The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy
InternKats: Rose Hughes, Ieva Giedrimaite, and Cecilia Sbrolli
SpecialKats: Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Sunday, 30 April 2006


Latest IP&T

The April issue of Butterworths' Intellectual Property and Technology Cases, the paper copy of cases reported on LexisNexis' online IP&T service, has now been published. Cases in this issue are

* SmithKline Beecham plc v Apotex Europe (Court of Appeal) - the sort of report you pray you never have to read, with all sorts of annoyingly technical issues in it such as estoppel, the slip rule, amendments of cross-undertakings and, from a purely practical point of view, how to keep awake while reading complex patent cases ...

* Ranbaxy UK Ltd v Warner-Lambert Co (Pumfrey J) - the UK patent infringement and validity litigation concerning the controversial LIPITOR patent;

* IN Newman Ltd v Adlem (Court of Appeal) - exciting passing-off dispute involving the question whether an undertaker has the right to use his own name after he has sold a business incorporating that name;

* Ltd v Patent Office (Pumfrey J) - non-patentability of an invention consisting of a way of playing a lottery via the internet.

That 5K run

IPKat co-blogmeister Jeremy is doing the INTA 5K run on Tuesday 9 May (see recent post) and hopes to make it a focal point for raising some cash for charity. Donations are coming in, but still a little slowly. If you'd like to donate, details - and running total - can be found on Jeremy's page here.

Friday, 28 April 2006


How many trade mark lawyers ...?

Trade Marks at the Limit is a collection of essays on the extent to which you can make legal use of other people's trade marks even if you don't have permisssion. It will be published by Edward Elgar in the next couple of weeks. The idea for this book was not exclusively its editor's idea: it originated from a number of discussions between the two katmeisters back in 2003-4, when they were working on what eventually became Trade Mark Use.

To mark the publication of Trade Marks at the Limit the IPKat is running a How Many Trade Mark Lawyers Competition, the prize being a free copy of the book. The rules are simple: the person who submits the best answer to the question "How many trade mark lawyers does it take to change a lightbulb?" by mid-day (British Summer Time) on Monday 15 May 2006 is the winner. You can enter as many times as you like, the sole condition being that you grant the IPKat a non-exclusive licence to publish your submissions on his weblog for the full duration of the copyright term. Please send your submissions here.

Full details of the book here.
Examples of lightbulb jokes here and here


Nokia and InterDigital settle

Reuters reports that Nokia has settled its dispute with InterDigital. After having lost the case, concerning licence fees for 2G wireless technology patents in New York, Nokia has agreed to pay $253m. In return they will get what they describe as

a fully paid-up, perpetual, irrevocable license to all of InterDigital's current patent portfolio, and any patents InterDigital may later acquire, for purposes of making or selling 2G products, including handsets and infrastructure.
In other words, Nokia 2G handsets won’t infringe. However, things aren’t so simple so far as 3G technology is concerned. Nokia will not be held liable for infringement concerning their 3G handsets and infrastructure up until 26 April 2006 (the Wednesday that just happened) but phones etc produced after that date are unlicensed and so further negotiations are necessary.

The IPKat is in favour of the sensible settlement of IP disputes. It’s a shame though that so much court time was taken up over this. In the UK alone, weeks and weeks of trial took place.

Substantive patent harmonisation setback

ICTSD reports on the collapse of the WIPO Standing Committee on the Law of Patents informal session which took place on 10 to 12 April, chaired by the UK’s very own Ron ‘Comptroller’ Marchant. The purpose of the meeting was to outline an agenda for the formal SCP meeting which was due to take place June.

However, no agreement could be reached, and the June meeting has been abandoned for now. Instead, the WIPO General Assembly will consider what to do next in September. It seems that the division was on developed/developing world lines. Developed countries are pushing for wider patent protection with a lower inventive step criterion, while developing countries are afraid that this will force them to grant wider patent protection in a way that is detrimental to their interests.

The US and Japan wanted the following issues on the agenda:

*prior art
* novelty
*grace period
* inventive step

The developing countries want these issues on the agenda:

*development and policy space
*exclusions to patentability
*exceptions to patent holders' rights
* anticompetitive practices related to patents
*requirements to disclose the origin of genetic material or traditional knowledge used in an invention along with proof of prior informed consent and benefit sharing
*effective mechanisms to challenge the validity of patents
*technology transfer,
*alternative models for promoting innovation.

Ron Marchant concluded that the time was not yet right for these issues to be considered, and called on the countries involved to consider their positions in order to be able to work towards practical solutions.

While the IPKat doesn’t want to see patents which are harmful or inadequately examined issued, he finds himself veering towards the US/Japan argument here. The developed countries’ concerns should certainly be addressed, but it makes sense to the Kat to work out what the basics of the patent system are and then work out how they need to be modified to ensure that the wider public interest is sufficiently protected.

Read the WIPO spin on the meeting here.


Improve Your IP Writing Skills - the course

Last week the IPKat announced three dates for a half-day course on how to improve your intellectual property writing skills. He's pleased to say that the initial response has been very good. If you have emailed to express your interest or to seek further information but have not yet received a response, you will do so within the next couple of days.

The 5 June course has only a few spaces left; there are rather more spaces left for the courses on 4 July and 11 September, but they'll be going ahead anyway.

Email here if you want to reserve a place or if you want to receive a copy of the course details (a copy will automatically be sent to everyone who has already contacted the IPKat).

Coming soon .. the INTA

The International Trademark Association (INTA) Annual Meeting takes place from 7 to 10 May in Toronto. Co-blogmeister Jeremy will be there. If you're there too, you're welcome to come and say hello. He's usually in the vicinity of the Exhibit Hall when it's open.

On Monday 8 May he'll be near the Thomson Sweet & Maxwell booth, giving out sample copies of the European Trade Mark Reports and European Copyright and Design Reports.

On Tuesday 9 May, 10.45am to 12.15pm, he'll be at the Edward Elgar booth, to mark the launch of Trade Marks at the Limit, a collection of essays he's edited.

On Wednesday 10 May, 10.30am to 12.30pm, he will be at the Oxford University Press booth, along with other Journal of Intellectual Property Law and Practice Editorial Boardies.

Details of all the publications mentioned above can be found here.

There will also be a 'Meet the Bloggers' session, generously sponsored by much-loved philanthropists John Welch (the TTABlog) and Marty Schwimmer (The Trademark Blog) on the evening of Tuesday 9 May, from 9.30pm to midnight at BeerBistro, which is said to be near the conference hotels. Even though it is unclear whether this session is accredited for continuing professional education purposes, you are welcome to attend it - particularly if you are (i) an IP blogger, (ii) a person who reads IP blogs or (iii) anyone else.

The INTA 5K Run

For the first, and probably last, time in his life Jeremy is participating in the INTA 5K Run on Tuesday 9 May, more or less to see if he actually can do the distance. Since he doesn't like to expend any effort completely in vain, he's using this as an opportunity for collecting for a couple of charities. If you enjoy the IPKat weblog and feel guilty about the fact that it's totally free, you can clear your conscience by making a charitable donation which, with a bit of luck, will be tax-deductible. Details are available on Jeremy's website.

Thursday, 27 April 2006


Google keyword case – now in Israel

CNet reports that the latest trade mark dispute involving Google selling advertising keywords to someone other than the trade mark owner is taking place in Israel. The action is being brought by clothing company Matim Li, which is seeking $530,000 in damages.

The IPKat is sure that there’s a great lesson to be learnt from the different treatment that the keywords cases get in the various different jurisdictions – he’s just not sure what it is yet.

Judge in sense of humour shock (continued)

The IPKat was kicking himself for not having noticed the secret code in the Da Vinci Code judgment, until he realised where he’d gone wrong. The BAILII version of the judgment has the seemingly random italicised ‘typos’ corrected, rendering the code invisible. If you want to see the code in all its glory, take a look at the Court Service version.

FIFA loses in Germany

IOL reports that FIFA has lost a case against Ferrero before the Federal Court in Karlsruhe. The court found that FIFA can’t stop other undertakings from using WM 2006 (which translates as World Cup 2006), WM Deutschland (World Cup Germany) and Fussball WM Deutschland (Football World Cup Germany).

The IPKat would like to see a sensible approach taken here. While it’s rather mean to stop other undertakings referring to a national event, the use of such terms in the typeface used by FIFA could wrongly suggest that the user is an official sponsor, which would mislead the public.


Code of Honour

A huge thanks to all of you (especially Catfriend - from whom my thank-you email bounced back) who have sent me links to news items on the code allegedly incorporated by Mr Justice Peter Smith into his judgment in Baigent and Leigh v Random House - the Da Vinci Code copyright infringement case (blogged here, here and here by the IPKat). You can read this story for yourselves in The Daily Mail, The Guardian and The Times, among others.

Left: more essential copyright reading for Peter Smith J (above).

The IPKat has no wish to duplicate that which has already been so well covered. He will confine himself to the comment that this is not the first case in which a judge has written something that no-one can understand. Merpel wonders, in a common law jurisdiction such as England, is the code a binding precedent ...?

Enigma code here - though it wasn't really such a tough nut to crack for anyone who read the patents ...
Another IP case where the judgment is written in code here


Be kind to that patent troll, he might just be an inventor

The IPKat has just had a sudden thought, sparked off by reading Duncan Bucknell's piece on strategic responses to patent trolls. The sudden bolt of lightning is this: we've got a major problem of discrimination right now, caused by people being too 'trollist'.

Every entity that owns and licenses patents, without actually making anything, is capable of falling within the class of entities called "patent trolls". The concept is a brilliant one - we all know that trolls are evil creatures from Nordic folklore who control essential facilities and make demands of those who would use them. The word "troll" in English also resonates with "toll", a tax levied on an unwilling payee. What better way to stigmatise a person who charges rent for the use of a patent than to call him a patent troll?

The same phenomenon appears with the unpopular word "landlord", suggesting some powerful baron who will batter down doors and set dogs upon uncooperative tenants, exercising the jus primae noctis against their daughters (and sons, the Kat supposes, this being the 21st century). But the landlord (or landlady) is more likely to be an elderly pensioner, letting out a spare room for a bit of much-needed cash than a propertied demon/racketeer.

Left: some trolls can be quite cuddly - so let's not be trollist

What the IPKat is getting to is this: the commercial relationship of patent licensee to licensor should be both judged and regulated by clear and fair legal criteria rather than by name-calling and stigmatisation. The small-time inventor who creates and patents a small-time inventor but lacks the resources to make it, the university research team whose academic brilliance extends the boundaries of science but does not extend to the arts of manufacture and marketing, the pension fund that invests in intellectual property rather than land or share equities - are these all trolls?

What's more, if you're going to be a nasty, evil troll, it's silly using patents to hit other people over the head with. For one thing, their term is limited and highly vulnerable to challenge for invalidity; for another, they're expensive even for trolls to litigate. Also, abuses of monopoly power are subject to such devilish devices as compulsory licence applications and competition laws. Finally, people have been known to invent around inconvenient patents.

Merpel adds: it's strange, but a company that has US or European patents, but manufactures under them by outsourcing to a country where sweat-shop labour is dirt-cheap and legal regulation of labour and the environment is all but non-existent, seems to get far less criticism than a business that creates or buys patents - presumably from people who willingly sell them - and then charges for their use.

Right: never a great speller, Merpel struggles to grasp the difference between 'sweat shops' and 'sweet shops' ...

To conclude, no-one wants to see patents lying idle, or being used as tools of extortion - but let's retain a sense of proportion when debating the merits of patent ownership and exploitation and not let the use of emotive terms distract us from the real issues.


Whose pocket is the Court in?

The European Court of Justice has just given its ruling in Case C-145/05, Levi Strauss & Co. v Casucci SpA, on a reference for from the Belgian Cour de cassation, Belgium.

In 1980 Levi Strauss registered in the Benelux its ‘mouette’ (seagull) mark, a design represented by a double row of overstitching curving downwards in the middle, placed in the centre of a pentagonal pocket (above, left), for clothes. Casucci put jeans on to the Benelux market bearing a sign comprising a double row of overstitching, curving upwards in the centre of the back pockets (above, right). Levi Strauss sued for trade mark infringement and, having lost at first instance, appealed to the Cour d’appel de Bruxelles. That court dismissed the appeal, ruling that there was little similarity between the two pocket designs and that the mouette mark could no longer be considered to be highly distinctive, being comprised of components whose characteristics, which were not inherently distinctive, were now common to the products concerned owing to their constant and widespread use, the effect of which was necessarily to weaken significantly that mark’s distinctive character.

Levi Strauss appealed to the Cour de cassation, arguing that, in order to determine whether a mark is highly distinctive, the court should place itself at the time when the sign in question had come into use – that time being, according to Levi Strauss, 1997 – unless (i) the mark had lost its distinctive character in full or in part after that time and (ii) that loss was fully or partly due to the action or inaction of the proprietor of that mark. The Cour de cassation decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

"(1) For the purposes of determining the scope of protection of a trade mark which has been lawfully acquired on the basis of its distinctive character, in accordance with Article 5(1) of Directive 89/104, must the court take into account the perception of the public concerned at the time when use was commenced of the mark or similar sign which allegedly infringes the trade mark?

(2) If not, may the court take into account the perception of the public concerned at any time after the commencement of the use complained of? Is the court entitled in particular to take into account the perception of the public concerned at the time it delivers the ruling?

(3) Where, in application of the criterion referred to in the first question, the court finds that the trade mark has been infringed, is it entitled, as a general rule, to order cessation of the infringing use of the sign?

(4) Can the position be different if the claimant’s trade mark has lost its distinctive character wholly or in part after commencement of the unlawful use, but solely where that loss is due wholly or in part to an act or omission by the proprietor of that trade mark?".
The ECJ ruled as follows:

"1. Article 5(1) of ... Council Directive 89/104 ... must be interpreted as meaning that, in order to determine the scope of protection of a trade mark which has been lawfully acquired on the basis of its distinctive character, the national court must take into account the perception of the public concerned at the time when the sign, the use of which infringes that trade mark, began to be used.

2. Where the competent national court finds that the sign in question constituted an infringement of the mark at the time when the sign began to be used, it is for that court to take such measures as prove to be the most appropriate in the light of the circumstances of the case in order to safeguard the proprietor’s rights deriving from Article 5(1) of Directive 89/104; such measures may include, in particular, an order to cease us of that sign.

3. It is not appropriate to order cessation of the use of the sign in question if it has been established that the trade mark has lost its distinctive character, in consequence of acts or inactivity of the proprietor, so that it has become a common name within the meaning of Article 12(2) of Directive 89/104, and the trade mark has therefore been revoked".
The IPKat does not imagine that trade mark owners will be particularly happy with this. If a trade mark is highly distinctive in 1997, moderately distinctive in 1999 and marginally distinctive in 2001, but has become more distinctive again by 2003, the scope of protection will oscillate and the same unauthorised act, done by four different competitors, may be an infringing act at some times but not at others. However, as Merpel observes, a market is not set in stone: it is a constantly changing commercial environment. The question is not one of doing justice as between the four different competitors but of doing justice between the trade mark owner and his competitors in relation to their consumers at the time they are competing.

Distinctive seagull here

Luxembourg for the chop

Another European Court of Justice ruling, L'affaire C-180/05 Commission des Communautés européennes, contre Grand-Duché de Luxembourg, is seulement in French. This means that it doesn't really count.

Left: Luxembourg, before the ECJ ruling ...

If it did count, Luxembourg would be in really serious trouble. The naughty 'bourgers have failed to implement la directive 92/100/CEE du Conseil, du 19 novembre 1992, relative au droit de location et de prêt et à certains droits voisins du droit d’auteur dans le domaine de la propriété intellectuelle (that's the directive on rental right and lending right and on certain rights related to copyright in the field of intellectual property), which should have been part of Luxy Law since 1 July 1994. For totally and abjectly failing to comply with its obligations under Community law, the ECJ has ordered Luxembourg to host the Eurovision Song Contest for 10 consecutive years, following which it will be turned over to the English as a training ground for their football supporters.

The IPKat adds, there's another thing that Luxembourg has failed to implement. That's the unspoken convention that there should be something to do after 9pm apart from sitting at home and watching the telly. Merpel says, how could those criminals have got away with not implementing the directive for nearly 12 years?
Right: ... and after.


Onion on Beckett

Under the banner 'Scholars Discover 23 Blank Pages That May As Well Be Lost Samuel Beckett Play', the IPKat has just been rejoicing in another splendidly pointed piece of satire by The Onion. The feature begins:

"Just weeks after the centennial of the birth of pioneering minimalist playwright Samuel Beckett, archivists analyzing papers from his Paris estate uncovered a small stack of blank paper that scholars are calling "the latest example of the late Irish-born writer's genius".

The 23 blank pages, which literary experts presume is a two-act play composed sometime between 1973 and 1975, are already being heralded as one of the most ambitious works by the Nobel Prize-winning author of Waiting For Godot, and a natural progression from his earlier works, including 1969's Breath, a 30-second play with no characters, and 1972's Not I, in which the only illuminated part of the stage is a floating mouth.

"In what was surely a conscious decision by Mr. Beckett, the white, uniform, non-ruled pages, which symbolize the starkness and emptiness of life, were left unbound, unmarked, and untouched," said Trinity College professor of Irish literature Fintan O'Donoghue. "And, as if to further exemplify the anonymity and facelessness of 20th-century man, they were found, of all places, between other sheets of paper."

"I can only conclude that we have stumbled upon something quite remarkable," O'Donoghue added".
The IPKat is reminded of John Cage's 4' 33", which he believes to be the only entirely blank work in which the author (sic) claims copyright. If the work of John Cage (left) is indeed legally protected, so too could be the spoof Beckett's.

Empty canvas here and here
Blank verse here and here

Wednesday, 26 April 2006


Haven't an idea

Today it's World Intellectual Property Day. WIPO Director General Dr Kamal Idris, according to the WIPO press release, has emphasised the limitless value of ideas in inspiring the work of inventors and creators from which we all ultimately benefit. He adds:

"Ideas shape our world. They are the raw materials on which our future prosperity and heritage depend. This is why it is important to provide environments in which innovative ideas are encouraged and rewarded. This is why intellectual property exists".
The IPKat, who has recently been contemplating Article 2 of the WIPO Copyright Treaty ("Copyright protection extends to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such") has a teeny weeny problem with this: intellectual property law doesn't actually protect ideas. Or has he missed something? Merpel says: here's a little competition: the first person to let her know if there's anything in the text of any international IP treaty or convention administered by WIPO that suggests that ideas are indeed protectable wins a bottle of bubbly with which to drink the health of IP for another year.

But here's an IDEA which is firmly protected by copyright ... and here's another one.

Criminal sanctions - another European standard looms large

The IPKat learns from Reuters, via his erudite friend Caroline Wilson, that the European Commission is set to recommend common European sanctions today against counterfeiting and piracy of goods, including at least four years in prison and a 300,000 euro ($372,700) fine. This is reputedly because different penalties in the 25 EU countries make it difficult to combat counterfeiting and piracy effectively. The EU executive recommends higher fines when there is a health or safety risk. Other possible measures are the confiscation or destruction of the objects, and a permanent or temporary ban on offenders from engaging in commercial activities.

Non-harmonised punishments: proposals from the British (above, right) and French (below, left)

The IPKat hopes that prosecutors will allowed to indulge in forum-shopping. There's really no point in imprisoning anyone in the UK because all we do is let them out. Merpel says, even the adoption of the same scale of penalties throughout Europe won't work unless judges are trained to apply them consistently throughout the EU empire. Or do we say that six weeks in a Greek jail is about as much punishment as four years in a comfy Scandivanian one?

Crime and Punishment here
Let the punishment fit the crime here

Tuesday, 25 April 2006


Tomorrow sees Dr Thomas Hays of Lewis Silkin talking about the O2 v H3G comparative advertising case at Queen Mary.

All are welcome and there's no charge. Just turn up at the Dean Rees House, Charterhouse Square at 5.30pm.


The IPKat has learnt of the following goodies coming up before the ECJ in the coming week:

*The hearing in Dyson, a case concerning the registrability of the see-through drum element of Dyson’s vacuum cleaner as a trade mark (blogged by Jeremy earlier this morning). The IPKat says about time – the reference was made in June 2003;

*The Belgian Levi Strauss trade mark judgment concerning infringement of the Levi jeans pocket shape;

*The judgment in Commission v Luxembourg concerning the implementation of the rental and lending right directive;

*The hearing in the Commission v Microsoft competition case before the CFI. This is scheduled for a whopping 5 days.


Shock generic use of electrical goods trade mark

Today the European Court of Justice is hearing arguments in Case C-321/03 Dyson Ltd v Registrar of Trade Marks. The questions referred to the ECJ by the Chancery Division of the High Court for England and Wales are:

1.In a situation where an applicant has used a sign (which is not a shape) which consists of a feature which has a function and which forms part of the appearance of a new kind of article, and the applicant has, until the date of application, had a de facto monopoly in such articles, is it sufficient, in order for the sign to have acquired a distinctive character within the meaning of Article 3(3) of Directive 89/104, that a significant proportion of the relevant public has by the date of application for registration come to associate the relevant goods bearing the sign with the applicant and no other manufacturer?

2.If that is not sufficient, what else is needed in order for the sign to have acquired a distinctive character and, in particular, is it necessary for the person who has used the sign to have promoted it as a trade mark?

Left: an upright vacuum cleaner manufactured under the Hoover brand

The IPKat is horrified to read that the ECJ's Diary entry for today describes the case as relating to a "mark comprising a functional feature (transparent plastic cylinder) forming part of a hoover" (emphasis added by a scandalised IPKat). Is not HOOVER a registered trade mark in respect of vacuum cleaners - among other goods? Merpel adds, if the genericity of the word "hoover" is ever litigated in Europe in proceedings that reach the European Court of Justice, will that court take judicial notice of its own generic use of the word?

Hoover Company here
Wikipedia defines hoover as (i) generic term and (ii) something that should not be mentioned on family websites here, but as (iii) a trade mark here
More on J. Edgar Hoover, Howard Hoover and the Hoover Dam


BBC reminder

Today's BBC Radio 4 "Word of Mouth" programme (4pm, British Summer Time) deals with trade marks. Details here

Listen to BBC Radio 4 online here

New website

IPKat co-blogmeister Jeremy has been trying to sort out a website containing basic information about his activities, background, future engagements and contact coordinates. For ease of management he has used Blogger software, but it's not a blog. If you'd like to visit it, you can find it here.

Improve Your IP Writing Skills course

Last week the IPKat posted arrangements for the first three half-day courses on how to improve your intellectual property writing skills. Initial take-up has been very encouraging - the IPKat will be writing later this week to all of you who expressed your interest. Right now it looks as though all three dates will be viable. If you've not yet expressed an interest but wish to do so, please email the IPKat here.

Monday, 24 April 2006


Swings and roundabouts

The IPKat learns from Xinhuanet that the Hong Kong Intellectual Property Department and the Hong Kong Scout Association (HKSA) held a "Respect for Intellectual Property Rights Fun Fair" in Hong Kong yesterday. This event was held at Kowloon Park Piazza to promote respect of intellectual property rights and to mark the World Intellectual Property Day on April 26. Over 60 scout members have participated in various kinds of IP seminars, workshops and visits since the "Scout Program on Respect for Intellectual Property Rights" was launched in April 2005.

Apart from the singing performances, an Intellectual Property Game Competition was held, in which 10 scout teams were competing for the "Best Intellectual Property Game Booth Design".

The IPKat can hardly imagine. Merpel notes, though that the word "funfair" is only one letter away from "unfair" - a word used with frequency and with vehemence by (i) business that complain they're not getting a big enough advantage over their competitors and (ii) consumers and users of IP-protected properties, who say they're being victimised. Is this a case of "what you gain on the swings, you lose on the roundabouts"?

Some fair intellectual property works here, here and here

More on implementation of the IP Enforcement Directive in the UK

Last week the IPKat posted a blog from an anonymous friend who expressed grave anxiety concerning the impact of the UK's version of the Enforcement Directive upon patent litigation. The same friend has had some further thoughts, this time on the enforcement of trade mark rights. He says:

"... the new rules do not apply to international trade marks because someone forgot to amend that well-known favourite, paragraph 6(5) of the Trade Marks (International Registration) Order 1996 (the talk in the tea room is of nothing else) which, I am sure you recall, is the equivalent to s.25 of the Trade Marks Act 1994 [the effect of failing to register a registrable transaction] and which even now remains as a restriction on damages recovery - meaning that the UK has failed to implement the directive and a further regulation is required in any event.

An interesting question to ask is what happens to damages enquiries that are already under way (a) in general, given that apparently the election between enquiries and accounts is abolished and (b) in relation to costs for late-registered rights? Presumably the patentee cannot recover costs of an enquiry. It's also interesting but painful to speculate on split costs orders".

Above right, and left: the UK implementation of the Enforcement Directive is causing serious headaches for IP lawyers

Indeed, mewses the IPKat, who would rather like to see a full-scale review of the incidents of registration (and non-registration) of transactions concerning IP rights. The registration provisions were introduced with the laudable aims of protecting the interests of rights-holders and furnishing valuable commercial information as to who was entitled to license (or work) an IP right. Yet systems for the protection of copyright and other unregistered rights seem to work surprisingly well without being able to confer those benefits. Are they really necessary now and, if they are, should they be standardised or rationalised throughout the European single market? Merpel says, it would be nice to know more about the abolition of the rule that you have to choose between damages and an account of profits, particularly with regard to the practice in other European jurisdictions in which it has never been necessary to make that election.

Sunday, 23 April 2006


Battle of the bunnies: an expert writes ...

Last week the IPKat reported on the chocolate bunny battle between Swiss chocolatier Lindt and their German rivals Hauswirth. A friendly mole whose command of the German language exceeds that of the IPKat reports:

"According to (10 April, 2006), an Austrian lournal and also ORF (the Austrian broadcasting agency: - 22k), an interim decision was rendered by the Austrian Supreme Court. The court decided that Hauswith's sitting rabbit would not be confused with Lindt’s rabbit. Thus Hauswith was allowed to sell the rabbits this year (last year they gave them for free as they could not be sold!).

Comment : For better understanding of the background of this legal battle it has to be added that, in Austria, Easter rabbits are very common. Consumers would not therefore easily confuse one rabbit with another (as may be the case in other countries like Denmark, where Easter rabbits are uncommon). The shape of a sitting rabbit cannot be monopolised therefore by any one undertaking.

“Red” (red ribbon) is a typical colour in the context of Easter. It is not only rabbits that have red accessories, such as red ribbons. Easter lambs together with a red flag, symbolising the victory of Christ) have a long tradition. The recent decision of the Austria Supreme Court seems therefore quite reasonable:

According to, Lindt lost a similar case at first instance in Germany. In Poland, however, Lindt succeeded and the competitor’s Easter rabbits had to be taken off the shelves. The article concludes: Where will the battle end? “At sea and at court You are in God’s hands”, so Roman Hauswirth.

Although the article in the Austrian journal does not mention it expressly, the earlier right is most likely Community trade mark No 1 698 855. At least this was the earlier right invoked in the previous Austrian case 4Ob239/04g, 30 November 2004 (see".


The IPKat brings news of a trio of incredulity-causing copyright stories:

* Information Week reports that Google took down a stylised logo which it posted to celebrate the birthday of artist Joan Miro after the Miro family objected. They claimed that the logo, which was styled after Miro, but did not directly take any of his work, infringed their copyright and moral rights. Google expressed disappointment, but took the logo down.

The IPKat says that this event touches on the tricky subject of where style and ideas stop and expression begins. He can understand why the Miro family might want to retain control, but he notes that one moral right protects the artist’s reputation. The family’s reaction doesn’t seem to have done their reputation much good.

* P2P asks whether the ‘the Royal Household, the British government, it's territories, or whoever arranged the celebrations’ of the Queen’s 80th birthday sought permission from AOL/TimeWarner for ‘Happy Birthday to You’ to be played, and if so, whether royalities were played.

The IPKat suspects that the piece is somewhat tongue in cheek, but it puts the IPKat in mind of Flanders and Swann’s account of the history of Greensleeves, where ‘the royalties go to royalty’.

* The Inquirer reports that RIAA have sued a family without a computer for filesharing. If this is correct, the IPKat is speechless.


Tomorrow (Monday), Elizabeth Townsend Gard (Leverhume Trust Visiting Research Fellow, LSE) will be speaking on ‘The Unpublished Public Domain: The International Implications of Recent US Copyright Law' at Queen Mary IPRI at 12.30pm.

All are welcome and it's not too late to say that you're coming - just email Ilanah.

Saturday, 22 April 2006


Word of Mouth

On Friday IPKat co-blogmeister Jeremy was briefly interviewed by Michael Rosen of the BBC, which is planning to broadcast a programme on trade marks in its "Word of Mouth" series. Jeremy has not heard most of the other contributions to the show, but suspects that it might be quite critical of the trade mark system (there's an interview with US Authors Guild's Paul Aiken about the Al Franken 'Fair and Balanced' case).

Left: poet, interviewer and word-enthusiast Michael Rosen

Jeremy's sticking up for trade marks, saying that they add to our vocabulary and are a generally very good thing. The chances are that his total contribution won't add up to more than about 15 seconds, but the rest of the programme might be fun to listen to.

The show lasts half an hour and it's going on air twice: Tuesday 25 April at 4pm and Sunday 30 April at 8.30pm.

Full text of Fox v Franken here
Authors Guild position on how the new US trade mark dilution law will kill free speech here

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