From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Monday, 27 March 2017

Avoiding objections to claiming priority in Mexico: Standarized presentation of priority data

This Kat is always interested in following up on how national IP offices implement practice recommendations. Against this backdrop, Kat friend, Angélica Domínguez, from Dumont Bergman Bider & Co. in Mexico, has reported on an interesting development on the standardized presentation of priority data.

"On March 2011, the WIPO Handbook on Industrial Property Information and Documentation recommended to National and Regional Intellectual Property Offices to standardize the presentation of priority application numbers in order to identify each application received. The recommended standard would make it possible to link patent families in databases and search system and would thus make it easier for users of patent information as well as for Examiners during the examination process.

The recommendation consisted of standardized priority application numbers to be used for filing abroad under the Paris Convention as follows:
"The country code and number of your priority application, to be used for filing abroad under the Paris Convention is XXNNNNNNN”, or

“The organization code and number of your priority application, to be used for filing abroad under the Paris Convention is XXNNNNNNN”, wherein

XX: Two letters country/organization code

NNNNNNN: Serial Number in accordance with the worldwide application and priority format
Until several months ago, the Mexican Patent Office (MPO) had not acted on the WIPO recommendation for patent applications filed under the Paris Convention, with the result that the priority data listed in the national applications were accepted without regard to whether the WIPO recommended standard appeared on each certified copy of priority claimed submitted at the MPO. That meant that no objections or office actions were issued requesting that the priority data should correspond to the WIPO recommended standard.

However, since mid-2016, the MPO has embraced the standard outlined in the WIPO Handbook. As a result, several office actions have been issued requesting amendment of the priority data in accordance with the information disclosed in the priority document.

According to the MPO, the new practice will ensure that priority data contained in patent filings under Paris Convention comply with the WIPO standardization criteria with the resulting benefits as described above. The MPO requires that applications filed in 2016 and thus far in 2017 be amended to follow the WIPO recommended standard and applicants can expect an office action if the priority application number does not follow the standard.

In light of the above, applications filed in Mexico under the Paris Convention should keep these changes by MPO in mind."

No admission after the show has started - transfer of priority right must occur prior to filing of subsequent application (T 577/11)

According to Article 87(1) European Patent Convention, any person who has duly filed, in or for any state party to the Paris Convention or any member of the WTO, an application for a patent or his successor in title, shall enjoy, for the purpose of filing a European patent application in respect of the same invention, a right of priority during a period of twelve months from the date of filing of the first application (emphasis added). The reference to the "successor in title" in Article 87(1) EPC is generally interpreted as requiring a transfer of the right of priority before the filing of the subsequent application (T 205/14, Reason 3.4). 

In T 577/11 of 22 March 2017, Board of Appeal 3.2.05 confirmed this. Transfer of the priority date had undoubtedly taken place in this case, but three days after the filing of the subsequent application. The applicant argued that Article 87(1) EPC did not require that the transfer of the priority right had to occur prior to the filing of the subsequent application. The Board, based on the wording of Article 87(1) EPC and noting that its interpretation was in line with Article 4A(1) Paris Convention and the legislative history of both the relevant provisions of the Paris Convention and the EPC, rejected the appellant’s argument. The transfer had to had taken place by the time the subsequent application was filed. 

The Board notes that German case law considers the date the declaration of priority with the particulars relating to the priority application is filed – which can be done up to 16 months from the earliest priority date claimed (Rule 52(2)), and therefore up to four months after the filing of the subsequent application – as the relevant date (German Federal Patent Court, decision of 15 February 2012, 5 Ni 59/10 (EP), Reasons, point I.2, and decision of 28 October 2010, 11 W (pat) 14/09), Reasons, point II.B.2(a)(cc)). In the case at hand, Rule 52(2) was not applicable because the application that led to the patent was a PCT application. Under Rule 4.10(a) PCT, the declaration was to be made on filing the subsequent application, which it was. Nonetheless, the Board indicates that even if the present application had not been a PCT application, it did not consider the German approach convincing, as the filing of the declaration of priority was a “mere formality” that did not change the relevant date, which was the filing date of the application.

The decision does not come as a great surprise. There has long been a consensus that the transfer of a priority right must occur prior to the subsequent filing. However, given the careful reasoning and the amount of space the Board dedicates to the issue, T 577/11 may be considered the leading case on this for the coming years. The take-away for applicants and their representatives is that they better get those assignments signed prior to filing the subsequent application, or else the curtain falls on the priority claim.

Sunday, 26 March 2017

UK Industrial Strategy

IP is gr-r-reat!
As the policy wheels turn, the UK government is consulting on its industrial strategy. The strategy is the government's plan for developing innovation and encouraging economic growth.  The launch is just the start; what follows next is a whole host of consultations and discussions on how the plan will translate into practice.

IP, unsurprisingly, has a role to play.  There are multiple direct references to IP in the strategy:
  • A commitment to commission research on how institutions commercialise their IP, looking licensing and spin outs, and how practices vary between different institutions (institution here generally meaning universities) 
  • A commitment to reviewing how the IP system maximises incentives for collaboration and licensing
  • New IPO representatives in the the Northern Powerhouse and the Midlands Engine
  • The role of IP in innovative public procurement
  • The independent review in to the UK creative industries which will include the role of IPR
The strategy has popped up in multiple IP and research discussions in recent weeks.  A key theme has been that there remain key challenges in understanding how IP works in practice, such as commercialisation and licensing. The role of IP in university spin-outs is a long-standing problem; a problem that is perhaps dwarfed by the challenges of making such start-ups/spin-outs survive. There are also multiple criticisms that the Industrial Strategy Challenge Fund, which will launch with £270M to fund research on AI, robotics, nuclear energy, manufacturing and others, is noticeably lacking a human side.

Non-UK readers may curious as to the "Northern Powerhouse" and "Midlands Engine."  Every good economic spin needs a catchy name (see Asian Tigers, Celtic Tiger). [Merpel is very upset the UK monikers are no longer of the feline persuasion. She suggests instead the Northern Panther and Midlands Manx.] Northern Powerhouse refers to the economies of the North England cities of Manchester, Liverpool, Leeds, Sheffield and Newcastle; Midlands Engine is the economy of the area between the South of England and the North.  The focus on these areas is likely in recognition of the need to decentralise the UK economy away from London, although Scotland, North Ireland and Wales do not seem to have received the same treatment.

It is hard to view the strategy without considering the political context. The uncertainty surrounding Brexit, and its impact on labour and skills, in addition to pending questions on international trade agreements, mean that domestic innovation and industry are more important than ever.  Government investments and tax credits form part of industrial strategy and may be key in keeping and attracting multinational corporations.  It is too early to tell if the industrial strategy is anticipating direct Brexit implications on IP.

The call for responses to the consultation on the industrial strategy closes April 17th

Friday, 24 March 2017

"What is this thing called love, this funny thing called love"? And while you're at it, what is a covenant not to sue?

“…[W]hat is this thing called love, this funny thing called love”? (song by Cole Porter)

Some topics in IP attract more attention than they deserve, while others are underappreciated. Think about all the academic ink that has been spilled about genericism in trademarks; it seems that the more that is written, the less likely it is that genericism will be found. To the contrary is IP licensing. Most Kat readers can anecdotally confirm that IP licensing is wide-spread. However, there is a surprisingly thin corpus of commentary, with the result that certain licensing practices are, frankly, not well-understand.

A good example of the latter is the notion of “covenant not to sue” (also referred to as a “nonassertion agreement”). Again, anecdotally at least, it seems that a covenant not to sue is frequently used, especially in patent and trademark licensing. Notwithstanding, this Kat has not found a satisfactory way of defining, or at least describing, what the covenant is. “Come on Kat”, you might say, “the fault lies with you.” Perhaps. But this Kat would argue that the problem rests with the notion itself.

Focusing on patents, consider that the statutory treatment of licenses and licensing varies greatly. In the U.S., the subject is largely absent from the patent statute, with no real treatment of the differences between an exclusive and a non-exclusive license. By contrast, take a country like Israel, whose patent statute provides (at least a partial) definition of exclusive and non-exclusive licenses, with special attention to the right to sue. Here, as well, however, there is no statutory reference made to a covenant not to sue. Varieties of these two approaches can be found in most other jurisdictions; what seems common to all is that none provides a real definition of what is entailed in a covenant not to sue.

“Not so fast, Kat, there is a body of understanding about what is meant.” Let’s explore this claim. A useful book on patent licensing, at least under U.S. law, is Drafting Patent License Agreements, by Brian Brunsvold and others (now apparently published in its 8th edition). The lead paragraph on their brief treatment of the topic in the 6th edition (written by Brunsvold and Dennis O’Reilly) states as follows:
“A patent owner may contractually agree not to assert the patent. Such an agreement, interchangeably known as a nonassertion agreement or a covenant not to sue, is used where a nonexclusive license is in inappropriate or is to perceived have unacceptable consequences.

The grantor of a nonexclusive license impliedly represents possession of the power to grant the license and necessarily represents the power to impose the equivalent of a lien on the patent. Similarly, the grantor of a covenant not to sue will be presumed to have a right of action against the grantee at the time the covenant is granted. Since a patent application does not give its owner a right of action, a covenant not to sue cannot be granted until the patent issues. Notwithstanding a presumption that the grantor has a right of action, i.e., owns or had the right to enforce the patent, good practice suggests obtaining an express representation to that effect.

A covenant not to sue is a promise of the grantor that does not necessarily future owners of the patent. Thus, even where the grantor owns the patent at the time, the grantor may assign it to another who, absent a contractual provision, would not be bound by earlier covenants not to sue. The recipient of such a promise, therefore, should obtain an express representation of ownership by the grantor and should contractually require the grantor to impose the same promise on any future assignee of the patent” (footnotes omitted).
This Kat would suggest that the foregoing reflects a common understanding that a covenant not to sue differs from a non-exclusive license in that it is personal to the parties. A covenant not to sue does not represent that the grantor necessarily has good title or can enforce the patent against the grantee, nor does it bind successors to the patent. (As such, it reminds this Kat of a quitclaim deed in real property, where the grantor does not warrant that it has any rights in the property). So far, so good—if the parties want to bind themselves in this fashion, they should be allowed to do so.

What this Kat does not understand, however, is the suggestion by the authors that express representations be given by the grantor regarding ownership and assignment of the covenant. If these explicit assurances are contractually given, what is the difference between a non-exclusive license and a covenant to sue, whatever the caption? Consider the sample clause provided by the authors—
“Company A hereby covenants not to sue Company B under any patent listed in Exhibit A for infringement upon any act by Company B of manufacture, use, sale, offer for sale, or import that occurs after the effective date of this Agreement. Company A hereby represents that it owns full and equitable title to each patent listed in Exhibit A. Company A further promises to impose the covenant of this paragraph on any third party to whom Company A may assign a patent listed in Exhibit A.”
What makes this provision a covenant not to sue, as opposed to an alternative formulation of a grant of non-exclusive license? This Kat has no answer.

See also, “When is a licence not a licence? When it’s a covenant not to sue?”, IP Draughts, 26 January 2013, here.

Around the IP blogs

MARQUES Class 46 (trade marks)

See the information below received by MARQUES, which “will probably not affect the immediate workload of our practitioner readers, but it does relate to the general betterment of the intellectual property environment on a global basis for years to come” – it relates to the highly successful TMview online search and availability service and it reads like this:

OAPI TMview development visit at EUIPO 
Searching for some IP blogs!

Under the framework of the International Cooperation Service, a delegation of IT experts of the African Intellectual Property Organization (OAPI) visited the EUIPO from 13 to 24 February 2017. This visit aimed at planning its integration into TMview in the coming months. TMclass was already implemented and went live on 15 January 2015.

*April ETMR now published

The April 2017 issue of the European Trade Mark Reports (ETMR) has now been published.

To remind readers, the ETMR is a series of law reports published monthly by Sweet & Maxwell. It contains English-language reports, together with informative headnotes, of recent decisions from national and EU courts and intellectual property offices. 

The April issue contains three cases. Two are High Court rulings from England and Wales. One of these was an application by Jaguar Land Rover for summary judgment in an infringement action relating to the DEFENDER trade mark, in which alleged infringer unsuccessfully sought partial revocation on the basis of bad faith. The second was a passing off and trade mark action involving the once inauspicious word "Titanic".

The third case, from the Fifth Chamber of the General Court, has a familiar taste to it, being yet another stage in the battle over the Kit-Kat four-finger chocolate bar shape mark.

The 1709 Blog

“The US Supreme Court held on March 22, 2017 that a feature incorporated into the design of a useful article is eligible for copyright protection “if, when identified and imagined apart from the useful article, it would qualify as a pictorial, graphic, or sculptural work either on its own or when fixed in some other tangible medium.” The case is Star Athletica LLC v .Varsity Brands. Justice Thomas wrote the opinion of the Supreme Court.” -- See Marie-Andree Weiss’s case review here


Spain will not join the Unitary Patent system. That became clear during a session of the Spanish parliament (on March 22, 2017). Earlier this month, the parliamentary committee for economics, industry and competitiveness had approved a motion of the socialist party PSOE, requesting the government to reconsider joining the system. Only the Popular Party, which runs the minority government in Spain, voted against the motion. See the full report here

Photo courtesy of Guo Si-te.

The Perks of Being a Coffee Seller - Star Box

"Coffee Cat" was the punny headline that caught reader Chris Ellins's (Westminster Law School) eye. Chris wrote in to let us know that something was brewing in Swiss Cottage. In a Doppio-and-Goliath fight, Doppio had lost. Yes, a coffee kiosk named "Star Box" was being forced to change its name following action by the coffee giant Starbucks. After the fight, there were grounds on the ground.

Looking under the lid of the matter, there are some interesting twists. According to the Camden New Journal, Nasser Kamali, the owner of the Camden Star Box, named his coffee kiosk in honour of Marxism, “I do believe in Marxism and that is very important to me. That is why I had the red star logo on my stickers. I am in a box. It’s my red, star box.” Alas, this got Kamali into hot water with a global multinational corporation, and in the name of keeping its brand strong, Starbucks requested he no longer use "Star" and change his logo (which contains a red star). Kamali has complied.

Photo by
The case has attracted a latte of international attention. The Daily Mail noted Kamali's refusal of a £300 goodwill payment from Starbucks. Even Fox News has it covered, and includes a series of reader comments dissecting the role of Marxism and American politics in downfall of Star Box.

Yet "Star Box" itself is not original. Oddly enough, this Kat has history with Star Box, and Starbucks. Her coffee roots go back to high school in the 90s in Washington State, when having a bumper sticker that said, "I drive espresso because I am latte" was considered cool, and Starbucks was a local business with less than 150 stores.  The mermaid logo was only partially clothed.

Fast forward to 2007, and now both a coffee and an IP fan, this Kat was delighted when she came across "Star Box" in Teheran, Iran. She sent a photo to IP Professor Susan Scafidi's Counterfeit Chic blog.  It then got picked up in 2008 in an Iranian forum, again in 2010, hit Reddit in 2011, made it to Buzzfeed in 2014 and NewsDay in August 2015. The image is currently on at least 30 websites, all pointing to the amusing similarities with Starbucks."Star Box" clearly has brand appeal.  Curiously, Kamali is Iranian, perhaps this Kat's photo caught his eye? [Merpel would also like to note that the Katonomist now uses this story in lecturers to demonstrate how digital content is often copied without attribution or incorrectly attributed.] 
Buzzfeed screen shot, Photo 
incorrectly attributed to Reddit

While this make look like a heated and strong debate, the distilled version is simply large brand versus small brand. This Kat has previously written about the interaction between lookalikes and brands. It's hard to imagine any of Star Box's London customers mistook the kiosk for Starbucks. Using a homonym of Starbucks is useful for attracting attention, and Star Box has benefitted Kamali, both in current new coverage and customer appeal. Starbucks's pursuit of Star Box may have some negative impact on the Starbucks brand, but could have deterrent effects. The public pursuit of Star Box could dissuade lookalike brands, which may save Starbucks potential legal costs - assuming that legal action is necessary. However, the pursuit of lookalike brands for such a dominant global brand is questionable, and Starbucks recently lost a case to a small coffee roaster named Charbucks.  The economic impact is unclear.

And now, for gratuitous conspiracy theories. Could this be the start of a global political takedown of American capitalism - starting with the tarnishment of coffee brands? Is Big Tech making "tarnishment" autocorrect "garnishment" to annoy human beings whose jobs will be replaced with machines?

However, Kamali isn't wasting time over spilled milk - he's back to selling coffee.

Thursday, 23 March 2017

Telstra loses big in keeping its information confidential in Australian patent dispute

The AmeriKat is looking forward to  her first
sojourn to Australia
The AmeriKat has yet to set a paw in Australia.  This makes her unique amongst most of her English peers, almost all whom have taken the long series of flights to experience the gorgeous sandy beaches, unrivalled scary insects and snakes and Neighbours nostalgia.  However, despite the fact that we are so far away, Australia's legal system seems very familiar to the English having derived from our common law system.  But how similar are we when it comes to protecting confidential information in court proceedings?  Martin O’Connor (Addisons) reports on the recent case of Upaid Systems Ltd v Telstra Corporation Limited (No 4) [2016] FCA 1514 where the Federal Court of Australia recently grappled with the issue.  Martin reports:
"The long running patent dispute between technology company, Upaid Systems Ltd and major Australian telco Telstra Corporation Limited reached a key inflexion point recently with the Full Court of the Federal Court of Australia rejecting Telstra’s attempts to have the matter summarily dismissed. In a follow up decision several weeks later, the Federal Court dismissed an application by Telstra to have large tracts of information which had been provided in connection with its summary dismissal application suppressed from public access.

Given issues relating to the suppression of material are not frequently canvassed by the Court—they are usually resolved directly between the parties—the decision provides a rare and interesting insight into the Court’s views on suppression issues generally. This is particularly important given that a defendant in a patent infringement proceeding may be required or may choose to disclose information they would prefer to keep confidential.

Background – re-cap

Upaid Systems Ltd is a technology company founded in 1997 and has an international portfolio of patents over certain enabling technology for mobile commerce. In Australia, Upaid is pursuing legal action in the Federal Court against Telstra, alleging that Telstra has infringed two of Upaid's Australian patents, through the use of a convergent communications system and an enhanced services platform to provide a range of products and services to users connected to Telstra's mobile telecommunications networks.

The Suppression order decision

One of the fundamental principles of litigation in Australia is that the Court conducts its business in public and that any documents which are read in open court form part of the public record. The Court may, however, in limited cases make orders to suppress information where it is necessary.

Telstra sought suppression orders over vast swathes of information, including: evidence filed in relation to its summary dismissal application; parts of the transcript of the hearings at which the contents of the evidence was freely disclosed and discussed; written submissions; and an outline of evidence and flowchart describing the process of purchasing a particular Telstra product using an internet browser on a Telstra mobile device.

In the course of the proceedings the scope of what Telstra sought to supress changed and was inconsistently applied so that materials earlier revealed were later sought to be included. Telstra’s application was also haphazard. Words or data redacted in one submission were left open to view in others.

Significantly, Telstra had made no attempts to request that the Court be closed for the relevant hearings during which the above materials were canvassed, meaning that members of the public were allowed to and did attend the hearing. In fact, explicit disclosure was made in open court of information recorded in some of the documents, including references to names of system components and functions that form part of Telstra's telecommunications network.

Following the hearing of its summary dismissal application, Telstra later claimed the material contained information of a kind that could be used by 'miscreants' for the purposes of damaging Telstra or third parties in the form of a cyber-threat. As a result, it applied for a suppression order over the material on the basis that it was necessary to prevent prejudice to the proper administration of justice. This ground is commonly relied upon as a generic rationale when a litigant is unable or unwilling to be more precise.

The Federal Court refused Telstra's application for a suppression order. Justice Yates found that Telstra's disclosure in open court of what was claimed to be sensitive information was a decision Telstra had taken deliberately. The manner in which the purported confidential information was managed within the Telstra organisation was also prominent in the Judge’s thinking as he reached his conclusion:
“…Telstra has not demonstrated that the information it seeks to supress is confidential and treated as such by its employees, suppliers, contractors and consultants…there is no evidence that Telstra’s employees, suppliers, contractors and consultants, involved with the systems in question, are or have been under any obligation whatsoever not to disclose the actual information that happens to be contained in the outline, flowchart and affidavits."
In summary, in circumstances where Telstra had not shown it treated its information as confidential, it was too late for it to ask the Court to suppress that information:
“If there is no evidence that Telstra itself has a system or arrangement in place to protect the alleged confidentiality of the information in question, why should the Court be prevailed upon to put such a system in place or make such an arrangement for the purposes of this proceeding? Why is a suppression order necessary when Telstra itself does not appear to recognise, through its own procedures, the same necessity? The security concerns it has advanced in this application appear to be security concerns it tolerates and manages in its own commercial activities.”
Justice Yates was not satisfied that the suppression order sought was necessary to prevent prejudice to the proper administration of justice, other than in respect of 3 exhibits tendered at the hearing of the summary dismissal application, the confidentiality of which was not contested by Upaid:
“As the High Court emphasised in Hogan v Australian Crime Commission (2010) 240 CLR 651; [2010] HCA 21 at [31], it is insufficient that the making or continuation of such an order might be convenient, reasonable or sensible or be seen to serve some notion of the public interest. The question is whether such an order is "necessary" and, as the High Court emphasised, "necessary", in this context, is a "strong word". If the Court is of the view that such an order is "necessary", the order should be made. Otherwise, the order should not be made. If an order has been made and the circumstances show that it is not, or is no longer, "necessary" then that order should be discharged.”
Telstra's application concerned a hearing which took place in March 2015; the application for a suppression order was heard in November 2015; and a decision was made on the suppression order December 2016.

Finally, the Court took the view that Telstra should pay Upaid its costs in relation to the application."
The emphasis on the treatment of the confidential information by the party seeking to assert confidence and the necessity of the order are all points that are similarly pressed by parties seeking to protect confidential information before the English courts.  Also important is the speed with which you act to protect the information.  In this case months passed before the hearing and the application for the suppression order, which always raises a judicial eyebrow (or two).  Speed, like much of life, is of the essence.  Unless, of course, you are like Merpel and consider time a mere construct...

«Printed by Jouve» it’s not

If there ever was a first world problem, then this is it. But whenever (okay, not every single time) I walk to the printer in our office and pick up a freshly printed European patent application or European patent, I read the line at the very bottom of the first page which reads “Printed by Jouve, 75001 PARIS (FR)”, and I think “no, it isn’t. It’s printed by my Cannon makeupsomenumber in Zurich, Switzerland. I wish I was in Paris”. Why does it say “Printed by Jouve” on every single European patent (application)?

Jouve is a group of companies headquartered in Paris providing, in their own words, “customers with cross-media solutions for designing, enriching, showcasing and distributing content”, whatever that means. Those services include on-demand printing and web-to-print services. I would assume that Jouve has some kind of contract with the European Patent Office. However, are they printing anything for the EPO, much less patents and patent applications?

Solving another first world problem (Fig. 1 from EP 3 047 756 B1)
Since 1 April 2005, European patents and patent applications are published electronically, the printed publication was ceased on that day. Until 1 January 2014, it remained possible, on request, to be sent a (printed) copy of the patent specification together with the certificate for a European patent. As of 1 January 2014, this option was also ceased, because it was hardly ever used. It remains possible to obtain certified copies of the certificate with the specification annexed upon request and payment of an administrative fee. I would assume these are printed on the printers on location at the EPO’s offices in Munich or The Hague, and not by Jouve.

So, I just cannot fathom what Jouve is printing in Paris. Yet, even on the most recent applications published – such as EP 3 143 898 A2 “Anti-theft carrying bag with security and expansion panels and with carrying strap” (112 pages, no less) – or granted patents such as EP 3 047 756 B1 “Mobile beach basket” read “Printed by Jouve, 75001 PARIS (FR)” on the first page. If any reader has an answer to this riddle, please put it in the comments.

Wednesday, 22 March 2017

Welcome clarification on the Malaysian law of well-known marks; but there is still judicial work to be done

The law of well-known marks continues to develop apace in various countries in Asia. Kat friend NG Kim Poh has offered a summary of an important decision in Malaysia on this dynamic topic.

The Court of Appeal of Malaysia had recently provided its grounds of judgment for an important decision in Y-Teq Auto Parts (M) Sdn Bhd v X1R Global Holdings & Anor (CACA NO. W-02(IPCV)(A)-511 -03/2016). The case dealt with the well-known mark provision under the Trade Marks Act 1976, prohibiting registration of a mark even where the goods or services of the parties are not the same.

The two respondents (the claimants in the action filed in the High Court) were the registered proprietor and registered user, respectively, of a mark in Class 4. A representation of the respondents’ mark is shown below:
The appellant (the defendant in the action filed in the High Court) was the registered proprietor of a mark in Class 7, Class 9, Class 12, and Class 35. The appellant also had a pending application for the same mark in Class 25. A representation of the appellant’s mark is shown below:
The respondents’ action in the High Court sought to expunge the appellant’s registrations and application, alleging that their use is likely to deceive or cause confusion to the public or would be contrary to law. The respondents further relied on Section 14(1)(e), which provides protection for a well-known mark.

The respondents prevailed at the High Court. In a relatively detailed judgment, the High Court delved into the applicability and scope of various provisions under the Trade Marks Act on protection of well-known marks in Malaysia. At the outset, the High Court ruled that the respondents had the necessary locus standi, notwithstanding that the parties’ respective goods fell under different classes.

There was evidence showing that the respondents were adversely financially affected because a third party declined to distribute their goods due to the mistaken belief that the goods originated from the appellant, which was a competitor of the third party. Further, there was likelihood of confusion and deception between the use of the respondents’ mark and the appellant’s mark.

The High Court ruled that the respondents’ mark was a well-known mark, inter alia, because:
(a) the public and people involved in the trade had identified the respondents’ mark with the respondents’ goods distributed by them. This assertion by the respondents was not denied by the appellant;

(b) the respondents’ mark had been used in more than 30 countries around the world, including in Malaysia;

(c) the respondents’ mark had been registered in various countries throughout Asia;

(d) the respondents had extensively promoted, advertised, publicized and presented goods to which the respondents’ mark had been applied; and

(e) there was clearly value associated with the respondents’ mark.
With respect to question of the connection between the mark and goods of the appellant and those of the respondents, the High Court ruled that this had been made out, based on showing either there was a “connection” as to the origin of the goods or in respect of the quality of the goods, or there was a business “connection” that might be perceived by the public.

Regarding likelihood of damages, the High Court held that this would be satisfied when:
(a) the claimant suffered a dilution to its goodwill in this country (i.e. Malaysia);

(b) there was a loss in the sales of the claimant’s goods;

(c) the claimant was restricted from expanding the use of its mark to goods in other classes; or

(d) the claimant was exposed to the risk of incurring legal liability from traders and consumers who had purchased the inferior goods of the defendant in the mistaken belief that they had acquired the claimant’s goods.
Consequently, the High Court ordered the appellant’s registrations and application be expunged from the Register.

The appeal was dismissed by the Court of Appeal.The Court of Appeal did not address the applicable legal principles in any detail, which is perhaps a bit unfortunate. Still, it is important to note that, in affirming the decision, the Court of Appeal in no uncertain terms held that the High Court had identified the correct legal principles and applied them to the facts of the case based on the evidence adduced by the parties.


These decisions are an important development in the law on protection of well-known marks in Malaysia, particularly because they have provided much welcome (indeed needed) guidance on the applicable principles and interpretation of important provisions of the TMA with respect to the protection to the protection of a well-known mark.

That said, the decisions appear to have missed an opportunity to discuss and provide guidance on the scope of the words “mark or part of a mark” in the context of Section 14(1)(e), TMA. For instance, would the provision apply to an impugned mark that is not identical with and is not part of the well-known mark in question? The decisions appear to have left this question unanswered.

Perhaps the answer to that question lies in Regulation 13A(b). The provision states:
"13A. The Registrar shall not register a mark or part of a mark where –

(b) the mark or part of the mark is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known under
regulation 13B, which is registered in Malaysia with respect to goods or services whether or not similar to those with respect to which registration is applied for, provided that use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the proprietor of the registered mark, provided further, that the interests of the proprietor of the registered mark are likely to be damaged by such use”(emphasis added).
Time will tell whether reliance on this provision will be made in a relevant future case.

BREAKING: US Supreme Court holds cheerleading uniforms eligible for copyright protection

not one of the uniforms
at the centre of the case
The US copyright decision everybody was waiting for is finally out.

In Star Athletica v Varsity Brands the US Supreme Court has just ruled that cheerleading uniforms are eligible for copyright protection ['copyrightable', to use the US copyright jargon].

The law

The US Copyright Act, §101 states that “pictorial, graphic, or sculptural features” of the “design of a useful article” can be protected by copyright as artistic works if those features “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 


Varsity Brands holds more than 200 copyright registrations for two-dimensional designs - consisting of various lines, chevrons, and colourful shapes - appearing on the surface of the cheerleading uniforms that they design, make, and sell. 

It sued Star Athletica (also in the market for cheerleading uniforms) for copyright infringement, but the District Court held that Varsity Brands' designs could not be conceptually or physically separated from the uniforms and were therefore ineligible for copyright protection. 

In reversing, the Sixth Circuit concluded that the graphics could be “identified separately” and were “capable of existing independently” of the uniforms under §101.

Today's decision

In today's decision the US Supreme Court decided - 6 to 2 (Justice Breyer filing a dissenting opinion, in which Justice Kennedy joined) - that cheerleading uniforms are indeed eligible for copyright protection if certain conditions are met.

Writing for the majority, Justice Thomas held that a feature incorporated into the design of a useful article is eligible for copyright protection only if the feature: (1) can be perceived as a two- or three-dimensional work of art separate from the useful article; and (2) would qualify as a protectable pictorial, graphic, or sculptural work - either on its own or fixed in some other tangible medium of expression - if it were imagined separately from the useful article into which it is incorporated. 

A detailed analysis of the decision will be provided in due course: stay tuned!

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