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).

Friday, 30 November 2012

Apple and HP: How Much Does the Brand Matter?

How much is a brand worth to a multinational hi-tech company? In particular, can a noteworthy brand be of material value to a company, especially as it seeks to remake itself in the marketplace? Surveys indicate that businesses in the aggregate rank trademarks as the most important form of IP protection (see "Business Use of Intellectual Property Protection Documented in NSF Survey", by John E. Jankowski here. Presumably the thinking is that, at the end of day, it is the purchaser's affinity for a company's name and brand that ultimately accounts for the purchaser's repeated custom.

But how far can a business expect its name and brand to drive business in its direction rather than to a competitor? There is no better way to explore the question than to consider the brand position of two hi-tech giant s-- Apple and Hewlett Packard (or, as it is more commonly called and branded -- HP).

The Apple success story is well known to all. From meteoric success in the 1980s to a near death experience in the 1990s to unprecedented success since 2000 (excuse this Kat for a moment as he finishes synchronizing his iPod Nano), making it, by some metrics, the most valuable company in the world. Keeping its product lines few and not straying much beyond the consumer electronic space, the mark and brand have come to embody a unique product ecology (indeed this Kat wonders whether the word "ecology" was much used in the hi-tech world before Apple's success). If there is a current world-champion brand, then Apple is most certainly it. As one of the young kittens in this Kat's office lair put it, "Apple is a cult".

But how far can the brand-driven Apple cult go? There are two major aspects to this question. The first addresses the issue of whether the brand will continue to give the company a competitive advantage in its two current major product spaces-- the iPhone and iPad. Will consumers continue to prefer the Apple products, even if he has to pay a premium and even if the features of each new model are more incremental than revolutionary, just to so that he can say that he owns an Apple-brand product? (For the record, this Kat owns a Galaxy smartphone and he has no tablet.)

Much of the business press seems to think so, appearing to reflect the view that the Apple brand remains all-conquering. But this Kat heard this week a sobering word of caution expressed by Professor Clayton Christensen of the Harvard Business School and the author of the iconic book -- The Innovator's Dilemma, here. The thrust of the book is describing the dynamic by which the best companies often ultimately decline, having failed to appreciate the challenge of a disruptive technology posed by a derided down-scale competitor. For Christensen, Android-powered devices are more of a threat to Apple in this regard than may be appreciated. In such a situation, the mighty Apple brand will be of little value. (This Kat proudly owned a Sony Walkman 30 years ago; he owns no Sony product today.)

The second aspect addresses the question of what happens when and if the company moves a bit more further afield in its product line. There is frequent talk about the company coming out with an "Apple tv". Should this occur, how much of the success, should the product flourish, be attributed to the strength of the Apple brand? Does the mere anticipation of a new Apple tv product raise the bar on customer expectations, or will the strength of the brand allow the company a bit a slack on the extent to which the tv will have to contain feature of world-beating new functionality?

The HP story is sadly the mirror opposite of Apple's tale of success. Since Hewlett and Packard made their first development in a Palo Alto garage in the 1930s, the company has succeeded in remaking itself and product line several times here. The sine qua non of the HP brand was technological excellence and the brand came to be associated with world-class technology, especially in the enterprise, as opposed to the consumer, area. But over the last decade or so, the company has taken numerous mis-steps that have ravaged the value of the HP brand. The company acquired the computer company Compaq and thereby entered the home computer market (this Kat owns an HP desktop computer.) But that market is shrinking. The company has a significant position in the printer market, but that is a highly competitive area. Moreover, the success of the company in printers is not like Apple in smartphones -- HP is not a cult. There have been four CEOs of the company since 2000 and the company's commitment to R&D (being the historical heart of the company) was severely compromised for a number of years. The company has increasingly tried to buy its way to new technologies. Other examples can be given, but the take-away is that HP brand seems to have significantly lost its lustre. The HP brand is respected at best, but it is not feared. This is especially crucial when one considers the challenge before the company. The decision is not whether or when to come up with a new digital tv to be added to an existing product line, as with Apple. Rather, the question is exactly what value and product propositions the company stands for going forward.

Talk is heard about HP migrating into services and software (like IBM in the 1990s). Assuming that this is viable, will the value of the HP brand contribute much to the company's ultimate success in this area? The sense of this Kat is that, at the most, the strength of the brand will give the company a generous hearing with prospective customers, but no one will sign up simply because these are new HP products. This Kat wishes HP well (in part because he grew up with the brand as such an icon of technological prowess). But its future, and the future of its brand, is far from assured.

Thursday, 29 November 2012

Bye-bye Verica, hello the VeriKat?

Verica Trstenjak
Yea, Verica. A discreet little announcement from Curia yesterday documents a further stage in the unfolding story of the judicial re-writing of European Union intellectual property law.  It reads as follows:
Entry into office of a new Advocate General to the Court of Justice   
Formal sitting of 28 November 2012

By decision of 25 April 2012, the Representatives of the Governments of the Member States appointed as Advocate General to the Court of Justice, for the period from 7 October 2012 to 6 October 2018, Mr Nils Wahl, Judge at the General Court since 7 October 2006, replacing Mrs Verica Trstenjak.

A formal sitting of the Court of Justice was held today on the occasion of the departure from office of Verica Trstenjak and the entry into office of Nils Wahl.
Apart from the notable fact that, unlike many [don't you mean "most", asks Merpel] judgments of the Court of Justice, this statement is available in all 23 of the official languages of the Court, it marks the end of a fascinating era in European IP law, particularly the law of copyright.

Many readers may not be familiar with the name of Verica Trstenjak at all. Others may have seen that exciting surname but, like many a Kat, be quite at a loss as to how to pronounce it properly.  Yet the lady in question has been the Advocate General at the heart of some of the most interesting IP rulings of the Court of Justice in recent times. Off the top of his head, this Kat recalls these cases:
Case C-467/08 Padawan (non-discriminatory 'fair compensation' through private recording levies);

Case C‑569/08 Internetportal und Marketing GmbH v Richard Schlicht (abusive .eu domain name registration);

Case C‑20/05 Pubblico Ministero v Karl Josef Wilhelm Schwibbert (copyright royalty collection, affixing of marks and technical standards);

Case C-376/22 Pie Optiek v Bureau Gevers, European Registry for Internet Domains (camouflaging of a contract for services as a trade mark licence);

Case C‑482/09 Budějovický Budvar, národní podnik v Anheuser-Busch, Inc. (trade mark law: dirty tricks and acquiescence in honest use);

Case C-162/10 Phonographic Performance (Ireland) Ltd v Ireland and Others (communication of a work to the public, via a hotel bedroom)

Case C‑145/10 Eva-Maria Painer v Standard VerlagsGmbH, Axel Springer AG, Süddeutsche Zeitung GmbH, SPIEGEL-Verlag Rudolf AUGSTEIN GmbH & Co KG and Verlag M. DuMont Schauberg Expedition der Kölnischen Zeitung GmbH & Co KG. (copyright in portrait photographs)

Case T- 336/03 Les Editions Albert René v OHIM, Orange A/S. (would anyone really think MOBILIX was anything to do with OBELIX?);

Case C-5/08 Infopaq International A/S v Danske Dagblades Forening (establishing a new pan-European norm for determining the protectability of a work, free from the shackles of the Berne Convention).
Nils desperandum ...
What will Verica do next?  The IPKat wishes her well and thanks her for giving him so much to blog about.  There is currently no truth in the rumour that, exchanging judicial robes for the trappings of real power and authority, Verica T is to join this team as the VeriKat [though she's most welcome to do so ...]. Merpel wonders whether she might take up a position with an IP practice, which will give her the chance to do what the rest of us have been doing for a long time -- working out how to live with CJEU decisions in the real world.

Meanwhile, the Kats are pondering on the move of Nils Wahl into the AG's hot seat.  You can find his bio-notes here if you scroll down far enough: they don't contain the magic words "intellectual property" but they do feature the "C" word [that's "competition", if you were wondering]. Information from readers is welcome.

Tailpiece: the IPKat was wondering what, if the rules of Scrabble permitted the use of surnames, would be the highest score that one could obtain for deploying the word "trstenjak".

Wednesday, 28 November 2012

Wednesday whimsies

On the tiles.  News has reached the IPKat's ears that that mighty and multitudinously litigious Mattel, owners of the SCRABBLE trade mark, have had a dramatic reverse with regard to its three-dimensional Scrabble tile UK trade mark registration. This occurred earlier today in the Chancery Division, England and Wales, where Mr Justice Arnold gave his ruling in JW Spear & Sons Ltd & Another v Zynga, Inc [2012] EWHC 3345 (Ch).  Mattel maintained that Zynga infringed four of its trade marks, of which the Scrabble tile (right) was one.  The verbal description of the mark states:

"The mark consists of a three dimensional ivory-coloured tile on the top surface of which is shown a letter of the Roman alphabet and a number in the range of 1 to 10".
Zynga counterclaimed for the invalidity of the tile mark on the basis that it did not comply with the basic criteria of registrability under Article 2 of the Trade Mark Directive.  Zynga daringly opted to apply for summary judgment in this part of their counterclaim -- and got it.  In a judgment of only 50 paragraphs, the learned judge quite demolished the mark, concluding:
"...the Tile Mark covers an infinite number of permutations of different sizes, positions and combinations of letter and number on a tile. Furthermore, it does not specify the size of the tile. Nor is the colour precisely specified. In short, it covers a multitude of different appearances of tile. It thus amounts to an attempt to claim a perpetual monopoly on all conceivable ivory-coloured tile shapes which bear any letter and number combination on the top surface. In my view that is a mere property of the goods and not a sign. To uphold the registration would allow Mattel to obtain an unfair competitive advantage".
This Kat has not yet had time to peruse the judgment closely; he or one of the other Kats may yet return to it -- but he just about has has time to send a katpat to his friend Paul Stevens at Olswang LLP (who appeared for Zynga) for alerting him to this decision.

A vote for IP Draughts
is a vote for Mr Pettifog ...
Around the weblogs. One day someone should write a doctoral thesis on the character and quality of that elusive but all-important character, the "informed user" in European design law. When that day comes, copious reference will no doubt be made to the Class 99 weblog, which has chronicled and commented on numerous "informed user" decisions -- the most recent of which, in Louver-Lite v Harris Parts, you can read here. Talking of character and quality, the IP Draughts weblog is making the most of its inclusion in the American Bar Association's Blawg 100: if you value well-informed pedantry as much as this Kat does, be sure to give it your unswerving, unconditional support.  IP tax folk can ruminate on not one but two posts in IP Finance on the recent UK Iliffe ruling on the failure of a tax scheme based on a classic no-no: the assignment in gross of an unregistered trade mark (the case itself is covered here, the obiter tax nuances, brilliantly explained by Anne Fairpo, here). Finally, Patricia Covarrubia (IP Tango) reports on a novel development in Brazil: the grant of GI protection to a service, Porto Digital, based in the lovely city of Recife.

But the Rottweiler
sometimes lets go ...
Vice-President of the European Commission Neelie Kroes, whose relationship to intellectual property might be likened [a cynic might say,. notes Merpel] to that of a dog reluctant to part with a bone even when there's little sign of meat remaining on it, has recently given a speech in the Culture Committee of the European Parliament (Brussels) in which she sought the views of members on three particular issues:
(i) how embracing the internet can help the creative sector to flourish;
(ii) how we are media freedom and pluralism in and outside the EU;
(iii)  Third, how we need strong digital infrastructure and frameworks for all of this to happen.
You can find her speech in full here, thanks to the IPKat's friend Magali Delhaye.  Merpel wonders whether "the creative sector" means, as she hopes it does, "people who create work which is blessed with copyright protection so that they can feel confident in developing and commercialising it", rather than "people who would be really good at creating profits if it wasn't for everybody else's copyright getting in the way"

Google opposes German law on Google News (and similar services)

As reported by the Financial Times, yesterday Google launched a public campaign called Defend Your Net.

This is an attempt to stop Germany passing legislation that would allow publishers to charge internet search engines for displaying links to newspaper articles on services like Google News (see earlier 1709 Blog report here). 

The Bundestag is supposed to discuss what has come to be known as the Lex Google or Google Tax tomorrow.
The draft legislation is backed by Chancellor Angela Merkel's ruling coalition of Christian Democrats and Free Democrats, and is intended to recoup some of the revenues traditional publishers have lost to the web. The German association of newspaper publishers says that newspaper revenues fell 20% to €11bn per year between 2000 and 2009 as readers and advertisers migrated to the internet. In 2011 the decline in advertising revenues (-1.2 percent) was however considerably smaller than in 2009 (-15.9 percent) (some additional data can be found here).
Embarrassed Oscar caught in one of those
rare moments not spent reading
financial news online
If passed (this should happen sometime next summer), the bill would introduce an ancillary right for press publishers. This would result in search engines having to seek publishers' permission for displaying links and snippets and also pay a licence fee for their use.
As explained by the Daily Business Post, the proposed piece of legislation would give publishers the exclusive right to make commercial uses of their journalistic contents in the year following their publication. 
Google's Defend Your Net campaign contains also a page dedicated to 10 facts about intellectual property. Among the other things, Google points out that publishers can already decide whether they want their pages be found through Search. In addition, not only is the Google News service completely free of advertising, but it directs as many as 45% of a German news website's readers via
There were times when news
services clearly involved acts
of communication to the public
Overall such a law, claims Google, would damage the German economy, threaten the diversity of information, result in massive legal uncertainty, set back innovative media and copyright and cause a market economy paradox. 
In the meanwhile, Mozilla has joined Google in its battle against the Lex Google. In a blog post published earlier today, Mozilla has made it clear that
[the proposed legislation] may be bad for users and the web. If snippets and headlines require licence fees, the ability to locate information may be curtailed as search engines could (and likely will) simply remove the publishers from their index - an approach Google has already taken in Belgium. If this happens, locating the news becomes more difficult. Imposition of licence fees in this context may also reduce competition by making it more difficult for new entrants who cannot pay such fees, and unintentionally favouring well-funded players who can pay.
We’ll see what the future holds for the German Lex Google. In any case, it is apparent that, should the bill be approved in the end, it would set a strong precedent which is likely to induce other European countries (eg France: see here and here) to imitate Germany and ask Google to pay for displaying links to and snippets of newspaper articles.
This Kat reckons that many interests are at stake here. However, she wonders whether some guidance on the actual legitimacy of services like Google News may come from the Court of Justice of the European Union, which has just been asked to consider whether linking may be tantamount to an act of communication, as per Article 3(1) of the InfoSoc Directive.

Tuesday, 27 November 2012

Brief from the AdvoKat: Di-potassium Another Day - English High Court to hear foreign patent claims

The AdvoKat
This AdvoKat likes firsts. As a kitten, it was first in the National Cat Show (Best CopyKat). It got a first class degree in Abyssinian studies. It was the first Siamese to be called to the Bar. And now, here is a legal first, straight from the pen (well, keyboard) of our Mr Justice Arnold in joined cases Actavis Group hf v Eli Lilly & Company (USA)/Medis ehf v Eli Lilly & Company (USA) [2012] EWHC 3316 (Pat) on whether the English Courts have jurisdiction over issues of infringement of foreign-designated patents. For those of you who do not wish to read further, the answer is a resounding “Yes”.

The patent in suit, EP1313508, has a swiss-form claim to the use of pemetrexed disodium in the manufacture of a medicament for treatment of cancer. Actavis have not proposed to launch pemetrexed disodium, but pemetrexed dipotassium – a different salt. Actavis brought a claim against Lilly USA for a declaration of non-infringement with respect not only to the UK designation of the 508 patent but also (here is the twist) with respect to the French, German, Italian and Spanish designations. Lilly USA challenged the English Court’s jurisdiction over the foreign designations.

The challenge resolved itself into two major issues: did the English Court have personal jurisdiction over Lilly USA, and were the English Courts the appropriate forum to hear the claims (taking into account their subject matter)?

Personal jurisdiction over Lilly USA

Trying to ensure that the claim had been properly served, Actavis had in fact started two separate but otherwise identical claims by different entities in the Actavis group, and served both claims twice: first, on Lilly’s solicitors, and secondly, directly on Lilly’s European representative before the EPO, employed by Lilly UK.

To complicate matters further, the first claimant was the Actavis parent company, whereas Actavis’s lawyers had initially written to Lilly’s solicitors stating that they represented a subsidiary, Actavis Group PTC ehf, and its “relevant national subsidiaries”. It was accepted that “relevant national subsidiaries” meant the national subsidiaries relevant to the designations of the '508 patent at issue however they were, as far as was publicly known, not the subsidiaries of Actavis Group PTC ehf, but of the parent.

The Judge found that the acceptance of service by Lilly’s solicitors need not be construed strictly. It did not really matter for the purposes of this claim which company in the Actavis group was claimant. There was unlikely to be disclosure in the case, nor did Lilly seek security for costs, and the precise identity of the person proposing to do the acts was irrelevant for a claim for a declaration of non-infringement. Therefore the first claim was correctly served and Lilly USA had submitted to the jurisdiction of the English Courts.

As Mr Justice Arnold held that Lilly USA had submitted to the jurisdiction, it was not open to Lilly to challenge jurisdiction on the ground of forum non conveniens (about which, see below).

Place of business / carries on activities

Even so, in case he was wrong about the service of the claim and submission to the jurisdiction by Lilly USA, Mr Justice Arnold went onto consider whether Lilly USA had a place of business or carried on activities in England & Wales. If so, it would be possible to found jurisdiction on this ground.

On the facts, it was not disputed that Lilly UK has a patent department running European patent operations, which acted on behalf of Lilly USA and other companies in the Lilly group. In particular, the head of that department, Dr Burnside, was Lilly USA’s representative before the EPO and had been granted authority to carry out certain patent prosecution matters (in particular, the surrender of patents and bringing of appeals) without being required to obtain the authorisation of his seniors back in the USA.

The Judge referred to the Court of Appeal decision in Adams v Cape Industries [1990] 1 Ch 433, which set out the major factors to be considered, and also pointed out the “principal test” as to whether a company carried on activities in England & Wales was whether that company’s representative located in England & Wales had authority to contract on behalf of the company. The Judge found that Dr Burnside did have authority to enter into contracts on Lilly’s behalf. The Judge rejected the contention that Dr Burnside’s role was, in effect, no different to that of an external firm of patent attorneys, particularly as Dr Burnside had authority to surrender patents, which would not be within the scope of the authority given to an external firm. Further, the Judge found that patents were among the most important of Lilly’s assets.

The Judge therefore found that, by virtue of Lilly’s European patent department dealing with Lilly USA’s patents from Lilly UK’s site, and particularly the role of Lilly’s representative before the EPO, Lilly USA has a place of business in England for the purposes English jurisdictional rules. Having been properly served under the provisions of this rule, the Judge found that Lilly USA was subject to the personal jurisdiction of the English Court.

Was it appropriate to hear the claims to the foreign designations in England?

Welcome to England - Land of justiciable foreign
patent claims...

To avoid the consternation of the AdvoKat's overseas Katfriends, it is worth saying at the outset that there was no question that claims for declarations of non-infringement of the French, German, Italian and Spanish designations could not be heard in the Courts of their respective jurisdictions. Indeed the English Courts had for a long time expressed some discomfort with exercising jurisdiction over questions of infringement of foreign patents, for example, per Aldous J in Plastus Kreativ v Minnesota Mining and Manufacturing Co. [1995] RPC 438 at 447:

“For myself I would not welcome the task of having to decide whether a person had infringed a foreign patent. Although patent actions appear on their face to be disputes between two parties, in reality they also concern the public. A finding of infringement is a finding that a monopoly granted by the state is to be enforced. The result is invariably that the public have to pay higher prices than if the monopoly did not exist. If that be the proper result, then that result should, I believe, come about from a decision of a court situated in the state where the public have to pay the higher prices. One only has to imagine a decision of this court that the German public should pay to a British company substantial sums of money to realise the difficulties that might arise. I believe that, if the local courts are responsible for enforcing and deciding questions of validity and infringement, the conclusions reached are likely to command the respect of the public. Also a conclusion that a patent is infringed or not infringed involves in this country a decision on validity as in this country no man can infringe an invalid patent. In the present case the plaintiffs admit the validity of the patent and therefore there is no dispute upon the matter. However, it will be implicit in the judgment of this court that there has been infringement, and that, between the parties, the patent is valid. Thus, I believe it is at least convenient that infringement, like validity, is decided in the state in which it arises.”
But times have changed in English Law, not least with the decision of the Supreme Court in Lucasfilm v Ainsworth [2011] UKSC 39, where the Court found that claims for infringement of foreign copyright were justiciable and suggested that this should be equally applicable to other foreign IP rights at §108:

“There is no doubt that the modern trend is in favour of the enforcement of foreign intellectual property rights. First, article 22(4) of the Brussels I Regulation only assigns exclusive jurisdiction to the country where the right originates in cases which are concerned with registration or validity of rights which are ‘required to be deposited or registered’ and does not apply to infringement actions in which there is no issue as to validity. This can rarely, if ever, apply to copyright. Second, the Rome II Regulation also plainly envisages the litigation of foreign intellectual property rights and, third, the professional and academic bodies which have considered the issue, the American Law Institute and the Max Planck Institute, clearly favour them, at any rate where issues of validity are not engaged.”

Often confused for Brussels I, this one
Brussels sprout spends his days sitting
in court rooms adding little value to 
the proceedings...
Mr Justice Arnold noted that, as long as validity of the foreign patents was not put in issue, Lilly accepted that the effect of the Supreme Court decision in Lucasfilm v Ainsworth was that the Moçambique rule did not apply to questions of patent infringement. Further, Actavis undertook not to challenge validity, or contend that the foreign designations were invalid, either by claim or defence to any counterclaim for infringement. Therefore, the claims over the French, German, Italian and Spanish patents were justiciable.

Even so, Lilly argued that the English Court should stay the proceedings on the grounds of forum non conveniens and raised questions of justiciability in that context. As all the fine Private International Law practitioners reading this post will know, forum non conveniens requires the Court’s consideration of the test set out by Lord Goff of Chieveley in Spiliada Maritime Corp v Cansulex Ltd [1987] AC 460. The key part of the test is whether there is some other available forum, having competent jurisdiction, which is the appropriate forum of the trial of the action i.e. in which the case may be tried more suitably for the interests of all the parties and the ends of justice.

Mr Justice Arnold found that the case should not be stayed for forum non conveniens for the following reasons:

Forum non conveniens provides a flexible test and is not a blanket subject matter limitation of jurisdiction;

• The considerations on justiciability set out by the Supreme Court in Lucasfilm are equally relevant to forum non conveniens and there are no real differences between patents and copyrights for the purposes of justiciability;

• Even if, as Lilly submitted, the prior art and questions of validity are required to be taken into account when determining the scope of the claims under the doctrine of equivalents in France at the very least, and therefore Article 22(4) of the Brussels Regulation should take effect, there was not the evidential foundation to show that this made a real difference to whether the English Court is the appropriate forum;

• Although the law on infringement is not, strictly-speaking, harmonised across Europe as the Community Patent Convention never came into force, Lilly did not adduce evidence to show differences between the infringement provisions between the Member States material to the claims at issue;

[Merpel wonders whether this means that a defendant should engage in the merits of the claim to prove its point? Would that mean that the defendant had submitted to the jurisdiction of the Court?]

• The issue was whether the English Court should hear the claims over the four foreign designations together with the claim over the UK designation rather than all being heard separately, not whether all five claims should be heard elsewhere, and this militated strongly against a stay;

• There would only need to be one team of lawyers, rather than five teams, although Lilly would not be obliged to consent to English law being the applicable law of the foreign patents for the purposes of the proceedings;

["But what about the teams of foreign advisors opining as to the state of the foreign law?", meows Merpel]
• The speed of proceedings in the various Member States was not relevant unless it was in the interests of justice to go to the fastest Courts;

• This ‘consolidated’ approach would reduce the risk of inconsistent judgments.

[Merpel questions whether this sits comfortably with the decision of the CJEU in Roche v Primus C-539/03 where the Court said that there was no risk of irreconcilable judgments between different designations of the same European Patent because they are fundamentally different rights.]
And there you have it – it is now open season on claims for infringement of foreign IP rights in the English Courts although a little fluffy kitten told us that Lilly have permission to appeal, so watch this space.

If you need a more, shall we say, “English” interpretation of patent claims, without a doctrine of equivalents, perhaps you should head towards London, although in due course Lilly will no doubt be asking the English Court to adopt a more Teutonic approach.

This AdvoKat wonders if Mr Justice Arnold has put the Kat amongst the pigeons with this decision. Is this start of a brave new alternative to the UPC? Is this the start of a new round of forum shopping across Europe?

Mr Justice Arnold
While this might be good news in support of the gradual unification of the approach across Europe, especially of claim construction, will our continental cousins be feeling rather left out, or even snubbed by the English Court? How time-consuming and costly are actions for infringement (or rather declaratory relief in this case) where the Judge sitting in Paris, Dusseldorf, Milan or Madrid knows his own country’s approach to determining the scope of the claims inside out, and no witnesses as to that particular law are required? Why should the English Court cast aside comity considerations, when the Courts of each member state would be perfectly capable at determining what pharmaceuticals can and cannot be released onto their respective national markets?

Clearly the facts of this case are a little unusual, in that there will be no challenge to the validity of the patent (Actavis is a party to the EPO opposition to it), and Actavis merely wants declarations of non-infringement. If the alleged infringer is happy to fight its patent wars without national validity challenges, then it appears now that it should come to London if it wants to consolidate. However, it is far from clear whether, for example, the French Courts would decide the jurisdiction case the same way (see the decision of the Paris First Instance Court in Dijkstra v Saier dated 5 November 2003). Is therefore the most cost-effective route to start an opposition before the EPO, and challenge all the designations in one action in London?

Perhaps, ponders this Kat, we could also start to dampen the effect of Article 22(4) and GAT v LuK by developing bilateral recognition of judgments on validity either between parties or at a national level. Will this be the smoothest path to achieve true harmonisation of patent litigation (and avoid the need to trouble the CJEU) without bypassing our fellow member states?

Collective agreements relating to employee inventions: can you help?

The Hunter ...
Not everyone in the world can boast that they are the Hunter Simpson Professor of Tech Law, not even Seattle philanthropist W. Hunter Simpson himself since, sadly, he died in 2006. However, his memory is perpetuated by the work of the professor who bears his name -- the IPKat's friend Toshiko Takenaka of CASRIP, an integral part of the Technology & Art Group, University of Washington School of Law.  Toshiko, who is currently researching into employee invention laws, notes that the UK's Patents Act 1977, section 40, provides that an employee is entitled to receive compensation from his employer in the case of an invention made in the course of employment, or which falls outside the scope of his employment duties but is assigned or exclusively licensed to the employer, where the invention turns out to have been a particularly valuable one. However, under section 40(3), this does not apply
" ...  to the invention of an employee where a relevant collective agreement provides for the payment of compensation in respect of inventions of the same description as that invention to employees of the same description as that employee. ..."
By section 40(6) of the same Act
"“relevant collective agreement” means a collective agreement within the meaning of the Trade Union and Labour Relations (Consolidation) Act 1992, made by or on behalf of a trade union to which the employee belongs, and by the employer or an employers' association to which the employer belongs which is in force at the time of the making of the invention".
Only in it for
the d'oh ...?
Toshiko is desperately keen to see some collective agreements that provide for the payment of compensation by employers to employee inventors.  IPKat team blogger Jeremy has never, in all his many years, seen one -- and he would not be at all surprised if no such collective agreements were ever concluded, given the antipathy or suspicion which many trade unions had in the previous century towards such schemes. In the view of many contemporary trades unionists of that time, the rewarding of the inventor alone, for the success of an invention which in many cases was as much the result of the efforts and collaboration of non-inventive employees too, was not only an inequitable division of the fruits of invention but could have a divisive effect within the workplace.

If any readers have ever come across a collective agreement of the kind mentioned here, can they please let us all know?

People with whom W. Hunter Simpson should not be confused:

Monday, 26 November 2012

PAGINE GIALLE: The relevant public's knowledge of languages

Last week the General Court of the Court of Justice of the European Union (CJEU) delivered a troika of trade mark judgments, but this Kat thought she would draw attention to one in particular, which generally led her to ask just how bilingual, or even multilingual, the institutions of the EU (well, the General Court and European Commission) consider the relevant EU public to be? The answer is...not so much.

The issue in Case T-589/11 Phonebook of the World v OHIM, delivered on 20th November, was whether the relevant EU public, outside Italy, would make a connection between the Italian expression  ‘pagine gialle’ and equivalent expressions in other languages of the EU. The intervener, Seat Pagine Gialle SpA, was granted registration of the word sign PAGINE GIALLE in classes 16 ('printed matter of all kinds, including books, magazines, yearbooks, catalogues, telephone directories') and 35 ('advertising and business services') on the ground that the sign had become distinctive through use in Italy for the purposes of article 7(3), Regulation (EC) No 207/2009. Phonebook of the World did not dispute that the mark had become distinctive through use in Italy, but sought a declaration of invalidity on the ground that the word sign PAGINE GIALLE is a translation of the words 'yellow pages', commonly used to designate business telephone directories throughout the EU. As a result, Phonebook submitted, the mark was registered in in breach of article 7(1)(c) and (d) as the mark lacked distinctive character, was descriptive and had become customary throughout the EU, with the exception of Italy. 

Action dismissed. The Court found:
  • The only specific evidence adduced by Phonebook to show the relevant public's knowledge of Italian (a table indicating that over 200,000 French pupils student Italian each year between 1997 and 2007) was inadmissible on the ground that it was produced for the first time before the court. Further, the Board of Appeal's reliance on an undisputed survey (Eurobarometer), conducted by the European Commission in 2006, in no way identified Italian as one of the second languages generally known by the relevant European public. As such, the Board of Appeal was fully entitled to conclude 'that Italian is not one of the foreign languages with which almost all the relevant public would be wholly familiar' (at [36]);
  • In WEISSE SEITEN, the General Court held that the German expression 'weisse Seiten' ('white pages') could not be registered for telephone directories for private individuals because it had become customary as a generic term for those directories. However, that case was distinguished on the grounds that the expressions under dispute in the two cases belonged to two different languages, the relevant public was different and, the proprietor of the mark WEISSE SEITEN had not claimed that the sign had become distinctive through use. As such, the considerations taken into account could not form the basis of the decision in the present case;   
  • The numerous references made by the applicant to official texts, historical texts and to websites were irrelevant as they referred to the use of the expression 'yellow pages' in the official language of the States concerned and as such gave no indication as to the understanding of those terms in other languages.
Cat language
Therefore, the Board of Appeal did not err in finding that the relevant public was not able to understand the Italian expression 'pagine gialle' as a description or a customary name of the goods and services concerned. On the contrary, the relevant public was likely to see it as a fanciful expression with a distinctive character [like a sugar plum fairy?].

This Kat wasn't too sure about the evidence led in this case. Surely within the context of globalisation and the world wide web, the evidential value of a survey taken six years ago, with data dating back seven years, has diminished to a certain extent?  There must have been an increase in the instances of multilingualism in the EU? Apparently not. The Commission's most recent Eurobarometer 'Europeans and their Languages', published in June this year, based on results compiled in Spring, appears to show that although multilingualism in itself is seen in a positive light by Europeans, the actually instances of its occurrence have barely increased in the last six years. She suspects that Italian remains in 6th or 7th position of languages most spoken or learnt because the non-Italian speaking EU public waiting at Italian train stations like to image public service announcers making declarations of love rather than lost property or delay broadcasts. 

Steven Pinker on language and thought here.

Monday miscellany

Around the weblogs.  The IPKat sends his congratulations to the 1709 Blog for hitting the 1,600 email subscriber mark -- and he salutes Ben, Eleonora, Iona and the rest of the crew for their efforts in presenting copyright issues in such a lively and attractive manner.  Courtesy of the IP Court Users' Committee, PatLit announces a new practice for the designation of patent cases in England and Wales, with effect from 1 January 2013 (even if that date is a public holiday).  Meanwhile, over on Afro-IP, Kingsley Egbuonu's return to Gabon has yielded some cheerful news, for a change, as that country's online scene is definitely brightening up.

"The rise of a new IP superpower". No, this isn't an allusion to the Unified Patent Court -- it's nothing more sinister than the title of The Intellectual Property Lawyers Organisation (TIPLO) Christmas event, which takes place on the agreeably early date of Monday 10 December. As this elite organisation of IP diners puts it, if you're sick of ‘turkey’ this Christmas, try China instead: the evening is dedicated to a debate on the possible rise of China as an IP superpower.  We are all familiar with China as a source of IP infringing goods.   But are we as aware as we should be of the dramatic change in focus in this country towards creating its own IP?  Join speakers Lise Bertelsen (Executive Director, China-Britain Business Council) and Luke Minford (partner, Rouse), chaired by Ian Harvey (former CEO of BTG and quite a JGB when you get to know him ...  TIPLO's team of expert chefs is already undergoing endurance training for the marathon meal ahead.  For further details, click here.

If a bird in the hand is worth two in the bush, what's a fish in the hand worth? Annie Berman, of Fish in the Hand Productions, has written to the IPKat to tell him this: 

"My Creative Commons licensed documentary film explores pop-iconography, through the images and representations of Elvis Presley, Pope John Paul II, and Princess Diana.  12 years in the making, the film reveals the conflicting relationship between art, religion, expression, and the law.  it is now nearing completion, but needs to raise the necessary finishing funds. We have just a few short days to do so on Kickstarter. Please check out the video and campaign for more information.  
Participants in the film include Larry Lessig, Mark Hosler of Negativland, ElVez, representatives from the three estates, artists, fans, the media, and Sid Shaw - the man who contested the Elvis Estate's trade mark application for Elvis in the UK, ..and won! 
I think the subject is extremely timely especially in lieu of the new Guernsey legislation - a scheme to register image rights internationally which will take effect on 3 December.

From the smile, this Kat
guesses that this photo
was taken before the
big event ...
The London Marathon is coming up on 21 April 2013. Disappointingly, this is nothing to do with IP litigation at all, but consolation comes in the form of the news that the IPKat's friend, IP enthusiast Bratin Roy, is running in order to raise money for two charities, both of which are close to his heart and both of which desperately need funds to continue their valuable work. If you want to support Bratin's charity work, or even if you are mildly amused at the thought of an IP practitioner having to raise money by running 26+ miles instead of just sending off the occasional invoice or drawing a comfortable paycheck, please give generously.  Donation details are here.

TMView jigsaw almost complete

The completion of the internal market of the European Union moved a step closer last week as Austria and Germany joined TMView. The free-to-access trade marks database hosted at now contains 9.1 million records from 24 EU countries as well as the OHIM and WIPO. The remaining member states, Cyprus, Greece, Ireland and Poland are expected to join on 10 December 2012.

But why stop there? Croatia joins the system on 1 July 2013, Iceland, Macedonia, Montenegro, Serbia and Turkey are official candidate countries, Albania has submitted an application. Bosnia and Herzegovina and Kosovo are potential future candidates. In these challenging times for pan-European relations this Kat believes that any sign of unity should be applauded. TMview is a great example of just  what can be achieved when we all work together.

Is a clickable link a communication to the public? New case referred to the CJEU

There are times when your
communications to the public
may not be the
most agreeable ones
2012 will be most certainly remembered (although possibly together with other things) for being the year when the Court of Justice of the European Union (CJEU) either decided or received quite a few references concerning the notion of communication to the public, as per Article 3(1) of Directive 2001/29/EC (the InfoSoc Directive).

Following the pretty controversial decision in Joined Cases C-403/08 and C-429/08 Murphy in October 2011 (noted here and here), on 15 March last the Court delivered two judgments which attempted to clarify the (still) obscure boundaries of the right in question.
These were Case C-135/10 Del Corso (here) and Case C-162/10 Phonographic Performance (Ireland) (here and here), in which the Court held that, while communications by hotels to hotel bedrooms are public, dentist waiting rooms are not.
No communication to the 
public in dentist waiting 
rooms, said the CJEU
Now the CJEU has two further cases to decide.
The first is Case C-607/11 ITV Broadcasting, a reference from the High Court of Justice (Chancery Division) (noted here and here) seeking clarification, among the other things, as to whether rights owners can prohibit communication to the public of their content via third-party internet stream if that content has previously been authorised for communication via analogue means.
The second is Case C-466/12 Svensson, a reference from the Svea hovrätt (the Svea court of appeal is one of the six appellate courts in the Swedish legal system) asking the CJEU to address the following questions:
  1. If anyone other than the holder of copyright in a certain work supplies a clickable link to the work on his website, does that constitute communication to the public within the meaning of Article 3(1) of Directive 2001/29/EC ...? 
  2. Is the assessment under question 1 affected if the work to which the link refers is on a website on the Internet which can be accessed by anyone without restrictions or if access is restricted in some way?
  3. When making the assessment under question 1, should any distinction be drawn between a case where the work, after the user has clicked on the link, is shown on another website and one where the work, after the user has clicked on the link, is shown in such a way as to give the impression that it is appearing on the same website?
  4. But what about clickable links?
  5. Is it possible for a Member State to give wider protection to authors' exclusive right by enabling 'communication to the public' to cover a greater range of acts than provided for in Article 3(1) of Directive 2001/29/EC ...?
As the case has just been referred, the UK Intellectual Property Office (IPO) is offering those interested the possibility to comment on it by 3 December 2012. If you wish to do so, you can email your thoughts to whether you think that the UK should intervene and some general points about how the questions should be answered.

Merpel thinks that this reference is quite an important one. This is also in light of the pretty heated debates (see herehere, here ...) which have arisen in the UK following the decision of the Court of Appeal in Meltwater (the case is currently pending before the UK Supreme Court, which is expected to hear it sometime in early 2013).
Should any Swedish readers know something more about this case (eg factual background) could let the IPKat know?

Sunday, 25 November 2012

When unitary, unified patent dust settles -- up come the seminars

Glorious ruins? European
patent system 1978 to 2014
Now that the dust is either settling or at least swirling around less thickly on the plans for the European Union's unitary patent and unified patent court, the time is coming when the focus shifts away from lobbying, campaigning and complaining. In their place comes the painstaking analysis of the new reality which, subject to any glitches in the ratification process, may be producing unitary patents by 2014. Rather like shell-shocked inhabitants of a war zone picking through the rubble in search of a few recognisable objects which might be salvaged, Europe's patent owners and practitioners are now beginning to pick through the new legislative framework within which they soon will operate, while rummaging through their stock of acquired experience of the system which is now to be replaced, wondering which advice, which strategies, which tricks of the trade might still come in handy.

Bearing all of this in mind, the IPKat has taken note what seems to be the first event that seeks to advise patent folk how to live with the new system rather than how to stop it in its tracks or change it.  It's a fairly imaginative seminar, organised by his friends at Management Forum who, judging by the company's logo, are no strangers to ancient ruins.  The seminar is boldly entitled "The Unitary Patent and Unified Court: What in-house Counsel needs to know".  Following the theme of the tie-up between JIPLP and GRUR Int (here), this is an Anglo-German cooperative venture, being a double-act between Ulrich Blumenröder (of Grünecker, Kinkeldey, Stockmair & Schwanhäusser, Munich) and  William Cook (Marks & Clerk Solicitors, London).  Apart from providing a more multifaceted view of the subject by offering thoughts emanating from two very different jurisdictions, each with its own rich experience of patents, the harnessing of a German presenter with an English one limits the scope for the sort of sniping comments about things "foreign" that we many of us have come to love but which, as we become more familiar with them, we are probably becoming less willing to pay to hear.

Apart from the predictable coverage of the unitary patent and unified patent court schemes themselves, the presenters will cruise through both infringement and revocation proceedings, offering what the brochure describes as the "presentation of a simple decision" [Merpel thinks you'll only get simple decisions where both parties want them for their own purposes, which may not often be the case] complete with timelines.

But what appeals to this Kat most is the goody pack with which registrants will leave.  According to the organisers this will include
"flowcharts describing the new procedures, and a CD containing a standard Powerpoint presentation which attendees can use to give demonstrations to colleagues when they get back to their offices".
As the organisers admit, this is a somewhat unusual course of action for anyone in their line of business to take.  Are they shooting themselves in the foot, Merpel wonders. or is this a matter of the sensible dissemination of important information?

For the record, this event takes place on Friday 8 March (when this Kat will be in Barcelona: can someone grab a goody pack for him?) at the Rembrandt Hotel, London. You can get more details of this event here; registration happens here. Any queries? Aim them at Josephine Leak by email here

Accounting of Profits with the Court of Appeal: Hollister v Medik Ostomy Part II

Damages, Account of Profits and EU Law

The motto that some infringers
abide by when preparing their
Tring statement
As regards to remedies, the various pieces of trade mark legislation make clear that an action for infringement of a UK or Community registered trade mark provides relief by way of damages or an account of profits. Under UK law, the central purpose of an inquiry as to damages is to restore the claimant to the position he would have been in if the infringement had not been committed. Alternatively, a claimant may seek an account of profits which is an equitable remedy and designed to deprive the infringer of the profits he has made as a result of the infringement. The court has discretion whether or not to award an account of profits. The court may not award an account of profits if the infringer was innocent or the trade mark owner delayed in bringing proceedings. The losses the claimant has suffered by reason of the infringement are not relevant. To determine on which basis - damages or an account - a claimant will proceed, the court will normally order a defendant provide disclosure (usually by way of an Island Records v Tring statement) and will direct the claimant to make his election within a reasonable time.

These principles of damages under national law, recognized the Court of Appeal, had to be compatible with Community law and namely the Enforcement Directive's (Directive 2004/48/EC) Article 13 which deals with the assessment of damages. These provisions set out the various factors that judicial authorities should take into account when awarding damages (which, is interpreted broadly to also include account of profits - see Recital 26). Article 13 has itself been implemented by Regulation 3 of the Intellectual Property (Enforcement) Regulations 2006 which require that when awarding damages all appropriate aspects will be taken into account including any lost profits the claimant has suffered and any unfair profits made by the defendant and other non-economic factors including moral prejudice.

The standard "money shot"
None of these provisions, held the Court of Appeal, are interpreted as meaning that an account of profits is inconsistent with the Regulation or the Enforcement Directive. Further, it is established law that it is for the domestic law of Member States to ensure the effective protection of rights under Community law. Where Community law does not lay down specific sanctions for infringement, such as in the case with trade mark infringement, national authorities are tasked with adopting appropriate measures which must be proportionate but also effective and a sufficient deterrent to ensure that the rights are fully effective (Boehringer II). The CJEU in Boehringer II made clear that the remedy that is provided for when spurious products are put on the market must also be provided for when products are put on the market in breach of one of the BMS conditions, namely Condition 5 -- in both cases the products should not have been put on the market. Being able to claim damages on the same basis is not contrary to the principle of proportionately and it is for the national court to determine the amount of compensation in the light of the circumstances of each case. The Court of Appeal held that the remedy of an account of profits plainly satisfied these principles because that remedy simply deprived the infringer from profits he made from the activity that he should have never engaged in, it does not contain any element of punishment and acts as a deterrent because an infringer knows he cannot profit from his actions. Further, the remedy, being an equitable remedy, is discretionary and not awarded if it is unjust to do so. Medik never argued that it was unjust, indeed it agreed to the consent order directing that the claimant would elect between an inquiry as to damages or an account of profit.

Lord Justice Kitchin explained that he felt reinforced in this conclusion by reference to the German Federal Supreme Court case of Zoladex (Case IZR 87/07) of 29 July 2009. The case concerned similar facts as Hollister. The trade mark owner sought surrender of the defendant's entire profits. The German Federal Supreme Court explained that recovery of the defendant's profits was not contrary to Community law.

The Court of Appeal's Decision

Applying this conclusion to the facts of the appeal, the Court of Appeal held that it was not permissible to embark on the second step of Judge Birss QC's three-step approach - an assessment of the damage caused to the claimants by the infringement and a general inquiry into the proportionality of the remedy by reference to the claimants' state of mind and whether the sales had some impact on the purposes underlying the BMS condition. Assessment of the damage caused to the claimant forms
"no part of an account of profits made by an infringement and the approach adopted by the judge constitute an illegitimate amalgamation of two quite different ways of assessing compensation".
It was also not permissible to embark on the third step which involved the weighting of various factors all of which did not form part of "a conventional account of profits as a matter of domestic law" and in the Court of Appeal's judgment was not required by the decision of the CJEU in Boehringer Ingelheim KG v Swingward Ltd [2007] ETMR 71.

Lord Justice Kitchin telling it like it is on
account of profits
The Court of Appeal further held that the judge was entitled to deduct any direct costs associated with the infringement (i.e. costs that would not have been incurred but for the infringement) but was not allowed to deduct general overhead costs.  Medik had argued, citing Celanese international Corp v BP Chemicals Ltd [1999] RPC 203, that it was entitled to deduct a portion of general overheads - cost of premises and general staff costs. Judge Birss QC agreed with Medik and considered that a proportion of fixed, centrally incurred costs are deductible and, in any event, he was bound by Celanese. The Court of Appeal disagreed, explaining that for overhead costs to be deducted, a defendant must show that the relevant overheads are properly attributable to the infringing activity, otherwise the court would be allowing the defendants to profit from an unlawful activity. A defendant should not be permitted to simply allocate a proportion of its general overheads to an infringing activity. Whether or not an overhead is properly attributable to the infringing activity depends on the facts and circumstances. For example, the Court held:
" may be relevant to consider whether a defendant has surplus capacity, whether the infringing activity was an additional line to an established business and whether the defendant's overheads have been increased as a result of the infringing activity or whether its overheads would have been lower had it not engaged in that activity.

We heard little argument on the question of opportunity costs and they have formed no part of the case advanced by either side so I need express no final conclusion upon them. Nevertheless, I believe that if the defendant's business is not running to capacity, the defendant has not foregone an opportunity to make and sell other non infringing products, and the defendant's general overheads have not been increased by reason of the infringement and would have been incurred in any event, then to allow it to attribute such overheads, or a proportion of them, to the infringements would be to allow it to profit from its unlawful activity. I believe such a result would not be just and would undermine the purpose of the account.

In this case Medik has not attempted to prove its business was running to capacity or that, but for the infringement, it would have sold some other products. Moreover, Medik has not attempted to prove that the relevant general overheads increased as a result of its infringement or that those overheads would have been lower if it had not infringed. In my judgment it follows that the judge fell into error on this issue too. He ought not to have allowed Medik to deduct a proportion of its general overheads without evidence that such overheads were properly attributable to the importation and sale of the infringing products, and that he did not have."
But it was not all bad news for Judge Birss's judgment, concluding their decision, the Court of Appeal did not overturn his finding on the number of infringing products sold.

The AmeriKat has some sympathy for the reasoning of the lower court - why should a party have to compensate a rights holder for an activity that probably didn't cause much (if any) harm besides interference with a "procedural requirement" albeit that it is dressed up as a right?  Kitchin LJ says at paragraph 47 that "it is wrong to characterize the failure to give notice simply as a procedural deficiency" and that the CJEU has explained that repackaging is, in itself, prejudicial to the subject mater of the mark.  But why?  If Condition 5 is the only of the BMS conditions not fulfilled, where is the prejudice?

Nevertheless, no matter how convincing A-G Sharpston's Opinion was in Boehringer II or how innovative Judge Birss's judgment is in this case, the CJEU's dicta is clear on how damages for breach of Condition 5 should be assessed - like that of suprious goods. Faced with such a wall of case law, the Court of Appeal was bound to follow suit.

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