of figurative marks as Art. 7(1)(b) makes no distinction between different categories of mark, the assessment of the distinctive character of three-dimensional marks must be based on the assumption that only a mark which departs significantly from the norm or customs of the sector can fulfil the essential function of indicating origin. The more closely the mark resembles the shape most likely to be taken by the product in question, the greater the likelihood of the mark being devoid of any distinctive character. In order to ascertain whether a mark consisting of a number of components may be perceived by the relevant public as an indication of origin, the overall impression produced by that combination must be analysed. A mark which is excessively simply and constituted by a basic geometrical figure, is not, in itself, capable of conveying a message which consumers will be able to remember, with the result that they will not regard it as a trade mark (unless it has acquired distinctive character through use).

In the present case, the goods were sweet, fast-food low priced products for everyday consumption targeted at the general public. Consequently, the consumers' attention would not be high. The sign was three-dimensional, consisting of four trapezoidal elongated bars aligned on a rectangular base. That the trapezoidal shape was original was insufficient as it remains one of the basic geometrical forms, which was not a feature that allowed one to conclude that the elongated product with a trapezoidal section departed significantly from the norm or customs of the sector. The consumer would simply see the bars as a portion of the product. It did not, therefore, significantly depart from the norm and customs of the relevant sector. Nor was the basic geometrical trapezoid shape capable of identification with the origin of the goods. Therefore, the Cancellation Division rightly concluded that the sign lacked any distinctive character under Art. 7(1)(b).

...But not if it's acquired distinctiveness through use...

War time Kit Kat

Article 52(2) provides that where the mark has been registered in breach of the grounds laid down in Art. 7(1)(b), (c) or (d) it may nevertheless not be declared invalid if it has acquired distinctive character through use in the relevant part of the EU where it was previously devoid of any such character. This requires at least a significant proportion of the relevant public of the relevant territories at the relevant time (either before the mark's filing date or between the date of registration and the application for a declaration of invalidity) to identify the goods or services as originating from a particular undertaking because of the use of the mark. The impression which a three-dimensional sign, consisting of the shape of the goods themselves, may create in the mind of the consumer is in principle likely to be the same throughout the EU, unless there is concrete evidence to the contrary. Thus, in the case of non-word marks, it is in the EU as a whole that that mark must have become distinctive though use in order to not be declared invalid.

However, if a mark was registered or applied for before the dates of accession of new Member States, then the relevant territory, and therefore relevant public, is made up only of the States that composed the EU at the relevant time (Art. 165(4)(a)). Further, the CJEU's judgment in the Lindt chocolate bunny case that it would be unreasonable to require proof of acquisition for distinctive character for each individual Member State in which the mark did not have such character applied:

'In general, it would be unreasonable and disproportionate both to request the owner of the trade mark to divert and invest important quantities of money in collecting evidence of the acquired distinctiveness in each corner of the Internal Market and to refuse protection to a trade mark, whose recognition as been duly shown for the vast majority of the territory of the EU' (at [78])

In this case, the Board assumed that surveys submitted by Nestlé were carried out according to the expected professional standards; the results and analysis provided by the author companies being reliable. Although some of the surveys had been conducted subsequent to the date of filing, the period between the relevant date and the survey period was sufficiently short (less than a year) to not diminish their supporting probative value as the data did not measure an immediate effect but mapped a market development process. Further, market share and ranking oscillations showed a certain stability of the market trend.

The Board agreed with Nestlé that the populations of Germany, France, the UK, Italy and Spain together made up 79.2 per cent of the total population of the EU as composed by the fifteen Member States to be considered in the proceedings, as supported by population figures in 2007 published by Eurostat. Not only that, but add the Netherlands, Austria and other Member States into the mix, and it was possible for the Board to conclude that:

'the contested mark has been used in almost the totality of the EU's territory, covering the market of fourteen of the fifteen Member States that formed the EU at the relevant point in time; that as a consequence of such use, it can be determined that almost 50 per cent of the general public of the EU taken as a whole (or, said in another way, around 50 per cent of the general public of the  Member States representing around 90 per cent of the EU's population), identifies as first option the Nestlé as the business origin of a product with the shape of the contested mark (which belongs to the categories of 'sweets, bakery products, pastries, biscuits, cakes and waffles')' (at [88])

As such, the evidence was sufficient to establish that the trade mark had become distinctive through use in the relevant parts of the EU territory.

...Although only if it's essential characteristics relate to more than technical solutions...

At this last hurdle, it was necessary for the Board to consider the exception to the exception (as it was one of the grounds of Cadbury's initial request for a declaration of invalidity) laid down in Art. 7(1)(e), which precludes registration of a sign, even if it has acquired distinctiveness through use, if it consists exclusively of shapes, inter alia, necessary to obtain a technical result (Art. 7(1)(e)(ii)). Once the essential characteristics, which are the most important elements of the sign (per Case R 513/2011-2 'Lego Brick'), of the three-dimensional sign have been identified by the authority deciding on the application for registration, the competent authority still has to ascertain whether they all perform the technical function of the goods at issue. As such, Art. 7(1)(e)(ii) is not applicable where the mark relates to a shape of goods in which a non-functional element, such as a decorative or imaginative element, plays an important role.

The Board found; first, that the bars being aligned together and joined through a thinner base contributed to the making the portioning of the product easier but did not respond to a technical need or performed a technical function of the goods at issue (nor does it incorporate any technical solution developed and patented by the manufacturer of the product); Secondly, even if the bars served the purpose of facilitating partitioning of the product at the moment of consumption, such a solution was neither technical nor essential in the shape of the goods at hand; Thirdly, that solution might be incorporated without difficulty by competitors in shapes which do not have the same non-functional elements as that contained in the current shape, in particular the trapezoidal shape of each bar (to which can be added the alignment of bars, the alignment into four bars, the common joining base and its rectangular shape).

'One could say that those non-technical functions are rather banal, as the Board has already found that the sign is per se non-distinctive under Art. 7(1)(b). Nonetheless, be they as banal as can be, the fact remains that those characteristics, not dictated by any technical reason, are, as it has been established, sufficient to make that shape be recognised by the relevant public as a badge of origin...This means that those elements, while not inherently important, through the use of the sign have nevertheless become important and are now recognised by the relevant public as a commercial origin indicator' (at [108])

The objection under Art. 7(1)(e)(ii) was not, therefore, applicable.

"Hooray!" shouted Nestlé [maybe] and this Kat. Reading the summary of the Cancellation Division's decision she had an uneasy feeling but was happy when she got to the Board's reasoning. However, she was, and is, a little shocked [and a little disgusted] to discover how much information about the (not so) humble Kit Kat was taking up precious space in her mind. Not only is she aware of the various evolved varieties and promotional campaigns but also has a special way of eating the four fingered three dimensional mark, which she will share with the IPKat readers, as a parting gift: make a strong cup of Earl Grey tea with a touch of milk so it's almost black, bite off both ends of one finger and use said finger as a straw for drinking the tea. Perhaps not worthy of a patent, but surely an evolution of the art of biscuit eating.

When this Kat started studying IP and encouraged to read the IPKat by her lecturer she never dreamed she would have the opportunity to contribute to the blog. It has been a great honour. She thanks her fellow Kats and all IPKat readers.

Happy New Year!

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Survey evidence in trade mark matters, a global review

Evidence gathered by surveys is often treated with caution.  And if some of the responses given on the Family Fortunes, a long-running British game show, that hesitant approach is not misplaced ("name something you keep in the garden".  "A cat" [not amusing – Merpel]).  But these idiosyncratic answers and lack of probative value in the survey results illustrate perfectly why the English judiciary remains sceptical of such evidence.

In the recent interim decision in Interflora, Inc. Interflora British Unit v Marks and Spencer PLC Flowers Direct Online Limited [2009] EWHC 1095 (Ch) (IPKat post here), the English Court of Appeal examined in detail the nature and role of survey evidence.  It did so with a strong emphasis on the court's duty to actively manage cases in a way which was proportionate to the costs involved pursuant to Civil Procedure Rules 1.4(1), 1.4(2) and 32.1.  Lewison LJ noted that in instances where the question was whether there was a likelihood of confusion, a survey contributed little to the assessment, particularly where the goods or services were ordinary and within the judge's own experience. 

Hmm, what shall I have for tea?

As a consequence, permission to adduce survey evidence should be given only in rare exceptions where there is particular difficulty in assessing the misleading nature of the statement or description in question.  Support was found for this approach in the Court of Justice of the European Union decision in Gut Springenheide GmbH v Oberkreisdirektor des Kreises Steinfurt—AMT für Lebensmittelüberwachung (Case C-210/96) [1998] ECR I-4657.  If a survey is justified and permission granted, a party could also do much worse than to ensure compliance with the "Whitford guidelines" set out in the seminal case Imperial Group plc & Another v. Philip Morris Limited & Another [1984] RPC 293.

This pragmatic approach is not necessarily adopted across the world.  Fortunately, it just so happened that, on the day the Interflora hearing took place, this Kat was in Florida for the International Trademark Association's annual meeting to discuss the Courts & Tribunals Subcommittee's report on the use of survey evidence in trade mark matters.  That report is currently being finalised through the appropriate channels so keep your eyes peeled for the full version on INTA's website in due course.  You will find a neat summary of the position in England & Wales as well as summaries of the position in 26 other jurisdictions.  For now, this Kat's introduction is reproduced below.  If you simply cannot wait for the final report, please feel free to get in touch.

Consumer perception lies at the heart of trade mark law, but identifying precisely what that perception might be in a form which satisfies judicial inquiry can prove elusive.  Many parties turn to market surveys.  By simply asking individuals what is their response to certain stimuli and recording the results, the hope is that an understanding can be gained of how a mark is perceived by consumers in the marketplace.  Unfortunately however, surveys are often found by courts and tribunals to be so poorly designed and lacking in objectivity that they are given little weight and rendered useless as evidence.  As a consequence, parties frequently waste significant time and money and place an unnecessary burden on the legal infrastructure.

To try and address this inefficient use of resources, members of the International Trade Mark Association's (INTA) Courts & Tribunals Subcommittee sought details from practitioners across the world as to whether any official guidance or useful case law had been published in their jurisdiction as to how to properly conduct a survey.  By understanding the best practices adopted by courts and tribunals in survey design, execution and presentation, the intention was that a framework for authoritative and universal guidance could be developed.  This would allow a degree of harmonisation and prove a persuasive tool for those countries where guidance is under-developed or non-existent.

Common themes have emerged.  In particular, it is clear that the approach to the design, execution and presentation of an influential trade mark survey is reasonably universal, perhaps due to its basis upon scientific principles.  In an encouraging sign, there is a definite drive from the judiciary in several jurisdictions to keep costs to a minimum, for instance encouraging co-operation between the parties and the preparation of joint surveys with costs sanctions for failure to do so.  The 'Best Practices' in this report follow the distillation of these common themes. 

In general, common law jurisdictions such as England & Wales, the United States of America, Canada and Australia have substantially greater guidance available, reflecting a well-developed practice of using surveys as evidence.  In other countries guidance tends to be fairly limited, if indeed there is any at all.  That may change over time as local jurisprudence develops, but the issue is likely to be fertile ground for development for some time.  This report has accordingly been drafted with a view to being updated periodically.

Finally, as outlined in the INTA’s resolution of 22 September 2008, 'Adverse Inference for Failure to Conduct Likelihood of Confusion Survey' (http://www.inta.org/Advocacy/Pages/BoardResolutions.aspx), the mere fact that a party does not produce a survey as evidence should not lead to an adverse inference about likelihood of confusion in a dispute.  It is thus important to note that this report does not assert that a party MUST produce a survey; rather, it lays out guidelines addressing how, if one is produced, it can be achieved most effectively.

Strange Family Fortunes answers here.

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Anything seismic this year -- or next? A Kat opines

In the absence of any better way of assessing the significance of the past year and gauging the promise of the year ahead, the IPKat's friends at Patexia contacted a small selection of bloggers and asked them for a brief, succinct summary of what they thought were the truly important IP bits of 2012 -- and what would similarly be the biggest thing in 2013. The result is Patexia's 2012 in IP, which you can read in full here.

For the record, this Kat's personal view reads like this:

Waking up with intent to blog,
Miffy wonders who stole
her keyboard ... 

"The average Kat spends between 18 and 20 hours of each day asleep and only generally wakes up to eat, wash or produce the next round of kittens. One might therefore assume that the biggest development of 2012 is the one that makes the most noise and therefore stands the best chance of waking the slumbering beast. Rumpuses over Google books and AdWords, Apple iPads and smartphones, European patents and Chinese fakes might fit this bill -- but none of these is of fundamental importance. The biggest development in IP in the past year is a psychological one, a shift in perspective and understanding that transcends all IP rights and all geographical regions: it is the increasing realisation on the part of IP owners that they cannot rely on legislators to come to their rescue, however bad their plight might be -- the realisation that they are on their own, that IP protection really and truly doesn't pull in the votes in democracies or impress the hardened hearts of dictatorships, and that in international bodies such as WIPO there are too many opposing forces and conflicting interests at work to enable a "quick fix" to be found.

IP enforcement: a job
for the Purr-minator?

So what will be the biggest thing in 2013? Again, it won't be a single law, a single dispute or a single event. It will be a general sharpening of the degree of sophistication with which IP owners will approach infringement litigation in order to maximise its effectiveness and minimise its cost per infringing item or event. Expect to see more class actions, more use of pre-emptive orders, more engagement with customs and tax authorities, more use of criminal proceedings at national level and more information-sharing between IP-owning organisations and between their individual members. Add to this the cohesive effect of the US Intellectual Property Enforcement Coordinator and the encouraging support from the sidelines offered by the European Union's Intellectual Property Observatory and what will the result be? A general feeling that, even if the battle against fakes, counterfeiters and traditional competitive infringers can't be won, at least it's worth committing resources and energy in fighting it".

Very nice, says Merpel, but what do readers think?

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Friday fantasies

Merpel's mischievous thought: if the Kat's Google
Site has been white-listed, does that give
him free rein to violate the terms of use ...?

Not such a toxic Kat after all!  If you've clicked a link from an IPKat post and discovered that it doesn't work, you may have been thwarted by the sudden, dramatic decision of Google to suspend the IPKat' Google Site for violation of Google's terms of use.  When the IPKat discovered that this had happened, he checked carefully through the terms of use and was satisfied that he was a responsible, inoffensive Site user.  After clicking the "Appeal" button twice and getting no response, he contacted a wise, handsome and sentient human within the organisation who was able to ask the Google team to investigate.  Yesterday he received the following response:

"... it seems that the site was incorrectly marked as spam in an automated review. They've fixed this and white-listed the site for future reviews. Hope this helps, and apologies for the inconvenience this caused"

The IPKat nobly accepts Google's apologies and offers his own to the many readers who, in turn, have inconvenienced him by writing to complain about all those documents they've not been able to access.

While on the subject of terms of use ... this Kat did not receive an e-greeting from the UK's Copyright Licensing Agency this year, though he assumes that it's nothing personal since he receives lots of news from the CLA.  One of the Kat's friends did however receive this year's greeting, illustrated on the right.  This friend, who prefers on this occasion to remain anonymous, wonders if anyone else noticed the little bit at the bottom left-hand side of the greeting -- the bit with the image of a small but unmistakably red bird, in the familiar shape of the Twitter bird logo.

Now, it's quite possible that the CLA has negotiated something with Twitter and that there is nothing untoward about the little red bird.  However, if you visit the web page entitled Twitter Trademark and Content Display Policy and scroll down to the logo's terms of use ("Using the Twitter brand and trademarks"), you will find the following list of no-nos:

"Don't: 

Use speech bubbles or words around the bird.
Rotate or change the direction of the bird.
Animate the bird.
Duplicate the bird.
Change the color of the bird.
Use any other marks or logos to represent our brand".

Red faces, anyone?

Victoria Beckham
supports the Kat ...

Around the weblogs. Following a nudge from Chirs Torrero, this Kat finally found his way to a fascinating piece on Steve van Dulken's enjoyable and well-informed The Patent Search Blog, "Brand Beckham: designs and trade marks registered by David and Victoria", which you can enjoy here.  Two recent posts on IP Finance, both authored by IPKat bloggers, invite attention: Neil discusses the 25-year gap between barcodes being patented and their commercialisation, while Jeremy questions the utility of royalty rate guides. The first four in this year's series of authors whose works fall out of copyright in 2013 in life-plus-70-year countries, on the 1709 Blog, have now been posted: Stefan Zweig, Akiko Yosano, Walter Sickert and L. M. Montgomery ('Anne of Green Gables'). Finally, Henning Hatwig treats Class 99 readers to a short, sharp, design lawyer's perspective on the now-notorious Gold Bear trade mark decision of the Cologne District Court.

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The Print Demise of Newsweek Magazine: Should We Be Shedding a Tear?

In case you missed it, the final print edition of Newsweek magazine has been published. As reported on bbc.uk/news here, the final issue contains a black-and-white picture of the magazine's Manhattan headquarters, with the strapline "#lastprintissue". The nod to Twitter is regarded as a backhanded compliment. The death of the print edition was caused by falling advertising revenues, as audiences moved online. At its zenith, the magazine had three million weekly subscribers. But in 2010 the magazine was sold by its parent for the previous 49 years, the Washington Post, for the sum of $1, to businessman and publisher Sidney Hartman. Three months later, the magazine was merged with the Daily Beast here. Starting next month, Newsweek magazine will be published in digital-form only.

This Kat, always a bit contrarian, remembers how proud he felt in the 1960s when he first took out a weekly subscription to the magazine, rather than to the more widely-circulated Time. He recalls that he was particularly fond of reading the weekly column of such notables as Milton Friedman here and Stewart Alsop here. But by the end of the 1970s, this Kat found the contents of the magazine decreasingly interesting and he drifted to The Economist. He wondered even then whether there was a long-time place for the magazine and he frankly had not read an issue for more than 20 years. Still, during all that time, the notion that Time magazine had a competitor in the space for a weekly news magazine was a source of comfort, but he did nothing to ensure that such competition would endure.

I have no idea whether the digital form version of the magazine will succeed (as the aphorism notes,"It is hard to predict, especially about the future"). Still, the demise of the print edition raises once again the question: are general content print magazines all ultimately doomed to extinction, or is the departure of Newsweek a specific tale of the challenge not met by being only second best in its space? Magazines (and newspapers) have come and gone for more than two centuries for a variety of reasons. This Kat imagines that the decline of readership is, and has been, the common denominator for most, if not all, of these defunct publications. When readership falls, a decline in advertising and other circulation-based revenues inevitably follows.

This Kat has no idea of the profitability of the print edition of weekly magazines such as The Economist or Time. Nor does he know whether such magazines are already plotting their ultimate departure from the print world. Whether they and others will do so by maintaining both print and online options, or by migrating wholly to the on-line environment, remains to be seen. But what seems certain, at least in this Kat's eyes, is that some of the current titans in print form will successfully make a partial or full transition to the online world. They will do so because of a combination of superior contents and a compelling brand.

At the end of the day, Newsweek failed because it was never quite good enough and its vulnerabilities were revealed in full when the online challenge was added to the competitive mix. As sad as it might seem, and even as this Kat thanks Newsweek for being an important part of his intellectual youth, its ultimate demise was sensed decades ago.

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Still not the end for Omega

Perfection ...

Part of the IPKat's end-of-year catch-up programme involves getting round to writing about some cases that were too big to cram into his katty head at the time they came out, and which kept getting overtaken by later, smaller cases that didn't take quite so much thinking about.  One such case is Omega Engineering Incorporated v Omega S.A. (Omega AG) (Omega Ltd) [2012] EWHC 3440 (Ch), a 30 November decision of Mr Justice Arnold in the Chancery Division of the High Court for England and Wales between warring parties whose litigious tendencies have been monitored by the IPKat in earlier posts here, here and here.

In brief, this was an appeal by the Swiss maker of OMEGA watches against a hearing officer's dismissal of its opposition to Omega Engineering's application to register the word OMEGA as a UK trade mark for various goods. Engineering applied for summary judgment on Swiss's claim for breach of contract.

... Purrfection

The facts, some of which long-term readers may well recall, run like this: both Engineering, a US company which made scientific instruments like thermometers, and Swiss, which made watches, used the word "Omega", which was part of the their respective names. In 1984, Engineering and Swiss entered into a coexistence agreement, clause 5 of which provided that Swiss would not object to the use or registration by Engineering of trade marks using the word OMEGA for "excluded goods", which were listed in clause 3 as "instruments and apparatus intended for scientific or industrial application in measuring ... or recording heat or temperature (including such having provision to ... display the time of day)". Engineering subsequently applied to register OMEGA as a trade mark for goods in Class 9, including "period timers ... for industrial and/or scientific purposes", later amending this specification by realigning the definition of "period timers" to make it the same as that of "instruments and apparatus" in clause 3 of the 1984 agreement.

When Swiss opposed the application to register the excluded goods, the hearing officer held that Swiss could not do so: it was, after all, precluded by the 1984 agreement from objecting to that application. On appeal, Swiss argued that Engineering's amendment to the specification was impermissible for two reasons.  First, it argued that the term "period timers" referred to goods the sole function of which was timing, while the goods in reality were multi-purpose goods which measured temperature in addition to timing; this meant that the effect of the amendment was to cover goods that were not previously included.  Secondly, said Swiss, the effect of Engineering's amendment was to breach the principle established by the Court of Justice of the European Union in Case C-363/99 Koninklijke KPN Nederland NV v Benelux-Merkenbureau that the specification of goods in a trade mark application could not be restricted by reference to whether they possessed particular characteristics.

Mr Justice Arnold dismissed Swiss's appeal and granted Engineering summary judgment in part.  In his view:

Products were not disqualified from being "period timers" by virtue of the fact that they had other functions. Engineering had a product that was both a period timer and a temperature controller.  This being so, a trade mark for that product would be fit for registration in both Classes 9 and 14 of the Nice Classification. Indeed, that product could be used purely as a period timer.

Koninklijke KPN established that a trade mark could not be registered only in so far as the goods or services concerned did not possess a particular characteristic [in that case, POSTKANTOOR, meaning "post office", was the mark in question. Could it be registered as a trade mark for, e.g., the issue of postage stamps so long as they were not connected with the post office?]. Such a practice would lead to legal uncertainty as to the extent of the protection afforded by the mark, since third parties would not be aware that, for given goods or services, the protection conferred by the mark did not extend to those products having a particular characteristic; this being so, they might therefore refrain from using the signs of which the mark consisted, and which were descriptive of that characteristic, for the purpose of describing their own goods.

Koninklijke KPN had to be read in the context of the question which was posed to the Court of Justice: was it acceptable to restrict the goods or services by reference to the absence of a "specific quality"?  In this case the limitation was couched in positive terms.  Here, whether Koninklijke KPN applied to positive limitations as well as negative ones, the limitation in this case was one that related to the goods' function, not their particular characteristics.

Moving from Engineering's application to Swiss's conduct, the court had no doubt that the company had acted in breach of clause 5 of the 1984 Agreement both by opposing Engineering's application and by appealing against the hearing officer's decision.

This Kat finds it difficult to imagine how, in the absence of acute paranoia, the Swiss watchmaker should have found itself so threatened by Engineering's activities as to carry on as it has done so.  Even if Swiss had succeeded in its challenge to Engineering's registration, would the fruit of victory have been worth the cost of war?  Is some amazing business plan at stake, which requires persecution and harassment on this scale, or is this an example of litigation which has been allowed to gather its own momentum and which has become unstoppable?  Readers of Arnold J's judgment will spot that there's quite a bit of law in it -- which brings with it the risk of an appeal -- and there still remain unresolved issues which were not summarily dealt with. This all suggests that readers may expect more on this saga.

Merpel says, if Swiss gets tired of this litigation, a visit to the internet search engine of their choice will reveal that there are plenty more businesses that trade as Omega whom it may wish to sue ...

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Three new books: take a look!

Intellectual Property, Human Rights And Competition: Access to Essential Innovation and Technology is a very attractive offering by Abbe E.L. Brown, Senior Lecturer, University of Aberdeen, Scotland, and an early contributor to JIPLP with "Human Rights: in the real world" back in 2006 (abstract here). While this work owes much to the author's doctoral research, it is also coloured by her experiences as an IP litigator in three jurisdictions over a period of ten years. The IPKat welcomes all legal writing, whether black-letter or academic, which comes from authors who have benefited from real live law as well as the thoughts and writings of others, and this little book is no exception.

What do Edward Elgar Publishing have to say about this title?  According to the web-blurb:

"This detailed book explores the relationship between intellectual property, competition and human rights. It considers the extent to which they can and must be combined by decision makers, and how this approach can foster innovation in key areas for society – such as pharmaceutical drugs, communications software and technology to combat climate change.

The author argues that these three legal fields are strongly interrelated [They never used to be, notes the Kat. Most competition law and human rights law as we know it is post-World War II, so IP had very little with which to interrelate except classic contract and commercial law ...] and that they can be used to identify essential technologies. She demonstrates that in some cases, combining the fields can deliver new bases for wider access to be provided to technologies. The solutions developed are strongly based on existing laws, with a focus on the UK and the EU and the structures of existing forms of dispute resolution, including the European Court of Human Rights and the dispute settlement bodies of the World Trade Organization. The final chapters also suggest opportunities for further engagement at international policy and activist level, new approaches to IP and its treaties, and wider adoption of the proposals.

This timely book will appeal to academics and practitioners in IP [it might appeal to them a little more if endnotes were replaced by footnotes and if the tables of cases and legislation weren't set in a somewhat idiosyncratic two-column format], competition and human rights, as well as innovation-related industry groups and access to knowledge, health and environment activists".

The time to read this book is now since, while the reading and writing that went into it have occupied most of this century so far, it is a very contemporary discussion of the world in which we live: the IP, competition and human rights laws which the author rightly depicts as being intertwined are far from stationary; their tensions and dynamics are in  a constant state of flux -- so don't delay or you may have to await the sequel.

Bibliographic data: hardback, xxxvi + 236pp, ISBN 978 0 85793 496 3;ebook ISBN 978 0 85793 497 0.  Price £75 (hardback), £67.50 (online). Rupture factor: small, Web page here.

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False Advertising and the Lanham Act: Litigating Section 43(a)(1)(B) is the title of a slender paperback brought out by the New York desk of Oxford University Press.  The author, Thomas M. Williams, is a partner in the Chicago office of Winston & Strawn LLP, where he specializes in trade mark and unfair competition litigation, as well as trade mark prosecution and counselling. He is also a ferocious consumer of case law, as anyone perusing this slender text will discover: it's packed full of judicial decisions like raisins in a fruitcake: they give this book its distinctive flavour and its value.

According to the publishers:

"Section 43 of the Lanham Act is an invaluable tool for intellectual property and commercial litigators [Well, it's certainly not a great work of literature. This Kat wonders whether IP-based litigants who have to rely on its tortured prose feel as happy about it as their professional representatives do]. It includes causes of action for trademark infringement-type "passing off" claims, false advertising, trademark dilution, and domain-name cyberpiracy. It is the cornerstone for civil litigants seeking redress for competition-related torts in federal courts. However, Section 43(a) is not a general catch-all for commercial grievances, and is arguably the most misinterpreted and misapplied subsection in the Lanham Act, despite having an extensive body of case law delineating specific causes of action and proofs. Practitioners are well-advised to grasp its nuances before proceeding under the banner of "unfair competition".

In False Advertising and the Lanham Act: Litigating Section 43(a)(1)(B), Thomas Williams addresses false advertising claims under Section 43(a)(1)(B) of the Lanham Act. The book covers established precedent and Section 43(a) false advertising case law, including key decisions where courts have developed essential analytical tools to flesh out sparse statutory language [Sparse? That provision is 104 words long, though admittedly it pales into insignificance when measured against the 621 words of s.4, the infringement provision of the UK unlamented Trade Marks Act 1938, a provision of "fuliginous obscurity according to Lord Justice Mackinnon in Bismag Ltd v Amblins (Chemists) Ltd [1940] 1 Ch 667].

The book is organized by topic. Chapter One describes actionable claims under Section 43(a)(1)(B), and includes an analysis of the Supreme Court's Dastar opinion, which sets important boundaries for Section 43(a) claims. Chapter Two identifies various tests for Section 43(a)(1)(B) standing, including the circuit split on whether antitrust-based standing rules are applicable to false advertising claims. Chapter Three analyzes each of the requisite Skil factors for establishing a false advertising claim. Chapter Four addresses Section 43(a)(1)(B) pleadings, including the impact of the Supreme Court's Twombly and Iqbal decisions on notice pleading rules. Chapter Five examines defenses to false advertising claims. Chapter Six reviews injunctive relief requirements and Chapter Seven outlines monetary relief available to prevailing parties".

It seems to this Kat that one big problem with s 43 is that it has attracted a good deal of case law arising from facts which are almost too close to call. One feels that there is an almost never-ending set of tests, distinctions, relevant issues and principles which has been designed in a sincere attempt to provide a rational basis for resolving cases which may as well have been settled by tossing a coin since the arguments on each side are so finely balanced.  Thomas Williams' account is a valiant and fascinating one, but the subject matter is grim!

Bibliographic data: paperback, xi + 147 pages. ISBN 978-0-19-977258-2. Price: £115. Rupture factor: non-existent. Web page here.

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Nonprofit Organizations And The Intellectual Commons is a short, sharp tome authored by Jyh-An Lee, of the National Chengchi University, Taiwan. Not just the intellectual content but the readable prose bear the stamp of Stanford Law School, from which the author has derived help, encouragement and not a little inspiration.  This book is assisted by the fact that it covers a topic which is interesting, current, relevant and not already done to death like so many other modern topics (remember Law of the Internet" ..?)  Anyway, publishers Edward Elgar have this to say by way of introduction:

"Over the past twenty years, a number of nonprofit organizations (NPOs), such as Creative Commons, the Electronic Frontier Foundation, and the Free Software Foundation have laid essential building blocks for intellectual-commons as a social movement. Through a detailed description of these NPOs and a series of in-depth interviews with their officials, this book demonstrates that NPOs have provided the social structures that are necessary to support the production of intellectual commons.

By illustrating NPOs’ role in shaping the commons realm, this book provides a new lens through which to understand the intellectual-commons environment. Protecting intellectual commons has been one of the most important goals of recent innovation and information policies. This book focuses on the NPOs that occupy an increasingly critical and visible position in the intellectual-commons environment in recent years.

This detailed study will appeal to academics in intellectual property and internet law, nonprofit organizations, academics and professionals, and those involved in the Free Culture and Open Source Software Movement".

The sad thing about this book is that it reflects the notion that the dialogue over the intellectual commons is an exclusively United States affair, which is by and large true.  The US has been the incubator and the launchpad of not just the new technologies at the heart of the intellectual commons debate but also the terminology and the concepts through which debate and dialogue originated and evolved.  This Kat wonders whether the voices of Europe and Asia were too late, too quiet and too hesitant to participate in that debate -- or whether there might be yet some scope for their participation.

Bibliographic data: Hardback, x + 203 pages, ISBN 978 1 78100 157 8. ebook ISBN 978 1 78100 158 5. Price: £65 (hardback £65), £58.50 (online price). Rupture factor: none. Web page here.

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Google and Belgian newspaper publishers reach an agreement over Google News

From L to R: Thierry Geerts (Google Belgium);
Frans Wauter (authors' associations);
Francois leHodey (Belgian French language news publishers) 

Google News probably represents one of the most interesting copyright-related series of cases of the decade. 

While some European countries - notably Germany (here) and France (here and here) - are thinking of asking (well, sort of ... Merpel reckons that the question is not asked in "would you mind"-like terms) Google to pay for displaying links to and snippets of newspaper articles, and in other countries (eg Brazil) members of national newspaper associations have opted out of the Google News service, a few days ago news reached the IPKat that an agreement has been achieved in Belgium.

Indeed, earlier this month, Google and Belgian French-language newspaper publishers concluded a settlement, thus putting an end to a six year-long running litigation concerning whether Google infringed publishers' copyright by displaying snippets of and links to cached copies of their pages. There was even a moment when the Belgian newspapers were excluded completely from Google News service. 

What are the contents of this agreement? As reported on the Google Europe Blog, from now on Google and Belgian French-language publishers will partner on a broad range of business initiatives, in order to:

• Promote both the publishers’ and Google’s services - Google will advertise its services on the publishers’ media, while the publishers will optimise their use of Google’s advertising solutions, in particular AdWords [but also YouTube: see further below] to attract new readers.
• Increase publishers’ revenue [but also Google's, as Mountain View-based internet giant will sell online ads for the newspapers in return for a cute of the sales] - by collaborating on making money with content, both via premium models (paywalls, subscriptions), and via advertising solutions such as the AdSense platform and the AdExchange marketplace;
• Increase reader engagement - by implementing Google+ social tools, including video Hangouts, on news sites, and launching official YouTube channels;
• Increase the accessibility of the publishers’ content - by collaborating on the distribution of the publishers original content on mobile platforms, in particular smartphones and tablets.

The agreement is opt-in. This means that Belgian newspapers can decide whether to re-join Google News.

As explained by the Wall Street Journal, financial details of the settlement were not disclosed. Although Google said that it is not paying the newspapers to appear on its News service, the Huffington Post (quoting from Le Monde) reported that Google has accepted to pay a sum comprised between 2-3% (around EUR 5m) of the total turnover of Belgian French-language newspapers.

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