Jury assessment of patent damages: truly a joke?

In August of last year, Merpel posted some fairly critical comments about the use of a jury to assess patent damages in the United States infringement litigation suit brought by Apple against deadly rival Samsung; a follow-up post by guest Kat Stefano here.  Well, jury assessments in patent trials are officially the stuff of which comic cartoon strips are made, as can be seen from the Dilbert strip which was published on 26 February.

It is no exaggeration to say that most of the civilised world is not enamoured with the use of juries in patent infringement litigation.  Their critics have hitherto been found among the better-informed members of the legal profession, among practitioners, businessmen and academics who are of the opinion that issues relating to the infringement of patent claims and its consequence are far too technically difficult for most ordinary jurors to comprehend.  This should not be seen as a criticism of jurors per se, but rather as an acknowledgment of the extraordinary complexity of patent law and many of the areas of technology in which it is the subject of competing claims.

The Dilbert cartoon above reflects this widely-held belief that the notion of the jury's involvement in patent proceedings is absurd and laughable.  If you consider how difficult it can be for a student to sit through even a one-hour patent class, on a course for which he has enrolled and which may turn into a source of future income for him, just imagine what it must feel like to be a juror who has to listen to both legal submissions and recitations of technical data for days at a time; no wonder the smart folk wriggle out of jury service.  And the captioned reference to the square root of whatever 22 over zero, given the mathematical abilities of the average human being, may not be far from the mark.  So this Kat salutes Dilbert:  it's comforting to know that the right to jury trials in patent disputes which, in this era, is as incomprehensible to the non-American psyche as that other Constitutional relic, the right to bear arms, is shared by at least one perceptive American critic.

Should juries hear US patent cases? See Jennifer F. Miller here
Risk of reversal of jury awards here
Some qualified support for jury awards, at least the ones that seem to be okay, here
Dilbert on patent trolls here

A katpat goes to Chris Torrero for being the first to forward this cartoon.

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Can it really be? Consumers sue for trade mark dilution

"If it's clear, it must be water, vodka
or gin", muses Miffy. "... Oh,
my goodness -- it's actually beer!"

Most successful brand owners listen carefully for the reactions of their faithful customers when testing out new versions of existing products.  Generally accepted wisdom suggests that the best time to do it is before a change is made, or even contemplated.  If consultation is late, is ineffective or non-existent, consumer response can be an embarrassment. The Coca-Cola Company knows this to its cost, having both fouled up big-time in its launch of its New Coke and later, in the United Kingdom, with the farcical revelation that its expensively and inappropriately marketed DASANI water was, locally at least, nothing more than tap-water from Sidcup.

Another maker of sparkling beverages, Anheuser-Busch InBev, may be learning much the same lesson right now, if today's BBC report from the United States can be believed.   It tells, in relevant part, the following tale:

"Drinkers sue Anheuser-Busch for 'watering down' beer

Beer drinkers in the US have filed a $5m (£3.3m) lawsuit accusing Anheuser-Busch of watering down its beer. The lawsuits, filed in Pennsylvania, California and other states, claim consumers have been cheated out of the alcohol content stated on beer labels. The suit involves 10 Anheuser-Busch beers including Budweiser and Michelob.

Anheuser-Busch InBev have called the claims "completely false", and said in a statement "our beers are in full compliance with labelling laws". The lawsuits are based on information from former employees at breweries owned by the multinational.

"Our information comes from former employees at Anheuser-Busch, who have informed us that, as a matter of corporate practice, all of their products mentioned [in the lawsuit] are watered down," 

lead lawyer Josh Boxer said. The complaint claimed that 

"Anheuser-Busch employs some of most sophisticated process control technology in the world to precisely monitor the alcohol content at the final stages of production, and then adds additional water to produce beers with significantly lower alcohol contents than is represented on the the labels".

... Peter Kraemer, vice president of brewing and supply at Anheuser-Busch said in a statement, "We proudly adhere to the highest standards in brewing our beer.""

This Kat doesn't know whether American beer-drinkers are qualitatively different from their European counterparts, but he suspects that they are unlikely to be enthused at the thought that their favourite beer ["Particularly one as weak and gassy as B ......", the strong ale-swilling Merpel tries to say while the Kat seeks to suppress her with a diplomatic paw ...] has been diluted. It is well  known in Europe at least that beer drinkers, given the choice between beer and water, will generally opt for the former because it's more fun to drink and they don't mind paying more for it if they have to -- but few would want to pay for water dressed up as beer, or to be teased by their friends for doing so.  It's a bit like buying horse meat dressed up as beef burgers.

Part of the problem here is that changes in production techniques can be viewed as changes in the product itself. The IPKat thinks it's probably prudent for consumer brand owners to nip even the prospect of such rumours in the Bud (sic) by proactively furnishing as much information as can be safely done without disclosure of technical know-how and commercially sensitive information.

Merpel notes that product shrinkages in the chocolate industry attracted widespread press coverage at the time but didn't seem to damage the brand image of CADBURY and other brands (see here and here). This is not quite the same as watery beer, though.  A smaller piece of chocolate is still the same product, with the brand guaranteeing the same buzz.  Watery beer is a different product, a horse of another colour.

One final point -- and it's a legal one.  To this Kat's knowledge there have yet to be any class actions brought in Europe by consumers against brand owners in similar situations.  He imagines that, while in theory class actions are encouraged in some EU countries and the Commission has taken an interest in them, it would be very difficult for such an action to be put together in Europe, let alone succeed.  He invites readers to share their thoughts on this issue.

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Wednesday whimsies

Curia-ser and curia-ser  This Kat has noticed that, over the past couple of years, the name of the Court of Justice of the European Union is increasingly being abbreviated to "CJEU" rather than "ECJ" -- the abbreviation which was universally employed by English-language writers when the court was known, rightly or wrongly, as the European Court of Justice. He therefore wrote to the UK Intellectual Property Office (UPO) to ask why it still used "ECJ".  This is the answer he received:

"As the service we provide is a public service, not confined to those who work in the legal services, we have decided to continue with the widely recognised ECJ acronym.
 The Court of Justice of the European Union (CJEU) encompasses the whole institution, of which the Court of Justice is a part [this is indeed the case, notes Merpel]. As the majority of cases that we deal with are heard before the Court of Justice, ECJ would still seem to be a suitable acronym for the service which we provide".

The Kat agrees that the service which the IPO provides is a public service, but this doesn't seem to him to be a relevant factor.  If it were, the IPO would still be calling itself the Patent Office which, apart from being its real, legal name, is what most members of the public know it as.  Also, "ECJ" for "European Court of Justice "is sometimes confused with the European Court of Human Rights in Strasbourg -- by journalists and many a law student as well as by members of the public.


Last week's IPKat seminar on "The Strange World of IP Consents", noted here, took a little thinking about -- so much so that the IPKat has only just now got down to the task of fulfilling his solemn duty to post the respective speakers' PowerPoint presentations on this weblog for the benefit of those who attended (actually, everyone can have a look at them but if, like this Kat, they can't always extract maximum benefit from PowerPoints relating to presentations that they haven't actually attended, they may be a little mystified by some of their content). Neil's paper can be downloaded here; Mark's can be downloaded here.  One last point: the IPKat can confirm that the number of CPD points available for this event is 1.25. He also has the event code, which he will be happy to share with anyone who attended.

News trickled through to this Kat last week of the death of Paul Jackson following a short illness. Initially the Kat wasn't quite sure what to do, since he counted three people of that name within his wider acquaintances and he didn't know which one it was. Fortunately he subsequently received some guidance in the form of an email from former Intellectual Property Institute chairman Ian Harvey, who explained:

"Paul played a pivotal role in what we now know as Ideas Matter. Back in 2004 John Noble (of British Brands Group), Paul Leonard (Director of the Intellectual Property Institute) and I were searching for someone to help us think about the broad perceptions of intellectual property. We knew that these perceptions were negative [this being decisively demonstrated by "Perceptions of Intellectual Property", a research paper commissioned by the Institute from Roya Ghafele and supevised by this Kat, which you can download from the Institute's website here] but believed that this was inappropriate – but what could we do about it? John introduced us to Paul who became deeply involved in what then became known as the “Brand of IP”. Paul played a central role in bringing together quite disparate people and helping them/us think through this perplexing problem through a quite different set of lenses. Paul managed all the people who became involved and this process, in a way which was calm, thoughtful, deeply mentally engaged but direct in a quite non-threatening way. He continued to help until the emerging ideas were sufficiently well developed for larger companies to understand the issue, pick it up and carry it forward. That became what we now know as “IdeasMatter” – launched in 2012. ... Without Paul this would not have happened. IP plays a central, but still poorly understood role, in creating the quality of life which we enjoy today. And without a good understanding of its importance we will not benefit as we should, and need to, from the ideas and inventions which will create our future. Paul played a central role in this. In this one, probably almost invisible way, the world will be a better place because of what he did here".

The IPKat pays his respects and offers his condolences to Robin Krinzman-Jackson and all Paul's friends and family who will surely greatly miss him.

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IP Licensing: coming to a bookstore near you

Once again the IPKat's fabled objectivity comes under pressure as he posts news of the availability of a new book about which he can scarcely fail to chortle. It's the Research Handbook On Intellectual Property Licensing, edited and indeed masterminded by Jacques de Werra (Professor of Contract Law and Professor of Intellectual Property Law, Law School, University of Geneva, Switzerland).  Jacques is much admired and respected by this Kat both for his effort and his organisational skills, which are reflected in the new tome.  Quite apart from that, fellow feline Neil, whose first word was probably "licence" (no doubt pronounced "license", given his American antecedents), any number of Katfriends are among the contributors. These include and are not limited to Robert Gomulkiewicz, who not only writes on open source llicences but has actually written such a licence himself, veteran scholar François Dessemontet, quietly-spoken and deeply analytical Lorin Brennan, trade secrets guru John Hull, and Mr Pettifog's alter ego the irrepressible Mark Anderson.

Publishers Edward Elgar describe this book with admirable and unusual brevity:

"The Research Handbook on Intellectual Property Licensing explores the complexities of intellectual property licensing law from a comparative perspective through the opinions of leading experts.

This major research tool analyses the features of specific types of licensing agreements and also addresses other practical issues which apply across different types of licensing transactions, such as the treatment of licensing in bankruptcy [and you won't find much in the way of popular literature on that topic, so hats of to Mark Reutter for tackling it] and the use of arbitration for solving licensing disputes. The Handbook ultimately provides a scholarly contribution to the development of global intellectual property licensing policies.

Including transversal and comparative analysis, this Handbook will appeal to intellectual property licensing practitioners, lawyers and intellectual property and contract law academics".

Having both written and edited pieces on intellectual property licensing and transactions in general, this Kat is acutely aware of the difficulties faced in many areas of licensing law.  One is that, being contract-based, IP licensing is embedded in a wealth of practices, precedents, pre-contractual protocols and post-contractual routines that all too rarely see the light of day.  Many IP licensing arrangements do not go wrong, so are not reflected in a dispute resolution process; of those that do go wrong, a preponderant majority will be mediated, arbitrated or resolved beyond the gaze of anyone who is seeking solid legal data.  In this respect, even US jurisprudence is not a great deal richer than many other jurisdictions, despite that country's affection for litigation. Notwithstanding this, and perhaps because most forms of specialist IP licence seem to have originated in the US anyway, US writing continues to be influential.  However, the editor has spiced this volume with enough perspectives from Europe and Asia to ensure that the reader is treated to a genuine spread of legal cultures.

Bibliographic data: xviii + 499pp. Hardback ISBN 978 1 84980 440 0,  ebook ISBN 978 1 78100 598 9. Price £150 (online £135 from the publisher). Rupture factor: mild. Book's web page here.

Disclosure: Jacques' book is part of Edward Elgar's Research Handbooks in Intellectual Property series, of which this Kat is the series editor. Other books in this series are

• Copyright Law: A Handbook of Contemporary Research (edited by Paul Torremans)
• Trademark Law and Theory: A Handbook of Contemporary Research (edited by Graeme Dinwoodie and Mark D. Janis)
• Patent Law and Theory: A Handbook of Contemporary Research (edited by Toshiko Takenaka)
• Research Handbook on the Future of EU Copyright Law (edited by Estelle Derclaye)
• Law and Theory of Trade Secrecy: a Handbook of Contemporary Research (edited by Rochelle C. Dreyfuss and Katherine J. Strandburg)
• Criminal Enforcement of Intellectual Property: a Handbook of Contemporary Research(edited by Christophe Geiger)

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EU opens public consultation on revised Technology Transfer Block Exemption Regulation

A few days ago, the European Commission launched a public consultation, running from 20 February 2013 to 17 May 2013, on draft proposals for a revised Technology Transfer Block Exemption Regulation (TTBER) and revised Guidelines for the application of Article 101(3) TFEU to technology transfer agreements. The new rules are going to replace Commission Regulation 772/2004, which entered into force on 1 May 2004 [Merpel: you are wondering whether the IPKat was there, at the time, aren't you? The answer, of course, is yes!] and is scheduled to expire on 30 April 2014. A preliminary public consultation had previously been launched in December 2011.

Merpel's thought of the day: if
 Technology Transfer Block Exemption is
TTBE, why can't Intellectual Property
Kills Anti-Trust be IPKat?

For those not familiar with the topic, block exemption regulations are adopted by the Commission (and, rarely, by the Council), to identify categories of agreements which, albeit liable to alter competition within a certain market, are still allowed under Article 101(3) of the TFEU. This provisions states that Article 101(1), which provides a list of agreements, decisions and concerted practices that are prohibited due to their negative impact on competition, may be declared inapplicable in relation to individual agreements or categories of agreements (or decisions or concerted practices) that fulfill all the following requisites:

(1) they contribute to improving the production or distribution of goods or to promoting technical or economic progress;
(2) they let consumers have a fair share of the resulting benefit;
(3) they do not impose on the undertakings concerned any restrictions which are not indispensable to the attainment of those objectives;
(4) they do not afford such undertakings the possibility of eliminating competition in respect of a substantial part of the products in question.

The TTBER concerns bilateral technology licensing agreements, where the licensor allows the licensee to employ the licensed technology (patents, utility models, know how, etc.) to produce goods or services. The agreements may include the licensing or assignment of other intellectual property rights, if directly (and, according to the draft proposal, exclusively) related to the production of contract products. Agreements concerning the pooling of technologies or the subcontracting of research and development, instead, are expressly excluded from the subject-matter (the Guidelines, however, provide specific rules to be applied to these cases). The Regulation aims to reconcile the need of providing adequate protection for IP, and the rights conferred to its owner, with that of ensuring effective competition. As the Commission explained in Recital 6 of Regulation 772/2004:

The likelihood that such efficiency-enhancing and pro-competitive effects will outweigh any anti-competitive effects due to restrictions contained in technology transfer agreements depends on the degree of market power of the undertakings concerned and, therefore, on the extent to which those undertakings face competition from undertakings owning substitute technologies or undertakings producing substitute products.

Hey, I'm the IPKat, not the
CompetitionKat... give me a break!

(c) Inessa Akhmedova

Following these considerations, both the current Regulation and the draft proposal adopt a market share threshold, beyond which the exemption does not apply, and provide a list of two categories of restrictions (hardcore and excluded), whose presence bears different effects on the applicability of the block exemption. The threshold, as stated in Article 3, is 20% of the combined share of the relevant markets, if the agreement involves two competing undertakings, or 30% of the individual share of the relevant markets, if the undertakings are non-competitors (proposed changes are examined below). Agreements that fulfil this condition fall within the scope of the block exemption only if they do not contain any of the ‘hardcore restrictions’ listed in Article 4 (e.g. restriction of a party's ability to determine its prices when selling products to third parties or of a licensee's ability to exploit its own technology). If [not a hardcore but] an ‘excluded restriction’ is present, this falls outside the scope of the TTBER and is subject to individual assessment, but the rest of the agreement continues benefiting from the exemption, as stated by Article 5.

The Commission, however, retains the power to withdraw the benefit of the exemption if it finds that a technology transfer agreement falling within the scope of the Regulation has effects that are incompatible with Article 101(3). Agreements that are not subject to the Regulation (e.g. where the market share of the undertakings involved is higher than the established threshold) are to be individually assessed by the Commission for compatibility with Article 101(3), but are not subject to a presumption of non-conformity.

The new draft TTBER proposal, and the Guidelines on the application of Article 101(3) to technology transfer agreement, retain the same mechanisms and principles forged in the previous law (which, instead, had introduced important changes to the rules enshrined in its precursor, Regulation 240/1996). However, the Commission is seeking to implement some fine-tuning, in relation to several of the existing provisions. Here is a brief, non-exhaustive, recap of some of the proposed changes:

• Technology. Article 1(1)(b) introduces a new comprehensive definition of 'technology', stating that the notion refers to know-how as well as patents, utility models, design rights, topographies of semiconductor products, supplementary protection certificates for medicinal products or other products for which such supplementary protection certificates may be obtained, plant breeder's certificates and software copyright. 


• Technology transfer agreements. Article 1(1)(c) provides a broader definition of these agreement, which may also contain provisions related to the purchase of products by the licensee or to the licensing or assignment of other intellectual property rights or know-how to the licensee, if these provisions are directly and exclusively related to the production of the contract products. The revised Guidelines explain that ‘[p]rovided these other intellectual property rights enable the licensee to better exploit the licensed technology, the TTBER covers technology transfer agreements even if the principal interest of the parties lies in the exploitation of the former rather than the latter’ (paragraph 51). The previous Regulation, instead, expressly stated that such provisions could not constitute the primary object of the agreement. 


• Market definition and share. Article 1 contains definitions for product, geographical and technology market. Article 8(d) and the revised Guidelines (paragraph 25) explain that the market share in the technology market should be calculated ‘on the basis of the presence of the licensed technology on the relevant market(s) where the contract products are sold, that is on the basis of the sales data of the contract products produced by the licensor and its licensees combined’ (taking into account relevant geographical limitations). This approach is favoured over the use of royalty income to calculate the licensor’s market share because of the difficulty of obtaining reliable royalty income data and of the risk of underestimating a technology’s strength in situations of cross licensing or tying (paragraph 77). In relation to agreements falling outside the safe harbor of the TTBER, however, the Commission retains the power to use the royalty-based methodology, or a combination of both, in order to evaluate the market strength of the licensor and the relative strength of the available technologies. 


• Market share threshold. Article 3(2) extends the 20% threshold to the case of agreements concluded between non-competitors, when the licensee owns a substitute technology, which it uses only for in-house production and which is substitutable for the licensed technology. 


• Passive sales. The exception contained in Article 4(2)(b)(ii) of the current Regulation is not reproduced in the draft proposal. Accordingly, ‘the restriction of passive sales into an exclusive territory or to an exclusive customer group allocated by the licensor to another licensee during the first two years that this other licensee is selling the contract products in that territory or to that customer group’ now triggers the application of the discipline concerning hardcore constraints, as per the general provisions of Article 4 (unless it is demonstrated that such restrictions are objectively necessary to penetrate a new market, pursuant to paragraph 116 of the revised Guidelines - e.g. to allow the licensee to recoup substantial initial investments made to enter the new market). 


• Subcontracting. In the revised Guidelines, paragraph 45 states that subcontracting agreements ‘whereby the contractor determines the transfer price of the intermediate contract product between subcontractors in a value chain of subcontracting generally also fall outside Article 101(1) provided the contract products are exclusively produced for the contractor’. 


• Exclusive grant backs. The final part of paragraph 109 of the current Guidelines, which recognizes that ‘[e]xclusive grant backs and obligations to assign non-severable improvements are not restrictive of competition within the meaning of Article 81(1) since non-severable improvements cannot be exploited by the licensee without the licensor's permission’, and the distinction between severable and non-severable improvements is set to disappear. Accordingly, all exclusive grant backs agreements are now treated equally, as excluded restrictions ex Article 5, and are subject to individual assessment. 


• Challenges to the validity of IP rights. Article 5(1)(b) of the draft proposal excludes from the safe harbor of the TTBER the right for the licensor to terminate the agreement in the event that the licensee challenges the validity of any of the IP rights that the licensor holds in the EU. According to the Commission, ‘[s]uch a termination right can have the same effect as a non-challenge clause, in particular where the licensee has already incurred significant sunk costs for the production of the contract products or is already producing the contract products’. In this case, the public interest to ensure that IP rights are correctly granted and validly held prevails on the licensor’s interest to terminate the deal, provided that the licensee fulfils all its other contractual obligations (paragraph 125 of the revised Guidelines). Non-challenge and termination clauses, thus, fall outside the scope of the TTBER and require individual assessment, while the exemption remains applicable to the rest of the agreement. Pursuant to paragraph 126, however, non-challenge and termination clauses solely concerning the licensing of know-how fall within the scope of the exemption.


• Settlement agreements. The revised Guidelines contain a more detailed set of provisions dealing with settlement agreements (paragraphs 219 – 227). In particular, the Commission seems wary of pay-for-restriction and pay-for-delay clauses, whose compatibility with Article 101(1) TFEU should be assessed in depth, and of non-challenge clauses, which can have anti-competitive effects under specific circumstances (e.g when the licensor induces, financially or otherwise, the licensee to agree to the non-challenge clause, or when the former is aware of the licensed IP rights’ invalidity). 


• Technology pools. Although pool licensing and technology licensing, by the pool to third parties, fall outside the scope of the Regulation, the Guidelines offer some guidance on the issue. The revised Guidelines reorganize the matter and, among other changes, call for the assessment of the presence of ‘hardcore restrictions’, as defined in Article 4 of the draft TTBER proposal, when evaluating the compatibility of the pool licensing agreement with Article 101 TFEU.

This Kat welcomes the Commission’s commitment to improving its guidance on key technical aspects of the TTBER, such as the evaluation of technology market share. The impact of some of the most controversial changes proposed in the draft, which include the exclusion of termination clauses from the exemption and the elimination of the exception related to passive sales, appears difficult to predict. As is frequently the case, conjugating IP and competition law is not merely an exercise of legal ability, but a prodigious alchemy. To make sure that the former prevails on the latter, why not head here to share your views and help the Commission become the next Merlin?

An in-depth analysis of Regulation 772/2004 can be found here.
For historians, Regulation 240/96 is examined here.
Those who got a headache while reading this post can take a short, well-deserved break here.

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Why some trade mark cases are not as easy to illustrate as others

What with all the recent talk of leaks -- Wikileaks, leaked Community trade mark proposals and so on -- it seems appropriate to turn to leaks of a slightly different kind. The IPKat craves your indulgence as he turns to Case T‑504/11 Paul Hartmann AG v OHIM, Protecsom SAS,  a 4 February ruling of the First Chamber of the General Court of the European Union.  This is just one of a large number of cases which have been building up in his in-tray of late -- but it's quite an instructive one, if only for the number of reasons that a creative lawyer can come up with for trying to persuade a court that regular underpants and incontinence pants are either identical or similar products. The subject is a serious one, as we all know.  Humans suffer much embarrassment and inconvenience on account of incontinence -- but at least they have the option of purchasing products to assist them.  Many felines who reach that point find that they are being put down ...

The basic facts of this case are as follows. Protecsom applied to register the word DIGNITUDE as a Community trade mark for ‘menstruation knickers; sanitary napkins; menstruation tampons; bandages for hygienic use’ in Class 5, 'textiles and textile goods for medical or veterinary use’ in Class 24 and 'hosiery; underclothing, underpants; underwear’ in Class 25. Hartmann opposed, basing its opposition on its earlier Community and German registrations of the word mark DIGNITY for ‘sanitary preparations for medical use; plasters, materials for dressings; disinfectants; napkins, napkin liners, napkin pants and absorbent pads, mainly consisting of paper, cellulose or other fibre materials being disposable articles, fix pants, woven and/or knitted of textile fibres or consisting of cellulose, for fixing absorbent pads, all the aforesaid goods for incontinence purposes’ in Class 5, and for ‘orthopedic articles; suture materials; draw-sheets for sick beds and incontinence sheets’ in Class 10. Said Hartmann, on account of the similarity of the respective marks and the identity or similarity of the goods for which each were registered or sought to be registered, there was a likelihood of confusion of the relevant consumers.

The Opposition Division upheld the opposition in part, as regards the goods in Classes 5 and 24 covered by the application for registration. However, it dismissed the opposition in respect of ‘hosiery; underclothing, underpants; underwear’ in Class 25, finding that those goods were not similar to the goods covered by the earlier marks. Not satisfied with its partial victory, Hartmann appealed unsuccessfully to the Fourth Board of Appeal. According to the Board of Appeal, the goods at issue were not targeted at a specialised public but at the public at large. Even though DIGNITUDE and DIGNITY were similar, there was no likelihood of confusion between them because the goods in Class 25 covered by the application for registration were different from those covered by the earlier marks.

Hartmann then appealed further to the General Court, but to no avail.  Underpants are underpants, said the Court, and incontinence pants are incontinence pants, and never the twain shall meet.  Well, that was a bit of a paraphrase, but it's not far off what the Court really said:

The relevant consumer

* The Board of Appeal got its knickers slightly in a twist when defining the 'relevant public' through whose eyes the likelihood of confusion must be assessed. The Board thought the relevant public consistent of everyone, and especially Germans.  The Court disagreed. The proper approach was to take account of consumers who were liable to use both Protecsom's and Hartmann's products --in this case, consumers suffering from incontinence or their carers, since they were the only people likely to purchase both types of goods and, therefore, to be confused if the marks were similar.That relevant public would however demonstrate a particularly high level of attention at the time of purchase since the nature of the goods covered by the earlier trade marks requires a precise and informed choice.

Similarity of goods

* First, Hartmann could not claim that the purpose of the goods concerned was identical.  The goods covered by Protecsom's mark for were articles of clothing the purpose of which was, in particular, to cover the lower part of the human body in order to protect it from friction and changes in temperature [Merpel, who always wondered why humans wear such garments, is gratified to know this ...]. By contrast, the goods covered by Hartmann’s trade marks fulfilled an impermeable function to deal with urinary or faecal leakage. This being so, the goods at issue would be perceived by the final consumer as serving a different purpose.

* Secondly, as to the argument as regards the similar nature of the goods at issue, the difference between those goods was apparent in the light of their composition, their characteristics and their durability. The hosiery, underclothing, underpants and underwear covered by DIGNITUDE for were articles of clothing and fashion manufactured with materials which are resistant to repeated and continuous use over time, while they are not meant to be absorbent. The napkin pants and absorbent pads covered by Hartmann's DIGNITY are medical articles which are generally composed of an absorbent part and an impermeable part made of plastic material. Those goods, unlike ordinary underwear, are generally disposable following a limited number of uses.

* Thirdly, as to the argument that the distribution channels of the goods concerned were frequently the same, goods such as the napkin pants covered by the earlier trade marks were usually distributed by pharmacies or by medical supply shops, while underwear and goods covered by the mark applied for were available to consumers in clothes shops and in the clothing sections of department stores.

* Fourthly, it could not be said that the goods at issue were in competition with each other in the absence of any element of interchangeablity. A consumer’s 'deliberated choice' between the goods at issue would be made on the basis of considerations relating to their medical condition.

* Fifthly, it could not be argued that the ordinary underwear covered by DIGNITUDE and the absorbent napkins covered by DIGNITY were complementary in that the former could be completed by the latter: two goods are complementary only where they are closely connected in the sense that one is indispensable or important for using the other, so that consumers may think that the same company is responsible for manufacturing those goods. No such relationship could be established in this case.

Dignity here
Dignitude here
Dignitas here

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It's official! The Yankees are Evil ...

Even Kats are not immune to
the draw of the Evil Empire

To many Americans, baseball is a cross between a sport and a religion.  So far as this Kat can see, though, it's actually a feeding frenzy which is brought about by a contest involving a ball, a bat or two and an army of statisticians [Merpel notes that a Google search for 'baseball statistics' raised 133 million hits, against just 91 million for 'Abraham Lincoln' ...].  Normally this weblog carries little in the way of American sports news, and this Kat even assiduously edits out most American sports metaphors on the ground that are so often incomprehensible to non-Americans.  However, today's a special exception: he is happy to host the following post from his old friend and one-time fellow blogger Miri Frankel, now Associate General Counsel to Aegis Media Americas (welcome back to the blogosphere, Miri!).  This is what she writes:

In an example of life imitating art, it appears that the NewYork Yankees baseball team has taken a page from this 2009 piece published in satirical newspaper The Onion.  The United States Patent and Trademark Office's Trial and Appeal Board (TTAB), on February 8, agreed with the Yankees in opposing a trade mark application for “Evil Empire” in Class 25 by apparel manufacturer Evil Enterprises.  The Yankees had argued that the grant of the mark to Evil Enterprises would cause a likelihood of confusion, falsely suggest a connection with the famed team, as well as be offensive to the reputation of the team. 

For those not familiar with the Yankees, it is a New York baseball team that is known for winning numerous championships, having a management and ownership team stacked with personalities that rival the infamy of the team’s players, and amassing a player contract budget that far exceeds that of any other team in its sport.  Perhaps, in England, big-spending and perhaps equally infamous Chelsea FC may be seen as comparable. Given these attributes, the team is much loved by its hometown fans and hated by pretty much all other rival team fans (disclosure: I’m a New York Mets fan in the “Yankees are the Evil Empire, and not in a good way” camp). 

In a “if-you-can’t-beat-‘em-join-‘em” argument, the Yankees argued to the TTAB that, given the extensive public adoption of the Evil Empire moniker, they ultimately decided to embrace it by playing the “Star Wars” soundtrack at home games.  The TTAB agreed, stating,

“In short, the record shows that there is only one EVIL EMPIRE in baseball and it is the New York Yankees.  Accordingly, we find that [the Yankees have] a protectable trademark right in the term EVIL EMPIRE as used in connection with baseball.”

Full TTAB opinion here

Other Evil Empires here, here, and here

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Where Has the "Author" Gone in Copyright?

Why is the notion of the copyright "author" held in such low regard? And why is the notion of "users' rights" so ascendant? At the risk of sounding banal, there is no work to consume, much less to protect, if there is no author to create it. True, books were written long before there was copyright protection. True, as well, copyright protection is also about distribution of content and the various commercial interests that are involved. Still, there must be an author for there to be a work. But to read many an account of current thinking about copyright, the author is at best an afterthought. Increasingly, it is the right of the user to the content, rather than the right of the author in creating the content, that is paramount. This Kat was reminded of this issue during a meeting, after a nearly a one -decade absence, with a long-time acquaintance with an extraordinary research record in the copyright field. As ebullient and passionate about copyright as ever, one issue troubled her deeply—the rise of the notion of users' rights as a (the?) central component of our current understanding of copyright. "Whatever happened to the notion of the 'author'?", she dejectedly asked.

This Kat has often wondered about the same question. After all, we have always been taught that the great breakthrough in the development of the copyright system came about with the enactment of the Statute of Anne in 1709 (1710). For the first time, instead of a system based on the grant of a publishing monopoly in favor of the Stationers, augmented by the ability to censor, we had an arrangement which put the author front and centre. The authors received a limited term of exclusive protection (and the legal ability to transfer rights to publishers so commercialization could take place), after which the content entered the public domain. In so doing, the public presumably benefited twice: first by encouraging the creation of content and second providing that the content ultimately ended up in the public domain for all to use. As best this Kat's sense of feline smell can determine, there was not a whiff of users' rights in this arrangement. And yet, by 2013, "users' rights" have become a staple in copyright discourse and education. So this Kat reached out for some further guidance – whence the centrality of "users' rights"?

There can be no better source than the thoughts of the late Professor L. Ray Patterson here, one of the earliest and most vigorous proponents of the notion (witness his book of over two decades ago—The Nature of Copyright: A Law of Users' Rights). A useful way to understand the gist of Professor Patterson's thinking can be found in the transcript of an interview that he gave for the American Library Association here before his death in 2003. For Patterson, copyright was not primarily a matter of international norms (after all, the U.S. joined the Berne Convention only in 1989) but rather a creature of U.S. jurisprudence, especially the Constitution and the Supreme Court. On that basis, Patterson was adamant-—the purpose of the copyright system is not to reward authors but to promote the societal interest through the advancement of knowledge. In his words, "the three constitutional policies of copyright [are] the promotion of learning, the protection of the public domain and the right of public access." The author (and obviously the publisher) are nowhere to be found.

For Patterson, "copyright is a limited statutory monopoly of information for a public purpose and that purpose is not to make a commodity of information and facts so that learning will be subject to licensing by publishers as in Elizabethan and Jacobean England." Under such a view, the Statute of Anne comes out as merely a poor-man's version of the maligned 17th century Licensing Acts. It was the U.S. Constitution that conferred upon copyright its proper role in an enlightened society. Fair use is the ultimate expression of this view. In Patterson's view, fair use is not simply a legal privilege (as defined by West's Encyclopedia of American Law, a power of exemption that " one from the performance of a duty, obligation, or liability") but a full-fledged right, presumably as integral to the copyright system as the author's right of reproduction and distribution

This Kat would like to think of himself as not naïve when it comes to copyright. He is aware that technology, and the ways by which contents are distributed and consumed, continue to pose a challenge to whether the copyright system can continue to be relevant. On a daily basis, this Kat both creates content as well as consumes it. In so doing, however, he simply cannot accept the proposition that the copyright system should put the author and user in some correlative balance with respect to rights. Reasonable people can debate how to best enable users to use the works of authors. Maybe the academic world, with its emphasis on articles and recognition, should have different operative rules than book publishers of full-length contents, many of which derive from settings other than the Academy. But in so doing, to cast all of copyright with the broad brush of an ever-expanding notion of users' rights goes beyond the pale of that debate.

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Regeneron/Bayer v Genentech in Court of Appeal - first instance decision affirmed

Nearly a year ago this Kat reported on Regeneron Pharmacueticals Inc and Bayer AG v Genentech Inc [2012] EWHC 657 (see BAILII).

Cat's eye does not suffer
from macular degeneration

Nearly a year on, and we are treated to the Court of Appeal consideration of the matter, which hit the streets yesterday, and which you can also read on BAILII.  This Kat would like to thank his informant (you know who you are) for alerting him to the judgment, which he confesses he missed yesterday.

The case concerns the validity of Genentech patent EP1238986  and infringement thereof by the Regeneron product VEGF Trap Eye (a treatment for macular degeneration).  To remind our dear readers, the main claim was in the following terms:

Use of a hVEGF antagonist in the preparation of a medicament for the treatment of a non-neoplastic disease or disorder characterised by undesirable excessive neovascularisation, wherein the hVEGF antagonist is: (a) an anti-VEGF antibody or antibody fragment; (b) an anti-VEGF receptor antibody or antibody fragment; or (c) an isolated hVEGF receptor.

I covered the case in some detail last year, and if readers thought that I was surprised by the outcome, they would not be greatly mistaken.  At first instance Mr Justice Floyd found the patent valid (under the headings of novelty, inventive step and sufficiency) although he construed the claim in one respect (the meaning of " a medicament for the treatment of a non-neoplastic disease or disorder characterised by undesirable excessive neovascularisation")  in a manner different from that put forward by either the claimants or the defendant, stating:

I see no reason to recast the definition either as sought by Genentech or by the claimants. There was no evidence that anyone skilled in the art would have any difficulty in identifying a disease which is characterised by undesirable, excessive angiogenesis and one which is not. Further, the skilled person would not understand that the patentee was saying that the treatment would necessarily successfully deal with anything other than undesired angiogenesis in that disease. 

He also found the claims infringed by the Regeneron product.

So what of the appeal decision?  The claimant/appellants challenged the first instance judgment under every heading.  Kitchin LJ giving the leading judgment, with which Moses LJ and Longmore LJ agreed in the traditional formula, analysed each criticism of the judge's findings, and in each case upheld the first instance judgment.

Whereof there is little further to say, thereof I shall accordingly be silent.  Do our dear readers have any comments or thoughts?

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Something Wellcome didn't welcome: loss of the Malarone patent

Definitely not a generic ...

The prefix "Glen-" means only one thing to this Kat: a decent single malt whisky. Glenlivet, Glenmorangie, Glen Scotia, Glenfiddich, Glen Garioch. Sadly, the list is not actually endless, but it is no less dear for all that.  Anyway, spotting a recent decision from the Patents Court, England and Wales, by the name of Glenmark Generics (Europe) Limited & others v The Wellcome Foundation Limited &  and Glaxo Group Ltd [2013] EWHC 148 (Pat), his first thought was that it must have something to do with alcohol.  Was this not after all a judgment from the pen of Mr Justice Arnold, the man who taught our discerning palates to distinguish vodka from Vodkat?  But no: this was only a pharmaceutical patent spat after all. It was however a most interesting one. Here Simon Spink (CMS Cameron McKenna LLP) takes up the tale:

"The dispute concerns Wellcome's European Patent (UK) No. 0 670 719 which relates to an anti-malarial pharmaceutical composition comprising a combination of atovaquone and proguanil in the ratio 5:2.  Glenmark challenged the patent on the basis of obviousness over two pieces of prior art: a presentation by Dr David Hutchinson and an abstract from a plenary lecture by Dr A T Hudson.  Dr Hutchinson was also one of inventors named in the patent; both he and Hudson worked at Wellcome.  The patent protected the medicinal product sold by Wellcome under the trade name Malarone.  Glenmark wanted to sell a generic version of Malarone, while Wellcome counterclaimed for infringement on a quia timet basis.  There was no dispute between the parties that Glenmark's product would infringe the patent.  Glenmark gave undertaking not launch a generic product pending trial and Wellcome gave a corresponding cross-undertaking in damages.

It is of note that Wellcome made an unconditional application to amend the patent and to delete claim one as granted.  Claim 1 as granted was to a method of treatment using a combination of atovaquone and proguanil (in any ratio).  The application was granted and the trial was heard on a expedited basis.

Arnold J summarised in the technical background to malaria and its treatment with anti-malarial drugs with the degree of thoroughness we have become accustomed to in his judgments.  There was little difference between the parties in relation to constitution of the skilled team, both envisaging a team consisting of a clinician and a pharmacologist with the appropriate experience with malarial infections.  In setting out the law as to the common general knowledge, the judge referred to his decision in KCI Licensing Inc v Smith & Nephew plc [2010] EWHC 1487 (Pat) as approved by the Court of Appeal [2010] EWCA Civ 1260.  However, as could be expected in obviousness-only proceedings, there were certain areas of dispute as to what fell within the common general knowledge.  Most of these disputes came down to the strength of the evidence adduced by the parties.  However, the dispute concerning the common general knowledge in relation to combinations, and in particular the circumstances in which the skilled team would regard it as appropriate to combine two drugs, is likely to be of wider interest. 

Glenmark's expert, Prof Molyneux gave evidence as to the benefit of additive combinations of drugs in where there is some resistance to one or both drugs and in the absence of any synergy [82].  He added that there are different uses for drugs, including limiting the spread of resistance . Accordingly there is nothing irrational about using an additive combination in the appropriate circumstances.  Counsel for Wellcome put an article to Prof Molyneux which stated that the main advantage of additive combinations was the prevention of spasmodic resistance, and their use for strains that were already resistant to the more active drug was ostensibly irrational [84].  Prof Molyneux did not agree with that proposition.  Arnold J did not consider the article to be well-known and in conclusion agreed with Prof Molyneux  in relation to the benefit of additive combinations [86].

With regard to synergistic combinations the judge found that in the field of malaria research it was generally believed that, for a combination to be synergistic, the two drugs needed to act at consecutive points on the same pathway.  More generally he found that a combination which was shown to be significantly synergistic in vitro would encourage the skilled team to go forward to in vivo trials [88].

The first piece of prior art was a presentation by Dr Hutchinson scientists which detailed the history of the clinical trials atovaquone and the decision to trial it as part of a combination.  There were a number of sources of evidence as to what was disclosed in the presentation which included an abstract, the presentation slides, the speaker's notes, notes of those attending the presentation and several published summaries of the presentation.  The audience were told how tetracycline and proguanil were selected to be used in the combination with atovaquone.  Dr Hutchinson's notes stated that this selection was on the basis of in vitro potentiation studies.  However, the abstract merely stated that the combination was additive.  The judge concluded, that although the words actually used by Dr Hutchinson were those used in his notes, he was understood by his audience to mean that combinations of atovaquone with tetracycline and proguanil gave the best in vitro potentiation of the combinations studied.  Dr Hutchinson also gave the efficacy results of the combination clinical trials -- atovaquone/tetracycline effected a cure in all 25 of the patients treated while atovaquone/proguanil effected a cure in 20 of the 25 patients treated.  He recalled that he was disappointed with how his presentation was received, there being a number of challenges to his conclusions, and also to the rationale of combining atovaquone and proguanil.

The second piece of prior art was an abstract of a lecture given by Dr A T Hudson also of Wellcome.  The abstract disclosed the chemistry of atovaquone, its high potency against the malaria parasite, its metabolic stability, its good tolerability and its efficacy in clearing initial parasitemia.  It also disclosed the combination of atovaquone and proguanil, the fact that the combination had produced a cure rate of 100% in clinical trials against P. falciparum infections and that clinical trials of the combination were continuing.  No other data from the clinical trials was disclosed.

Arnold J set out the law on obviousness by reference to the restatement of the Windsurfing test in Pozzoli v BDMA SA [2007] EWCA Civ 588 and by reference to the consideration of that restated test in MedImmune Ltd v Novartis Pharmaceuticals Ltd [2012] EWCA Civ 1234.  He also cited Hallen Co v Brabantia (UK) Ltd [1991] RPC 195 and Dyson Appliances Ltd v Hoover Ltd [2002] RPC 22, both in relation to the relevance of commercial considerations to obviousness.   

He then applied the test to claims.  For claim 1 he found that there was no technical significance in the 5:2 ratio and that accordingly the correct question was whether it would be obvious to proceed with the combination of atovaquone and proguanil at all [116].  As the Hutchinson presentation disclosed the combination for treatment of malaria and encouraging clinical trials results, Wellcome was required to show that the skilled team would not proceed with the development of the combination of atovaquone and proguanil [118].  In the judge's opinion Wellcome was unable to establish through the expert evidence that sufficient technical considerations existed that would lead the skilled team not to pursue the combination [139], nor was the secondary evidence relating to the audience's reaction to the presentation and commercial success sufficiently persuasive to get them home.  The judge concluded at [144] that against the background of an urgent need for new anti-malarials, the skilled team would have reached the conclusion that the combination was well worth taking forward and that a Phase 2b trial was justified.  That would have led them to an appropriate ratio of the two drugs, accordingly, claim was obvious.  The Hudson abstract contained the same disclosure as the Hutchinson presentation bar the clinical data.  However, that was not sufficient to save it as the experts agreed that the skilled team would still consider the project for further development, thus it followed that claim 1 was also obvious over the Hudson abstract [153]. 

Glenmark asserted independent validity in claim 9, a claim to the co-formulation of atovaquone and proguanil.  However, the judge found on the evidence that once efficacy had been shown in clinic that the skilled team would consider co-formulating the combination, thus it was obvious to develop a pharmaceutical composition containing a combination of atovaquone and proguanil for the treatment and/or prophylaxis of malaria.  It followed that claim 9 also also invalid over both the Hutchinson presentation [146] and also the Hudson abstract [155].

This decision by Arnold J is another black mark on the checked fortunes of combination patents before the Patents Court for England and Wales.  We wait to discover how the Court would treat a combination where the patent disclosed a synergy which was not disclosed in the prior art.  Combination products are widespread across the healthcare industry, so this decision will not be welcomed by those companies owning patents relating to combination products (especially where they have no other patent protection for those products)".  

A well deserved katpat goes to Simon for this stupendous effort.

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Rucksack ruckus ruling: seven for or against all mankind?

Seven felines for all mankind? Lovely artwork from Carol Cooper at the Blue Cat Studio

Students of intellectual property law and practice have been heard to complain on occasion that the law is complex, that the statutes, treaties, regulations and directives are lengthy and that the quantity of case law is vast beyond belief and almost impossible to remember.  That is why, when a case has an easy-to-remember name, it lodges in the memory, becomes more difficult to forget and will be more frequently cited in court.  For example the CJEU's ruling in BABY-DRY was criticised by many, but few cases have proved easier to recall.  The case noted below, involving SEVEN FOR ALL MANKIND, is memorable too because it is easy to distinguish from other CJEU decisions -- but is it confusingly similar to another trade mark?  For the answer to that question we turn to Case C‑655/11 P, Seven for all mankind LLC v Office for Harmonisation in the Internal Market, Seven SpA

SAM applied to register the word sign SEVEN FOR ALL MANKIND as a Community trade mark for ‘jewellery, namely, jewellery made of precious metals and stones, bracelets, earrings, rings, necklaces, cufflinks, tie tacks, tie fasteners, pins, watches, watchbands, belt buckles of precious metals’ (Class 14) and ‘bags, hand bags, travel bags, travelling sets (leather goods), suitcases, rucksacks, valises, beach bags, trunks, document cases, pouches, wallets, card cases, portfolios, purses not of precious metal, cases for keys (leather goods), vanity cases, umbrella covers’.

In March 2006, Seven opposed, citing three earlier Community and figurative marks (all illustrated here) depicting the word "seven" and registered between them for a range of goods in Classes 3, 9, 12, 14, 15, 16, 18, 22, 25 and 28 for a wide range of goods which included rucksacks. Opposing SAM's application in respect of all goods for which registration was sought, Seven alleged a likelihood of confusion as well as taking unfair advantage of its reputat under Article 8(5) of Regulation 207/2009.

The Opposition Division the opposition as regards ‘rucksacks’. In its view, Seven's earlier trade marks had acquired an average distinctive character on the Italian market in relation to those goods, but rejected the opposition in respect of all the other goods. Seven then appealed unsuccessfully to the Second Board of Appeal (BoA), which felt that SAM's and Seven's marks displayed significant differences and that they were not similar overall. In any event the number ‘seven’, written in letters, possessed a very weak inherent distinctive character and the public was not accustomed to perceiving numbers as an exclusive sign of an undertaking. This being so, the BoA did not consider whether the distinctive character or reputation of the earlier marks had been proven; nor did it consider the opposition based on Article 8(5).

Seven then appealed to the General Court, this time with more success. In its view, the presence of the common word element ‘seven’ was sufficient to support a finding that there was some phonetic similarity between the signs at issue. The addition of the expression ‘for all mankind’ could easily be perceived by the English-speaking section of the relevant public as indicating the public for whom the trade mark was intended, this being the general public. In that context, the expression ‘for all mankind’ must be regarded as not very distinctive for the goods concerned and the conceptual scope of the mark for which registration was sought would therefore be mainly determined by the word ‘seven’, understood as being the main word to which the words ‘for all mankind’ applied. There was thus some conceptual similarity between the marks. In any event, while the expression ‘for all mankind’ evoked an alleged ‘philosophical concept’, it did not give SAM's mark a conceptual content that was so different from that of the earlier trade marks that it excluded any conceptual link between the respective marks. Since there was a certain overall similarity between the marks, the BoA made an error of assessment in not recognising that there was a certain degree of similarity between the signs at issue, since that fact influenced its examination of the likelihood of confusion. The General Court thus upheld both grounds of Seven's appeal.

Were the Magnificent Seven modelled on the Second Chamber of the CJEU?

This morning the Second Chamber of the CJEU, having heard the Advocate General, dispensed with his Opinion and dismissed SAM's appeal with costs. The CJEU, in hearing appeals, against General Court decisions governing Community trade marks, is principally concerned with two things. The first is its duty to ascertain that the General Court's reasoning was based upon the principles of Community trade mark law that govern the assessment of trade marks in terms of their distinctive character, their similarity or otherwise and ground upon which registration is asserted or challenged. The second is to examine the procedural rules order to ascertain whether they have been correctly applied and whether, in the event that they have not been, whether this could be said to be of such a nature to affect the outcome of a decision that is the subject of the appeal. Whether the members of the Court of Justice seriously and personally believe that the words 'for all mankind', when following 'Seven' and displayed on or in relation to any of the goods for which registration was sought, were placed there in order to indicate the class of the public for which those goods were intended, is not recorded. Merpel thinks that such a proposition is laughably absurd, but she's only an ordinary consumer and not a member of the European judiciary.

The IPKat notes that the Second Chamber of the CJEU was composed of five judges, one Advocate General and a Registrar, giving a total of seven.  He hopes that they are for all mankind ...

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Canine Federations in the dog-house in CTM dispute

While dogs can occasionally be found in packs, dog-lovers tend to hunt in federations.  That at least appears to be conclusion drawn by any reasonable Kat rom the ruling of the Court of Justice of the European Union in Case C‑561/11 Fédération Cynologique Internationale v Federación Canina Internacional de Perros de Pura Raza, which was published on Curia today. The case did actually have some legal content, but it was not one of those brain-aching condundrums that so enthrall and frustrate IP fans: the legal issue was a relatively minor one. The fact that it has taken more than a decade and a half since the new European trade mark regime of 1996 for the point in question to get as far as a legal ruling rather suggests that it is an issue that crops up more frequently in students' exam papers than in real life.  Anyway, here it is.

The Fédération Cynologique Internationale (‘FCI’), an international association set up in 1911 to support dog‑breeding [Merpel's not sure what sort of support the dogs need for this particular activity, which they appear to have been doing with some success since the dawn of doggy time ...], owned the Community trade mark (CTM) on the left for certain services in Classes 35, 41, 42 and 44.

The Federación Canina Internacional de Perros de Pura Raza (‘FCIPPR’), a private body set up in 2004, owned three Spanish national trade marks registered for a number of products and services included in Class 16 and which featured or included text such as FEDERACIÓN CANINA INTERNACIONAL DE PERROS DE PURA RAZA – F.C.I.,  FEDERACION CANINA INTERNACIONAL DE PERROS DE PURA RAZA and FEDERACION CINOLOGICA INTERNACIONAL + F.C.I. In February 2009, FCIPPR applied to register the logo on the left as a CTM for certain products included in Class 16. In February 2010, FCI opposed. However, since it failed to pay the opposition fee, the opposition was rejected with the result that FCIPPR's CTM was registered.

Unfazed by this setback, in June 2010 FCI brought before the Juzgado de lo Mercantil n. 1 de Alicante [the Spanish CTM court] an action for a declaration of invalidity of the FCIPPR's Spanish trade marks, alleging a likelihood of confusion with its CTM, as well an action for infringement. FCIPPR denied that there was any likelihood of confusion and, on the basis that the best kind of defence is attack, brought a counterclaim for a declaration of FCI's CTM (i) as having been registered in bad faith and (ii) as creating a likelihood of confusion with FCIPPR’s earlier national trade mark consisting of the words FEDERACIÓN CANINA INTERNACIONAL DE PERROS DE PURA RAZA – F.C.I.  In November 2010, by way of retaliation, FCI applied to OHIM to cancel FCIPPR's roundel.  OHIM has since stayed these proceedings.

The Juzgado de lo Mercanti took the view that, in the proceedings pending before it, it would have to establish whether the exclusive right which Article 9(1) of the Community Trade Mark Regulation [which lists the infringing acts] gives a CTM (in this case FCI) the right to enforce its trade mark right against a third party which is itself the proprietor of a later registered CTM (ie FCIPPR) before its later trade mark has been declared invalid.  That court therefore stayed the proceedings before it and asked the CJEU:

‘In proceedings for infringement of the exclusive right conferred by a Community trade mark, does the right to prevent the use thereof by third parties in the course of trade provided for in Article 9(1) ... extend to any third party who uses a sign that involves a likelihood of confusion (because it is similar to the Community trade mark and the services or goods are similar) or, on the contrary, is the third party who uses that sign (capable of being confused) which has been registered in his name as a Community trade mark excluded until such time as that subsequent trade mark registration has been declared invalid?’

The question might seem curious to some readers.  However, some countries have provisions that deal specifically with the inability of a trade mark owner to succeed in infringement proceedings against the holder of even a later trade mark if it happens to be registered. For example, Section 11(1) of the UK's Trade Marks Act 1994 provides:

"A registered trade mark is not infringed by the use of another registered trade mark in relation to goods or services for which the latter is registered"

No equivalent provision exists in the Community Trade Mark Regulation. While this obviously troubled the referring court, that court pretty well knew what the answer to its question would be. As the AG explained at [34]:

"In its order for reference, the national court indicates that reasons of a textual, systematic, logical and functional nature argue in favour of an interpretation of Article 9(1) consistent with the interpretation established by the Court in its ... judgment in Celaya [noted by the IPKat here] in regard to designs, according to which the proprietor of a registered Community trade mark may prevent any third party from using a sign included in the categories listed in Article 9(1)(a)(b) and (c) of Regulation No 207/2009, regardless of whether or not that sign was registered subsequently by the third party as a Community trade mark....".

AG Mengozzi advised the CJEU to rule thus:

"On a proper construction of Article 9(1) ..., in proceedings for infringement of the exclusive right conferred by a Community trade mark, the right to prevent the use of that mark by third parties extends to any third party using a sign which creates a likelihood of confusion, including a third party who holds a later registered Community trade mark".

Merpel found paragraphs [56] and [57] of this Opinion particularly interesting:

"As well as being illogical and inconsistent, an interpretation other than that set forth above would in fact jeopardise the effectiveness of Article 9(1)... by making it possible to limit, on the basis of the national registration of a sign, the protection conferred on the proprietor of the earlier Community trade mark.... Moreover, in my view, a different interpretation would be at odds with the unitary nature of the trade mark, for the proprietor of the earlier Community trade mark would be accorded differing protection in the various Member States, depending on whether the national law afforded him the possibility of instigating proceedings against an infringer without awaiting the cancellation of the later national trade mark adversely affecting his rights.

To that same effect, I consider it appropriate finally to point out that, in accordance with the need, repeatedly acknowledged by the Court, for the uniform application of European Union law, the interpretation of the term ‘third party’ in Article 9(1) ... cannot but extend to the analogous term set out in Article 5(1) and (2) of Directive 2008/95/EC, which is framed correspondingly".

As the IPKat commented at the time, this would not appear to bode well for the future of s.11(1) of the British Act, or indeed s.15(1) of the Irish Trade Marks Act 1996. He added that he would be surprised if the CJEU took a different line. Well, he was right and it didn't.  The operative part of the ruling echoes the words of the Advocate General where, at [53], it reads:

"Article 9(1) ... must be interpreted as meaning that the exclusive right of the proprietor of a Community trade mark to prohibit all third parties from using, in the course of trade, signs identical with or similar to its trade mark extends to a third-party proprietor of a later registered Community trade mark, without the need for that latter mark to have been declared invalid beforehand".

Readers with long memories may recall this Kat mentioning that, since the UK Intellectual Property Office was able to offer interested parties just a few short days over the end-of-year holiday season in which to fashion and submit their well-informed comments, he would be fascinated to know whether the UK government decided to make any representations. From today's judgment it is plain that it didn't -- though both the Italian and the Greek governments did.  Given that the case was not a particularly complex one and that none of the parties concerned was Greek or Italian, this Kat wonders whether either country is particularly known for its dependency on a thriving dog-breeding market.  Does anyone know?

Other things than can be found in packs here, here and here

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