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).

Tuesday, 30 November 2004


LexisNexis (Butterworths) have just sent the IPKat the November/December issue of the subscription-only Intellectual Property and Technology Cases law reports (IP&T). The service is primarily available online, with the paper copy following later.

This issue contains three different judgments of the Court of Appeal in the ongoing dispute between Glaxo Group Ltd and Dowelhurst over the repackaging/relabelling and resale of trade mark-protected pharmaceutical products, as well as the Court of Appeal's two rulings in Reed v Reed (the UK's first case to deal specifically with damages for internet-related trade mark infringement). To complete the trade mark flavour of this issue, there are also two Court of First Instance decisions in appeals from OHIM, the Office for Harmonisation in the Internal Market (the European Union's trade mark office).

Merpel wonders how anyone can subscribe to this series, since it doesn't seem to be listed in the LexisNexis UK catalogue of Law Reports.


The Sunday Times reports that an umbrella body of Mackintosh heritage groups formed by the Charles Rennie Mackintosh Society is working on a quality assurance scheme and plans to apply for a trade mark (the IPKat imagines this is a certification mark) in order to further its work.

“For many years we have been frustrated by the sometimes dubious copies of Mackintosh style that market themselves by using the well-known design icon”,
said the Director of the Society, pointing to consumers who were disappointed by inferior quality “Mockintosh” products. However, Pat Marsden, a purveyor of Mackintosh-inspired products pointed out:
“The heritage organisations have long dismissed Mackintosh-style products and it seems hypocritical for them to decide to take control now. Some of the craftspeople I work with have decades of experience and they are clear about the fact that they are Mackintosh inspired — they are not copies. It seems very unfair to now ask them to come cap in hand to be told if what they have done is good enough to be given official approval”.
The IPKat points out that the success of this scheme will depend on whether consumers actively seek “official” Mackintosh products, or if instead all they care about is that the product has the Mackintosh “look” which is something they can judge for themselves. Merpel, controversial kitten of mystery adds that, unless the products are made to Mackintosh designs, they aren’t really genuine Mackintosh products at all.

See Mackintosh’s house here
More Mackintoshes here and here

Monday, 29 November 2004


Today the Court of Appeal for England and Wales ruled that Glaxo's patent for its SEROXAT paroxetine hydrochloride anhydrate was valid (contrary to the opinion of the trial judge) but that Apotex did not infringe it. In Smithkline Beecham plc and others v Apotex Europe Limited and others the Court of Appeal, for whom Lord Justice Jacob gave judgment, had an opportunity to apply the recent House of Lords decision in Kirin-Amgen on the construction of patents. At paragraph 107 Jacob LJ did not mince his words when he said:

"Patent claims are to be construed purposively, their meaning to be ascertained from their context as the recent decision of the House of Lords in Kirin-Amgen v Hoechst Marion [2004] UKHL 46 has confirmed".
The IPKat notes the clarity of the court's message on purposive construction, but comments that fixing the text of construction is only the first step: it still remains to apply that test -- and that's where the real work lies.

Background to the case here
Is this antidepressant a downer? Click here and here
SEROXAT users' group here


The Jerusalem Post reports that Israeli Industry, Trade and Labor Minister Ehud Olmert will be meeting US trade representative Robert Zoellick today. At the same time, Ministry officials will be meeting with EU representatives. The subject of discussion is Israel’s upcoming new intellectual property legislation. The US and EU are calling for Israel to introduce data exclusivity, which protects the confidentiality of proprietary tests and clinical trial data used by a pharmaceutical firm while registering a drug. This protection prevents generic drug companies from using this data to develop the same drug for a specified period. The US provides a 5 year protection period, while the EU grants 10 years. However, Israel is proposing to only grant market exclusivity, which protects pharmaceutical products but not data.

The IPKat notes that while TRIPS Art.39(3) requires Member States to protect data disclosed in clinical or other trials, it does not specify the term of protection that is necessary.

More on data exclusivity here
The IPKat reveals more clinical secrets here, here and here

Sunday, 28 November 2004


According to today's Sunday Telegraph the luxury Burberry brand is being devalued by its popularity with the wrong sort of consumer. UK sales of its camel check among the fahsionable elite have fallen in consequence of its popularity among 'chavs' (a pejorative term for a low-income social group obsessed with brand names, cheap jewellery and football). Retailers who stock Burberry products say there is a growing negative association with the brand as the national obsession with chav culture has flourished, thanks to extensive tabloid coverage of the phenomenon and derogatory websites such as

The news item reports that some leading retailers claim sales of Burberry products have been hit hard, dropping in some cases by as much as 40 per cent over the past year. One retailer said sales were down by "well over" 30 per cent on 12 months ago. Another household high street name is believed to be considering whether to continue stocking so many Burberry products. "It is just hideous," said one retailer.

A Burberry spokesman said that UK sales had been subdued, but added that the UK represents "a small percentage of Burberry's sales". Burberry says that the famous camel check appears on less than 10 per cent of its clothes. Earlier this month Burberry reported an 18 per cent rise in first half underlying profits.

The IPKat's co-owner Jeremy actually published a short note quite recently in Trademark World on the phenomenon of the wrong customer. If you want to see it, click here.

What not to wear here, here and here
Power dressing here ; power undressing here


The IPKat has just received, under the cover of a plain brown wrapper, a mysterious parcel that turned out to be a large, handsome book. This impressive volume, entitled International Encyclopaedia of Intellectual Property Treaties, has been edited by Alfredo Ilardi (Head of WIPO's Collection of Laws Section) and Professor Michael Blakeney of the Queen Mary Intellectual Property Research Institute. This tome was published earlier this year by Oxford University Press.

Intrigued by this book's arrival, the IPKat decided to rifle through its pages in search of adventure. He discovered that it is not merely a collation of dry, dull treaties and conventions -- although, as you would expect, they're all there too -- but it opens with a very helpful Commentary of some 180 pages which covers the subject-matter from historical and contextual perspectives. It appears to be an invaluable research resource for academics and practitioners alike: well worth buying, particularly if you happen to be, or have, a law library.

For further details of the International Encyclopaedia click here
WIPO's Collection of Laws for Electronic Access (CLEA) website here


Issue 6 (2004) of Sweet & Maxwell's bimonthly series the European Copyright and Design Reports has now been published. This issue contains a number of cases made available in English for the first time:

* Key Ring Designs (Bundesgerichtshof, Germany): a ruling that, while reproductions of currency -- in this case 20-Euro notes -- could not be registered as trade marks, there was no bar to their protection when incorporated into a registered design;

* Adobe Systems and others v A Software Distributor (Supreme Court, Finland): this case considers the doctrine of exhaustion of rights as it applies to computer software;

* Cadys Sosnowski v Courtoux and others (Tribunal de Grande Instance de Paris): considers whether a director made a creative cnotribution to the production of a series of recordings of TV programmes;

* Hellenic Society for the Protection of Copyright v Macman (Court of Arios Pagos, Greece): can the author of the words of a song sue for infringement of copyright when all that has been used without authorisation is the tune?

If you know of any interesting recent copyright cases that you'd like to see included in the ECDR, let the IPKat know.

Friday, 26 November 2004


Well, with the help of the IPKat you can. He's come across this nifty page on the UK Patent Office website that lists the IP appeals and references that have been made to the ECJ and the various deadlines which apply. Amongst the gems are:

  • Boehringer Ingelheim (parallel imports and relabelling - yes, another one)
  • Picasso v OHIM (does the fact that the mark corresponds to the name of a famous person make confusion less likely?)
  • Eurocermex (registrability of the shape of a long-necked bottle with a wedge of lime - or green lemon as some stick-in-the muds prefer to call it - as a trade mark. Watch out for the case note on the CFI stage of this case by Jeremy in the December 2004 EIPR)
  • Detsche SiSi (registrability of the shape of a pouch to contain liquid)
  • Elizabeth Emanuel (consequences for a trade mark when a business named after the original proprietor is transferred - is the trade mark deceptive as a result?)


The IPKat received an email from Indonesia-based intellectual property practice Acemark, informing him that the recently independent island of East Timor currently has no IP Laws.

Acemark says it has been informed that, in the transitional period before it enacts its own IP laws, that jurisdiction is applying Indonesian law. This doesn't help in the case of registered rights, since there isn't anywhere yet to register them.

Acemark cites trade mark infringements of AQUASE, SO KLIN and RINSO which are now being tried before Court of Justice in East Timor's capital Dili and, sticking its neck out, says:

"whereas we are definitely certain that in the absence of trade mark registration or cautionary notice made by the trade mark owners, those infringers will be very shortly released and discharged. In brief, we urged the Government of East Timor to consider establishing an IP office in the country at once. We hope they will respond and react to our letter favourably shortly".
Anyone wishing to take this issue up with Acemark, who are lobbying for proper IP protection, should do so here.

The IPKat reckons that when East Timor can spend its time worrying about which sort of IP laws to introduce, we will know that that troubled island has recovered from the events of its traumatic past. Merpel, the kitten smitten by Friday-irrelevance, asks: why don't we ever hear about West Timor?

Data on East Timor here; East Timor culture here


The IPKat isn't sure how many judging days there are till Xmas but, while others plan their office parties and measure up their turkeys, the European Court of Justice (ECJ) is still as busy as ever. Next Tuesday, 30 November, another two decisions will be emanating from Luxembourg, one from the full ECJ, the other from the Court of First Instance (CFI).

The European Court of Justice judgment in Case C-16/03 Peak Holding is a Swedish reference for guidance as to the interpretation of Article 7(1) of Council Directive 89/104 which deals with exhaustion (in the US "first sale") doctrine. Specifically, where that provision refers to "goods which have been put on the market", at what time are goods regarded as being put on the market? In May Advocate General Stix-Hackl advised the court to rule that

"1. Article 7(1) of Directive 89/104 is to be interpreted as meaning that goods bearing a trade mark are not put on the market merely by reason of their importation into the EEA and customs clearance, nor by reason of their being offered for sale in shops belonging to the trade mark proprietor or undertakings associated with him. Goods are instead put on the market in the EEA when an independent third party has acquired the right of disposal of the goods bearing a mark, for example as the result of a sale.

2. Where goods bearing a mark are sold to another undertaking within the EEA, it is irrelevant to the consideration of when exhaustion arises under Article 7(1) of Directive 89/104 whether and to what extent the trade mark proprietor has imposed territorial restrictions on sale on the purchaser".
Will the Court accept this guidance? All will soon be revealed.

The Court of First Instance will be ruling in Case T-173/03 Geddes v OHIM, on the registrability of the word mark NURSERYROOM for products in classes 16, 18, 21, 25 and 28.

Be sure to join the IPKat, who will bring news of these decisions as soon as he can.


The December 2004 issue of Sweet & Maxwell's European Trade Mark Reports has now been published, a little ahead of schedule. Although it feels very fat, it's not all full of cases: this is the issue that contains the year's index and the tables of cases and legislation cited.

Unusually, this issue contains no cases from Europe's national jurisdictions. Instead, it leads with the remarkable OHIM Second Board of Appeal decision in Case R 118/2003-2 Beecham Group plc's application (the WHITENING MULTI-ACTION case, blogged on 25 August of this year), in which the Board gave its now-famous account of why it's not easy to be a trade mark examiner. There is also a good selection of decisions from the European Court of Justice and the Court of First Instance.

Not everyone knows that the ETMR provides a special service for its subscribers. If they want, they can receive draft versions of the headnotes and edited judgments of cases by email attachment several months before those cases are reported. If you are already a subscriber and want to receive this service, click here to request it.

For details of the European Trade Mark Reports click here.

Thursday, 25 November 2004


The Register reports today on Microsoft's trial scheme for offering Windows XP software to currently unlicensed users. The article reads (in part):

"Microsoft does have a long term and wide-ranging ambition to turn the very large numbers of users of counterfeit Windows into legitimate users. At the same time, it wants to hunt down the companies selling new PCs with pirate software on board, the (probably sensible) rationale here being that if this channel for pirate software is throttled then quite a lot of the problem will go away. Quite a lot of people will end up with pirate Windows installations via this route and either won't know or won't care, whereas a lot less people are likely to go to the trouble of of downloading and installing software when they've already got something on the PC.

So one of the questions here is whether it's more important with the current offer for Microsoft to legitimise the users, or more important to obtain leads and evidence that will allow it to take action against the sources. Or possibly, even to just frighten a reasonable percentage of the sources into cleaning their acts up.

Aside from being limited by the confusion factor, volume licence purchasers are excluded, as are people under 18 (which is perhaps a bit thoughtless, but is likely to be related to the validity of the witness statement) and "employees of Microsoft or its affiliates" (come on, would they really dare?). The offer itself expires at the end of next month, but you can make up to five submissions per person. There isn't much obvious advantage in the offer from the user's point of view, as first you have to use the standard Microsoft process to check whether or not your software is genuine, then collate any accompanying documentation, invoice or receipt, and the witness statement, then send it all to Microsoft. Then they might send you back a copy of the real software - unless there are other factors at play, then it's a bit of work for little obvious return.

Probably, vast numbers of people will not stampede to take this up, and we would not be surprised if the cost of the support phone calls far exceeds the other costs of the programme. There are however signs of where Microsoft would like to be with this kind of operation, as opposed to where it is at the moment. Its product identification guide for example claims that there's an "Is this copy of Windows legal?" link in IE's help menu. Looking at our own copy of Windows (XP SP2, IE 6) that does not seem to be the case, so presumably it will be the case, or it's something that arrives with some feature we've declined to download (of which, we accept, there are many)".
The IPKat wonders whether, if this works for computer software, will Rolex, Gucci, Louis Vuitton and friends be tempted to roll out similar schemes?

More on replacements here and here


It is a mere month until Christmas and an IPKat reader has sent the IPKat a couple of ditties that combine the festive spirit with IP awareness.

Is it time (he asks) to think of case reports via the medium of Christmas carols?
eg.. to the tune of 'Silent Night'

"Henkel's fight
Shape of white
reminiscent of a kite
Like detergent tab
OHIM said no
Inherent distinctiveness Henkel did show
Shaped like crystal it won...
Shaped like crystal it won..."
Or, to the tune of 'We three kings':
"We three heads of Remington are
Philips shape we stole from afar
High Court law suits
Trade mark pursuits
over exclusionary bar..."
"Justice Rimer found the shape functional,
they can't escape small additions non-essential
Philips have lost trade mark rights..."
The IPKat says, start practising now and you too can impress your friends and loved ones.


The BBC reports that the owner of the Perfect 10 website, which shows nude photographs, is suing Google for copyright infringement and harming his ability to make profits. He claims that Google’s search engine provides free usernames and passwords to Perfect 10 and also that Google reproduces photos from Perfect 10 on other of its websites as thumbnail sketches.

The IPKat says: copyright infringement it may be, but any website that gets on the wrong side of Google is likely to be cutting off the route to stacks of consumers who would not otherwise find it.

How image search engines work here
Nude pictures here and here

Wednesday, 24 November 2004


... that the Patents Court for England and Wales has its own home page.

The IPKat says (i) why doesn't it have useful things on it like photographs and biographies of the Patents Court judges, so we can see how warm, friendly and sensitive they are and (ii) where's the link from that site to the IPKat?


In this morning's second Court of First Instance ruling, Case T-360/03 Frischpack GmbH v OHIM, the CFI dismissed the applicant's appeal against the refusal of the Board of Appeal to allow the registration as a Community trade mark, for goods in Class 29 (sliced cheese), a three-dimensional mark consisting of a cheese box for holding sliced cheese. The Board of Appeal had no difficulty concluding that the mark was not distinctive, considering that

"... the average consumer would see in the shape claimed for the goods stated in the application only an ordinary flat packaging. The box for which registration is sought did not contain any element ‘exceptionally special, specific or unusual on the foodstuffs market’ which make it possible to clearly distinguish it from other shapes existing on that market. It was only a ‘slight and unremarkable variation on the typical shape’ ... [A]lthough the mark applied for is the subject of a complex description, only a considerable analytical effort makes it possible to recognise all the characteristics listed in that description. The average consumer would not, however, carry out such a complex and intensive analysis of the subject".
The CFI agreed.

Frischpack also argued that, while the general cheese-eating public might not view their cheese box as being distinctive in respect of cheese, the company was seeking registration in respect of the sale of sliced cheese to the trade, a much narrower and more discerning market and one which would regard the aplied-for sign as being distinctive. CFI refused to accept this. As the court said (at paragraphs 41 to 43):
"41 ... [A]t no time during the administrative proceedings before OHIM did the applicant plead the fact that the slices of cheese contained in the packaging for which registration is sought were intended solely to be sold wholesale to the food trade. Indeed, in its decision of 11 February 2003, the OHIM examiner had already assessed the distinctive character of the packaging in question by taking account of the presumed expectation of the average consumer and the applicant did not dispute that in its action before the Board of Appeal.

42 Under Article 74(2) of Regulation No 40/94, since OHIM may disregard facts or evidence which are not submitted in due time by the parties concerned, the Board of Appeal could reasonably take the view, in the light of the information submitted by the applicant, that the relevant public was the average consumer.

43 The Board of Appeal was therefore right in assessing the distinctive character of the packaging in question by taking account of the presumed expectation of the average consumer, averagely informed and reasonably attentive and circumspect. Yet the applicant does not claim that the mark for which it seeks registration has distinctive character in the light of the presumed expectations of the average consumer".
The IPKat wonders whether a further application to register the mark in respect only of cheese sold to the trade might be successful: this has happened before when the generally unregistrable laudatory epithet IDEAL was not barred from registration in respect of rubber stamps and ink pads for sale to the trade (see Case R-1163/2000-1). His fast-learning feline friend Merpel adds: "I notice that the argument was only about distinctiveness, not functionality. That must be because functionality under Articles 7(1)(c) and 7(1)(e) of the CTM Regulation is only an issue where the product shape is exclusively descriptive or functional, which -- from the picture of the mark in the CFI's report -- doesn't appear to be the case here".

Cheese box masks here
Mouse and cheese box here
Far-out cheese box here


The European Court of Justice's Court of First Instance has just ruled this morning in Case T-393/02 Henkel v OHIM, an appeal against the refusal of the Office for Harmonisation in the Internal Market to allw Henkel's application to register, as a Community trade mark for soaps, gels etc, , a three-dimensional mark consisting of the shape of a white and transparent bottle. On this occasion the appeal was successful. As the CFI said (at paragraphs 47-48 of its decision):

"47 ... [T]he three-dimensional mark applied for is unusual and capable of enabling the products in question to be distinguished from those having a different commercial origin. That position is supported by the registration by the applicant of a three-dimensional mark having an identical shape to that of the mark applied for in the present case, in 11 Member States.

48 It follows from all the above considerations, and without there being any need to reach a decision on the other arguments put forward by the applicant, that the Board of Appeal was wrong to hold that the mark applied for was devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94".
Having seen the illustration of the bottle which features on the ECJ's website, the IPKat wholeheartedly agrees: the bottle in question is quite a memorable, even in the absence of word marks, logos and other material that might also serve to distinguish it from the bottles of other traders in respect of the same goods.

Historical bottles here
Best British bottles here
White bottles here; blue bottles here and here

Tuesday, 23 November 2004


The New York Times reports on the rise of computer programs such as Brutus 1 that are capable of writing really quite reasonable stories. For example, a computer is responsible for this piece of prose:

“Dave Striver loved the university - its ivy-covered clocktowers, its ancient and sturdy brick, and its sun-splashed verdant greens and eager youth. The university, contrary to popular opinion, is far from free of the stark unforgiving trials of the business world: academia has its own tests, and some are as merciless as any in the marketplace. A prime example is the dissertation defense: to earn the Ph.D., to become a doctor, one must pass an oral examination on one's dissertation. This was a test Professor Edward Hart enjoyed giving”.
Human authors aren’t in too much trouble yet. Computers are bamboozled by the many choices that are available to them in developing a story. However, humans use their disorganised natures to their advantages by just not bothering to try out all the possibilities that are open to them. Instead, they rely on serendipity and inspiration, which stops them from getting bogged down in deciding between the millions of choices open to them.

The IPKat says, these computers may be brainy, but they don’t get to hold the copyright in what they create. Instead, under s.9 of the CDPA 1988, the person by whom the arrangements necessary for the creation of the work are undertaken gets the right.

More computers with human characteristics here, here and here
Fiction a computer would be proud of here (lawyers of a sensitive disposition look away now)


The Times carries an ad for a job at the University of Bath. The Research and Innovation Services department is seeking an assistant solicitor. One function of the job is to provide assistance in relation to the commercialisation of intellectual property - e.g. licence agreements and spin-out arrangements. The IPKat says go on, take a Bath.


It has become fashionable for businesses to jettison long, formal descriptive names like "Associated Ballbearings Limited" or "Consolidated Cardboard Company" and replace them with short, zappy, memorable tags like Sony, Virgin, Nike and so on. But the pursuit of brevity has its price. While looking (so far unsuccessfully) for a transcript of the decision of Mr Justice Pumfrey in 02 Ltd v Hutchison 3G UK Ltd, the IPKat did a Google on 02 and scored a mere 558,000,000 hits.

Slightly embarrassed postscript. When the IPKat searched under O2 with the letter "O" rather than 02 with the numeral "0", his tally of Google hits fell to a much more manageable 20,400,000.

More to the point, does anyone have a copy of 02 v Hutchison the IPKat can read, because he wants to blog it. If so, please email here and let him know.


The Director General of the World Intellectual Property Organization (WIPO) presents his compliments to the IPKat and has the honour to notify him of the deposit by the Government of the Republic of Indonesia, on 15 November 2004, of its instrument of ratification of the WIPO Performances and Phonograms Treaty, adopted at Geneva on 20 December 1996.

The said Treaty will enter into force, with respect to the Republic of Indonesia, on 15 February 2005.

Performance in Indonesia
here, here and here


The Court of Session, Scotland, has ruled that the operation of the Boards of Appeal of the European Patent Office is not subject to the European Convention on Human Rights and that, accordingly, decisions of those Boards are not open to review under that Convention even if their alleged effect is to deprive a patent owner of his property without giving him the opportunity to challenge the decision. This ruling, in ITP SA v Coflexp Stena Offshore Ltd, follows a sequence of events that make grim reading for any patent owner. Things started off well for ITP, when its patent was initially held valid by an EPO Opposition Division and was then held valid and infringed by Coflexip in proceedings before the Scottish courts. The patent was then held invalid, as a result of proceedings before the EPO's Board of Appeal that were strongly criticised in terms of their propriety.

The Court of Session cited with approval the decision of Jacob J. in the Patents Court in Lenzing AG's European Patent (UK) [1997] R.P.C. 245, where he said:

"This country has agreed with the other State members of the EPC that the final arbiter of revocation under the new legal system is to be the Board of Appeal of the EPO. Other States would be justly entitled to complain if we in this country were to ignore such a final decision ... The suggested course would be to: 'hijack an organisation to which [one sovereign State] and other States had given birth and subject it (contrary to the treaty terms) to its own domestic jurisdiction' per Bingham L.J. in Arab Monetary Fund v Hashim (No 3) [1990] 2 W.L.R.139 at page 164. One can put the matter another way: the EPO has an internal legal system of its own. This follows inherently as a matter of course from its own structure as an international organisation. And it is made explicit by Article 1. ...

Suppose the position were otherwise. Then so far as I can see there would be no limit on collateral attacks on decisions of the Board of Appeal... A party would be able to say that a Board had gone wrong to the extent of an excess of its powers for any of the kinds of reason set forth in that question: procedural misfeasance, error of law (including both misinterpretation of the Convention or a misreading of a patent claim or the prior art) acting in the absence of any evidence and so on might all be said to be otherwise than in accordance with the Convention. Parliament cannot had intended by those general words such a breach in the 'common system of law' created by the Convention".

The IPKat thinks this must be true. Yet it seems anomalous that the national patent laws of European's various nations must all operate in accordance with principles of human rights while no such check is placed upon the operations of the European Patent Office itself.

Patent hearings and human rights here
Do patents threaten human rights?
Patent for protection of human rights here


The IPKat's friend Tom O'Shea has drawn his attention to the following item.

MSNBC reports that the US Patent and Trademark Office is in danger of drowning in a sea of paperwork. Unless long-overdue reforms are put in place and the agency’s budget is expanded, it is reported, the current backlog of patent applications will escalate and the average time it takes to win a patent — now more than two years — will double in five years, according to the acting head of the agency, Jon W. Dudas. And that, he says, could have a chilling effect on innovation:

“At what point will venture capitalists feel like it’s no longer useful to invest in certain technologies because they don’t know that they’re going to get a patent and actually get a return on their investment?”.
The impact of allowing the patent logjam to worsen would be felt by more than just the companies and individuals currently waiting to hear the fate of nearly 500,000 patent applications that are collecting dust until an examiner can be assigned to review them.

According to John R. Allison, a professor of Intellectual Property Law at the University of Texas at Austin:
“Depending on the technology area, [review time] ranges from an average of about eight up to maybe 30 or so hours for biotech applications”.
The result is that some patents aren't as thoroughly reviewed as they should be. In the case of a seemingly minor patent — like the "Beerbrella" (U.S. Patent no. 6,637,447) or a method for using a tree swing (U.S. Patent #6,368,227) — there is probably no harm done. But if a duplicate patent is awarded for a far more lucrative and possibly unique idea, a court dispute could cost millions.

Private parties in multimillion-dollar patent infringement cases often have a much greater incentive — and can bring much greater resources to bear – than the examiner who originally issued the patent, said Allison. Someone sued for patent infringement, for example, may be able to conduct a more thorough search that finds prior examples of the technology or invention — successfully challenging a patent that its owner had counted on for big profits.

Money is one of the major reasons for the current patent logjam. In 1991 the financial burden of granting patents was shifted from taxpayers to patent applicants through the establishment of so-called user fees. But over time, those fees became a politically attractive source of funds to help balance the federal budget without raising taxes. So Congress began raiding the patent office piggy bank; as of last year, more than $650 million had been siphoned off to pay bills for other government functions. Meanwhile, the volume of patent applications has mushroomed. At the patent office, they call it “technology creep” — the explosion of new technologies, many of which didn’t exist 20 years ago, when most patent applications were evenly divided among electrical, chemical and mechanical inventions. Today, far more complex fields like semiconductors, biotechnology and, increasingly, entirely new areas like nanotechnology make up a much a bigger share of the agency’s workload. And the number of new applications continues to set records every year.

In the 145 years from its founding in 1790 until 1935, the U.S. Patent Office issued its first 2 million patents. It took just 41 years to grant the next 2 million patents. The next 2 million patents took only 23 years.

Today patent examiners have to slog through 50 percent more existing patents than they did 25 years ago; every new patent issued just adds to the pile that the next examiner has to search. And with more applications being filed, the pressure on examiners from applicants has increased, according to Ronald Stern, head of the Patent Office Professional Association, the patent examiners union. Exacerbating the patent office's struggle to keep up with an ever increasing number of applications is its own primitive technology. Despite the flood of patents issued each year for advances in collecting, analyzing and storing information, the office is still transitioning from a paper-based system that hasn’t changed much in 200 years. Although more than half of applications are now made electronically, the new system — which stores electronic images of paper-based applications — fails to take full advantage of electronic document handling.

In the meantime, the office isn't waiting for Congress to cough up more money. More than 1,000 employees now telecommute, saving office space. Operations housed in 18 buildings spread over a mile and half are being consolidated into some 2 million square feet in five linked buildings.

The IPKat thinks this nightmare scenario is an inevitable consequence of incompetence, ineptitude and underinvestment; after all, no other patent office in the world seems to be suffering in the same way. His friend Merpel, in contrast, wonders if the fact that the USPTO is being engulfed in all this innovative paper is a sign of the rampant success of the patent system as an incentive for inventing and investing.

The paperless patent office here
Patents for paper here and here
Swamped by paper here
Paper from swamps here


United States satirical magazine The Onion has published this piece on the single-handed closure of a Subway franchise. The IPKat, who appreciates the deadpan humour, wonders whether the owners of the Subway food franchise brand share the joke.

First Subway franchise in Iraq here; insurgency in Iraq here
"The words of the prophets are written on the Subway walls" here

Monday, 22 November 2004


Two items of interest from the Patent Office:

* One for all you job-hunting scientists out there – the Patent Office is looking for 6 new examiners for its 2005 intake. Those with electrical engineering, electronics, computer technology and telecommunications backgrounds are particularly welcome but biotechnologists are out of luck. One of the requirements of the job is to be flexible – the IPKat’s mind boggles…

* The Patent Office is conducting a review of its London operations. The current set-up was put into place before the internet was a part of everyday life and during a temporary boom in demand for court facilities and hearing rooms. However, the Office has provided reassurance that it intends to have a continued London presence. Comments and views are welcome addressed to The IPKat says “Get writing”.

More flexible ways to fill your day here
More reviews of London operations here


Here's another piece from this week's issue of The Lawyer. Dutch M&A heavyweight law firm Stibbe is to restructure its intellectual property department following the departure of two of its partners, former judge Jan Brinkhof and patent and trade mark expert Kurt Stöpetie.The pair are leaving Stibbe along with two assistants to set up their own technology and pharmaceutical law boutique on 1 January. The departures will leave Stibbe with just five fee-earners in its IP group, which will be folded into the firm’s litigation team.

Stibbe managing partner Joost van Lanschot is reported as having described the parting as "amicable", although he admitted the reason was a dispute over the prominence of IP at the firm.

"They felt the IP team should expand and we thought that the current size was ok. They concluded that their work would be better done outside Stibbe, and we will refer matters to them".
The IPKat has seen this all before. IP specialists feel frustrated when they feel they are just a small cog in a large machine, but equally they feel exposed and vulnerable when their boutique practices have to compete against full service law firms. The result is a sort of pendulum effect. In the US the swing is away from boutiques and specialist practices, while in the Netherlands it's in quite the opposite direction.

More boutiques here, here and here
Lethal boutiques here


The European Court of Justice (ECJ) may be tottering beneath the weight of cases referred to it from European Union Member States, but the European Commission still finds it necessary to accuse Sweden of failing to refer enough questions to the ECJ for a preliminary ruling. According to The Lawyer, the Swedes have referred just three cases to the ECJ since 2001, as against 155 from Germany, 122 from Italy and 57 from the UK. The Commission has issued a final warning letter, giving the Swedes two months to say how they will encourage more ECJ referrals.

The IPKat thinks this is a stupid overreaction. Why should parties in trade mark disputes, for example, have to pay extra for the privilege of waiting an extra two and a half years (more where the same case is referred twice to the ECJ) before it can be resolved? His mathematical friend Merpel adds that Sweden's population is just under 9 million: if her population were the size of the UK, a proportional increase would result in a most respectable 20 references to the ECJ.

Some Swedish cases which were referred to the ECJ: Adidas (on free movement of goods and detention of counterfeits), Lindqvist (on data protection) and Svenska Spel (on database right).


Sam Barron has brought two David-and-Goliath IP stories to the IPKat’s attention:

* This is London reports that the Lord Chancellor, Lord Falconer, is preparing to do battle with the Registry Trust, a not-for-profit organisation that lists County Court debt judgments. Lord Falconer wants to put the central register of court judgments out to tender. However, the trust is objecting, saying it has created intellectual property rights in the register. The IPKat sees a potential database rights case developing here, although it’s not clear whether the data would need to be abstracted from the trust’s database or if it could be obtained independently from court records.

* The BBC reports that the workers at Boddington’s Manchester brewery are trying to stop their brewery from being closed down by applying to have the Boddington’s name registered as a geographical indication. They’re pointing in particular to the fact that the beer has been advertised under the slogan “the cream of Manchester”. Said the union representative:

"When this came up two years ago, we were told that only the brand owners can apply. Now it seems that may not be the case with champagne being cited as a good precedent. Only some brands produced in the Champagne region of France can legitimately call themselves as such, but the special protection is based on geography and not brand ownership."
The IPKat isn’t sure how good a fit the Champagne precedent is in this case. In the Champagne case, the situation is analogous to lots of brand-owners getting together, rather than the workers seeking to get the designation protected. Also, there’d be an awful lot of geographical indications if merely advertising something in connection with the place it is manufactured makes a product eligible as a GI.

David and Goliath here, here and here

Sunday, 21 November 2004


Too tired after a night on the tiles, the IPKat had insufficient brain to do any real blogging tonight. But, not wanting to disappoint his friends, he thought he'd surf some of his favourite sites and bring news of some of the more interesting things he found on them. So ...

* The Register carries a long and lively article on Microsoft's attempt to enlist the support of the World Trade Organization in its battle against the free software movement (on which see here).

* Also in The Register, Bob Larkin's victory over the British Airports Authority in the pitched battle for control of the domain name.

* Findlaw tells us of a US bill to enable reporters to preserve the confidentiality of their sources, their notes, ptheir hotographs and other material.

* The BBC warns of a Lazarus-like virus that comes back from the dead (click here for the real Lazarus story -- it's a bit like revived copyright term in the European Union: click here for Paul Geller's great article on zombies and once-dead copyright works).

* Adbusters remind us that next Friday, 26 November 2004, is "Buy Nothing Day". If this doesn't bring Nike, Starbucks and Walmart to their collective knees, well maybe something else will.

* tells us of the forthcoming death of FM radio.

Saturday, 20 November 2004


Findlaw reports that cereal maker Kellogg Co. is suing to prevent competitor General Mills Inc., which for nearly 20 years has made "Cinnamon Toast Crunch" cereal, from registering the phrase "Cinnamon Toast Crunch" as a trade mark for use with a cereal-based food bar. In a federal lawsuit, Kellogg says it has long used "cinnamon toast", or a similar descriptive phrase, in connection with the same categories of food products as General Mills, including cereals and waffles.
Kellogg could be damaged if General Mills is granted the trade mark, the suit claims. Kellogg seeks a rejection of the trade mark application as well as unspecified damages from its competitor.

Minneapolis-based General Mills, which first applied for the trade mark in 2000, declined to comment on the lawsuit. But spokeswoman Marybeth Thorsgaard noted that a ruling earlier this year by a U.S. Patent and Trademark Office appeal board rejected Kellogg's claims, saying the company

"had not produced evidence showing that it had a commercial interest in the term 'cinnamon toast'".
The IPKat, left to his own imagination, would have assumed that 'cinnamon toast crunch' was a pretty descriptive sort of term for anything that tasted of cinnamon, had the texture of toast and crunched when you bit it. Also, it's a pretty deceptive term for anything that isn't. His feline friend Merpel reminds him that the breakfast cereal industry is famed for its devotion to descriptive terms, cornflakes being a good example of a trade mark that bit the dust for becoming generic.

Cinnamon toast crunch cocktail here
Cinnamon crunch French toast here
Scientific basis of toast crumb adhesion here


The IPKat has just received another free sample issue of Copyright World, published by Informa. Contents of this issue include the following:

* "What's It Worth?", by Consor's veteran IP strategist Weston Anson. Wes values music, celebrities and entertainment properties (among other things) for a living and this article features two case studies drawn from his practice;

* "The Celador Story", in which Jacqueline Nunan interviews Adrian Woolfe (MD of Celador, the company which controls and licenses 'Who Wants to be a Millionnaire?');

* "Around the World", by Marc David Peters and James Pooley (both of Milbank Tweed), considering the strategic advantages and disadvantages of suing individual file-sharers for copyright infringement.

The IPKat is quite enjoying his little supply of Copyright Worlds and hopes it continues ...

Friday, 19 November 2004


Yesterday's Daily Telegraph carries a piece detailing the activities of Pantone International, including the prominent role the company plays in delineating colours for trade mark purposes. On the same day, Pantone announced that it is launching a range of tableware based on the colour samples carried by travelling salesmen. Said a spokeswoman:

"With PANTONE UNIVERSE, we can now extend Pantone's color and trend expertise beyond the design professional and into products the consumer can enjoy. The Palette Plates collection is the first in a series of home products that Pantone will introduce in the coming months and years under the PANTONE UNIVERSE brand".
The IPKat marvels at this novel brand extention - from settling brand disputes to becoming a brand in itself.


BAILII -- the British and Irish Legal Information Institute -- has a wonderful website. This site houses many thousands of full text transcripts of decided cases from England and Wales, Scotland, Northern Ireland and the Republic of Ireland, as well as Privy Council cases. Where illustrations are referred to, such as diagrams in patent cases and logos in trade mark cases, BAILII usually supplies those too. But, roars the IPKat, there seems to be a bit of a problem with the patent cases. Only three cases have been added to the database for 2004. The patents page seems to be going into decline, since six cases were added in 2003, while ten were posted in 2002. Some patent cases end up as Chancery Division cases, which is no terrible thing if you consider that the Patents Court is part of the Chancery Division, but the IPKat is a tidy cat and he likes to see that everything's in its proper place.

More misplaced cases here


The Court of Appeal gave an interesting ruling on authors' rights in Nilsen v Governor of Full Sutton Prison [2004] EWCA Civ 1540, posted on the BAILII website.

Nilsen, a notorious killer who had been sentenced to concurrent life sentences for six murders on the basis that "life" meant "life and not the usual few years most UK murderers serve, wanted to publish the details of the murders in an autobiography. He gave his transcript to his solicitor with a view to its publication. Copies were made of it and Nilsen wished to have the transcript returned to him to do further work on it. The prison governor, following the guidance of the Secretary of State, refused to let him have it back, citing the Prison Standing Orders which banned prisoners from writing material about their crimes if that material was intended for publication. Nilsen's application for judicial review of the governor's decision was refused by Mr Justice Maurice Kay, so he appealed to the Court of Appeal.

The Court of Appeal dismissed Nilsen's appeal, holding that the trial judge's refusal of the application for judicial review was lawful. The powers conferred on the Secretary of State included the power to have regard, when regulating what a prisoner could do, to the natural incidents of penal imprisonment, which were susceptible to change. In considering what restrictions could properly be placed on prisoners as natural incidents of imprisonment, regard could be had to the expectations of right thinking members of the democracy whose laws had deprived the prisoners of their liberty. No penal system could readily contemplate a regime in which a murderer would be permitted to publish an article glorifying in the pleasure the crime had caused him. Nor could Nilsen complain that his human rights had been infringed. The case law of the European Court of Human Rights did not establish that it was disproportionate for imprisonment to carry with it some restrictions on freedom of expression, for those restrictions to have regard to the effect of that freedom in the outside world.

The IPKat condones neither murders nor the commercial exploitation of their deeds. However, he wonders whether it is necessary, in order to prevent the commercial publication of a criminal's memoirs, to prevent him from even gaining access to his own transcript so that he could work on it further: the process of writing can be a great form of comfort and therapy.

Nilsen's crimes here, here and here
Crimes worth writing about here, here and here


... while in Case C-91/04 The European Commission v Sweden, Sweden was condemned yesterday for its failure to implement exactly the same Directive (see the previous blog if you don't know what the IPKat's going on about). This time the text of the European Court of Justice ruling is available in both French and Swedish.

Notable Swedish interests in copyright and neighbouring rights here, here and here


The IPKat's translation watch continues to spot intellectual property cases from the European Court of Justice that are not being translated into English (or, in most cases, most of the other official languages of the European Union. Yesterday he spotted another one.

In Case C-143/04 The Commission v Kingdom of Belgium a three-man chamber of the Court ruled that Belgium had failed to implement Directive 2001/29 on harmonisation de certains aspects du droit d'auteur et des droits voisins dans la société de l'information (harmonisation of certain aspects of copyright and neighbouring rights in the information society). It's only a short ruling, so the IPKat assumes that even people who neither speak nor read French -- the only language in which the ruling appears -- will have no problem understanding it.

Famous Belgians with an interest in copyright and neighbouring rights here, here, here and here

Thursday, 18 November 2004


This won't change the world, but the IPKat is curious to know why it is that AIM ("The Makers of Europe's Leading Brands") is known in English as the European Brands Association and in German as the Europäiche Markenverband, but in French as the Association des Industries de Marque? Whatever happened to the "European" bit in the French version?

Curiosity kills the Kat, but satisfaction brings it back


The IPKat's friend Darren Smyth has drawn his attention to the following announcement by the European Patent Office:

European Patent Office recognises same-sex marriage whenever validly contracted in one of the member states

Munich, 17 November 2004 - The European Patent Organisation has come to a conclusion on the recognition of same-sex marriage whenever validly contracted in one of the member states.

In view of the difficulties inherent in this issue, the European Patent Office saw a need to initiate a consultation process with its member states. “On 28 October, EPO President Alain Pompidou received the position of the member states. The consultation process was already welcomed by the delegations", said Roland Grossenbacher, Chairman of the EPO's Administrative Council, its governing body.

The Administrative Council had urged the European Patent Office to treat same-sex marriages that have been validly contracted in one of the member states in the same way as it does heterosexual marriages.

The Office has committed itself, when interpreting the Service Regulations, to adopt the view expressed by the Administrative Council as soon as possible.
What does this recognition by the EPO mean? Do same-sex marriages that are recognised by the EPO have to be recognised by the Patent Offices of European Patent Convention Member States? Readers are left to draw their own conclusions.


The BBC reports that London-based Privacy International has called for camera phones to come fitted with a default flash, amidst privacy concerns. The watchdog points to the fact that the phones make it easier for cover pictures to be taken, though it is calling for regulation rather than a complete ban on the phones. Says PI's Director, Simon Davies:

“The misuse of phone cameras is becoming a real threat to privacy. Unless action is taken immediately there is a risk that social intimacy will disappear within a decade."

However, phone companies have argued that their phones pose no more threat than other technology that allows hidden pictures to be taken, such as camera keyrings.

The IPKat is licking his chops at the thought of all the lovely privacy/breach of confidence that the use of camera phones could lead to. He wonder though, by the time the flash has gone off, won’t it be too late to stop the photo being taken?

Hidden cameras – explore the possibilities here
How to take covert photos the easy way here

Wednesday, 17 November 2004


As an aid to those who work within the field of Community trade mark law, OHIM has added this potentially useful page entitled "Judgments of Community Trade Mark Courts concerning Community Trade Marks". While this facility is appreciated, the IPKat wonders if the time has now come to make it more useful to its users. The page lists just 30 cases so far, in the following format:

BE 10/02/03 FR (428 KB) Amazon - Summary (EN)
BE 03/10/02 NL (560 KB) Medianet - Summary (EN)
BE 19/04/02 NL (814 KB) Smirnoff Ice - Summary (EN)
BE 28/02/02 NL (884 KB) Vittel - Summary (EN)
BE 07/09/00 NL (895 KB) Black Barrel - Summary (EN)
DE 20/01/04 DE (5,8 MB) THE HOME DEPOT - Translation (EN)
DE 28/11/02 DE (587 KB) Goldbarren (3D)
DE 26/07/01 DE (1.5 MB) MOZART
FR 21/10/03 FR (864 KB) Shampoo by Michel Dervyn
FR 09/07/03 FR (501 KB) CARVIEW
FR 24/06/03 FR (640 KB) Martinelli
FR 05/03/02 FR (811 KB) Hello Kitty
AT 29/01/02 DE (794KB) MANPOWER
AT 13/03/02 DE (1 MB) OPUS ONE
SE 11/02/04 SV (356 KB) Real Madrid - Summary (EN)
SE 28/05/03 SV (919 KB) Concerning: CTM 57273, 57315 and 57778 (figurative marks) - Summary (EN)
SE 28/11/02 SV (159 KB) NOKIA, XPRESS-ON - Summary (EN)
SE 31/10/02 SV (619 KB) COMBI - Summary (EN)
SE 26/01/01 SV (670 KB) ECDL - European Computer driving licence - Summary (EN)
SE 11/12/00 SV (490 KB) ECDL - European Computer driving licence - Summary (EN)
UK 29/06/04 EN (813 KB) Bar-X, OXO
UK 24/03/04 EN (176 KB) Compass
UK 17/03/04 EN (60 KB) Websphere
UK 15/01/04 EN (37 KB) SPIRIVA
UK 12/08/03 EN (37 KB) SPIRIVA
UK 12/03/03 EN (60 KB) Prudential
UK 06/09/02 EN (59 KB) PEBBLE BEACH
UK 31/07/02 EN (73 KB) Levis
UK 18/12/00 EN (126 KB) Mercedes-Benz
UK 12/10/00 EN (58 KB) DECON
UK 10/12/99 EN (1 MB) VIAGRA
The IPKat's thoughts on this facility are as follows:

* Parties' names. It would be helpful to tabulate also the names of the parties. Apart from the general interest in knowing who is going to court in CTM disputes, it will eventually be useful, when the same CTM gets litigated on a frequent basis, as a means of telling the cases apart (lawyers from Common Law countries generally refer to cases by the parties' names anyway, so this would be of assistance to them);

* Legal grounds. At present there is nothing to indicate whether the CTM is being litigated in infringement proceedings, in cancellation proceedings, or in transactional disputes involving assignments or licences. The utility of this information is beyond question.

* Marks in dispute. Where the case involves different signs (for example where the owner of a CTM is suing the user of an allegedly similar sign for infringement), it would be handy for the browser to know the identity of both marks.

* File size. The IPKat wonders how many people either want or need to know the size of the file that contains the note or the transcript of the decision in each case. Information concerning size of file is not thought necessary for OHIM's lists of its own decisions from the Boards of Appeal, the Opposition Division or the Cancellation Division.

* Word search. It is now common for databases of legal cases to be searchable by individual words (a good example is BAILII in the United Kingdom -- a vastly larger publicly accessible database than OHIM's is at present). The addition of a word search facility would enable users to pick out specific terms without the need to read through all the cases on the list.

* Communications. There is nowhere on the page that you can click and tell OHIM of any case you know about and that isn't on the list.

The IPKat says:
"This service is desirable and may prove to be very important in time and OHIM should be thanked for it. However, if OHIM makes it more useful and user-friendly at this early stage, when the number of listed cases is so small, it may save itself a lot of time and effort in changing the details of listed cases in the long run".
His feline friend Merpel adds:
"If you know of a CTM case heard by a national court but which is not on OHIM's list, please either notify OHIM directly or send it to the IPKat, who will forward it with his compliments".

Tuesday, 16 November 2004


The Motion Picture Association of America (MPAA), a trade group representing seven major movie studios, has filed a bunch of lawsuits against individuals they say are offering pirated copies of films using Internet-based peer-to-peer file sharing programs, reports Findlaw. As yet it is not known how many defendants were sued or where the lawsuits were filed. The group also did not immediately make available a copy of the complaint. The lawsuits reportedly seek injunctions against the defendants (US copyright law also provides for penalties of up to $30,000 for each motion picture traded over the Internet, and up to $150,000 if such infringement is shown to be willful).

The MPAA is using a computer program that sniffs out movie and music files on a user's computer, as well as any installed file sharing programs. Information detected by this program could be used to remove any "infringing movies or music files" as well as removing file-sharing programs.

The IPKat observes that the tactic of pursuing individuals, first pursued by the Recording Industry Association of America (RIAA), appears to be bearing fruit. The notion that downloads of commercially released recordings should be paid for by someone, somewhere, is becoming gradually more widely accepted by computer users, particularly now that a DRM culture is delivering music more quickly and cheaply to consumers than did the old over-the-counter sale of records, tapes, CDs and DVDs. But individuals have to be big enough nuisances before they
arer worth suing: for now, the small-scale infringers probably remain safe from legal action.

The hunter and the hunted? Click here, here and here


The IPKat has notice the following IP vacancies which need to be filled:

-The Edinburgh University AHRB Centre for Studies in Intellectual Property & Technology Law is looking for a Research Fellow to research the international role of legal and ethical principles in guiding and regulating modern genomic research.

-Matrix Chambers wants to recruit established media law practitioners with at least 5 years experience.

-Wilberforce Chambers, home to some jolly good IP lawyers, is looking for a marketing manager.

The IPKat says get those CVs ready at the double!


The European Court of Justice has just ruled this very morning on Case C-245/02 Anheuser-Busch v Budĕjovický Budvar, národní podnik. This ruling follows a reference in proceedings between the US and Czech Budweisers concerning the labelling used by Budvar to market its beer in Finland which, according to Anheuser-Busch, infringed its Finnish BUDWEISER, BUD, BUD LIGHT and BUDWEISER KING OF BEERS trade marks.

The dispute

Anheuser-Busch owned the Finnish trade marks (mentioned above) which were registered with priority from not earlier than 24 October 1980. Budvar registered its trade name in the Czechoslovakian commercial register in February 1967, in Czech (‘Budĕjovický Budvar, národní podnik’), English (‘Budweiser Budvar, National Corporation’) and French (‘Budweiser Budvar, Entreprise nationale’). Budvar also owned the Finnish trade marks BUDWAR and BUDWEISER BUDVAR, registered in May 1962 and November 1972 respectively, but which the Finnish courts later declared forfeit for failure to use them. In this action, which was commenced in 1996, Anheuser-Busch sought to prohibit Budvar from continuing or recommencing the use in Finland of the trade marks BUDĔJOVICKÝ BUDVAR, BUDWEISER BUDVAR, BUDWEISER, BUDWEIS, BUDVAR, BUD and BUDWEISER BUDBRAÜ for beer, plus an order that all labels contrary to that prohibition be removed and that Budvar pay compensation for any infringement of its trade-mark rights. Anheuser-Busch argued that the signs used by Budvar could be confused with its own marks since both sets of signs and trade marks designated identical or similar types of goods.

In the same action, Anheuser-Busch sought a further order prohibiting Budvar from using in Finland, on pain of a fine, the trade names ‘Budĕjovický Budvar, národní podnik’, ‘Budweiser Budvar’, ‘Budweiser Budvar, national enterprise’, ‘Budweiser Budvar, Entreprise nationale’ and ‘Budweiser Budvar, National Corporation’, on the ground that those names were liable to be confused with its trade marks.

Budvar denied trade mark infringement and contended that the signs it used in Finland could not be confused with Anheuser-Busch’s trade marks. It also submitted that, with respect to the sign ‘Budweiser Budvar’, the registration of its trade name in Czech, English and French conferred on it, pursuant to Article 8 of the Paris Convention, a right in Finland earlier than that conferred by Anheuser-Busch’s trade marks and that their earlier right was therefore protected under that article.

The trial court held that the beer-bottle labels used by Budvar in Finland and, in particular, the dominant sign appearing on that label, ‘Budĕjovický Budvar’, especially when taken as a whole, were so different from Anheuser-Busch’s trade marks and labels that the goods in question could not be confused. It further held that the sign ‘BREWED AND BOTTLED BY THE BREWERY BUDWEISER BUDVAR national enterprise’, appearing on the labels below the dominant sign and in considerably smaller letters, was not used as a mark but merely indicated the trade name of the brewery. It found that Budvar was entitled to used that sign since it was the registered English version of its trade name, had been registered as such and was, at least to a certain extent, well known in the relevant trade circles when Anheuser-Busch’s trade marks were registered, with the result that it was likewise protected in Finland under Article 8 of the Paris Convention. On appeal, the Helsinki Court of Appeal ruled that there was insufficient evidence to prove that the English version of Budvar’s trade name was, at least to some extent, well known in the relevant trade circles in Finland before registration of Anheuser-Busch’s trade marks. Accordingly, it set aside the judgment in so far as that court held that the English version of Budvar’s trade name enjoyed protection in Finland under Article 8 of the Paris Convention. Both parties appealed to the Supreme Court, relying on the arguments which they had already put forward at first instance and on appeal. The Supreme Court observed that the ECJ has jurisdiction to interpret a provision of the TRIPs Agreement if it may be applied both to situations falling within the scope of national law and to situations falling within the scope of Community law, as is the case in the field of trade marks. According to the Supreme Court, the trade mark provisions of TRIPs relate to a field in which the Community has already adopted legislation and which therefore falls within the scope of Community law. By contrast, the Community has not, as yet, adopted legislation relating to trade names. As regards the temporal applicability of TRIPs to this case, the Supreme Court observed that, in accordance with TRIPs Article 70(1), that agreement is applicable in so far as the infringement of intellectual property rights continues beyond the date on which TRIPs became applicable with regard to the Community and the Member States. It also noted that TRIPs Article 70(2) provides that, save where otherwise provided, that agreement gives rise to obligations in respect of all subject-matter existing at the date of application of the TRIPs Agreement to the Member in question, which is protected in that Member on that date or which meets or comes subsequently to meet the criteria for protection laid down in that agreement. Accordingly the Supreme Court referred a number of questions relating to the applicability of TRIPs to this sort of dispute for a preliminary ruling.

The ruling

The ECJ ruled as follows:

1. The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) applies, in the event of a conflict between a trade mark and a sign alleged to infringe that trade mark, where that conflict arose before the date of application of the TRIPs Agreement but continued beyond that date.

2. A trade name may constitute a "sign" within the meaning of the first sentence of Article 16(1) of TRIPs. That provision is intended to confer on the proprietor of a trade mark the exclusive right to prevent a third party from using such a sign if the use in question prejudices or is liable to prejudice the functions of the trade mark, in particular its essential function of guaranteeing to consumers the origin of the goods.

The exceptions provided for in TRIPs Article 17 are intended, inter alia, to enable a third party to use a sign which is identical or similar to a trade mark to indicate his trade name, provided that such use is in accordance with honest practices in industrial or commercial matters.

3. A trade name which is not registered or established by use in the Member State in which the trade mark is registered and in which protection against the trade name in question is sought may be regarded as an existing prior right within the meaning of the third sentence of TRIPs Article 16(1) if the proprietor of the trade name has a right falling within the substantive and temporal scope of that agreement which arose prior to the trade mark with which it is alleged to conflict and which entitles him to use a sign identical or similar to that trade mark.
The IPKat thinks this decision is right and that TRIPs -- to which both the EU's Member States and the EU in its own right subscribe -- is entitled to receive a broad and inclusivist construction. He is now curious to see how the referring Court will now decide the dispute, but he is also a little anxious. Finnish court judgments are notoriously short on verbal reasoning when compared with the courts of many other European countries and we may not see much of the reasoning that lies behind the actual decision.

Battle of the Buds here , here and here
Non-combatant Buds here and here
Bosom Buddies here, here and here (nothing rude!)
Make your own Bud here


WIPO has just informed the IPKat that the Azerbaijani Republic has become a member of UPOV (the International Union for the Protection of New Varieties of Plants) and that Azerbaijan will be implementing the UPOV Convention with effect from 9 December 2004.

More on Azerbaijan here
Plants of Azerbaijan which are of potential medicinal value here
Deliver plants to Azerbaijan here

Monday, 15 November 2004


Findlaw reports that confectionery and gum manufacturer Wm. Wrigley Jr. Co. has announced that it has agreed to buy a number of confectionery brands, including Life Savers and Altoids, from Kraft Foods for $1.48 billion. The agreement between the two Chicago-based companies also covers the Creme Savers brand, as well as Trolli gummy candies, Sugus candies and other local and regional brands in the United States, Europe, Indonesia and Thailand.

Hershey Foods Corp., Mars Inc., Nestle SA and Cadbury Schweppes PLC were reportedly among the companies vying for the Kraft confections package. Said Bill Wrigley Jr., the company's chairman, president and CEO:

"There are only a handful of confectionery brands around the world that have the combination of heritage and vitality that can match up with Wrigley brands. Altoids and Life Savers are two such brands".
Wrigley officials said the all-cash purchase price would be partially offset by about $300 million in cash tax benefits associated with amortization of intangible assets. The net acquisition cost of $1.18 billion represents 2.4 times estimated 2004 sales. The sale unloads brands that generated roughly $500 million in sales for Kraft and just less than $100 million in earnings before interest, taxes, depreciation and amortization.

Kraft, with $31 billion in sales, decided recently to cede most of its confection brands in order to concentrate its sales force on what food executives call the "centre" of the store -- the traditional supermarket aisles stocked with blocks of Kraft cheese, boxes of Nabisco cookies and cans of Maxwell House coffee.
"By enabling us to better focus our resources, the sale should create value for Kraft, as well as our employees, customers and shareholders,"
said Kraft chief executive Roger K. Deromedi. Analysts said Wrigley had about 7.8 percent of the U.S. confectionery market before the sale was announced. Kraft had about 4.7 percent.

The IPKat says that's an awful lot for Wrigleys to swallow.

Click here for more on Altoids, adenoids, asteroids and aneroids.
More on Life Savers here, here (seems to be a Nestle brand in Australia) and here


Copyright meets branding in this story from the BBC. Big brands such as NatWest, Renault and a whole host of phone companies are advertising their goods and services on P2P websites which facilitate the exchange of illegally downloaded music (including the delightfully named eDonkey), much to the displeasure of legitimate music downloading sites and the British Phonographic Industry. The attractions of this approach are great: purveyors of “cool” products can reach their target audience easily and via their favourite media. However, they’ve been condemned for providing monetary support to sites that make illegal downloading possible.

The IPKat says it seems that advertisers consider it to be advantageous rather than detrimental to be associated with such illegal activity. This suggests that the recording companies who oppose unofficial downloading haven’t won the hearts and minds of the public.

More electric animals here, here, here and here.


This came out today from the European Commission's "The Week in Europe" circular:

EU strengthens fight against piracy and counterfeiting beyond its borders

In an effort to halt the increase in piracy and counterfeiting the European Commission has adopted a strategy for the enforcement of intellectual property rights in third countries. The action plan focuses on vigorous and effective implementation and enforcement of existing intellectual property rights (IPR) laws. It proposes to identify priority countries where enforcement actions should be concentrated. Technical cooperation and assistance to help third countries fight counterfeiting will be highlighted but the Commission will not hesitate to trigger all bilateral and multilateral sanction mechanisms against any country involved in systematic violations.

The Commission will foster awareness raising of users and consumers in third countries and support the creation of public-private partnerships for enforcement. EU trade Commissioner Pascal Lamy said: “Piracy and counterfeiting continue to grow every year and have become industries, increasingly run by criminal organisations. This is a serious problem for us but also for third countries whose companies are also suffering the consequences of violation of their own intellectual property rights. Some of these fakes, like pharmaceuticals and foodstuffs constitute an outright danger to the public, while others undermine the survival of EU’s most innovative sectors. Adopting new legislation on intellectual property is one thing. But devising the right tools to enforce it is another. This is now our priority.”

Click here and here for more information.

The IPKat applauds these fine words, but wonders whether anything will come of them. Will the Commission copy the United States approach and publish regular "most hated nations" lists, or is there some more subtle way? And will the Commission be tripped up by the WTO if it is seen as treating some third countries in a prejudicial manner? Let's watch and wait.


Volume 6, issue 4 of Lawtext Publishing's Bio-Science Law Review has now been published. Apart from Part II of Margaret Llewelyn's "From GATT to G.A.T.T. - Fifty Years of European Bio-IP" (how the IPKat dislikes the serialisation of articles -- and he's not the only one!), there are two other major features:

* "Biogenerics: a Move Towards Regulation of the Unknown" by Zelda Pickup and Andrew Whitworth (CMS Cameron McKenna), on the European Medicines Agency's guidelines for showing that biogenerics have a similar profile to original biopharmaceutical products;

* "GMO Regulation in Europe: a Primer for Patent Applicants" by London barrister Tim Sampson.

Read and enjoy!


The IPKat is glad to see that in the recent Storck cases, pictures have been included in the judgments made available on Curia, the ECJ's website. This will make it so much easier to understand cases involving figurative and 3D marks, not to mention design cases when they finally make their way to the CFI and ECJ.

Sunday, 14 November 2004


On Friday 12 November the IPKat blogged the arrival of John Welch's TTABlog, carrying decisions of the USPTO's Trademark trial and Appeal Board -- and comments on them. John has now emailed him to confirm that blog's address, since the previous hyperlink wasn't working. The proper address for this site is Just click here for it.


The IPKat brings to your attention a decision of the UK Trade Marks Registry based on some rather odd facts. The mark SCIP-r-NOSCO was placed on the trade mark register with the proprietor named as SCIP-r-NOSCO. The opponent applied for the mark to be declared invalid on bad faith grounds since, at the time that the trade mark was applied for, there was no legal entity called SCIP-r-NOSCO. The registered proprietor stated that Scip-r-Nosco had been erroneously registered as the proprietor and in fact the mark should have been registered in the name of the North of Scotland Voluntary Organisations Training Forum, a registered organisation. The registered proprietor was in the process of rectifying its registration, which would entail no change of ownership since the two were the same organisation.

Despite the fact that there was no suggestion that the fault in the registration was anything but a genuine mistake, the registration was cancelled on bad faith grounds. Since the name entered on the form TM3 as the applicant was not a legal entity, the applicant identified on the form could not have had the necessary bona fide intention to use the mark at the time that the application for registration was filed. Bad faith covers the situation where at the time of the application the applicant does not have a bona fide intention to use a trade mark in relation to the goods or services for which registration is sought. This is so even when the lack of intention to use arises from a mistake and is not intended to mislead anyone, as was the case here. Thus, when an applicant does not legally exist, it must equate with a finding that the application was made in bad faith.

The IPKat agrees with the result of this decision. If you don’t exist, you can’t use a trade mark. In any event, applicants should check that their forms hare correctly completed before they file them. However, it sounds a bit artificial to call this type of behaviour bad faith.

More people that don’t exist here, here and here

Saturday, 13 November 2004


The November 2004 issue of Sweet & Maxwell's monthly journal European Intellectual Property Review has now been published. It contains, among other items, the following pieces that caught the IPKat's eye:

* "Anti-competitive Refusals to Grant Copyright Licences: Reflections on the IMS Saga" by National University of Singapore Assistant Professor Burton Ong (links to the European Court of Justice's IMS cases here);

* A case comment by John Hull (Denton Wilde Sapte) on the curious no-right-of-reply case of Tillery Valley Foods Ltd v Channel 4;

* "Cherry Picking in Cross-border Patent Infringement Actions: a Comparative Overview of German and UK Procedure and Practice" by Jan Klink (Edwards Geldard).

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