A peer reviewer writes ...

JIPLP relies heavily on the expertise, enthusiasm and diligence of its peer reviewers. Once such reviewer, whose comments and suggestions have been warmly welcomed by contributors, writes about his experiences:

The Journal of Intellectual Property Law & Practice is a very reliable reference for students and IP professionals alike and it was a valuable study companion during my LL.M course last year. I particularly appreciated its concise and clear writing-style as well as the extensive range of topics tackled every month. Becoming a peer-reviewer was thus for me an occasion to contribute to the development of one of my favourite journals and to ensure that the next generation of students benefits from the most cogent analyses of complex problems, where legal concepts are tangled in a web of technology. I also saw my participation in the peer-review process as a smart and proactive way to stay informed of the latest developments in the IP field and to deepen my knowledge on many topics that interested me when I was studying.

Peer-reviewing is not time-consuming and, in terms of one's personal commitment, it is very flexible. You can participate in the peer-review process according to your availability and/or to your knowledge of the topic addressed by the article which you have been asked to review. It is entirely up to you. Peer reviewers have two weeks to review an article, which gives you enough time to do it, and there are no compulsory requirements to follow when writing your review. To my mind, peer-reviewing a means issuing an informed opinion on an article and treating the author with respect. That’s why I always take my time to understand the subject tackled in the piece I have to review. In the process I seek to refine my knowledge of the subject as well as my own writing skills, which is very gratifying.

In retrospective I am gaining more from my participation as peer-reviewer than the time I have spent in reviewing a few articles. I have been learning a great deal on topics that interest me and receive the consideration of a dedicated editorial team. Peer-reviewing has helped me to move forward with my own career and to get a better idea of what I want to do. I also have the feeling that I now truly belong to the IP community. Finally, every time I submit my opinion on an article, I feel as if I am an invisible helping hand, making the publication of JIPLP possible -- and this is the best reward of all.

Grégoire Marino has been a peer-reviewer since November 2009.

Still more articles in search of an author

Here is another list of topics on which JIPLP would be delighted to receive articles. If any one of them appeals to you, please email me here and let me know. As usual, general guidance for contributors can be found on the official JIPLP website here.

* Proposals to bring fashion design within the ambit of United States law -- what will they mean to designers, manufacturers, retailers and consumers? [Taken]

* The cases for and against requiring foreign applicants for registered rights to instruct a local professional representative [Taken];

* Issues arising from the need to dispose of infringing stock;

* Roving injunctions and John Doe orders against unidentifiable defendants in IP infringement proceedings;

* Potential liability of landlords and lawful occupants of premises for infringements that take place on them -- how to establish it and how to avoid it;

* When can a well-known person monopolise his surname in Europe? A simple flowchart of the court's logic in Case C-51/09 P Barbara Becker v Harman International, OHIM [Taken].

* Guarding against a failed right -- if, as some have said, the sui generis database right in Europe will be abolished -- what precautions should rights owners take?

* Initiating IP litigation in India: points for foreign plaintiffs to ponder [there's a mirror image article here too, on how best an Indian defendant can handle an action brought against it in India by a foreign litigant];

* The moral right of an employee of a professional firm to be known and recognised as the author of work that is signed off and sent out by a partner or manager of the firm [Taken];

* But what legal means, if any, can a person who is known to the public only by a pseudonym enforce the right to control or prohibit the unauthorised publication of that person's real name?

L'Oréal v Bellure: defending the ECJ against Lord Justice Jacob

In an earlier post, this weblog reported that a critical article in the Journal of Intellectual Property Law & Practice (JIPLP) was considered with approval by Lord Justice Jacob in L'Oréal v Bellure, in which the learned judge poured out his wrath upon the Court of Justice of the European Union for its approach to trade mark infringement.

In this post, we reproduce a powerfully-articulated response to Lord Justice Jacob by the distinguished German intellectual property practitioner and scholar, Gert Würtenberger (a partner in Wuesthoff & Wuesthoff, Munich, and founder member of the JIPLP editorial board). Dr Würtenberger's piece has already been been published online on the JIPLP website and will appear in the October 2010 issue. However, on account of its importance and general interest, it is published on this weblog too:

L'Oréal v Bellure: An Opinion

On 21 May 2010, the Court of Appeal of England and Wales rendered an outspoken decision in L'Oréal SA and others v Bellure NV and others [2010] EWCA CEV 535. I would like to take this opportunity to pass comment on it.

In contrast to judgments rendered by courts in civil law countries and, even more so, those rendered by the General Court and the European Court of Justice (ECJ), English judgments are characterized by the personal views of the judges deciding the case. As these are a strong expression of the personal views of the deciding judges, they give—at least from the perspective of a Continental lawyer—much clearer guidelines for future cases. With regard to the judgments rendered in light of answers of the ECJ to questions referred to it, the disagreement of English judges with answers of the ECJ and the duty of the national judge to follow the same provokes English judges even more to express their personal views. One of the most striking examples from the recent past is the Court of Appeal's judgment in the ‘smell-alike’ case of L'Oréal SA v Bellure, in which Lord Justice Jacob emphasizes and gives grounds for the court's deep concerns against the judgment of the ECJ. Lord Justice Jacob expresses his deep reservations regarding the court's decision for reasons of impediment to right of free speech, the impact on the freedom of trade, and the consequences of the ECJ's decision, resulting in a more ‘protective’ approach to trade mark law in comparison to other major trading areas or blocks. Moreover, the English court expresses its regret that the ECJ did not address the competition aspect of what the court calls ‘riding on coat-tails’.

I will not discuss each individual aspect of these points of criticism, but feel urged to respond to all of them from a more general perspective. While there is no doubt that the perspectives of right of free speech, freedom of trade, and scope of protection of a trade mark are overriding principles which influence a dispute between a trade mark owner and its competitors, in my opinion, one essential aspect has been omitted from Lord Justice Jacob's considerations: the interest of the trade mark owner. The judgment conveys the impression that the prevailing task of a trade mark is to serve the consumer. This may be the consequence of the use of a trade mark in trade, but it is not the prevailing purpose of a trade mark. The task of a trade mark is to accentuate the producer's goods from the mass of unknown products and to establish a communication channel to actual or potential buyers and users of the product. It is a communication channel for the advantage of its owner, however, with the resulting consequences that the addressed user or buyer may obtain information regarding the product irrespective of whether that information is objective or purely subjective. It is an investment by the trade mark owner which is fundamental to the successful promotion and sale of its goods and/or services.

Trade mark protection is protection of essential investments in a company and its trade connections. The period of grace granted to a registered trade mark for the first 5 years of its existence, protecting against risk of confusion developing into encompassing protection for well-known and famous trade marks, independent of any risk of confusion, is clear proof of the legislative purpose of granting trade mark protection. It ends where legitimate interests of the society as such—or of individuals touched or even negatively influenced—and a balancing of those interests requires restriction of the rights of the trade mark owner. It is this balancing of interests which not only renders the legal system reliable but allows anyone who wishes to invest in the acquisition of a registered right and its development on the market to decide what to do and how much capital should be invested. To regard the ‘poor consumers’ as the ‘losers’ in consequence of the ECJ's decision indicates, in the same manner as the finding that ‘consumers are not stupid’, ‘as they will not see the cheap copy as being the same in quality as the original’, but ‘will see it for what it is and no more’, that the decision obviously lacks the necessary balance from the English court. It did not seriously consider the resulting impact on trade mark owners, had the ECJ come to a conclusion which the English court had wished. This is the more astonishing as His Lordship, summarizing the factual findings in the earlier judgment of the English court, mentions that the defendants got a major promotional advantage from using such lists. It is precisely this fact which raises the question: Can the right of free speech and the freedom to trade be justification forallowing a competitor—who has not attempted to develop perfumes and trade marks and to promote them, as L'Oréal and the other plaintiffs have probably done—to obtain a major promotional advantage of the investment of the plaintiffs by using comparison lists? The producer of the ‘smell-alike’ products is not prevented from promoting such products with the same effort and investments as the plaintiffs; nor is such a producer prevented from trading in such goods. To bar a trader from saying ‘my goods are the same as brand X’ (famous registered trade mark) but at half the price, ‘has nothing to do with freedom to trade’ or, putting it in the words of the ECJ, with undistorted competition. In contrast, giving a competitor such freedom would distort trade as it would allow competitors to seek out successful or, in particular, famous trade marks in order to emphasize certain features of their own products. Admittedly, it may sometimes be hard to enter a market which is dominated by certain brand owners. It is, however, not the task of trade mark law to engender competition for new products in a manner which makes market entrance easier. Referring to well-established trade marks in a market with an abundance of competing products is a striking example of free riding ‘comparison’ which clearly distorts competition to the detriment not only of the owners of the well-known products but of all producers of competing products.

As Lord Justice Jacob correctly pointed out in the preceding judgment, the question involved in Bellure, as well as in the earlier O2 case, is how competitive the law allows European industry to be. The answer to this question may, however, be based only on encompassing consideration and the weighing up of all the interests involved and not only those of competitors and customers. This is the aspect which is clearly missing in Lord Justice Jacob's decision.

Henry replica sucks

Author: Peter Groves

Numatic International Ltd v Qualtex UK Ltd [2010] EWHC 1237 (Ch) Chancery Division (England and Wales), 28 May 2010

Citation: Journal of Intellectual Property Law & Practice, doi:10.1093/jiplp/jpq106

Although the defendant had taken care not to infringe any rights in the design for the Henry vacuum cleaner, its replica cleaner nevertheless amounted to passing off.

Legal context

The law on passing off gives a trader a remedy against others who appropriate its reputation. In the classic formulation, Lord Oliver of Aylmerton summed up the requirements of the law in three propositions:

• the plaintiff must establish a reputation;
• there must be a misrepresentation by the defendant (not necessarily intentional);
• there must be resultant damage or (in a quia timet action) likelihood of damage to the plaintiff's goodwill or reputation, arising from the erroneous belief caused by the misrepresentation.

In Hodgkinson & Corby Ltd v Wards Mobility Services Ltd [1995] FSR 169—the ROHO cushion case—it was invoked (unsuccessfully, on the facts of the case) to protect an inflatable cushion designed to make life more tolerable for wheelchair-bound people.

The judgment also considers the conditions for the grant of a quia timet injunction, and the treatment of survey evidence.

Facts

The claimant is the manufacturer of the highly-successful Henry vacuum cleaner, distinguished by its tub shape, black ‘bowler hat’ lid, name and human face (comprising eyes and mouth decals, the hose forming a distinctly elephantine nose). The defendant has for many years traded in vacuum cleaner spare parts, originally as George Hulme (Stockport) Limited under which name it was sued for copyright infringement some 30 years ago (Hoover plc v Hulme [1982] FSR 565), and latterly under its present name in which guise it has been involved in design right litigation with Dyson (see Dyson v Qualtex [2004] EWHC 2981 (Ch)).

In 2008 Qualtex decided to enter the vacuum cleaner market with a Henry ‘lookalike’. They had concluded that provided they chose a design in which all the myriad rights that can protect a design had expired, and avoided using any registered trade marks, they would be safe. They chose the 1997-model Henry as their starting point.

Qualtex engaged solicitors to approach Numatic to apprise them of this decision and to confirm that no rights would be infringed, stressing that they would not use the Henry name or the face, or anything confusingly similar to either. Numatic's patent attorneys responded with a mention of passing off, describing Henry's appearance as ‘quite simply, iconic’. They were disinclined to engage in a hypothetical discussion, requesting undertakings from Qualtex which they declined to give them.

Numatic then instructed solicitors, who asked for samples instead of the undertakings previously demanded and expressed Numatic's reluctance to assist Qualtex with the design of their product.

Some 11 months later, hostilities reopened with a somewhat aggressive email from Mr Hulme of Qualtex to his opposite number at Numatic, asserting that what they (Qualtex) were about to show at a cleaning equipment exhibition was not the stuff of a passing-off action. In fact, Qualtex had decided to replicate one of Numatic's commercial vacuum cleaner designs rather than that of Henry: its tub was deeper and it had a circumferential skirt at the bottom, it lacked face (other than the nose) and branding, but only an aficionado would have appreciated the difference.

Although Qualtex argued that what they had shown was a prototype, they did secure some orders and advised their supplier in China that they had customers interested. Numatic's solicitors commissioned market research, eventually writing to Qualtex telling them that they were taking witness statements and asking for undertakings. Qualtex's new solicitors replied that the product was intended primarily for commercial use: one particular theme that runs through the dispute is the point that the machines might be supplied without branding, so the buyer could apply their own identifiers – perhaps as a badge of origin, but more likely as a precaution against their employees running off with the machines. At that point, Numatic commenced proceedings, and despite Qualtex having shifted their attention to producing a new design completely free from passing off worries, the matter proceeded inexorably to trial to secure the power of undertakings to the court and for the matter of costs to be determined.

Analysis

The action was a quia timet one, in that the claim was that the claimant was likely to suffer damage. On the facts there was a threat to make the Henry replica, but that threat did not continue (the judge, Floyd J, found) after service of the defence, which contained an undertaking not to sell the prototype, with a carve-out in the interim injunction granted shortly thereafter by Sales J to enable the defendant to sell 100 machines which had been supplied to its Irish operation. Qualtex offered no undertaking to the court (which would have been an admission of liability) but, as the judge said, it would be wholly inconsistent with the defence for them to revert to the Henry replica. Whether that would mean that Numatic would not get their injunction was something that fell to be argued about after the trial.

Evidence of confusion was provided by market research surveys in which consumers had been asked questions, which yielded a number of witness statements and eventually a smaller number of witnesses. There was criticism of the survey, with leading questions suggesting to respondents that the product about which they were being questioned was one that the might have seen on the market (‘have you got one?’) or which was known by a name (‘can you tell me what it is called?’): a neutral form of words is required. Nevertheless, there was sufficient evidence to demonstrate that deception might be expected to take place: consumers would perceive the Qualtex machine as being a member of Henry's family.

As for the matter of passing off, the question for the judge was whether the replica, devoid of facial features (save for the unavoidable nose) and Henry name, amounted to a misrepresentation. There was no real doubt that Numatic had a protectable goodwill and reputation in the combination of features that made Henry what it was. They had educated the public to recognise the anthropomorphic character and to identify it with a particular source of goods. The omission of the name and face was not enough to avoid a passing off – the overall shape and the black bowler were the indicia of the real thing in the public eye.

Practical significance

The case reminds us that no area of IP law is an island entire of itself, and a clearance exercise that omits a relevant area of law is a waste of time. Design protection has a finite life. For the unregistered variety life is short, but the design may with care become evergreen as the crucial point of reference for consumers searching for specific goods. Moreover, passing off requires no intention on the part of the defendant: reciting the mantra ‘I am not trying to pass off my goods as yours’ affords no defence.

September 2010 JIPLP now online

The September 2010 issue of the Journal of Intellectual Property Law & Practice (JIPLP) is now available to subscribers online. Anyone, whether they subscribe or not, can check out the contents of this issue here. If you are wondering why the Editorial, "A summer of anticlimax", has such a strange title, that's because it was written shortly after the US Supreme Court ruling in In re Bilski was released. It reads as follows:

"A summer of anticlimax"

When penning an editorial which will be read some weeks after the event, the mood of the moment—which determines its content—is hard to recapture. The mood which governs this editorial is one of disappointment verging on anticlimax. Six-times-Wimbledon winner Roger Federer has been eliminated ahead of time from the tournament he was favoured to win, joining Venus Williams in the spectators' gallery. The fancied Italian and French teams have made their graceless exits from the soccer World Cup. The G8 and G20 meetings have failed to achieve any objective other than surviving the ritual demonstrations that attend their every gathering. And, in the biggest anticlimax of all, the US Supreme Court has given its long-awaited judgment in In re Bilski.

Early expert comment received from pundits on both sides of the Atlantic has been largely along the lines of ‘business as usual’. Indeed, this was the headline of one global practice's news release and it was much the same message that IP auctioneer Ocean Tomo has been putting out since the decision of the Court of Appeal for the Federal Circuit held the disputed business method patent invalid in 2008. What it seems to mean is that, as before, some business methods will continue to be patentable while others are not.

The Justices agreed that, on the facts before it, the Federal Circuit court was right to hold the Bilski patent invalid. They could not, however, agree, in wider terms, as to the correct judicial yardstick by which the validity of patents of this type was to be measured. Depending on your perspective, the words of the US patent code are (i) woefully imprecise and ill-equipped for determining the patent-eligibility of types of invention that the legislators could never have imagined, or (ii) magnificently flexible in their scope for interpretation in that very small number of disputed cases in which the boundaries of patent-eligibility must be identified.

Much turns in the USA upon the ‘machine-or-transformation’ test, which the Federal Circuit court applied and which, according to a concurring minority of the Justices, was not clearly identified as the ground on which the majority based its decision. In simple terms, this requires that a patent-eligible process either (i) be tied to a particular machine or apparatus or (ii) be able to transform a particular article into something different. These words do not appear in the US patent statute, and are therefore subject to fewer interpretational constraints. Nor, however, did the test spring fully formed into the mouths of the judiciary: it is the result of a long-evolving strand of judicial precedent that can be traced to its 19th century roots and which has reached us today through a trilogy of earlier Supreme Court decisions. These, as referred to by American practitioners today, sound rather like the name of an American law firm: Benson, Flook and Diehr.

The ‘machine-or-transformation’ test has much to commend it. It is a neat slogan which is easy to memorize. Its application to the facts of individual patent applications appears to produce much the same outcome—so far as this technical novice is concerned—as the more amorphous, less memorable, and confusingly articulated tests that arise from a synthesis of the decisions of the European, German, and UK patent granting authorities. The worst effects of its misapplication are guarded against by the requirements that even business method patents be novel and non-obvious. Best of all, it provides an intelligible rule of thumb for business investors at the point at which they decide whether to support the commercial development of a new process or not.

There is at present no internationally agreed standard regarding patent-eligibility of business methods, and it would be no exaggeration to say that we are not about to see one. When most jurisdictions provided little or no protection for such inventions, to say that the USA was out on a limb in granting patents for them, or that it had simply ‘gone too far’ was an easy way to score a debating point. However, it is from the USA that most of the business methods we now employ appear to have originated, whether because of, or despite, the availability of legal protection. If, having attracted the attention of the world even momentarily, Bilski does not help foster a wider debate and a broader acceptance of business method patents, the sense of anticlimax will be very real indeed".

Footnote on Bilski: Regular JIPLP contributor and OUP author Charles R. Macedo has been invited to write an article for next year which reviews the impact of Bilski on legal decisions in the United States over the first 12 months following the handing down of that decision.

JIPLP plans for the future

Above: JIPLP team meetings are always lively affairs

The JIPLP editorial and production team had a three-hour meeting earlier this week, at which practically every aspect of the journal's form and content was discussed. Among the things we've decided on are the following:

• The abstract of each published article will appear on its front page instead of the current bullet-pointed 'Key issues'. This is because (i) the abstract and the key issues generally overlapped quite heavily and (ii) the existence of two separate sets of pointers to the content of an article was something that often confused and puzzled authors.
  
  
• At the head of the first-page abstract there will appear a brief note on the author. Following the inspirational lead of Twitter, and to avoid boastful biographies, we thought it best to limit these notes to 140 characters per author.
  
  
• We are hoping to rewrite the Manuscript Central templates for all the notices and correspondence sent out by our automated submission system, in the hope of making them read less like machine-generated text than they do at present. The rejection letter is particularly abrupt ("... your article has been denied publication ..."), but even some of the more welcoming missives sound downright discouraging. The rewrite process is likely to take some time, so please don't expect imminent changes.
  
  
• From January 2011 we will be consolidating the journal's separate Editorial Panels into a single Editorial Board and expanding our review function.
  
  
• The jiplp weblog will carry occasional features which focus on some of the journal's more frequent contributors. This will help readers put a human face to the impersonal text and will also, it is hoped, encourage occasional contributors to write more often for us.
  
  
• The April 2011 issue of JIPLP (issue 4) will carry rather more United States-related content than is normal, to reflect the editor's intended participation in the annual Fordham University Intellectual Property Conference late next April. The following month's issue (May 2011) will be the annual "trade mark special", to coincide with the International Trademark Association Meeting in San Francisco from 14 to 18 May. This weblog will soon publish last dates for the submission of any articles and Current Intelligence notes which, contributors hope, will gain inclusion in those issues -- allowing for the exigencies of production and the vagaries of the peer-review procedure.

Not actually discussed at the meeting, but still worth mentioning again, are the following considerations:

• Authors whose articles and Current Intelligence notes are rendered out-of-date by subsequent case law decisions, statutes, administrative changes or practice are welcome to contact this weblog so that a note to that effect can be posted here and thus more effectively drawn to the attention of readers.
  
  
• JIPLP is always on the look-out for more peer reviewers. If you think you might have what it takes to be a good peer reviewer, please contact me and let me know why!
  
  
• If you think we're doing anything wrong, or not as well as we might, please do let us know. We don't like criticism but we do welcome it, since it helps us to deliver a better product from which we all benefit.

The dark side of GIs: protection for ‘Palomar’ hides behind ‘Valencia’

Author: Miguel Angel Medina González (Elzaburu, Madrid)

Abadía Retuerta, S.A. v OHIM, General Court of the European Union (Third Chamber), Case T-237/08, 11 May 2010

Citation: Journal of Intellectual Property Law & Practice, doi:10.1093/jiplp/jpq107

The General Court confirms the decision in which OHIM rejected a Community trade mark (CTM) application for CUVÉE PALOMAR for wines, for conflicting with the legal protection of the registered designation of origin (RDO) ‘Valencia’ for wines, which extends itself to the locality ‘El Palomar’ in the area covered by that RDO.


Legal context

The case deals with three different levels of protection of geographical indications (GIs): international, Community and national.

Community and National levels are the most relevant, as the International level concerns the TRIPs Agreement, the applicability of which is assured by means of the Community legislation, which has been amended to comply with it.

At Community level two Regulations were considered. The first is Council Regulation 40/94 (now 207/2009) on the Community trade mark, art. 7(1)(j), prohibiting registration of CTMs for wines which contain or consist of a geographical indication identifying wines with respect to such wines not having that origin. The second is Council Regulation 1493/1999 on the common organisation of the market in wine, arts 47 (2)(e), 50(1) and (2), 52 (1) and 54. The latter regulation establishes that, if a Member State uses the name of a specified region to designate a quality wine produced in specified regions (‘quality wine psr’), that name may not be used to designate products of the wine sector not produced in that region and/or products not designated by the name in accordance with the provisions of the relevant Community and national rules. Article 54 states that Member States shall forward to the Commission the list of quality wines psr which they have recognised, stating, for each of these quality wines psr, details of the national provisions governing the production and manufacture of those quality wines psr, being this list published in the Official Journal.

Finally at national level, there is a new regulation on the RDO ‘Valencia’, ratified by Ministerial Order of 2000, arts 2(1) and (2), and the version amended by Ministerial Order APA/1815/2002 of 2002, Article 4(1). Article 2 provides that the protection of the RDO ‘Valencia’ covers the expression ‘Valencia’ and all names of the sub-regions, districts, local administrative areas, localities and estates which comprise the production and ageing areas referred to in Article 4. It also prohibits the use for other wines of the names, marks, words, expressions and signs which may, by their phonetic or graphical similarity with those protected by the RDO, be confused with those wines. Article 4 expressly mentions ‘El Palomar’.

Facts

The CTM application for CUVÉE PALOMAR was filed in 2006. The OHIM rejected it on the basis of art. 7(1)(j) CTM regulation 40/94. The applicant's appeal was rejected by the Board of Appeal, which stressed that the prohibition on registering such a term is absolute and unconditional, since it is not subject to the condition of causing deception as to the place of origin. The Board stressed the fact that ‘El Palomar’ constitutes an area of production protected by the RDO ‘Valencia’, which can create confusion with the expression ‘Palomar’ in the trade mark applied for, as the goods do not have their origin in that locality. The restriction of the description to ‘wines from an estate known as Pago Palomar, situated in the local administrative area of Sardón de Duero (Valladolid, Spain)’ does not overcome the objection. Neither did the fact that the applicant owned very similar trade marks which included the expression PALOMAR.

The applicant appealed to the General Court, putting forward a single plea in support of its appeal, in essence, that art. 7(1)(j) must be construed in a restrictive manner.

Analysis

After some linguistic lucubration, the Court made a careful and detailed analysis of the regulation of geographical designations of the wines applicable to the case.

The Court considered that the concept of geographical indications identifying wines for this purpose must be read in the light of the relevant provision of Community Law (Regulation 1493/1999), according to which it is for the Member States to determine, for their respective territories, the geographical indications which are intended to be protected, which leads us to the New Regulation on the RDO ‘Valencia’.

As a result, the Court concluded that ‘the name el Palomar is a geographical indication for a quality wine psr’ and ‘therefore constitutes a geographical indication within the meaning of art. 7(1)(j) of Regulation 40/94’. The fact that the name ‘El Palomar’ is not expressly mentioned in the list of quality wines psr published in the EC Official Journal is not relevant, since those lists are published in the Journal's C Series for information purposes while the regulation governing the RDO was published in the national (Spanish) Official Journal, which is what was decisive.

The only obligation for Member States was to forward the list of quality wines psr which they recognised to the Commission and to state, for each of them, details of the governing national provisions for publication by the Commission.

Even if the trade mark applied for has several meanings or does not exactly match the expression ‘El Palomar’, this does not rule out the application of art. 7(1)(j). It would only be otherwise if the geographical indication consisted of a name of a place containing an article which is inseparable from that name and which gives that name its own, autonomous meaning.

Practical significance

Like the Moon, the land protected by geographical indications down on planet Earth may also have a dark side, at least in legal terms. This could be a possible view of what has been ‘disclosed’ by the decision analysed here. Possibly its main significance is to call our attention to the dangers faced by trade mark owners and all those who intervene in the market if clear regulations on GIs are not adopted. Two questions stand out:

Protection of what could be called ‘hidden names’ or ‘hidden GIs’ (those protected names which have not been published in the lists of quality wines psr, but which are considered as such)
Their protection derives from national regulation (eg a Spanish Ministerial Order) which regulates a specific and different designation of origin (here the RDO ‘Valencia’), which is considered to give legal cover to those other designations (eg Palomar) which are not expressly published in the EU's Official Journal. These ‘hidden names’ do not necessarily bear any resemblance to the designation of origin published in the Official Journal. Likewise the national regulation is also not published at the Community level (nor evidently, are there any official translations to other languages), there being only a reference to it.

The interpretation of the Court seriously weakens legal certainty in the market. The Court itself stated that, although the publication by the Commission complies with EU law, it ‘hardly seems effective to ensure that the public is fully and completely informed’ as to the name of the local administrative areas which benefit from an indication of origin. If this decision becomes final, it would confirm that entrepreneurs could be unexpectedly infringing geographical indications by using or applying for signs which consist of names which do not have any similarity to a designation of origin, but only with any of those ‘hidden names’. On the other hand, it would be unsurprising to find ‘hidden names’ protected under certain RDOs which conflict with each other.

Protection as GIs of expressions which have several meanings (polysemy)

These expressions are likely to be found frequently, even in cases where the names are common or might even be related in some manner to specific products or to the place where such goods are usually produced independently of the specific geographical name. Palomar is a common name (‘dovecote’) and is likely to be found as part of other villages' names. The Court's ruling that the protection of GIs is absolute in these cases can lead to conflict.

Now that new EU regulations for wine have been adopted, under which new wine GIs will be registered through a Community procedure, it is to be expected that the Commission takes measures to ensure that there is sufficient publicity for all the protected names so that interested parties have the opportunity to oppose and be aware of the existence of all the names which are going to be protected in order to avoid facing a possible infringement claim.

This also means that extreme care is called for when carrying out clearance searches for signs for wines.

Finally, art. 2(1) of the regulation of the RDO ‘Valencia’ was amended on 20 April 2010 to state that the protection extends itself to the expression ‘Valencia’, but it does not expressly state that it is extended to other names, as it did before. Let us see whether this deters the appellant from appealing this decision to the Court of Justice.

More articles in search of an author

This weblog's previous request for volunteers to tackle articles (see "Articles in Search of an Author", here) was very well received, with all ten articles being matched to authors within a remarkable 48 hours. Some of the articles have since been received and are now undergoing peer review.

Here's another, rather shorter list, of further articles on which JIPLP would like to publish articles. As before, anyone wishing to write on one of these topics should email me, whether to reserve the topic, to seek further particulars or to make a counter-proposal.

* Trade marks and the blind: the special significance of aural and haptic marks [one reader, who is currently very busy, is willing to help anyone who does take this topic -- but only from September];

* A comparative review of "three strikes" legislation in the small number of countries which have opted for it, to examine whether and, if so, to what extent, legislative expectations have been fulfilled [Taken];

* TSG ("Traditional speciality guaranteed") registration in Europe: legal basis and parameters of exploitation [Taken];

* Points to consider when suing an IP licensee, when determining whether to proceed for breach of the licence agreement or for infringement of the infringed right(s) [Taken];

* Availability and assessment of damages for loss of opportunity to license intellectual property [Taken];

* The author's moral right to withdraw a work (droit de repentir): how does it work and what are its consequences in commerce? [Taken];

* Declarations of non-infringement of another's IP right-- when can, and should, they be sought? [Taken].

Guidance for all prospective authors on the submission of articles can be accessed here.

Of Pamp and Parodies -- and the promise of more

JIPLP has received two new titles which are in need of a review. The first is the Oxford Book of Parodies, on which you can find some brief comment on the 1709 Blog here. The other is Intellectual Property in Science, by Caroline Pamp, recently noted on the IPKat weblog here.

The journal has been disappointed that too many books which are sent for review are either never reviewed at all or are reviewed so late that the value of the review to the prospective reader is reduced.

If you are seriously interested in writing a review of either of these titles for JIPLP, think you have something worth saying on the subject and can be relied upon to deliver the review, can you please email our Reviews Editor, Dr Phillip Johnson, and let him know your credentials.

I hope eventually to publish a list of books sent out for review in the hope that it will (i) whet the appetites of JIPLP readers for these forthcoming critiques, (ii) give publishers confidence that JIPLP is a worthy place for their books to be reviewed and (iii) stir the consciences of reviewers into swift and effective action.

If this works, we'll try it again.

White eagles, national symbols and domestic trade mark law

Author: Michal Kruk

Wolny Zwizek Zawodowy Kierowców RP v Urzd Patentowy RP, Supreme Administrative Court (NSA), Poland, II GSK 555/09, 21.04.2010

Citation: Journal of Intellectual Property Law & Practice, doi:10.1093/jiplp/jpq109

The Supreme Administrative Court (NSA) in Poland has confirmed that a trade mark containing a representation of a white eagle similar to the Polish national emblem cannot be registered, taking into account not only the Law on Industrial Property of 30 June 2000 (Law on IP) but also the appropriate provisions of the Constitution of the Republic of Poland of 2 April 1997 (Constitution) and the National Emblem, Colours and Anthem Act of 31 January 1980 (NECA Act).

Legal context

According to Article 131(2)(2) of the Law on IP, a right of protection shall not be granted for a sign if it incorporates the name or abbreviated name of the Republic of Poland, or its symbols (national emblem, national colours or national anthem), the names or armorial bearings of Polish voivodships, towns or communities, the insignia of the armed forces, paramilitary organizations or police forces, reproductions of Polish decorations, honorary distinctions or medals, military medals or military insignia, or other official or generally used distinctions and medals, in particular those of government administration, local self-administration or social organizations performing activities in vital public interests, where these organizations' activities extend to the entire territory of the State or to a substantial part of it. This is the case unless the applicant is able to produce evidence of his right, in particular in a form of an authorisation issued by a competent State agency or a permission given by an organization, to use the sign in the course of trade.

When considering provisions of trade marks law in other EU Member States and the appropriate secondary EU law, this regulation is very casuistic. The Constitution, in Article 28(1), stipulates that the image of a crowned white eagle upon a red field shall be the national emblem of the Republic of Poland. Article 2 of the NECA Act states that the national emblem of the Republic of Poland is the image of a white eagle with a gold crown on his head turned right, with unfolded wings and gold beak and claws, on a red field. The latter Act contain some lex specialis provisions under which symbols of the Republic of Poland cannot be placed on items intended for trade (Article 16(1)). However, under Article 16(2) of the NECA Act such use may take place when the Poland's national emblem is presented in a stylized or artistically modified manner.

Facts

Wolny Zwizek Zawodowy Kierowców Rzeczpospolitej Polskiej (the Free Trade Union of Professional Drivers of the Republic of Poland, WZZKRP) applied to register at the Polish Patent Office (PPO) a trade mark which consisted of two vital graphic elements, the wording ‘Wolny Zwizek Zawodowy Kierowców’ as well as representation of a white eagle (application No. Z-276682). The mark was intended to designate various goods and services in classes 4, 12, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45.

Figure 1. Trade mark application No Z-276682 (left)
and representation of Poland's national emblem.

The PPO refused to grant protection for the trade mark concerned, citing the provisions of the Law on IP and NECA Act mentioned above. The white eagle embedded in the trade mark was found to be ‘very similar’ to Poland's national emblem. The Office emphasized that Article 131(2)(2) of the Law on IP

serves to guarantee the State, its bodies and authorities, monopoly to use official state symbols ... and affirms an average consumer that any state symbols encountered in trade are used by proper and entitled institutions.

The Voivodship Administration Court (WSA) upheld the decision of the PPO, mentioning additionally the constitutional provisions at stake. In WSA's opinion Article 131(2)(2) of the Law on IP excludes the grant of protection to signs not only when they are identical to the image of the White Eagle (appended to the NECA Act), but also when an eagle is ‘similar’ to the national emblem of the Republic of Poland.

Analysis

The NSA pointed out that the Law on IP did not define the notion of ‘symbols of the Republic of Poland’ and that the examples indicated in brackets in Article 131(2)(2) should be further interpreted. Following a legal analysis the Supreme Administrative Court explained that ‘symbols of the Republic of Poland, its national emblem and image of the white eagle’ had different meanings but that the first notion, being the vaguest, included the two others. The Court conceded that representation of the white eagle incorporated in the refused trade mark differed from the image of the white eagle being Poland's national emblem exclusively with ‘some colouristic details’. As the legislator, the NSA said, in Article 131(2)(2) of the Law on IP the notions used ‘symbol and national emblem of the Republic of Poland’, terms being vaguer then ‘image of the white eagle’, thus ‘minor colouristic differences do not have any legal effect’. Although the NSA referred to Article 16 of the NECA Act, no direct comment was made whether the white eagle in question was presented in a stylized or artistically modified manner. Arguments laid out in the judgment suggest that this was not the case.

Practical significance

Nowadays, being aware of advantages of heraldry or vexillology, applicants more often introduce into their trade marks officially protected elements such as flags, national emblems or armorial bearings. These signs are likely to influence a consumer who will, in most cases, subconsciously associate them with a particular state or specific public institution.

There is very little legal literature or judicial decisions on this topic. The judgment at stake is the first decision regarding the interpretation of Article 131(2)(2) of the Law on IP since it has been enacted, although previously the PPO had already rejected several comparable applications. Besides, although the Polish legal system has a statutory character, the role of judicial precedents has become vital over the years. Thus the significance of this judgment is crucial for the PPO's future practice. The Office for Harmonisation in the Internal Market (OHIM) may also take notice of this judgment. If such an application was filed with OHIM, that Office should refuse it in accordance with Article 7(1)(i) and (2) of the Regulation 207/2009 on the Community Trade Mark (since Poland's official emblem does not appear on the Article 6ter list, Article 7(1)(h) will not apply). Accordingly the substantial harmonization of the practice of granting protection for trade marks at the EU level would be achieved.

While Article 131(2)(2) of the Law on IP represents a transposition of Articles 3(1) (h) and (2)(c) of the Trade Mark Directive 2008/95 (formerly 89/104), it does not contain any reference to Article 6ter of the Paris Convention for the Protection of Industrial Property (identical provisions are in force in a few EU Member States, e.g. Germany and Austria). Therefore at any stage of proceeding neither the PPO nor the Courts considered the application in question concerning ‘any imitation from a heraldic point of view’. The only mention was made to the white eagle from the application No. Z-276682 as ‘similar’ (WSA), ‘very similar’ (PPO) or ‘different in some coloristic details’ to the Poland's official emblem (although the appropriate provision of the Law on IP does not refer to similarity). These expressions remain too vague and unclear at the moment and need to be further specified. Very likely applicants willing to use a white eagle's motive in their trade marks still cannot be certain whether their applications will be accepted.

Want to help OUP? Join the IP Panel

JIPLP publisher Oxford University Press is setting up a panel of intellectual property practitioners and professionals to help with some market research activities. OUP's looking to receive feedback on

* new IP publications,

* topical changes in the market for which practitioners would like to see legal resources,

* upcoming conferences which IP practitioners are attending,

* comments concerning effective/ineffective pieces of marketing they have received, as well as

* thoughts on other general intellectual property issues.

Panellists are being signed up for one year and will receive in return £300 of OUP books (paid in two installments).

If you think this might be of interest, contact Christopher Wogan for more information.

‘Three Strikes’ settlement between EMI and Eircom approved by Irish court

Author: Tara Train

EMI Records & Others v Eircom Ltd [2010] IEHC 108, High Court of Ireland (Charleton J), 16 April 2010

Citation: Journal of Intellectual Property Law & Practice, doi:10.1093/jiplp/jpq096

Internet access is threatened as Ireland's graduated response settlement is confirmed by a court to be compatible with data protection legislation.

Legal context and facts

In April Mr Justice Charleton, sitting in the Irish High Court, considered whether a graduated response, commonly referred to as a ‘three strikes’ arrangement, was compatible with data protection legislation. The case arose due to concerns raised by the Data Protection Commissioner regarding the settlement reached between music industry giants EMI, Sony, Universal, and Warner, and Ireland's leading internet service provider Eircom.

Under the terms of the agreement, specialist technology companies will be hired by the record labels to detect computers engaging in copyright infringement and illegal file sharing. This information will then be passed on to Eircom, which will identify the subscriber based on data held on its IP address and notify them of the infringement in their next bill. If there is a second instance of copyright infringement, Eircom is obliged to write a formal letter warning the subscriber that his or her internet service will be terminated, should illegal downloading continue. On the third occasion, the general internet service of the subscriber will be disconnected.

The Data Protection Commissioner raised three issues, regarding which the settlement was potentially objectionable as being contrary to data protection legislation.

The first question raised was whether IP addresses, in the hands of EMI and taking account of the purpose for which they are collected, constitutes ‘personal data’ for the purposes of the Data Protection Acts.

Charleton J began by stating that, in order to constitute personal data under the Act, the information must allow someone to identify a living individual, using the data alone, in conjunction with other information in the possession of the data controller, or information likely to come into its possession. In the case at hand, the purpose of identifying IP addresses is to stop persistent illegal downloading without resorting to individual court actions by cutting off access to the tools facilitating the downloading. EMI has no interest in personally identifying the individuals who are infringing because it is unnecessary to do so to achieve its goals under the terms of the settlement. Therefore, the judge reasoned, it was not likely that EMI would use the IP addresses to identify individual names and addresses.

The second question was as follows: assuming that it is permissible under the legislation for Eircom to process the personal data of subscribers, is the termination of internet subscription unreasonably prejudicial to the fundamental rights and freedoms or legitimate interests of the data subject?

When determining whether internet disconnection is an affront to the fundamental rights and freedoms of the data subject, Charleton J stated that the proportionality of the inference must be based on the circumstances. He opined that, given the constitutional and human right to exploit one's creative works, Eircom was acting responsibly and upholding the rights of copyright owners by implementing the sanctions in accordance with the protocol of the settlement. Since a corporate policy which promotes lawfulness in this manner will not be considered disproportionate, the termination of internet access because of three copyright infringements is not unwarranted.

The third question raised by the Data Protection Commissions was whether it was valid for EMI and Eircom to implement the third stage envisaged under the settlement; namely, the termination of an internet user's subscription in circumstances where (a) in doing so they would be engaged in the processing of personal data for purposes relating to the commission of a criminal offence and (b) the termination of an internet user's subscription by Eircom would be predicated on the internet user in question having committed copyright infringement, but without any such offence having been investigated by an authorized body or fault being determined by a court during a fair and impartial trial.

Charleton J based his answer on that fact that neither EMI nor Eircom have any interest in initiating criminal proceedings against the internet subscribers. The settlement is based upon civil law principles because only civil copyright infringement is being redressed by the graduated response system. As such, liability is established by external evidence, as opposed to proof of intent or recklessness necessary in a criminal trial. No investigation using sensitive personal data would be required because no one is being accused of an offence which would need to be proven before an authorized body or during a fair and impartial trial.

The graduated response, ‘three-strike’ settlement between EMI and Eircom was deemed to be lawful.

Analysis

Beyond the parties to the settlement, two groups of stakeholders were concerned with this judgment: owners of copyright material and internet users. Charleton J began his judgment by stating the purpose of the settlement, which was ‘to diminish the theft of copyright material over the internet’. The justness and nobility of this goal in the eyes of the judge overshadowed any legitimate interest the general internet subscriber might have. Charleton J acknowledged that internet disconnection is a serious sanction, and there is an argument that for Eircom to effect such disconnection would be an imposition on human freedom. This, however, was brushed aside immediately as the judge noted that ‘There is no freedom to break the law’.

Little attention was paid to the interest of those who might have their internet connection terminated, perhaps because neither the Data Protection Commissioner nor any consumer advocacy groups opposed to a graduated response agreement made representations on behalf of internet users. No mention was made of the 2009 European Parliament recommendations contained in the Security and Fundamental Freedoms on the Internet Report, which was written in the wake of similar ‘three strike’ agreements taking place in France. The Report emphasized the importance of the internet in terms of promoting democratic initiatives and political debate, as well as ensuring freedom of expression and the dissemination of knowledge. Tellingly, it stated that ‘e-illiteracy will be the new illiteracy of the 21st Century; ensuring that all citizens have access to the internet is therefore equivalent to ensuring that all citizens have access to schooling and such access should not be putatively denied by governments or private companies’. The prevalence of copyright infringement occurring over the internet did not move the vast majority of MEPs to endorse internet disconnection as a proportionate measure. Similarly, the Constitutional Council of France rejected Loi HADOPI until it was revised to ensure that only a judge would have the power to disconnect an individual's internet. Charleton J focused on copyright being a fundamental right for the recording artists but, unlike the European Parliament and French Constitutional Council, placed little stock on the human rights depending on one's access to the internet.

Practical significance

The consequences of this settlement are difficult to predict. While other ISP have indicated their unwillingness to conform to similar agreements, Charleton J has commented on the injustice of Eircom bearing the burden alone, and has stated that the issue of whether Ireland's other ISPs will be obliged to administer the settlement will be before the Commercial Court.

As technology, almost inevitably, continues to evolve at a pace faster than the law can regulate, avid copyright infringers will find alternative means of maintaining their free intake of music. Technical wizardry capable of disguising activity over the internet is already in existence, and if the EMI/Eircom settlement becomes the industry norm, these techniques will become increasingly widespread. Unfortunately, those most likely to suffer will be infrequent infringers.

In the digital age, there is a need for progressive judicial perspectives which give adequate consideration to the increasing importance of the internet. The plight of copyright owners, although real, cannot continue to eclipse the rights of internet users as it has in this judgment.