The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Monday, 26 June 2017

Last Chance: AIPPI UK Garden Party this Wednesday

If you start talking about Brexit
on Wednesday, you will soon find the
AmeriKat in a nearby lavender bed...
The AmeriKat remembers her first AIPPI Garden party almost 10 years ago where, as a tiny kitten and encouraged by Kat Jeremy Phillips, she pawed across the lawn of Middle Temple where nameless faces and imposing judges were sipping their champagne.  Overwhelmed and slightly intimidated, she made her way to a table of lawyers where she was warmly welcomed by Arty Rajendra (then Rouse, now Osborne Clarke) who then kindly introduced the AmeriKat to the great and good of the London IP community.  

The annual Garden Party - traditionally held at Middle Temple - is a unique event where, in the spirit of AIPPI,  law firm allegiances and competition is left at the door and our profession unites to celebrate the achievements of another exciting IP year.  It is also a fantastic opportunity for more junior IP lawyers to start networking within the community (as the AmeriKat once did).

Save for a change of venue to the roof terrace of Allen & Overy in Spitalfields, this year should be no different.  Despite a glum forecast, the bright lights of the City will shine through as we celebrate another end of term of exciting IP litigation/deals and look forward to an ever changing landscape. And if the chatter about Brexit and IP starts to stress you out, the nearby lavender plants and pianist will help calm you down.

This year's party is being held this Wednesday (28 June) from 6-9PM (but in keeping with fashion there will bound to be after-hours dinners and drinks to join).  Registration is £35 for members and non-members.  To register click here.  

UPC Order on Privileges & Immunities placed before Parliament today

From the UK IPO's Unified Patent Court Taskforce, comes this e-mail update about the Unified Patent Court (Immunities and Privileges) Order 2017:
Secondary legislation in the form of an Order on Privileges and Immunities for the Unified Patent Court were laid in Parliament under the International Organisations Act 1968 today. Separate legislation will be laid in the Scottish Parliament in due course.  
This is the final legislative step in the UK’s ratification of the Unified Patent Court. The Orders implement the Protocol on Privileges & Immunities and gives the Unified Patent Court its legal personality in UK law. The Orders are affirmative orders, which means they will be debated in each House of Parliament. Separately the Scottish Order will be debated in the Scottish Parliament. They will also require Privy Council approval. Once this legislation has been passed the UK will be able to formally ratify the UPC Agreement.  
The Preparatory Committee of the UPC recently confirmed that the provisional timetable for entry into force (1 December 2017) could not be met. The Preparatory Committee is monitoring progress and will announce a new opening day in due course.
With Germany's recent constitutional challenge (as reported by the IPKat here) and Parliament being distracted by the recent UK elections and Brexit negotiations, do not hold your breath for much UPC activity before the House rises on 20 July 2017. It's summer, after all...

Celebrate 120 years of AIPPI in Sydney

The AmeriKat has never managed to get her paws to Australia.  The farthest she has ever been south of the equator was her trip to Rio two years ago where her sightseeing consisted of a blurry glance of Christ the Redeemer on the way back to the airport.  But this year, she gets to make the trip to sunny Sydney - the host city for the 120th AIPPI Annual Congress from 13-17 October 2017.  .

This year's program has something for everyone, with panel highlights including:

  • Sufficiently plausible -  where a panel of experts will address the IP headline grabbing issues of plausibility in the life science context - is it really a problem, how can the challenges be addressed, is the "patent promise" being broken?  
  • The best kept (trade secret): a real life scenario  - guided by experts joining us from across the globe, the audience becomes adviser as a rogue ex-employee traverses the globe with a company's valuable trade secrets in tow - will they catch him in time?
  • Injunctions:  innovator v innovator - where, in light of Amgen v Sanofi, a panel will debate the appropriate relief where innovators compete in the same field and infringement is found.
  • Digital health - your health on (the) line - where a panel  will focus on the both the technology and the related IP issues and provide examples of where IP has been successfully utilized in this new and exciting field. One aspect which will be considered is how IP has enabled startups and SMEs to gain a foothold in the healthcare sector, which has previously been dominated by larger, more-established companies.
  • The business of IP - Big Data, big issues - where a session will explore the relevance and application of current IP laws to Big Data, whether they meet industry needs, and whether there are any alternative models.
  • The middleman - intermediary liability - a session which will discuss intermediary liability in the digital world in key jurisdictions, including the availability of site blocking injunctions and address the practical effects and inherent limitations of such injunctions in the digital era.
  • How much for your FRAND? - where experts will consider Mr Justice Birss recent FRAND decision in Unwired Planet, as well as cases from other jurisdictions, and provide an overview of royalty rate determination issues for SEPs, related issues for standard setting organizations (SSOs), approaches adopted by other entities, such as patent pools and nonpracticing entities (NPEs), and also touch on the use of arbitration to resolve royalty rate disputes.

With a program like this and the social and cultural events that make AIPPI Congresses unique against the fabulous Sydney backdrop, that 40 hour journey will seem like a walk in the park! If you cannot attend, do not worry - the IPKat will be reporting live from the seminars with a pack of guest Kats and kittens.

The Early Bird discount expires tomorrow so better get to registering - click here.  Participants under 36 years of age benefit from a 50% discount.   The AmeriKat and her friends will see you there!

Event invitation - The Pirate Bay communicates to the public: are there any more online infringement questions to be answered?

Kats discussing EU copyright law
while drinking some tea
With its recent decision in Ziggo, C-610/15 (The Pirate Bay case, here), the Court of Justice of the European Union (CJEU) has clarified that a platform like The Pirate Bay might be regarded as primarily liable for unauthorised acts of communication to the public within Article 3(1) of the InfoSoc Directive.

But what are the broader implications of this much-awaited judgment, both in relation to the construction of this exclusive right, and the liability of online platforms for third-party infringements?

The IPKat is joining forces with Simmons&Simmons to organise a panel discussion devoted to analysing the judgment, as well as its significance for both EU copyright law and the policy discussion currently unfolding in Brussels [yes, the value gap proposal].

Hosted and moderated by IP partner Darren Meale at the London offices of Simmons&Simmons, the panel will be composed as follows:
Where? Simmons&Simmons, London
When? 18 July 2017
Time? 17:30 for 18:00 start

Attendance is free, but registration is required. Hurry up and register here!

Re-using Amazon item numbers (ASINs) for similar goods can constitute trade mark infringement and passing off

To encourage consistency across the site and make the sales process as easy as possible for consumers, Amazon encourages sellers to use pre-existing generic ASINs (or Amazon Standard Identification Numbers) where possible.

A recent IPEC case, Jadebray  & Noa and Nani v Clarke-Coles [2017] EWHC 1400 considered whether this reuse could constitute trade mark infringement and passing off in certain circumstances.

What happened?

Noa and Nani sold flagpoles on in three different packages with varying numbers and types of flags.  Each variant was sold under a separate listing with a different ASIN.  Each listing was identical apart from the total price. The names of the product listings were all descriptive, e.g. "Aluminium Flagpole 20ft with Union Jack Flag" underneath each listing it identified the flagpoles as "by Design Elements".

Jadebray owns a registered trade mark for the following device which it licensed to Noa and Nani:

Clarke-Coles used the same listings to sell its own flagpoles which included the reference to "by Design Elements".  These flagpoles matched the description but were made to a different design and were broadly the same quality.  The big difference was that Clarke-Coles undercut Noa and Nani leading them to effectively lose all sales.

Was use of the listing trade mark infringement?

Amazon suggests ASINs and related listings but HHJ Melissa Clarke found that there was no requirement for sellers to use those listings and it was up to Clarke-Coles to assess the specification to determine whether the product was the same and if not create its own listing.

The average consumer of flagpoles was identified as "a considered one, rather than a whimsical or impulsive one".  As a result "he is likely to pay close attention to all of the information on the listing" including the further details and customer reviews.

Rather than simply a "shop name" the judge held that the reference to "by Design Elements" was use of a sign which acted to indicate the origin of the goods.  This was because the average consumer would have taken them as coming from the specified manufacturer of the product rather than simply the person who created the listing.

Double identity under section 10(1) Trade Marks Act 1994?

The Claimant argued double identity on the basis that the differences between the device and "Design Elements" were so insignificant to the average consumer that they would go unnoticed per LTJ Diffusion.

HHJ Clarke concluded that:
[72] I am not satisfied that the sign complained of and the Trade Mark are identical because:
(i) the words 'Design Elements' within Trade Mark, which are in my judgment the dominant elements of the mark, are graphically represented in a stylised font which is not an everyday, normal typeface;
(ii) the Trade Mark also has a blue flag device above the letter 'g' in design which is a distinctive albeit not dominant feature;
(iii) the Trade Mark separates the words 'Design' and 'Elements' with a space, whereas the sign complained of removes the space between them and so reduces the identity between the Trade Mark and the sign.
The distinctive font and the blue flag device are elements which are not represented at all in the sign complained of. In particular, the absence in the sign of the jaunty blue flag device of the Trade Mark is, in my judgment, not a difference which is likely to go unnoticed by the average consumer. 
[73] However I am satisfied of their visual similarity because:
(i) the Trade Mark and the sign complained of are composed of the same two words using the same letters in the same order;
(ii) although the sign removes the space between the two words of 'Design' and 'Elements', unlike in the Trade Mark, the fact that they are two separate words is visually maintained by the capitalisation of the first letter of each word; and
(iii) there is no great degree of variation in the stylised version of the words used in the Trade Mark, which are easily recognisable in a highly legible, albeit unusual, font.
Likelihood of confusion?

The judge found that there was a likelihood of confusion on the part of the average consumer because:
  1. the high degree of similarity of the sign complained of to the Trade Mark, 
  2. the identity of the goods, 
  3. the distinctiveness of the Trade Mark to repeat customers, 
  4. the careful consideration that the average consumer will have given to the information on the Listings before making his purchase, 
  5. the real possibility of there being unreported actual confusion, and 
  6. the likelihood that the average consumer will consider that the Product emanates from the stated manufacturer, DesignElements, or is economically linked to that source. 
Although there was no evidence of evidence of actual confusion over a four year period and "the lack of familiarity with the trade mark" for the average consumer. This did not outweigh the other factors.


There was insufficient evidence that the Design Elements name had sufficient reputation amongst a significant part of the relevant public.

Passing off

HHJ Clarke easily found passing off.  Goodwill and damage were quickly identified.  The main issue concerned misrepresentation.
[99] The test is that in the Jif Lemon case, per Lord Oliver at paragraph 407: "… is it on the balance of probabilities likely that, if the appellants were not restrained as they have been, a substantial number of members of the public will be misled into purchasing the defendants' product in the belief that it is the respondents' product?" 
[100] I have no doubt that they were. The Listings state that the 20ft Aluminium Flagpoles the consumers are considering purchasing are 'by DesignElements'. If they click into the further information section, they will be told they are considering purchasing a flagpole manufactured by DesignElements. The photograph on the listing is of a DesignElements flagpole, which I remind myself is materially different in design to that of the Product, although it is not clear if those differences are visible from the photograph. Those potential consumers, when they clicked to buy the Product and became actual consumers, must have assumed that they were buying, and would receive, a DesignElements flagpole. They did not. I am satisfied that use of the Listing to sell the Product is a misrepresentation by the Defendant amounting to a deception.

Because the quantum of the lost Amazon sales was easy to establish, the judge considered it at the same time.  The judge wielded a "broad axe" and assessed the loss of profits at £14.45 per unit x 1,755 units i.e. £25,359.75.

You can have more fun with flags here.

Saturday, 24 June 2017

BMW wins appeal over use of trade mark to promote spare parts business

The BMW "Roundel"
Spare parts and intellectual property have a long and complicated history, particularly as far as the car industry is concerned.  A recent Court of Appeal decision has swung the pendulum back a bit in favour of rights holders.

BMW v Technosport London Limited [2017] EWCA Civ 779 is an appeal from the IP Enterprise Court, England and Wales' specialist IP court which handles relatively simple or low value claims.

What had Technosport been doing?

BMW alleged that Technosport had been using three of its registered trade marks: the BMW word mark, the BMW "roundel" and the "M logo" in the following ways:
  1. on a facia board on the exterior of its former business premises;
  2. in the interior of its new business premises;
  3. on business cards;
  4. on its website;
  5. on its official shirts together with the word "Technosport";
  6. on Twitter, including in the Twitter handle @TechnosportBMW; 
  7. on the rear of its van together with the word "Technosport".
The IPEC judge at first instance decided that uses 1-4 infringed BMW's trade marks but uses 5-7  did not.   Uses 5-7 were referred to as the "Technosport BMW signs".

The M logo
Informative or misleading use?

Some use of a third party sign can be legitimate.  In Case C-63/97 Bayerische Motorenwerke AG and another v Deenik [1999] ETMR 339, the CJEU was asked whether advertisements such as "Repairs and maintenance of BMWs", infringed a BMW trade mark.

The CJEU responded at paragraph 64 that:

"...Articles 5 to 7 of the directive do not entitle the proprietor of a trade mark to prohibit a third party from using the mark for the purpose of informing the public that he carries out the repair and maintenance of goods covered by that trade mark and put on the market under that mark by the proprietor or with his consent, or that he has specialised or is a specialist in the sale or the repair and maintenance of such goods, unless the mark is used in a way that may create the impression that there is a commercial connection between the other undertaking and the trade mark proprietor, and in particular that the reseller's business is affiliated to the trade mark proprietor's distribution network or that there is a special relationship between the two undertakings."

The Court of Appeal summarised this as:
  • informative use (i.e. "my business provides a service which repairs BMWs and/or uses genuine BMW spare parts) = ok
  • misleading use (i.e. "my repairing service is commercially connected with BMW") = infringement
It cannot be assumed by the average consumer that if the BMW mark is used next to a trading name that automatically means that the business is authorised but in this instance, the BMW mark was incorporated into the trading name i.e. "Technosport BMW" and therefore this was beyond mere informative use and carried the risk that it would be understood as misleading use. 

The van
The test in practice

Applying this test, the Court of appeal considered that:
  1. The use on the shirts - because there was no context to indicate that this was merely informative use, it conveyed the impression of authorisation by BMW and was therefore misleading.
  2. The van - there was an obvious risk that the average consumer would take the use as indication of a commercial connection because (i) there was nothing to indicate that it was informative use e.g. using "BMW repair specialist" separately from the word Technosport, (ii) the average consumer was unlikely to examine the website address and consider that because it didn't include the word BMW, Technosport was the company name and TECHNOSPORT-BMW was used in an informative sense, (iii) for services, the name of the business is much more readily taken to be use in relation to the services offered, (iv) the use of a trade mark within a trading style and without further explanation is naturally taken by the average consumer as an identifier of the business and services it provides.
  3. The Twitter account - whilst not the strongest point, it was another example of giving the impression of authorisation and not mere informative use. 
This decision provides some much needed clarity and a clear test for application across the spare parts and repairs world.  It seems perfectly reasonable that if you want to use someone's mark to describe the services you can offer you make it clear that the services are not authorised or otherwise commercially connected with the company whose items you are offering to repair.  

By Rosie Burbidge

Saturday Sundries

WIPO Roving Seminar

There is still time to reserve a place at the Italian Roving Seminar on WIPO services, which will take place in Bari on 5 July 2017. There is no charge for registering or attending. In addition to the presentations and panel discussions, there will be opportunities for networking during the coffee break and lunch break. [Please note, these events and all documentation will be in English]

Additional information, such as the seminar’s program and a link to the registration page, can be found on the WIPO site herePlease find attached the flyer for this event. 

Melting weather,
the passion for IP...
* New blog on the scene

Bart Van Besien started a new blog on IP rights


The online registration for the EIPTN 2017 conference at LUND UNIVERSITY on 28-30 June 2017 is now open via the conference webpage. To register to attend please go to here.

* Job opportunity

The Board of the British Copyright Council is looking to recruit a Director of Policy and Public Affairs: see details here. The role is a part-time one and on a contract basis rather than employee.

A new IBIL Scholarship opportunity

This is to fund a PhD student at UCL Faculty of Laws to undertake research in a field relating to intellectual property law. Details can be found here.

Debate on IP law in post-Brexit Britain

On Thursday 29 June at 6:00pm, Collyer Bristow will host its annual IP Debate at its Bedford Row art gallery. This year’s Motion is “This House believes that IP law in post-Brexit Britain will benefit from leaving the binding jurisdiction of the ECJ”. Proposing the Motion is Martin Howe QC, supported by Dr Gunnar Beck, Reader in law at SOAS. Opposing the Motion is Prof. Lionel Bently of Cambridge University and Prof. Tania Aplin of KCL. The Debate will be chaired by Sir Richard Arnold. A full house of 70 attendees have registered already but there is some standing room available for anyone who would like to attend but has not yet registered by responding to A report on the outcome of the Debate will follow.

Does Size Matter? What can firms (large and small) do to welcome LGBT people?

Creating a welcoming atmosphere can be crucial to help employees and colleagues be themselves in the workplace. Kindly hosted by our friends at Fieldfisher, with speakers Jay Wetterau and Mathieu Pinot Cardoso, Diversity and Inclusion Professionals at Fieldfisher, and Rhiannon Turner and Rachel Wallis, partners and patent attorneys at Greaves Brewster. Over half the tickets are already sold, so don’t delay – sign up now!

When: Tuesday 18th July, 6pm arrival for a 6.30pm start. Event finishes at 9pm.
Where: Fieldfisher, Riverbank House, 2 Swan Lane, London EC4R 3TT

Brought to you in association with IP Inclusive, working to improve diversity and inclusion in the IP profession. Read more about IP Out here (and sign up to our mailing list).

* Conference 

The Rotterdam Connection
When: 23, 24, 25 September
More information can be found here.

Ventsi Stoilov reports ...

That the General Court of the EU ruled in Case T 638/15 Alcohol Countermeasure Systems (International) Inc. v EUIPO. The case concerns an invalidation procedure against an EU trade mark ALCOLOCK, which was based on an earlier UK trade mark ALCOLOCK, in light of Article 53(1)(a) in conjunction with Article 8(1)(a) and (b) EUTMR.

The Board of Appeal decided that the applicant proved a genuine use of its mark on the territory of the UK. The reasons behind this conclusion were that the owner of the earlier mark submitted sufficient pieces of evidence. One of them was the fact that applicant acted as a licensee using a similar mark for identical goods. In addition to that, the applicant showed a selection of invoices, accompanied by purchase orders and email requests, a selection of press articles and advertisements, together with invoices for placing them.

Although the invoices revealed sells for only 350 breathalyser devices during the relevant periods, according to the Board this was sufficient taking into account the nature of these products.

The General Court upheld this decision.

Photo courtesy of Miss Ana Ramalho.

Friday, 23 June 2017

Trump and his coat of arms

From INTEGRITAS to Trump
It is normally Trump's hands which get the press attention but his [coat of] arms have been in the news as well recently.

As Tian noted in her recent post on Trump's Chinese trade marks, Trump and the Trump organisation's trade mark filing practices have come under the spotlight in recent months.

The coat of arms issue is not new but has received more attention since Trump became president of the United States.  In fact, there was a seminar on this topic back in March 2014 called ‘Coat of Arms and Trade Marks – Dual Protection or Mutual Antagonism?’ You can read the write up of the event here.

Trump's "coat of arms"
in his preferred colour 
So what's the problem?

Basically, the family which built Mar-a-Lago used their family coat of arms throughout the Florida resort.  The coat of arms was granted in 1939 to a British diplomat, Joseph Edward Davies.  When Trump bought Mar-a-Lago he appropriated and commercialised the coat of arms which is now used on a range of products and merchandise from golf carts to socks.  However, he made one important change, he removed the latin motto, INTEGRITAS (i.e. Integrity) and replaced it with his name, TRUMP.  None of this was done with the Davies family's knowledge or permission.

According to the New York Times, Davies' heirs considered suing but decided it was significantly more trouble than it was worth.  

Misuse of a coat of arms

Whilst it may not have been worth taking action in the USA, the situation was slightly different in the UK which had granted the coat of arms in the first place.

This raises two related issues: use of the coat of arms and whether the coat of arms could be registered as a trade mark in the UK.

Scotland are having none of it -
this is the closest Trump can get in Scotland
Use of the coat of arms 

Trump attempted to use the coat of arms on his Aberdeen golf course.  However, he had not registered the arms or sought approval from the College of Arms or Lord Lyon (the Scottish equivalent) who objected to the Trump coat of arms being used in the UK on the basis that it had been lifted from an existing coat of arms.

According to the New York Times' interviewee, John Petrie, Rouge Croix Pursuivant of Arms at the college: "There needs to be at least two lineal differences from something that's been granted in the past."  As far as the College of Arms is concerned, the motto, which was changed by the Trump organisation, does not form part of the design.  This meant that the two arms were essentially identical.

The College of Arms dates back to 1484 when it was founded by King Richard III (who was recently rediscovered in a Leicester car park).

Trade mark registration

The prohibition on using someone else's coat of arms in a mark comes from Section 4(4) of the Trade Marks Act 1994 and Rule 10 of the Trade Mark Rules 2008.

Rule 10 simply states that:
Where having regard to matters coming to the notice of the registrar it appears to the registrar that a representation of any arms or insignia as is referred to in section 4(4) appears in a mark, the registrar shall refuse to accept an application for the registration of the mark unless satisfied that the consent of the person entitled to the arms has been obtained.
If you have an earlier right, the College of Arms or Lord Lyon are notified but the opposition period will run in the usual way.  So if you happen to have a coat of arms, it is your responsibility to monitor the UK register unless you happen to also have a registered trade mark in which case you should be notified by the UK IPO.

Thanks to the New York Times for sharing these facts.  Enjoy!

AG Szpunar advises CJEU to rule that a red sole may not be just a colour

Every woman's
dream red soles
Can a colour be considered akin to a shape, so that a sign that consists exclusively of a colour "which gives substantial value to the goods" cannot be registered as a trade mark?

As readers might notice, this question should be phrased differently under the new Trade Mark Directive: Article 4(1)(e) therein prevents in fact registration as a trade mark of any sign that consists exclusively of "the shape, or another characteristic, which gives substantial value to the goods".

However the question of whether a colour is to be regarded as a shape (and not just "another characteristic") is because under the 2008 Directive, Article 3(1)(e)(iii) therein prevents [the general deadline for national implementations of the new directive is 14 January 2019] registration of any sign which consists exclusively of "the shape which gives substantial value to the goods". 

To add further complexity to this issue, the various language versions of the 2008 Directive seem to suggest that a shape may not be just a 3-dimensional object, but also a 2-dimensional one ... this possibly being the case, at certain conditions, of a colour. As this blog reported, in fact, the German, Dutch, French and Italian versions of the 2008 Directive speak of 'Form', 'vorm', 'forme' and 'forma', respectively.

All this is currently being at the centre of a Dutch reference for a preliminary ruling (from the Rechtbank Den Haag) to the Court of Justice of the European Union (CJEU), arisen in the context of longstanding litigation over the validity (or lack thereof) of the (in)famous Louboutin red sole colour mark. The case reference is Christian Louboutin and Christian Louboutin SAS v Van Haren Schoenen BV, C-163/16.

More specifically, the Dutch court is asking the CJEU to answer this question:

“Is the notion of ‘shape’ within the meaning of Article 3(1)(e)(iii) of Directive C (‘Form’, ‘vorm’ and ‘forme’ in the German, Dutch and French language versions of the Trade Marks Directive respectively) limited to the three-dimensional properties of the goods, such as their contours, measurements and volume (expressed three-dimensionally), or does it include other (non three-dimensional) properties of the goods, such as their colour?”

In 2010 Louboutin obtained the registration of a Benelux trade mark for goods in Class 25. Initially the registration was for footwear other than orthopaedic footwear, but in 2013 it was amended so as to limit the goods covered to high-heeled shoes (other than orthopaedic shoes) [interestingly enough, Louboutin also produces red-soled flat shoes].
The trade mark consists "of the colour red (Pantone 18 1663TP) applied to the sole of a shoe as shown (the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark)":
Louboutin brought proceedings against the operator of Dutch shoe retail outlets (Van Haren) over the sale of high-heeled women’s shoes with red soles. Further to an initial judgment in favour of Louboutin, the defendant's is now challenging the validity of Louboutin's trade mark on grounds that it would be a 2-dimensional mark (the colour red) which, when applied to the soles of shoes, conforms to the shape of the shoes and gives them substantial value. 
The Rechtbank Den Haag did not appear entirely persuaded by Van Haren's argument, yet decided to stay the proceedings and ask the CJEU whether the concept of ‘shape’ is limited to 3-dimensional properties of the goods, such as their contours, measurements and volume, thus excluding colours.
The AG Opinion
Yesterday Advocate General (AG) Maciej Szpunar delivered his Opinion

Also referring to the seminal CJEU decision in Libertel, the AG framed the present case within the specific issues presented by signs (shape and colour marks, but also position, motion, sound, olfactory or taste marks) which are indissociable from the appearance of the goods, notably their potential anti-competitive effects. It is essentially for this risk that it is important that the interest in keeping certain signs in the public domain is taken into account when they are examined with a view to registration [para 26].
Classification of the contested mark
Having said so, the AG turned to the classification of the contested mark. While noting that it is for the referring court to make a determination in the specific case at hand, the AG stated that to this end "the referring court should carry out an overall assessment, taking into account the graphic representation and any descriptions filed at the time of application for registration, as well as other material relevant to identifying the essential characteristics of the contested mark, where applicable." [para 34] 
However, the fact that a mark has been registered as a figurative mark does not mean that other classifications are not possible. [para 35]. It is in fact necessary "to consider whether the mark at issue seeks protection for a certain colour per se, not spatially delimited, or whether, on the contrary, such protection is sought in conjunction with other characteristics relating to the shape of the goods." [para 36] The fact that the colour is applied to a well-defined part of the goods (eg a shoe sole) does not represent an obstacle to considering that, although the proprietor of the mark does not claim protection for the contours of the goods, protection is actually sought for something other than just a colour. 
More specifically, "what must be determined is whether the sign derives its distinctive character from the colour in respect of which protection is sought per se, or from the exact positioning of that colour in relation to other elements of the shape of the goods." [para 38, the latter being possibly the case of the mark at issue]
AG Szpunar concluded that it is necessary "in examining the essential characteristics of the contested mark, to take into account the colour as well as the other aspects of the goods in question. The mark should therefore be equated with one consisting of the shape of the goods and seeking protection for a colour in relation to that shape, rather than one consisting of a colour per se."
Not Louboutins,
but every little girl's
dream red shoes
Applicability of Article 3(1)(e) and the wording of the new Directive
Nonetheless, the AG considered both options (ie the mark considered as a colour, or as a colour and a shape) to determine the applicability of Article 3(1)(e). 
While he considered the analysis in Libertel to be informed by the same rationale underlying Article 3(1)(e), the AG concluded that if the contested mark were to be classified as a ‘mark consisting of a colour per se’, it would be appropriate to hold that it did not fall within the scope of Article 3(1)(e). Things would be different if the contested mark were to be considered as a mark consisting of a signs in which the colour is integrated into the shape of the goods. 
The AG recalled that in any case the absolute grounds for refusal contained in Article 3(1)(e) do not prevent the registration of a sign which, although consisting of a shape of goods, also incorporates a significant non-functional element. It follows that "the question of whether or not, in a shape and colour mark, colour is a functional element, must be considered as part of the overall assessment of the sign, from the point of view of Article 3(1)(e) of Directive 2008/95. Furthermore, it is apparent from that case-law that, conversely, the provision in question applies to a shape of goods which incorporates another element where that element is functional." [para 60]
Interestingly, the AG at this point referred to the wording of the new Directive (ie the reference to "the shape, or another characteristic [of the goods]"), and held that that it does not represent a change of the law, but rather a mere clarification of existing law [paras 63-64]
In conclusion "the mark at issue should be regarded as sign of that type, combining colour and shape, the mark would potentially be caught by the prohibition contained in Article 3(1)(e)(iii) of Directive 2008/95." [para 66]
The interpretation of ‘shape which gives substantial value to the goods’
Finally, the AG addressed ("for the sake of completeness") the circumstances in which Article 3(1)(e)(iii) is applicable. 
He held that its application "is based on an objective analysis, the purpose of which is to show that the aesthetic characteristics of the shape at issue affect the attractiveness of the goods to such an extent that the reservation thereof to a single undertaking would distort competition on the market concerned. The consumer’s perception of the shape concerned is not the decisive criterion in that analysis, which potentially includes a range of factual matters. Furthermore, the analysis relates exclusively to the intrinsic value of the shape, and must take no account of attractiveness of the goods flowing from the reputation of the mark or its proprietor." [paras 69-70]
Beside the reference to the wording of the new Directive, an interesting aspect that the AG referred to in the final paragraph of the Opinion is also that the concept of a shape which ‘gives substantial value’ to the goods relates only to the intrinsic value of the shape, and does not permit the reputation of the mark or its proprietor to be taken into account.
If the CJEU follows the AG, not only will it be likely bad news for Louboutin, but potentially might create some uncertainties regarding the registrability of less conventional signs which, at least in the intentions of the 2015 EU legislature, could have become easier to register.

Thursday, 22 June 2017

UPDATE: Former Constitutional Court judge weighs in on UPC ratification suspension

Prof. Broß 
The JUVE news blog has published a short interview with former Constitutional Court judge Prof. Dr. Siegfried Broß on the constitutional complaint against the UPC-ratification in Germany.

Broß believes that the EPO Boards of Appeal are not independent from the EPO President and the EPO administration. He considers the recent reforms as being mere “cosmetics“.

A further point was the unjust imbalance regarding legal measures against validity decisions. While a European Patent is retroactively invalid with a final invalidation decision of the EPO’s Boards of Appeal, the opponent can – if the EP is upheld by the EPO’s Board of Appeal – continue to attack the then national parts of the upheld European patent in national invalidity proceedings.

Finally, Broß criticizes that the EPO would not commit to the protection of its employee’s fundamental rights guaranteed by national law and the EU Charter. A state transferring sovereign rights to a supranational administration has to safeguard that his nationals employed by such a supranational administration benefit from the same rights and standards as guaranteed by the German constitution. Prof. Dr. Broß strongly believes that these “fundamental constitutional deficiencies” have been overlooked and neglected during the drafting phase of the Unitary Patent Package.

Regarding the timing of the proceedings before the German Federal Constitutional Court, Prof. Dr. Broß says that it would be possible to decide the case within seven months but that the matter is not urgent. Rather, the Court would have to wait for the result of the Brexit negotiations until it hands down a decision.

Keep in mind that while Prof. Broß is certainly a competent lawyer with high standing - he was a judge at the Federal Court of Justice for twelve years and at the German Constitutional Court from 1998 to 2010 - he has been retained as a party expert in the Mundipharma complaints pending before the Constitutional Court, and his views expressed above certainly are in line with the complainant's position.

Life as an IP Lawyer: Sydney, Australia

The AmeriKat's professional life, be it on the Kat or sat at her desk litigating her hours away, involves a huge amount of coordination, support and opposition with lawyers from all over the world. One of the IPKat's key objectives is to bring this global IP community closer together by sharing IP decisions, legislation and practice from across the world with our readers, with the aim that by understanding our unique perspectives on the culture of IP practice we can work together to make IP a success story for innovators, creators, users and the public. With those grand aims, the AmeriKat thought it would be worthwhile to ask the next generation of global IP lawyers to illuminate IP practice in their jurisdiction, as well as to give readers some fun reading over their lunch-al-desko...


Wen Wu

For the seventh in the series, we travel 10,553 miles south east to Sydney, Australia - the location of this year's AIPPI Annual Congress - where Wen Wu of Gilbert + Tobin looks towards the role of artificial intelligence in IP practice, changing default locations for IP Office hearings and dining with Sir Robin Jacob.

What can you see from your office window right now?

I’m lucky to be surrounded by a panoramic view of Sydney overlooking Pyrmont Bay, towards the Blue Mountains. In the evenings, laser lights dance and flicker as part of Sydney’s Vivid festival.

When did you know that you wanted to pursue a career in IP?

I took A/Prof Michael Handler’s IP course at UNSW in the first part of 2008 and loved it. Later that year, I wrote a paper on the iiNet case. I knew then I wanted to work in this fascinating area of law.

Walk us through a typical day...

I get to the office between 8 and 9am, depending on the morning’s commitments. My typical day will probably familiar to your readers: preparing cases for hearing; preparing correspondence/advice; participating in calls/meetings/conferences; supervising/mentoring or being supervised/mentored; instructing counsel; and attending court. Some days will be more exciting than others, but the subject matter is never boring. There is no “face time” in my team, so when it’s not busy, I leave at about 7pm.

What are the key differences in your system that clients/other lawyers from outside the jurisdiction find surprising or strange?

For a country with a population of 24 million spread over an area the size of the US, Australia has a modern, relatively sophisticated IP system. We are a signatory to most major IP treaties. In 2016, Australia’s IP Office handled ~28,000 patent filings, ~71,000 trade mark filings and ~7,000 design filings (PDF). Our main IP court, the Federal Court of Australia, has substantial IP experience and recently introduced a specialist IP stream.

A second difference is that we have a second-tier patent called the innovation patent, with a lower level of invention and a term of 8 years. Because they are quick to register, innovation patents are often deployed in litigation. They have received criticism from one of our law reform bodies, which recommended their abolition. The Australian Government has not yet responded to this recommendation.

What are the key challenges that are facing the next generation of IP lawyers in your jurisdiction? How are those challenges different from the previous generation?

The main challenge is one common to all lawyers everywhere: how to create and demonstrate value to clients in a world of increasing commoditization, automation and disruption of legal services. In previous generations, expectations were different and communications were less instantaneous (I recall reading a letter from decades ago ending, “We look forward to receiving your response within 28 days”).

What are the misnomers that people have about IP practice in your jurisdiction?

Law students are often attracted to IP practice because it is seen to be “sexy”. It is not sexy. But it is almost always interesting, intellectually challenging and varied.

What advice do you give clients when they are looking to protect or enforce IP rights in your jurisdiction?

Start with the end: what is the outcome the client wants to achieve? From the result, you work out the options and the strategy to get there. Speak to the law/IP firms on your panel and compare their approaches. Cheap is not always best. A brand name is not always best.

If you could change one thing about IP practice in your jurisdiction, what would it be?

That IP Office hearings were held by default in the major capital cities, rather than in Canberra.

View from the office...
What gives you the biggest thrill in your job?

To work with clients and experts in a variety of different industries and fields. There has never been a day where I haven’t learned something new about a client’s business or an expert’s field.

What are the top trends or cases that we should be looking out for in your jurisdiction in 2017?

I mentioned earlier about a law reform body’s proposal to abolish innovation patents. The body also made a number of other recommendations (PDF), including in copyright (introduce fair use) and patents (raising inventive step to be similar to Europe’s). The Australian Government will respond to these recommendations in mid-2017.

To be successful in your jurisdiction, what are the key skills a young IP lawyer needs?

A deep interest in IP law, a strong work ethic, the ability to handle stress, the ability to work in and rally a team towards a goal, and the importance of showing up.

As the IPKat’s readers are likely eating their lunch while reading this, what is a typical lunch for you?

I try to eat healthy on most days, but sometimes I have some comfort food like pho or Hainan chicken rice.

What other jurisdictions do you work with the most in your practice?

The US and the UK. On the trade marks side, we work with associates all over the world.

Looking into your crystal ball, where do you see the profession in 10 years’ time?

Unless the profession were fully replaced by AI, I hope we would still be thriving and responding to the challenges that face us today. Efficiency and innovations will be the norm. Technology will allow us to do more and different things, but we will be no less busy.

If you could practice IP law anywhere else in the world for a year, where would that be and why?

I’d like to practise in the US or the UK to see how things are similar but different, and to gain different perspectives.

Royal Botanical Gardens (Flickr)
If you could have lunch with someone famous in the IP world (judge, lawyer, inventor, politician, alive or dead), who would that be?

Sir Robin Jacob, one of your biggest IP rock stars.

What is the best piece of advice you have ever been given?

I’ve retold this story many times over the years that I can’t say whether this advice was given or not, but here goes: in response to the book Getting to Yes, one of my supervisors said to me, “The client’s position is yes. Get to yes.”

If our readers were to come to your city - which they may well be doing in October for AIPPI - what are the top three things you recommend they see, do and eat (in that order)?

Watch the ferries roll in and out of our beautiful harbour city, followed by a walk (or run) along the water’s edge in the Royal Botanical Gardens, topped off by lunch at Masuya Izakaya.

Wednesday, 21 June 2017

A googol of generic questions in Ninth Circuit's Elliott v Google decision

If you were going to ask a friend to search something online, what word or phrase would you use to direct him or her to conduct that search?  "IPKat it", of course!  Kat jokes aside, this question was at the center of the recent Ninth Circuit Court of Appeals (Ninth Circuit) judgment in Elliott v. Google.

The dispute concerned the attempt of Mr. Gillespie (later joined in the suit by Mr. Elliott) to acquire 763 domain names such as “” and“”, all containing the word “google”. Google Inc. objected to the registration and filed a complaint of domain name infringement, or “cybersquatting”, before the US National Arbitration Forum. Upon refusal, the claimants petitioned the Arizona District Court for the cancellation of the Google trade mark on grounds of “genericide”. In other words, according to the claimants, the Google trade mark would have lost its uniqueness as it is used as a verb in common language. In fact, in the cross-motions for summary judgment, the claimants stated that the use of a trade mark as a verb, i.e. “I will google this”, constitutes genericness automatically. On grounds of insufficiency of evidence provided to support this argument, the District Court sided with Google and dismissed the claim. The claimants decided to appeal the judgment, focusing on two arguments in particular:
  • the District Court misapplied the primary significance test + it failed to recognize the importance of verb use; and 
  • the District Court impermissibly weighed the evidence in the granting of the summary judgment.
The question which then the Ninth Circuit had to answer was: Are there any genuine issues of material fact and did the District Court apply the relevant substantive law?

The Ninth Circuit ultimately sided with the District Court's findings that the evidence before it from the claimant was insufficient.

With regards to the first point of appeal, the circumstances surrounding Mr. Elliott's claim are undeniable - people do actually use the verb “to google”. What was lacking in the claim, as the Ninth Circuit noted, is the fact that it was not made with regards to a particular type of good or service. Lanham Act provisions supported Google's view.  Those provisions clearly state that in order for a mark to be considered generic the mark must lose its primary significance towards less than all of the goods and services for which the mark is registered (15 U.S.C. §1064(3)).

With arbitrary or fanciful marks, the word used as trade mark has its own meaning and it therefore has its own place in language (the Ninth Cirucit in this case used the example of the trade mark IVORY, which is a trade mark for soap but also is the material of the tusks of elephants Abercrombie & Fitch Co. v. Hunting World, Inc., F.2d 4, 9 n.6). Thus, it is essential when making a generic trade mark claim to clearly identify the goods and services related to the product: in fact, a mark maintains its validity if the public can describe “who” the mark is, conversely, the mark loses its validity if the public only understands “what” the service is Kellog Co. v. Nat'l Biscuit Co., 305 U.S. 111, 118 (1938). Only implying that the fact that “to google” is used as a verb is not enough, the primary significance test must be shifted to inquire whether the public, when using such verb, implies a generic way of referring to search engines or whether it identifies the Google search engine in particular. In this regard, the Court noted that it is not possible to partake to the public's inner thought process and thus discern whether they are using the verb in a “discriminate”, or with a particular source in mind, or an “indiscriminate”, no particular source in mind, manner (the same reasoning was followed in the Coca-Cola Co. v. Overland Inc., 692 F.2d 1250 (9th Cir. 1982), where it was argued that customers in a restaurant when ordering “a COKE” could refer to any type of cola beverage). 

A googol of Kats
This Kat also thinks that an argument could have been made with reference to the word googol, the very word from which the trade mark name Google originated from. A googol, in mathematical lingo, is a 1 followed by 100 zeros. In fact, the intent behind the choice of the trade mark Google as a search engine was to indicate the act of sifting through an immense amount of data, a googol of data with a small typo. Googol is then a word with its own meaning and could very well be used as a verb, to indicate, for example. the multiplication of a number by a very large amount. It is certainly not a common usage word, but nonetheless it exists and it pertains to a completely different domain, thus underlining the importance of identifying the goods and services involved.

The Ninth Circuit found that the use of a trade mark as verb does not constitute genericness automatically and that the claimant did not produce enough evidence to support its argument.

As to the second point of appeal, the Court determined that the evidence put forward by the claimant was insufficient as to “how the public primarily understands the word itself”. The claimant produced four categories of evidence:  (i) consumer surveys (of which only one was considered acceptable); (ii) use by the media and by consumers; (iii) use in dictionaries; and (iv) evidence from Google itself encouraging users to “keep googling”.  All evidence was dismissed.   

The question reported in the opening of the post was considered as only supporting the statement that the verb “to google” might be used indiscriminately, but that does not necessarily imply that it refers to all search engines. On the second point, use by the media and consumers, the claimant cited as evidence the song Bottlez (rEVOLVEr, RCA Record 2001), where the singer T-Pain says "to google [his] name”. The Ninth Circuit held that it was impossible to partake to the singer's inner thought process. It was also impossible to determine if T-Pain was referring to Google or to another search engine. Other examples of use in the media and by consumers cited by the claimant were of  the use of the phrases such as “to google on eBay” and “to google on Facebook”.  These were rejected as they were not disclosed during discovery and, in any event, they were considered largely irrelevant.
The dictionary evidence was not decisive. This was because the sources cited refer to the verb “to google” - the secondary meaning of the trade mark which only indicates the act of searching something through a search engine. As for the last point, the claimant was, again, not able to show what was on the mind of Mr. Larry Page when he wrote the “Google Friends Newsletter”.  

Finally, Elliott argued that there is no efficient alternative to the verb “to google” in order to describe the act of searching on the internet. This claim was rejected as the Court held that for this to be true it would require the search engines to call themselves “a google” but none of them do.  It reinstated that “genericide” does not occur “until the trademark has gone so far toward becoming the exclusive descriptor of the product that sellers of competing brands cannot compete effectively without using the name” TY Inc. v. Softbelly's Inc., 353 F.3d at 531.

This Kat also thinks that the use of the Google mark has a hard time being compared to other marks which have become generic because searching on the internet is an active process.  A user will have to physically type the name of the search engine or have it previously set as a homepage, as opposed to for example asking for an aspirin at the drug counter or looking for shredded wheat cereal at the supermarket.  Furthermore, there is a difference between traditional and vertically integrated search engines: search engines like Google look for information across the web, while eBay, for example, will look into its vertically integrated database. As the Court pointed out in the judgment, the goods and services for which a trade mark is registered are key to a claim of "genericide". If eBay services, here taken as an example, are mixed up with the inherently different services of Google it is clear that that claim is void.

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Image credits: Cecilia Sbrolli

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